Ex Parte Vidkjaer

Board of Patent Appeals and Interferences

Sep 26, 2003

08404676 (B.P.A.I. Sep. 26, 2003)

The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.
Paper No. 34
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte KARSTEN VIDKJAER
____________
Appeal No. 1999-2494
Application No. 08/404,676
____________
ON BRIEF
____________
Before KIMLIN, DELMENDO, and POTEATE, Administrative Patent
Judges.
POTEATE, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the examiner's
refusal to allow claims 22-29, which are all of the claims
pending in the application.
Claim 22 is representative of the subject matter on appeal
and is reproduced below:
Appeal No. 1999-2494
Application No. 08/404,676
2
22. The combination of dough product based on a low temperature
inactive living yeast which generates gas over time, the dough
product containing between 43 and 62% of flour, between 5 and 23%
fat, between 0.01 and 1% of a low temperature inactive strain
yeast that is essentially inactive at temperatures up to 8-12
C,
between 1.0 and 2.5% of sodium chloride or sugar, and between 23
and 33% water, and a closed packaging system containing said
dough product, said packaging system comprising a housing of a
material which is essentially impervious to oxygen, valve means
operatively associated with the housing for allowing exit of gas
from the housing when the gas pressure exceeds a certain minimum
value and which closes when said gas pressure drops below the
minimum value to prevent entry of oxygen into the housing, and a
substantially oxygen-free gaseous atmosphere surrounding the
dough product and additional to any gases generated by said
living yeast.
The references relied upon by the examiner are:
Lorber 1,904,741 Apr. 18, 1933
Richardson et al. 4,120,984 Oct. 17, 1978
(Richardson)
Umina 4,590,078 May 20, 1986
Perry et al. 5,547,694 Aug. 20, 1996
(Perry)
Errass 0 158 590 Oct. 16, 1985
Gysler et al. EP 158590 Jun. 3, 1992
(Gysler)
Domingues et al. W0 93/01724 Feb. 4, 1993
(Domingues)
Reizaburo JP 5-130825 May 28, 1993
1. Claims 22, 23, 26 and 27 stand rejected under 35 U.S.C.
§ 103 as unpatentable over Perry in view of Domingues and further
in view of Gysler and Errass.
Appeal No. 1999-2494
Application No. 08/404,676
3
2. Claims 24 and 25 stand rejected under 35 U.S.C. § 103 as
unpatentable over Perry in view of Domingues and further in view
of Gysler, Errass and Richardson.
3. Claim 28 stands rejected under 35 U.S.C. § 103 as
unpatentable over Perry in view of Domingues and further in view
of Gysler, Errass and Reizaburo.
4. Claim 29 stands rejected under 35 U.S.C. § 103 as
unpatentable over Perry in view of Domingues and further in view
Gysler, Errass, Lorber and Umina.
We reverse as to all four grounds of rejection.
Background
The invention relates to the combination of a dough product
based on a low temperature inactive (LTI) leavened yeast and a
closed packaging system containing the dough product. Claim 22;
Appeal Brief, Paper No. 26, received December 11, 1998, page 2,
paragraph 5. The packaging system comprises a housing which is
essentially impervious to oxygen and valve means to allow exit of
gas generated by the living yeast. Claim 22; specification, page
2, lines 4-10. According to appellant, the dough does not have
to be proofed prior to storage. Specification, page 2, lines 27-
Appeal No. 1999-2494
Application No. 08/404,676
4
28. Thus, the dough may be directly baked without a proofing
step. Id., lines 28-30.
Discussion
The initial burden of presenting a prima facie case of
obviousness rest on the examiner. In re Oetiker, 977 F.2d 1443,
1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). In order to
establish a prima facie case of obviousness, the examiner must
identify a suggestion or motivation to modify the teachings of
the cited references to achieve the claimed invention. In re
Kotzab, 217 F.3d 1365, 1370, 55 USPQ2d 1313, 1316 (Fed. Cir.
2000). The suggestion or motivation to modify a reference may be
implicit from the prior art as a whole rather than expressly
stated. Id. However, regardless of whether the examiner relies
on an express or implicit showing, he must provide reasons for
finding a limitation to be taught or suggested in the references.
Id.
The examiner found that Perry discloses the invention as
claimed with the exception that Perry fails to teach some of the
particulars of the dough composition. Examiner's Answer, Paper
No. 27, mailed March 24, 1999, page 4. The examiner relies on
Appeal No. 1999-2494
Application No. 08/404,676
5
Domingues as disclosing packaged dough compositions containing
(LTI) yeast. Id., page 5. The examiner relies on Gysler and
Errass as further evidence that dough compositions containing
(LTI) yeast are conventional. Id., pages 5 and 6. According to
the examiner, "[t]o modify Perry et al and substitute one
conventional yeast containing dough composition for another
conventional yeast containing dough composition is seen to have
been obvious." Id., page 5.
Appellant's principal argument is that the examiner has
failed to establish the requisite suggestion, teaching or
motivation to replace the dough product of Perry with an (LTI)
yeast based dough product as disclosed in the secondary
references. In particular, appellant points out that in Perry,
the dough proofs in the container. Appeal Brief, page 8
(referencing column 11, lines 46-49 of Perry). While appellant
concedes that Domingues disclose an (LTI) yeast based dough, they
note that Domingues teaches proofing the dough composition before
it is sealed in a container. Appeal Brief, page 8 (referencing
page 4, lines 20-22 of Domingues). See Domingues, page 8, second
full paragraph. With respect to Gysler, appellant points out
that Gysler is directed to a process for preparing (LTI) yeast
and that Gysler only prepared dough for testing purposes.
Appeal No. 1999-2494
Application No. 08/404,676
6
According to appellant, Errass does not disclose dough containing
(LTI) yeast and the only containers utilized for storing Errass'
dough is air-tight transparent plastic films. Id., page 10.
We are in agreement with appellant that the examiner has
failed to establish why one of ordinary skill in the art would
have been motivated to replace the dough in Perry's container,
which is not proofed prior to sealing, with an (LTI) based dough
product such as that of Domingues which is proofed prior to
sealing it in the container. Rather, it appears that the
examiner's proposed combination is based on improper hindsight
reconstruction. See W.L. Gore & Assocs. v. Garlock, Inc.,
721 F.2d 1540, 1553, 220 USPQ 303, 312-13 (Fed. Cir. 1983), cert.
denied, 469 U.S. 851 (1984).
Accordingly, the rejection of claims 22, 23, 26 and 27 under
35 U.S.C. § 103 as unpatentable over Perry in view of Domingues
and further in view of Gysler or Errass is reversed.
Having found that Richardson, Reizaburo, Lorber and Umina
fail to remedy the deficiencies of the primary references for the
reasons set forth in appellant's brief (see pages 12-15), we also
reverse the rejections of claims 24, 25, 28 and 29, which depend
from claim 22.
Appeal No. 1999-2494
Application No. 08/404,676
7
REVERSED
EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
ROMULO H. DELMENDO ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
LINDA R. POTEATE )
Administrative Patent Judge )
LRP/lbg
Appeal No. 1999-2494
Application No. 08/404,676
8
WINSTON & STRAWN
PATENT DEPARTMENT
1400 L STREET, N.W.
WASHINGTON, DC 20005-3502
Lesley
Appeal No. 1999-2494
Application No. 08/404,676
APJ POTEATE
APJ KIMLIN
APJ DELMENDO
DECISION: REVERSED

Prepared: June 18, 2004
Draft Final
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