Ex Parte Horan et al

Patent Trial and Appeal Board

Oct 23, 2018

13593385 (P.T.A.B. Oct. 23, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/593,385 08/23/2012
48940 7590 10/23/2018
FITCH EVEN TABIN & FLANNERY, LLP
120 SOUTH LASALLE STREET
SUITE 2100
CHICAGO, IL 60603-3406
FIRST NAMED INVENTOR
Kathryn J. Horan
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.
1410-102393-us 3294
EXAMINER
MCCLAIN-COLEMAN, TYNES HAL.
ART UNIT PAPER NUMBER
1793
MAIL DATE DELIVERY MODE
10/23/2018 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 KATHRYN J. HORAN, CHAD GALER, PAUL V. GASS,
AARON STEVEN HANDRICK, JOHN A. HIRSCHEY, BRIAN E.
LEVINE, DIVY A S. REDDY, and CAROLYN J. TRINKA 1
Appeal 2017-011489
Application 13/593,385
Technology Center 1700
Before CATHERINE Q. TIMM, N. WHITNEY WILSON, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.
KENNEDY, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1--4, 6-20, and 23-25. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 According to the Appellants, the real party in interest is Kraft Foods Group
Brands LLC, which is a subsidiary of KFG Management Services LLC
("KFG"). App. Br. 3. KFG is said to be a subsidiary of Kraft Heinz Foods
Company. Id.
Appeal 2017-011489
Application 13/593,385
BACKGROUND
The subject matter on appeal relates to cheese products and associated
methods of making them. E.g., Spec. ,r 2; Claims 1, 11. Claim 1 is
reproduced below from page 21 (Claims Appendix) of the Appeal Brief:
1. A method of making a cheese product, the method comprising:
preparing a non-homogenized natural cheese curd other than a
cream cheese curd;
adding solid cream cheese to the non-homogenized natural
cheese curd when the non-homogenized natural cheese curd is at
a temperature of about 72 °F to about 90°F and stirring the non-
homogenized natural cheese curd and the solid cream cheese
together to obtain a mixture including the non-homogenized
natural cheese curd and the solid cream cheese, the solid cream
cheese being present in the mixture in an amount of about 1 % to
about 15% of total weight of the mixture; and
pressing the mixture including the non-homogenized natural
cheese curd and the solid cream cheese to form the cheese
product.
REJECTIONS ON APPEAL
The claims stand rejected as follows:
1. Claims 11-20, 24, and 25 under 35 U.S.C. § 112, ,r 1, for failure to
comply with the written description requirement. Ans. 2.
2. Claims 1--4, 6-20, and 23-25 under 35 U.S.C. § 112, ,r 2, as
indefinite. Ans. 3--4.
3. Claims 1, 6-10, and 23 under 35 U.S.C. § 103(a) as unpatentable
over El-Hmamsi (WO 96/24254, published Aug. 15, 1996). Ans. 7.
4. Claim 2 under 35 U.S.C. § 103(a) as unpatentable over El-Hmamsi
and Izzo (US 3,694,231, issued Sept. 26, 1972). Ans. 9.
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Application 13/593,385
5. Claims 3, 11-15, and 24 under 35 U.S.C. § I03(a) as unpatentable
over El-Hmamsi, Izzo, and PeerTrainer.com webpage titled "Cream Cheese"
( dated July 31, 2007) (hereafter, "PeerTrainer"). 2 Ans. 10.
6. Claims 16, 17, 19, 20, and 25 under 35 U.S.C. § I03(a) as
unpatentable over Banach (US 5,252,352, issued Oct. 12, 1993). Ans. 13.
7. Claim 18 under 35 U.S.C. § I03(a) as unpatentable over Banach.
Ans. 16.
8. Claims 1, 6-10, and 23 under 35 U.S.C. § I03(a) as unpatentable
over Merrill (US 2005/0249853 Al, published Nov. 10, 2005) and Banach.
Ans. 17.
9. Claim 2 under 35 U.S.C. § I03(a) as unpatentable over Merrill,
Banach, and Izzo. Ans. 19.
10. Claims 3, 11-15, and 24 under 35 U.S.C. § I03(a) as
unpatentable over Merrill, Banach, Izzo, and PeerTrainer. Ans. 20.
11. Claims 16, 17, 19, 20, and 25 under 35 U.S.C. § I03(a) as
unpatentable over Merrill and Banach. Ans. 24.
12. Claims 4 and 18 under 35 U.S.C. § I03(a) as unpatentable over
Merrill and Banach. Ans. 26.
ANALYSIS
Rejection 1
The Appellants do not acknowledge, address, or otherwise assert error
in the Examiner's § 112, ,r 1 rejection of claims 11-20, 24, and 25. See
generally App. Br. Because no error has been asserted in the rejection, we
summarily affirm Rejection 1.
2 The Appellants do not dispute the prior art status of PeerTrainer.
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Application 13/593,385
Rejection 2
In the § 112, ,r 2 rejection, the Examiner determines that a number of
different claim terms in a number of different claims are indefinite. See
Ans. 4---6. In the Appeal Brief, the Appellants do not specifically
acknowledge, address, or otherwise assert error in the § 112, ,r 2 rejection of
any of the claims. See generally App. Br. However, in addressing the
Examiner's§ I03(a) rejection, the Appellants raise arguments that are
directly relevant to the Examiner's§ 112, ,r 2 rejection of claims 1, 11, and
16. In particular, the Examiner concludes that claim 1 's recitation of
"preparing a non-homogenized natural cheese curd" is indefinite because
"[i]t is unclear if there is no homogenization during the preparing of the
natural cheese curd, OR if the final prepared natural cheese curd is not
homogenized." Ans. 4. The Examiner concludes that the recitation in
claims 11 and 16 of "non-homogenized natural cheese" is indefinite because
"[i]t is unclear if there is no homogenization to the natural cheese before
and/or after it is combined with the cream cheese." Id. at 6.
In addressing the Examiner's § 103(a) rejection, and directly relevant
to the § 112, ,r 2 rejection, the Appellants argue that the plain language of
the claims requires "the use of the non-homogenized natural cheese curd in
all of the steps of the method including the step that results in the formation
of the cheese product." App. Br. 14.
The legal standard for definiteness in prosecution is whether a claim
reasonably apprises those of skill in the art of its scope. In re Warmerdam,
33 F.3d 1354, 1361 (Fed. Cir. 1994). "[D]efiniteness of the language
employed must be analyzed-not in a vacuum, but always in light of the
teachings of the prior art and of the particular application disclosure as it
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Appeal 2017-011489
Application 13/593,385
would be interpreted by one possessing the ordinary level of skill in the
pertinent art." In re Moore, 439 F.2d 1232, 1235 (CCPA 1971).
Consistent with the Appellants' argument, the final step of claim 1
recites "pressing the mixture including the non-homogenized natural cheese
curd and the solid cream cheese to form the cheese product" ( emphasis
added). Contrary to the Examiner's determination that it is "unclear if there
is no homogenization during the preparing of the natural cheese curd, OR if
the final prepared natural cheese curd is not homogenized," the claim
language indicates that the natural cheese curd is non-homogenized in each
of the recited steps including in the "pressing" step that results in the final
cheese product. The Examiner has not adequately explained how an
interpretation of the "pressing" step that is consistent with the claim
language could lead to the conclusion that claim 1 permits the cheese curd to
become homogenized at some point during the process. Therefore, we
reverse the Examiner's § 112, ,r 2 rejection of claim 1. We also reverse the
Examiner's § 112, ,r 2 rejection of claims 6-9 and 23, which depend from
claim 1.
Essentially the same analysis applies to claims 11 and 16. Those
claims require that cream cheese powder ( claim 11) or non-powder cream
cheese ( claim 16) "is incorporated into a physical structure of the non-
homogenized natural cheese in the cheese product." The recitation of "non-
homogenized natural cheese in the cheese product," i.e., the ultimate product
of claims 11 and 16, indicates that the natural cheese remains non-
homogenized after it is combined with the cream cheese. Accordingly, we
reverse the Examiner's§ 112, ,r 2 rejection of claims 11 and 16. We also
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Application 13/593,385
reverse the Examiner's§ 112, ,r rejection of claims 12-15, 17-20, 24, and
25, which depend from either claim 11 or claim 16.
As noted above, the Examiner also rejects other claims, for other
reasons, under§ 112, ,r 2. Specifically, the Examiner concludes that
limitations in claims 2--4 and 10 render those claims indefinite. See Ans. 4--
6. Because the Appellants do not assert error in the Examiner's rejection of
those claims ( either directly or indirectly through arguments made with
respect to the § 103(a) rejection), we summarily affirm the Examiner's
§ 112, ,r 2 rejection of claims 2--4 and 10.
Re} ections 3-12
In Rejections 3-12, which are based on 35 U.S.C. § 103(a), the
Examiner interprets all claims on appeal as requiring non-homogenization
only "prior to" combining the non-homogenized cheese or cheese curd with
the cream cheese. See, e.g., Ans. 28. The Examiner interprets the claims as
reading on prior art that discloses homogenization prior to formation of the
final cheese product. E.g., id.
That interpretation of the claims is not supported by the record. As
explained above, the claims themselves indicate that the non-homogenized
cheese or cheese curd remains non-homogenized throughout the process of
making the cheese product and in the final cheese product itself. See, e.g.,
Claims 1, 11, 16; Reply Br. 3--4. The Appellants argue that, under the
proper interpretation of the claims (i.e. one in which the cheese curd is non-
homogenized), the prior art fails to teach or suggest the disputed subject
matter because each of the prior art combinations teaches homogenization of
the cheese product such that the prior art is outside the scope of the claims.
See App. Br. 13-20; Reply Br. 3-7.
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In the Answer, the Examiner does not meaningfully dispute the
Appellants' argument that the prior art teaches homogenization of the cheese
product, but instead continues to interpret the claims as permitting
homogenization. See Ans. 28-38.
Because, as set forth above, we disagree with the Examiner's
interpretation of the claims, and the Examiner has not established that prior
art teaches or suggests the claimed subject matter under the correct claim
interpretation, we reverse each of the Examiner's§ 103(a) rejections.
CONCLUSION
We AFFIRM the Examiner's rejection of claims 11-20, 24, and 25
under 35 U.S.C. § 112, ,r 1.
We AFFIRM the Examiner's rejection of claims 2--4 and 10 under 35
U.S.C. § 112, i12.
We REVERSE the Examiner's rejection of claims 1, 6-9, 11-20, and
23-25 under 35 U.S.C. § 112, ,r 2.
We REVERSE the Examiner's rejections of claims 1--4, 6-20, and
23-25 under 35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED-IN-PART
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