Ex Parte Arthur et al

Patent Trial and Appeal Board

Feb 25, 2019

12636133 (P.T.A.B. Feb. 25, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/636, 133 12/11/2009
30173 7590 02/27/2019
Diederiks & Whitelaw, PLC
13885 Hedgewood Dr., Suite 317
Woodbridge, VA 22193-7932
FIRST NAMED INVENTOR
Thomas J. Arthur
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
7164US 1710
EXAMINER
THAKUR, VIREN A
ART UNIT PAPER NUMBER
1792
NOTIFICATION DATE DELIVERY MODE
02/27/2019 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
Exparte THOMAS J. ARTHUR, ANITAL. FISCHBACH,
ANDREA STRANSKY, ROBERT A. ZOSS, and BRUCE LARSON
Appeal2018-003152
Application 12/636, 133
Technology Center 1700
Before KAREN M. HASTINGS, JEFFREY B. ROBERTSON, and
MICHAEL G. McMANUS, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 request our review under 35 U.S.C. § 134(a) of the
Examiner's decision rejecting claims 11, 21, 37--40, 42, 43, 46, 49, 50, and
52-54 under 35 U.S.C. § 103(a) over at least the combined prior art of
Carpenter (US 2005/0227101 Al; published Oct. 13, 2005), Yoffe (US
2006/0222271 Al, published Oct. 5, 2006), Meltier (DE 202006014003;
published Dec. 21, 2006 (translation)), Matoba (US 4,961,944; issued Oct. 9,
1990), Glasser (US 3,655,404; issued Apr. 11, 1972), and Hopkins (US
2005/0287277 Al; published Dec. 29, 2005). 2 The Examiner also rejected
1 The real party in interest is stated to be General Mills, Inc. (Appeal Br. 5).
2 Various other references were applied to some of these claims (Non-Final
Action 9-14; Appeal Br. 6). However, a discussion of these references is not
necessary for the disposition of this appeal.
Appeal2018-003152
Application 12/636, 133
all of these claims under 35 U.S.C. § 112 as failing to comply with the
written description requirement (Non-Final Action 3, 4).
We have jurisdiction over the appeal under 35 U.S.C. § 6(b ).
We AFFIRM.
Independent claim 11 is illustrative of the subject matter on appeal
( emphasis added):
11. A method of preparing a dough or batter-based food
product, the method comprising the steps of:
(a) providing one or more cooked dough or batter-based
food products having a crust moisture content of about 15% to
about 45% at a temperature of about 120 degrees to about 180
degrees Fahrenheit and encased in a pouch comprising a
heatable film, the pouch being sealed with the exception of
including two or more vent holes that provide a vent area ratio
ranging from 0.00005 to 0.000867 (vent area m2/pouch area
m2); and
(b) maintaining a crust moisture content of the encased
cooked dough or batter-based food products within about a
10% range between about 15% to about 45% for about 10
minutes to about 5 hours at about 120° F (48.9° C) to about
180° F (82.2° C).
ANALYSIS
We review the appealed rejections for error based upon the issues
identified by Appellants and in light of the arguments and evidence
produced thereon. Ex parte Frye, 637 F.3d 1356, 1075 (Fed. Cir. 2011)
(BPAI 2010) (precedential), cited with approval in 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
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rejections."). After considering the evidence presented in this Appeal and
each of Appellants' arguments, we are not persuaded that Appellants
identify reversible error in the 103 rejections and the 112 rejection before us.
Thus, we affirm the Examiner's rejections for the reasons expressed in the
Non-Final Office Action mailed July 15, 2016 and the Answer mailed June
14, 2017. We add the following primarily for emphasis.
The§ 103 Rejections
At the outset, we note that Appellants only present and rely upon
arguments made for claim 11 (Appeal Br. 9-13). Thus, all the other claims,
including those separately rejected, stand or fall with claim 11.
It has been established that "the [obviousness] analysis need not seek
out precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ." KSR Int 'l Co. v. Teleflex
Inc., 550 U.S. 398,418 (2007). Likewise, it is also well settled that a
reference stands for all of the specific teachings thereof as well as the
inferences one of ordinary skill in the art would have reasonably been
expected to draw therefrom. See In re Fritch, 972 F.2d 1260, 1264---65 (Fed.
Cir. 1992).
Appellants' principal argument is that there is no reason to arrive at a
vented wrapper for Carpenter's food wrapper based on Y offee, Meltier, and
Matoba since Carpenter does not indicate that its wrapper is vented and the
other references which exemplify vented wrapper don't hold the food
product for the extended hold time as recited in the claim (Appeal Br. 8-10).
Appellants' arguments do not appreciate the teachings and inferences
of the applied prior art as whole, and are not persuasive of reversible error
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Application 12/636, 133
for at least the reasons set out by the Examiner (Ans. 2-10). Appellants do
not dispute the Examiner's determination that vent area was a known result
effective variable in food wrappers for controlling moisture and crispness of
the food therein (e.g., Ans. 3, Non-Final Action 5). The Examiner aptly
points out that, contrary to the Appellants' position, one of ordinary skill
would have readily inferred that a vented wrapper would have been a known
way to provide the permeability that Carpenter teaches is desirable for
moisture to escape from its wrapper for an extended time period of, e.g.,
"about 10 minutes to about 5 hours" as recited in claim 11, and would also
predictably be useful as a food wrapper, as exemplified in Y offee, Meltier,
and Matoba (e.g., Carpenter ,r 46, Yoffee ,r,r 7, 60, 62, Meltier ,r 9, Matabo
2:57---64, 6:30-44; Ans. generally). See In re Keller, 642 F.2d 413, 425
(CCP A 1981) ("The test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the structure of the
primary reference .... Rather, the test is what the combined teachings of the
references would have suggested to those of ordinary skill in the art")
(citations omitted); In re Nievelt, 482 F.2d 965, 968 (CCPA 1973)
("Combining the teachings of references does not involve an ability to
combine their specific structures.").
Further, as we "take account of the inferences and creative steps that
a person of ordinary skill in the art would employ," we find a person of
ordinary skill in the art would have, within their level of skill, used a vented
wrapper as recited in claim 11 as exemplified by the applied prior art (Y offe,
Meltier, Matabo) for the wrapper of Carpenter based on the combined
teachings of the applied prior art for reasons articulated by the Examiner
(see generally Ans.). KSR Int'!, 550 U.S. at 418; see also id. at 421 ("A
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Application 12/636, 133
person of ordinary skill is also a person of ordinary creativity, not an
automaton"); Ball Aerosol & Specialty Container, Inc. v. Limited Brands,
Inc., 555 F.3d 984, 993 (Fed. Cir. 2009) (under the flexible inquiry set forth
by the Supreme Court, the PTO must take account of "the inferences and
creative steps," as well as routine steps, that an ordinary artisan would
employ)).
Appellants do not present any additional arguments for any of the
dependent claims, including those separately rejected; rather, they rely upon
the arguments made regarding claim 11 (Appeal Br. 11, 12).
Accordingly, we affirm the Examiner's prior art rejection of the
claims under 35 U.S.C. § 103(a) for the reasons given above and presented
by the Examiner.
The § 112 Re} ection
The written description "must clearly allow persons of ordinary skill
in the art to recognize that [the inventor] invented what is claimed." Ariad
Pharm., Inc. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en bane)
( citation and quotations omitted, alteration in the original). The test is
whether the disclosure "conveys to those skilled in the art that the inventor
had possession of the claimed subject matter as of the filing date." Id.
A prima facie case of non-compliance with the written description
requirement of§ 112 is established by showing that, as a matter of fact, the
written description in Appellants' Specification, including the drawings,
would not reasonably convey to persons skilled in this art that Appellants
were in possession of the invention defined by claim 11, including all of the
limitations thereof, at the time the application was filed. See generally, In re
Alton, 76 F.3d 1168, 1172, 1175-76, (Fed. Cir. 1996), citing In re Wertheim,
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541 F .2d 257, 262---64, (CCP A 197 6). In order to establish a prima facie
case, it is only necessary to establish that as a matter of fact, Appellants'
claim "embodiments of the invention that are completely outside the scope
of the specification." See Alton, 76 F.3d at 1175-76.
The Examiner found that the Specification lacks written description
for the added limitation of "within about a 10% range" to the moisture
concentration of "between about 15% to about 45%" in claim 11.
Appellants argue that the Specification provides at least three examples that
support this language including an example for "about 10% to about 20% for
donuts" (Spec. 6:18; Appeal Br. 14). We determine that the addition of the
modifier "within about a 10% range" to the moisture concentration of
"between about 15% to about 45%" in the claim language as posited by
Appellants establishes that claim 11 may encompass embodiments which are
less than 15% (i.e., as low as about 5%). Such embodiments thus reasonably
appear to be completely outside the scope of the Specification as originally
filed, which discloses at best a minimum of "about 10%" crust moisture
content, not 5% (Spec. 6:17-19; original claims 9, 10).
Accordingly, for this reason, as well as reasons set out by the
Examiner (e.g., Ans. 10, 11 ), we affirm the rejection of all the claims as
lacking written description support in the Specification.
DECISION
The Examiner's§§ 103(a) and 112 ,r 1 rejections are affirmed.
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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)(l).
AFFIRMED
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