Ex Parte Uhrig et al

Patent Trial and Appeal Board

Feb 26, 2016

10559255 (P.T.A.B. Feb. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
10/559,255 12/02/2005
570 7590 03/01/2016
P ANITCH SCHWARZE BELISARIO & NADEL LLP
ONE COMMERCE SQUARE
2005 MARKET STREET, SUITE 2200
PHILADELPHIA, PA 19103
Eric Uhrig
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
6200028-5002 9071
EXAMINER
BECKER, DREW E
ART UNIT PAPER NUMBER
1792
NOTIFICATION DATE DELIVERY MODE
03/01/2016 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
usptomail@panitchlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ERIC UHRIG and LAURENT PROBST
Appeal2014-006749
Application 10/559,255
Technology Center 1700
Before KAREN M. HASTINGS, GEORGE C. BEST, and
CHRISTOPHER L. OGDEN, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner's rejection of claims 12-20, and 27--49. We have jurisdiction
pursuant to 35 U.S.C. § 6.
We AFFIRM.
BACKGROUND
Claim 12 is illustrative of the claimed subject matter and is
reproduced below from the Claims Appendix to the Appeal Brief:
12. A method for cooking food positioned in a receptacle,
comprising the steps of:
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pouring a predetermined volume (V) of denatured
ethanol on to the food or into the receptacle, and applying the
ethanol to the food;
igniting the ethanol; and
completely burning the predetermined volume (V) of the
ethanol, completely cooking the food to a desired degree of
cooking when the predetermined volume (V) of the ethanol is
completely burned;
wherein the burning stops when the predetermined
volume (V) of the ethanol is completely burned, and wherein
the cooking of the food to the desired degree of cooking is
completely done when the burning of the predetermined
volume (V) of the ethanol stops.
Independent claim 29 recites a similar cooking method that also
requires the use of "denatured ethanol" to "completely cook[] the food to a
desired degree of cooking" (Claims App.; Appeal Br. 36).
The Examiner maintains, and Appellants appeal, the following
rejections under 35 U.S.C. § 103(a):
A. Claims 12, 14--19, 27-31, 33--40, 42--46, and 48 as
unpatentable over Good Food "Vodka flamed chorizo" (BBC
Good Food Magazine, published January 2002)
(http://www.bbcgoodfood.com/recipes/1178) in view of Klein
(US 3,516,837, issued June 23, 1970); and
B. Claims 13, 20, 32, 41, 47, and 49 as unpatentable over Good
Food, Klein, and Pharmco (www.pharmco-
prod.com/pages/ep 1.pdt).
Appellants focus on claim 12 in contesting the first ground of
rejection. Accordingly we select independent claim 12 as representative of
the claims subject to the first ground of rejection. Appellants focus on the
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subject matter of claim 13 in contesting the second ground of rejection, thus,
we select dependent claim 13 as representative of this group of claims.
ISSUES ON APPEAL
Have Appellants identified reversible error in the Examiner's
obviousness rejection of claims 12 and 13 over the applied prior art? If not,
have Appellants overcome the rejection by rebutting the prima facie case
with sufficient evidence of commercial success?
We answer both of these questions in the negative.
ANALYSIS
We have thoroughly reviewed each of Appellants' arguments for
patentability. However, we are in agreement with the Examiner that the
claimed subject matter of representative claims 12 and 13 would have been
obvious to one of ordinary skill in the art within the meaning of§ 103 in
view of the applied prior art. We determine that, after consideration of all of
the evidence of record, including the three Probst Declarations regarding
commercial success (filed November 3, 2011, May 15, 2012, and October 25
2012), that the evidence of record tending to establish the obviousness of the
claimed subject matter outweighs any evidence of record that may tend to
indicate the non-obviousness thereof.
Accordingly, we sustain the Examiner's rejections for the claims for
essentially those reasons expressed in the Answer, including the Examiner's
Response to Argument section, and we add the following primarily for
emphasis.
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Appellants' arguments focus on their belief that the applied prior art
does not teach cooking the food in the flames of the alcohol, and on their
alleged commercial success (generally Appeal Br.; Reply Br.).
Appellants' arguments that neither Good Food nor Klein "cook" the
food in the flames of the burning alcohol are unpersuasive (e.g., Appeal Br.
16). As the Examiner aptly points out, the Specification does not define
cooking, the claims recite to any "desired degree of cooking," and some
people enjoy "rare" or barely cooked food (Ans. 6). Moreover, as used in
the representative claims, cooking encompasses the common definition "to
prepare food for eating by [the] use of heat" (Ans. 8; see also, "cook"
Random House Webster's College Dictionary, 1999).
Notably, the Specification discusses "flambe" (igniting alcohol in the
food) and then immediately describes as background to the invention that
"the alcohol currently employed in cooking" was under 50% or 60%
maximum strength (Spec. 2:3-9). The Specification describes an
embodiment of the invention that uses denatured ethanol of at least 80%
strength for cooking (Spec. 2: 15-20). Appellants do not dispute the
Examiner's finding that Klein describes the use of denatured ethanol
containing at least 70% to 90% alcohol/ethanol as an alternative to vodka for
a flambe solution. The Examiner further finds that Good Food teaches using
vodka to flame/cook chorizo (i.e., sausage).
Appellants also argue that "flaming" the food does not cook the food
as the invention does, since Appellants' cooking does not introduce any of
the ethanol into the food being cooked (Appeal Br. 16, 17; First Probst
Deel.). Notably, claim 12 does not require that no ethanol be in the food
(e.g., Ans. 8), although claims dependent from claim 12 may recite this
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concept (e.g., claims 46, 47 which are not separately argued recite "the
ethanol is completely exhausted"). Furthermore, as Examiner states, the
present invention similarly to Klein introduces flavor to the food via its
denatured alcohol flambe solution. In any event, even assuming arguendo,
as Appellants urge, that Klein does not completely bum the alcohol, Good
Food reasonably teaches complete burning of the alcohol (e.g., Ans. 10).
It has been established that "the [obviousness] analysis need not seek
out precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ." KSR Int'! Co. v. Teleflex
Inc., 550 U.S. 398, 418 (2007). Likewise, it is also well settled that a
reference stands for all of the specific teachings thereof as well as the
inferences one of ordinary skill in the art would have reasonably been
expected to draw therefrom. See In re Fritch, 972 F.2d 1260, 1264---65 (Fed.
Cir. 1992).
Thus, the Examiner's position that it would have been prima face
obvious, using no more than ordinary creativity, to cook food such as the
vodka-flamed chorizo of Good Food using denatured ethanol as exemplified
in Klein to be a known alternative to vodka is well founded (e.g., Ans. 2--4).
KSR, 550 U.S. at 416 (the predictable use of prior art elements according to
known methods for their established functions is likely to be obvious when it
does no more than yield predictable results). "A person of ordinary skill is
also a person of ordinary creativity, not an automaton." Id. at 421.
Likewise, a preponderance of the evidence supports the Examiner's
obviousness rejection B. Representative claim 13 requires that the ethanol
has a strength between 94% and 96% (Claims App.). The Examiner cited
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Pharmco to exemplify that the U. S .P. alcohol of Klein may be 190 to 200
proof (95% to 100% alcohol). Appellants' arguments that Pharmco does not
discuss the use of USP alcohol for cooking food (Appeal Br. 22) do not
persuade us of any error in the Examiner's (prima facie) obviousness
conclusion (see, e.g., Ans. 10, 11).
Next, Appellants rely upon the three Declarations of Laurent Probst,
one of the inventors the instant application, to demonstrate the commercial
success of the claimed method, "negating" the obviousness rejections
(Appeal Br. 24--27; Reply Br. 20-23; see also Evidence Appendix).
The burden rests with Appellants to establish that the "'asserted
commercial success of the product must be due to the merits of the claimed
invention beyond what was readily available in the prior art."' See Asyst
Techs., Inc. v. Emtrak, Inc., 544 F.3d 1310, 1316 (Fed. Cir. 2008) (quoting
J.T. Eaton & Co., Inc. v. Atl. Paste & Glue Co., 106 F.3d 1563, 1571 (Fed.
Cir. 1997) ). A primary consideration in demonstrating actual commercial
success is whether the claimed invention has substantial market share. See
In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996). On this record, Appellants
have not shown what percentage of the market they have acquired (see, e.g.,
Ans. 14, 15, 19, 20).
Moreover, even if the evidence proffered sufficiently demonstrates
commercial success, that success is only relevant in the obviousness context
if there is proof that the success results from the unique characteristics of the
claimed invention, as opposed to other economic and commercial factors
unrelated to the quality of the claimed invention. Huang, 100 F.3d at 140.
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We determine that Appellants have not met the burden for showing
commercial success for at least the reasons aptly provided by the Examiner
(Ans. 12-13). The facts and law support the position of the Examiner.
Significantly, Appellants have not persuasively rebutted the
Examiner's determination that the Probst Declarations do not evince
nonobviousness because Appellants have failed to show a nexus between
commercial success of their product and the claimed subject matter (Ans. 12
("[A ]pplicant has not provided a direct relationship which would attribute
sales successes to the claimed invention")). Under these circumstances,
Appellants' commercial success argument lacks persuasive merit.
The Examiner's de facto position that gross sales and industry
recognition are not necessarily evidence of commercial success if, e.g., the
prior art (e.g., Klein) exemplifies the obvious use of denatured alcohol for
cooking food (Ans. 12, 13). Secondary considerations "including substantial
evidence of commercial success, praise, and long-felt need, were inadequate
to overcome a strong showing of primary considerations that rendered the
claims at issue invalid." Agrizap, Inc. v. Woodstream Corp., 520 F.3d 1337,
1344 (Fed. Cir. 2008); see also, e.g., B.F. Goodrich Co. v. Aircraft Braking
Sys. Corp., 72 F.3d 1577, 1583 (Fed. Cir. 1996) ("Considering the minor
difference between the claimed invention and the teachings of Dunlop, the
secondary considerations were not sufficiently compelling. [Citation
omitted.]").
Notably, the evidence of commercial success sales is not compared to
the sales of any other prior art product(s) or methods (generally Appeal Br.;
Reply Br; Probst Decls. ).
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Commercial success is also not apparent where there is demand for a
product that fills a need, and the claimed product merely satisfies that need,
e.g., for better burning alcohol flambe or cooking fluids. See In re Fielder,
471F.2d640, 646 (CCPA 1973).
In addition, we emphasize that, although secondary considerations
such as unexpected results must be taken into account, they do not
necessarily control the obviousness conclusion. See Agrizap, Inc., 520 F .3d
at 1344; Sud-Chemie, Inc. v. Multisorb Techs., Inc., 554 F.3d 1001, 1009
(Fed. Cir. 2009) ("evidence of unexpected results and other secondary
considerations will not necessarily overcome a strong prima facie showing
of obviousness"); Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1372 (Fed. Cir.
2007) ("[T]his secondary consideration does not overcome the strong
showing of obviousness in this case. Although secondary considerations
must be taken into account, they do not necessarily control the obviousness
conclusion."); Newell Cos. v. Kenney Mfg. Co., 864 F.2d 757, 769 (Fed. Cir.
1988).
Here, the case of obviousness is so strong that Appellants' alleged
commercial success is ultimately insufficient, since Klein/Good Food
evinces the use of denatured alcohol to cook food within the meaning of the
claims (see also, e.g., Ans. 9).
Accordingly, the§ 103 rejections advanced by the Examiner in this
appeal are sustained.
ORDER
The Examiner's decision is affirmed.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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