Ex Parte Galer et al

Patent Trial and Appeal Board

Oct 30, 2018

14511309 (P.T.A.B. Oct. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/511,309 10/10/2014
48940 7590 10/30/2018
FITCH EVEN TABIN & FLANNERY, LLP
120 SOUTH LASALLE STREET
SUITE 2100
CHICAGO, IL 60603-3406
FIRST NAMED INVENTOR
Chad D. Galer
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.
1410-133749-US 8743
EXAMINER
WONG, LESLIE A
ART UNIT PAPER NUMBER
1793
MAIL DATE DELIVERY MODE
10/30/2018 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 CHAD D. GALER, PAUL V. GASS, AARON S. HANDRICK,
JOHN A. HIRSCHEY, BRIAN E. Le VINE, and CAROLYN J. TRINKA
Appeal2017-011542
Application 14/511,309
Technology Center 1700
Before: CATHERINE Q. TIMM, KAREN M. HASTINGS, and
MONTE T. SQUIRE, Administrative Patent Judges.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134 of the Examiner's
decision rejecting claims 1-20 and 35--40. We have jurisdiction over the
appeal under 35 U.S.C. § 6(b).
For the reasons presented by Appellant in the briefs, we REVERSE.
1 Appellant is the Applicant, Kraft Foods Group Brands LLC, which is also
stated to be the real party in interest (Appeal Br. 3).
Appeal 2017-011542
Application 14/511,309
Claims 1, 11, and 35 are illustrative of the appealed subject matter
( emphasis added to identify key disputed limitations):
1. A cheese product having improved melting and
organoleptic properties comprising:
a plurality of cheese pieces, each cheese piece having a
mass and an exterior surface area; and
a powdered coating comprising one or more dairy
powders adhered to the exterior surface areas of the plurality of
cheese pieces, the coating having a mass that is about 1 % to
about 15 % the mass of the cheese pieces.
11. A cheese product having improved melting and
organoleptic properties comprising:
a plurality of cheese pieces, each cheese piece having an
exterior surface with a surface area and a moisture content; and
a dry coating comprising one or more dairy powders
coating from about 15% to about 100% of the surface area of
the cheese pieces, the coating having a moisture content and a
mass that is about 1 % to about 15 % the mass of the cheese
piece;
and wherein the difference in moisture contents between
the one or more cheese pieces and the dairy powder is at least
20%.
35. A plurality of coated cheese pieces, each coated
cheese piece comprising:
a core comprising one or more cheeses; and
an outer coating comprising one or more cheese powders;
wherein the core has a first mass and the outer coating has a
second mass that is about 1 % to about 15% of the first mass.
The Examiner rejected all of the claims under 35 U.S.C. § 102(b) as
anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as obvious
over each one of Parsons (US 1,737,770, issued Dec. 3, 1929), Krusi (US
2,648,607, issued Aug. 11, 1953), or Arenson (US 3,993,786, issued Nov.
23, 1976).
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Application 14/511,309
ANALYSIS
The§ 102 rejections of each independent claim on appeal de facto
rely upon the artisan immediately envisaging from each disclosure
individually (Parsons, Krusi, and Arenson) the claimed powder range of
"about 1 % to about 15%" of the mass of the cheese pieces as recited in each
of claims 1, 11, and 3 5. However, as pointed out by Appellant, none of the
references, taken individually, explicitly describes an amount in such a range
(Appeal Br., Reply Br. generally). Rather, each reference describes an
amount of dairy powder that falls far outside of the claimed range, and does
not indicate that the stated purpose of each reference may be served by an
amount within the claimed range (Appeal Br. 12-16).
We also agree with Appellant that the Examiner has failed to
articulate any persuasive reason why an artisan would have sought to modify
any one of Parsons, Krusi, or Arenson based solely on their respective
teachings to obtain a coating having a mass falling within the claimed range
(e.g., Appeal Br. 12-16). Significantly, Parson's minimum mass of 23% is
about 50% more ( over 1. 5 times more) than the claimed maximum limit of
about 15%, and Krusi's sole example of 50% (1 to 1) is over 300% more
( over 3 .3 times more) than the claimed maximum limit: Thus, each
reference actually teaches away from the claimed range. In the opposite
direction, Arenson's sole exemplified amount of0.1 % is about 90% less (10
times less) than the claimed minimum of about 1 %. Arenson also seeks to
remove any excess powder that does not adhere to the cheese slice surface
and recycle it (Arenson col. 7, 11. 6-22). See In re Sebek, 465 F. 2d 904, 907
( CCP A 1972) ( where the prior art indicated that an optimum should be
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Application 14/511,309
sought within a range, the determination of optimum values outside that
range may not be obvious).
A preponderance of the evidence supports Appellant's position that
each prior art disclosure applied by the Examiner is insufficient to establish
anticipation of each independent claim on appeal. Likewise, each prior art
disclosure, taken individually2, is insufficient to establish obviousness of the
range disclosed in each independent claim.
Furthermore, the Examiner has not explicitly addressed Appellant's
argument that none of the references describe a "cheese powder" as recited
in claims 10, 20, and 35--40 (e.g., Appeal Br. 12). A preponderance of the
evidence supports Appellant's position that a whey powder is not a cheese
powder (Reply Br. 5---6). The Examiner has also not adequately shown that
any of the applied prior art would have had the moisture content differential
2 While a range as claimed and described in Appellant's Specification may
have been obvious if the teachings of the references were taken collectively,
versus individually, the Examiner did not rely upon any collective teachings
of prior art to exemplify that such a range may have been obvious. See, e.g.,
Iron Grip Barbell Co. v. USA Sports, 392 F.3d 1317, 1322 (Fed. Cir. 2004)
(where various patents describe weight plates with one, two, and four
elongated openings/handles such that they rendered use of three handles
obvious; the range being disclosed in various prior art references was a
"distinction without a difference" from other range cases). The Board relies
on the involved parties to focus the issues and decides only those issues
based on facts and arguments presented by the involved parties. See Ex
Parte Frye, 293 F. 1013 (BPAI 2010 (precedential)). While the Board is
authorized to enter a new ground of rejection, this authority is discretionary.
See 3 7 C.F .R. § 41. 77 (b ). We leave it to the Examiner to determine whether
any such new ground of rejection should be made in this case.
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Application 14/511,309
recited in claim 11 for an anticipation rejection, or provided sufficient
rationale explaining why one would have used such a moisture differential. 3
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)). An inherent characteristic must be
inevitable. See Oelrich, 666 F .2d at 5 81. The Examiner has not met the
initial burden of establishing a prima facie case of anticipation or
obviousness based on an inherent or explicit disclosure of the claimed
subject matter under 35 U.S.C. §§ 102 or 103, respectively. In re Oetiker,
977 F.2d 1443, 1445 (Fed. Cir. 1992) ("[T]he examiner bears the initial
burden, on review of the prior art or on any other ground, of presenting a
prima facie case of unpatentability. ").
The Examiner's rejections and response to argument presented in the
Answer do not persuasively address the contentions raised by the Appellant
in the briefs (Ans. generally).
Under these circumstances, we are constrained to reverse all of the
§§ 102 and 103 rejections before us.
3 Krusi does exemplify such a moisture differential during preparation of its
dried product, the final product however has a moisture of 6% and thus, does
not have such a moisture differential (Krusi, col. 4, 11. 31--42). The
Examiner did not appear to explicitly rely upon or discuss this disclosure,
nor did the Examiner explicitly distinguish or rely upon any intermediate
products versus final products taught in the references.
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Appeal 2017-011542
Application 14/511,309
ORDER
REVERSED
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