Ex Parte Scholz et al

Patent Trial and Appeal Board

Aug 8, 2017

12937536 (P.T.A.B. Aug. 8, 2017)

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.
12/937,536 06/01/2011 Martin Scholz 9610-67651-US 3386
109813 7590 08/08/2017
Fitch, Even, Tabin & Flannery, LLP
120 South LaSalle Street
Suite 1600
Chicago, IL 60603-3406
EXAMINER
DICUS, TAMRA
ART UNIT PAPER NUMBER
1791
MAIL DATE DELIVERY MODE
08/08/2017 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 MARTIN SCHOLZ, DEAN A. LIPPOLD, and
SATWINDER S. PANESAR
____________

Appeal 2016-001712
Application 12/937,536
Technology Center 1700
____________

Before MARK NAGUMO, JEFFREY B. ROBERTSON, and
JEFFREY R. SNAY, Administrative Patent Judges.

ROBERTSON, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2016-001712
Application 12/937,536

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1, 3, 4, 7, 8, 10–12, and 14–20.1 (App. Br. 5.) We have
jurisdiction pursuant to 35 U.S.C. § 6(b).
We summarily AFFIRM the Examiner’s decision to reject claims 1, 3,
4, 7, 8, 10–12, and 14–16 under the doctrine of non-statutory obviousness-
type double patenting.
However, we REVERSE the Examiner’s decision to reject the claims
1, 3, 4, 7, 8, 10–12, and 14–20 as obvious over the prior art of record.

THE INVENTION
Appellants state that the invention relates to coffee and creamer
compositions, and in particular a multi-layered drink. (Spec. 1, ll. 3–4; 7, ll.
1–6.)
Claim 1, the only independent claim on appeal, reproduced below, is
representative of the appealed subject matter.
1. A layered coffee beverage comprising:
instant coffee;

a creamer;

confectionery particles having a size of at least 1 mm;
wherein the confectionery particles comprise:
a chocolate part having a density of greater
than 1 g/cm3; and
a non-chocolate part having a density of less
than 1 g/cm3;

1 Claims 2, 5, 6, 9, and 13 have been canceled. (Appeal Brief filed March
26, 2015, hereinafter “App. Br.,” Claims Appendix.)
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wherein the non-chocolate part comprises a toffee, fudge,
biscuit or nougat;
wherein the instant coffee, the creamer, and the
confectionery particles form the layered coffee beverage with a
bottom layer formed by the chocolate part, a top layer formed
by the non-chocolate part, and a middle layer formed by the
instant coffee positioned between the bottom layer and the top
layer.

THE REJECTIONS
The Examiner rejected claims 1, 3, 4, 7, 8, 10–12, and 14–20 as
follows:
I. claims 1, 3, 4, 7, 8, 10–12, and 14–16 on the ground of non-
statutory obviousness-type double patenting over claims 1–19
of Massey2 in view of Toblerone;3
II. claims 1, 3, 7, 8, 10–12, 14, and 20 under 35 U.S.C. § 103(a) as
obvious over Mickowski4 as evidenced by Sigma5 in view of
Roberts,6 Rabinovitch,7 Devine,8 and Clara;9

2 U.S. Patent 8,529,973 B2 issued September 10, 2013.
3 TOBLERONE – Chocolate – The TOBLERONE taste experience dated
January 30, 2014, www.toblerone.com/toblerone1/page?siteid=toblerone1-
prd&locale=usen1&PagecRef=629.
4 U.S. Patent 6,207,206 B1 issued March 27, 2001.
5 Sigma-Aldrich (R) Particle Size Conversion chart dated March 15, 2012,
http://wayback.archive.org/web/*/http://www.sigmaaldrich.com/chemistry/st
ockroom-reag....
6 WO 01/80660 A1 published November 1, 2001.
7 U.S. Patent 7,232,584 B2, issued June 19, 2007.
8 U.S. Patent 6,737,098 B1, issued May 18, 2004.
9 Latte Macchiato – 3 Layered Coffee September 23, 2014,
http://www.food.com/recipeprint.do?rid=58617.
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III. claim 4 under 35 U.S.C. § 103(a) as obvious over Mickowski as
evidenced by Sigma in view of Roberts, Rabinovitch, Devine,
Clara, and Dubberke;10
IV. claims 15 and 16 under 35 U.S.C. § 103(a) as obvious over
Mickowski as evidenced by Sigma in view of Roberts,
Rabinovitch, Devine, Clara, and Hachiya;11 and
V. claims 17–19 under 35 U.S.C. § 103(a) as obvious over
Mickowski as evidenced by Sigma in view of Roberts,
Rabinovitch, Devine, Clara, Hachiya, and Wragg.12
(Examiner’s Answer entered September 15, 2015, hereinafter “Ans.”
4–13.)

Obviousness Double Patenting
Appellants do not present any substantive arguments with respect to
the rejection of claims 1, 3, 4, 7, 8, 10–12, and 14–16 as unpatentable for
obviousness double patenting over claims 1–19 of Massey in view of
Toblerone. (App. Br. 30.) Accordingly, we summarily affirm the
Examiner’s rejection of claims 1, 3, 4, 7, 8, 10–12, and 14–16.

10 U.S. Patent 6,399,133 B2, issued June 4, 2002.
11 EP 0 494 384 A2, published July 15, 1992.
12 U.S. Patent 6,838,110 B2, issued January 4, 2005.
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Obviousness Rejections over Prior Art
Claims 1, 3, 7, 8, 10–12, 14, and 20
ISSUE
The Examiner found that Mickowski discloses a “layered coffee
beverage composition” including instant coffee, a creamer, and
confectionary particles comprising chocolate having sizes falling within
Appellants’ range of at least 1 mm. (Ans. 5.) The Examiner relied on
Roberts as disclosing a chocolate part having non-chocolate confectionary
particles having a density greater than 1 g/cm3. (Id. at 6.) The Examiner
relied on Rabinovitch as disclosing a non-chocolate part with a nougat core
having a density of less than 1 g/cm3 coated in chocolate for maintaining the
shape and having variation of density and texture. (Id. at 6–7.)
Further, the Examiner pointed to Devine as disclosing a multilayered
coffee drink having layers in which coffee is the bottom or middle layer and
cocoa is disclosed as a top layer, and stated that the ingredients could be
interchanged based on which layer one would like to taste first. (Id. at 7.)
The Examiner found that Mickowski does not explicitly teach that coffee
forms a middle layer, and pointed to Clara as disclosing a three-layered
beverage, where coffee is in the middle layer, and there is an upper foam
layer as well as a lower milk layer. (Id. at 7–8.)
The Examiner stated that the combination of ingredients would form a
layered beverage as claimed when diluted with water, because the
ingredients would have the same densities and sizes, and would be expected
to function in the way claimed. (Id. at 7.)
The Examiner concluded that it would have been obvious to have
modified the composition of Mickowski, Roberts, and Rabinovitch to form a
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three-layered beverage as claimed in view of the disclosures of Devine and
Clara depending upon the desired ordered taste. (Id. at 8.) The Examiner
stated also that it is well known that with respect to a non-chocolate top
layer, to sprinkle candy as a garnish. (Id. at 8.)
Appellants contend, inter alia, that Mickowski fails to disclose a
layered beverage as recited in the claims, but instead Mickowski discloses a
uniform beverage. (App. Br. 18.) Appellants argue that Mickowski teaches
away from a layered beverage and as a result, it would not have been
obvious to combine the prior art in the manner set forth in the rejection.
(Id. at 18–19.) In this regard, Appellants contend that the Examiner’s
rationale is based on hindsight. (Id. at 19.)
The dispositive issue is:
Did the Examiner reversibly err in determining that the prior art
renders a layered coffee beverage as recited in the claims?

DISCUSSION
After careful review of the prior art of record, we agree with
Appellants that Mickowski does not disclose a layered coffee beverage. In
particular, as pointed out by Appellants, Mickowski discloses a variegated
coffee product without significant particle segregation. (App. Br. 18;
Mickowski col. 1, l. 67 – col. 2, l. 5; col. 2, ll. 17–19, col. 6, ll. 22–23.)
Additionally, Mickowski expressly discloses (emphasis added):
“Controlling the particle size distribution of the respective agglomerates also
enhances the variegated appearance of the product and prevents significant
segregation of the two colored portions of agglomerates into two distinct
phases.” (Col. 3, ll. 4549.)
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Thus, contrary to the Examiner’s findings, Mickowski does not
disclose a layered beverage—rather Mickowski expressly desires to prevent
layered beverages. Indeed, Mickowski’s disclosure of the sizing and
combining of dried agglomerated particles further illustrates this objective,
as Mickowski emphasizes that the particles are selected to form a
substantially uniform appearance. (Col. 8, ll. 7–44.) Devine and Clara,
while both directed to layered coffee beverages, do not provide sufficient
disclosures to lead one of ordinary skill in the art to modify Mickowski to
achieve the layered beverage recited in the claims in view of the express
disclosure and purpose for the beverages disclosed in Mickowski.
Thus, notwithstanding the fact that the additionally cited prior art such
as Rabinovitch discloses confectionary particles greater than 1 mm as recited
in claim 1 in the form of confectionary centers with a spherical shape made
of nougat (density 1 g/cm3) having a diameter of 15 mm and chocolate
layers from about 0.5 mm to 4 mm (col. 1, ll. 66–67; col. 4, ll. 23–24 and
40–67), there is insufficient reasoning on this record to modify Mickowski
to incorporate such particles for the reasons discussed above.
Accordingly, we reverse the Examiner’s decision to reject claims 1, 3,
7, 8, 10–12, 14, and 20 as obvious over the prior art of record.

Claims 4 and 15–19
The rejections of claims 4 and 15–19 rely on the same based
combination of references as discussed above. The additionally cited prior
art references, Dubberke, Hachiya, and Wragg do not remedy the
deficiencies discussed above. Accordingly, for the reasons previously
discussed, we reverse the Examiner’s decision to reject claims 4 and 15–19.
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Application 12/937,536

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ORDER
We summarily affirm the Examiner’s decision rejecting claims 1, 3, 4,
7, 8, 10–12, and 14–16 on the ground of non-statutory obviousness-type
double patenting over claims 1–19 of Massey in view of Toblerone.
However, we reverse the Examiner’s decision to reject claims 1, 3, 4,
7, 8, 10–12, and 14–20 under 35 U.S.C. § 103(a) as obvious over the prior
art of record.
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-IN-PART