Nahum JEANNOT

Patent Trials and Appeals Board

Nov 10, 2020

14959240 - (D) (P.T.A.B. Nov. 10, 2020)

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, MONTÉ 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 Examiner’s
decision to reject claims 1, 5–18, and 20–25.3 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 (“Spec.”);
Non-Final Office Action dated Oct. 25, 2018 (“Non-Final Act.”); Appeal
Brief filed Mar. 25, 2019 (“Appeal Br.”); Examiner’s Answer dated Sept. 4,
2019 (“Ans.”); and Reply Brief filed Oct. 31, 2019 (“Reply Br. “).
2 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies Nahum Jeannot as the real party in
interest. Appeal Br. 3.
3 Claims 2–4 and 19 are cancelled. Appeal Br. 3.
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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.
(“Zukerman”)
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) (“StarTribune.com”).
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bobsredmill.com, Bob’s Savory Oat Fritters,
https://www.bobsredmill.com/blog/recipes/bobs-savory-oat-fritters/ (last
visited Mar. 20, 2018) (“Stockton”).
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)
(“Cooksinfo.com”).
abc.go.com, Michael Symon’s 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) (“Symon”).
geniuskitchen.com, Deep Fried Twinkie Recipe,
http://www.geniuskitchen.com/recipe/deep-fried-twinkie-387258/ (last
visited Oct. 26, 2017) (“GeniusKitchen.com”).
REJECTIONS
On appeal, the Examiner maintains (Ans. 3) the following rejections:
1. Claims 1, 5–7, 17, 21, 22, and 25 are rejected under 35 U.S.C.
§ 103 as being unpatentable over Stockton in view of StarTribune.com
(“Rejection 1”). Ans. 4.
2. Claims 8–13, 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 (“Rejection 2”). Ans. 5.
3. Claims 1, 5–9, 17, 18, 20, and 22 are rejected under 35 U.S.C.
§ 103 as being unpatentable over Symon in view of GeniusKitchen.com
(“Rejection 3”). Ans. 6.
4. Claims 1, 8–18, 20, 21, 23, and 24 are rejected under 35 U.S.C.
§ 103 as being unpatentable over Zukerman (“Rejection 4”). Ans. 8.
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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 Examiner’s § 103 rejections of
claims 1, 5–7, 17, 21, 22, and 25 as obvious over Stockton and
StarTribune.com (Rejection 1) and claims 8–13, 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
Examiner’s § 103 rejections of claims 1, 5–9, 17, 18, 20, and 22 as obvious
over Symon and GeniusKitchen.com (Rejection 3) and claims 1, 8–18, 20,
21, 23, and 24 as obvious over Zukerman (Rejection 4).
Rejection 1
Claims 1, 5–7, 17, 21, 22, and 25
The Examiner rejects claims 1, 5–7, 17, 21, 22, and 25 under § 103 as
obvious over Stockton and StarTribune.com. Ans. 4–5. In response to the
Examiner’s 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 Examiner’s rejection. Appeal Br. 6. We
select claim 1 as representative and claims 5–7, 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.
4–5. The Examiner relies on Stockton for teaching the majority of the claim
steps, including forming a mixture comprising a cereal (oatmeal) and a
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liquid thickener (chicken broth), but finds Stockton does not specifically
teach “cooking the mixture until al dente but slightly creamy,” 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 15–20 minute cooking time Stockton teaches to
yield oatmeal having an al dente but slightly creamy texture because the
15–20 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
Stockton’s oatmeal mixture depending on the desired texture and arrive at
the claimed “al dente but slightly creamy” texture by cooking the oatmeal
mixture slightly longer than the 15 minute cooking time StarTribune.com
teaches for al dente texture. Id. at 4–5.
Appellant argues the Examiner’s rejection of claim 1 should be
reversed because Stockton does not disclose or suggest “cooking the mixture
until al dente but slightly creamy,” as required by the claim. Appeal Br. 7–8;
Reply Br. 2–4. Rather, Appellant contends that, because Stockton’s method
adds chicken broth, which is made primarily of water and not cream,
Stockton’s mixture is not al dente but slightly creamy and the Examiner’s
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reliance on the doctrine of inherency for disclosing that limitation is
misplaced. Appeal Br. 7 (arguing “oats must be mixed with a suitable
ingredient to render them creamy”), 8, 10 (arguing “there 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 texture”). 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 Examiner’s 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
Stockton’s mixture, which relates to cooking oat fritters, StarTribune.com
relates to cooking oatmeal. Id. at 8, 11 (arguing “the end products are
substantially different, namely savory oat fritters vs. oatmeal” and “[i]t is
pure speculation . . . to conclude that cooking times for making oatmeal is
applicable or reasonably pertinent to an oat fritter”).
Appellant further argues one of ordinary skill in the art would not
have been motivated to modify Stockton’s method to include the step of
“cooking the mixture until al dente but slightly creamy” in view of
StarTribune.com’s disclosures regarding cooking oatmeal and the
Examiner’s obviousness conclusion is not factually supported by the
references. Appeal Br. 8–9, 12 (arguing the “the Examiner’s obvious
conclusion to adjust the cooking time . . . is not factually supported by the
applied references”).
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We do not find Appellant’s arguments persuasive of reversible error
in the Examiner’s rejection based essentially on the factual findings and
reasons the Examiner provides at pages 4–5 and 10–14 of the Answer and
pages 3–4 of the Non-Final Action. Rather, on this appeal record, a
preponderance of the evidence supports the Examiner’s 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 “cooking the mixture until al dente but slightly
creamy.” Stockton 1–3; StarTribune.com 1; KSR Int’l Co. v. Teleflex, Inc.,
550 U.S. 398, 416 (2007).
Appellant’s arguments do not reveal reversible error in the
Examiner’s factual findings, analysis, and conclusions in this regard.
Appellant’s argument that Stockton’s method adds chicken broth and not
cream (Appeal Br. 7) is not persuasive because, as the Examiner explains
(Ans. 10–12), the claim does not require adding cream or milk as the liquid
thickener. See In re Van Geuns, 988 F.2d 1181, 1184–85 (Fed. Cir. 1993)
(“[L]imitations are not to be read into the claims from the specification.”).
Rather, as the Examiner explains (Ans. 10), the claim merely recites and
requires adding a generic “liquid thickener,” which Stockton discloses in the
form of chicken broth. See Stockton 2 (adding “2-1/2 cups chicken broth”
and cooking “until the oats drink up most of the liquid (about 15–20
minutes) . . . [w]hen mixture has thickened”).
Appellant’s 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
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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 Appellant’s
argument implies, the Examiner does not rely solely upon Stockton nor the
doctrine of inherency for disclosing the “al dente but slightly creamy”
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. 4–5, 10–14.
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 “cooking the mixture until al dente but slightly
creamy” 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
Stockton’s oatmeal mixture to arrive at the claimed “al dente but slightly
creamy” 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) (“[D]iscovery of an
optimum value of a result effective variable . . . is ordinarily within the skill
of the art.”).
Appellant fails to direct us to persuasive evidence or adequately
explain why the Examiner’s articulated reasoning lacks a rational
underpinning or is otherwise based on some other reversible error.
Appellant’s contentions that one of ordinary skill would not have been
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motivated to modify Stockton’s recipe (Appeal Br. 8–9) and the Examiner’s
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)
(“[M]ere statements of disagreement . . . as to the existence of factual
disputes do not amount to a developed argument.”).
Appellant’s 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 Stockton’s and
StarTribune.com’s 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) (“[A] reference must be considered not only for
what it expressly teaches, but also for what it fairly suggests.”); see also In
re Preda, 401 F.2d 825, 826 (CCPA 1968) (explaining “it 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.”). As the Examiner finds and explains (Ans. 12–13), 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.
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Claim 25
Claim 25 depends from claim 1 and further recites “wherein the edible
outer coating comprises a breading.” 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. 4–5.
Regarding the recitation “wherein the edible outer coating comprises a
breading,” 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 2–3).
Appellant argues the Examiner’s rejection of claim 25 should be
reversed because “[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.” Appeal Br. 12
(emphasis added). This argument is not persuasive of reversible error in the
Examiner’s 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, Appellant’s argument is
misplaced because it is based on language not recited in the claim. Ans. 14
(“Nowhere does [claim 25] recite that the edible outer coating seals in the
cereal ‘to prevent it from oozing or seeping when frying.’”); Van Geuns, 988
F.2d at 1184–85.
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Accordingly, we affirm the Examiner’s rejection of claims 1, 5–7, 17,
21, 22, and 25 under 35 U.S.C. § 103 as obvious over Stockton and
StarTribune.com.
Rejection 2
The Examiner rejects claims 8–13, 15, 16, 23, and 24 under § 103 as
obvious over Stockton, StarTribune.com, and Cooksinfo.com. Ans. 5–6. 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 9–13, 15, 16, and 23. Appeal Br. 14, 16. We select claim 24 as
representative and claims 8–13, 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 Examiner’s rejection of claim 24 should be
reversed for the same reasons it previously presents above in response to
Examiner’s rejection of claim 1 based on the combination of Stockton and
StarTribune.com. Appeal Br. 13; Reply Br. 4 (arguing “Cooksinfo.com also
fails to disclose cooking the mixture until al dente but slightly creamy”). We
do not find Appellant’s argument persuasive for essentially the same reasons
we discuss above regarding claim 1.
Appellant further argues the Examiner’s rejection of claim 24 should
be reversed because “there is no factual evidence to support the conclusion
that one having ordinary skill in the art would have been realistically
impelled to modify Stockton’s recipe by substituting milk in place of
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Stockton’s chicken broth.” Appeal Br. 13; see also Reply Br. 5 (arguing
“[t]here is no requisite motivation to dramatically deviate from Stockton’s
recipe by using milk instead of or in addition to chicken broth” and “[n]one
of the references teaches or fairly suggests adding a milk thickener to a
cereal”).
We do not find this argument persuasive of reversible error in the
Examiner’s rejection based essentially on the fact-finding and reasons the
Examiner provides at pages 6 and 14–16 of the Answer and pages 3–4 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, 14–15), 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,
15–16), 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, 14–15), it would have been
obvious to one of ordinary skill in the art to modify Stockton’s 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) (“The combination of
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familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results.”).
Appellant’s statements at pages 13–14 of the Appeal Brief and pages
4–5 of the Reply brief do not reveal reversible error in the Examiner’s
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 lawyer’s arguments
or conclusory statements, which are unsupported by concrete factual
evidence, are entitled to little probative value).
Accordingly, we affirm the Examiner’s rejection of claims 8–13, 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, 5–9, 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 6–7.
Regarding the “forming a mixture comprising a cereal” 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 “1/2
cup Cake Flour”). The Examiner identifies the cake flour component in
Symon’s cake mixture as corresponding to and disclosing “a cereal,” as
recited in the claim. Ans. 7, 16. The Examiner contends that, under the
broadest reasonable interpretation, the flour component of Symon falls
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within the scope of the term “cereal” because “it is in the form of a ground
grain” and the term cereal is not necessarily limited to a breakfast cereal or
individual pieces of a breakfast cereal. Id. at 16–17.
Appellant argues the Examiner’s rejection of claim 1 should be
reversed because Symon does not teach or suggest “forming a mixture
comprising a cereal,” as recited in the claim. Appeal Br. 15–16; Reply Br.
6–7. In particular, Appellant contends the rejection is erroneous because the
Examiner’s interpretation of the term “cereal” to encompass flour is
unreasonably broad and one of ordinary skill in the art would not have
considered Symon’s flour component to be “a cereal” in the context of the
claim and the term’s plain and ordinary meaning. Appeal Br. 15.
Appellant’s argument is persuasive because, on this appeal record, the
Examiner has not established by a preponderance of the evidence that
Symon teaches or suggests “a cereal” recitation of the claim. See In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) (“[T]he examiner bears the
initial burden, on review of the prior art . . . of presenting a prima facie case
of unpatentability.”).
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).
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Regarding the term “cereal” 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 “cereal may be a cereal
or combination of cereals selected from the group consisting oats, steel cut
oats, grits, quinoa, and cream of wheat” and “may be, for example, steel cut
oats.” Id. ¶ 15.
When read in light of the Specification’s disclosure, we do not find
the Examiner’s interpretation of the term “cereal” to encompass flour used in
a mixture with eggs and milk to make a cake batter consistent with the
term’s broadest reasonable interpretation. Rather, we agree with Appellant
that the Examiner’s interpretation is unreasonably broad and does not
comport with the term’s 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 “cannot be divorced from the specification and the record
evidence”).
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 “a cereal,” as recited in the claim. Id.;
cf. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (requiring
“reasoning with some rational underpinning to support the legal conclusion
of obviousness”).
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The Examiner’s comments at pages 7 and 16–17 of the Answer are
insufficient because they are conclusory and do not meaningfully address
Appellant’s principal argument that one of ordinary skill in the art would not
have reasonably construed the recitation “comprising a cereal” of claim 1 to
encompass Symon’s cake flour. In re Suitco Surface, Inc., 603 F.3d 1255,
1260 (Fed. Cir. 2010) (“The broadest-construction rubric coupled with the
term ‘comprising’ does not give the PTO an unfettered license to interpret
claims to embrace anything remotely related to the claimed invention.”).
We, therefore, do not sustain the Examiner’s rejection of claim 1 as
obvious over Symon and GeniusKitchen.com. Because claims 5–9, 17, 18,
20, and 22 depend from claim 1, we also do not sustain the Examiner’s
rejection of those claims for the same reasons as claim 1.
Accordingly, we reverse the Examiner’s rejection of claims 1, 5–9,
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, 8–18, 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
8–9. Regarding the recitation “cooking the mixture until al dente,” 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),
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Zukerman inherently discloses cooking the oats mixture until al dente, as
recited in the claim. Id. at 8, 17–18.
To establish that a prior art reference inherently discloses a limitation,
“the 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.”
Ex parte Levy, 17 USPQ2d 1461, 1464 (Bd. Pat. App. & Int. 1990) (citation
omitted). Inherency “may 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.” 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 Examiner’s rejection should be reversed because
the Examiner has not adequately established that Zukerman inherently
discloses the “cooking the mixture until al dente” recitation of the claim.
Appeal Br. 16–18; Reply Br. 6–7.
We agree with Appellant’s 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 “al dente” 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 “[i]n the first cooking
step, grain-chunks are only partially-cooked . . . at about 212° F,” 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 “cooking the mixture until al dente,” 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 Zukerman’s
partially-cooked grain-chunks. The fact that Zukerman teaches that the
grain-chunks are partially-cooked and the Examiner’s assertion that the term
al dente means “having a bite” (Ans. 8, 17–18), 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
Zukerman’s teachings in this regard. The mere fact that partially-cooking
Zukerman’s 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 Examiner’s rejection of claim 1.
Because claims 8–18 and 20 depend from claim 1 and claims 21, 23, and 24
include the same “cooking the mixture until al dente” limitation as claim 1,
we also do not sustain the Examiner’s rejection of those claims for the same
reasons as claim 1.
Accordingly, we reverse the Examiner’s rejection of claims 1, 8–18,
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, 5–7, 17,
21, 22, 25
103 Stockton,
StarTribune.com
1, 5–7, 17,
21, 22, 25

8–13, 15, 16,
23, 24
103 Stockton,
StarTribune.com,
Cooksinfo.com
8–13, 15, 16,
23, 24

1, 5–9, 17,
18, 20, 22
103 Symon,
GeniusKitchen.com
1, 5–9,
17, 18,
20, 22
1, 8–18, 20,
21, 23, 24
103 Zukerman 1, 8–18,
20, 21,
23, 24
Overall
Outcome
1, 5–13,
15–17,
21–25,
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