Ex Parte Zulman et alDownload PDFPatent Trial and Appeal BoardDec 12, 201613666182 (P.T.A.B. Dec. 12, 2016) Copy Citation 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. 9841-5 3386 EXAMINER PACKARD, BENJAMIN J ART UNIT PAPER NUMBER 1612 MAIL DATE DELIVERY MODE 13/666,182 11/01/2012 20792 7590 MYERS BIGEL, P.A. PO BOX 37428 RALEIGH, NC 27627 12/12/2016 Richard C. Zulman 12/12/2016 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 PATENT TRIAL AND APPEAL BOARD Ex parte RICHARD C. ZULMAN, ANTHONY J. BELL, and MARK BRIAN JONES1 Appeal 2015-000972 Application 13/666,182 Technology Center 1600 Before ERIC B. GRIMES, JEFFREY N. FREDMAN, and KRISTI L. R. SAWERT, Administrative Patent Judges. GRIMES, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134 involving claims to a food product and a method of making it, which have been rejected as anticipated. We have jurisdiction under 35 U.S.C. § 6(b). We reverse and enter new grounds of rejection based on obviousness. 1 Appellants identify themselves as the Real Parties in Interest. (Appeal Br. 1.) Appeal 2015-000972 Application 13/666,182 STATEMENT OF THE CASE Claims 1—7 are on appeal. Claims 1,3, and 5 are illustrative and read as follows: 1. A food product for carrying and delivering a nutraceutical or pharmaceutical or both comprising an edible wafer outer layer and an inner edible nonaqueous filling layer comprising a nutraceutical or pharmaceutical or both. 3. The food product according to Claim 1, wherein the outer layer is in the form of a sandwich comprising two or more layers of edible wafer. 5. A method of forming a food product for carrying and delivering a nutraceutical or pharmaceutical or both comprising forming an edible wafer outer layer in a predetermined shape, filling the edible wafer layer with an edible nonaqueous filling comprising a nutraceutical or pharmaceutical or both, and optionally cutting the filled wafer edible outer layer into an end shape of the food product. The claims stand rejected as follows: Claims 1, 2, and 4—7 under 35 U.S.C. § 102(b) as anticipated by Buriani2 with evidence provided by Ogbolu3 (Non-Final Action4 2) and Claims 1, 3—5, and 7 under 35 U.S.C. § 102(b) as anticipated by Abboud5 with evidence provided by Feldman6 (Non-Final Action 2). 2 Buriani et al., WO 01/93687 Al, Dec. 13, 2001. 3 Ogbolu et al., In Vitro Antimicrobial Properties of Coconut Oil on Candida Species in Ibadan, Nigeria, 10 J. Medicinal Food 384—87 (2007). 4 Office Action mailed Aug. 22, 2013. 5 Abboud, US 5,939,127, Aug. 19, 1999. 6 Susan R. Feldman, Sodium Chloride, Kirk-Othmer Encyclopedia of Chemical Technology 1-27 (2011) 2 Appeal 2015-000972 Application 13/666,182 I The Examiner has rejected all of the claims on appeal as anticipated by either Buriani (as evidenced by Ogbolu) or Abboud (as evidenced by Feldman). The same issue is dispositive for both rejections. The Examiner finds that Buriani discloses a tube-shaped wafer with a non-aqueous filling that contains coconut oil, which Ogbolu discloses to have antifungal properties, making it a “pharmaceutical.” (Non-Final Action 2.) Similarly, the Examiner finds that Abboud discloses Oreo™ wafers having a cream filling that comprises salt, which Feldman discloses to be a mineral that is essential to life in all animals, making it a “nutraceutical” under the Specification’s definition. (Id. at 2—3.) Appellants argue that the Examiner’s claim interpretation is unreasonably broad: Using the Examiner’s logic anything ingested would provide an active. Thus the flour, flavoring agents, sugars, oils, taste enhancers, etc., that go into the edible wafer outer layer would be recognized by one skilled in the art as a nutraceutical or pharmaceutical as such items provide broad substance to one’s diet and thus according to the Examiner’s logic are beneficial. These ingredients, including coconut oil, are not well known to be nutraceuticals or pharmaceuticals. (Appeal Br. 4.) Similarly, with respect to Abboud, Appellants argue that the Examiner again is using highly convoluted logic to reach the conclusion that salt “may” be a nutraceutical or pharmaceutical. Salt is not an active ingredient and even if regarded as active, its activity is often undesirable, e.g., raising blood pressure. Again, using the Examiner’s logic anything ingested would provide an active. Salt is not a well known nutraceutical or pharmaceutical. (Id. at 5.) 3 Appeal 2015-000972 Application 13/666,182 We agree with Appellants that the Examiner’s claim interpretation is broader than is consistent with the Specification. The Examiner relies on the Specification’s definitions of “nutraceutical” and “pharmaceutical,” which read as follows: “As used herein ‘nutraceutical’ supplement include any nutrients that may provides [sic] health and medical benefits, including the prevention and treatment of disease” (Spec. 121) and “‘pharmaceutical’ is defined as any chemical substance intended for use in the medical diagnosis, cure, treatment, or prevention of disease” {id. 123). It is true that these are very broad definitions. However, the Specification also states that [t]he filling . . . may include sugars, including, but not limited to, confectioner sugar, turbinado, evaporated cane sugar, fructose, unsulfured molasses, date sugar, brown rice syrup, brown sugar, and/or stevia, salt, gelling agents such as pectin, gum, or gelatin, fats such as butter, oils, sugar substitutes such as isomalt, and flavoring agents. {Id. 120, emphasis added.) Thus, the Specification states that the filling can contain standard ingredients such as salt and oils and, in addition, contains a nutraceutical or pharmaceutical agent. In our view, interpreting “nutraceutical” to include salt, and interpreting “pharmaceutical” to include hydrogenated coconut oil, is not consistent with the use of those terms in the Specification. We therefore reverse the rejections under 35 U.S.C. § 102(b). 4 Appeal 2015-000972 Application 13/666,182 II Under the provisions of 37 C.F.R. § 41.50(b), we enter the following new grounds of rejection: A. Claims 1, 2, 5, and 6 are rejected under 35 U.S.C. § 103(a) as obvious based on Buriani and Overly,7 and B. Claims 1 and 3 are rejected under 35 U.S.C. § 103(a) as obvious based on Abboud and Overly. Buriani discloses a filled snack comprising an edible wafer outer layer and a non-aqueous (“substantially anhydrous”) filling. (Buriani, Abstract.) Similarly, Abboud discloses a cookie filling composition with low water activity and no added water. (Abboud, Abstract.) Abboud exemplifies filling Oreo™ cookie wafers with its filling. (Id. at 7:55 to 8:40.) Overly discloses a coated chewable product having a soft confectionary core containing a particulate active, such as an antacid. (Overly | 6.) Overly suggests that the “particulate active may include vitamins, analgesics and antipyretics in lieu of or addition to particulate antacid.” (Id.) It would have been obvious to include a particulate active such as an antacid, a vitamin, an analgesic, or an antipyretic in the filling of either Buriani or Abboud, in order to provide a nutritional benefit (in the case of a vitamin) or to provide a more pleasant-tasting dosage form (in the case of an analgesic or antipyretic). Appellants’ Specification states that nutraceuticals 7 Overly, III et al., U.S. 2009/0011079 Al, Jan. 8, 2009. Overly is identified in Appellants’ Specification (| 4) and was cited in an Information Disclosure Statement filed Nov. 1, 2012. 5 Appeal 2015-000972 Application 13/666,182 include vitamins and that pharmaceuticals include NSAIDs, which are analgesics and antipyretics. (Spec. 22, 23.) With regard to claim 5, Buriani discloses a method comprising forming an edible wafer outer layer in a predetermined shape, and then filling it with a non-aqueous filling. (Buriani, 6:21 to 8:11.) With regard to claims 2 and 6, Buriani’s product is a hollow molded-shaped tube. {Id., Figs. 1—3.) SUMMARY We reverse the rejections under 35 U.S.C. § 102(b) but enter new grounds of rejection under 35 U.S.C. § 103(a). We leave it up to the Examiner to determine whether the new grounds should be applied to claims 4 and 7. TIME PERIOD FOR RESPONSE This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” Section 41.50(b) also provides: When the Board enters such a non-final decision, the appellant, within two months from the date of the decision, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. The new ground of rejection is binding upon the examiner unless an amendment or new Evidence not previously of Record is made which, in the opinion 6 Appeal 2015-000972 Application 13/666,182 of the examiner, overcomes the new ground of rejection designated in the decision. Should the examiner reject the claims, appellant may again appeal to the Board pursuant to this subpart. (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. The request for rehearing must address any new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which rehearing is sought. Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure § 1214.01. REVERSED 37 C.F.R. $ 41.50(b) 7 Copy with citationCopy as parenthetical citation