Nahum JEANNOTDownload PDFPatent Trials and Appeals BoardNov 10, 20202020000547 (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, 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. 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. (“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”). Appeal 2020-000547 Application 14/959,240 3 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. 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 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 Appeal 2020-000547 Application 14/959,240 5 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 Appeal 2020-000547 Application 14/959,240 6 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”). Appeal 2020-000547 Application 14/959,240 7 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 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 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 Appeal 2020-000547 Application 14/959,240 9 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. Appeal 2020-000547 Application 14/959,240 10 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. Appeal 2020-000547 Application 14/959,240 11 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 Appeal 2020-000547 Application 14/959,240 12 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 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.”). 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 Appeal 2020-000547 Application 14/959,240 14 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). Appeal 2020-000547 Application 14/959,240 15 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”). Appeal 2020-000547 Application 14/959,240 16 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), 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, 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 Copy with citationCopy as parenthetical citation