Ex Parte Guess

Board of Patent Appeals and Interferences

Oct 27, 2009

09964000 (B.P.A.I. Oct. 27, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte WILLIAM YOUNGER GUESS
____________

Appeal 2009-004446
Application 09/964,000
Technology Center 1700
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Decided: October 27, 2009
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Before EDWARD C. KIMLIN, BRADLEY R. GARRIS, and
ADRIENE LEPIANE HANLON, Administrative Patent Judges.

KIMLIN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal from the final rejection of claims 22-46. We have
jurisdiction under 35 U.S.C. § 6(b).
Claim 22 is illustrative:

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Application 09/964,000

22. In a food item of the type in which a muscle tissue elongate contains
an edible filling disposed along the longitudinal axis thereof characterized in
that said edible filling is comprised of an animal tissue elongate having a
dominant proportion of water and protein respectively;

whereby a coaxially combined food item is produced which when sliced
transversely will reveal a substantially concentric arrangement
comprising an outer ring, a center, and a boundary thereinbetween, in
which said boundary may or may not be highly visible depending on the
visual similarity of the make up of the constituent elongates.

In addition to the admitted prior art (APA) found at pages 1-3 of
Appellant’s Specification, the Examiner relies upon the following references
in the rejection of the appealed claims (Ans. 5):
Bemis 1,897,189 Feb. 14, 1933
Lovell 3,615,692 Oct. 26, 1971
Huling 6,117,467 Sep. 12, 2000
Haig 6,582,741 B2 Jun. 24, 2003
Holbrook 6,599,545 B1 Jul. 29, 2003

Giuliano Bugialli, Giuliano Bugialli’s Classic Techniques of Italian Cooking
285-287 (Fireside, 1989).

Appellant’s claimed invention is directed to a food item wherein an
edible filling is disposed along the longitudinal axis of a muscle tissue
elongate. When the coaxially combined food item is sliced transversely, a
concentric arrangement comprising an outer ring, a center, and a boundary
therebetween is revealed. Some of the appealed claims recite that the food
item comprises a means for highlighting the boundary between the outer ring
and the center, and that the highlighting means is a green vegetable material.
Appealed claims 22-46 stand rejected under 35 U.S.C. § 112, first
paragraph, written description requirement. Claims 22-29, 31-33, 36-39, 41-
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43, and 45-46 stand rejected under 35 U.S.C. § 112, second paragraph as
being indefinite. The prior art rejections of the appealed claims are as
follows:
(a) claims 22, 23, 30, 31, 35, 36, 40, 41, 44, 45 under 35 U.S.C.
§ 102(b) over Lovell,
(b) claims 22, 24, 30, 31, 35, 36, 40, 41, 44, 45 under 35 U.S.C.
§ 102(e) over Holbrook,
(c) claims 31 under 35 U.S.C. § 102(e) over Haig,
(d) claims 22, 24, 30, 40, 41, 44, 45 under 35 U.S.C. § 103(a) over
Haig in view of Huling,
(e) claims 26-29, 42, and 43 under 35 U.S.C. § 103(a) over Haig in
view of Huling and the APA,
(f) claims 23 and 25 over Haig in view of Huling and Bugialli,
(g) claims 32-34 over Haig in view of Bemis, and
(h) claims 37-39 and 46 over Holbrook in view of Bemis.
We consider first the Examiner’s rejection under 35 U.S.C. § 112,
first paragraph, written description requirement. It is well settled that the
Specification, in order to comply with § 112, first paragraph, must
reasonably convey to one of ordinary skill in the art that, at the time of filing
the application, the inventor had possession of the claimed subject matter.
In re Edwards, 568 F.2d 1349, 1351-52 (CCPA 1978). According to the
Examiner, Appellant’s original Specification does not provide written
descriptive support for the claim 22 recitation “a dominant proportion of
water and protein”, for the claim 30 recitation “a weight of at least 7%”, the
claim 35 recitation “a weight of at least 10%”, the recitation “means for
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highlighting” in claims 24, 31, 32, 36, 37, 41, 45, and 46, and the “non-pork
muscle tissue” recitation in claims 40 and 44.
We agree with the Examiner that the claim language “a dominant
proportion of water and protein” to describe the edible filling in claim 22
lacks written descriptive support. While Appellant cites the reference “The
Meat We Eat” to demonstrate that lean muscle consists of approximately
20% protein and 70% water, the Examiner correctly points out that the
language “dominant proportion” includes an amount of water and protein
greater than 50%. Since Appellant’s Specification does not define the term
“dominant proportion”, and does not disclose the percentages of water and
protein for the edible filling, we find no error in the Examiner’s reasoning.
Likewise, we agree with the Examiner that there is no original descriptive
support for the claim 30 recitation that the second animal tissue elongate has
a weight of at least 7% of the first animal tissue elongate, and the claim 35
recitation reciting that the second elongate has a weight of at least 10% of
the first elongate. Contrary to Appellant’s argument, Appellant has not
demonstrated that a disclosure of a top loin and a tenderloin provides
descriptive support for the claimed ranges.
We disagree with the Examiner that the original Specification does
not provide descriptive support for the claimed “means for highlighting”.
Appellant’s Specification, at paragraphs [30] and [31] and the accompanying
figures, describes a means for highlighting a boundary between the center
and the outer ring, namely, a green vegetable material. Therefore, we will
not sustain this rejection of claims 31-34.
We also find no original descriptive support for the language of
claims 40 and 44 reciting “non-pork muscle tissue” and “non-pork animal
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tissue”, respectively. As pointed out by the Examiner, the portion of
Appellant’s Specification describing the claimed invention generally refers
to meat, and does not convey to one of ordinary skill in the art that Appellant
intended to exclude pork. See Ex Parte Grasselli, 231 USPQ 393 (BPAI
1983).
Therefore, we affirm the Examiner’s § 112, first paragraph, rejection
of claims 22-30 and 35-46, but not the rejection of claims 31-34.
We next consider the Examiner’s rejection under § 112, second
paragraph. We will not sustain the Examiner’s rejection based on the claim
22 recitation “a dominant proportion of water and protein”, which defines
the animal tissue elongate comprising the edible filler. The Examiner has
acknowledged that such language defines an amount of water and protein
exceeding 50%, and the Examiner has not demonstrated that one of ordinary
skill in the art would have difficulty in ascertaining the particular type of
meat that may constitute an edible filling within the scope of the claim. See
In re Sneed, 710 F.2d 1544, 1548 (Fed. Cir. 1983). Also, the skilled artisan
would understand the “means for highlighting” to be the green vegetable
material depicted as 18 in Appellent’s drawings
We now turn to the Examiner’s prior art rejections. We will sustain
the Examiner’s § 102 rejection over Lovell. We agree with the Examiner’s
finding that Lovell describes a food item comprising a first elongate muscle
and a second elongate muscle mass which provides a boundary and,
therefore, highlight means, with the first muscle mass (see Figs. 2 and 4).
While Appellant maintains that Lovell discloses a viscous stuffing and not
an animal tissue elongate disposed within the chicken leg quarter, we concur
with the Examiner that the present Specification does not define “muscle
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tissue elongate” in any such way that provides a distinction over the meat
filling of the reference. The Examiner correctly points out that the claim
language does not require a whole, intact muscle. Also, Appellant
acknowledges that the transition, or boundary, between the leg tissues and
meat filling of Lovell would be discernable and, therefore, we do not
understand Appellant’s argument regarding how such a boundary would not
perform the claimed function of highlighting.
We will not sustain the Examiner’s §102 rejection over Holbrook.
Although Holbrook is primarily directed to making a sandwich, the
Examiner relies upon the reference disclosure of a first food stuff enclosing
a second tubular food stuff “wherein both food stuffs can be meat (column 3,
lines 9-15)” (Ans. 14, second para.). However, we do not find sufficient
specificity in the reference’s broad disclosure to constitute a description of
the claimed muscle tissue elongate containing an animal tissue elongate
filling within the meaning of §102. In relevant part, Holbrook discloses
“[t]he term ‘food stuff’ is used broadly herein to refer to edible substances,
including for example, bread, buns, meat, cheese, fruits, vegetables,
tomatoes, lettuce, onions, condiments, etc.” (col. 3, ll. 13-15). Hence, it can
be seen that too high a degree of selection is required to arrive at both the
filler and the shell comprising meat, and the reference provides no particular
direction to make such selections.
We find no error in the Examiner’s § 102 rejection of claim 31 over
Haig. Appellant does not dispute the Examiner’s finding that Haig describes
a food comprising a first elongate food mass in the form of a pork loin with
a filling therein. Appellant maintains that “[n]owhere in the Haig disclosure
is there any teaching or suggestion that an animal tissue elongate be inserted
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by this device [or method] into the incised pork loin” (Br. sentence bridging
12-13). However, as correctly pointed out by the Examiner, claim 31 does
not require that the edible filling be meat. We also find no error in the
Examiner’s finding that “Haig clearly illustrates a boundary between the
pork loin and its stuffing in Figure 1” (Ans. 15, second para.).
We will also sustain the Examiner’s § 103 rejections based on Haig as
a primary reference for the reasons set forth in the Examiner’s Answer. In
essence, we fully concur with the Examiner that it would have been obvious
for one of ordinary skill in the art to select the meat filling of Huling for the
food stuffing in Haig’s food item. As explained by the Examiner, both Haig
and Huling are directed to meat products and Huling evidences that it was
common in the art to stuff meat with other meat. We do not agree with
Appellant that “[t]he material to be stuffed regarding the Huling disclosure is
vague” (Br. 14, first para.). We find nothing vague in the reference
disclosure that it was known in the art to use other meats for stuffing, such
as mixed sausage stuffed into a roast. We further find no error in the
Examiner’s legal conclusion that it would have been obvious for one of
ordinary skill in the art to slice the food item of Haig, as modified with the
meat filling of Huling, into steaks either before or after the food is cooked.
It can hardly be gainsaid that it was well known in the art to slice elongated
meat products into individual steaks.
We further concur with the Examiner with respect to the rejection of
claims 32-34 that it would have been obvious for one of ordinary skill in the
art, based on the combined teachings of Haig and Bemis, to wrap the filling
of Haig with the lettuce of Bemis to provide “an efficient and convenient
means for holding the particulate stuffing of Haig together prior to and
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during insertion” (Ans. 10, first para.). As noted by the Examiner, Haig
teaches that the filling may include vegetables. We do not subscribe to
Appellant’s argument that Haig and Bemis are non-analogous art inasmuch
as both references are directed to stuffed food products, and it was
notoriously well known in the art to wrap food with lettuce.
Appellant does not present a substantive argument against the § 103
rejection of claims 37-39 and 46 over Holbrook in view of Bemis.
Accordingly, we will summarily affirm this rejection.
As a final point, we note that Appellant bases no argument upon
objective evidence of non-obviousness, such as unexpected results.
In conclusion, based on the foregoing, the Examiner’s decision
rejecting the appealed claims 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) (2008).

AFFIRMED

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WILLIAM YOUNGER GUESS
1144 PARLANGE
BATON ROUGE, LA 70806
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