Ex Parte Gordon

Board of Patent Appeals and Interferences

Jun 20, 2012

10151106 (B.P.A.I. Jun. 20, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte RONI GORDON
____________

Appeal 2011-006896
Application 10/151,106
Technology Center 1700
____________

Before BRADLEY R. GARRIS, HUBERT C. LORIN, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL

Appellant appeals under 35 U.S.C. § 134 from the Examiner's
decision rejecting claims 23-27, 29, 30, 35-38, 51, 53-67, 72, 73, 97-107,
110-127, and 130-133. We have jurisdiction under 35 U.S.C. § 6.
We AFFIRM.
Appellant claims a food unit comprising a package containing food
with an indication of certain matters in print on or in the package
(independent claims 23 and 97). Appellant also claims an assembly
comprising a plurality of such food units (independent claims 51 and 110).
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Representative claim 23 reads as follows:
23. A food unit comprising;

(a) a package;

(b) a type of food packaged in said package;

(c) an indication in print on or in said package, said indication:

(i) stating a predetermined caloric content of 100 calories for
the entire package; and

(ii) indicating an availability of other food units of a plurality of
different types of foods, each of said plurality of different types of
foods having said predetermined caloric content.

The prior art listed below is relied upon by the Examiner as evidence
of obviousness:
Gelsinger 5,958,536 Sep. 28, 1999
Bangs 6,039,989 Mar. 21, 2000

Bunny Yeager, The 100 Calorie Miracle Diet (Pinnacle Books 1975).

Chris Sare, Superfoods, superfast, in Joe Weider’s Muscle & Fitness (Mar.
1, 2001), http://www.highbeam.com/doc/1P3-66268513.html.

Lindsey Remington, Arizona Dairy Touts Milk as a Hip Health Drink, in
Knight Ridder/Tribune Business News (June 7, 2001), http:
www.highbeam.com/doc/1G1-76353397.html.

Low-Cal Ice Cream a False Dream, University Press International (UPI)
(June 19, 2001), http://www.highbeam.com/doc/1P1-45287689.html.

Kelly Sweger, Keeping the Holidays at Bay, in University Wire (Dec. 10,
2001), http://www.highbeam.com/doc/1P1-48775419.html.

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Milk Information Gathered From Around the Internet (Apr. 13, 2010),
http://www.goodeatsfanpage.com/CollectedInfo/MilkInformation.htm.

Labeling of Ingredients, Food Safety and Inspection Service (FSIS)
Directive 7237.1, Rev. 1, Amend. 1 (Aug. 9, 1994).

Nutrition Labeling and Education Act of 1990 (NLEA), Pub. L. No. 101-
535, Wikipedia (Apr. 13, 2010),
http://en.wikipedia.org/wiki/Nutrition_Labeling_and_Education_Act.

The Examiner rejects claims 26, 27, 53, 60, 65, 72, 73, 100, 101, 111,
118, 123, 126, and 127 under 35 U.S.C. § 112, 2nd paragraph, as being
indefinite for failing to particularly point out and distinctly claim the subject
matter which Appellant regards as the invention. According to the
Examiner, the rejected claims are rendered indefinite by the claim phrases
"natural foods", "processed foods", and "the nature of the food" (Ans. 5-6).
We agree with Appellant that these claim phrases reasonably apprise
those with ordinary skill in the art of the scope of the rejected claims (see,
e.g., App. Br. 9-11, 13). See In re Warmerdam, 33 F.3d 1354, 1361 (Fed.
Cir. 1994) ("The legal standard for definiteness is whether a claim
reasonably apprises those of skill in the art of its scope."). The Examiner's
contrary view is not only incompatible with this legal standard but is also
incompatible with the Examiner's finding that the food types taught by
Yeager include, for example, natural foods and processed foods (Ans. 14).
It follows that we will not sustain the Examiner's § 112, 2nd
paragraph, rejection.

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The Examiner rejects the appealed claims under 35 U.S.C. § 103(a) in
the manner set forth below.
Claims 23-27, 29-30, 35-38, 51, 53-67, 72-73, 97-107,
110-127, and 130-133 [i.e., all claims] are rejected under 35
U.S.C. § 103(a) as being unpatentable over Yeager (The 100
Calorie Miracle Diet).
The references of Sare, Sweger, UPI, Remington, Milk
Information, Nutrition Labeling and Education Act of 1990
(NLEA) (Public Law 101-535), and the United States Dept.
of Agriculture Food Safety and inspection Service (FSIS)
Directive 7237.1 of 8/09/94, are provided as evidence1

(Ans. 6-7, emphasis omitted).
Claims 27, 73, 101, and 127 are correspondingly (and alternatively)
rejected under 35 U.S.C. § 103(a) as unpatentable over the references
applied above against all claims and further in view of Bangs.
Finally, claims 36, 57, 105, and 115 are correspondingly (and
alternatively) rejected under 35 U.S.C. § 103(a) as unpatentable over the
references applied above against all claims and further in view of Gelsinger.
We agree with the Examiner that it would have been prima facie
obvious for one with ordinary skill in this art to combine the applied
references in the manner required by the rejected claims. In particular, we
agree that it would have been prima facie obvious to provide Yeager's 100

1 Appellant argues that these references (i.e., the references to Sare, etc.) are
not part of the Examiner's statement of rejection and requests that the Board
give these references no weight (App. Br. para. bridging 19-20). Appellant's
argument is without persuasive merit. The record unambiguously reveals
that these references are expressly cited and relied upon by the Examiner in
the § 103 rejections before us. For this reason, we deny Appellant's request
that no weight be given to these references.
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calorie meals in the form of an assembly of food packages which include an
indication (e.g., a caloric content of 100 calories) in print on each package in
view of, for example, the Sare reference which evinces that such food
packages were known in the prior art (Ans. 8-11). The result would be a
combination of prior art features (i.e., Yeager's 100 calorie meals and food
packages of the type taught by Sare) which would yield predictable results
according to their established functions. See KSR Int’l. Co. v. Teleflex Inc.,
550 U.S. 398, 415-16 (2007) ("The combination of familiar elements
according to known methods is likely to be obvious when it does no more
than yield predictable results.").
Appellant argues that
to whatever extent an individual prior art food package may
have illustrated a caloric content of 100 calories, the prior art
does not disclose or suggest “availability of other food units”
having the predetermined calorie count, or an “assembly”
having a plurality of food units with a “predetermined caloric
content being uniform for all of said plurality of food units,”
as claimed

(App. Br. 23). Appellant understands that the above quoted claim
recitation relates to printed matter and acknowledges that, "[i]n order for
printed matter to distinguish a claimed invention over prior art, there must be
a new and unobvious functional relationship between the printed matter and
the substrate on which it appears" (id. at 27). According to Appellant,
[t]he printed matter . . . on each of the packages in the instant
claimed invention bears a substantial functional relationship
to the package and to the claimed monitoring and/or
controlling method itself by enabling the consumer to easily
find, monitor, and/or control caloric intake, simply by
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counting the number of packages of food containing such
label and multiplying by 100

(id.).
We share the Examiner's determination that the printed matter recited
in the appealed claims does not patentably distinguish the claimed products
(i.e., a food unit comprising a package containing food and an assembly
comprising a plurality of such food units) from the prior art (see, e.g., Ans.
11-12). As Appellant acknowledges, printed matter may serve to distinguish
an invention from the prior art only if there is a functional relationship
between the printed matter and its substrate. See AstraZeneca LP v. Apotex,
Inc., 633 F.3d 1042, 1064-65 (Fed. Cir. 2010); In re Ngai, 367 F.3d 1336,
1338-39 (Fed. Cir. 2004). We perceive no convincing merit in Appellant's
argument that the recited "indication in print" has a functional relationship
with the claimed package. Such printed matter has no more a functional
relationship with its substrate than the printed instructions in AstraZeneca
and Ngai. For this reason, the "indication in print" recitations of the
independent claims and various dependent claims (e.g., claims 24 and 54)
are not entitled to patentable weight.
Concerning the "removably affixable label" limitation of dependent
claims 36, 57, 105, and 115, Appellant additionally argues that neither
Yeager nor Gelsinger contains a disclosure or suggestion of this limitation
(App. Br. 62).
Appellant's argument is unpersuasive. It is undisputed in this record
that food packages having labels thereon were known in the prior art as
evinced, for example, by the Sare, UPI, and FSIS references. Appellant does
not argue, much less provide evidence, that such prior art labels are
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incapable of being removed. Further, Gelsinger evinces that food-container
labels designed to be removable were known in the prior art (col. 2, ll. 8-24).
In light of this evidence, we agree with the Examiner that it would have been
prima facie obvious to provide the food packages of the modified Yeager
reference with removably affixable labels to thereby obtain benefit of the
established function of such labels (see, e.g., Ans. 19).
Appellant presents evidence of nonobviousness in an attempt to
overcome the Examiner's prima facie case of obviousness. In particular,
Appellant states that, "for the convenience of the Honorable Board,
Appellant will focus on exemplary indicia of nonobviousness, notably
evidence presented in Evidence Appendix D, but the Honorable Board is
encouraged to review the evidence of nonobviousness provided by the other
Evidence Appendices" (App. Br. 31). We will consider only the evidence of
nonobviousness specifically identified and relied upon by Appellant which is
selected portions of Evidence Appendix D.2 According to Appellant,
Evidence Appendix D contains indicia of nonobviousness in the form of
long felt need (id. at 32-34), industry skepticism (id. at 34-36), commercial
success (id. at 36-37), unexpected results (id. at 38), and copying by others
(id. at 39).
In order to be relevant to the issue of obviousness versus
nonobviousness, indicia of nonobviousness must be due to or linked to
features of the claimed invention that were not disclosed in the prior art. See
Geo. M. Martin Co. v. Alliance Mach. Sys. Int’l. LLC, 618 F.3d 1294, 1304-

2 Although Evidence Appendix D is titled as a Declaration under "37 U.S.C.
[sic] SECTION 1.131", Appellant clarifies that the Declaration should have
been titled as being under 37 C.F.R. § 1.132 (App. Br. 29, n. 5).
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05 (Fed. Cir. 2010); Asyst Tech., Inc. v. Emtrak, Inc., 544 F.3d 1310, 1316
(Fed. Cir. 2008); Simmons Fastener Corp. v. Illinois Tool Works, Inc., 739
F.2d 1573, 1575 (Fed. Cir. 1984), cert. denied, 471 U.S. 1065 (1985).
The consistent deficiency of the proffered indicia of nonobviousness
is that Appellant has failed to link this indicia to features of the claimed
invention not disclosed in the prior art.
For example, Appellant states that "[t]he present invention clearly
satisfies [a] long felt and unresolved need, as evidenced by the universal
acclaim attributed to the 100-calorie food package" (App. Br. 32). However,
the record establishes that 100-calorie food packages were known in the
prior art which is not disputed by Appellant (see, e.g., App. Br. 41).
Furthermore, the evidence specifically identified by Appellant as showing
satisfaction of a long felt need relates to 100-calorie snack packages of, for
example, Oreos rather than the claimed invention (see, e.g., App. Br. 33, n.
29).
Corresponding deficiencies undermine Appellant's statement
regarding industry skepticism, namely, "[t]o say that the food industry
viewed 100-calorie food packages with skepticism is an understatement of
epic proportions" (id. at 34).
Similarly, Appellant's evidence of commercial success relates to, for
example, 100 Calorie Packs sold by Kraft rather than the claimed invention
(see, e.g., id. at 36, n. 34 re Evidence Appendix D, para. 18.b.). The
evidence of unexpected results is likewise deficient since the result said to
be unexpected is the commercial success of the 100-calorie food package
(see, e.g., id. at 38, n. 46 re Evidence Appendix D, para. 18.b.).
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The evidence of copying offered by Appellant does not relate to the
claimed invention but instead to copying of, for example, Kraft's 100 calorie
snack packs (see, e.g., id. at 39, n. 52).
In addition, Appellant's indicia of nonobviousness is further deficient
in that Appellant attributes the indicia (e.g., long felt need and commercial
success) to the "indication in print" features of the appealed claims (see, e.g.,
App. Br. para. bridging 33-34, 37). As explained above, these features are
not entitled to patentable weight. It follows that indicia resulting from these
features do not evince nonobviousness.
In light of the foregoing, our consideration of the argument and
evidence for and against obviousness leads us to determine that substantial
evidence supports an ultimate conclusion of obviousness. Therefore, we
sustain each of the above § 103 rejections of the appealed claims.
The decision of the Examiner 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)(1)(iv).
AFFIRMED

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