3D SYSTEMS, INC.

Patent Trials and Appeals Board

Oct 14, 2020

2019006243 (P.T.A.B. Oct. 14, 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.
15/110,418 07/08/2016 Kyle William VON HASSELN USA.1168-2 1191
22514 7590 10/14/2020
3D Systems, Inc.
3D Systems, Inc.
333 Three D Systems Circle
Rock Hill, SC 29730
EXAMINER
TRAN, LIEN THUY
ART UNIT PAPER NUMBER
1793
MAIL DATE DELIVERY MODE
10/14/2020 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte KYLE WILLIAM VON HASSELN,
ELIZABETH MARISHA VON HASSELN,
DEREK X. WILLIAMS, and ROBERT RICHARD GALE
____________

Appeal 2019-006243
Application 15/110,418
Technology Center 1700
____________

Before BEVERLY A. FRANKLIN, CHRISTOPHER C. KENNEDY, and
JANE E. INGLESE Administrative Patent Judges.

INGLESE, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 requests review under 35 U.S.C. § 134(a) of the
Examiner’s final rejection of claims 1–17.2 We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to the “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies 3D Systems, Inc. as the real party in
interest. Appeal Brief filed April 25, 2019 (“Appeal Br.”) at 3.
2 Final Office Action entered October 2, 2018 (“Final Act.”) at 1.
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CLAIMED SUBJECT MATTER
Appellant claims a method for making an edible component. Appeal
Br. 3. Claim 1, the sole pending independent claim, illustrates the subject
matter on appeal, and reads as follows:
1. A method for making an edible component comprising:
depositing successive layers of a food material according
to digital data that describes the edible component; and
applying to one or more regions of each of the successive
layers of food material one or more edible binders that bond the
food material at said one or more regions to form said edible
component,
wherein the food material comprises 25–75% by weight
polysaccharide and 25–75% by weight monosaccharide and/or
disaccharide, based on the total weight of the food material.

Appeal Br. 30 (Claims App.) (emphasis added).
REJECTIONS
The Examiner maintains the rejection of claims 1–17 under 35 U.S.C.
§ 103(a) as unpatentable over Lai3 in view of Yang,4 Dolan,5 Guthrie,6 and
Emsing7 (Rejection I) in the Examiner’s Answer entered June 21, 2019
(“Ans.”). The Examiner also maintains the provisional rejection of claims
1–17 for nonstatutory double patenting over claims 1–6, 8, 9, and 13–22 of
copending patent application number 14/151,672 (Rejection II).

3 US 2008/0260918 Al, published October 23, 2008.
4 US 6,280,784 B1, issued August 28, 2001.
5 US H1620, issued December 3, 1996.
6 US 2011/0293781 A1, published December 1, 2011.
7 US 6,783,790 B1, issued August 31, 2004.
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FACTUAL FINDINGS AND ANALYSIS
Upon consideration of the evidence relied upon in this appeal and
each of Appellant’s timely contentions,8 we affirm the Examiner’s rejections
of claims 1–17, for reasons set forth in the Final Action, the Answer, and
below.
We review appealed rejections for reversible error based on the
arguments and evidence that Appellant provides for each issue that
Appellant identifies. 37 C.F.R. § 41.37(c)(1)(iv); Ex parte Frye, 94
USPQ2d 1072, 1075 (BPAI 2010) (precedential) (cited with approval in In
re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (explaining that even if the
Examiner had failed to make a prima facie case, “it has long been the
Board’s practice to require an applicant to identify the alleged error in the
examiner’s rejections”)).
Rejection I
We first address the Examiner’s rejection of claims 1–17 under
35 U.S.C. § 103(a) as unpatentable over Lai in view of Yang, Dolan,
Guthrie, and Emsing. Appellant presents arguments directed to independent
claim 1, and also separately argues claims 2, 3, 4–10, and 16, which each
depend from claim 1. Appeal Br. 6–28. We, therefore, separately address
claims 1–3, 4–10, and 16, and the remaining claims on appeal stand or fall
with claim 1. 37 C.F.R. § 41.37(c)(1)(iv).

8 We do not consider any new argument Appellant raises in the Reply Brief
that Appellant could have raised in the Appeal Brief. 37 C.F.R.
§ 41.37(c)(1)(iv); 37 C.F.R. § 41.41(b)(2) (arguments raised for the first
time in the Reply Brief that could have been raised in the Appeal Brief will
not be considered by the Board unless good cause is shown).
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Claims 1, 11–15, and 17
Claim 1 requires the recited method of making an edible component
to comprise depositing, according to digital data that describes the edible
component, successive layers of a food material comprising 25–75% by
weight polysaccharide and 25–75% by weight monosaccharide and/or
disaccharide, based on the total weight of the food material, and applying to
one or more regions of each of the successive layers of food material one or
more edible binders.
Lai discloses a method of manufacturing a three-dimensional food
product based on a design created by a customer using computer-aided
design software. Lai, Abstract, ¶¶ 1, 8–13, 35. Lai discloses that the method
involves applying successive layers of edible powder onto a workpiece
according to the data generated by the design software, and using an inkjet
printer head to spray an edible binder onto each powder layer. Lai ¶¶ 22–24,
Fig. 1. Lai discloses removing unattached powder material from around the
workpiece after completion of the workpiece. Lai ¶ 31, Fig. 1. Appellant
does not dispute the Examiner’s finding that Lai thus discloses the method
steps recited in claim 1. Compare Final Act. 2, with Appeal Br. 4–20.
Lai discloses that the particles of edible powder may have different
sizes, and may play different roles according to their composition, such as
filler, stabilizer, fortifier or binding promoter, and special adhesive. Lai
¶ 33. Lai discloses that suitable edible powders include gypsum powder,
flour, glutinous rice flour, corn starch, chocolate powder, and other edible
powders. Id. Appellant does not dispute the Examiner’s finding that corn
starch as disclosed in Lai is a polysaccharide, as recited in claim 1.
Compare Final Act. 2, with Appeal Br. 4–20. The Examiner finds that Lai
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does not disclose the amount of specific types of edible powder, including
corn starch (polysaccharide), used during Lai’s method. Final Act. 3. The
Examiner determines, however, that one of ordinary skill in the art would
have determined, through routine experimentation, a suitable amount of corn
starch (polysaccharide) to use in Lai’s process, depending on the three-
dimensional food product being built. Final Act. 4.
The Examiner finds that Lai also does not disclose that suitable edible
powders for use in Lai’s method include monosaccharides and/or
disaccharides, and the Examiner relies on Yang, Dolan, and Guthrie for
suggesting use of such sugars as edible powder material in Lai’s method.
Final Act. 3–6.
Yang discloses producing a complex-shaped three-dimensional food
object from a food composition using a layer-by-layer manufacturing
method. Yang col. 1, ll. 5–16. Yang discloses that the food composition
includes an edible powder body building material, such as “powders of meat,
vegetable, fruit, flour, starch, vitamin, sugar, salt, peppers, flavor,
supplementary materials, and combinations thereof.” Yang col. 4, ll. 26–31,
50–54.
Dolan discloses a dry chocolate-flavored beverage mix including
about 40% to about 60% particulate sugar, such as granulated or powdered
sugar. Dolan col. 3, ll. 15–20. Dolan discloses that “[i]n addition to the
added particulate sugar in the dry beverage mix, other natural or artificial
sweeteners can also be incorporated therein.” Dolan col. 3, ll. 21–23.
Guthrie discloses a co-dried mixture of milk solids, sugar, and cocoa
solids, which Guthrie refers to as “chocolate crumb.” Guthrie ¶¶ 3, 17.
Guthrie explains that the chocolate crumb is mixed with cocoa butter to form
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milk chocolate. Guthrie ¶ 3. Guthrie discloses that the sugar included in the
chocolate crumb is preferably sucrose (disaccharide), and may be substituted
in whole or in part with other sugars, such as glucose or fructose
(monosaccharides). Guthrie ¶ 21. Guthrie discloses that part of the sugar
may also be substituted with a reduced or non-caloric sugar substitute.
Guthrie ¶ 21.
In view of these disclosures in Lai, Yang, Dolan, and Guthrie, the
Examiner concludes that because Lai and Yang both disclose creating three-
dimensional food products using edible powder materials, and because Lai
discloses numerous exemplary powders and teaches that “other edible
powders” may be used to create a three-dimensional food product, while
Yang teaches numerous differing types of powder materials that can be used
to create such products, including powdered sugar, it would have been
obvious to one of ordinary skill in the art to use one or more sweetening
agents as the “other edible powders” in Lai’s method, such as powdered (or
confectionary) sugar (disaccharide) as disclosed in Dolan, and/or glucose or
fructose (monosaccharides) as disclosed in Guthrie. Final Act. 4–6. The
Examiner further concludes that one of ordinary skill in the art would have
determined a suitable amount of powdered (or confectionary) sugar
(disaccharide) and/or glucose or fructose (monosaccharides), such as an
amount as recited in claim 1, to use when creating a particular three-
dimensional product using Lai’s method, depending on the product being
made and the degree of sweetness desired. Id.
Appellant argues that the Examiner’s rationale for combining Lai with
Yang, Dolan, and Guthrie is based on the underlying assumption “that any
food material, in any combination, can be easily and successfully . . . used in
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the methods of Lai and Yang,” and is also based the assumption that because
Dolan and Guthrie “teach food products that use mono-, di-, and
polysaccharides, any mono-, di-, and polysaccharide in any combination and
amount can be used in the methods of Lai and Yang.” Appeal Br. 7–9.
Appellant argues that one of ordinary skill in the art would have found these
assumptions to be false because the ordinarily skilled artisan would have
understood that monosaccharides, disaccharides, and polysaccharides as
recited in claim 1 have “dramatically different” molecular weights, melting
points, solubilities, and other physical properties that would “lead to
products having different physical and structural properties.” Appeal Br.
10–11.
Appellant appears to misapprehend the Examiner’s rationale for
combining the relied-upon disclosures of Lai, Yang, Dolan, and Guthrie. On
the record before us, the Examiner does not explicitly or implicitly take the
position that “any food material, in any combination, can be easily and
successfully be used in the methods of Lai and Yang.” Rather, the Examiner
relies on Lai’s disclosure of using various edible powder materials having
different purposes, such as filler, stabilizer, fortifier or binding promoter, or
special adhesive, in Lai’s method. Final Act. 2. The Examiner also relies on
Lai’s disclosure of numerous exemplary edible powders suitable for use in
Lai’s method, including corn starch (polysaccharide), and Lai’s explicit
indication that “other edible powders” may be used. Id. The Examiner
relies on Yang’s disclosure that differing types of edible powder materials
can be used to successfully create three-dimensional food products,
including powdered sugar, and Dolan and Guthrie’s disclosure that
powdered (or confectionary) sugar (disaccharide) and glucose or fructose
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(monosaccharides) are conventional sweeteners used to produce dry,
particulate food products. Final Act. 3.
In view of these disclosures in Lai, Yang, Dolan, and Guthrie, the
Examiner concludes that it would have been obvious to one of ordinary skill
in the art to use one or more sweetening agents as the “other edible
powders” in Lai’s method, such as powdered (or confectionary) sugar
(disaccharide) as disclosed in Yang and Dolan, and/or glucose or fructose
(monosaccharides) as disclosed in Guthrie, and the Examiner determines
that the ordinarily skilled artisan would have arrived, through routine
experimentation, at suitable amounts of corn starch (polysaccharide) and
sweetening agents to use in Lai’s method, depending on the particular
product being produced, and the degree of sweetness desired. Final Act. 4–
6.
Thus, contrary to Appellant’s arguments, the Examiner’s proposed
combination of Lai, Yang, Dolan, and Guthrie is not based on using any
food material, in any combination, in Lai’s method, but instead is based on
using sweetening agents that are known in the art to be suitable for
producing particulate food products, in view of Lai’s disclosure that “other
edible powders,” beyond those exemplified in the reference, may be used in
Lai’s method. Nor is the Examiner’s rejection based on using any amount of
such sweeting agents or any amount of corn starch (polysaccharide) in Lai’s
method, but, rather, is based on using amounts of sweetening agents that
would provide a desired degree of sweetness, and using an amount corn
starch (polysaccharide) that would provide desired structural characteristics,
which one of ordinary skill in the art could have determined through routine
experimentation. In re Aller, 220 F.2d 454, 456 (CCPA 1955) (“[W]here the
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general conditions of a claim are disclosed in the prior art, it is not inventive
to discover the optimum or workable ranges by routine experimentation.”);
In re Kulling, 897 F.2d 1147, 1149 (Fed. Cir. 1990) (finding no clear error in
the Board’s finding that the amount of eluent to be used in the washing
sequence was a matter of routine optimization in the pertinent art where the
reference fails to provide any numerical quantities.).
Furthermore, even if monosaccharides, disaccharides, and
polysaccharides as recited in claim 1 have “dramatically different”
molecular weights, melting points, solubilities, and other physical properties,
which would “lead to products having different physical and structural
properties” as Appellant argues, Appellant does not direct us to any
objective evidence establishing that corn starch (polysaccharide) as
disclosed in Lai, powdered (or confectionary) sugar (disaccharide) as
disclosed in Yang and Dolan, and glucose or fructose (monosaccharides) as
disclosed in Guthrie, could not be used in Lai’s method in amounts readily
determined by one of ordinary skill in the art through routine
experimentation to successfully produce a satisfactory three-dimensional
food product.
Appellant argues that “among the undefined, broad choices allegedly
provided by Lai and Yang,” the Examiner does not identify a direction or
teaching in Lai, Yang, Dolan, and/or Guthrie “regarding why the specific
choices made in Applicant’s claims would be made by a person of ordinary
skill in the art without knowledge of Applicant’s disclosure.” Appeal Br.
11–12 (emphasis omitted). Appellant argues that contrary to the Examiner’s
position, Lai, Yang, Dolan, and Guthrie “provide no guidance whatsoever
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regarding the selection of the specific materials and amounts recited in
Applicant’s claims.” Appeal Br. 12 (emphasis omitted).
One of ordinary skill in the art seeking to produce a three-dimensional
food product using a layer-by-layer manufacturing process as disclosed in
Lai, however, would have found it obvious to utilize one or more of any of
the edible powder materials suggested by Lai, Yang, Dolan, and Guthrie as
suitable for producing particulate food products, including corn starch
(polysaccharide) as disclosed in Lai, powdered (or confectionary) sugar
(disaccharide) as disclosed in Yang and Dolan, and/or glucose or fructose
(monosaccharides) as disclosed in Guthrie. The disclosure in these
references of a multitude of edible powder materials, and combinations
thereof, for producing food products does not render any particular powder
material, or combination of powder materials, less obvious, because these
references are available for all they would have suggested to one of ordinary
skill in the art at the time of Appellant’s invention. Merck & Co., Inc. v.
Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (“That the ’813
patent discloses a multitude of effective combinations does not render any
particular formulation less obvious. This is especially true because the
claimed composition is used for the identical purpose.”); In re Susi, 440 F.2d
442, 445 (CCPA 1971) (obviousness rejection affirmed where the genus of
the prior art was “huge, but it undeniably include[d] at least some of the
compounds recited in appellant’s generic claims and [was] of a class of
chemicals to be used for the same purpose as appellant’s additives”).
As discussed above, the ordinarily skilled artisan would have arrived
at suitable amounts of corn starch (polysaccharide), powdered (or
confectionary) sugar (disaccharide), and/or glucose or fructose
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(monosaccharides) to include in a three-dimensional food product produced
using Lai’s method that would impart desired structural characteristics, and a
desired level of sweetness, such as amounts of these materials as recited in
claim 1, through nothing more than routine experimentation.
Appellant argues that “it is especially unlikely in culinary science,
where even a modest deviation from an established . . . method can
dramatically affect the final product, that a skilled artisan would readily
make a three-dimensional food product, as recited in Claim 1, especially
without undue experimentation, based on picking and choosing individual
ingredients from three entirely different types of foods: a drink mix, [and] a
crumb” as disclosed in Dolan and Guthrie, respectively. Appeal Br. 13.
Appellant argues that these products “have very different physical properties
from one another,” and “[t]he skilled artisan would not look generally to a
beverage mix, [or] a crumb product . . . to solve the structural problems of
creating a three-dimensional object.” Appeal Br. 17. Appellant argues that
Dolan and Guthrie do not “provide any guidance that randomly selecting
individual ingredients from each will predictably form three-dimensional
objects using the Lai powder-binder method.” Id.
As discussed above, however, Lai broadly discloses that “other edible
powders” can be used to produce a three-dimensional food product using
Lai’s method, in addition to various exemplary edible powders specifically
mentioned in the reference. We find no disclosure in Lai indicating that
particular types of edible powders could not be used in Lai’s method.
Rather, Lai broadly discloses that the particles of edible powder used in
Lai’s method may have different sizes, and may play different roles
according to their compositions. Lai ¶ 33. Appellant does not direct us to
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any evidence establishing that powdered (or confectionary) sugar
(disaccharide) as disclosed in Yang and Dolan, and/or glucose or fructose
(monosaccharides) as disclosed in Guthrie, could not be used successfully in
Lai’s method to create a satisfactory three-dimensional food product. In re
Kubin, 561 F.3d 1351, 1360 (Fed. Cir. 2009) (emphasis omitted) (citing In
re O’Farrell, 853 F.2d 894, 903‒04 (Fed. Cir. 1988) (“[o]bviousness does
not require absolute predictability of success . . . all that is required is a
reasonable expectation of success.”).
We further point out that it is well-established that “new recipes or
formulas for cooking food” that “involve the addition or elimination of
common ingredients, or for treating them in ways which differ from the
former practice,” do not amount to a patentable invention “merely because it
is not disclosed that, in the constantly developing art of preparing food, no
one else ever did the particular thing upon which the applicant asserts his
right to a patent.” In re Levin, 178 F.2d 945, 948 (CCPA 1949). “In all such
cases, there is nothing patentable unless the applicant by a proper showing
further establishes a coaction or cooperative relationship between the
selected ingredients which produces a new, unexpected, and useful
function.” Id. On the record before us, Appellant does not establish “a
coaction or cooperative relationship” between polysaccharide,
monosaccharide, and/or disaccharide as recited in claim 1 that produces a
new, unexpected, and useful function.” Levin, 178 F.2d at 948.
Appellant argues that “the skilled artisan would not combine the
method of Lai with that of Yang, because . . . . [t]he skilled artisan will
recognize that the methods of forming an item via the Lai powder on binder
method are fundamentally different from and teach away from the Yang
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fluidic extrusion method.” Appeal Br. 14 (emphasis omitted). Appellant
argues that “Lai’s formula is a powder, whereas Yang’s formula is a fluidic
paste,” and “the art alone provides no evidence” that the “entirely different
food materials having entirely different physical properties” used Yang’s
fluidic extrusion method “is compatible with the fundamentally different
pow[d]er-binder method of Lai.” Appeal Br. 14–17.
As discussed above, however, Appellant does not dispute the
Examiner’s finding that Lai discloses the process steps recited in claim 1.
The Examiner’s rejection is not based on modifying Yang’s method to arrive
at the method of claim 1. Rather, the Examiner’s reliance on Yang is based
on Yang’s disclosure of differing types of edible powder materials that can
be used to successfully create three-dimensional food products, including
powdered sugar. Final Act. 3–6. Therefore, regardless of whether Yang’s
method is “fundamentally different” from Lai’s method, the combined
disclosures Lai, Yang, Dolan, and Guthrie nonetheless would have
suggested the method for making an edible component recited in claim 1, for
the reasons discussed above.
Appellant argues that Dolan and Guthrie are non-analogous art
because they are not “directed to 3D printing of food components via
powdered food material and a binder,” and are not reasonably pertinent to
the structural problems of creating a three-dimensional object. Appeal Br.
18. Appellant argues that one of ordinary skill in the art would not have
looked to individual ingredients in a beverage mix as disclosed in Dolan or a
crumb recipe as disclosed in Guthrie “when trying to solve the structural
problems presented in the Lai-powder-binder method, because these food
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materials have dramatically different physical properties and purposes from
those in Lai.” Id.
A reference is analogous art if it is either in the field of the inventors’
endeavor, or is reasonably pertinent to the particular problem with which the
inventors were concerned. In re Kahn, 441 F.3d 977, 987 (Fed. Cir. 2006).
“A reference is reasonably pertinent if, even though it may be in a different
field from that of the inventor’s endeavor, it is one which, because of the
matter with which it deals, logically would have commended itself to an
inventor’s attention in considering his problem.” In re Clay, 966 F.2d 656,
659 (Fed. Cir. 1992).
One of ordinary skill in the art seeking to produce a three-dimensional
food product using a layer-by-layer manufacturing process reasonably would
have looked to Dolan and Guthrie’s disclosures of suitable particulate
sweetening agents for producing food products. One of ordinary skill in the
art, therefore, would have understood Dolan and Guthrie to be reasonably
pertinent to the particular problem with which the inventors were
concerned—production of a three-dimensional food product comprising
polysaccharide and monosaccharide and/or disaccharide in a layer-by-layer
manufacturing process. Spec. ¶¶ 19, 58, 105, 106, 108. Contrary to
Appellant’s arguments, Dolan and Guthrie, therefore, are not non-analogous
art.
Appellant’s arguments thus do not identify reversible error in the
Examiner’s rejection of claim 1, and claims 11–15 and 17, which each
depend from claim 1, under 35 U.S.C. § 103(a), which we accordingly
sustain.

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Claim 2
Claim 2 depends from claim 1 and recites that the polysaccharide
comprises a starch or modified starch.
As discussed above in connection with our discussion of claim 1, Lai
discloses that suitable edible powders for use in Lai’s method include corn
starch. Lai ¶ 33.
Appellant presents numerous arguments for claim 2 that are the same
as arguments that Appellant presents for claim 1. Appeal Br. 19–20.
Because these arguments do not identify reversible error in the Examiner’s
rejection of claim 1 for the reasons discussed above, the arguments also do
not identify reversible error in the Examiner’s rejection of claim 2 for the
same reasons.
In addition, Appellant also argues that the Examiner’s rejection of
claim 2 is based on “modifying the powder of Lai with the corn starch
solution/slurry of Yang,” which would render Lai “unsatisfactory for its
intended purpose and/or change the principle of operation of Lai, because
Lai’s method requires the food material to be a powder.” Appeal Br. 20.
Appellant appears to misapprehend the Examiner’s rejection of claim
2, however, which is based on the Examiner’s finding that “Lai et al disclose
the powder material includes corn starch which is a polysaccharide,” and is
not based on “modifying the powder of Lai with the corn starch
solution/slurry of Yang” as Appellant argues. Final Act. 2. Because
Appellant’s argument does not address the rejection of claim 2 as actually
presented by the Examiner, including the Examiner’s finding that Yang
discloses that suitable edible powders for use in Lai’s method include corn
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starch, Appellant’s argument does not identify reversible error in the
Examiner’s rejection, which we accordingly sustain.
Claim 3
Claim 1 recites that the food material comprises, in part,
polysaccharide; claim 2 depends from claim 1 and recites that the
polysaccharide comprises a starch or modified starch; and claim 3 depends
from claim 2 and recites that the modified starch is a modified food starch.
The Examiner determines that “it would have been an obvious matter
of choice to use modified starch” as an edible powder in Lai’s method in
view of Lai’s disclosure that suitable edible powders for use in Lai’s method
include corn starch. Final Act. 4.
Appellant argues that the Examiner’s determination that “it would
have been an obvious matter of choice to use modified starch” is not
supported by basic food chemistry because “modified starch is produced by
chemically modifying starch to change its physical properties,” and the
Examiner does not provide “evidence supporting the assertion that modified
starch is merely a design choice.” Appeal Br. 21–22.
When claims 1, 2, and 3 are read together, however, the
polysaccharide included in the food material of claim 1 may optionally
comprise modified food starch as recited in claim 3, due to the recitation in
claim 2 that the polysaccharide comprises a starch or modified starch.
SkinMedica, Inc. v. Histogen Inc., 727 F.3d 1187, 1199– 1200 (Fed. Cir.
2013) (“The disjunctive ‘or’ plainly designates that a series describes
alternatives.”). Claim 3 as we have interpreted it, therefore, does not further
limit the method of claim 1. Consequently, due to the optional nature of the
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modified food starch recited in claim 3, Appellant’s arguments do not
identify reversible error in the Examiner’s rejection.
Nonetheless, we point out that Dolan discloses that suitable
ingredients for use in Dolan’s dry beverage mix include modified and
unmodified food starches, which evidences the conventional nature of using
modified food starch in particulate food products, and supports the
Examiner’s conclusion of obviousness. Dolan col. 4, l. 62–col. 5, l. 10.
We, accordingly, sustain the Examiner’s rejection of claim 3 under 35
U.S.C. § 103(a).
Claim 4
Claim 4 depends from claim 1 and recites that the polysaccharide
comprises maltodextrin.
As discussed above, Dolan discloses that natural or artificial
sweeteners can be included in the dry chocolate-flavored beverage mix
described in the reference, and Guthrie discloses that part of the sugar
included in the co-dried mixture of milk solids, sugar, and cocoa solids
described in the reference (“chocolate crumb”) may be substituted with a
reduced or non-caloric sugar substitute. Dolan col. 3, ll. 15–23; Guthrie
¶¶ 3, 17, 21.
Emsing discloses a process for making a high solids confectionary
product, and discloses that sugar substitutes and sugar replacements, such as
maltodextrins, can be used as sweetening agents in the confectionary
product. Emsing col. 4, ll. 17–19; col. 6, ll. 39–44.
In view of these disclosures in Dolan, Guthrie, and Emsing, the
Examiner concludes that it would have been obvious to use maltodextrin as
an edible powder in Lai’s method. Final Act. 4.
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Appellant presents arguments for claim 4 that are the same as
arguments that Appellant presents for claim 1. Appeal Br. 22–24. Because
these arguments do not identify reversible error in the Examiner’s rejection
of claim 1 for the reasons discussed above, the arguments also do not
identify reversible error in the Examiner’s rejection of claim 4 for the same
reasons.
In particular, Lai’s disclosure that “other edible powders” can be used
to produce a three-dimensional food product according to Lai’s method, in
addition to various specifically delineated exemplary edible powders, and
disclosure of using edible powders that play different roles according to their
compositions, would have suggested that edible powders beyond those
specifically mentioned in the reference could be used to produce food
products having desired characteristics. Accordingly, one of ordinary skill
in the art seeking to produce a food product using Lai’s method would have
selected and combined various conventional food powders to create a
product having the desired flavor, texture, and appearance. For example,
one of ordinary skill in the art seeking to produce a sweet product using
Lai’s method would have used one or more powdered sweeteners in the
method to impart a sweet flavor. Dolan’s disclosure of using artificial
sweeteners in combination with a particulate sugar, such as powdered sugar,
in a dry beverage mix, Guthrie’s disclosure of replacing sugar with a sugar
substitute in a dried “chocolate crumb,” and Emsing’s disclosure of using
maltodextrin as a sweetening agent in a confectionary product, reasonably
would have suggested use of maltodextrin as an edible powder in Lai’s
method to produce a sweet product.
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We, accordingly, sustain the Examiner’s rejection of claim 4 under 35
U.S.C. § 103(a).
Claims 5–9
Appellant presents arguments for claims 5–9 that are the same as
arguments that Appellant presents for claim 1. Appeal Br. 24–25. Because
these arguments do not identify reversible error in the Examiner’s rejection
of claim 1 for the reasons discussed above, the arguments also do not
identify reversible error in the Examiner’s rejection of claims 5–9 for the
same reasons.
We, accordingly, sustain the Examiner’s rejection of claims 5–9 under
35 U.S.C. § 103(a).
Claim 10
Claim 10 depends from claim 1 and recites that the edible component
exhibits a flexural strength between about 0.5 MPa and about 2.0 MPa, when
measured according to ASTM D790.
The Examiner determines that “Lai in view of the combination of
reference discloses the same method which is used on same materials; thus,
it is expected the product obtained would have the same flexural strength is
absence of evidence showing otherwise.” Final Act. 11.
Appellant argues that “the composition of Lai, as modified, is
dramatically different from Lai as originally disclosed. Therefore any
statements as to flexural strength of Lai as modified, is highly speculative
and lacks any supporting evidence.” Appeal Br. 26. Appellant argues that
the flexural strength of a food product “is highly dependent upon the
particular food material types and ratios used” in the product. Appeal Br.
26–27. Appellant argues that the food products disclosed in Lai, Yang,
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Dolan, and Guthrie all display very different flexural strengths, and,
consequently, “the combination of cited references would not inherently
possess the flexural strength described in Claim 10 merely because of
similar food materials being present as evidenced by the cited references.”
Appeal Br. 27.
As discussed above, however, the combined disclosures of Lai, Yang,
Dolan, and Guthrie would have suggested a method for making a three-
dimensional food product (edible component) according to the steps recited
in claim 1 using the food materials recited in the claim. The Examiner,
therefore, has a reasonable basis for finding that such a three-dimensional
food product (edible component) would have a flexural strength as recited in
claim 10, and the burden shifts to Appellant to show otherwise. In re Best,
562 F.2d 1252, 1255 (CCPA 1977) (“Where, as here, the claimed and prior
art products are identical or substantially identical, or are produced by
identical or substantially identical processes, the PTO can require an
applicant to prove that the prior art products do not necessarily or inherently
possess the characteristics of his claimed product. Whether the rejection is
based on ‘inherency’ under 35 U.S.C. § 102, on ‘prima facie obviousness’
under 35 U.S.C. § 103, jointly or alternatively, the burden of proof is the
same, and its fairness is evidenced by the PTO’s inability to manufacture
products or to obtain and compare prior art products.”).
On the record before us, Appellant does not meet this burden because
Appellant does demonstrate through factual evidence that a three-
dimensional food product (edible component) produced as suggested by a
combination of the relied-upon disclosures of Lai, Yang, Dolan, and Guthrie
would not have a flexural strength as recited in claim 10.
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The fact that Appellant recognized that such a three-dimensional food
product (edible component) exhibits a flexural strength as recited in claim 10
does not impart patentability to the method of claim 10, because production
of a three-dimensional food product (edible component) exhibiting such a
flexural strength would have naturally flowed from the suggestion stemming
from a combination of the relied-upon disclosures of Lai, Yang, Dolan, and
Guthrie of producing such a three-dimensional food product. PAR Pharm.,
Inc. v. TWI Pharm., Inc., 773 F.3d 1186, 1195 (Fed. Cir. 2014) (concept of
inherency, when applied to obviousness, is present “when the limitation at
issue is the ‘natural result’ of the combination of prior art elements”); In re
Oelrich, 666 F.2d 578, 581 (CCPA 1981) (explaining that it has long been
settled that in the context of obviousness, the “mere recitation of a newly
discovered function or property, inherently possessed by things in the prior
art, does not distinguish a claim drawn to those things from the prior art.”).
We, accordingly, sustain the Examiner’s rejection of claim 10 under
35 U.S.C. § 103(a).
Claim 16
Claim 16 depends from claim 1 and recites that the unbound food
material supports the edible component during formation of the edible
component.
As discussed above, Lai discloses a method of manufacturing a three-
dimensional food product by applying successive layers of edible powder
onto a workpiece, spraying an edible binder onto each powder layer, and
removing unattached powder material from around the workpiece after
completion of the workpiece. Lai ¶¶ 22–24, 31, Fig. 1.
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The Examiner finds that “[s]ince unbound food material is used and
being bound by spraying binder [in Lai’s method], the feature of claim 16 is
inherent.” Final Act. 2.
Appellant argues that “the Final Office Action has not provided any
discussion or rationales concerning dependent Claim 16 as to how the cited
references can be combined to form an edible component where unbound
food material supports the edible component during formation of the edible
component.” Appeal Br. 28.
Appellant appears to have overlooked the Examiner’s finding that Lai
inherently discloses the features of claim 16; consequently, because
Appellant does not address the Examiner’s basis for rejecting claim 16,
Appellant does not identify reversible error in the Examiner’s rejection of
this claim. We add that because Lai discloses that unattached powder
material is removed from around the workpiece after completion of the
workpiece, the unattached powder would be present during formation of the
workpiece, and, therefore, would function to support the workpiece during
its formation, as recited in claim 16.
We, accordingly, sustain the Examiner’s rejection of claim 16 under
35 U.S.C. § 103(a).
Rejection II
We decline to reach the Examiner’s provisional rejection of claims 1–
17 for nonstatutory double patenting over claims 1–6, 8, 9, and 13–22 of
copending patent application number 14/151,672 because “at least some of
the claims relied upon in the provisional obviousness-type double patenting
rejection[] on appeal either clearly are, or may be, different in language or
status from the claims originally relied upon when these rejections were
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initially made by the Examiner.” Ex parte Jerg, Appeal No. 2011-000044
(BPAI April 13, 2012) (informative) (“Panels have the flexibility to reach or
not reach provisional obviousness-type double-patenting rejections.”) (citing
Ex parte Moncla, Appeal No. 2009-006448 (BPAI June 22, 2010)
(precedential)).

CONCLUSION

Claims

35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–17 103(a) Lai, Yang, Dolan,
Guthrie, Emsing
1–17
1–17 N/A Nonstatutory
Double Patenting9
1–17
Overall
Outcome
1–17

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

9 As discussed above, we do not reach this provisional rejection.