Alice O'Donnell Kiely

Patent Trials and Appeals Board

May 19, 2021

2020002962 (P.T.A.B. May. 19, 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.
11/634,624 12/06/2006 Alice Mary O'Donnell Kiely 5346
7590 05/19/2021
Alice O. Kiely
71 Stonewall Court
Yorktown Heights, NY 10598
EXAMINER
CHAWLA, JYOTI
ART UNIT PAPER NUMBER
1792
MAIL DATE DELIVERY MODE
05/19/2021 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 ALICE MARY O’DONNELL KIELY

Appeal 2020-002962
Application 11/634,624
Technology Center 1700
____________

Before TERRY J. OWENS, MICHAEL P. COLAIANNI, and
DONNA M. PRAISS, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s
decision to reject claims 41–54, 56, 57, and 59–64. We have jurisdiction
under 35 U.S.C. § 6(b).2,3 We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Alice Mary
O’Donnell Kiely. Appeal Br. 3.
2 Our decision in this appeal is limited to a consideration of the
Examiner’s pending rejections. See Manual of Patent Examining
Procedure (“MPEP”) § 1201 (9th ed. Rev. 10.2019, rev. June 2020). As a
consequence, we will not address other issues discussed by Appellant
relating to, for example, whether the claims are enabled, entry of claim
amendments, etc.
3 This application was the subject of Appeal No. 2013-000620 in which the
Board affirmed the Examiner’s rejections.
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Appellant’s invention is directed to a comestible kit or set for the
creation of one or more assembly configurations (Claims 41, 51, and 57).
The configurations comprise a torso comprising a selection from the group
comprising a person, an animal, an animated character, a creature, an alien, a
toy, a structure, a vegetable, and a fruit, or an appendage comprising a
selection from the group comprising a person, an animal, an animated
character, a creature, an alien, a toy, a structure, a vegetable, and a fruit
(Claim 41).
Claim 41 is representative of the subject matter on appeal:
A comestible kit for the creation of one or more assembly
configurations comprising:
(a) comprising a torso comprising a processed comestible
generally shaped to represent a torso comprising a selection
from the group comprising a person, an animal, an animated
character, a creature, an alien, a toy, a structure, a vegetable,
and a fruit, or
(b) comprising an appendage comprising a comestible
generally shaped to represent an appendage comprising a
selection from the group comprising a person, an animal, an
animated character, a creature, an alien, a toy, a structure, a
vegetable, and a fruit.

Appellant appeals the following rejections:
1. Claims 41–54, 56, 57, and 59–64 are rejected under 35 U.S.C.
§ 112, second paragraph, as failing to point out and particularly
claim the subject matter which applicant regards as the invention.
2. Claims 41–46, 48–54, 56, and 61–64 are rejected under 35
U.S.C. § 102(b) as anticipated over Moreau (US 4,943,063, iss.
July 24, 1990).
3. Claim 47 is rejected under 35 U.S.C. § 103(a) as unpatentable
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over Moreau.
4. Claims 57, 59, and 60 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Moreau in view of Babos (US 4,431,395, iss.
Feb. 14, 1984).

FINDINGS OF FACT & ANALYSIS
Rejection (1): Indefiniteness
Claim 41
Appellant argues the Examiner’s rejection of claim 41 is improperly
based upon the claim being open-ended, which is an insufficient basis for the
rejection because breadth is not indefiniteness (Appeal Br. 9). This same
argument is applied to claims 49, 51, 54, and 57 (Appeal Br. 11–12).
Appellant argues that use of the phrase “selection from the group
comprising” in claim 41 is not an improper Markush group because such
claim language was permitted by the Examiner in another application that
issued as a patent (Appeal Br. 12).
Contrary to Appellant’s argument, claim 41 directed to a kit includes a
listing of species of different shapes for the torso or appendage. The claim
improperly uses the open-ended claim language comprising in reciting the
species that are part of the Markush group. See Abbott Labs. v. Baxter
Pharm. Products, Inc., 334 F.3d 1274, 1281 (Fed. Cir. 2003) (“[A] proper
Markush group is limited by the closed language term ‘consisting of.’”). See
also MPEP § 2173.05(h) (“If a Markush grouping requires a material
selected from an open list of alternatives (e.g., selected from the group
‘comprising’ or ‘consisting essentially of’ the recited alternatives), the claim
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should generally be rejected under 35 U.S.C. 112(b) as indefinite because it
is unclear what other alternatives are intended to be encompassed by the
claim.”). A Markush group incorporated into “a claim should be ‘closed,’
i.e. it must be characterized with the transition phrase ‘consisting of,’ rather
than ‘comprising’ or ‘including.’” Abbott Labs., 334 F.3d at 1280.
Appellant relies upon Multilayer Stretch Cling Film Holdings,
Incorporated v. Berry Plastics Corporation, 831 F.3d 1350 (Fed. Cir. 2016)
for the proposition that the phrase “selection from the group comprising” is
proper (Reply Br. 7). The court in Multilayer Stretch Cling does not state
that “selected from the group comprising” is proper Markush group
language. Multilayer Stretch Cling, 831 F.3d at 1358. Rather, the court
stated reading proper Markush group language, “selected from the group
consisting of,” as open-ended would render such language equivalent to
“each layer comprising one or more of.” Id. The court went on to explain
that using the transitional phrase consisting of creates a closed grouping,
whereas the use of comprising creates an open-ended claim. Id. The court
in Multilayer Stretch Cling did not endorse the use of “selected from the
group comprising” as acceptable Markush group language. Cf. Multilayer
Stretch Cling, 831 F.3d at 1358, with Abbott Labs., 334 F.3d at 1280.
We are unpersuaded by Appellant’s argument that the Examiner’s
issuance of a patent that included claims reciting “selected from the group
comprising” indicates that the claims in the present case comply with § 112,
¶ 2 (Appeal Br. 12). Whether the claims in the present appeal comply with
statutory requirements including § 112, ¶ 2, is not controlled by the fact that
similar claims have been allowed by the United States Patent and Trademark
Office in a different application. In re Schechter, 205 F.2d 185, 191 (CCPA
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1953). It is well settled that the prosecution of one patent application does
not affect the prosecution of an unrelated application. In re Wertheim, 541
F.2d 257, 264 (CCPA 1976) (holding that “[i]t is immaterial in ex parte
prosecution whether the same or similar claims have been allowed to
others”). In re McDaniel, 293 F.3d 1379, 1387 (Fed. Cir. 2002). See also In
re Giolito, 530 F.2d 397, 400 (CCPA 1976)(“We reject appellants' argument
that the instant claims are allowable because similar claims have been
allowed in a patent. It is immaterial whether similar claims have been
allowed to others.”). Rather compliance for each case with the statutory
requirements is done on a case-by-case basis. Id.
We affirm the Examiner’s § 112, ¶ 2 rejection of claims 41, 49, 51,
54, and 57.

Claims 45 and 64
The Examiner finds that the terms whimsical and silly are subjective
terms that lack a reasonable standard for determining the requisite degree
required to satisfy the terms (Final Act. 3).
Appellant argues the Examiner has not established why the terms
whimsical and silly are indefinite from the perspective of one of ordinary
skill in the art (Appeal Br. 13). Appellant contends the Specification gives
many examples that are understood by a person having ordinary skill in the
art to be whimsical or silly (Appeal Br. 13). Appellant argues the
Examiner’s rejection is based upon conclusory statements without regard to
Appellant’s Specification (Appeal Br. 14). Appellant argues the Examiner
provides no evidence of why a person having ordinary skill in the art would
not understand what is recited in claims 45 and 64 (Appeal Br. 15).
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Contrary to Appellant’s arguments, the Examiner finds the
Specification fails to provide a definition of whimsical or silly that would
provide some standard or measure to ascertain the scope of these terms
(Final Act. 3; Ans. 5). Appellant and the Examiner agree that the
Specification uses the terms whimsical and silly (Ans. 5; Appeal Br. 14).
Appellant equates providing written descriptive support for the claim
language with definiteness (Appeal Br. 14). The standard for definiteness
under 35 U.S.C. § 112, ¶ 2, is whether a person of ordinary skill in the art
would understand what is being claimed when the claim is read in light of
the Specification. Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d
1565, 1576 (Fed. Cir. 1986). In this case, Appellant does not dispute that a
formal definition of whimsical and silly has not been provided, but rather
contends that the Figures and portions of the Specification cure that
omission (Appeal Br. 13–15). Although the Specification provides
examples of embodiments, there is no standard provided by Appellant in the
Specification to ascertain when the torso or appendage is considered
whimsical or silly within the meaning of claim. We find that the Examiner
has provided a reasonable basis that a person of ordinary skill in the art
would not understand in light of the Specification what is included within
claims 45 and 64 by using the terms whimsical and silly.
We affirm the Examiner’s § 112, ¶ 2 rejection of claims 45 and 64.
The Examiner rejects claims 49, 52, and 54 under 35 U.S.C. § 112, ¶ 2
as invoking § 112, ¶ 6 by reciting “attachment means” without disclosing
any corresponding structure for the attachment means in the Specification
(Final Act. 3). Appellant does not specifically address this portion of the
rejection or show reversible error with the Examiner’s means-plus-function
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analysis of the claims (Appeal Br. 8–15). We affirm the Examiner’s § 112,
¶ 2 rejection of these claims as no error has been shown by Appellant.

REJECTIONS (2) TO (4): 35 U.S.C. §§ 102(b) & 103(a)
Appellant makes similar arguments for all claims under rejection
(Appeal Br. 19–33). Specifically, Appellant argues that the Examiner’s
interpretation of the claims is unreasonably broad and the Examiner has not
shown that Moreau teaches a separate torso and separate appendage as
required by the claims (Appeal Br. 19–33). Because Appellant makes
similar arguments for all the claims, we select claim 41 as representative of
the claims in addressing Appellant’s arguments. We begin our analysis of
claim 41 by construing the claim.
Claim 41 recites a kit comprising “(a) comprising a torso comprising a
processed comestible generally shaped to represent a torso . . . . or (b)
comprising an appendage comprising a comestible generally shaped to
represent an appendage . . . .” Claim 41 is open-ended by its use of the
transitional term “comprising.” Claim 41 requires either a torso or an
appendage, but may include other features by virtue of the open-ended
transitional language in the claim. In other words, the claim is met by a kit
having either a torso or an appendage as recited in the claim, but does not
exclude a kit having both claim limitations and any additional limitation.
Our interpretation is supported by the plain language in claim 41 and
Appellant’s Figure 37, which Appellant describes as showing torso 102 and
appendages 96 (Appeal Br. 18).
Appellant argues the term “torso” is factually distinct from an
“appendage” in the claim (Appeal Br. 20, 21). Appellant argues the
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Examiner’s interpretation of torso as an “unfinished thing” is based on
extrinsic evidence (i.e., dictionary definition) rather than relying on the
intrinsic evidence provided in the Specification and Figures (Appeal Br. 19,
20). Appellant argues the Examiner interpretation of torso as an “unfinished
thing” and an appendage as “an ancillary part attached to something” fails to
provide what is already enabled: a torso or an appendage (Appeal Br. 20).
Appellant argues that the interpretation of item 102 (torso) and item 96
(appendage) in Appellant’s Figure 37 is clear and there is no reason why a
person would adopt the Examiner’s interpretation of “an unfinished thing, as
torso” or “an ancillary part attached to something, as appendage.” (Appeal
Br. 22).
We understand Appellant to argue that the broadest reasonable
interpretation of the claim includes a separate torso 102 and separate
appendage 96 as shown in Appellant’s Figure 37. The Examiner’s claim
interpretation, however, includes providing for a torso separate from an
appendage (Final Act. 4–5). We do not find the Examiner to equate the
same part of Moreau’s structure as both the torso and the appendage (Final
Act. 4–5). The Examiner’s definitions of torso and appendage provide some
meaning to these otherwise undefined terms. Appellant may exemplify
embodiments where various shapes 102 may be used for the “torso” and
various supports 96 may be used for the appendages (e.g., Figure 37), but
there is no dispute that Appellant provides no formal definition of what
constitutes a torso or an appendage. Given the breadth of what may be
considered a torso and an appendage (i.e., an animal, an animated character,
a creature, an alien, a toy, a structure, a vegetable, and a fruit) (claim 41), we
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discern no error in the Examiner interpretation of torso and appendage in an
attempt to determine the metes and bounds of the claim.
Therefore, we construe torso as an unfinished thing where the thing
may include but is not limited to a person, an animal, an animated character,
a creature, an alien, a toy, a structure, a vegetable, and a fruit. We construe
appendage as an ancillary part attached to something where the ancillary part
may include, but is not limited to, a person, an animal, an animated
character, a creature, an alien, a toy, a structure, a vegetable, and a fruit. The
claim only requires either a torso or an appendage to be taught in the prior
art to meet the claim.
With this proper claim construction in mind, we do not find reversible
error in the Examiner’s anticipation and obviousness rejections. The
Examiner finds Moreau discloses construction sets made of moldable
foodstuffs which are convertible into playthings (Final Act. 5). The
Examiner finds that Moreau’s edible block portions can be virtually
anything including representations of characters and familiar objects of
everyday life, including people and animals (Final Act. 5). The Examiner
finds Moreau’s edible block portions are a kit that when assembled create a
plaything such as a truck, a plane or virtually anything (Final Act. 5). The
Examiner further finds that the pieces of the kit that resemble the top of the
truck, the tires on an automobile, or the floats on the plane may be
considered appendages that are applied if desired (Final Act. 5). The
Examiner correctly finds that Moreau teaches the “three-dimensional objects
to be formed with the edible block-portions can be virtually anything,
including representation of known characters and familiar objects of
everyday life, people and animals, etc.” (Col. 2, ll. 49–52).
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Appellant argues that Moreau teaches block portions, not a separate
torso or separate appendage (Appeal Br. 26). Appellant’s argument is not
persuasive because the block portions are assembled to form a depiction of
whatever representation is desired to be formed (col. 1, ll. 65–68; col. 2, ll.
3–6, 49–52; col. 3, ll. 51–57). These block portions may represent a person
or an animal, which would include a torso as properly construed above and
recited in the claim. As noted above, under the proper claim construction,
Moreau’s teaching to form a torso is sufficient to anticipate claim 41.
However, we agree with the Examiner that Moreau’s use of block portions
to form wheels for a car, floats for a plane, or roof portions 36 and 38 would
reasonably constitute appendages within the meaning of claim 41 (Final Act.
5).
Appellant’s arguments regarding the remaining claims mimic those
made with claim 41 (i.e., Moreau does not teach a separate torso and
separate appendage). See, e.g., Appeal Br. 27–33. We are unpersuaded by
those arguments for the same reasons discussed above.
Appellant contends the § 103 rejections of claims 47, 57, 59, and 60
over Moreau and Moreau in view of Babos have the same shortcoming as
the rejection under § 102(b) over Moreau. Appellant argues again that
Moreau or Moreau in view of Babos fail to teach forming a separate torso
and a separate appendage. (Appeal Br. 32-33). We are not persuaded for the
same reasons discussed above regarding the rejection over Moreau under
§ 102(b).
On this record, we affirm the Examiner’s rejections under § 102(b)
over Moreau, under § 103(a) over Moreau for claim 47, and under § 103(a)
over Moreau in view of Babos for claims 57, 59, and 60.
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DECISION
In summary:

Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
41–54, 56, 57, 59–
64
112, ¶ 2 Indefiniteness 41–54,
56, 57,
59–64

41–46, 48–54, 56,
61–64
102(b) Moreau 41–46,
48–54,
56, 61–
64

47 103(a) Moreau 47
57, 59, 60 103(a) Moreau, Babos 57, 59,
60

Overall Outcome 41–54,
56, 57,
59–64

TIME PERIOD FOR RESPONSE
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