Ex Parte BachDownload PDFPatent Trial and Appeal BoardOct 21, 201312845577 (P.T.A.B. Oct. 21, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARKOFFICE 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. 12/845,577 07/28/2010 Larry A. Bach 293-01 1245 73325 7590 10/21/2013 Matthew G. McKinney McKinney Law, PLLC 121 S. Orange Ave. Suite 1500 Orlando, FL 32801 EXAMINER LONG, LUANA ZHANG ART UNIT PAPER NUMBER 1792 MAIL DATE DELIVERY MODE 10/21/2013 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 LARRY A. BACH ____________ Appeal 2013-007205 Application 12/845,577 Technology Center 1700 ____________ Before EDWARD C. KIMLIN, JAMES C. HOUSEL, and GEORGE C. BEST, Administrative Patent Judges. KIMLIN, Administrative Patent Judge. DECISION ON APPEAL This is an appeal from the final rejection of claims 1, 3-6, 8, 11-13, and 15-20. We have jurisdiction under 35 U.S.C. § 6(b). Claim 1 is illustrative: 1. A method of preparing a dessert, the method comprising: stuffing ingredients of alternating layers of dessert material that is trimmed from a larger cake, a filling, or any combination thereof, into a bottom of a container until the container is filled, wherein a slidable plunger of the container is adapted to sequentially push out of a top end of the container each of the alternating layers for consumption directly from the container. Appeal 2013-007205 Application 12/845,577 2 The Examiner relies upon the following references as evidence of obviousness: Plet US 4,352,242 Oct. 5, 1982 Berman US 6,261,611 B1 Jul. 17, 2001 Budwig et al. (Budwig) US 2003/0008041 A1 Jan. 9, 2003 Mason Jar Cupcakes (Mason) (http://www.joyshope.com/2009/04/mason- jar-cupcakes.html) Chowhound (http://chowhound.chow.com/topics/524770) Biscuit Rising (Biscuit) (http://biscuitrising.wordpress.com/2008/03/13/dessert-shots.) Appellant's claimed invention is directed to a method of preparing a dessert by stuffing ingredients of alternating layers of dessert material into a container until it is filled, wherein a slidable plunger of the container operates to sequentially push the alternating layers out of the top end of the container for consumption by a consumer. Appealed claims 1, 3-6, 8, 11-13, 15, 16, and 18-20 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Budwig in view of Mason, Chowhound, Biscuit, and Plet. Claim 17 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over the stated combination of references further in view of Berman. With the exception of claim 17, Appellant does not present separate arguments for the appealed claims. Accordingly, with the noted exception, all the appealed claims stand or fall together with claim 1. We have thoroughly reviewed each of Appellant's arguments for patentability. However, we are in complete agreement with the Examiner Appeal 2013-007205 Application 12/845,577 3 that the claimed subject matter would have been obvious to one of ordinary skill in the art within the meaning of §103 in view of the applied prior art. Accordingly, we will sustain the Examiner's rejections for the reasons set forth in the Answer, which we incorporate herein, and we add the following for emphasis only. There is no dispute that Budwig, like Appellant, discloses a method of preparing a fat-based confectionery, or dessert, by stuffing alternating layers of dessert material, a filling, or any combination thereof, into a bottom of a container until the container is filled, wherein a slidable plunger is adapted to sequentially push out of a top end of the container each of the alternating layers for consumption. As acknowledged by the Examiner, Budwig does not expressly teach that the layers of dessert material are trimmed from a larger cake. However, we fully concur with the Examiner that the collective teachings of Mason, Biscuit, Chowhound, and Plet evidence that it would have been obvious for one of ordinary skill in the art to select a cake or cupcake material for the dessert material of Budwig with the predictable result of making a push-up layered mini-cake dessert. Also, Chowhound and Plet support the Examiner's conclusion that it would have been obvious for one of ordinary skill in the art to trim the dessert material from a larger cake and stuff it in the container of Budwig. Moreover, it is our view that it would have been obvious for one of ordinary skill in the art to select any dessert material to fill the container of Budwig for ultimate consumption. Appellant has presented no reason for why it would have been nonobvious for one of ordinary skill in the art to fill the container of Budwig with a cake. Appeal 2013-007205 Application 12/845,577 4 Appellant contends that the fat-based confectionery of Budwig is not considered by one of ordinary skill in the art to include cake. Appellant points out that the fat-based confectionery of Budwig is poured into the chamber as a liquid. However, as set forth by the Examiner, Budwig discloses that the fat-based confectionery is not limited to liquids; solids also can be poured into the container ([0035]). Also, the Examiner has set forth a convincing rationale for why the fat-based confectionery of Budwig can be fairly considered to include cake material (see para. bridging pages 9-10 of Ans.). In addition, we note that claim 1, with which all the appealed claims stand or fall, with the exception of claim 17, does not require the container to be filled with cake, but the material can be alternating layers of strictly filling, which, of course, can be liquid in nature. Hence, Appellant's argument is not germane to the claimed subject matter. Appellant also maintains that Chowhound teaches away from the claimed invention by criticizing and discrediting or otherwise discouraging trimming from a large cake because it is likely to be messy. However, Appellant has not refuted the Examiner's finding that "this particular suggestion is from a different book called 'Small Batch Baking' and is considered an alternative to trimming circles from a larger cake" (Ans. 11, second para.). Nor has Appellant refuted the Examiner's finding that "Chowhound discusses many ways of making small sized cakes, which includes trimming from a larger cake, or making small sized cakes individually instead" (id.). Moreover, the Examiner properly states that a preference for not trimming from a large cake because of messiness is not a Appeal 2013-007205 Application 12/845,577 5 teaching away but, rather, a disclosure of a non-preferred embodiment with known disadvantages. Appellant also maintains that "Plet is used with only foods that are able to maintain their shape without support such as cheese, meat and foods that are adaptable to remain securely on a stick," which would not include cake material (Br. 5, third para.). However, as explained by the Examiner, "Plet specifically teaches skewering cake by cutting out small portions of cake (col. 3, line 24)" (Ans. 12, first para.). Also, "Plet is relied on as further motivation to substitute the dessert material of Budwig with layered cakes" (id.). As for separately argued claim 17, we agree with the Examiner that "Berman's socket (13) is also capable of guiding the handle (stick 12) of the plunger, and the device of Berman functions the same way as Budwig's device and also appellant's device in pushing food out of the container" (Ans. 12, penultimate para.). We further concur with the Examiner that "[t]here does not appear to be any difference in structure of the claimed aperture from that of Berman's, and appellant has not pointed out any differences in structure" (id.). In addition, Berman teaches that stick 12 and piston 11 can be joined in a variety of other ways, and we have no doubt that the claimed guide aperture would have been obvious to one of ordinary skill in the art. As a final point, we note that Appellant bases no argument upon objective evidence of nonobviousness, such as unexpected results. Appeal 2013-007205 Application 12/845,577 6 In conclusion, based on the foregoing and the reasons well stated by the Examiner, the Examiner’s decision rejecting the appealed claims is affirmed. The decision of the Examiner is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED cam Copy with citationCopy as parenthetical citation