Ex Parte Boyle et al

Board of Patent Appeals and Interferences

Jul 13, 2012

10957411 (B.P.A.I. Jul. 13, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/957,411 10/01/2004 Janet L. Boyle P6431US 6692
30173 7590 07/13/2012
GENERAL MILLS, INC.
P.O. BOX 1113
MINNEAPOLIS, MN 55440
EXAMINER
TRAN, LIEN THUY
ART UNIT PAPER NUMBER
1789
MAIL DATE DELIVERY MODE
07/13/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JANET L. BOYLE,
CAOLINA M. HOXIE, and THOMAS J. FORT
____________

Appeal 2011-001501
Application 10/957,411
Technology Center 1700
____________

Before TERRY J. OWENS, PETER F. KRATZ, and
LINDA M. GAUDETTE, Administrative Patent Judges.

GAUDETTE, Administrative Patent Judge.

Appeal 2011-001501
Application 10/957,411

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DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s decision1
finally rejecting claims 1, 3, 6, 7, 9-18, 25, 27, 29-35, 43, 44, 46, and 47 under 35
U.S.C. § 103(a) as unpatentable over Wallin2 in view of Gross3, Moder4, and
Young5, and claims 36, 38, and 49-51 under 35 U.S.C. § 103(a) as unpatentable
over the same references, and further in view of Violi6.7, 8 We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.
Appellants’ arguments in support of patentability as to all appealed claims
are based on limitations common to the independent claims, i.e., claims 1, 25, and
36. (See generally, Br. 13-17 and 17-18 (noting only that Violi does not make up

1 Final Office Action mailed Dec. 15, 2009 (“Final”), as modified by the Advisory
Action mailed Feb. 23, 2010, withdrawing the rejection under 35 U.S.C. § 112,
second paragraph.
2 US 4,623,542 issued Nov. 18, 1986.
3 US 2003/0035863 A1 published Feb. 20, 2003.
4 US 6,579,554 B2 issued Jun. 17, 2003.
5 US 4,650,686 issued Mar. 17, 1987.
6 US 2004/0009266 A1 published Jan. 15, 2004.
7 Appeal Brief filed May 10, 2010 (“Br.”)
8 In the statements of the rejections as they appear in the Final and Answer, claims
49-51 were included in the rejection of independent claims 1 and 25, rather than in
the rejection of independent claim 36. However, claims 49-51 depend from
independent claim 36. In addition, Moder and Young were not listed in the
rejection of independent claim 36, although in rejecting independent claims 1 and
25, the Examiner relies on these references for teachings of the same features
recited in independent claim 36. As Appellants have not separately argued the
dependent claims, and it is clear the Examiner intended to rely on Moder and
Young in rejecting claims 36 and 38 (see Final 5 (“[c]laims 36,38 are rejected . . .
as being unpatentable over Wallin [] in view of Gross [] as applied to claims 1,3, 6-
18,25,27-35,43-51 above”), we view the misstatements of the rejections as
harmless error.
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for the deficiencies of the other references).) We focus our discussion on claim 1,
which is reproduced below from the Claims Appendix to the Appeal Brief
(emphasis added):
1. A fried filled pastry comprising:
a fried dough shell made from a raw dough including
a combination of at least hard wheat enriched flour and whole-wheat
flour, wherein the hard wheat enriched flour is at a concentration of about
45 to about 60 percent by weight of the raw dough and the whole-wheat
flour is at a concentration of about 2 to about 15 percent by weight of the
raw dough,
a combination of liquid sweetener and granulated sweetener present
at a total concentration of about 4 percent up to about 10 percent by weight
of the raw dough, wherein the liquid sweetener is selected from the group
consisting of refiner's syrup, molasses, corn syrups, high fructose com
syrups, honey, maple syrup, and combinations thereof, and
water at a concentration of about 30 to about 50 percent by weight of
the raw dough,
wherein the fried dough shell has a flaky exterior surface and a bready well-
developed interior cell structure, and wherein the fried dough shell has an
appearance and taste of a graham-cracker; and
a filling prepared from a material that is distinct from the fried dough shell,
wherein the filling is substantially retained within the fried dough shell, and
wherein an interface between the fried dough shell and the filling minimizes
moisture migration.
The Examiner finds Wallin discloses the invention as claimed in claim 1
with the exception of the limitations shown in bold. (Ans.9 4 and 8 (as to the
graham-cracker appearance and taste).)
The Examiner maintains the water activity of the filling is a result-effective
variable and it would have been obvious to optimize this parameter to minimize

9 Examiner’s Answer mailed Jul. 19, 2010.
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moisture migration. (Id. at 6.) Appellants do not challenge this determination.
(See generally, Br. 13-17.)
The Examiner relies on Gross for a teaching of the known use of whole
wheat flour in bakery products. (Ans. 8.) The Examiner determines
[i]t would [] have been obvious to use a combination of flour and
whole wheat flour when desiring to improve the health benefit of the
[Wallin] product. . . . It would have been obvious to one skilled in the
art to determine the amount of whole wheat flour depending on the
nutrition, taste, flavor and texture wanted.
(Id. at 6.) Appellants do not challenge this determination. (Cf. Br. 16-17
(“[A]lthough it may be obvious to add wheat bran to a baked product to improve
the strength and/or for health benefits, it is not obvious to add whole wheat flour to
a dough composition for producing the fried dough shell having a graham cracker-
like appearance and taste.”).)
The Examiner finds Wallin discloses that “the sugar level controls the
sweetness and has some effect upon the controlled browning during cooking and
toasting.” (Ans. 5 (quoting Wallin col. 8, ll. 4-6).) The Examiner relies on Young
for a disclosure of controlling browning in baked goods through the use of
reducing sugars such as high fructose corn syrup, honey, etc. (Ans. 5), and Moder
for a teaching of adding sugar to enhance the flavor of dough, and as a starting
material for the Maillard reaction10 (id.). The Examiner determines
it would have been obvious to one skilled in the art to add the type,
the amount and combination of sweeteners known in the art as shown
by Young [] and Moder [] to obtain desired coloration and flavor.
Such parameter is a result-effective variable which can readily be
determined through routine experimentation.

10 “[A] Maillard or nonenzymatic browning reaction . . . is responsible for the
browning and complex flavor development in foods that undergo heat treatments
such as frying.” (Br. 15.)
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(Id.)
Appellants argue the Examiner erred in finding the claimed graham cracker
flavor would inherently result from the proposed combination. Appellants argue
“the flavor is developed by the novel and unobvious careful formulation and
delicate balance, discovered beyond routine experimentation, of the claimed
combination of liquid sweetener and granulated sweetener with whole-wheat flour
in a fried dough.” (Br. 14.) In support of their contention that achieving the
claimed graham cracker flavor would not have been a matter of routine
experimentation, Appellants argue use of sweeteners in fried foods is more
complicated than in baked foods. (Id.) According to Appellants, one of ordinary
skill in the art would not have been motivated to select a liquid sweetener for use
in a frying process “due to the excessive browning reactions which occur.” (Id. at
15.) Appellants note neither Young nor Moder contemplates frying a raw dough
composition, and urge that Young teaches away from using a combination of liquid
and granulated sweetener since the outer region of Young’s baked good is made
from dough comprising only granulated or crystallizable sugars. (Id. at 16.)
We do not find Appellants’ arguments persuasive for the reasons expressed
by the Examiner in the Answer. As pointed out by the Examiner, Wallin is relied
upon for a teaching of a fried pastry and does not place any restriction on the type
of sweetener that can be used. (Ans. 8.) Appellants have not directed us to any
persuasive evidence which supports their contention that one of ordinary skill in
the art would not use a liquid sweetener in frying applications. See In re Geisler,
116 F.3d 1465, 1471 (Fed. Cir. 1997) (argument by counsel cannot take the place
of evidence); In re Lindner, 457 F.2d 506, 508 (CCPA 1972) (mere conclusory
statements of superiority in the Specification and/or the Brief, unsupported by
factual evidence, are of little probative value). Appellants have not convincingly
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explained why Young’s use of only granulated sugar in the dough would have
discouraged the ordinary artisan from using a combination of liquid and granulated
sweeteners. See In re Gurley 27 F.3d 551, 553 (Fed. Cir. 1994) (“A reference may
be said to teach away when a person of ordinary skill, upon reading the reference,
would be discouraged from following the path set out in the reference, or would be
led in a direction divergent from the path that was taken by the applicant.”); cf.
KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) (explaining it is erroneous
to conclude “that a patent claim cannot be proved obvious merely by showing that
the combination of elements was ‘obvious to try’”). Likewise, Appellants have not
directed us to evidence to support their contention that a graham cracker taste
would not have been achieved through mere routine experimentation. See Pfizer,
Inc. v. Apotex, Inc., 480 F.3d 1348, 1371-72 (Fed. Cir. 2007) (explaining a superior
property is not unexpected if it results from routine, verification testing to optimize
selection of known ingredients because selection of the best ingredients proves
nothing more than routine optimization that would have been obvious to one of
ordinary skill in the art). Appellants have not directed us to, nor do we find, any
indication of criticality in the selection of sweeteners, processing conditions or the
like to achieve this feature. (See e.g., Spec. 4:14-17 (“There is no specific
limitation on many of the ingredients of the filling composition. Each of the
ingredients is used to develop a desired sweetness-tartness combination as well as
to provide a specific flavor such as grape, strawberry, cinnamon, cherry, and
blueberry.”).)
In sum, for the reasons stated above and in the Answer, we are not
convinced of reversible error on the part of the Examiner in rejecting the appealed
claims. Accordingly, we affirm the Examiner’s decision to reject claims 1, 3, 6, 7,
9-18, 25, 27, 29-36, 38, 43, 44, 46, 47, and 49-51.
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Application 10/957,411

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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).
AFFIRMED

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