Ex Parte Newman et al

Board of Patent Appeals and Interferences

Apr 6, 2010

10141166 (B.P.A.I. Apr. 6, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MICHAEL D. NEWMAN,
STEPHEN A. MCCORMICK,
and HELMUT DRESSELHAUS
____________

Appeal 2009-014242
Application 10/141,166
Technology Center 1700
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Decided: April 6, 2010
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Before EDWARD C. KIMLIN, CHUNK K. PAK, and
CHARLES F. WARREN, Administrative Patent Judges.

KIMLIN, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal from the final rejection of claims 25-27 and 29-31.
We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6. Claim 25
is illustrative:
25. A method for providing treatment to a continuous supply of food
products in a food treatment apparatus having a plurality of discrete
treatment zones, wherein the food product is a baked good, comprising:
Appeal 2009-014242
Application 10/141,166

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(a) subjecting the food product to a first treatment zone;

(b) providing a first pressure to the first treatment zone having the food
product;

(c) subjecting the food product to a second treatment zone separate and
discrete from the first treatment zone; and

(d) providing a second pressure to the second treatment zone with the food
product therein capable of promoting application of the treatment to be
absorbed into the food product.

The Examiner relies upon the following references in the rejection of
the appealed claims:
Newman 7,008,658 B2 Mar. 7, 2006
Inglis EP 0 780 131 A2 Jun. 25, 1997
Appellants' claimed invention is directed to a method for providing
treatment to a continuous supply of food products. The method entails
subjecting the food product to a first treatment zone at a first pressure, and
subjecting the product to a second treatment zone at a second pressure
wherein the second zone is separate and discrete from the first treatment
zone. The second treatment zone causes the treatment to be absorbed into
the food product.
Appealed claims 25-27 and 29-31 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Inglis. The appealed claims also stand
rejected on the ground of non-statutory obviousness-type double patenting as
being unpatentable over claims 1-5 of U.S. '658.
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Application 10/141,166

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We have thoroughly reviewed each of Appellants' arguments for
patentability. However, we are in complete agreement with the Examiner
that the claimed subject matter would have been obvious to one of ordinary
skill in the art within the meaning of § 103 in view of the applied prior art.
Accordingly, we will sustain the Examiner's rejections for essentially those
reasons expressed in the Answer.
Appellants do not dispute the Examiner's factual determination that
Inglis, like Appellants, discloses a method for providing treatment to food
products in an apparatus that includes a first treatment zone at one pressure,
and a second treatment zone at a second pressure which is greater than the
first pressure, for applying a treatment that is absorbed in the food product.
While the treatment zones of Inglis do not occupy separate locations, we
agree with the Examiner that it would have been obvious for one of ordinary
skill in the art to provide separate zones to accommodate a continuous
process.
It is by now well settled that, in general, it is a matter of obviousness
for one of ordinary skill in the art to modify a batch process into a
continuous one. Batch processes and continuous processes each have their
known advantages and disadvantages and we concur with the Examiner that
it would have been obvious for one of ordinary skill in the art to weigh such
advantages and disadvantages in designing an apparatus for a particular
application. The disadvantages of a batch process articulated by Appellants,
namely, occupation of valuable floor space, the consumption of excess
energy in recycling a single chamber for multiple functions, etc., were well
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Application 10/141,166

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known in the art at the time of filing the present application, and Appellants
do not assert otherwise.
As for the argument regarding the need of an equipment technician or
operator and for elaborate controls, Appellants have not explained why a
continuous process may also not need a technician/operator and elaborate
controls. Indeed, a batch process may also be automated to minimize the
need of an operator, and the elaborate nature of the control system is
contingent upon the complexity of the particular apparatus.
Significantly, Appellants have presented no reason why it would have been
nonobvious for one of ordinary skill in the art to perform the necessary
modifications of the Inglis apparatus to convert it to a continuous system.
Appellants only submit that because Inglis "does not disclose a method
including food products being subjected to treatment simultaneously in a
plurality of discrete treatment zones or any equivalent structure, it does not
render obvious all of the features of claim 25 or any other member of Group
I" (Br. 18, 2nd para.). This statement of a fact conceded by the Examiner is
no substitute for an argument for why it would have been nonobvious to
convert the system of Inglis into a continuous one.
Appellants have not presented a separate, substantive argument for
any dependent claim on appeal. Accordingly, all the appealed claims stand
or fall together with claim 25.
Appellants also do not offer a substantive argument against the
obviousness-type double patenting rejection but state that they "are prepared
to file a terminal disclaimer" (Br. 19, 2nd para.). Accordingly, we will
summarily sustain the rejection.
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Application 10/141,166

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In conclusion, based on the foregoing, the Examiner's decision
rejecting the appealed claims 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(a)(1)(iv).
AFFIRMED

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