Ex Parte Longo Areso et al

Patent Trial and Appeal Board

Mar 31, 2016

12299858 (P.T.A.B. Mar. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/299,858 12/16/2008
21706 7590 03/31/2016
NOTARO, MICHALOS & ZACCARIA P,C
100 DUTCH HILL ROAD
ORANGEBURG, NY 10962
FIRST NAMED INVENTOR
Carlos Longo Areso
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.
G80-055US 3480
EXAMINER
TARAZANO, DONALD LAWRENCE
ART UNIT PAPER NUMBER
1791
MAILDATE DELIVERY MODE
03/31/2016 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 CARLOS LONGO ARESO, ALBERTO GALLUES BIURRUN,
and JOSE IGNACIO RECALDE IRURZUN
Appeal2014-009593
Application 12/299,858
Technology Center 1700
Before JEFFREY T. SMITH, KAREN M. HASTINGS, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from a final rejection of
claims 1---6, 9-16 and 21-23. 1 We have jurisdiction under 35 U.S.C. § 6.
1 In the Final Action, the Examiner rejected claim 23 under 35 U.S.C.
§§ 112 and 103. Final Act. 3. Appellants assumed an amendment
concurrently filed with the Appeal Brief on February 4, 2014 cancelling this
claim would be entered and, therefore, did not present any rejection of this
claim for review on appeal. App. Br. 6; Advisory Action (March 6, 2014) 2.
Upon receiving the Advisory Action, Appellants filed a Reply Brief
addressing the rejections of claim 23. See Reply Brief, generally. In view
of this, we now treat the above noted rejections of claim 23 as presented for
Appeal2014-009593
Application 12/299,858
We AFFIRM-IN-PART.
Appellants' invention is directed to a process for producing a casing
with grill marks used for the production of stuffed meat products. App. Br.
7. Claim 1 is illustrative of the subject matter on appeal and is reproduced
below:
1. A process for producing a casing with grill marks
used for the production of stuffed meat products, based on a
pleated tubular wrapping, comprising the step of: impregnation
by means of a colouring composition of at least one
longitudinal band on the surface of the pleated tubular
wrappmg.
The Examiner maintained from the Examiner's Final Action:
I. Claims 9 and 23 rejected under 35 U.S.C. § 112, second
paragraph, as indefinite for failing to particularly point out and distinctly
claim the subject matter which the applicant regards as the invention.
II. Claims 1---6, 12, 13, 16, and 23 rejected under 35 U.S.C.
§ 103(a) as unpatentable over Stall (US 4,818,551, issued April 4, 1989).
III. Claims 1---6 and 9-16 rejected under 35 U.S.C. § 103(a) as
unpatentable over Stall and Kleber (US 4, 198,202, issued April 15, 1980).
IV. Claims 21and22 rejected under 35 U.S.C. § 103(a) as
unpatentable over Stall and Ikoma (US 2004/0250728 Al, published
December 16, 2004).
review on appeal, consistent with the Examiner's Answer. See Answer,
generally.
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Appeal2014-009593
Application 12/299,858
OPINION
Rejection Under 35 U.S. C. § 112, 2nd Paragraph (Rejection I)
We AFFIRM.
We agree with the Examiner's finding that claim is 9 indefinite
because it depends from cancelled claim 7. Final Act. 3.
The Examiner also found claim 23 indefinite because it includes the
term "elongated grill marks" without providing a standard to ascertain the
degree of elongation in the claim or the Specification. Id. 2 The Examiner
further found the language in claim 23 describing the elongated grill marks
as "inclined so that they have different axes from one another, and wherein
the elongated grill marks are generally parallel to one another" indefinite
because, if the inclinations of the marks with respect to the sausage axis are
different, then, by definition, the marks are not parallel. Final Act. 4.
According to the Examiner, the Specification does not state that the marks
are parallel, but specifically states that the marks may not be parallel, e.g.,
have different inclinations relative to the sausage axis. Final Act. 4; Spec.
25. The Examiner also noted the Specification discloses the marks spaced at
different distances from one another, or with different inclinations with
respect to the sausage axis. Final Act. 4; Spec. 25.
Appellants argue Figures 3A and 3B of the Specification support the
contested language. Reply Br. 5.
We are unpersuaded by this argument for the reasons presented by the
Examiner. Final Act. 3--4. Moreover, the language of claim 23 does not
2 We note that the Examiner refers to claim 1 in discussing this language.
Final Act. 3. However, the disputed language is present in claim 23 and not
claim 1. We consider this a harmless typographical error.
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Appeal2014-009593
Application 12/299,858
require the inclination to be with respect to a sausage axis, as illustrated by
Figures 3A and 3B. Thus, Appellants have not adequately explained why
one skilled in the art would understand the meaning of this disputed
language.
Accordingly, we affirm the Examiner's rejection of claims 9 and 23
under 35 U.S.C. § 112, second paragraph, for the reasons presented by the
Examiner and given above.
Prior Art Rejections II-IV3
After review of the respective positions provided by Appellants and
the Examiner, we REVERSE the Examiner's prior art rejections of claims
1---6, 9-16 and 21-23 under 35 U.S.C. § 103(a) (Rejections II-IV) for the
reasons presented by Appellants.
The Examiner found Stall discloses a process for producing a casing
used for stuffed meat products, based on a pleated tubular wrapping,
comprising the step of drawing a heavy longitudinal line on the pleated
tubular wrapping. Final Act. 6; Stall Fig. 4, Abstract, col. 1, 11. 29-39, col.
2, 11. 55-56, col. 3, 11. 50-59; col. 7, 11. 53-65. The Examiner found the
heavy longitudinal line becomes a series of dots or marks extending along
the tubular pleated wrapping once expanded. Final Act. 7; Stall Figure 4,
col. 7, 11. 53-65. The Examiner found Stall's marks are elongated marks.
Final Act. 7; Stall Fig. 4, col. 7, 11. 53-65. The Examiner determined it
would have been obvious to one skilled in the art that the mark's appearance
3 All prior art rejections are based on the primary reference to Stall. We
limit our discussion to the rejection of claim 1, as presented in Rejection II,
with the understanding that it also applies to Rejections III and IV.
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Appeal2014-009593
Application 12/299,858
when placed upon the casing would depend upon many factors, such as the
flexibility of the casing, how tightly shirred casing is packed, the viscosity of
the marking medium, and the porosity of the casing. Final Act. 7. The
Examiner also determined that it would have been obvious to one skilled in
the art to form the heavy longitudinal line by impregnating the casing with a
coloring solution by simply choosing from a finite number of identified
predictable solutions with a reasonable expectation of success. Id. at 8.
Appellants argue Stall teaches against creating a non-uniform stick or
casing, including a casing with simulated grill marks, because Stall discloses
a final product having a uniform appearance to the greatest degree possible.
App. Br. 12; Stall col. 4, 11. 15-30; col. 9, 11. 30-36. Appellants further
argue Stall, at most, teaches applying a line to a pleated tubing to create a
line of small, non-elongated marks as a quality check to demonstrate that
there is not too much twisting in the final product. App. Br. 13, 15; Stall
Fig. 4, col. 7, 11. 53-65. That is, Stall does not teach the marks as part of the
final product.
We agree. The Examiner directs us to no portion of Stall that would
have led one skilled in the art to understand the heavy longitudinal line of
Stall is used for anything other than to demonstrate absence of a radial twist
or displacement in the tubular wrapping. Stall Fig. 4, col. 7, 11. 53---65.
Given Stall discloses the outer surface of the product to be relatively smooth
and free of any rope appearance (Stall col. 9, 11. 30-36), the Examiner has
not adequately explained why one skilled in the art would modify the
wrapping of Stall to have elongated marks as claimed.
Under these circumstances, we cannot conclude that the Examiner has
met the minimum threshold of establishing a prima facie case of obviousness
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Appeal2014-009593
Application 12/299,858
under 35 U.S.C. § 103(a). Jn re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir.
1992).
Accordingly, we reverse the Examiner's prior art rejections of claims
1---6, 9-16 and 21-23 under 35 U.S.C. § 103(a) (Rejections II-IV) for the
reasons presented by Appellants and given above.
ORDER
The Examiner's rejection of claims 9 and 23 under 35 U.S.C. § 112,
second paragraph (Rejection I), is affirmed.
The Examiner's prior art rejections of claims 1---6, 9-16 and 21-23
under 35 U.S.C. § 103(a) (Rejections II-IV) are reversed.
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l).
AFFIRMED-IN-PART
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