Ex Parte Macaulay et al

Patent Trial and Appeal Board

Mar 28, 2018

13510646 (P.T.A.B. Mar. 28, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/510,646 08/30/2012
22242 7590 03/28/2018
FITCH EVEN TABIN & FLANNERY, LLP
120 SOUTH LASALLE STREET
SUITE 2100
CHICAGO, IL 60603-3406
FIRST NAMED INVENTOR
Claire Elizabeth Macaulay
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.
29610-97958-US 5326
EXAMINER
WILLIAMS, LELA
ART UNIT PAPER NUMBER
1792
MAILDATE DELIVERY MODE
03/28/2018 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 CLAIRE ELIZABETH MACAULAY and
SANDRA HERAUD 1
Appeal2017-007537
Application 13/510,646
Technology Center 1700
Before BEYERL YA. FRANKLIN, DONNA M. PRAISS, and
MICHAEL G. MCMANUS, Administrative Patent Judges.
FRANKLIN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants request our review under 35 U.S.C. § 134 of the
Examiner's decision rejecting claims 2-10, 12-17, and 21-25. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b ).
We REVERSE.
1 Appellants identify the real party in interest as Koninklijke Douwe Egberts
B.V. App. Br. 3.
Appeal2017-007537
Application 13/510,646
STATEMENT OF THE CASE
Claim 15 is illustrative of Appellants' subject matter on appeal and is
set forth below (with text in bold for emphasis):
15. A beverage dispensing container comprising:
a chocolate beverage composition including a dry mix of
a foaming creamer and discrete cocoa solids, wherein at least
about 95% of the discrete cocoa solids are in a non-powdered
form and wherein the discrete cocoa solids have less than 15
wt.% fat and a density in the range of from 1.5 g/ cm3 to 3 g/
cm3 ·
'
the container being in the form of a cartridge containing
the chocolate beverage composition, the container having an
inlet for introduction of an aqueous medium and an outlet
downstream of the inlet for discharge of the beverage.
The Examiner relies on the following prior art references as evidence
of unpatentability:
THE REJECTIONS
1. Claims 2, 8-10, 12, 15-17, and 22 are rejected under pre-AIA 35
U.S.C. § 103(a) as being unpatentable over Halliday (EP 1 440 906 Al,
published July 28, 2004) in view of Hedrick, Jr. (US 4,438,147, issued
Mar. 20, 1984), Zumbe (US 2004/0146625 Al, published July 29, 2004)
and Scholz (WO 2004/095937 Al, published Nov. 11, 2004).
2. Claims 2-7, 12-17, and 21-24 are rejected under pre-AIA 35
U.S.C. § 103(a) as being unpatentable over Sargent (WO 02/074143
A2, published Sept. 26, 2002) in view Troplin (US 2011/0229624 Al,
published Sept. 22, 2011) and Scholz.
2
Appeal2017-007537
Application 13/510,646
ANALYSIS
Upon consideration of the evidence and each of the respective
positions set forth in the record, we find that the preponderance of evidence
supports Appellants' stated position in the record. Accordingly, we reverse
each of the Examiner's rejections on appeal essentially for the reasons set
forth by Appellants in the record, and add the following, with a focus on the
dispositive argument in this case.
Appellants argue, inter alia, that the Examiner's understanding of the
secondary reference of Scholz is in error. The Examiner finds that Scholz
teaches cocoa solids having the claimed density. Ans. 4. Appellants submit
that Scholz discloses chocolate granules which are different from cocoa
solids for the reasons discussed in the record by Appellants. Appeal Br. 12;
Reply Br. 3. We are persuaded by such argument. Scholz makes it clear
that the confectionary particles comprise chocolate (Scholz, 3, 11. 4--7), the
preferred confectionary particles being chocolate granules, especially
granules of daim, toblerone, and/or terry's orange chocolate. Scholz, 7, 11.
15-1 7. Scholz teaches that the chocolate part may have a density of less
than or greaterthan 1 g/cm3. Scholz, 3, 11. 9-17.
Importantly, the Examiner does not address this point raised by
Appellants in response to argument. Ans. 2-12. Therein, the Examiner
equates Scholz's chocolate granules with cocoa solids (Ans. 7), without
directing us to evidence in support thereof, and does not address Appellants'
argument that Scholz' s chocolate granules are not cocoa solids. The
teachings of Scholz as discussed above support Appellants' understanding of
Scholz. We therefore reverse each rejection (the Examiner relies upon
Scholz in the same way for both Rejections 1 and 2).
3
Appeal2017-007537
Application 13/510,646
Each rejection is reversed.
DECISION
REVERSED
4