Ex Parte Gordon

Board of Patent Appeals and Interferences

Jun 20, 2012

11627227 (B.P.A.I. Jun. 20, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte RONI GORDON
____________

Appeal 2011-004517
Application 11/627,227
Technology Center 1700
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Before BRADLEY R. GARRIS, HUBERT C. LORIN, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL

Appellant appeals under 35 U.S.C. § 134 from the Examiner's
decision rejecting claims 1, 2, 4, 5, 9-14, 16-19, and 41-60. We have
jurisdiction under 35 U.S.C. § 6.
We AFFIRM.
Appellant claims a method of monitoring or controlling a caloric
intake which comprises providing a plurality of food packages, each stating
a uniform caloric content for the entire package (e.g., 100 calories), and
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monitoring or controlling the caloric intake by monitoring or controlling the
number of food packages consumed per eating session or per a pre-
determined time period (independent claims 1, 41, 56, and 60).
Representative claims 1 and 59 read as follows:
1. A method of monitoring or controlling a caloric intake, the method
comprising:

providing a plurality of food packages, at least some of said food
packages containing a different type of food, each of said food packages
stating a uniform caloric content of 100 calories for the entire package; and

monitoring or controlling the caloric intake per eating session or per a
predetermined time period by monitoring or controlling the number of said
food packages consumed per eating session or per a predetermined time
period.

59. The method of claim 1, wherein the plurality of food packages is
provided by a food manufacturer and the monitoring or controlling is
performed by a consumer of the food packages, the food manufacturer being
different from the consumer.

The prior art listed below is relied upon by the Examiner as evidence
of obviousness:
Gelsinger 5,958,536 Sep. 28, 1999
Bangs 6,039,989 Mar. 21, 2000

Bunny Yeager, The 100 Calorie Miracle Diet (Pinnacle Books 1975).

Chris Sare, Superfoods, superfast, in Joe Weider’s Muscle & Fitness (Mar.
1, 2001), http://www.highbeam.com/doc/1P3-66268513.html.

Lindsey Remington, Arizona Dairy Touts Milk as a Hip Health Drink, in
Knight Ridder/Tribune Business News (June 7, 2001), http:
www.highbeam.com/doc/1G1-76353397.html.

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Low-Cal Ice Cream a False Dream, University Press International (UPI)
(June 19, 2001), http://www.highbeam.com/doc/1P1-45287689.html.

Kelly Sweger, Keeping the Holidays at Bay, in University Wire (Dec. 10,
2001), http://www.highbeam.com/doc/1P1-48775419.html.

Milk Information Gathered From Around the Internet (Apr. 13, 2010),
http://www.goodeatsfanpage.com/CollectedInfo/MilkInformation.htm.

Labeling of Ingredients, Food Safety and Inspection Service (FSIS)
Directive 7237.1, Rev. 1, Amend. 1 (Aug. 9, 1994).

Nutrition Labeling and Education Act of 1990 (NLEA), Pub. L. No. 101-
535, Wikipedia (Apr. 13, 2010),
http://en.wikipedia.org/wiki/Nutrition_Labeling_and_Education_Act.

The Examiner rejects claims 59 and 60 under 35 U.S.C. § 112, 1st
paragraph, as failing to comply with the written description requirement.
According to the Examiner, Appellant's Specification does not provide
support for the claim requirement that the food packages are provided by a
food manufacturer (i.e., a first party) and that the monitoring or controlling
is performed by a consumer (i.e., a second party different from the first
party) (Ans. 5).
However, we agree with Appellant that the Specification disclosure
(e.g., Spec. para. [103]) would reasonably convey to those skilled in the art
that Appellant had possession of the claim subject matter under
consideration as of the application filing date (see, e.g., App. Br. 8-11). See
Ariad Pharms., Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed. Cir.
2010) (en banc) ("[T]he test for [written description] sufficiency is whether
the disclosure of the application relied upon reasonably conveys to those
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skilled in the art that the inventor had possession of the claimed subject
matter as of the filing date.").
It follows that we will not sustain the Examiner's § 112, 1st paragraph,
rejection of claims 59 and 60.
The Examiner rejects the appealed claims under 35 U.S.C. § 103(a) in
the manner set forth below.
Claims 1-2, 4-5, 10-11, 13, 16-19, 41-45, 47-48, 50, 52-57,
[581,] and 59-60 [i.e., all independent claims] are rejected under 35
U.S.C. § 103(a) as being unpatentable over Yeager (The 100 Calorie
Miracle Diet).
The references of Sare, Sweger, UPI, Remmington
[sic], Milk Information, Nutrition Labeling and Education
Act of 1990 (NLEA) (Public Law 101-535), and the United
States Dept. of Agriculture Food Safety and [I]nspection
Service (FSIS) Directive 7237.1 of 8/09/94, are provided as
evidence.2

(Ans. 6-7; bolding deleted).

1 Claim 58 is not listed in this rejection even though it recites the same
subject matter as rejected claim 42. Under these circumstances, it is clear
that the Examiner's failure to list claim 58 in the rejection is an inadvertent
oversight. Because Appellant has not separately argued the commonly
recited subject matter of claims 42 and 58, the Examiner's inadvertent
oversight has not prejudiced Appellant's interests in this appeal and therefore
is harmless.
2 Appellant argues that these references (i.e., the references to Sare, etc.) are
not part of the Examiner's statement of rejection and requests that the Board
give these references no weight (App. Br. 51-52; Reply Br. 10). Appellant's
argument is without persuasive merit. The record unambiguously reveals
that these references are expressly cited and relied upon by the Examiner in
the § 103 rejections before us. For this reason, we deny Appellant's request
that no weight be given to these references.
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Claims 9, 14, 46, and 51 are correspondingly rejected under 35 U.S.C.
§ 103(a) as unpatentable over the references applied above against the
independent claims and further in view of Bangs.
Finally, claims 12 and 49 are correspondingly rejected under 35
U.S.C. § 103(a) as unpatentable over the references applied above against
the independent claims and further in view of Gelsinger.
We share the Examiner's conclusion that it would have been prima
facie obvious for one with ordinary skill in this art to combine the applied
references in the manner required by the rejected claims. Specifically, we
agree that it would have been prima facie obvious to modify Yeager's
method of controlling caloric intake with 100 calorie meals (e.g., consuming
a 100 calorie meal each hour up to 16 times per day; p. 155) by utilizing
meals in the form of food packages stating a uniform caloric content (e.g.,
100 calorie food packages provided by a food manufacturer) in view of, for
example, the Sare reference which evinces that such food packages were
known in the prior art (Ans. 10, 1st full para.). The result would be a
combination of prior art features (i.e., Yeager's method and food packages of
the type taught by Sare) which would yield predictable results according to
their established functions. See KSR Int’l. Co. v. Teleflex Inc., 550 U.S.
398, 415-16 (2007) ("The combination of familiar elements according to
known methods is likely to be obvious when it does no more than yield
predictable results.").
Appellant argues that Yeager contains no suggestion of monitoring or
controlling the number of food packages consumed per eating session or per
a predetermined time period as required by the independent claims (see e.g.,
App. Br. para. bridging 17-18).
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As indicated above, Yeager teaches monitoring or controlling the
number of 100 calorie meals consumed per eating session or per day (e.g.,
consuming a 100 calorie meal each hour up to 16 times per day; p. 155).
This teaching in combination with prior art food packages stating a 100
calorie content of the type taught by Sare establishes that it would have been
prima facie obvious to modify Yeager's method as proposed above and in
the Answer.
Appellant presents evidence of nonobviousness in an attempt to
overcome the Examiner's prima facie case of obviousness. In particular,
Appellant states that, "for the convenience of the Honorable Board,
Appellant will focus on exemplary indicia of nonobviousness, notably
evidence presented in Evidence Appendix D, but the Honorable Board is
encouraged to review the evidence of nonobviousness provided by the other
Evidence Appendices" (App. Br. 25). We will consider only the evidence of
nonobviousness specifically identified and relied upon by Appellant which is
selected portions of Evidence Appendix D.3 According to Appellant,
Evidence Appendix D contains indicia of nonobviousness in the form of
long felt need (id. at 25-28), industry skepticism (id. at 28-30), commercial
success (id. at 30-31), unexpected results (id. at 32), and copying by others
(id. at 33).
In order to be relevant to the issue of obviousness versus
nonobviousness, indicia of nonobviousness must be due to or linked to
features of the claimed invention that were not disclosed in the prior art. See

3 Although Evidence Appendix D is titled as a Declaration under "37 U.S.C.
[sic] SECTION 1.131", Appellant clarifies that the Declaration should have
been titled as being under 37 C.F.R. § 1.132 (App. Br. 23, n. 4).
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Geo. M. Martin Co. v. Alliance Mach. Sys. Int’l. LLC, 618 F.3d 1294, 1304-
05 (Fed. Cir. 2010); Asyst Tech., Inc. v. Emtrak, Inc., 544 F.3d 1310, 1316
(Fed. Cir. 2008); Simmons Fastener Corp. v. Illinois Tool Works, Inc., 739
F.2d 1573, 1575 (Fed. Cir. 1984), cert. denied, 471 U.S. 1065 (1985).
The consistent deficiency of the proffered indicia of nonobviousness
is that Appellant has failed to link this indicia to features of the claimed
invention not disclosed in the prior art.
For example, Appellant states that "[t]he present invention clearly
satisfies [a] long felt and unresolved need, as evidenced by the universal
acclaim attributed to the 100-calorie food package" (App. Br. 26). However,
the record establishes that 100-calorie food packages were known in the
prior art which is not disputed by Appellant (see, e.g., App. Br. para.
bridging 34-35 and Reply Br. 11). Furthermore, the evidence specifically
identified by Appellant as showing satisfaction of a long felt need relates to
100-calorie snack packages of, for example, Oreos rather than the claimed
invention (see, e.g., App. Br. 27, n. 28).
Corresponding deficiencies undermine Appellant's statement
regarding industry skepticism, namely, "[t]o say that the food industry
viewed 100-calorie food packages with skepticism is an understatement of
epic proportions" (id. at 28).
Similarly, Appellant's evidence of commercial success relates to, for
example, 100 Calorie Packs sold by Kraft rather than the claimed invention
(see, e.g., id. at 30, n. 33 re Evidence Appendix D, para. 18.b.). The
evidence of unexpected results is likewise deficient since the result said to
be unexpected is the commercial success of the 100-calorie food package
(see, e.g., id. at 32, n. 45 re Evidence Appendix D, para. 18.b.).
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Finally, the evidence of copying offered by Appellant does not relate
to the claimed invention but instead to copying of, for example, Kraft's 100
calorie snack packs (see, e.g., id. at 33, n. 51).
In light of the foregoing, our consideration of the argument and
evidence for and against obviousness leads us to determine that substantial
evidence supports an ultimate conclusion of obviousness. Therefore, we
sustain each of the above § 103 rejections of the appealed claims.
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

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