Ex Parte Wilkey

Board of Patent Appeals and Interferences

Jul 28, 2011

10369363 (B.P.A.I. Jul. 28, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/369,363 02/18/2003 Keith E. Wilkey PMC 0036 PA 4759
23368 7590 07/28/2011
DINSMORE & SHOHL LLP
FIFTH THIRD CENTER, ONE SOUTH MAIN STREET
SUITE 1300
DAYTON, OH 45402-2023
EXAMINER
BEKKER, KELLY JO
ART UNIT PAPER NUMBER
1781
MAIL DATE DELIVERY MODE
07/28/2011 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte KEITH E. WILKEY
________________

Appeal 2010-002322
Application 10/369,363
Technology Center 1700
________________

Before CHUNG K. PAK, TERRY J. OWENS, and
BEVERLY A. FRANKLIN, Administrative Patent Judges.

PAK, Administrative Patent Judge.

DECISION ON APPEAL
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner's final decision rejecting claims 1-9 and 14-16. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).
We REVERSE.

STATEMENT OF THE CASE
The subject matter on appeal is directed to a dual deposit stencil
assembly for simultaneously depositing two creams onto cookies and cakes
(see claim 1 and Spec. col. 1, lines 4-6, 18-28). Details of the appealed

Appeal 2010-002322
Application 10/369,363

2
subject matter are recited in representative claims 1 and 14 reproduced from
the Claims Appendix to the Appeal Brief (“App. Br.”) filed May 22, 2009,
as shown below:
1. A dual deposit stencil apparatus for discharging
filler materials onto cookies comprising a stencil tube
having two inlet openings, one communicating with a
source of first filler material, and the other
communicating with a source of second filler material,
said stencil tube having at least a first and a second
discharge opening, the first discharge opening
communicating with the first filler material and the
second discharge opening communicating with the
second filler material, bearing means for supporting the
stencil tube, a rotary stencil carried on the stencil tube,
said rotary stencil having a plurality of third discharge
openings and a plurality of fourth discharge openings
therein, the third discharge openings of said rotary stencil
communicating with the first discharge opening of said
stencil tube and the fourth discharge openings of said
rotary stencil communicating with the second discharge
opening of said stencil tube, a first shutoff valve for
controlling the flow of said one material to the rotary
stencil, a second shutoff valve for controlling the flow of
said second filler material to the rotary stencil, first
actuating means for controlling the first shutoff valve and
second actuating means for controlling the second shutoff
valve, the operation of the first and second actuating
means being coordinated to simultaneously provide first
and second filler material to the third and fourth
discharge openings in the stencil, and wire means
cooperating with the stencil for simultaneously removing
the first and second filler material from the third and
fourth discharge openings for discharging same, said
third and fourth discharge openings being positioned
adjacent each other to permit the discharge of both first

Appeal 2010-002322
Application 10/369,363

3
and second filler materials simultaneously onto each of
said cookies.
14. The method of providing dual deposits of filler
materials on cookie shells comprising the steps of:

feeding a first filler to a stencil means;

feeding a second filler to the stencil means;

discharging the first filler material from a first set
of discharge openings in the stencil means, and
simultaneously discharging the second filler material
from a second set of discharge openings in the stencil
means, each of the discharge openings in the first set
being positioned adjacent an associated respective one of
the discharge openings in the second set;

removing first filler material from each discharge
opening in the first set and simultaneously removing
second filler material from the discharge opening in the
second set that is adjacent the discharge opening in the
first set; and

simultaneously placing first and second filler
material on each cookie shell.

As evidence of unpatentability of the claimed subject matter, the
Examiner relies on the following references at page 4 of the Answer
(“Ans.”) filed August 14, 2009:
Rose 4,469,021 Sep. 1984
Talbot 3,340,824 Sep. 1967
Wight 3,840,311 Oct. 1974
Oakes 2,664,055 Dec. 1953

Appeal 2010-002322
Application 10/369,363

4
Appellant seeks review of the following grounds of rejection set forth
in the Answer:
1) Claims 1-9 under 35 U.S.C. § 103(a) as unpatentable over the
combined disclosures of Rose, Talbot, Wight, and Oakes.
2) Claims 14-16 under 35 U.S.C. § 103(a) as unpatentable over the
combined disclosures of Oakes and Wight.
Claims 1 and 14 has been selected to address the issues on appeal
except where otherwise specified.
RELEVANT FACTUAL FINDINGS, PRINCIPLES OF LAW, ISSUE,
ANALYSIS, AND CONCLUSION
I. Claims 1-9
During examination, the Examiner bears the initial burden of
establishing a prima facie case of obviousness. In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992). To carry that burden, the Examiner relies upon
Rose for a dual deposit stencil apparatus for discharging filler materials onto
cookies comprising a stencil tube having plural valve means (see Ans. 11)
and an adjustment means attached to actuating means (see Ans. 12)1.
However, Appellant contends that Rose does not teach or suggest the
claimed two shutoff valves arranged in such a manner to control the flow of
filler materials to a stencil tube. See App. Br. 14.
Therefore, the dispositive question is: Has the Examiner erred in
finding that Rose teaches or would have suggested plural valve means as

1 The Examiner does not rely upon the disclosures of Oakes, Talbot, or
Wight for the claimed dual deposit stencil apparatus for discharging filler
materials onto cookies comprising a stencil tube having plural valve means
(see Ans. 11-12).

Appeal 2010-002322
Application 10/369,363

5
claimed in the present invention? On this record, we answer this question in
the affirmative.
When a claim recites means-plus-function limitations in accordance
with 35 U.S.C. § 112, ¶ 6, they are interpreted as the corresponding
structures, materials, or acts described in the Specification and equivalents
thereof. In re Donaldson Co., 16 F.3d 1189, 1193 (Fed. Cir. 1994) (en
banc). The manner in which a “means-plus-function” clause is expressed,
either by a function followed by the term “means” or by the term “means
for” followed by a function, is unimportant so long as the modifier of the
term specifies a function to be performed. Ex parte Klumb, 159 USPQ 694,
695 (Bd. App. 1967). Using the term “means” in claims creates a
presumption that the means-plus-function limitations are intended pursuant
to 35 U.S.C. § 112, ¶ 6. Personalized Media Communications, LLC v. ITC,
161 F.3d 696, 703-04n. 9, 10 (Fed. Cir. 1998); TriMed, Inc. v. Stryker Corp.,
514 F.3d 1256, 1259 (Fed. Cir. 2008).
The language of independent claim 1 requires a “first actuating means
for controlling the first shutoff valve and second actuating means for
controlling the second shutoff valve.” The two required “actuating means”
are interpreted as the corresponding structures described in the Specification
or equivalents thereof pursuant to 35 U.S.C. § 112, ¶ 6. See In re Donaldson
Co., 16 F.3d at 1193. The Specification describes first and second actuating
means where each actuating means functions independently of the other.
See Spec. FIG. 6, col. 3, l. 30 - col. 4, l. 30. The first actuating means is
linked only to the first shut-off valve and the second actuating means is
linked only to the second shut-off valve. See Spec. 6, col. 3, l. 30 - col. 4, l.

Appeal 2010-002322
Application 10/369,363

6
30. The first and second actuating means linked to the claimed first shut-off
valve and the claimed second shut-off valve, respectively, are described as
including an actuating cylinder (44, 60) operatively connected to the idler
lever (46, 62) of the lever mechanism (42, 58), which is operatively
connected to the shaft (38, 54) of the shut-off valve means (34, 36) (see
Spec. col. 4, ll. 1-8 and 19-25).
As correctly argued by Appellant at page 14 of the Appeal Brief,
Figure 8 of Rose, relied upon by the Examiner, illustrates a single valve
body (70) having two extending valve segments (80) linked to a single
actuating means to control the flow of fillings in its stencil assembly (see
Rose FIG. 8). Although, at page 11 of the Answer, the Examiner interprets
each extending valve segment (80) on the valve body (70) as a distinct
“shut-off means” corresponding to the claimed first and second shutoff
valves, the Examiner has not shown that such valve segments of Rose
correspond to the claimed first and second shutoff valves linked to an
independent actuating means or the equivalents thereof. (Cf. Rose FIGS. 8,
RC 80 with Spec. FIG. 13, RC 102 and FIG. 15, RC 57.) Nor has the
Examiner supplied any reason or suggestion as to why or how one of
ordinary skill in the art would have been led to modify the stencil assembly
of Rose to provide two valve bodies linked to two different actuating means.
(See Ans. 11.)
Under these circumstances, we concur with Appellant that the
Examiner has erred in finding that Rose teaches or would have suggested a
dual deposit stencil apparatus having the claimed plural valve arrangements
within the meaning of 35 U.S.C. § 103(a)II. Claims 14-15

Appeal 2010-002322
Application 10/369,363

7
Independent claim 14 is a method claim, which requires a stencil
means for providing dual deposits of two filler materials on a cookie
simultaneously. Therefore, “stencil means” in claim 14 is interpreted as
including the stencil apparatus having the plural shut-off valve arrangements
as claimed in independent claim 1, discussed above.
To establish a prima facie case, the Examiner relies upon Oakes for
the claimed stencil means (see Ans. 7, 13), and relies upon Wight for
establishing that shaped and partitioned inserts were well known in the
extrusion art (see Ans. 7, and 13-14). However, Appellant contends that
“there is no stencil in the Oakes device and therefore, Oakes does not and
cannot teach feeding a first filler and a second filler to a stencil means.” See
App. Br. 24.
Therefore, the dispositive question is: Has the Examiner erred in
finding that Oakes teaches or would have suggested a stencil means for
providing dual deposits of two filler materials on cookie shells
simultaneously as claimed in the present invention? On this record, we
answer this question in the affirmative, as well.
As recognized by the Examiner on page 13 of the Answer, a stencil is
“a device for applying a pattern to a surface,” (see Ans. 13). Moreover, the
claimed stencil means for providing dual deposits of two filler materials on a
cookie shell simultaneously as required by claim 14 requires the plural
shutoff valve means discussed above. However, Oakes discloses a tubular
manifold (32) that has a plurality of nozzles (43) attached (see Oakes FIG.
4). The Oakes invention is designed to deposit toppings upon confections
(see, e.g., Oakes col. 1, ll. 1-9, col. 3, ll. 59-63) without regard to patterns or

Appeal 2010-002322
Application 10/369,363

8
shapes of those deposits (see generally Oakes). In other words, Oakes does
not disclose the claimed stencil means for providing dual deposits of two
filler materials on a cookie shell simultaneously.
Accordingly, we concur with Appellant that the Examiner has not
demonstrated that Oakes, alone or in combination with Wight, would have
provided any reason or suggestion which would have led one of ordinary
skill in the art to the claimed method of employing a stencil means for
simultaneously depositing two filler materials onto the same cookie within
the meaning of 35 U.S.C. § 103(a).
ORDER
In view of the foregoing, it is
ORDERED that the decision of the Examiner to reject claims 1
through 9 under 35 U.S.C. § 103(a) as unpatentable over the combined
disclosures of Rose, Oakes, Talbot, and Wight is REVERSED;
FURTHER ORDERED that the decision of the Examiner to reject
claims 14 through 16 under 35 U.S.C. § 103(a) as unpatentable over the
combined disclosures of Oakes and Wight is REVERSED;

REVERSED

sld