NESTEC S.A.

Patent Trials and Appeals Board

Sep 8, 2021

2020005377 (P.T.A.B. Sep. 8, 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.
15/537,475 06/19/2017 Anne-Cecile Agnes Lebleu 3712036-02918 8556
29157 7590 09/08/2021
K&L Gates LLP-Nestec S.A.
P.O. Box 1135
Chicago, IL 60690
EXAMINER
BEKKER, KELLY JO
ART UNIT PAPER NUMBER
1791
NOTIFICATION DATE DELIVERY MODE
09/08/2021 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):
USpatentmail@klgates.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ANNE-CECILE AGNES LEBLEU, PIETRO GOFFREDO
CORSARO, LOIC PREVOST, and MASSIMILLIANO RICCO1
____________

Appeal 2020-005377
Application 15/537,475
Technology Center 1700
____________

Before GEORGE C. BEST, MICHELLE N. ANKENBRAND, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.

KENNEDY, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 12–20. We have jurisdiction under 35 U.S.C.
§ 6(b). We AFFIRM.
BACKGROUND
The subject matter on appeal relates to methods of making layered,
frozen confections comprising a frozen confection (e.g., ice cream),

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. The Appellant identifies the real party in interest as
SOCIÉTÉ DES PRODUITS NESTLÉ S.A. Appeal Br. 2.
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chocolate, and a sauce. E.g., Spec. 1:5–6; Claim 12. Claim 12 is reproduced
below from page 16 (Claims Appendix) of the Appeal Brief:
12. A method for making a layered frozen confection, the method
comprising:
providing sauce, chocolate and frozen confection;
providing a dosing nozzle with outlets for the sauce, the
chocolate and the frozen confection; and
dosing the sauce, the chocolate and the frozen confection
simultaneously through respective outlets of the dosing nozzle
into a container, while the nozzle and the container are rotated
with respect to each other to produce a layered frozen
confectionery product comprising: at least one layer of the frozen
confection, at least one layer of the chocolate and at least one
layer of the sauce; the sauce in the at least one sauce layer has a
viscosity of between 1.2 and 1.7 Pa.s at a temperature below
+47°C and is present in the layered frozen confectionery product
at a thickness of 0.5 to 3.0 mm; the chocolate in the at least one
chocolate layer has a viscosity of between 1.0 and 1.4 Pa.s at a
temperature of +45°C and is present in the layered frozen
confectionery product at a thickness of 0.5 to 3.0 mm; and the
frozen confection in the at least one frozen confection layer has
a thickness of between 3.0 and 7.0 mm and an overrun between
80 and 200, and each of the at least one frozen confection layer
is positioned between one of the at least one chocolate layer and
one of the at least one sauce layer,
wherein the at least one sauce layer, the at least one frozen
confection layer, and the at least one chocolate layer form
substantially helical layers, and each of the substantially helical
layers has less than 10% variation in thickness.
REJECTIONS ON APPEAL
The claims stand rejected under 35 U.S.C. § 103 as follows:
1. Claims 12–18 and 20 over Ricco (WO 2011/086058 A1, published
July 21, 2011), Motoike (JP 2012110268 A, published June 14, 2012)
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Meidenbauer (US 5,215,780, issued June 1, 1993), and Arbuckle (W.S.
Arbuckle, Ice Cream (2d ed. 1972)).
2. Claim 19 over Ricco, Motoike, Meidenbauer, and Altimate
(Altimate Foods webpage dated July 27, 2013, available at
https://web.archive.org/web/20130727121550/http://www.altimatefoods.co
m.au/cones-waffle.html).
ANALYSIS
The Appellant argues the claims as a group. We select claim 1 as
representative, and the remaining claims will stand or fall with claim 1.
After review of the cited evidence in the appeal record and the
opposing positions of the Appellant and the Examiner, we determine that the
Appellant has not identified reversible error in the Examiner’s rejection of
claim 1. Accordingly, we affirm the Examiner’s rejections for reasons set
forth below, in the Final Action dated September 24, 2019, and in the
Examiner’s Answer.
The Examiner finds that Ricco teaches a method of making a layered
frozen confection in which the confection comprises ice cream and at least
one chocolate layer. Ans. 3. The Examiner finds that Ricco teaches that a
sauce layer, such as caramel or fruit sauce, may be used to replace one of the
chocolate layers. Id. The Examiner finds that Ricco discloses that its layers
are “regular,” “helical” layers “which have a controlled thickness.” Id. at 4.
The Examiner finds that, in view of Ricco’s disclosure that the sauce
“replace[s] a chocolate layer, it would have been obvious . . . for the sauce
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layer to be added in a manner that was consistent with the chocolate layer.”
Id. at 3 (emphasis added).
As to the layer thicknesses recited by claim 12, the Examiner finds
that Ricco discloses ice cream, chocolate, and sauce layer thicknesses that
substantially overlap the claimed ranges. Id. at 4.
As to the “overrun” recited by claim 12, the Examiner finds that
Arbuckle teaches or suggests that overruns that overlap the range of
claim 12 are desirable for ice cream products. Id. at 4–5.
As to the viscosities recited by claim 12, the Examiner finds that
Meidenbauer teaches that sauce/coating viscosity is a result-effective
variable that “affects the thickness of the coating and the amount of flavor
contributed by the coating,” and that it would have been obvious to optimize
the viscosity of both the sauce and the chocolate to values that fall within the
scope of claim 1 to achieve desired thickness and flavor. Id. at 5–6. The
Examiner also finds that Motoike teaches a chocolate coating for ice cream
“that is cheaply and simply manufactured and which has a viscosity” that
overlaps the range of claim 12. Id. at 5. The Examiner finds that it would
have been obvious to use Motoike’s viscosity for Ricco’s chocolate. Id.
In view of those findings, the Examiner concludes that the subject
matter of claim 1 would have been obvious to a person of ordinary skill in
the art. Id. at 4–6.
The Appellant first argues that the Examiner’s finding that Ricco
suggests applying a sauce layer in a manner similar to application of a
chocolate layer “is merely a conclusory statement.” Appeal Br. 7.
That argument is not persuasive. Consistent with the Examiner’s
findings, Ricco discloses that a chocolate layer may “be replaced by”
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another material such as caramel sauce. Ricco at 5:23–25. The Examiner
finds that Ricco’s disclosure that the sauce is a “replace[ment]” for a
chocolate layer suggests that “the sauce layer [should] be added in a manner
that was consistent with the chocolate layer.” Ans. 3. The Appellant’s
limited argument fails to identify reversible error in that determination.
The Appellant next argues that a person of ordinary skill in the art
would not have had a reasonable expectation of success in combining
Meidenbauer with Ricco because Meidenbauer contemplates use of
“conventional ice cream equipment” from 1990 or earlier (the filing date of
Meidenbauer), whereas Ricco has a priority date of 2010 and would not be
using the same “conventional ice cream equipment” contemplated by
Meidenbauer. Appeal Br. 8–9.
That argument is unpersuasive for at least two reasons. First, the
Examiner relies on Meidenbauer for the general proposition that viscosity
affects the thickness and flavor profile of a coating used on an ice cream
product. The exact nature of the equipment that either Meidenbauer or
Ricco uses is not particularly relevant to that finding, absent a showing that
Ricco’s equipment would be incapable of utilizing certain viscosities.
Second, the Appellant provides no reason to believe that there is any
material difference between Meidenbauer’s “conventional” ice cream
making equipment and Ricco’s ice cream making equipment. The mere fact
that Meidenbauer precedes Ricco by 20 years does not indicate that
materially different equipment would be in use, or that any differences in
equipment would have any relevance to suitable viscosities for ice cream
sauces.
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The Appellant also argues that “Ricco does not even mention the
viscosity of any ingredient.” Appeal Br. 9.
As set forth above, the Examiner does not rely on Ricco for a
disclosure of viscosities, but the Appellant’s argument actually undermines
the Appellant’s position because Ricco’s failure to specifically disclose
viscosities for its ingredients is consistent with the Examiner’s finding that
optimization of ingredient properties such as sauce viscosity would have
been well within the ordinary level of skill in the art.
The Appellant next argues that there is no teaching or suggestion that
the viscosity Motoike discloses could be used with Ricco’s apparatus.
Appeal Br. 9.
That argument is not persuasive. Motoike discloses chocolate
coatings for cakes and confectionaries, including ice cream confectionaries,2
and discloses known suitable viscosities for the chocolate coating. The
Examiner’s proposal is simply the use of a chocolate coating viscosity
known to be suitable for use with confectionaries (i.e., Motoike’s) with the
confectionary of Ricco, which does not expressly disclose a coating
viscosity, suggesting that selection of such a viscosity (from, for example,
those known in the art to be suitable) would have been well within the
ordinary level of skill in the art. The use of known elements according to
their established functions typically does not result in nonobvious subject
matter. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (“The
combination of familiar elements according to known methods is likely to be

2 The Appellant acknowledges but does not dispute the Examiner’s finding
that “both Ricco and Motoike teach the combination of chocolate with ice
cream.” Appeal Br. 9.
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obvious when it does no more than yield predictable results.”). In any event,
even if a person of ordinary skill in the art would not have had reason to use
Motoike’s viscosity with Ricco’s chocolate, the Examiner’s optimization of
result-effective variables rationale, discussed above, provides an
independent reason that the claimed viscosity ranges do not patentably
distinguish claim 12 from the prior art. See Ans. 6.
The Appellant next argues that “there is no reason whatsoever that a
chocolate layer having a thickness of 0.5 to 3.5 mm would necessarily have
the viscosity disclosed in Motoike.” Appeal Br. 10 (emphasis added).
That argument is unpersuasive because it misunderstands the
Examiner’s rejection. The Examiner does not find that all chocolate layers
having a thickness between 0.5 and 3.5 mm necessarily would have
Motoike’s viscosity. Ans. 5. The Examiner finds that it would have been
obvious to modify Ricco’s chocolate so that it has a viscosity, such as
Motoike’s, known to be suitable for chocolate coatings applied to
confectionaries. Id. The Examiner does not rely on inherency. Id.
The Appellant also argues that “there is no teaching in the record
about the thickness and viscosity of a sauce layer.” Appeal Br. 10.
That argument is unpersuasive because, as explained above, the
Examiner finds that Ricco teaches or suggests thicknesses of both chocolate
and sauce layers, and that Meidenbauer’s disclosures concerning the impact
of viscosity on layer thickness and flavor are applicable to both sauces and
chocolate.
In the Reply Brief, the Appellant argues for the first time that the
Examiner has not adequately established that Ricco teaches or suggests
“substantially helical layers ha[ving] less than 10% variation in thickness,”
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as recited by claim 12. We decline to consider that argument because it is
untimely. See 37 C.F.R. § 41.41(b)(2).
We have carefully considered the Appellant’s arguments, and we are
not persuaded of reversible error in the Examiner’s rejection. See In re
Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t has long been the Board’s
practice to require an applicant to identify the alleged error in the examiner’s
rejections . . . .”).
CONCLUSION
In summary:
Claim(s)
Rejected
35
U.S.C. § References Affirmed Reversed
12–18, 20 103 Ricco, Motoike, Meidenbauer, Arbuckle 12–18, 20
19 103
Ricco, Motoike,
Meidenbauer, Arbuckle,
Altimate
19
Overall
Outcome 12–20
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED