Ex Parte Finkowski et al

Board of Patent Appeals and Interferences

Sep 28, 2010

11008501 (B.P.A.I. Sep. 28, 2010)

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.
11/008,501 12/09/2004 James W. Finkowski P5729US-C1 1385
7590 09/28/2010
Arlene Hornilla
General Mills
Number One General Mills Blvd.
P.O. Box 1113
Minneapolis, MN 55440
EXAMINER
THAKUR, VIREN A
ART UNIT PAPER NUMBER
1782
MAIL DATE DELIVERY MODE
09/28/2010 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 JAMES W. FINKOWSKI and ROBERT F. MEYER
____________

Appeal 2009-007661
Application 11/008,501
Technology Center 1700
____________

Before SALLY G. LANE, MICHAEL P. TIERNEY, and
JEFFREY B. ROBERTSON, Administrative Patent Judges.

ROBERTSON, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
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STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 55-63. We have jurisdiction over the appeal
under 35 U.S.C. § 6(b).
We AFFIRM.
BACKGROUND
Appellants’ invention is directed to a machine-made rolled dough
product. (Spec. 1, ll. 9-11.) Claim 55 is illustrative:
55. A machine-made dough product comprising a rolled
product having a sheet of dough rolled from one end toward another
with contact of a dough surface controlled along the roll so as to
create a substantially tight rolled dough product, the dough product
made according to a process, said process comprising the steps of:
providing a dough product, the dough product having an
engagement surface and a leading feature;
positioning the engagement surface of the dough product onto a
movable surface of a conveyor;
transferring the dough product in a process direction by a
driving engagement between the dough product engagement surface
and the movable surface of the conveyor; and
impacting the leading feature of the dough product with an
impact device operatively positioned along the process direction by
movement of the movable surface of the conveyor;
wherein the step of impacting the leading feature with the
impact device further comprises temporarily increasing and thus
enhancing the driving engagement between the engagement surface of
the dough product and the movable surface by creating a region of
low pressure as compared to the ambient environment at a position
below the movable surface, the region of low pressure extending at
least across a portion of a width of the movable surface and extending
a predetermined distance in the process direction
whereby the dough product roll size, shape and roll are more
uniform and tighter than a machine-made dough product made
without temporarily increasing and enhancing the driving engagement
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between the engagement surface of the dough product and the
movable surface.

Appellants appeal the following rejections2:
1. Claims 55-63 under 35 U.S.C. § 112, second paragraph.
2. Claims 55-63 under 35 U.S.C. § 102 (b) as anticipated by any of Fisher,
Jr. (U.S. 3,704,664, issued Dec. 5, 1972); Sato (U.S. 4,110,482, issued
Aug. 29, 1978); Thornley (GB 2075906 A, published Nov. 25, 1981); or
Ostali (WO 86/02808, published May 22, 1986).

APPELLANTS’ CONTENTIONS
Appellants contend that the phrase “substantially tight rolled dough
product” is clear and definite when considered along with the related claim
language. (App. Br. 11-12.) Appellants also argue that “substantially” is
clear and commonly understood. (App. Br. 12.)
Appellants argue that Ostali does not disclose any specific control to
create a tighter roll than what is created by the conventional laths. (App. Br.
13.) Appellants contend that Thornley discloses a different type of rolling
process that does not cause the product to be rolled as presently claimed.
(App. Br. 13.)
Appellants argue that Sato and Fisher do not disclose products with
the claimed features. Specifically, Appellants contend that Sato does not

2 Appellants also argue the Examiner’s objection to the Drawings. (App. Br.
10 and 11.) However, as pointed out by the Examiner, whether the drawings
have been properly objected to is petitionable subject matter and not
appealable subject matter. (Ans. 7.) See 37 C.F.R. § 1.181. Accordingly,
the Examiner’s objection to the drawings is not before us on appeal.
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disclose any methods of enhancing the conveyance of a dough product and
that the product in Sato is not a tightly rolled dough product, but a rolled
circular product comprising a single winding or roll. (App. Br. 13.)
Appellants argue that enhancing the drive engagement or creating any
effect to cause a tighter rolled dough product would be inconsistent with
Fisher because Fisher discloses rolling a product in a gentle manner so as not
to damage, deform or tear the dough. (App. Br. 14.)

ISSUES
Is the phrase “substantially tight rolled dough product” recited in each
of the independent claims indefinite?
Does Fisher, Sato, Thornley, or Ostali disclose the substantially
tightly rolled dough product as recited in the claims?

PRINCIPLES OF LAW
The test for compliance for 35 U.S.C. § 112, second paragraph, is
whether the claims set out and circumscribe a particular area with a
reasonable degree of precision and particularity when read in light of the
application disclosure as they would be interpreted by one of ordinary skill
in the art. In re Moore, 439 F.2d 1232, 1235 (CCPA 1971). Claim
limitations including relative terms such as “substantially” do not stand in a
vacuum, but rather are read in light of the Specification. In re Mattison, 509
F.2d 563 (CCPA 1975) (holding that claims containing the limitation “to
substantially increase the efficiency of the compound as a copper extractant
from aqueous solutions having a pH of less than about 1.0” were not
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indefinite in view of the general guidelines disclosed in the Specification for
proper choice of substituents).
[E]ven though product-by-process claims are limited by and
defined by the process, determination of patentability is
based on the product itself. The patentability of a product
does not depend on its method of production. If the product
in the product-by-process claim is the same as or obvious
from a product of the prior art, the claim is unpatentable even
though the prior product was made by a different process.

In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985) (internal citations omitted).

FACTUAL FINDINGS
We adopt the Examiner’s findings in the Answer and Final Office
Action as our own, except as to those findings that we expressly overturn or
set aside in the Analysis that follows. (Ans. 5-7; Final Office Act. 3-4.)
Additional findings of fact may appear in the Analysis that follows.

ANALYSIS
We confine our discussion to appealed claim 55, which contains claim
limitations representative of the arguments made by Appellants pursuant to
37 C.F.R. § 41.37(c)(1)(vii).
35 U.S.C. § 112 Second Paragraph Rejection
The Examiner determined that the claims are unclear as to what is a
“substantially tight” rolled dough product. (Ans. 4.) The Examiner stated
that the tightness of the rolled dough product is the “crux of appellant’s
invention” and the phrase is “indefinitely broad since the particular tightness
of the dough is subjective and a relative matter of degree.” (Ans. 8.) The
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Examiner additionally stated that the “whereby” clause present in the claims
is generic to the overall process and to the type of driving engagement and
“provides no specificity as to what would have been a dough product of
more uniformity and tightness.” (Ans. 9.)
We agree with the Examiner, that the claims, when read in light of the
Specification, do not sufficiently set out and circumscribe a particular area
with a reasonable degree of precision to one of ordinary skill in the art.
Specifically, the Specification does not set forth a definition for a
“substantially tight rolled dough product.”
Figures 1 and 2 of the present application are reproduced below:

Figures 1 and 2 are said to include a perspective view of a tightly
rolled sheet of dough product according to the present invention and a
loosely rolled sheet of dough product, respectively. (Spec. 5, ll. 3-7.)
While Appellants state the term “substantially” is “clear and
commonly understood,” Appellants provide no persuasive evidence to
support what level of tightness would be encompassed by “substantially” in
the context of a “substantially tight rolled dough product.” Accordingly, one
of ordinary skill in the art would not be able to determine what rolled dough
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products would correspond to a substantially tight rolled dough product that
would meet the limitations of claim 1, and what rolled dough products
would correspond to a loosely rolled dough product as depicted in Figure 2.
Moreover, we are unconvinced that the language of the claims, when
read as a whole, is clear and definite. Contrary to Appellants’ argument, the
claims do not require a rolled product including a dough surface contact
along the roll. (App. Br. 12.) Indeed, the phrase “a rolled product having a
sheet of dough rolled from one end toward another with contact of a dough
surface controlled along the roll so as to create a substantially tight rolled
dough product” indicates only that the contact of the dough surface may be
varied, it does not indicate any particular level of contact of the dough
surface.
In addition, the comparative roll size, shape, uniformity, and tightness
of the rolled dough products relative to dough products that do not include
an enhanced engagement step recited in the claims are relative terms of
degree, and thus do not define a particular level or range of tightness of the
recited dough product. Thus, because the claims do not provide any
particular level of dough surface contact or tightness of the rolled dough
product, the claim language as a whole fails to provide a sufficient level of
clarity to allow one of ordinary skill in the art to determine whether a
particular dough product infringes the claims or not. Geneva Pharms., Inc.
v. GlaxoSmithKline PLC, 349 F.3d 1373, 1384 (Fed. Cir. 2003) (“[a] claim
is indefinite if its legal scope is not clear enough that a person of ordinary
skill in the art could determine whether a particular [product or method]
infringes or not.”) Accordingly, we affirm the Examiner’s rejection of
claims 55-63 under 35 U.S.C. § 112, second paragraph.
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35 U.S.C. § 102 Rejections
Ostali
Appellants’ argument that Ostali does not disclose a substantially tight
rolled dough product as claimed is unconvincing. The Examiner found that
Ostali discloses tightly rolled dough products, as well as the use of pressure
wheels to maintain the dough firmly in contact with the surface of the
conveyor. (Ans. 6, 13 (citing Ostali, page 3, ll. 25-30; fig.4A, item 6).)
Specifically, Ostali states that “the piece of dough 2 continues forward urged
against the conveyor 1 by two pressure wheels 6 the purpose of which is to
maintain the dough 2 firmly in contact with the conveyor 1 as the pastry is
rolled up.” (Ostali, page 3, ll. 25-30.) Thus, Appellants’ arguments that the
pressure wheels disclosed in Ostali do not provide an enhanced engagement
between the dough product and the movable surface are contrary to the
express teachings of Ostali. (App. Br. 13.) Therefore, we are not convinced
that Ostali fails to disclose a substantially tight dough product as claimed.
Further, Appellants have not provided any sufficient evidence that the rolled
dough products as recited in the claims are different than the rolled dough
products disclosed by Ostali.

Thornley
We are also not persuaded that because Thornley discloses a different
type of rolling process than recited in the present claims, Thornley fails to
disclose a substantially tight rolled dough product as recited in the claims.
(App. Br. 13.) The Examiner found that Thornley discloses a tightly rolled
dough product, which is produced with the aid of an air pressure unit or fan
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that prevents relative sliding between the dough to be rolled and the
conveyors. (Ans. 6 (citing Thornley, page 2, ll. 22-27 and 59-63).)
Specifically, Thornley discloses:
To assist in repeatedly forming a tight roll, the positive drive
connection between layer 20 and the conveyors can be assisted
by a downward pressure on the layer 20. This could be a
mechanical pressure, or as a pneumatic pressure as shown in the
drawings where an air pressure unit or fan 42 delivers a
downwards discharge of air under pressure onto layer 20. This
resists any tendency for relative sliding movement between the
layer 20 and the conveyors.
(Thornley, page 2, ll. 22-27 and 59-63.)
Accordingly, Thornley provides an enhanced engagement between the
engagement surface of the dough product and the movable surface.
Therefore, we are not convinced that the substantially tight rolled dough
product recited in the claims is different than the tight rolled dough product
disclosed in Thornley. Additionally, Appellants have not sufficiently
identified what the differences are between a dough product rolled in a static
position and a dough product rolled by continued conveyance. (App. Br.
13.)

Sato and Fisher
The Examiner’s rejections of the claims over Sato and Fisher stand on
different footing. We agree with Appellants that neither Sato nor Fisher
expressly discloses a tightly rolled product or an enhanced engagement as
recited in the claims. (App. Br. 13-14.) Moreover, as Appellants argue,
Fisher emphasizes that the rolling process is devoid of undesirable lateral or
other forces or stresses in order to prevent damage to the dough. (App. Br.
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14 (citing Fisher, col. 3, ll. 5-15).) Thus, the Examiner erred in finding that
Sato and Fisher disclose substantially tight rolled dough products that meet
the limitation “whereby the dough product roll size, shape and roll are more
uniform and tighter than a machine-made dough product made without
temporarily increasing and enhancing the driving engagement between the
engagement surface of the dough product and the moveable surface” recited
in the claims. Accordingly, we reverse the Examiner’s decision to reject
claims 55-63 as being anticipated by Sato or Fisher.

DECISION
We affirm the Examiner’s decision to reject claims 55-63 under 35
U.S.C. § 112, second paragraph. We also affirm the Examiner’s decision to
reject claims 55-63 under 35 U.S.C. § 102(b) as anticipated by Ostali or
Thornley.
However, we reverse the Examiner’s § 102(b) rejection of claims 55-
63 as anticipated by Sato or Fisher.

TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1) (2009).

ORDER
AFFIRMED
Appeal 2009-007661
Application 11/008,501

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KMF

Arlene Hornilla
General Mills
Number One General Mills Blvd.
P.O. Box 1113
Minneapolis, MN 55440