Ex Parte Borges et al

Patent Trial and Appeal Board

Oct 23, 2018

13695394 (P.T.A.B. Oct. 23, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/695,394 03/06/2013
48940 7590 10/24/2018
FITCH EVEN TABIN & FLANNERY, LLP
120 SOUTH LASALLE STREET
SUITE 2100
CHICAGO, IL 60603-3406
FIRST NAMED INVENTOR
Rui Cesar Borges
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
9610-99598-US 1065
EXAMINER
TRAN, LIEN THUY
ART UNIT PAPER NUMBER
1793
MAIL DATE DELIVERY MODE
10/24/2018 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 RUI CESAR BORGES and OLIVIER KINTZIG
Appeal2017-011497 1
Application 13/695,394
Technology Center 1700
Before KAREN M. HASTINGS, JEFFREY R. SNAY, and
SHELDON M. McGEE, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants request review under 35 U.S.C. § 134(a) from the
Examiner's final rejection of claims 1-25 under 35 U.S.C. § 103(a) as
unpatentable over at least the combined prior art of Kostival (US
2003/0035876 Al published Feb. 20, 2003), Dally (US 6,299,916 Bl issued
Oct. 9, 2001), and Kenneally (US 4,738,859 issued Apr. 19, 1988). 2 We
have jurisdiction pursuant to 35 U.S.C. § 6.
We AFFIRM.
1 The real party in interest is identified as "GENERALE BISCUIT" (Appeal
Br. 3).
2 The Examiner withdrew the rejection of claims 1-8 under 35 U.S.C 112
(Ans. 7). The Examiner also applied additional prior art to dependent claim
5 (Final Action 6).
Appeal 2017-011497
Application 13/695,394
BACKGROUND
Claims 1 and 9 are illustrative of the claimed subject matter and are
reproduced below from the Claims Appendix to the Appeal Brief:
1. A process for the manufacture of a soft cake, the
method comprising:
depositing a first layer of liquid unbaked dough
comprising 12 to 25 wt.% chocolate or cocoa powder, 5 to 15%
starch, 10 to 20 wt.% eggs, 20-40 wt.% sugar, and 10 to 25 wt.
% additional fat;
depositing a layer of liquid filling on top of the first layer;
depositing a second layer of the liquid unbaked dough on
top of the layer of filling, wherein at least one of the first and
second layers of unbaked dough is in direct contact with the layer
of filling, the unbaked dough at the time of depositing having a
viscosity of 500 Pa-s or less and the filling having a viscosity that
remains substantially constant upon baking and is within a range
of± 30% of the viscosity of the unbaked dough; and
baking the combined deposited layers to produce a soft
cake having cooked dough layers and a filling,
wherein
the filling does not disintegrate into crumbs upon
mechanical impact
the water activity of the filling is in the range of from 0.65
to 0.84,
the water activity of the soft cake is in the range of from
0.65 to 0.84, and the filling is not a dough.
9. A shelf stable chocolate soft cake comprising a first
layer of baked dough, a layer of chocolate filling on top of the
first layer and a second layer of baked dough on top of the layer
of filling;
wherein the dough comprises 5 to 30 wt. % of chocolate,
5 to 20 wt.% starch, 5 to 25 wt.% eggs, and 20-40 wt.% sugar,
and the chocolate filling comprises at least 1 wt. % of cocoa
solids, at least one of the first and second layers of baked dough
is in direct contact with the layer of filling, and the water activity
of the soft cake is in the range of from 0.65 to 0.84;
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wherein the soft cake has a gradually changing texture
between layers of filling and baked dough;
and wherein the filling is not a dough, does not disintegrate
into crumbs upon mechanical impact, and has a viscosity that
remains substantially constant upon baking.
Independent claim 18 is also drawn to a shelf stable cake similar to that of
claim 9, with an additional recitation that "the filling having a viscosity
within a range of± 30% of a viscosity of the baked dough prior to baking"
(Appeal Br. Claims Appendix 27).
ANALYSIS
We have reviewed each of Appellants' arguments and evidence for
patentability. However, we are in agreement with the Examiner that the
claimed subject matter of representative claims 1 and 9 would have been
obvious to one of ordinary skill in the art within the meaning of§ 103 in
view of the applied prior art. We determine that, after consideration of all of
the evidence in this appeal, including the Martinet Declaration, 3 that the
evidence tending to establish the obviousness of the claimed subject matter
outweighs any evidence of record that may tend to indicate the non-
obviousness thereof.
Accordingly, we sustain the Examiner's rejections of the claims for
essentially those reasons expressed in the Answer, including the Examiner's
Response to Argument section, and we add the following primarily for
emphasis.
3 The Declaration (filed Sept. 7, 2016) is in the Evidence Appendix section
of the Appeal Brief.
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It has been established that "the [obviousness] analysis need not seek
out precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ." KSR Int 'l Co. v. Teleflex
Inc., 550 U.S. 398,418 (2007). Likewise, it is also well settled that a
reference stands for all of the specific teachings thereof as well as the
inferences one of ordinary skill in the art would have reasonably been
expected to draw therefrom. See In re Fritch, 972 F.2d 1260, 1264---65 (Fed.
Cir. 1992).
Appellants do not dispute the Examiner's findings that Kostival's
teachings encompass a chocolate filled cake made by extrusion of the dough
and its filling (Appeal Br., Reply Br., generally). Appellants also do not
dispute the Examiner's finding that Dally exemplifies that a shelf stable
filled food product would have a water activity as recited in the claims (e.g.,
Final Action 3; Appeal Br., generally). Rather, Appellants' arguments for
patentability of the method of claim 1 focus on their belief that none of the
applied prior art teaches or suggests a liquid unbaked dough having the
claimed viscosity (Appeal Br., Reply Br., generally). Appellants also
attempt to distinguish Kenneally's viscosity range that overlaps the claimed
range, because it is described as an "apparent viscosity" of cookie dough
( e.g., Appeal Br. 20, also relying upon Martinet Declaration). These
arguments are unpersuasive, since, as aptly pointed out by the Examiner, the
use of dough viscous enough to be extruded ( similar to Appellants' disclosed
extrusion (Spec ,r 16 the dough is deposited by "conventional extrusion or
rolling"); (Spec ,r 45 "the deposition of the layers can be performed in any
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Application 13/695,394
conventionally known manner, e.g., by extruding ... " ))4 would have been
readily inferred from Kostival (Ans. 8). Kenneally merely bolsters the
Examiner's position that it would have been within the level of skill to vary
the viscosity of the dough of Kostival to be within the claimed range so as to
result in a pleasing baked taste/texture to the consumer (e.g., Ans. 8, 9).
Notably, Appellants also may cut their dough with the filling layer
between two dough layers before baking (Spec. ,r,r 55, 58 ("cutting prior to
baking can be carried out with any conventionally known means, e.g., a
knife, wire or cutting wheel")). Thus, the viscosity of the claimed dough
must result in a dough that is firm enough to withstand both extrusion and
cutting before baking. Kostival also discloses that the dough is extruded
(similar to Appellants' disclosure) and may be precut prior to baking
(Kostival ,r,r 12, 13, 48). In light of these circumstances, the use of the
claimed viscosity does not appear to patentably distinguish over a viscosity
that one of ordinary skill in the art, using no more than ordinary creativity,
would have used for Kostival's dough.
Appellants further urge that none of the references disclose that the
viscosity of the filling is ± 30% of the viscosity of the unbaked dough as
recited in claims 1 and 18 (Appeal Br. 22). Appellants state that broad
4 An applicant cannot defeat an obviousness rejection by asserting that the
cited references fail to teach or suggest elements which the applicant has
acknowledged are taught by the prior art. Constant v. Advanced Micro-
Devices, Inc., 848 F. 2d 1560, 1570 (Fed. Cir. 1988) ("A statement in a
patent that something is in the prior art is binding on the applicant and
patentee for determinations of anticipation and obviousness.") and In re
Nomiya, 509 F.2d 566,571 n.5 (CCPA 1975) (A statement by an applicant
that certain matter is prior art is an admission that the matter is prior art for
all purposes).
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disclosures relied upon by the Examiner of different fillings and doughs are
not sufficient to suggest their specific combination to yield the sensation of
"an unbaked heart of dough" (id; see also Reply Br. 7). We disagree.
Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989)
(holding that the prior art's disclosure of over 1200 possible combinations
rendered all possible formulations obvious). One of ordinary skill would
have readily appreciated that choices of dough and filling combinations
would have benefits, both lost and gained for, e.g., resulting taste
sensations/textures thereof. See also, cf Winner Int 'l Royalty Corp. v.
Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000) ("The fact that the
motivating benefit comes at the expense of another benefit, however, should
not nullify its use as a basis to modify the disclosure of one reference with
the teachings of another. Instead, the benefits, both lost and gained, should
be weighed against one another"). Notably, the claims do not recite that the
resulting taste sensation is that of an unbaked heart of dough.
Nonetheless, Appellants have not shown error in the Examiner's
determination that one of ordinary skill would have chosen the dough and its
center filling and their relative viscosities to result in any one of a wide
variety of pleasing tastes and baked textures to a consumer, including a filled
chocolate cake with a gradually changing texture as recited in claims 9 and
18, especially since Kostival exemplifies a chocolate brownie dough and
chocolate filling (e.g., Ans. 9, 10, 14, 15; Kostival ,r,r 31, 36, 43, 46).
Appellants' argument that the Martinet Declaration evinces that the
present invention is non-obvious is not persuasive. First of all, we note that
the evidence is not relied upon to show unexpected results per se. Pfizer, Inc.
v. Apotex, Inc., 480 F.3d 1348, 1371 (Fed. Cir. 2007) ("[A]ny superior
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property must be unexpected to be considered as evidence of non-
obviousness"). Rather, the Declaration is relied upon to show one example
of a dough within the claimed viscosity range "can be a flowable liquid"
(Appeal Br. 17, 19). This sole example is at 1 OOPa-s and there is no evidence
of a dough viscosity nearer to 500Pa-s. As the Examiner points out, no
evidence is proffered to show any dough consistency of Kostival (Ans. 12).
Conclusory statements that the doughs are different are not persuasive (Ans.
12, 13). The Examiner also adequately addresses Appellants' assertions that
the Martinet Declaration shows that the viscosity range taught in Kenneally
may not be relied upon since it is referred to as an apparent viscosity (Ans.
13, 14).
We discern no reversible error in the Examiner's assessment of the
weight to be given to the submitted evidence. In re Am. Acad. of Sci. Tech
Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) ("[T]he Board is entitled to
weigh the declarations and conclude that the lack of factual corroboration
warrants discounting the opinions expressed in the declarations."). See also
Velander v. Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003) ("In giving more
weight to prior publications than to subsequent conclusory statements by
experts, the Board acted well within [its] discretion."); Yorkey v. Diab, 601
F.3d 1279, 1284 (Fed. Cir. 2010) (The Board has discretion to give more
weight to one item of evidence over another "unless no reasonable trier of
fact could have done so").
Based on the above, Appellant's evidence, which is partly in the form
of conclusory statements from the Martinet Declaration, cannot be accorded
great weight. Balancing all the evidence anew, it is our conclusion that the
evidence for obviousness outweighs the evidence against obviousness.
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Appellants do not address, and thus do not present any additional
arguments for, the Examiner's rejection of dependent claim 5.
Accordingly, the § 103 rejections advanced by the Examiner in this
appeal are sustained.
ORDER
The Examiner's decision is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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