Ex Parte Whitehouse et al

Board of Patent Appeals and Interferences

Jan 4, 2008

10465662 (B.P.A.I. Jan. 4, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ANDREW S. WHITEHOUSE,
JOHN H. WALKER AND
RICHARD J. CRAGGS
____________

Appeal 2007-3150
Application 10/465,662
Technology Center 1700
____________

Decided: January 4, 2008
____________

Before CHUNG K. PAK, CATHERINE Q. TIMM, and JEFREY T. SMITH,
Administrative Patent Judges.

TIMM, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1, and 3-7. We have jurisdiction under 35 U.S.C.
§ 6(b).
Appeal 2007-3150
Application 10/465,662

We AFFIRM.
I. BACKGROUND
The invention relates to a 1 to 2.75 gram filled confectionary product.
Claim 1 is illustrative of the subject matter on appeal:
1. A filled confectionery product having a weight from 1 to 2.75 g
and comprising a shell-molded fat-containing confectionery material with a
viscous confectionery filling.

Appellants request review of the rejections maintained under
35 U.S.C. § 103(a), i.e.: (1) the rejection of claims 1, 3, 6, and 7 over
Appellants’ Prior Art Admission (Specification 1:13-16) or British Patent
769,092 issued to S. A. Macchine Industria Dolciaria Carle & Montanari
(published Feb. 27, 1957) (Macchine) in view of Bites Candies – Hershey’s,
hersheys.com/products/details/bites.asp (accessed Jan. 24, 2005); and (2) the
rejection of claims 4 and 5 over the above references further in view of
EP 0 775 448 A1 issued to Jury (published May 28, 1997).
With respect to the rejection of claims 1, 3, 6, and 7, Appellants argue
the claims together with the exception of claim 7. Appellants do not
separately argue the rejection of claims 4 and 5. We, therefore, select claims
1 and 7 as representative for deciding the issues on appeal.
II. DISCUSSION
The issues on appeal arising from the contentions of Appellants and
the Examiner are: (1) Based on the totality of the evidence of record, would
it have been obvious to one of ordinary skill in the art to make a filled
confectionary product of the 1 to 2.75 g weight required by claim 1; and (2)
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would it have been obvious to that ordinary artisan to package a plurality of
the those filled confectionary products together as required by claim 7?
We answer both questions in the affirmative.
A preponderance of the evidence of record supports the following
Findings of Facts (FF):
1. According to Appellants’ Specification, “[b]ite-sized confectionery
products usually have a weight of about 3-6g” and “[m]any chocolate-
coated bite-sized confectionery products contain a center which
contrasts with the chocolate in terms of taste and texture, e.g. caramel,
fondant or praline and can be made on a shell molding line.”
(Specification 1:13-16).
2. Shell molding is a process of injecting chocolate into a mold, passing
the mold through a cooling tunnel to set the outside of the chocolate,
turning the mold upside down to drain the liquid chocolate from the
center to leave a chocolate shell coating the mold cavities, turning the
mold back over, filling the center of the chocolate shell with filling,
applying a layer of chocolate over the top of the filling to form the
bottom of the confectionery product, cooling, and demolding
(Specification 1:16-24).
3. “When filling the shell, it is important that the center material does
not melt the chocolate. There are few problems with fondants or fat-
based fillings such as pralines, which can be relatively fluid at about
30°C, but one of the main difficulties with caramel is that it tends to
stretch out in a tail that does not easily break under its own weight and
gravity.” This is known as “tailing” and it causes problems with
dosing, product weight and shape, product aesthetics and quality,
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shelf-life, equipment hygiene, and equipment function (Specification
1:25 to 2:4).
4. Claim 1 encompasses filled confection products with “viscous
confectionery filling.”
5. “[T]he term ‘viscous’ for the viscous confectionery filling, means a
filling which is pumpable at the time it is deposited. It may also be
flowable or pourable and may be a liquid or a semi-liquid with a
minimum viscosity of 0.05Pa.s at 30°C, i.e. the viscosity of cocoa
butter at 30°C.” (Specification 3:13-16).
6. According to the Specification, “viscous confectionery fillings”
include “toffee, caramel, hydrocolloid, Turkish delight, coconut paste,
yogurt, mousse, fondant, praline, marshmallow, nougat, peanut butter,
truffle, marzipan, jelly or any mixture of two of more thereof.”
(Specification 3:18-20).
7. Macchine discloses that shell molding for the production of
“chocolate tablets and small chocolate articles filled with creams or
the like” was known in the art (Macchine, p. 1, ll. 9-19).
8. The word “creams,” refers to fondants or similar confectionary fillings
within the chocolate. (“Confectionery fillings” are “products such as
fondants or cremes which may contain nuts, flavorings, or other
ingredients and are used to fill sugar confectionery or bakery
products,” Dictionary of Food Science and Technology (Compiled
and edited by The International Food Information Service Dictionary
2005) available at
knovel.com/knovel2/Toc.jsp?BookID=1404&VerticalID=0; see also
“cream,” dictionary. com unabridged v 1.1 (accessed Dec. 19, 2007):
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“usually, creams, a soft-centered confection of fondant or fudge
coated with chocolate.”).
9. Macchine does not disclose the weight of the “small chocolate
articles,” nor does Macchine disclose any limitations on the weight of
the “small chocolate articles” produced using the shell molding
process.
10. Hershey’s Bites are filled confectionary products having a viscous
confectionery filling such as peanut butter covered in chocolate (Bites,
pp. 1-2; Ans. 3).
11. An individual Reese’s Peanut Butter Bite has a weight of about 2.5 g
(Bites, serving size information; Ans. 3).
12. Bites are marketed as “perfect for munching” (Bites, p. 1).
13. Bites are not shell molded, they are made using a panning process
(Br. 11; Ans. 4).
14. Tailing was a known problem with a known solution at the time of
the invention. For instance, there was known a method of cutting the
tail with a pulse of steam or compressed air issued through the filling
nozzle (Specification 2:5-9 citing GB 2,026,378).
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727,
1734 (2007). The question of obviousness is resolved on the basis of
underlying factual determinations including (1) the scope and content of the
prior art, (2) any differences between the claimed subject matter and the
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prior art, (3) the level of skill in the art, and (4) where in evidence, so-called
secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18
(1966). See also KSR, 127 S. Ct. at 1734 (“While the sequence of these
questions might be reordered in any particular case, the [Graham] factors
continue to define the inquiry that controls.”).
“When a work is available in one field of endeavor, design incentives
and other market forces can prompt variations of it, either in the same field
or a different one. If a person of ordinary skill can implement a predictable
variation, § 103 likely bars its patentability.” KSR, 127 S. Ct. at 1740. In
analyzing the question of obviousness it is proper to take into account the
interrelated teachings of the prior art, the effects of demands known to the
design community or present in the market place, and the background
knowledge possessed by the ordinary artisan. KSR, 127 S. Ct. at 1740-41.
Moreover, it is also proper to take into account the inferences and creative
steps that a person of ordinary skill in the art would employ. KSR, 127
S. Ct. at 1741.
Applying the preceding legal principles to the Factual Findings in the
record of this appeal, we determine that the Examiner has established a
prima facie case of obviousness.
There is no question here that filled confectionary products weighing
from about 3 to 6 g were known in the art, Appellants admit as much in the
Specification (FF 1). There is also no question that shell molding was used
to make small and bite-sized filled confectionaries (FF 1 and 7). The
Examiner has also provided evidence that there was a market demand for
filled confectionaries of sizes of, for instance, 2.5 g, the size of Hershey’s
Bites (FF 10-12). As the prior art evidences a need for filled confectionaries
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within the claimed size range, the question is: Was it within the capability
of one of ordinary skill in the art to make shell molded confectionaries in the
size range of 1 to 2.75 g? See KSR, 127 S. Ct. at 1740 (“if a technique has
been used to improve one device, and a person of ordinary skill in the art
would recognize that it would improve similar devices in the same way,
using the technique is obvious unless its actual application is beyond his or
her skill”).
As an initial matter, the evidence cited by the Examiner supports a
finding that making shell molded confectioneries was within the capabilities
of the ordinary confectionery manufacturer. Contrary to the contentions of
Appellants (Br. 14), Macchine does not teach away from products in the 1 to
2.75 g weight range, Macchine is merely silent as to the weight of the “small
chocolate filled articles.” Under the circumstances, it is presumed that
adjustment of the size and weight would have been within the capabilities of
those of ordinary skill in the art, there being any number of workable or
optimal solutions, and it is well settled that where patentability is predicted
on such a routinely varied parameter the burden is on the applicant to
establish with objective evidence that the change is critical. In re Woodruff,
919 F.2d 1575, 1578 (Fed. Cir. 1990); In re Aller, 220 F.2d 454, 456 (CCPA
1955); In re Troiel, 274 F.2d 944 (CCPA 1960).
In the present case, Appellants have cited no objective evidence which
establishes criticality. Rather, Appellants rely upon the opinion of one of the
inventors, Whitehouse, that “the process and apparatus taught by Macchine
would not be capable of producing the filled confectionary products having a
weight from 1 to 2.75 g.” (Whitehouse Affidavit ¶ 6). We do not find this
opinion to be persuasively supported such that the evidence of
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nonobviousness outweighs the evidence of obviousness when all the
evidence is considered together.
The opinion of Whitehouse is, at least in part, premised on the belief
that “[a] typical confectionery cream is not a viscous confectionery filling,”
(Whitehouse Affidavit ¶ 6). But this statement ignores the breath of the
claim language. We determine that Appellants’ claim language, “viscous
confectionery filling” encompasses “creams” as that word is used in
Macchine. The word “cream” as used in the context of filled chocolates is
understood to refer to fondants or similar confectionery fillings (FF 8), and,
according to Appellants’ Specification, such fondants and similar
confectionery fillings are “viscous confectionery fillings” as those words are
used in claim 1 (FF 4-6).
It is because, according to the Whitehouse Affidavit, that Macchine
does not deal with the problem of tailing, that Macchine would not be
capable of producing 1 to 2.75 g confectionery products. But Appellants’
Specification indicates that there are few problems with viscous
confectionery fillings such as fondants and pralines, rather, the tailing
problem occurs with caramels (FF 3). There is no convincing evidence that
tailing would have been a problem with the “creams,” i.e., fondants, of
Macchine when using the apparatus to form 1 to 2.75 g filled chocolates.
Appellants’ evidence is not commensurate in scope with the claims. See
In re Greenfield, 571 F.2d 1185, 1189 (“[O]bjective evidence of
non-obviousness must be commensurate in scope with the claims which the
evidence is offered to support.”).
We also note that Appellants’ Specification indicates that tailing was a
known problem with known solutions (FF 14). In an obviousness assess-
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ment, skill is presumed on the part of the artisan, rather than the lack thereof.
In re Sovish, 769 F.2d 738, 743 (Fed. Cir. 1985). The evidence as a whole
indicates that those of ordinary skill in the art would understand how to
modify the conventional shell molding process and apparatus, such as that
taught by Macchine, to prevent tailing. The Whitehouse opinion does not
adequately take into account the skill of the ordinary artisan.
After reviewing the totality of the evidence, we determine that the
evidence of record supports the Examiner’s determination that it would have
been obvious to one of ordinary skill in the art to make a filled confectionery
product of the 1 to 2.75 g weight required by claim 1.
With regard to claim 7, the issue is: Would it have been obvious to
that ordinary artisan to package a plurality of the filled confectionery
products together as required by claim 7?
We answer in the affirmative because the evidence (Bites) shows it is
conventional to so package such products, and there is no convincing
evidence that sticking due to the tailing problem would have existed for the
“creams” of Macchine, or if tailing were a problem that those of ordinary
skill in the art would not have overcome it using known methods and
apparatus.
Upon further prosecution, the Examiner should consider a further
rejection relying upon US 6,302,96 B1 issued Oct. 16, 2001 to Nelson et al.,
a patent describing the method and apparatus of depositing confectionery
products used by Appellants (Specification 2:10-22). Nelson is prior art
under 35 U.S.C. § 102(e), and Appellants have not yet removed Nelson as
prior art, e.g., by satisfying 35 U.S.C. 103(c).
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III. CONCLUSION
Based on the totality of record, including due consideration of the
Appellant’s arguments, we determine that the preponderance of evidence
weighs most heavily in favor of obviousness within the meaning of
35 U.S.C. § 103.
IV. DECISION
We affirm the Examiner’s decision rejecting the claims on appeal
under 35 U.S.C. § 103.
V. TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED

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