Ex Parte Schmidt

Patent Trial and Appeal Board

Oct 26, 2018

13818951 (P.T.A.B. Oct. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/818,951 02/25/2013
70351 7590 10/29/2018
Robert Lelkes
Patent Attorney
Linprunstrasse 49, 4th Fl.
Munich, 80335
GERMANY
FIRST NAMED INVENTOR
Sebastian Schmidt
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.
36606-HSE-P-WOUS 3193
EXAMINER
SMITH, PRESTON
ART UNIT PAPER NUMBER
1792
MAIL DATE DELIVERY MODE
10/29/2018 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 SEBASTIAN SCHMIDT
Appeal2018-000955
Application 13/818,951
Technology Center 1700
Before JAMES C. HOUSEL, BRIAND. RANGE, and
JENNIFER R. GUPTA, Administrative Patent Judges.
HOUSEL, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1, 3, and 11-27. We have jurisdiction over the
appeal under 35 U.S.C. § 6(b ).
We REVERSE.
1 Our decision refers to the Specification ("Spec.") filed February 25, 2013,
Appellants' Appeal Brief ("Appeal Br.") filed February 22, 2017, the
Examiner's Answer ("Ans.") dated September 1, 2017, and Appellants'
Reply Brief ("Reply Br.") filed October 31, 2017.
2 Appellant identifies Hochland SE as the real party in interest (Appeal
Br. 1).
Appeal2018-000955
Application 13/818,951
STATEMENT OF THE CASE
The invention relates to methods for introducing a visible ingredient
into the surface or surfaces of a food, for example a hot processed cheese,
present as a flowable mass (Spec. 1: 1--4, Title). Appellant discloses that
mixing ingredients, such as seasonings, herbal leaves, or mushroom slices,
into processed cheese to improve the visual appearance of the food is well-
known (id. at 1: 6-15). However, Appellant discloses that such ingredients
are embedded within the processed cheese in random orientations that, when
the cheese is cut into slices, results in indiscriminate cross sections with
barely noticeable ingredients, a small quantity of which appearing at the
surfaces of the cheese (id. at 1: 15-19). As such, Appellant discloses that
much of the ingredient cost for improving appearance is lost because much
of the ingredients are embedded in the cheese (id. at 1 :22-33). Therefore,
the invention solves this problem by forming a hot processed cheese in a
roller gap followed by introducing the ingredients to one or both sides of the
formed processed cheese using a pressure roller (id. at 2:12-16).
Claim 1, reproduced below from the Claims Appendix to the Appeal
Brief, is illustrative of the subject matter on appeal. The limitation at issue
is italicized.
1. A method for introducing an ingredient (7) into the surface
of cheese (1) present as a flowable mass comprising:
(a) feeding a flowable mass of cheese ( 1) into a first
roller gap (G 1) between a first cooling belt (9a) having a
temperature lower than the temperature of the flowable mass
of cheese supported on a guide roller (2) and a calibration
roller (3) disposed above and parallel to the guide roller (2)
by counter-rotating the guide roller (2) and the calibration
roller (3) for transporting the flowable mass of cheese (1)
into the first roller gap ( G 1 ), whereby the flowable mass of
cheese (1) is (a) cooled by contact with the first cooling belt
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Application 13/818,951
(9a) and (b) shaped by the first roller gap (G 1) into a strip
(4) having (1) a defined thickness, (2) a first surface (4a) in
contact with the first cooling belt (9a) and (3) a second
surface (4b) on the side of the strip (4) opposite to the first
surface (4a),
(b) sprinkling an ingredient (7) onto the second
surface (4b) of the strip (4) downstream from the first roller
gap (GI) while the first surface (4a) of the strip (4) is in
contact with the first cooling belt (9a) while carrying out
(a), and
( c) feeding the strip ( 4) formed according to (a) which
has been sprinkled with the ingredient (7) according to (b)
into a second roller gap (G2) between the first cooling belt
(9a) and a second cooling belt (9b) guided by a pressure
roller (8) mounted parallel to the guide roller (2), by
counter-rotating the pressure roller (8) relative to the guide
roller (2), whereby the ingredient (7) is pressed into the
second surface ( 4b) of the strip ( 4) while substantially
maintaining the defined thickness of the strip (4) via the
second roller gap (G2),
wherein the strip ( 4) is supported between the first
cooling belt (9a) and the second cooling belt (9b) while
carrying out ( c) and the ingredient (7) is a scatterable
ingredient while carrying out (b ), which becomes embedded
in the second surface (4b) of the strip (4) while carrying out
step (c).
Remaining independent claim 3 similarly recites a method for
introducing one or more ingredients into first and second surfaces of cheese
present as a flowable mass, wherein the ingredients are introduced
downstream of first and second roller gaps.
REJECTIONS
The Examiner maintains, and Appellant requests our review of, the
following grounds of rejection under 35 U.S.C. § 103(a):
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Application 13/818,951
1. Claims 1, 3, 13, 20, and 21 as unpatentable over Shibauchi; 3
and
2. Claims 11, 12, 14--19, and 22-27 as unpatentable over
Shibauchi in view of Winckelmann. 4,5
ANALYSIS
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 107 5 (BP AI 2010) (precedential)
cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)
("[I]t has long been the Board's practice to require an applicant to identify
the alleged error in the examiner's rejections.")). A dispositive issue before
us in this appeal, therefore, is whether Appellant has identified reversible
error in the Examiner's conclusion that it would have been obvious to place
the ingredient sprinkler downstream of the first roller gap (compare Ans. 5,
with Reply Br. 1-3). After considering the evidence presented in this
appeal, we are persuaded that Appellant has identified reversible error in the
above conclusion. Because the obviousness rejection of claims 1, 3, 13, 20,
and 21 based on Shibauchi relies on this determination, we cannot sustain
this rejection. In addition, because the Examiner does not rely on
3 Shibauchi et al., US 2006/0127544 Al, published June 15, 2006
("Shibauchi").
4 Winckelmann et al., US 2006/0147585 Al, published July 6, 2006
("Winckelmann").
5 Although claims 16, 17, 26, and 27 were not included the statement of
rejection, these claims were discussed in the body of the rejection. Also,
Appellant's arguments reflect an understanding that these claims were
subject to this rejection (Appeal Br. 17-19). Therefore, we have corrected
the statement of rejection to include these claims.
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Appeal2018-000955
Application 13/818,951
Winckelmann to remedy this deficiency in Shibauchi, we likewise cannot
sustain the rejection of dependent claims 11, 12, 14, 15, 18, 19, and 22-25.
The Examiner determines, in relevant part, "in reference to sprinkling
occurring downstream [ of] the first gap, it would have been obvious to place
the sprinkler downstream in order to reduce the time it takes for the
ingredients to come in contact with the cheese ( speeding up sprinkling)"
(Ans. 4). The Examiner also determines "it would have been obvious to try
different injection locations (upstream or downstream [ of] the gap in light of
finite amount of choices for [the] injection point)" (id. at 4--5).
Appellant asserts that claims 1 and 3 require forming a cheese strip or
sheet by feeding a flowable mass of cheese into a first roller gap, followed
by sprinkling an ingredient onto the second surface of the cheese product
downstream of the first roller gap (Reply Br. 2). Appellant argues that,
contrary to this requirement, Shibauchi applies food material D to the food
material C upstream of the first roller gap (id.).
Appellant's argument is persuasive of reversible error. Shibauchi,
Figure 4, shows adding ingredient D to the flowable mass prior to the first
roller gap resulting in a product similar to the prior art described by
Appellant in the Specification, wherein the ingredient is added to the
flowable mass prior to formation into a strip. Indeed, Shibauchi discloses
that the position of the junction 19, and thereby the point of introduction of
ingredient (D) and fluid food material (C), may be anywhere between the
nozzle 10 of first fluid food material (A) and the rotary cooling roller 14 of
fluid food material (B) (Shibauchi ,r 83). In other words, all of the possible
locations of the junction 19 are upstream of the roller gap. Shibauchi also
teaches that by supplying both fluid food material (C) and ingredient (D), "it
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Application 13/818,951
becomes possible to introduce a wide range of [ingredient (D)] as well as the
fluid food material (C) as an intermediate layer" (Shibauchi ,r 104). Thus,
Shibauchi does not teach sprinkling an ingredient onto a surface of the
formed cheese strip downstream of roller gap.
In addition, although the Examiner determines that it would have been
obvious to place the sprinkler downstream of the roller gap in order to
reduce the time it takes for the ingredients to come in contact with the
cheese, the Examiner fails to direct attention to any disclosure in Shibauchi
that reducing the time for the ingredients to be in contact with the cheese is
desirable, nor do we find any. We also do not find any support in Shibauchi
for trying locations other than upstream of the roller gap, especially given
Shibauchi's teaching to combine the fluid food material (C) and the other
food material (D) together to form the intermediate layer upstream of the
roller gap. "Obvious to try" analyses run afoul of KSR Int 'l Co. v. Teleflex,
Inc., 550 U.S. 398,421 (2007) and§ 103 when the prior art gives no
direction as to which of many possibilities is likely to be successful and,
even more so, as in this case, discloses a range of identified, predictable
solutions, none of which cover the claimed solution. See In re Kubin, 561
F.3d 1351, 1359 (Fed. Cir. 2009).
Absent a teaching or suggestion to locate the ingredient-sprinkling
step downstream of the roller gap, the Examiner's obviousness conclusion
lacks sufficient rational underpinning. In re Kahn, 441 F.3d 977, 988 (Fed.
Cir. 2006) ("[R ]ejections on obviousness grounds cannot be sustained by
mere conclusory statements; instead, there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness."), quoted with approval in KSR, 550 U.S. at 418. Therefore,
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Application 13/818,951
we cannot sustain the Examiner's obviousness rejections of claims 1, 3, and
11-27.
DECISION
Upon consideration of the record, and for the reasons given above and
in the Appeal and Reply Briefs, the decision of the Examiner rejecting
claims 1, 3, and 11-27 under 35 U.S.C. § 103(a) as unpatentable over
Shibauchi, alone or in view of Winckelmann, is reversed.
REVERSED
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