Ex Parte Mihalos et al

Board of Patent Appeals and Interferences

Jun 9, 2009

10371547 (B.P.A.I. Jun. 9, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MIHAELOS N. MIHALOS, JESSICA H. SCHWARTZBERG,
THEODORE N. JANULIS, BARBARA E. BAUMANN, STEPHANIE M.
FERGUSON, and ZENA E. FORTE
____________

Appeal 2008-004887
Application 10/371,547
Technology Center 1700
____________

Decided:1 June 10, 2009
____________

Before EDWARD C. KIMLIN, CHUNG K. PAK, and
LINDA M. GAUDETTE, Administrative Patent Judges.

GAUDETTE, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the Decided Date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2008-004887
Application 10/371,547

Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision finally rejecting claims 1-10, 14-21, 23, and 44-47 (Final Office
Action, mailed Jan. 8, 2007), the only claims pending in the application. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
STATEMENT OF THE CASE
Claims 1 and 21, the sole independent claims, are illustrative of the
subject matter on appeal, and are reproduced from the Claims Appendix to
the Appeal Brief (“App. Br.”), filed Jul. 10, 2007:
1. A method for producing thin, baked chips, comprising:

a) forming a dough comprising about 30-80 wt.% of an uncooked
wheat flour based upon the weight of the dough into a dough sheet,

b) reducing the thickness of the dough sheet using a pair of
counterrotating gauge rolls, wherein the nip or gap between the
counterrotating gauge rolls is less than or equal to about 0.035 inches,

c) maintaining the surface of each of said gauge rolls at a
temperature of about 85°F to about 95°F,

d) cutting the dough sheet into a plurality of pieces having
different irregular shapes with a single rotary cutter without producing
interstitial dough between the pieces, and

e) baking the pieces.

21. A method for producing thin, irregularly shaped, scallop-edged
baked chips comprising:

rotary-cutting a dough sheet that has been compressed to a thickness
of less than or equal to about 0.035 inch into a plurality of differently shaped
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pieces without producing interstitial dough between the pieces, each of the
pieces having scalloped edges and an irregular shape, and baking the pieces,

wherein said dough sheet thickness is obtained using a pair of
counterrotating gauge rolls having a surface temperature of about 85°F to
about 95°F.

The Examiner relies on the following evidence to establish
unpatentability (Examiner’s Answer (“Ans.”), mailed Oct. 15, 2007, 2):
Carey 5,980,967 Nov. 09, 1999
Andreski 6,004,612 Dec. 21, 1999
Appellants request review of the sole ground of rejection (App. Br. 4):
claims 1-10, 14-21, 23, and 44-47 under 35 U.S.C. § 103(a) as unpatentable
over Carey in view of Andreski.
Appellants present separate arguments with respect to the following
groups of claims: (1) claims 1-2, 5-10, 19, 20, and 46 (App. Br. 5-20); (2)
claims 3 and 4 (App. Br. 20-21); (3) claims 14-18 (App. Br. 21-22); (4)
claims 21, 23, and 47 (App. Br. 22-24); and claims 44 and 45 (App. Br. 24-
25 )
ISSUES
Have Appellants shown reversible error in the Examiner’s
determination that the combined teachings of the references disclose or
suggest:
maintaining the surface of each of said gauge rolls at a temperature of
about 85 ºF to about 95 ºF?
using smaller gap widths between the final gauge rolls?
cutting the dough sheet into a plurality of pieces having different
irregular shapes? and
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forming dough pieces having scalloped edges?
We answer each of these questions in the negative for the reasons
discussed below.
We additionally consider the issue of whether, taking into account
Appellants’ evidence of unexpected results, the weight of the evidence still
favors the Examiner’s conclusion of obviousness. As explained below, we
determine that the preponderance of the evidence weighs in favor of
obviousness.
FINDINGS OF FACT (“FF”)
1. Carey discloses a method of producing baked, wheat-based,
chip-like snacks. (Carey, Abstract; Appellants’ Specification (“Spec.)
[0013].) According to Carey, the machinable doughs of the invention are
preferably produced at dough temperatures of less than about 125 ºF, and
preferably at temperatures of 105 to 115 ºF. (Carey, col. 13, ll. 13-16.)
Carey explains that in the production of fermented or sponge-good snack
chips, dough temperatures are preferably less than or equal to about 100 ºF,
and preferably from 85 to about 96 ºF to avoid killing the buffer or bacteria
and yeast used in fermentation. (Carey, col. 13, ll. 19-25.) Carey describes
room temperature as being from about 75 to 95 ºF (col. 10, ll. 13-14) and
describes “ambient temperature” during manufacture of dough as being
about 70 to about 100 ºF (col. 14, ll. 12-15). Carey explicitly teaches
adjusting dough temperature during production of the dough by controlling
the temperatures of the added ingredients and by heat generated by the
mechanical mixing action of the mixer. (Carey, col. 13, ll. 28-31; App. Br.
10; Ans. 4.)
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2. Carey states that “[v]arious machining processes can be used to
form the wheat-based, fermented and non-fermented doughs into dough
pieces,” including sheeting, cutting and baking. (Carey, col. 17, ll. 50-56.)
Prior to the cutting operation, Carey utilizes “conventional reduction rolls”
to reduce the dough to a final thickness of about 1/32 of an inch (Carey, col.
17, l. 61-col. 18, l. 14; see also, col. 4, ll. 32-35), e.g., one or more sets of
counterrotating reduction rolls, with a finish gauge roller being used to
achieve the final reduction in thickness (see Carey, col. 18, ll. 10-19; Spec.
[0013]). Carey discloses that the dough sheeting and cutting operations
“may occur at substantially the same dough temperatures and moisture
contents as of the dough produced in the mixer.” (Carey, col. 18, ll. 53-56.)
“Thus, the dough pieces, upon entering a baking oven, may have a
temperature of less than or equal to about 125º F., preferably less than about
120º F.” (Carey, col. 18, ll. 56-58.)
3. According to Appellants’ Specification, “[t]he dough
compositions, methods for making them, and baking and drying conditions
which may be employed in the present invention may be the same as
disclosed in . . . Carey.” (Spec. [0039].) Appellants, like Carey (FF 2), state
that conventional, commercially available reduction/finish gauge rollers are
used in the disclosed method. (Spec. [0028].)
4. According to the Specification,
to continuously produce a wheat-based dough sheet using a
final gauge roll gap of less than or equal to about 0.035
inches at high production rates or line rates, the surface of
each of the gauge rolls must be maintained at a temperature
of about 85ºF to about 95ºF.

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(Spec. [0023].) The Specification explains that “[g]enerally, maintaining the
surface of the gauge roll at a given temperature also maintains the dough
sheet temperature within about 1ºF to about 3ºF of the gauge roll surface
temperature.” (Spec. [0023].) According to the Specification,
“maintain[ing] the dough sheet at a temperature which helps to provide or
maintain . . . reduced stickiness . . . achieve[s] consistent release of the
dough sheet from the gauge roll surface.” (Spec. [0023].) “[S]ticking of the
dough sheet to the final gauge rolls” is said to “result[] in excessive tearing
or shredding of the dough sheet.” (Spec. [0023].)
5. Carey does not specify an operating temperature for the gauge
rolls. (See Ans. 4). However, Carey does note that dough stickiness tends to
increase at temperatures above about 120 ºF and may adversely affect
lamination and sheetability. (Carey, col. 13, ll. 16-19; see also, col. 8, ll. 19-
22 and col. 25, ll. 60-63 (indicating that when the dough sheet surface sticks
to the finishing rolls, a rough dough sheet surface results).)
6. The Examiner relies on Andreski sole “for the teaching of
cutting to reduce waste material.” (Ans. 10.)
7. Mr. Mihaelos Mihalos, one of the named inventors in the
Application on appeal, made a declaration under 37 C.F.R. § 1.132 (“Dec.”),
dated Apr. 6, 2006, in which he described three experiments conducted
under his direct supervision. (Dec. ¶ 6.) Mr. Mihalos stated that the dough
used in the experiments contained “flour,” but did not specify the type of
flour, e.g. wheat flour. (Dec. 2, Table 1.) With respect to the three
experiments, the Dec. provides the following information: the final gauge
rolls were adjusted to gap thicknesses/temperatures of 0.017 inch/, 90-91 ºF
(Dec. 4), 0.022 inch/90-94 ºF (Dec. 6), and 0.030 inch/90-94 ºF (Dec. 8),
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respectively; the temperatures of the dough at the time of transfer from the
mixer to the sheeter were 105 ºF, 102-103 ºF, and 102-103 ºF, respectively;
and the temperatures of the dough after passing through a laminator and two
reduction rolls, but prior to entering the final gauge rolls were 75.8 ºF, 87 ºF,
and 83 ºF, respectively.
PRINCIPLES OF LAW AND ANALYSIS
We have carefully evaluated Appellants’ arguments and evidence in
support of nonobviousness. However, we are in agreement with the
Examiner’s determination that the weight of the evidence favors a
conclusion of obviousness as to the appealed claims for the reasons
expressed in the Examiner’s Answer. Our analysis of the facts and evidence
of record in light of the relevant case law is provided below.
Claims 1-2, 5-10, 19, 20, and 46
Claim 1, step c:
Appellants contend that the Examiner reversibly erred in finding that
Carey discloses or suggests the claimed step of “maintaining the surface of
each of said [final] gauge rolls at a temperature of about 85ºF to about 95ºF”
(claim 1). (App. Br. 5-8.) Appellants contend that Carey’s disclosure is
limited to controlling and maintaining temperature at the mixing stage (see
generally, Rep. Br. 2-9) and “[t]he Examiner has not explained how or
provided any evidence in support of how to maintain the final gauge rolls of
Carey et al at a critical temperature range” (Rep. Br. 2).
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 415-16 (2007). The question to
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be asked is “whether the improvement is more than the predictable use of
prior art elements according to their established functions.” Id. at 417.
When there is a design need or market pressure to solve a
problem and there are a finite number of identified, predictable
solutions, a person of ordinary skill has good reason to pursue
the known options within his or her technical grasp. If this
leads to the anticipated success, it is likely the product not of
innovation but of ordinary skill and common sense. In that
instance the fact that a combination was obvious to try might
show that it was obvious under § 103.

KSR, 550 U.S. at 421; see also DyStar Textilfarben GmbH & Co.
Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1367 (Fed. Cir. 2006)
(“Our suggestion test is in actuality quite flexible and not only permits, but
requires, consideration of common knowledge and common sense”).
As noted by the Examiner (Ans. 8), Carey identifies dough
temperature as a critical parameter effecting the process of reducing dough
thickness, because the dough becomes sticky if it is not maintained within a
certain temperature range. As further indicated by the Examiner (Ans. 8),
there are a limited number of stages in Carey’s process at which dough
temperature can be controlled so as to ensure optimum compression of the
dough, e.g., during mixing, proofing, and sheeting. Therefore, while Carey
only explicitly discloses controlling temperature during mixing, the
Examiner had a reasonable basis to conclude that the ordinary artisan, using
common knowledge and common sense, would have found it obvious to
have controlled dough temperature at one or more of the subsequent stages
in Carey’s process. Based on Appellants’ Specification, it was further
reasonable for the Examiner to conclude that conventional counterreducing
rolls would have been equipped with temperature control means and that the
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ordinary artisan would have possessed the knowledge and skill necessary to
use such means for controlling dough temperature. In addition, we note that
the Mihalos Declaration supports the Examiner’s contention that the
ordinary artisan would recognize that Carey necessarily contemplates the use
of some temperature control in order for the dough to enter the baking step
at about the same temperature at which it exits the mixer (FF 2). (See FF 7
(indicating that dough exiting the mixer (temperature at time of transfer from
mixer to sheeter) would experience a drop in temperature of between 15-30
ºF before reaching the final gauge rolls (temperature prior to entering final
gauge rolls)).)
Appellants also contend that the Examiner improperly disregards
Appellants’ evidence of unexpected results, and, instead, finds that the
evidence demonstrates the ordinary artisan would have achieved Appellants’
claimed temperature range as a matter of routine optimization in seeking to
optimize the dough thickness reduction operation (see Ans. 4). (Rep. Br. 6.)
Even though
[a] modification results in great improvement and utility over
the prior art, it may still not be patentable if the modification
was within the capabilities of one skilled in the art, unless the
claimed ranges “produce a new and unexpected result which
is different in kind and not merely in degree from the results
of the prior art.”

In re Huang, 100 F.3d 135, 139 (Fed. Cir. 1996) (quoting In re Aller, 220
F.2d 454, 456 (1955)); see also, Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348,
1371 (Fed. Cir. 2007) (noting that a showing of superior results is not
necessarily evidence of unexpected results); In re Aller, 220 F.2d at 456
(“Normally, it is to be expected that a change in temperature, or in
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concentration, or in both, would be an unpatentable modification.”).
“[W]hen unexpected results are used as evidence of nonobviousness, the
results must be shown to be unexpected compared with the closest prior art,”
In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991), and “must
be commensurate in scope with the claimed range,” In re Peterson, 315 F.3d
1325, 1330 (Fed. Cir. 2003).
We agree with the Examiner’s explanation as to why Appellants’
evidence fails to establish criticality and unexpected results for the claimed
temperature range (see Ans. 7). Additionally, we note that the testing is not
commensurate in scope with the claims. For example, the Mihalos
Declaration fails to include any test results in which the temperature of the
final gauge rolls was adjusted below 90 ºF or in which the uppermost gap
width between the final gauge rolls exceeded 0.030 inches. Similarly, in the
Specification Examples, the surface temperature of the final gauge rolls used
for the Example 1 dough is said to be “controlled between about 87-95ºF”
(Spec. [0049]), with the uppermost width between the final gauge rolls being
0.030 inches (Spec. [0052]). The uppermost width between the final gauge
rolls used for the Example 2 and 3 doughs is 0.034 inches, i.e., close to the
upper claimed limit of “about 0.035 inches,” but there is no indication that
testing was conducted for surface temperatures over the claimed temperature
range of “about 85ºF to about 95ºF.” (See Spec. [0054].)
Appellants’ evidence also fails to provide a comparison with the
closest prior art. For example, Appellants have not shown that a dough
prepared in accordance with Carey’s method, e.g., having a temperature of
125 ºF upon exiting the mixer, and subjected to the same processing steps as
Appellants’ comparative examples would be torn, shredded, and/or stick at
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the final gauge rolls. (See Dec. ¶ 6 (“use of gauge roll surface temperatures
of from about 85ºF to about 95ºF . . . is critical to avoid dough sheet tearing,
shredding and sticking at the final gauge rolls”).)
Claim 1, step d:
Appellants contend that the Examiner reversibly erred in finding that
the combined teachings of the references disclose or suggest cutting the
dough sheet into a plurality of pieces having different irregular shapes.
(App. Br. 17-20.)
During examination, claims are given their broadest reasonable
construction consistent with the Specification. In re Icon Health and
Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007).
We are not persuaded by Appellants’ argument because Appellants
have not identified any basis in the claims or Specification which supports a
narrow interpretation of the claim phrase “different irregular shapes” which
excludes the shapes disclosed in Carey and Andreski. Rather, we are in
agreement with the Examiner’s determination that, given its broadest
reasonable construction, claim 1 fails to distinguish over the various
disclosed shapes in Carey, e.g., triangles and potato slices. (See Ans. 9
(citing Carey, col. 18, ll. 25-30).) Moreover, Appellants have not explained
why the Examiner reversibly erred in concluding that
it would have been obvious [from the combined teachings of
Carey and Andreski] to cut into any different desirable shape
by changing the cutting element or changing the direction of
the cut to produce any desirable shapes from the same dough
sheet. This would have been within the skill of one in the art
(Ans. 10). (See Rep. Br. 10-12.)
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Claims 3 and 4
In rejecting claims 3 and 4, the Examiner maintains that “it would
have been obvious to make the dough to have varying thickness depending
on the thickness wanted for the chip and the texture provided by such
thickness.” (Ans. 5.) Appellants disagree, arguing that the dough sheet
becomes even more fragile when reduced in thickness using the narrower
gap widths specified in appealed claims 3 and 4. (App. Br. 20-21.)
Appellants again rely on the Mihalos declaration to evidence criticality of
the claimed 85-95 ºF gauge roll surface temperature. (App. Br. 21.)
As explained above, Appellants’ evidence fails to demonstrate
unexpected results because it is not commensurate in scope with the
appealed claims (e.g., testing was not conducted over the entire claimed
temperature range) and does not include a comparison with the closest prior
art.
Claims 14-18
Appellants concede that Carey discloses cutting the dough into a
plurality of pieces having scalloped edges as claimed in claims 14-18. (App.
Br. 22.) However, Appellants argue that the Examiner’s proposed
modification of Carey’s cutting method to eliminate production of interstitial
dough between the pieces (see claim 1, step d) based on Andreski’s
disclosure “would destroy the scallops of Carey” (App. Br. 22.) Appellants
point out that Andreski utilizes not only a rotary cutter, but also a slitter
which forms blunt or flattened corners. (Id.)
The test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the
structure of the primary reference; nor is it that the claimed
invention must be expressly suggested in any one or all of
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the references. Rather, the test is what the combined
teachings of the references would have suggested to those of
ordinary skill in the art.

In re Keller, 642 F.2d 413, 425 (CCPA 1981). “A person of ordinary skill is
also a person of ordinary creativity, not an automaton.” KSR, 550 U.S. at
421.
Appellants’ argument is not persuasive because it fails to address the
Examiner’s contention that the ordinary artisan would have recognized that
Andreski’s rotary cutter could be used without the slitter, allowing cutting to
produce shapes having scalloped edges, yet eliminating production of
interstitial dough (see Ans. 11.) Appellants have not explained why the
Examiner erred in finding that such a modification would have been within
the level of skill of the ordinary artisan (see Rep. Br. 12 (improperly
attempting to shift the burden to the Examiner to explain how to effect such
modification)).
Claims 21, 23, and 47
In traversing the rejection of these claims, Appellants rely on
essentially the same arguments presented in connection with their traversal
of independent claim 1 and dependent claim 142. (See App. Br. 22-24.) We
are not persuaded by these arguments for the reasons discussed above. We
additionally note that independent claim 21 differs from independent claim 1
in that it does not include a positively recited method step of maintaining the
surface of gauge rolls at a specified temperature. Rather, claim 21 recites a
method of rotary-cutting a dough sheet “obtained using a pair of

2 Unlike claim 1, claim 21 additionally requires scalloped edges, i.e., the
limitation recited in claim 14.
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counterrotating gauge rolls having a surface temperature of about 85ºF to
about 95ºF.” This is a product-by-process limitation.
“If the product in a product-by-process claim is the same as or
obvious from a product of the prior art, the claim is unpatentable even
though the prior product was made by a different process.” In re Thorpe,
777 F.2d 695, 697 (Fed. Cir. 1985).
As alluded to on pages 10-11, supra (discussion of comparison to the
closest prior art), Appellants have not shown that the claimed product would
differ from a product produced by another method, e.g., heating the dough to
a temperature of 125 ºF in the mixer as taught by Carey followed by
sheeting without control of the final gauge roll temperature. Accordingly,
Appellants have not shown reversible error in the Examiner’s rejection of
claims 21, 23 and 47 for this additional reason.
Claims 44 and 45
In traversing the rejection of these claims, Appellants rely on
essentially the same arguments presented in connection with their traversal
of claims 3 and 4. (See App. Br. 24-25.) We are not persuaded by these
arguments for the reasons explained above.
CONCLUSION
Appellants have not shown reversible error in the Examiner’s
rejection of claims 1-10, 14-21, 23, and 44-47 under 35 U.S.C. § 103(a) as
unpatentable over Carey in view of Andreski.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(v).
AFFIRMED
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