11418457 (P.T.A.B. Mar. 29, 2016)

Ex Parte Townsend et al

Patent Trial and Appeal BoardMar 29, 2016

11418457 (P.T.A.B. Mar. 29, 2016)

UNITED STATES PATENT AND TRADEMARK OFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 11/418,457 05/05/2006 Gerald William Townsend 1011525-000549 8747 48940 7590 03/29/2016 FITCH EVEN TABIN & FLANNERY, LLP 120 SOUTH LASALLE STREET SUITE 1600 CHICAGO, IL 60603-3406 EXAMINER BEKKER, KELLY JO ART UNIT PAPER NUMBER 1791 MAIL DATE DELIVERY MODE 03/29/2016 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 GERALD WILLIAM TOWNSEND, DAVID JOHN FELLOWES, CAROLINE EMMA CLARKE, and SIMON JAMES WALTER SHAW ________________ Appeal 2014-006800 Application 11/418,457 Technology Center 1700 ________________ Before TERRY J. OWENS, MICHAEL P. COLAIANNI, and CHRISTOPHER C. KENNEDY Administrative Patent Judges. OWENS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1–3, 5–16, 26–28 and 34–37. We have jurisdiction under 35 U.S.C. § 6(b). The Invention The Appellants claim a soup concentrate product. Claim 1 is illustrative: 1. A retorted or heat treated soup concentrate product comprising: a sealed pouch container, Appeal 2014-006800 Application 11/418,457 2 a single serving volume of liquid soup concentrate, disposed and retorted or heat treated within the sealed container, and dilutable, after being expressed, poured, or otherwise removed from the container once the sealed container is opened, by a volume of boiling or near boiling water greater than the volume of liquid soup concentrate to form a ready to serve soup without further heating, wherein the liquid soup concentrate comprises a food stuff or food stuff flavoring, or both, that has not been processed to a dry powder form, the concentrate within the sealed container has a weight of from 50 g to 100 g, and the soup has a single serving volume less than 400 ml consumable immediately after dilution. The References Shimp US 5,538,749 July 23, 1996 Norman N. Potter and Joseph H. Hotchkiss, FOOD SCIENCE 138–39, 152–53, 478 (Chapman & Hall, 5th ed. 1995) [hereinafter Potter]. The Rejection Claims 1–3, 5–16, 26–28 and 34–37 stand rejected under 35 U.S.C. § 103 over Shimp in view of Potter. OPINION We reverse the rejection. We need address only the sole independent claim, i.e., claim 1. That claim requires a sealed pouch containing a 50– 100 g single serving volume of liquid soup concentrate. Shimp discloses an “apparatus for preparing and dispensing individual servings of consumable hot soup from a refrigerated concentrate or base thereof” (col. 1, ll. 8–10) wherein “the hot soup product at a temperature between about 165º F. and about 175º F., preferably 170º F., is discharged [from a soup concentrate/hot water mixing chamber (34)] through the Appeal 2014-006800 Application 11/418,457 3 nozzle 85 into a cup or other container” (col. 8, ll. 58–61; Fig. 1) such that “a maximum amount of soup can be prepared with minimum trouble and delay” (col. 1, ll. 40–41). “In accordance with a preferred embodiment, the soup concentrate is packaged in a flexible pouch and frozen” (col. 4, ll. 21– 23). Potter discloses that food packaging “serves to unitize or group product together in useful numbers or amounts. In some cases this might be an amount to be used at a single time like most canned foods, or in other cases, multiple servings are grouped together such as a six-pack of sodas” (p. 478). Setting forth a prima facie case of obviousness requires establishing that the applied prior art would have provided one of ordinary skill in the art with an apparent reason to modify the prior art to arrive at the claimed invention. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). The Examiner asserts, regarding the Appellants’ claim 1 requirement of a sealed pouch containing a 50–100 g single serving volume of liquid soup concentrate, that 1) “as Shrimp [sic] teaches of using a predetermined and/or desired amount of soup concentrate (column 4 lines 17-21 and column 7 lines 3-12 and 53-54) one of ordinary skill in the art would expect that the amount of soup concentrate to be used within the soup product be readily determinable and obvious to one of ordinary skill in the art” (Ans. 5– 6), 2) “[i]t would have been obvious to one of ordinary skill in the art at the time the invention was made to package a specific amount of concentrate in the package based upon the desired amount of servings per package, the capacity of the packages available, and the desired serving size” (Ans. 6), 3) “[t]o store a partially used soup container would not be space efficient nor Appeal 2014-006800 Application 11/418,457 4 would it be expected to possess good shelf life” (Ans. 6), and 4) “the use of an individual consumer serving pouch would not destroy the teachings of Shimp as the apparatus would still be capable of dispensing the soup product” (Ans. 8). Those assertions are not well taken because the Examiner has not established that in view of Shimp’s disclosure of an apparatus “designed so that a maximum amount of soup can be prepared with minimum trouble and delay” (col. 1, ll. 40–41) and discharged into containers such as cups (col. 8, ll. 58–61), one of ordinary skill in the art would have had an apparent reason to package soup concentrate in a flexible pouch containing only 50–100 g of soup concentrate. Thus, the Examiner has not established a prima facie case of obviousness of the Appellants’ claimed soup concentrate product. DECISION/ORDER The rejection of claims 1–3, 5–16, 26–28 and 34–37 under 35 U.S.C. § 103 over Shimp in view of Potter is reversed. It is ordered that the Examiner’s decision is reversed. REVERSED