GENERAL MILLS, INC.

Patent Trials and Appeals Board

Nov 30, 2021

2021000589 (P.T.A.B. Nov. 30, 2021)

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.
14/907,884 01/27/2016 Kaori ANDO 8014US01 5834
106306 7590 11/30/2021
DIEDERIKS & WHITELAW, PLC
4196 Merchant Plaza, #815
Woodbridge, VA 22192
EXAMINER
BEKKER, KELLY JO
ART UNIT PAPER NUMBER
3771
NOTIFICATION DATE DELIVERY MODE
11/30/2021 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):
gmi.mail@dwpatentlaw.com
mail@dwpatentlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte KAORI ANDO, KANAE TSUKAMOTO,
SHOKO KOIZUMI, MASARU HIRAMATSU,
KAZUHIKO SEKINE, MASASHI SAGAWA,
AKIRA SHINOZAKI, JUN ARATANI, and
HAJIME MATSUDA
____________

Appeal 2021-000589
Application 14/907,884
Technology Center 1700
____________

Before JEFFREY T. SMITH, JEFFREY B. ROBERTSON, and
BRIAN D. RANGE, Administrative Patent Judges.

ROBERTSON, Administrative Patent Judge.

DECISION ON APPEAL1

STATEMENT OF THE CASE

Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 5–8, 13, 15, 17–22, 24, 25, 27, 29, 30, and 32–34.

1 This Decision includes citations to the following documents:
Specification filed January 27, 2016 (“Spec.”); Final Office Action mailed
April 22, 2020 (“Final Act.”); Appeal Brief filed July 20, 2020 (“Appeal
Br.”); Examiner’s Answer mailed September 4, 2020 (“Ans.”); and Reply
Brief filed October 30, 2020 (“Reply Br.”).
2 We use the term “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies General Mills, Inc., as the real party in
interest. Appeal Br. 5.
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Appeal Br. 5. Appellant previously appealed the Examiner’s rejection of
then pending claims 5–8, 13, 15, and 17–26, which was affirmed. See
Appeal Br. 5; DECISION ON APPEAL (Appeal 2018-007267) dated May
16, 2019 (“Previous Decision”). We have jurisdiction pursuant to 35 U.S.C.
§ 6(b).
We AFFIRM.
THE INVENTION
Appellants state that the invention relates to a surface patterned frozen
dessert as well as manufacturing methods and apparatus for forming a
surface patterned frozen dessert. (Spec. ¶ 1.)
Claim 5 is representative and reproduced below from the Claims
Appendix to the Appeal Brief:
5. A surface patterned frozen dessert manufacturing method
comprising:
filling ice cream material into a cup and forming an ice cream
layer;
flattening a top surf ace of the ice cream layer;
forming a first sauce layer on a flattened ice cream layer;
forming, at a top layer portion of the first sauce layer, at least
one second sauce layer of a color different from the first sauce
layer, in a circle; and
moving an inscribing member, attached to a support body, so
that a free end thereof is displaced relative to the support body
in a circumferential direction of the circle, along the circle,
wherein the free end of the inscribing member extends into the
second sauce layer and is curved or bent downstream of the
support body such that, during movement of the inscribing
member, any of the first or second sauce layers that adhere to
an upper part of the free end is caused to be less than any of the
first or second sauce layers that adhere to a lower part of the
free end.
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(Appeal Br. 32, Claims App.)
Claim 13 is also independent and recites a similar method of
manufacturing a surface patterned frozen dessert. Appeal Br. 32–33.

REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Bausman US 1,911,875 May 30, 1933
Schoen, Jr.
(“Schoen”)
US 2,509,533 May 30, 1950
Jones US 2005/0106301 A1 May 19, 2005
Swertvaegher et
al.
(“Swertvaegher”)
US 2011/0200718 A1 Aug. 18, 2011
Holmboe et al.
(“Holmboe”)
US 2006/0078638 A1 Apr. 13, 2006
Atsuji et al.
(“Atsuji”)
JPH 10215774 A, English Translation
of Record
Aug. 18, 1998
Yamato et al.
(“Yamato”)
JP 2002142682 A, English Translation
of Record
May 21, 2002
Johan Cooking with Johan –Plate Painting,
Associated Foods Executive Chief,
(uploaded November 2008)
http://www.youtube.com/watch?
v=5bW5HiGotaY)
Nov. 2008
Bishop “Ice Cream Sandwich Cake,”
(uploaded October 2009)
http://www.youtube.com/watch?v=t-
DlwnZdT4s
Oct. 2009
Dictionary.com Definitions of “rod,” “knife,” and “pin”
https://dictionary.com/browse/rod?s=t,
https://dictionary.com/browse/knife?s=t,
https://dictionary.com/browse/pin?s=t
Nov. 7, 2019

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REJECTIONS
1. Claims 5–8, 20–22, 27, 33, and 34 are rejected under 35 U.S.C.
§ 103 as being unpatentable over Jones, Bishop, Johan,
Yamato, Bausman, and Schoen, as evidenced by
Dictionary.com. Final Act. 12–20.
2. Claim 19 is rejected under 35 U.S.C. § 103 as being
unpatentable over Jones, Bishop, Johan, Yamato, Bausman,
Schoen, as evidenced by Dictionary.com, and Atsuji.
Final Act. 20–21.
3. Claim 21 is rejected under 35 U.S.C. § 103 as being
unpatentable over Jones, Bishop, Johan, Yamato, Bausman,
Schoen, as evidenced by Dictionary.com, and Swertvaegher.
Final Act. 21.
4. Claims 13, 17, 18, 24, and 25 are rejected under 35 U.S.C.
§ 103 as being unpatentable over Jones, Bishop, Johan, and
Yamato, as evidenced by Dictionary.com. Final Act. 4–9.
5. Claim 15 is rejected under 35 U.S.C. § 103 as being
unpatentable over Jones, Bishop, Johan, Yamato, as evidenced
by Dictionary.com, and Atsuji. Final Act. 9–10.
6. Claim 30 is rejected under 35 U.S.C. § 103 as being
unpatentable over Jones, Bishop, Johan, Yamato, as evidenced
by Dictionary.com, and Bausman. Final Act. 10–11.
7. Claim 32 is rejected under 35 U.S.C. § 103 as being
unpatentable over Jones, Bishop, Johan, Yamato, as evidenced
by Dictionary.com, and Swertvaegher. Final Act. 11.

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OPINION
At the outset, we observe that independent claims 5 and 13 have been
amended relative to the previous versions of those claims addressed in the
Previous Decision. In particular, claims 5 and 13 have been amended to
recite that the inscribing members are “attached to a support body” and also
to recite further structural features of the inscribing members as expressed
by the “wherein” clauses in each of those claims as discussed further below.
Because the Examiner relied on most of the same prior art references as
applied previously to the claims, we focus our discussion on the application
of the prior art to the amended language of the claims, with the
understanding that we have considered the Examiner’s rejections as a whole
as applied to the claims on appeal.
Appellant presents separate arguments with respect to claims 5, 6, 13,
27, 29, 30, and 32. See Appeal Br. 8–31. Accordingly, we select these
claims as representative for disposition of this appeal. 37 C.F.R.
§ 41.37(c)(1)(iv)(2019).

Rejection 1
The Examiner’s Rejection
Claims 5 and 27
The Examiner’s rejection of claim 5 as unpatentable over the
combination of Jones, Bishop, Johan, Yamato, Bausman, Schoen, and
Dictionary.com appears on pages 12–20 of the Final Action. Relative to the
previous version of the rejection, the Examiner additionally found Bausman
discloses an apparatus for decorating the top of confections using a
decorating tool that may be tilted and flexible to enable movement.
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Id. at 13. The Examiner found Bausman discloses the decorating tool may
have any suitable mounting and that the weight of the decorator may be
relied upon to supply force. Id. The Examiner found Schoen discloses an
attachment for rippling the icing after it has been applied to a cake, where
the attachment is supported with a tool support bar, and may have a weight
for adjusting the depth the tool extends into the confection and a bend
downstream of the tool support bar. Id. The Examiner found Bishop
discloses patterning a surface of an ice cream cake using a knife as an
inscribing member. Id. The Examiner found that in Bishop, a user’s hand
acts a support body holding the knife. Id. at 15–16. The Examiner found
that the free end of the knife is curved and tilted downstream relative to the
support body during movement. Id. at 16. The Examiner found Johan
discloses a skewer that may be used as an inscribing member to enhance the
designs of ice cream sauces. Id. The Examiner found that the skewer
disclosed in Johan encompasses or at least renders obvious a support body (a
hand) with a skewer having a lower rod member point or an area bent or
tapered inwards downstream relative to the support body during movement.
Id. The Examiner found Yamato discloses an inscribing member (10) with
an upper area attached to a nozzle unit (9r) (support body), and a lower free
end that is tapered to a point for inscribing, which the Examiner considered
as tilted downstream relative to the support body. Id. at 17.
The Examiner determined it would have been obvious to modify
Jones’s confectionery cup with sauce to include a sauce pattern to give it a
homemade feel in view of Yamato. Final Act. 17. The Examiner
determined one of ordinary skill in the art would have been motivated to use
a conventional design and method of forming the design as disclosed in
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Bishop, Johan, and Yamato, where the sauce is treated with an inscribing
member free end that has a support body and rod member with a free end
that is curved or bent relative to the longitudinal axis of the support body as
an obvious design choice, and where the choice of design would have been
obvious based on the final appearance desired. Id.
As to the recitation in claim 5 that any of the sauce layers adheres to
an upper part of the free end in an amount less than the lower part of the free
end, the Examiner found that because the upper part may only be a small
fraction of the inscribing member, the inscribing members of the prior art
would reasonably contain less adhered food material at an upper part of the
inscribing member than the lower part of the inscribing member. Final
Act. 17. In addition, the Examiner found that the prior art renders obvious a
curved or bent support member, the same effect would be expected in the
process of the prior art. Id. The Examiner also found that Schoen discloses
an attachment for rippling icing after it has been applied to a cake, the
attachment containing a weight in order to adjust the depth the tool extends
into the confection. Id. Thus, the Examiner determined it would have been
obvious to have adjusted the depth of the inscribing member within the
sauce, and as a result the potential for sauce uptake on the inscribing
member. Id.
As to claim 27, the Examiner found Bausman discloses decorating
tools that may be tilted and flexible to enable movement. Final Act. 18. The
Examiner determined in view of the cited prior art, that it would have been
an obvious design choice to employ an inscribing member having a support
body with a free end tilted downstream relative to the support body during
movement. Id. As a result, the Examiner determined it would have been
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obvious to have used a known decorating member based on the final
appearance desired. Id.

Appellant’s Arguments
Appellant argues the Examiner erred in finding that the user’s hand in
Bishop acts as a support body when it holds the knife, corresponding to the
recited inscribing member. Appeal Br. 12. Appellant contends that the
knife is also not moved so that its free end is displaced relative to the user’s
hand as recited in claim 5. Id. at 12–13. Appellant argues that Johan’s
skewer is not moved such that the free end of the skewer is displaced
relative to the user’s hand and Johan does not disclose a curved or bent free
end. Id. at 13–14. Appellant contends Yamato discloses a linear material to
inscribe a sauce material on an ice cream, which is not displaced relative to
the nozzle portion (support body) and is not curved or bent downstream as
recited in claim 5. Id. at 14–15. Appellant argues the Examiner’s
successive modifications do not sufficiently account for the overall
combination that is proposed, where the Examiner’s combinations destroy
aspects of the prior art, and is contradictory. Id. at 15–18.
As to claim 27, Appellant contends the Examiner has not shown why
it would have been obvious to have departed from the inscribing members in
Bishop, Johan, and Yamato to provide for the free end of the rod member to
be made from an elastic material causing the at least the free end to tilt
downstream during movement as recited in the claim. Appeal Br. 20.

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Issue
As a result of the Examiner’s positions and Appellant’s contentions,
the dispositive issue with respect to this rejection is whether the prior art
discloses different insertion members may be used to pattern frozen desserts
in a manner that renders the manufacturing method recited in claims 5 and
27 obvious.

Discussion
Initially, we agree with Appellant that at least with respect to the
inscribing member being attached to a support body, Bishop and Johan are
largely unnecessary to the rejection of claim 5. Appeal Br. 12. As
Appellant apparently recognizes, Yamato discloses an inscribing member
(10) attached to a support body (9r). Yamato, ¶¶ 17, 25, Fig. 6(b). Thus, the
prior art discloses the use of support bodies to hold inscribing members. See
also Final Act. 13, citing, e.g., Bausman 1, ll. 69–77; Schoen, col. 3, ll. 34–
64; Figs. 1, 3–8. Although Appellant argues the correspondence of hands as
disclosed in Bishop and Johan to the recited “support body” to which the
inscribing member is “attached,” we do not view Appellant’s position as
providing a distinction between a knife or a skewer being held in a hand as
disclosed in Bishop and Johan, and the support body and the inscribing
members disclosed in Yamato, Bausman, and Schoen. Rather, each is a
well-known alternative for providing designs to the surfaces of desserts, and
depends on the type of design desired.
As to whether the prior art renders obvious “moving an inscribing
member . . . so that a free end thereof is displaced relative to the support
body,” we are not persuaded by Appellant’s arguments. Initially, we
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observe that the figures of hands holding a knife or a skewer relied on by
Appellant in the Appeal Brief (pages 13–14) are not actual pictures from
Bishop and Johan. We agree with the Examiner (Ans. 23) that Johan shows
the inscribing member (skewer) is displaced from the hand (support body)
during movement. Johan Figs. pp. 5–7.3 Further, as discussed above, the
prior art provides evidence of the alternative nature of the disclosed
inscribing members, which includes flexible inscribing members. See
Bausman p. 1, ll. 83–90, Figs. 11–15. Therefore, we are of the view that
Appellant’s arguments in this regard and for claim 27 (see Appeal Br. 20)
are unpersuasive of reversible error.
We are also not persuaded that the prior art does not render obvious
an inscribing member that is “curved or bent downstream of the support
body” as recited in claim 5. Although as pointed out by Appellant, there is a
distinctive bend shown in Figure 14 (Appeal Br. 13), we agree with the
Examiner that the claim language is not so limiting, and encompasses
knives, which include a curved blade, and skewers, which are tapered.
Ans. 23. In addition, and consistent with the discussion above, the cited
prior art discloses inscribing members with pronounced bends. See Schoen,
Fig. 6. Such alternative inscribing member shapes do not provide a
distinction between the inscribing members in claim 5 and the prior art. In
this regard, we observe that although Appellant references paragraphs 14
and 15 of the Specification for advantages of the particular configuration and
operation of the inscribing member (Appeal Br. 15), we have not been
directed to disclosures in the Specification that provide persuasive evidence

3 Johan contains no page numbers. Our numbering is based on the
consecutive numbering of pages in the document of record.
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that such advantages would have been unexpected or surprising as opposed
to being known adjustments to the inscribing tools for the particular patterns
desired in working with particular sauces and dessert mediums (ice cream).
As to the limitation in claim 5 that “any of the first or second sauce
layers that adhere to an upper part of the free end is caused to be less than
any of the first or second sauce layers that adhere to a lower part of the free
end,” we are not persuaded by Appellant’s arguments related thereto.
Appeal Br. 16–17. That is, while Appellant contends the Examiner ignores
certain aspects related to this limitation, Appellant does not persuasively
explain why such limitation would not be met by the prior art. Here, we
emphasize that the claim does not specify any particular dimensions with
respect to what constitutes the “free end” of the inscribing member to
particularly distinguish an “upper part” from a “lower part” of the free end.
In view of the breadth of this claim limitation, we are not persuaded that the
Examiner’s application of the prior art thereto is in error.
Appellant’s further contentions that the Examiner has not considered
the effect of the successive modifications of the main reference and
additional arguments for each of individual references (Appeal Br. 15–18)
are not persuasive, as Appellant’s arguments do not consider the prior art as
a whole. In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971) (“[T]he test
for combining references is not what the individual references themselves
suggest but rather what the combination of disclosures taken as a whole
would suggest to one of ordinary skill in the art.”) Rather, Appellant’s
arguments appear to be improperly focused on the bodily incorporation of
each individual reference. In responding to a prima facie case of
obviousness, one cannot show nonobviousness by attacking references
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individually where the rejections are based on combinations of references.
In re Keller, 642 F.2d 413, 426 (CCPA 1981); In re Merck & Co., Inc., 800
F.2d 1091, 1097 (Fed. Cir. 1986).
As a result, we affirm the Examiner’s rejection of claims 5 and 27, as
well as claims, dependent therefrom and not argued separately.

Claim 6
Claim 6 depends from claim 5 and further recites the support body
“includes an oscillation axis.” The Examiner relied on Bausman for
disclosing that a decorating tool may have any suitable mounting and
Schoen for disclosing an attachment for rippling icing of a cake having an
oscillating axis. Final Act. 18–19. The Examiner determined it would have
been obvious to use a known apparatus with a support body for a
confectionary decoration apparatus. Id. at 19.
In view of the Examiner’s findings, we are not persuaded by
Appellant’s argument that there is insufficient explanation or no apparent
reason to support the Examiner’s position that claim 6 would have been
obvious. Appeal Br. 19. As explained above, we are of the view that the
prior art collectively provides sufficient disclosures as to the use of
alternative mechanisms and inscribing members for decorating confections.
It is clear from Bausman that either hands or automated mechanisms can be
used for such decorations. Bausman 1, ll. 69–74. Schoen discloses the use
of an oscillation axis (rod 41) for decorating tools (48). Schoen, col. 3, ll.
34–50; Figs. 6–8. Thus, considering the prior art as a whole, we agree with
the Examiner that it would have been obvious to have used a support body
with an oscillating axis to arrive at the subject matter recited in claim 6,
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particularly considering the known patterns for decorating confections in
circumferential directions. See Yamato, Figs. 7, 8.

Rejections 4 and 6
Rejection 4- Claim 13
As discussed above, claim 13, directed to a method of manufacturing
a surface patterned dessert, is also an independent claim, and recites, in
pertinent part, “moving an inscribing member, attached to a support body…
with at least the free end being tilted downstream, relative to the support
body, during movement.”
Appellant presents similar arguments with respect to claim 13 as
discussed above with respect to Rejection 1. Appeal Br. 23–29. To the
extent such arguments are applicable also to claim 13, such arguments are
unpersuasive for the reasons discussed above. Regarding the above quoted
language from claim 13 of the inscribing member being tilted downstream,
Appellant contends none of Bishop, Johan, or Yamato discloses this feature.
Appeal Br. 26–27. We are not persuaded by this argument for the reasons
discussed below.
The Examiner relied on the combination of Jones, Bishop, Johan,
Yamato, and Dictionary.com to reject claim 13. Final Act. 4–9. In
particular, the Examiner determined that because the inscribing member in
Bishop is curved, the inscribing member in Johan is tapered, and the
inscribing member in Yamato is tapered to a point, each meets the recitation
in claim 13 that the free end is tilted downstream relative to the support
body. Id. at 7–9.
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We agree with the Examiner in this regard. As the Examiner points
out, claim 13 does not require the tilting as initiating from movement of the
inscribing member, but rather refers to the location of the inscribing member
during movement. Ans. 23–24. As a result, we do not discern a distinction
between what claim 13 expressly recites and the inscribing members in the
prior art having the shapes identified by the Examiner.

Rejection 6- Claim 30
Claim 30, which depends from claim 13, recites “wherein the free end
is part of a rod member made of an elastic material which causes the at least
the free end to tilt downstream during movement.”
The Examiner additionally cited to Bausman for disclosing inscribing
members made of elastic materials, and determined it would have been
obvious to have used such inscribing members based on the final appearance
desired. Final Act. 10–11.
Appellant contends the Examiner has not shown why it would have
been obvious to depart from the inscribing members disclosed in Bishop,
Johan, and/or Yamato, because according to the Examiner each of those
members has a free end that is tilted downstream, relative to the support
body during movement, and gives the confectionary of Jones a desirable
homemade feel. Appeal Br. 29–30.
We are not persuaded by Appellant’s arguments for similar reasons as
discussed above for claim 5. In addition, Appellant’s arguments do not
identify reversible error in the Examiner’s position that it would have been
obvious to have used known different inscribing members based on the final
appearance desired. In particular, Appellant has not sufficiently explained
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why it would not have been obvious to choose other known inscribing
members simply because other cited prior art already discloses inscribing
members.
Accordingly, we affirm the Examiner’s rejections of claims 13 and 30.

Rejections 3 and 7
Claims 29 and 32
Claim 29 depends from claim 5, and claim 32 depends from claim 13,
where each additionally recites “wherein the cup has an uppermost top level,
the top surface of the ice cream layer is flattened to below the uppermost top
level to establish a flattened ice cream layer, and the first sauce layer is
formed below the uppermost top level.”

The Examiner’s Rejection
In rejecting claims 29 and 32, the Examiner found Jones is silent as to
a flattened ice cream layer and sauce below the uppermost level of the cup.
Final Act. 11, 21. The Examiner relied on Swertvaegher as disclosing a
packaged ice cream food product with a sauce topping on the surface of the
food, which is below the uppermost level of the sealed packaging cup. Id.
The Examiner determined it would have been obvious to have been
motivated to have formulated the packaged ice cream with the sauce layer
below the surface of the cup to provide a visual homemade feel in the
packaged product, prevent food material from falling out over the side of the
package, or from rubbing off on the lid of the package. Id.
Appellant contends that the Examiner’s modification is contrary to the
Examiner’s rationale that it would have been obvious to have pressed and
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flattened the surface of the ice cream to completely fill the container as
disclosed in Jones. Appeal Br. 22, 30–31.
We are not persuaded by Appellant’s argument as we do not discern
any inconsistencies in the Examiner’s position. Jones discloses that filling
the entire package is for the purpose of “ensuring no air voids remain in any
corners or apertures of the various packages.” Jones ¶ 33. We do not view
this disclosure as foreclosing the Examiner’s well-supported reasoning for
applying the teachings of Swertvaegher, which impacts the top of the cup.
In other words, one of ordinary skill in the art would have recognized that in
combining the prior art, it would have been obvious to have “completely
filled” the containers to below the surface of the container as in Jones to
remove air voids, while allowing for a space to accommodate sauces on the
surface of the ice cream.
Accordingly, we affirm the Examiner’s rejections of claims 29 and 32.
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DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
5–8, 20–22,
27, 33, 34
103 Jones, Bishop,
Johan, Yamato,
Bausman, Schoen,
Dictionary.com
5–8, 20–22, 27,
33, 34

19 103 Jones, Bishop,
Johan, Yamato,
Bausman, Schoen,
Dictionary.com,
Atsuji
19
29 103 Jones, Bishop,
Johan, Yamato,
Bausman, Schoen,
Dictionary.com,
Swertvaegher
29
13, 17, 18,
24, 25
103 Jones, Bishop,
Johan, Yamato,
Dictionary.com
13, 17, 18, 24,
25

15 103 Jones, Bishop,
Johan, Yamato,
Dictionary.com,
Atsuji
15
30 103 Jones, Bishop,
Johan, Yamato,
Dictionary.com,
Bausman
30
32 103 Jones, Bishop,
Johan, Yamato,
Dictionary.com,
Swertvaegher
32
Overall
Outcome
5–8, 13, 15,
17–22, 24, 25,
27, 29, 30, 32–
34

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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). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED