2020001488 (P.T.A.B. Feb. 5, 2021)

NESTEC SA

Patent Trials and Appeals BoardFeb 5, 2021

2020001488 (P.T.A.B. Feb. 5, 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. 14/807,383 07/23/2015 Mallory Jensen 13222-US-NP 3931 69099 7590 02/05/2021 Nestle Purina Petcare Global Resources, Inc Checkerboard Square Intellectual Property Patents ST. LOUIS, MO 63164 EXAMINER COX, STEPHANIE A ART UNIT PAPER NUMBER 1791 NOTIFICATION DATE DELIVERY MODE 02/05/2021 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): purinapatentmail@purina.nestle.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MALLORY JENSEN, JOEL DUPUIS, PETER LOBAR, FRANCISCO ROIG, GIANNI DALLATURCA, and MASSIMO SIRONI Appeal 2020-001488 Application 14/807,383 Technology Center 1700 Before LINDA M. GAUDETTE, MICHAEL P. COLAIANNI, and MERRELL C. CASHION, JR., Administrative Patent Judges. GAUDETTE, Administrative Patent Judge. DECISION ON APPEAL1 1 The Appeal record includes the following documents: Specification filed July 23, 2015 (“Spec.”); Non-Final Office Action dated Feb. 12, 2019 (“Non-Final Act.”); Appeal Brief filed July 11, 2019 (“Appeal Br.”); Examiner’s Answer dated Nov. 18, 2019 (“Ans.”); and Reply Brief filed Dec. 18, 2019 (“Reply Br.”). Appeal 2020-001488 Application 14/807,383 2 The Appellant2 appeals under 35 U.S.C. § 134(a), from the Examiner’s decision twice rejecting claims 1, 6–9, 11, 12, and 20–22.3 Appeal Br. 3. We REVERSE but enter a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). CLAIMED SUBJECT MATTER Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A method for making a canned food product comprising a meat emulsion and a gravy, the method comprising: dispensing the meat emulsion into a can; dispensing the gravy into the meat emulsion from a nozzle comprising apertures that are positioned in the meat emulsion, the apertures horizontally-facing relative to the can; removing the nozzle from within the can, and the meat emulsion completely encloses the gravy; and retorting the can in which the meat emulsion completely encloses the gravy at a temperature from about 121 °C to about 128 °C for a time period from about 25 to about 50 minutes, the gravy remains completely enclosed by the meat emulsion after the retorting. Appeal Br. 27 (emphasis added). Of the appealed claims, claims 20 and 21 are also independent. See generally id. at 27–30. Claim 20 is a product-by- process claim that recites “[a] canned food product made by a method 2 The word “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Société des Produits Nestlé S.A. Appeal Br. 3. 3 We have jurisdiction under 35 U.S.C. § 6(b). Appeal 2020-001488 Application 14/807,383 3 comprising” substantially the same steps recited in claim 1. Id. at 29. Claim 21 recites “[a] method for making a canned food product comprising a meat emulsion and a gravy.” Id. REFERENCES The Examiner relies on the following prior art: Name Reference Date Oyler US 2,755,190 July 17, 1956 Dupont US 2001/0041202 A1 Nov. 15, 2001 REJECTIONS 1. Claims 1, 6, 8, 9, 11, 12, and 20 are rejected under 35 U.S.C. § 103 as unpatentable over Dupont. 2. Claims 7, 21, and 22 are rejected under 35 U.S.C. § 103 as unpatentable over Dupont in view of Oyler. OPINION The Appellant’s traversal of the obviousness rejections focuses on differences between the nozzle structures used in Dupont’s and the claimed methods. See generally Appeal Br. 9–17, 20–24. The Appellant argues that “the claimed method which recites ‘a nozzle comprising apertures . . . horizontally-facing relative to the can,’ produces a product which is functionally and structurally distinct from the product of Dupont,” produced by a “single vertically-facing aperture.” Id. at 10, 13; see also id. at 20–21, 23. Based on our analysis of the claims in light of the Specification, we determine that the claims are so indefinite that considerable speculation and Appeal 2020-001488 Application 14/807,383 4 assumptions would be required to ascertain the meaning of claim terms and the scope of the claims. Accordingly, we pro forma reverse the rejections under 35 U.S.C. § 103 and enter the following new ground of rejection. See In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970) (“If no reasonably definite meaning can be ascribed to certain terms in the claim, the subject matter does not become obvious—the claim becomes indefinite.”). We emphasize that this is a technical reversal of the rejection under 35 U.S.C. § 103, and not a reversal based upon the merits of the rejections. New Ground of Rejection Claims 1, 6–9, 11, 12, and 20–22 are rejected under 35 U.S.C. § 112(b) as indefinite. A claim is indefinite under 35 U.S.C. § 112 when it contains words or phrases whose meaning is unclear. In re Packard, 751 F.3d 1307, 1309 (Fed. Cir. 2014). Although “claim language should be read in light of the specification as it would be interpreted by one of ordinary skill in the art,” In re Suitco Surface, Inc., 603 F.3d 1255, 1260 (Fed. Cir. 2010) (citation omitted), “[a]bsent claim language carrying a narrow meaning, the PTO should only limit the claim based on the specification or prosecution history when those sources expressly disclaim the broader definition,” In re Bigio, 381 F.3d 1320, 1325–26 (Fed. Cir. 2004). The USPTO is justified in using a lower threshold showing of ambiguity to support a [determination] of indefiniteness under 35 U.S.C. § 112, . . . because the applicant has an opportunity and a duty to amend the claims during prosecution to more clearly and precisely define the metes and bounds of the claimed invention and to more clearly and precisely put the public on notice of the scope of the patent. Appeal 2020-001488 Application 14/807,383 5 Ex parte Miyazaki, 89 USPQ2d 1207, 1211–12 (BPAI 2008) (precedential). Consequently, during prosecution, “if a claim is amenable to two or more plausible claim constructions, the USPTO is justified in requiring the applicant to more precisely define the metes and bounds of the claimed invention by holding the claim unpatentable under 35 U.S.C. § 112 . . . as indefinite.” Id. at 1211. Claims 1 and 20 recite “dispensing the gravy into the meat emulsion from a nozzle comprising apertures that are positioned in the meat emulsion, the apertures horizontally-facing relative to the can.” Appeal Br. 27, 29 (emphasis added). Claim 21 recites dispensing the second composition into the meat emulsion from a nozzle comprising apertures that are positioned in the meat emulsion, the apertures horizontally-facing relative to the can wherein the dispensing of the gravy into the meat emulsion comprises directing the gravy into a vertical passage of the nozzle and dispensing the gravy through the apertures in a substantially perpendicular direction relative to the vertical passage. Id. at 30 (emphases added). As further discussed below, it is unclear whether the “nozzle” and its “apertures,” which are structural features, limit the scope of the claims. The Specification describes an embodiment of a filler device and its operation with reference to Figures 3–7. See Spec. ¶¶ 67, 73. In the disclosed embodiment, can 300 is moved relative to filling head 230 via lifting plate 250. See id. ¶¶ 74, 76. Specifically, after can 300 is filled with a first composition, can 300 is moved away from filling head 230 such that nozzle 240 is both vertically and horizontally centered within the first composition. Id. ¶ 78. In “[a] non-limiting example . . . shown in FIG. 8,” nozzle 240 Appeal 2020-001488 Application 14/807,383 6 “comprise[s] horizontally-facing apertures 242 that may be positioned in lateral surfaces of the nozzle” such that a second composition may be horizontally injected into the first composition. Id. ¶ 77 (emphasis added). From this description, the ordinary artisan would understand that when using the specific filling device and nozzle arrangement shown and described in Figures 3–8, gravy is directed toward the sides of an upright can. The problem is that we cannot determine whether the claims are limited to dispensing gravy in this manner. The Specification explicitly states that the invention “is not limited to the embodiment of the filler device 200 disclosed herein and shown in the figures; in some embodiments the food product 10 may be made by a different filler device, and the method 100 may be performed by a different filler device.” Id. ¶ 68. The claims recite that the nozzle apertures are “horizontally-facing relative to the can.” But the claims do not specify the can’s axes, the can’s orientation during dispensing, or the location of the opening into which the gravy is dispensed. Moreover, based on the below description of the Figure 2 embodiment, it is unclear whether the nozzle apertures must be horizontally-facing relative to the can during the actual gravy dispensing process. Figure 2 “shows an embodiment of a method 100 by which a canned food product may be made.” See Spec. ¶ 61. In describing this embodiment, the Specification states: a nozzle extending from the filler device may horizontally inject the second composition into the first composition . . . . This horizontal injection preferably comprises injection of the second composition in a direction that is, at least initially, substantially perpendicular relative to the pathway within the nozzle and/or the vertical axis of the can. Id. ¶ 63 (emphases added). Appeal 2020-001488 Application 14/807,383 7 From the emphasized language in paragraph 63, the ordinary artisan would not know, for example, whether “dispensing the gravy” as recited in the claims encompasses dispensing gravy using a modified version of the device of Figures 3–7 in which a nozzle having bottom apertures is positioned to dispense gravy into a side opening in the can, rather than into a top opening. In this modified configuration, the nozzle apertures would be horizontally-facing relative to one side of the can. Although claim 21 recites “dispensing the gravy through the apertures in a substantially perpendicular direction relative to the vertical passage [of the nozzle],” claim 21 does not specify the orientation of the can during this step. Thus, for example, it is unclear whether claim 21 encompasses orienting a can in the device of Figures 3–7 so that lifting plate 250 supports the can’s side and the nozzle dispenses gravy through an opening in the side of the can facing the nozzle. In this modified configuration, the nozzle apertures would be horizontally facing relative to the can’s top and bottom, and gravy would be dispensed toward the top, bottom or sides of the can depending on the aperture locations. We also note that although the Specification defines the term “can” as “a rigid retortable container, for example a metal container such as a metal or metal alloy can, a plastic container, a glass container, and combinations thereof,” it does not provide any limitations as to its shape. Spec. ¶ 47. For example, we find no basis to construe the term “can” as limited to a cylindrical-shaped container. As to the requirement that the method produce a product in which the gravy remains completely enclosed by the meat emulsion after the retorting step, we are not convinced that a particular aperture configuration is necessary to achieve this structure. See Moleculon Research Corp. v. CBS, Appeal 2020-001488 Application 14/807,383 8 Inc., 793 F.2d 1261, 1271 (Fed. Cir. 1986) (explaining that a structural element in a method claim may limit its scope if, for example, a recited step relies on the existence of that structure), abrogated on other grounds by Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665 (Fed. Cir. 2008) (en banc). According to the Specification, a product having a completely enclosed gravy center was not achieved when using a horizontal nozzle alone. Spec. ¶ 103. Rather modification of the can movement cam was also required. See id. Claim 21 is also indefinite due to lack of antecedent basis for the term “the gravy.” DECISION SUMMARY Claims Rejected 35 U.S.C. § Reference(s)/ Basis Affirmed Reversed New Ground 1, 6–9, 11, 12, 20–22 112 Indefiniteness 1, 6–9, 11, 12, 20–22 1, 6, 8, 9, 11, 12, 20 103 Dupont 1, 6, 8, 9, 11, 12, 20 7, 21, 22 103 Dupont, Oyler 7, 21, 22 Overall Outcome: 1, 6–9, 11, 12, 20–22 1, 6–9, 11, 12, 20–22 TIME PERIOD FOR RESPONSE This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of Appeal 2020-001488 Application 14/807,383 9 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. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. . . . Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure § 1214.01. 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. § 41.50(f). REVERSED; 37 C.F.R. § 41.50(b)