Nahum JEANNOTDownload PDFPatent Trials and Appeals BoardNov 10, 202014959240 - (D) (P.T.A.B. Nov. 10, 2020) Copy Citation 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. 14/959,240 12/04/2015 Nahum JEANNOT P8443US00 4450 30671 7590 11/10/2020 DITTHAVONG & STEINER, P.C. Keth Ditthavong 44 Canal Center Plaza Suite 305 Alexandria, VA 22314 EXAMINER LEBLANC, KATHERINE DEGUIRE ART UNIT PAPER NUMBER 1791 NOTIFICATION DATE DELIVERY MODE 11/10/2020 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): docket@dcpatent.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte NAHUM JEANNOT ____________ Appeal 2020-000547 Application 14/959,240 Technology Center 1700 ____________ Before ADRIENE LEPIANE HANLON, MONTĂ T. SQUIRE, and JEFFREY R. SNAY, Administrative Patent Judges. SQUIRE, Administrative Patent Judge. DECISION ON APPEAL1 Appellant2 appeals under 35 U.S.C. § 134(a) from the Examinerâs decision to reject claims 1, 5â18, and 20â25.3 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM IN PART. 1 This Decision refers to the Specification filed Dec. 4, 2015 (âSpec.â); Non-Final Office Action dated Oct. 25, 2018 (âNon-Final Act.â); Appeal Brief filed Mar. 25, 2019 (âAppeal Br.â); Examinerâs Answer dated Sept. 4, 2019 (âAns.â); and Reply Brief filed Oct. 31, 2019 (âReply Br. â). 2 We use the word âAppellantâ to refer to âapplicantâ as defined in 37 C.F.R. § 1.42. Appellant identifies Nahum Jeannot as the real party in interest. Appeal Br. 3. 3 Claims 2â4 and 19 are cancelled. Appeal Br. 3. Appeal 2020-000547 Application 14/959,240 2 CLAIMED SUBJECT MATTER The invention relates to cereal foodstuffs and methods of manufacturing cereal foodstuffs and particularly to cereal foodstuffs formed by cooking a mixture comprising cereal and a liquid thickener, including a cereal foodstuff having a cereal mixture and an outer coating, and methods of manufacturing the same. Spec. ¶¶ 1, 4; Abstract. Claim 1 illustrates the subject matter on appeal and is reproduced below from the Claims Appendix to the Appeal Brief: 1. A method, comprising: forming a mixture comprising a cereal and a liquid thickener; cooking the mixture until al dente but slightly creamy; cooling the mixture; forming the cooled mixture into a desired shaped foodstuff; and applying an edible outer coating to a cooled desired shaped foodstuff, or freezing the desired shaped foodstuff and applying an edible outer coating to the frozen desired shaped foodstuff. Appeal Br. 21 (key disputed claim language italicized and bolded). REFERENCES The Examiner relies on the following prior art references as evidence in rejecting the claims on appeal: Name Reference Date Zukerman et al. (âZukermanâ) US 2011/0244091 A1 Oct. 6, 2011 StarTribune.com, Recipes: Master Oatmeal Recipe, http://www.startribune.com/recipes-master-oatmeal-recipe/15348846/ (last visited Oct. 22, 2018) (âStarTribune.comâ). Appeal 2020-000547 Application 14/959,240 3 bobsredmill.com, Bobâs Savory Oat Fritters, https://www.bobsredmill.com/blog/recipes/bobs-savory-oat-fritters/ (last visited Mar. 20, 2018) (âStocktonâ). cooksinfo.com, Rosemary Oatmeal Fritters Recipe, https://web.archive.org/web/20l30627225754/http://www.cooksinfo.com/ros emary-oatmeal-fritters-recipe/ (last visited Mar. 20, 2018) (âCooksinfo.comâ). abc.go.com, Michael Symonâs Homemade Twinkies, https://web.archive.org/web/20140420084203/http://abc.go.com/shows/the- chew/recipes/holiday-homemade-twinkies-michael-symon/ (last visited Oct. 26, 2017) (âSymonâ). geniuskitchen.com, Deep Fried Twinkie Recipe, http://www.geniuskitchen.com/recipe/deep-fried-twinkie-387258/ (last visited Oct. 26, 2017) (âGeniusKitchen.comâ). REJECTIONS On appeal, the Examiner maintains (Ans. 3) the following rejections: 1. Claims 1, 5â7, 17, 21, 22, and 25 are rejected under 35 U.S.C. § 103 as being unpatentable over Stockton in view of StarTribune.com (âRejection 1â). Ans. 4. 2. Claims 8â13, 15, 16, 23, and 24 are rejected under 35 U.S.C. § 103 as being unpatentable over Stockton in view of StarTribune.com further in view of Cooksinfo.com (âRejection 2â). Ans. 5. 3. Claims 1, 5â9, 17, 18, 20, and 22 are rejected under 35 U.S.C. § 103 as being unpatentable over Symon in view of GeniusKitchen.com (âRejection 3â). Ans. 6. 4. Claims 1, 8â18, 20, 21, 23, and 24 are rejected under 35 U.S.C. § 103 as being unpatentable over Zukerman (âRejection 4â). Ans. 8. Appeal 2020-000547 Application 14/959,240 4 OPINION Having considered the respective positions the Examiner and Appellant advance in light of this appeal record, based essentially on the factual findings and reasons the Examiner provides in the Answer and Non-Final Office Action, we affirm the Examinerâs § 103 rejections of claims 1, 5â7, 17, 21, 22, and 25 as obvious over Stockton and StarTribune.com (Rejection 1) and claims 8â13, 15, 16, 23, and 24 as obvious over Stockton, StarTribune.com, and Cooksinfo.com (Rejection 2). Additionally, for reasons we discuss below, we reverse the Examinerâs § 103 rejections of claims 1, 5â9, 17, 18, 20, and 22 as obvious over Symon and GeniusKitchen.com (Rejection 3) and claims 1, 8â18, 20, 21, 23, and 24 as obvious over Zukerman (Rejection 4). Rejection 1 Claims 1, 5â7, 17, 21, 22, and 25 The Examiner rejects claims 1, 5â7, 17, 21, 22, and 25 under § 103 as obvious over Stockton and StarTribune.com. Ans. 4â5. In response to the Examinerâs rejection, Appellant presents argument for the patentability of claims 1 and 21 as a group but does not present separate argument for the remaining claims subject to the Examinerâs rejection. Appeal Br. 6. We select claim 1 as representative and claims 5â7, 17, 21, 22, and 25 stand or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(iv). The Examiner determines the combination of Stockton and StarTribune.com suggests a method satisfying the limitations of claim 1 and concludes the combination would have rendered the claim obvious. Ans. 4â5. The Examiner relies on Stockton for teaching the majority of the claim steps, including forming a mixture comprising a cereal (oatmeal) and a Appeal 2020-000547 Application 14/959,240 5 liquid thickener (chicken broth), but finds Stockton does not specifically teach âcooking the mixture until al dente but slightly creamy,â as recited in the claim. Id. at 4. The Examiner, however, relies on StarTribune.com for disclosing that limitation. Id. In particular, the Examiner finds StarTribune.com teaches the texture of oatmeal is dependent on the cooking time and cooking oatmeal in boiling water for 15 minutes yields oatmeal having an al dente texture, and doing so for 35 minutes yields oatmeal having a creamy texture. Id. The Examiner further finds one of ordinary skill in the art would have reasonably expected the 15â20 minute cooking time Stockton teaches to yield oatmeal having an al dente but slightly creamy texture because the 15â20 minute cooking time is in between the 15 minute and 35 minute times StarTribune.com teaches for oatmeal having an al dente texture or a creamy texture, respectively. Ans. 4. Based on the above findings, the Examiner concludes it would have been obvious to one of ordinary skill in the art to adjust the cooking time of Stocktonâs oatmeal mixture depending on the desired texture and arrive at the claimed âal dente but slightly creamyâ texture by cooking the oatmeal mixture slightly longer than the 15 minute cooking time StarTribune.com teaches for al dente texture. Id. at 4â5. Appellant argues the Examinerâs rejection of claim 1 should be reversed because Stockton does not disclose or suggest âcooking the mixture until al dente but slightly creamy,â as required by the claim. Appeal Br. 7â8; Reply Br. 2â4. Rather, Appellant contends that, because Stocktonâs method adds chicken broth, which is made primarily of water and not cream, Stocktonâs mixture is not al dente but slightly creamy and the Examinerâs Appeal 2020-000547 Application 14/959,240 6 reliance on the doctrine of inherency for disclosing that limitation is misplaced. Appeal Br. 7 (arguing âoats must be mixed with a suitable ingredient to render them creamyâ), 8, 10 (arguing âthere is no factual basis to conclude that even if Stockton were to cook the oats with a creamy liquid, the 15 minutes time frame would inherently, i.e., necessarily, achieve an al dente but slightly creamy textureâ). Appellant further contends Stockton does not disclose a mixture having an al dente texture and neither discloses nor suggests the desirability of adjusting the cooking conditions to achieve an al dente texture. Id. at 9, 12. Appellant also contends the Examinerâs reliance on StarTribune.com is misplaced because StarTribune.com does not relate to cooking the same mixture as in Stockton. Appeal Br. 8. Appellant argues that, in contrast to Stocktonâs mixture, which relates to cooking oat fritters, StarTribune.com relates to cooking oatmeal. Id. at 8, 11 (arguing âthe end products are substantially different, namely savory oat fritters vs. oatmealâ and â[i]t is pure speculation . . . to conclude that cooking times for making oatmeal is applicable or reasonably pertinent to an oat fritterâ). Appellant further argues one of ordinary skill in the art would not have been motivated to modify Stocktonâs method to include the step of âcooking the mixture until al dente but slightly creamyâ in view of StarTribune.comâs disclosures regarding cooking oatmeal and the Examinerâs obviousness conclusion is not factually supported by the references. Appeal Br. 8â9, 12 (arguing the âthe Examinerâs obvious conclusion to adjust the cooking time . . . is not factually supported by the applied referencesâ). Appeal 2020-000547 Application 14/959,240 7 We do not find Appellantâs arguments persuasive of reversible error in the Examinerâs rejection based essentially on the factual findings and reasons the Examiner provides at pages 4â5 and 10â14 of the Answer and pages 3â4 of the Non-Final Action. Rather, on this appeal record, a preponderance of the evidence supports the Examinerâs determination that it would have been obvious to one of ordinary skill in the art to have combined the teachings of Stockton and StarTribune.com to arrive at the claimed method, including the step of âcooking the mixture until al dente but slightly creamy.â Stockton 1â3; StarTribune.com 1; KSR Intâl Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007). Appellantâs arguments do not reveal reversible error in the Examinerâs factual findings, analysis, and conclusions in this regard. Appellantâs argument that Stocktonâs method adds chicken broth and not cream (Appeal Br. 7) is not persuasive because, as the Examiner explains (Ans. 10â12), the claim does not require adding cream or milk as the liquid thickener. See In re Van Geuns, 988 F.2d 1181, 1184â85 (Fed. Cir. 1993) (â[L]imitations are not to be read into the claims from the specification.â). Rather, as the Examiner explains (Ans. 10), the claim merely recites and requires adding a generic âliquid thickener,â which Stockton discloses in the form of chicken broth. See Stockton 2 (adding â2-1/2 cups chicken brothâ and cooking âuntil the oats drink up most of the liquid (about 15â20 minutes) . . . [w]hen mixture has thickenedâ). Appellantâs arguments regarding the doctrine of inherency (Appeal Br. 8, 10) and that Stockton does not disclose or suggest a mixture having an al dente texture (id. at 9, 12) are not persuasive of reversible error because they are premised on what Stockton teaches individually, and not the Appeal 2020-000547 Application 14/959,240 8 combined teachings of the references as a whole, and what the combined teachings of the references would have suggested to one of ordinary skill in the art. One cannot show non-obviousness by attacking references individually where the rejection is based on a combination of references. See In re Keller, 642 F.2d 413, 425 (CCPA 1981). Contrary to what Appellantâs argument implies, the Examiner does not rely solely upon Stockton nor the doctrine of inherency for disclosing the âal dente but slightly creamyâ recitation of the claim. Rather, as we previously discuss above, the Examiner relies on the combined teachings of Stockton and StarTribune.com for suggesting that limitation. See Ans. 4â5, 10â14. The Examiner also provides a reasonable basis why one of ordinary skill in the art would have had reason to combine the teachings of the references to arrive at the âcooking the mixture until al dente but slightly creamyâ recitation of the claim. Id. at 4, 12 (explaining it would have been obvious to one of ordinary skill in the art to adjust the cooking time of Stocktonâs oatmeal mixture to arrive at the claimed âal dente but slightly creamyâ texture because StarTribune.com teaches that texture, such as al dente or creamy, is a result effective variable that is merely a matter of consumer preference achieved by the amount of time spent cooking); see also In re Boesch, 617 F.2d 272, 276 (CCPA 1980) (â[D]iscovery of an optimum value of a result effective variable . . . is ordinarily within the skill of the art.â). Appellant fails to direct us to persuasive evidence or adequately explain why the Examinerâs articulated reasoning lacks a rational underpinning or is otherwise based on some other reversible error. Appellantâs contentions that one of ordinary skill would not have been Appeal 2020-000547 Application 14/959,240 9 motivated to modify Stocktonâs recipe (Appeal Br. 8â9) and the Examinerâs obviousness conclusion are not factually supported by the references (id. at 12) are conclusory and, without more, are insufficient to establish reversible error. In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984); cf. SmithKline Beecham Corp. v. Apotex Corp., 439 F.3d 1312, 1320 (Fed. Cir. 2006) (â[M]ere statements of disagreement . . . as to the existence of factual disputes do not amount to a developed argument.â). Appellantâs argument that StarTribune.com does not relate to cooking the same mixture as in Stockton (Appeal Br. 8) is equally unpersuasive because it too narrowly construes the scope of Stocktonâs and StarTribune.comâs disclosures and what those disclosures would have reasonably suggested to one of ordinary skill. See In re Burckel, 592 F.2d 1175, 1179 (CCPA 1979) (â[A] reference must be considered not only for what it expressly teaches, but also for what it fairly suggests.â); see also In re Preda, 401 F.2d 825, 826 (CCPA 1968) (explaining âit is proper to take into account not only specific teachings of the reference[s] but also the inferences which one skilled in the art would reasonably be expected to draw therefrom.â). As the Examiner finds and explains (Ans. 12â13), because StarTribune.com teaches cooking steel-cut oatmeal in water (StarTribune.com 1) and Stockton teaches cooking steel-cut oatmeal in chicken broth (Stockton 2), which Appellant acknowledges (Appeal Br. 7) is mostly water, one of ordinary skill in the art would have reasonably understood StarTribune.com and Stockton as both relating to and suggesting the same general conditions for cooking steel-cut oatmeal in water. Appeal 2020-000547 Application 14/959,240 10 Claim 25 Claim 25 depends from claim 1 and further recites âwherein the edible outer coating comprises a breading.â Appeal Br. 24 (Claims Appendix). As with claim 1, the Examiner rejects claim 25 under § 103(a) as obvious over Stockton and StarTribune.com. Ans. 4â5. Regarding the recitation âwherein the edible outer coating comprises a breading,â the Examiner finds Stockton teaches applying an edible outer coating in the form of a breading comprising eggs, milk, flour batter, and bread crumbs, which a preponderance of the evidence supports. Id. at 5 (citing Stockton 2â3). Appellant argues the Examinerâs rejection of claim 25 should be reversed because â[t]here is nothing in Stockton to suggest applying a breading as an edible outer coating which would seal in the cereal to prevent it from oozing or seeping out when it is fried.â Appeal Br. 12 (emphasis added). This argument is not persuasive of reversible error in the Examinerâs rejection because it is conclusory. De Blauwe, 736 F.2d 699, 705; see also In re Lovin, 652 F.3d 1349, 1356-57 (Fed. Cir. 2011) (holding a naked assertion that the references fail to disclose or suggest a claim limitation is not an argument in support of separate patentability). Moreover, as the Examiner explains, Appellantâs argument is misplaced because it is based on language not recited in the claim. Ans. 14 (âNowhere does [claim 25] recite that the edible outer coating seals in the cereal âto prevent it from oozing or seeping when frying.ââ); Van Geuns, 988 F.2d at 1184â85. Appeal 2020-000547 Application 14/959,240 11 Accordingly, we affirm the Examinerâs rejection of claims 1, 5â7, 17, 21, 22, and 25 under 35 U.S.C. § 103 as obvious over Stockton and StarTribune.com. Rejection 2 The Examiner rejects claims 8â13, 15, 16, 23, and 24 under § 103 as obvious over Stockton, StarTribune.com, and Cooksinfo.com. Ans. 5â6. In response, Appellant presents argument for the patentability of claims 8 and 24 as a group but does not present separate argument for the patentability of claims 9â13, 15, 16, and 23. Appeal Br. 14, 16. We select claim 24 as representative and claims 8â13, 15, 16, and 23 stand or fall with claim 24. 37 C.F.R. § 41.37(c)(1)(iv). The Examiner determines that the combination of Stockton, StarTribune.com, and Cooksinfo.com suggests a method satisfying the limitations of claim 24 and concludes the combination would have rendered the claim obvious. Ans. 6. Appellant argues the Examinerâs rejection of claim 24 should be reversed for the same reasons it previously presents above in response to Examinerâs rejection of claim 1 based on the combination of Stockton and StarTribune.com. Appeal Br. 13; Reply Br. 4 (arguing âCooksinfo.com also fails to disclose cooking the mixture until al dente but slightly creamyâ). We do not find Appellantâs argument persuasive for essentially the same reasons we discuss above regarding claim 1. Appellant further argues the Examinerâs rejection of claim 24 should be reversed because âthere is no factual evidence to support the conclusion that one having ordinary skill in the art would have been realistically impelled to modify Stocktonâs recipe by substituting milk in place of Appeal 2020-000547 Application 14/959,240 12 Stocktonâs chicken broth.â Appeal Br. 13; see also Reply Br. 5 (arguing â[t]here is no requisite motivation to dramatically deviate from Stocktonâs recipe by using milk instead of or in addition to chicken brothâ and â[n]one of the references teaches or fairly suggests adding a milk thickener to a cerealâ). We do not find this argument persuasive of reversible error in the Examinerâs rejection based essentially on the fact-finding and reasons the Examiner provides at pages 6 and 14â16 of the Answer and pages 3â4 of the Non-Final Action, which a preponderance of the evidence supports. In particular, as the Examiner finds (Ans. 4), Stockton teaches use of chicken broth as a liquid thickener in an oatmeal mixture. Stockton 4. As the Examiner further finds (Ans. 6, 14â15), Cooksinfo.com teaches that milk can be used as a binder and liquid thickener in an oatmeal mixture to form oatmeal fritters. Cookisinfo.com 1. As the Examiner also finds (Ans. 6, 15â16), and Appellant does not credibly dispute, it is well-known that milk is an ingredient commonly used as a liquid thickener and binder in savory dishes, including conventional oatmeal. Thus, as the Examiner concludes (Ans. 4, 14â15), it would have been obvious to one of ordinary skill in the art to modify Stocktonâs method to use milk as a liquid thickener in exchange for or in addition to chicken broth because milk is a conventional ingredient commonly used as a liquid thickener for oatmeal and to provide a creamier texture. Indeed, it is well-settled that the mere substitution of one known material for another known in the art is likely to be obvious when it does no more than yield predictable results. KSR, 550 U.S. at 416 (2007) (âThe combination of Appeal 2020-000547 Application 14/959,240 13 familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.â). Appellantâs statements at pages 13â14 of the Appeal Brief and pages 4â5 of the Reply brief do not reveal reversible error in the Examinerâs factual findings, analysis, and conclusions in this regard because they are conclusory and unsupported by persuasive evidence. Attorney argument is not evidence. De Blauwe, 736 F.2d 699, 705; see also In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (explaining that mere lawyerâs arguments or conclusory statements, which are unsupported by concrete factual evidence, are entitled to little probative value). Accordingly, we affirm the Examinerâs rejection of claims 8â13, 15, 16, 23, and 24 under 35 U.S.C. § 103 as obvious over Stockton, StarTribune.com, and Cooksinfo.com. Rejection 3 The Examiner rejects claims 1, 5â9, 17, 18, 20, and 22 under § 103 as obvious over Symon and GeniusKitchen.com. Ans. 6. The Examiner determines the combination of Symon and GeniusKitchen.com suggests a method satisfying the limitations of claim 1 and concludes the combination would have rendered the claim obvious. Id. at 6â7. Regarding the âforming a mixture comprising a cerealâ recitation of claim 1, the Examiner finds Symon teaches forming a mixture of cake flour, milk, and melted butter to form a cake batter. Id.; see Symon 1 (adding â1/2 cup Cake Flourâ). The Examiner identifies the cake flour component in Symonâs cake mixture as corresponding to and disclosing âa cereal,â as recited in the claim. Ans. 7, 16. The Examiner contends that, under the broadest reasonable interpretation, the flour component of Symon falls Appeal 2020-000547 Application 14/959,240 14 within the scope of the term âcerealâ because âit is in the form of a ground grainâ and the term cereal is not necessarily limited to a breakfast cereal or individual pieces of a breakfast cereal. Id. at 16â17. Appellant argues the Examinerâs rejection of claim 1 should be reversed because Symon does not teach or suggest âforming a mixture comprising a cereal,â as recited in the claim. Appeal Br. 15â16; Reply Br. 6â7. In particular, Appellant contends the rejection is erroneous because the Examinerâs interpretation of the term âcerealâ to encompass flour is unreasonably broad and one of ordinary skill in the art would not have considered Symonâs flour component to be âa cerealâ in the context of the claim and the termâs plain and ordinary meaning. Appeal Br. 15. Appellantâs argument is persuasive because, on this appeal record, the Examiner has not established by a preponderance of the evidence that Symon teaches or suggests âa cerealâ recitation of the claim. See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) (â[T]he examiner bears the initial burden, on review of the prior art . . . of presenting a prima facie case of unpatentability.â). During prosecution, claims are given their broadest reasonable interpretation consistent with the specification. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). The words used in a claim must be read in light of the specification, as they would have been interpreted by one of ordinary skill in the art at the time of the invention. Id. The broadest reasonable interpretation of a claim term, however, does not mean an interpretation so broad that it would encompass an unreasonable construction under claim construction principles. See Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015). Appeal 2020-000547 Application 14/959,240 15 Regarding the term âcerealâ of claim 1, the Specification discloses: Aspects of the disclosure may include cereal foodstuffs and cereal food products formed in accordance with the foregoing methods. In an aspect of the disclosure, the cereal may include a starchy cereal. The cereal may be one or more of oats, steel cut oats, grits, quinoa, and cream of wheat. Spec. ¶ 6. The Specification further provides that the âcereal may be a cereal or combination of cereals selected from the group consisting oats, steel cut oats, grits, quinoa, and cream of wheatâ and âmay be, for example, steel cut oats.â Id. ¶ 15. When read in light of the Specificationâs disclosure, we do not find the Examinerâs interpretation of the term âcerealâ to encompass flour used in a mixture with eggs and milk to make a cake batter consistent with the termâs broadest reasonable interpretation. Rather, we agree with Appellant that the Examinerâs interpretation is unreasonably broad and does not comport with the termâs ordinary meaning or the way the term is used in the Specification. In re NTP, Inc., 654 F.3d 1279, 1288 (Fed. Cir. 2011) (explaining that even under the broadest reasonable interpretation, a claim construction âcannot be divorced from the specification and the record evidenceâ). Indeed, the Examiner does not identify support in the Specification or direct us to other evidence sufficient to adequately explain how or why one of ordinary skill in the art would have reasonably understood or considered flour used to form a cake batter to be âa cereal,â as recited in the claim. Id.; cf. KSR Intâl Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (requiring âreasoning with some rational underpinning to support the legal conclusion of obviousnessâ). Appeal 2020-000547 Application 14/959,240 16 The Examinerâs comments at pages 7 and 16â17 of the Answer are insufficient because they are conclusory and do not meaningfully address Appellantâs principal argument that one of ordinary skill in the art would not have reasonably construed the recitation âcomprising a cerealâ of claim 1 to encompass Symonâs cake flour. In re Suitco Surface, Inc., 603 F.3d 1255, 1260 (Fed. Cir. 2010) (âThe broadest-construction rubric coupled with the term âcomprisingâ does not give the PTO an unfettered license to interpret claims to embrace anything remotely related to the claimed invention.â). We, therefore, do not sustain the Examinerâs rejection of claim 1 as obvious over Symon and GeniusKitchen.com. Because claims 5â9, 17, 18, 20, and 22 depend from claim 1, we also do not sustain the Examinerâs rejection of those claims for the same reasons as claim 1. Accordingly, we reverse the Examinerâs rejection of claims 1, 5â9, 17, 18, 20, and 22 under 35 U.S.C. § 103 as obvious over Symon and GeniusKitchen.com. Rejection 4 The Examiner rejects claims 1, 8â18, 20, 21, 23, and 24 under § 103 as obvious over Zukerman. Ans. 8. The Examiner determines that Zukerman teaches or suggests a method satisfying the limitations of claim 1 and concludes the combination would have rendered the claim obvious. Id. at 8â9. Regarding the recitation âcooking the mixture until al dente,â the Examiner finds that Zukerman inherently discloses that limitation. Id. at 8. In particular, the Examiner finds and explains that, because Zukerman teaches forming a mixture comprising oats, flavoring, and dairy milk to form a cereal bar and the oats are only partially cooked (Zukerman ¶¶ 17, 24), Appeal 2020-000547 Application 14/959,240 17 Zukerman inherently discloses cooking the oats mixture until al dente, as recited in the claim. Id. at 8, 17â18. To establish that a prior art reference inherently discloses a limitation, âthe examiner must provide a basis in fact and/or technical reasoning to reasonably support the determination that the allegedly inherent characteristic necessarily flows from the teachings of the applied prior art.â Ex parte Levy, 17 USPQ2d 1461, 1464 (Bd. Pat. App. & Int. 1990) (citation omitted). Inherency âmay not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.â Continental Can Co. USA, Inc. v. Monsanto Co., 948 F.2d 1264, 1269 (Fed. Cir. 1991) (quoting In re Oelrich, 666 F.2d 578, 581 (CCPA 1981)). Appellant argues the Examinerâs rejection should be reversed because the Examiner has not adequately established that Zukerman inherently discloses the âcooking the mixture until al denteâ recitation of the claim. Appeal Br. 16â18; Reply Br. 6â7. We agree with Appellantâs argument. On this appeal record, the Examiner has not provided the requisite factual basis and/or technical reasoning sufficient to support a finding that Zukerman inherently discloses the âal denteâ recitation of the claim. The portions of Zukerman the Examiner cites and relies upon in the rejection do not disclose that limitation of the claim. See Zukerman ¶¶ 17, 24. Although paragraph 17 of Zukerman teaches that â[i]n the first cooking step, grain-chunks are only partially-cooked . . . at about 212° F,â the Examiner does not identify or direct us to any specific description or discussion in that paragraph nor elsewhere in the reference, which inherently Appeal 2020-000547 Application 14/959,240 18 discloses âcooking the mixture until al dente,â as claimed. For example, the Examiner does not identify any teaching or suggestion of a cooking time or other information sufficient to determine the texture of Zukermanâs partially-cooked grain-chunks. The fact that Zukerman teaches that the grain-chunks are partially-cooked and the Examinerâs assertion that the term al dente means âhaving a biteâ (Ans. 8, 17â18), without more, does not establish that the reference necessarily discloses cooking the mixture until al dente or the grain-chunks having an al dente texture necessarily flows from Zukermanâs teachings in this regard. The mere fact that partially-cooking Zukermanâs grain-chunks may result in a mixture having an al dente texture is not sufficient to establish inherency. Continental Can, 948 F.2d at 1269. We, therefore, do not sustain the Examinerâs rejection of claim 1. Because claims 8â18 and 20 depend from claim 1 and claims 21, 23, and 24 include the same âcooking the mixture until al denteâ limitation as claim 1, we also do not sustain the Examinerâs rejection of those claims for the same reasons as claim 1. Accordingly, we reverse the Examinerâs rejection of claims 1, 8â18, 20, 21, 23, and 24 under 35 U.S.C. § 103 as obvious over Zukerman. Appeal 2020-000547 Application 14/959,240 19 CONCLUSION In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 5â7, 17, 21, 22, 25 103 Stockton, StarTribune.com 1, 5â7, 17, 21, 22, 25 8â13, 15, 16, 23, 24 103 Stockton, StarTribune.com, Cooksinfo.com 8â13, 15, 16, 23, 24 1, 5â9, 17, 18, 20, 22 103 Symon, GeniusKitchen.com 1, 5â9, 17, 18, 20, 22 1, 8â18, 20, 21, 23, 24 103 Zukerman 1, 8â18, 20, 21, 23, 24 Overall Outcome 1, 5â13, 15â17, 21â25, 14, 18, 20 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 IN PART Copy with citationCopy as parenthetical citation