Ex Parte Knobel

Patent Trials and Appeals Board

Mar 15, 2013

10519292 - (D) (P.T.A.B. Mar. 15, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/519,292 12/23/2004 Guido Knobel 04-605 9139
34704 7590 03/15/2013
BACHMAN & LAPOINTE, P.C.
900 CHAPEL STREET
SUITE 1201
NEW HAVEN, CT 06510
EXAMINER
BODAWALA, DIMPLE N
ART UNIT PAPER NUMBER
1743
MAIL DATE DELIVERY MODE
03/15/2013 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 GUIDO KNOBEL
____________

Appeal 2012-003323
Application 10/519,292
Technology Center 1700
____________

Before BRADLEY R. GARRIS, CHUNG K. PAK, and
LINDA M. GAUDETTE, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-003323
Application 10/519,292

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Pursuant to 35 U.S.C. § 134, Appellant appeals from the Examiner's
rejections under 35 U.S.C. § 103(a) of claim 25 as unpatentable over Binley
(US 5,409,722 issued Apr. 25, 1995) in view of Vos (US 5,102,672 issued
Apr. 7, 1992), claim 27 as unpatentable over Boyhan 296 (WO 97/49296
published Dec. 31, 1997) in view of Boyhan 895 (US 5,558,895 issued Sept.
24, 1996) and Cartwright (US 6,537,483 B1 issued Mar. 25, 2003) and claim
28 as unpatentable over Johnson (US 3,642,415 issued Feb. 15, 1972) in
view of Cartwright. We have jurisdiction under 35 U.S.C. § 6.
We AFFIRM.

Appellant claims an apparatus for producing consumable products
having an outer shell comprising a mold 5, a water-cooled ram 3.1, and a
displacement ram 7 movably mounted within an axial bore of the water-
cooled ram, the displacement ram being configured to selectively move
between a first position wherein a space is formed at a vertex end of the
water-cooled ram and a second position wherein the end of the displacement
ram is in a plane with the vertex end of the water-cooled ram (claim 25;
Figs. 1.1-2.3).
Appellant also claims a similar apparatus wherein a water-cooled ram
3.3 comprises an internal space and a flexible sheath 19 surrounding the
internal space and wherein cooling water under pressure communicates with
the internal space to expand the flexible sheath for displacing an amount of
consumable material in the mold and thereafter the cooling water under
greater pressure communicates with the internal space to further displace the
consumable material (claim 27; Figs. 5.2-5.3).
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Finally, Appellant claims an apparatus similar to those discussed
above comprising a water-cooled ram having a passage at a vertex region of
the ram, the passage being covered by a diaphragm 23, wherein cooling
water under pressure communicates with the internal space for expanding
the diaphragm into the mold for displacing an amount of consumable
material (claim 28; Fig. 7.3).
Independent claims 25, 27 and 28 read as follows:
25. An apparatus for producing consumable products
having an outer shell comprising:
a mold containing an edible consumable material;
a water-cooled ram having an axial bore;
the water-cooled ram is configured to selectively move
into and out of the mold between a first position and a second
position for at least partially forming an outer shell from the
edible consumable material;
a displacement ram movably mounted within the axial
bore of the water-cooled ram; and
the displacement ram is configured to selectively move
within the axial bore of the water-cooled ram when the water-
cooled ram is in the second position between a first position
wherein a space is formed at a vertex end of the water-cooled
ram and an end of the displacement ram and a second position
wherein the end of the displacement ram is in a plane with the
vertex end of the water-cooled ram to expel air inclusions when
the water-cooled ram is in the second position.
27. An apparatus for producing consumable products
having an outer shell comprising:
a mold containing an edible consumable material;
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a water-cooled ram comprising an internal space and a
flexible sheath surrounding the internal space;
the water-cooled ram is configured to selectively move
into and out of the mold between a first position and a second
position for at least partially forming an outer shell from the
edible consumable material;
a source of variable pressure cooling water wherein the
source adjusts the pressure of the cooling water from a pressure
P1 to a pressure P2 wherein P2 is greater than P1; and
the cooling water under pressure P1 communicates with
the internal space of the water-cooled ram to expand the
flexible sheath within the mold for displacing an amount of
edible consumable material when the water-cooled ram is in the
second position and thereafter the cooling water under pressure
P2 communicates with the internal space to further displace the
edible consumable material.
28. An apparatus for producing consumable products
having an outer shell comprising:
a mold containing an edible consumable material;
a water-cooled ram having a vertex region and
comprising an internal space and a shell of rigid material
surrounding the internal space, the shell is provided with a
passage at the vertex region which communicates the internal
space with the mold when the water-cooled ram is located in
the mold, said passage is covered by a diaphragm;
the water-cooled ram is configured to selectively move
into and out of the mold between a first position and a second
position for at least partially forming an outer shell from the
edible consumable material;
a source of cooling water under pressure; and
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the cooling water under pressure communicates with the
internal space of the water-cooled ram for expanding the
diaphragm at the vertex region of the water-cooled ram into the
mold for displacing an amount of edible consumable material
when the water-cooled ram is in the second position.
In rejecting claim 25, the Examiner finds that Binley discloses a
molding apparatus comprising a rod (i.e., displacement ram) 9 which is
configured to selectively move within the axial bore of ram 2 from a first
position to a second position in the manner claimed (Ans. 4-5).
Appellant argues that "Binley . . . has only the operative position
shown in Figure 2" (Br. para. bridging 10-11) and that "there is no relative
movement of element 12 [sic, rod 9] in an operative position which forms a
vertex end first position in a plane with water-cooled ram in a second
position" (id.).
Appellant's argument reveals no error in the Examiner's finding. The
record before us (see, e.g., Binley Figs. 1-2) provides an acceptable reason
for believing that Binley's rod (i.e., displacement ram) inherently possesses
the capability of performing the function of moving between first and second
positions as recited in claim 25. Under these circumstances, it is Appellant's
burden to show that the rod of Binley does not possess this capability. See
In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997). Appellant has not
presented this record with any such showing.
For the reasons discussed above and in the Answer, we sustain the
§ 103 rejection of claim 25 over Binley and Vos.

Regarding claim 27, the Examiner finds that Boyhan 296 discloses a
molding apparatus comprising a cooled ram (i.e., former plate 320 for
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moving into first and second positions; see Figs. 6-7) having a flexible
sheath for movement in response to pressure in order to displace the
moldable material (Ans. 6-8). The Examiner concludes that it would have
been obvious to provide Boyhan 296 with water under pressure for cooling
the ram and for moving the flexible sheath in view of Cartwright (id. at 8-9).
Appellant argues that "[t]he prior art does not in any way teach [the
claim 27] arrangement" (Br. para. bridging 11-12). According to Appellant,
"there is no water-cooled ram which includes a flexible sheath which
assumes a first and second position for displacing an edible material and
when in the second position has fluid pressure communicated to the water-
cooled ram for expanding the sheath so as to further displace the consumable
material" (id.).
Appellant's argument does not specifically address the Examiner's
findings regarding Boyhan 296 or the Examiner's obviousness conclusion
regarding the proposed combination of Boyhan 296 and Cartwright. For this
reason, the argument fails to identify with reasonable specificity any error in
the Examiner's findings of fact or conclusions of law.
Therefore, we also sustain the § 103 rejection of claim 27 over
Boyhan 296, Boyhan 895, and Cartwright.

With respect to claim 28, the Examiner finds that Johnson discloses a
molding apparatus which comprises a cooled ram 14 comprising a shell 14,
21 having a passage covered by a pressure-movable diaphragm 20 wherein
the ram and diaphragm are configured to selectively move in the manner
claimed by Appellant (Ans. 9-11). The Examiner concedes that Johnson
does not teach using water for cooling the ram and pressurizing the
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diaphragm (id. at 11) but concludes that it would have been obvious to
provide Johnson's apparatus with water under pressure for cooling the ram
and moving the diaphragm in view of Cartwright (id. at para. bridging 11-
12).1
Appellant argues without embellishment that "Johnson . . . constitutes
non-analogous art" (Br. 13).
Two criteria are relevant in determining whether prior art is
analogous: (1) whether the art is from the same field of endeavor regardless
of the problem addressed and (2) if the reference is not within the field of the
inventor's endeavor, whether the reference is reasonably pertinent to the
particular problem with which the inventor is involved. Wyers Prod. Group,
Inc. v. Master Lock Co., 616 F.3d 1231, 1237 (Fed. Cir. 2010). The scope of
analogous art is to be construed broadly. Id. at 1238. Moreover, the field of
endeavor criteria is assessed with reference to the function and structure of
the invention as perceived by one of ordinary skill in the art. In re Bigio,
381 F.3d 1320, 1325-26 (Fed. Cir. 2004).

1 The Examiner cites two references not included in the statement of
rejection which are characterized as relevant to the claim recitation
describing the material contained in the mold as "an edible consumable
material" (id. at 10, 17-18). Where references are relied on to support a
rejection, they should be positively included in the statement of rejection.
See In re Hoch, 428 F.2d 1341, 1342 n.3 (CCPA 1970). Moreover, the
material contained in a molding apparatus during operation is not relevant to
patentability of the apparatus as properly indicated by the Examiner
elsewhere in the Answer (Ans. 6, 9). For these reasons, we have not
considered these two references in assessing the merits of the claim 28
rejection.
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In light of these criteria, we find no persuasive merit in Appellant's
unembellished argument that Johnson constitutes non-analogous art. As
indicated above, the Examiner finds substantial correspondence in structure
and function between the claim 28 apparatus and the Johnson apparatus.
This substantial correspondence supports a determination that Johnson is
from Appellant's field of endeavor. Additionally, Johnson appears to be
reasonably pertinent to the molding problem with which Appellant is
involved. For these reasons and because the scope of analogous art is to be
construed broadly, it is appropriate to consider Johnson to be analogous art
particularly since Appellant has failed to articulate any reasoning in support
of a contrary view.
Appellant also argues that "[r]elative positions of the cooled ram and
shell element (if such exists in Johnson) are exactly the opposite of what is
being claimed . . . see Johnson Figure 3 and Figure 4" (Br. para. bridging 13-
14).
The Examiner's above findings that the Johnson apparatus includes
the claimed ram and shell features are supported by specifically identified
structures (Ans. 10). Similarly, the Examiner's finding that Johnson's ram is
configured to selectively move into and out of the mold between first and
second positions as claimed is supported by specific reference to Johnson's
Figures 1-3 (id.). Appellant does not address, and therefore fails to show
error in, the Examiner's findings and concomitantly the Examiner's reliance
on the Johnson structure and figures cited in support of these findings.

In light of the foregoing, we also sustain the § 103 rejection of claim
28 over Johnson and Cartwright.
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Application 10/519,292

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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.

AFFIRMED
bar