Ex Parte Lonergan

Patent Trial and Appeal Board

Jan 30, 2018

12828601 (P.T.A.B. Jan. 30, 2018)

United States Patent and Trademark Office
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.
12/828,601 07/01/2010 Dennis Arthur Lonergan 3752U.001 7119
21917 7590 02/01/2018
MCHALE & SLAVIN, P.A.
2855 PGA BLVD
PALM BEACH GARDENS, EL 33410
EXAMINER
ZILBERING, ASSAF
ART UNIT PAPER NUMBER
1792
NOTIFICATION DATE DELIVERY MODE
02/01/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
uspatents@mchaleslavin.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DENNIS ARTHUR LONERGAN
Appeal 2016-007927
Application 12/828,6011
Technology Center 1700
Before ADRIENE LEPIANE HANLON, CATHERINE Q. TIMM, and
CHRISTOPHER L. OGDEN, Administrative Patent Judges.
OGDEN, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
Appellant requests rehearing of the Decision on Appeal, mailed
November 16, 2017 (“Decision”), affirming the Examiner’s rejection of
claims 1—25.2 For the reasons set forth herein, the Request is denied.
In the Final Action,3 the Examiner determined that claims 1—25 were
indefinite because “[i]t is unclear what constitutes a ‘bread like’ food item—
whether it can include only bread, or can include cakey bread, such as
banana bread, or whether it can include cake, bagels, pizza, rolls, biscuits,
1 Appellant identifies Sholl Development, LLC as the real party in interest.
See Appeal Br. 3, Dec. 11, 2015.
2 Request for Rehearing, Jan. 16, 2018 [hereinafter Request],
3 Final Office Action, Oct. 6, 2015 [hereinafter Final Action]; see also
Examiner’s Answer, June 16, 2016 [hereinafter Answer],
Appeal 2016-007927
Application 12/828,601
cookies, pastries or any baked item that requires yeast and flour.” Final
Action 2; see also Answer 14—17. We affirmed this rejection because
Appellant did not present persuasive arguments or evidence that the
Examiner erred in determining that the phrase was unclear. Decision 5
(citing See Ex parte McAward, Appeal 2015-006416, 2017 WL 3669566, at
*5 (PTAB Aug. 25, 2017) (precedential) (the USPTO considers a claim
indefinite “when it contains words or phrases whose meaning is unclear”
(quoting In re Packard, 751 F.3d 1307, 1314 (Fed. Cir. 2014))).
Appellant argues that we have ignored “past practice of the Patent
Office in its prior approval of the term ‘bread like.’” Request 8.
Specifically, Appellant argues that there are several issued patents “that use
the phrase ‘bread like,’ thus its use has been previously approved by the
Patent Office and has an established meaning within the art and the Patent
Office.” Id. at 9 (citing Appeal Br.4 10—12); see also id. at 11—14 (arguing
that this alleged different treatment violates the Manual of Patent Examining
Procedure, the Administrative Procedure Act, and the Due Process Clause);
Reply Br.5 4—5 (listing patents and an application containing bread like and
related phrases6).
This argument does not persuade us that our Decision misapprehended
or overlooked any point of fact or law. The degree of precision required in a
particular claim depends on the context and circumstances of that claim. See
In re Packard, 751 F.3d 1307, 1313 (Fed. Cir. 2014). That bread like appears
4 Appeal Brief Dec. 11, 2015 [hereinafter Appeal Br.].
5 Reply Brief, Aug. 15, 2016 [hereinafter Reply Br.].
6 Appellant did not identify a particular established meaning of bread like
evidenced by the patents or the published application. See id. 4—5.
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Application 12/828,601
in other contexts, including prior patents, or that an issue regarding its clarity
did not arise in prior patent office proceedings, does not make the term clear
as it is used in the preamble of independent claim 1, either as a matter of fact
or law.
Next, our Decision noted that “Appellant acknowledges that the term
bread, in at least two instances (banana bread and com bread), refers to
product made from a batter.” Decision 5 (citing Appeal Br. 12); see also
Final Action 2 (mentioning “cakey bread, such as banana bread”). Appellant
argues that this statement is an undesignated new ground of rejection. See
Request 14. We disagree. Our statement was not a new ground, but part of
the explanation why Appellant’s arguments were ineffective to overcome the
Examiner’s rejection. See In re Noznick, 391 F.2d 946, 949 (CCPA 1968)
(holding there was no new ground of rejection when Board was “explaining
to appellants why their arguments were ineffective to overcome the rejection
made by the examiner”).
Regarding the rejections under 35 U.S.C. § 103, Appellant argues that
neither Eriksen nor Lahey discloses “using the defined agglomeration for
anything other than perhaps continued mixing to form a finished dough,”
and “[tjhere is no recognition or disclosure ... of fermenting the
agglomeration to form a doughy mass from the action of yeast for at least
about 8 hours.” Request 16. This argument does not persuade us that our
Decision misapprehended or overlooked any point of fact or law. We
determined that there was no reversible error in the Examiner’s finding “that
the agglomeration-related limitations of claim 1 would have been inherent in
a method that results from the combined teachings of Eriksen and Lahey.”
Decision 6 (citing Final Action 17—18); see also id. at 9-10.
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Appellant also alleges that we have overlooked the argument that the
prior art “universally requires complete mechanical mixing of the flour water
matrix to uniform water distribution” as opposed to mere shaking, that
“Eriksen does not obviate the prior art in this regard,” and that the art
teaches away from the use of shaking to form dough. Request 16; see also
Request 8—9, 18—21. We disagree. We have fully considered these
arguments and the supporting evidence, including the declaration of Dr.
Hoseney, and found them unpersuasive of reversible error. See Decision 5—
11.
Appellant also argues that we “failed to distinguish whether the
Eriksen or Lahey disclosed water contents are total water as claimed or
added water.” Request 17. We disagree. The Examiner’s rejection made
findings relating to the “total water” present in the product. See Final Action
3. Appellant did not persuade us of reversible error in these findings.
Next, Appellant argues that we failed “to recognize that it is the
agglomeration that is fermented [in claim 1], not the completed dough of
Eriksen (alleged dough) and Lahey (sticky dough).” Request 17; see also id.
at 21. We disagree. We considered Appellant’s arguments on this point, and
did not find them persuasive of reversible error in the Examiner’s
determination that it would have been obvious to ferment the agglomeration
that is inherently formed by combining the teachings of Lahey with the
disclosure of Eriksen. See Final Action 4.
Appellant next argues that “[ijnherency is a concept used in product
claims, not method claims,” and therefore should not be applied to claim 1.
Request 21. This argument is presented without a citation to legal precedent,
is unpersuasive, and appears to be an untimely new argument. See 37 C.F.R.
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41.52(a) (providing limited conditions for when new arguments may be
included in a request for rehearing).
Next, our Decision stated that Appellant has not shown persuasive
evidence that “when following the combined teachings of Eriksen and
Lahey, the contents of the container after shaking do not inherently form an
agglomeration with the properties as recited in claim 1.” Decision 9. In
particular, we noted that we did not find any such evidence in Dr. Hoseney’s
declaration. See id. at 10. Appellant argues that “[t]he Board has not
explained, as required, how Dr. Hoseney’s Declaration is deficient, but
merely offers its conclusions.” Request 21. We disagree. We found no
technical evidence in Dr. Hoseney’s declaration directed to whether or not
the combination of Eriksen and Lahey, as described by the Examiner, would
inherently form an agglomeration with the properties as recited in claim 1.
Moreover, Appellant has not directed us to any experimental evidence or
technical arguments in the declaration to that effect, sufficient to meet
Appellant’s burden to produce evidence in rebuttal to the Examiner’s finding
of inherency. See DeSilva v. DiLeonardi, 181 F.3d 865, 866-67 (7th Cir.
1999) (“A brief must make all arguments accessible to the judges, rather
than ask them to play archeologist with the record.”)
Next, Appellant reiterates arguments, found in the briefs, that
“[djough and batter are well known terms in the art and need not be
defined,” Request 22 (citing Hoseney Decl. 18, 21, 27), and that Eriksen’s
disclosure is too broad to be used effectively by a person of ordinary skill in
the art, Request 23—25. We have considered these arguments and the cited
evidence, and found them unpersuasive of reversible error for the reasons
given on pages 10-13 of the Decision and by the Examiner. Appellant does
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not persuasively show that we have misapprehended or overlooked any point
on these topics.
Appellant next argues that “the Board changed the level of one skilled
in the art from the Examiner’s ‘consumer’ to a ‘skilled artisan,” and that this
constitutes a new rejection. Request 25. We disagree. By “skilled artisan,”
we mean one who has the ordinary level of skill in the art. According to the
Examiner, “the level of skill in the baking art is relatively low.” Final
Action 16. Our Decision makes no findings or assumptions to the contrary.
Turning to the portion of our Decision relating to Appellant’s
allegation of unexpected results, Appellant compares the Examiner’s level of
skill in the art with the level of skill of Appellant’s experts, and also argues
that the Examiner’s rejection is more conclusory than that of Appellants’
experts. See Request 26. Appellant then reiterates a conclusory allegation
regarding unexpected results. See id. at 26—27. These arguments do not
identify any point that we have misapprehended or overlooked in our
Decision.
For the above reasons, Appellant has not shown that we have
misapprehended or overlooked any point in our Decision. Therefore, the
Request for Rehearing is denied.
No time period for taking any subsequent action in connection with
this appeal maybe extended. See 37 C.F.R. § 1.136(a)(l)(iv) (2016).
DENIED
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