Ex Parte Wehrle et al

Patent Trial and Appeal Board

Mar 29, 2018

12297674 (P.T.A.B. Mar. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
12/297,674
10599 7590
Mars, Incorporated
Lisa Becker
FILING DATE
0313012009
04/02/2018
1132 W. Blackhawk Street
Chicago, IL 60642
FIRST NAMED INVENTOR
Karina Wehrle
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.
SL00105 PCT US 1734
EXAMINER
SMITH, PRESTON
ART UNIT PAPER NUMBER
1792
NOTIFICATION DATE DELIVERY MODE
04/02/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
mars.patents@effem.com
lisa.beckerl@effem.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE
THE PATENT TRIAL AND APPEAL BOARD
Exparte KARINA WEHRLE 1
and Christopher Abbott
Appeal2017-003653
Application 12/297,674
Technology Center 1700
Before TERRY J. OWENS, MARK NAGUMO, and JEFFREY R. SNAY,
Administrative Patent Judges.
NAGUMO, Administrative Patent Judge.
DECISION ON APPEAL
Karina Wehrle and Christopher Abbott ("Wehrle") timely appeal
under 35 U.S.C. § 134(a) from the Final Rejection2 of all pending claims 3
and 46-70. We have jurisdiction. 35 U.S.C. § 6. We reverse.
1 The real party in interest is identified as Mars, Inc. (Appeal Brief,
filed 12 October 2015 ("Br."), 3.)
2 Office Action mailed 5 January 2015 ("Final Rejection"; cited as "FR").
Appeal2017-003653
Application 12/297,674
A. Introduction 3
OPINION
The subject matter on appeal relates to a process of making chocolate
crumb. In the words of the '674 Specification, "[t ]he mixture of sugar, milk
(or dried milk and water), cocoa mass, and optional additives such as whey
powder or lactose, known as chocolate crumb is commonly used in the
confectionery industry as an intermediate in the production of chocolate."
(Spec. 1, 11. 8-11; emphasis added.) Conventional methods of making
chocolate crumb are said to comprise mixing the ingredients at around 50°C
to 70°C to form a sticky, viscous crumb paste that is subsequently dried to
reduce the water content to 2% [by weight] or less. (Id. at 18-27.) The
flavors are said to be developed during the heating stages, especially the
drying step, at which the temperature and water activity are thought to be
most suitable for Maillaird reactions. (Id. at 11. 13-15, and 2, 11. 21-24.)
The dry crumb is then broken down into small pieces that may be stored or
used immediately for further processing (id. at 11. 27-29), e.g., by adding
cocoa butter to produce the final chocolate crumb product (id. at 11. 15-17).
Wehrle seeks patent protection for a process that is said to be faster
and less energy intensive due to much shorter drying times and lower
temperatures, and that retains the flavor profile characteristic of chocolates
made by conventional crumb process. (Id. at 4, 11. 9-22 and 5, 11. 13-17.)
3 Application 12/297,674, Crumb process, filed 30 March 2009 as the
national stage under 35 U.S.C. § 371 of PCT/GB07/01471, filed 23 April
2007, claiming the benefit of an application filed in the United Kingdom
on 21 April 2006. We refer to the "'67 4 Specification," which we cite as
"Spec."
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Application 12/297,674
Claim 3 is representative and reads:
A process for the production of chocolate crumb comprising:
Providing chocolate crumb granules having
between 5 wt. % and 10 wt. % water
to a dryer wherein the granules are dried, at ambient
pressure, to have a water content of 4 wt. % or less
in a time period of from 10 seconds to 15 minutes.
(Claims App., Br. 24; some indentation, paragraphing, and emphasis added.)
The Examiner maintains the following grounds of rejection4' 5 :
A. Claims 51-54 stand rejected under 35 U.S.C. § 112(2).
B. Claims 3[6J, 46-50, and 57-59 stand rejected under
35 U.S.C. § 103(a) in view of the combined teachings of
Mao, 7 and Gibson. 8
Bl. Claims 51-54, and 60---63 stand rejected under
35 U.S.C. § 103(a) in view of the combined teachings of
Mao, Gibson, and Sikora. 9
B2. Claims 55, 56, 66, 69, and 70 stand rejected under
35 U.S.C. § 103(a) in view of the combined teachings of
Mao, Gibson, and Kulikowski. 10
4 Examiner's Answer communicated 24 August 2016 ("Ans.").
5 Because this application was filed before the 16 March 2013, effective
date of the America Invents Act, we refer to the pre-AIA version of the
statute.
6 Independent claims are indicated by bold font.
7 Wei-Wen Mao et al, Manufacture of bread crumb-like product, U.S.
Patent No. 4,609,557 (1986).
8 Richard Gibson et al., Chocolate Crumb, EP 1 245 158 Al (2002).
9 Paul Thomas Sikora and Wlodzimierz Ludwik Gorcholski, Dried product
and a drying process, U.S. Patent No. 6,268,012 Bl (2001).
10 Ronald A. Kulikowski, Rotary dryer, U.S. Patent No. 4,770,236 (1988).
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Appeal2017-003653
Application 12/297,674
B3. Claims 64, 65, 67, and 68 stand rejected under
35 U.S.C. § 103(a) in view of the combined teachings of
Mao, Gibson, Sikora, and Kulikowski.
B. Discussion
The Board's findings of fact throughout this Opinion are supported by
a preponderance of the evidence of record.
Indefiniteness
The Examiner holds claims 51-54 indefinite in the recitation of
"exposing the chocolate crumb granules to air at ... a rate of
between 0.08 m2/kg of crumb to 4 m2/kg of crumb." (Claims App., Br. 25,
claim 51-the other rejected claims 11 have similar ranges.) In the
Examiner's view, "[r]ates are measurements made per unit time. The claim
is thus unclear." (FR 2; cf Ans. 2.)
Appellants respond that the term "rate" is more general, citing a
dictionary definition, "a quantity, amount, or degree of something measured
per unit of something else," and citing a counter example of a currency
exchange rate. (Br. 10.) Appellants also quote the passage in the
Specification at page 8, lines 30-34, which is similar to the language of
claim 51, quoted supra, with additional preferred ranges. (Id.)
The meanings of terms in a claim must be understood in the context of
the claim itself, in light of the specification, from the point of view of a
person of ordinary skill in the art. Phillips v. AWH Corp., 415 F.3d 1303,
11 Independent claim 60 recites similar language, as do claims 67 and 68,
which depend from independent claim 66. Thus, following the Examiner's
rationale, claims 60-65, 67, and 68 should also be rejected as indefinite.
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Application 12/297,674
1313 (Fed. Cir. 2005) (en bane) ("the person of ordinary skill in the art is
deemed to read the claim term not only in the context of the particular claim
in which the disputed term appears, but in the context of the entire patent,
including the specification.").
There are two difficulties with the Examiner's position. First, the
Examiner has not come forward with evidentiary support for the proposition
that "rates" would have been understood as being based only on time
intervals. The dictionary definition and the currency exchange rate example
cited by Wehrle refute the unelaborated argument of the Examiner. Second,
both independent claim 3, quoted supra at 3, and the Specification at page 8,
lines 26-28, describe the drying step as being complete in a time period of
from 10 seconds to 15 minutes. Thus, a reasonable reading of these claims
in context is that the dose of air (0.08 to 4 m2/kg) is applied during the
period of drying. The unit of time that the Examiner finds absent appears to
be present.
Accordingly, we reverse the rejection for indefiniteness.
Obviousness
Wehrle urges (Br. 12) that the Examiner erred harmfully in
determining, in the Examiner's words, that "[i]t would have been obvious to
further flavor the crumb of Mao as chocolate since chocolate flavors are
desirable to consumers for reasons such as taste and nutrients and this would
thus enhance the profitability of the crumb of Mao" (FR 4, 11. 22-24).
In Wehrle's view, bread crumb, which is based on flour, has nothing to do
with chocolate crumb, which, Wehrle argues, is a term of art that persons
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Application 12/297,674
skilled in the art of confectionary do not consider to include flour. (Br. 12,
last para.)
The Examiner responds that it is the combined teachings of Mao
(regarding bread crumbs) and Gibson (regarding chocolate crumbs), "that is
used to teach a 'chocolate crumb."' (Ans. 8, 11. 4---6.) Wehrle has not, in the
Examiner's judgment, "claimed (or even disclosed in [the] [S]pecification) a
composition of a 'crumb' that would distinguish over the crumb of Mao."
(Id. at 11. 6-7.)
We are unable to discern merit in the Examiner's interpretation of the
term "chocolate crumb" as being so broad as to include chocolate-flavored
bread crumb. Although it is true that the definition of the term "chocolate
crumb," quoted supra at 2, is open, formally, to additional ingredients,
including flour, there is no indication in the '674 Specification or in the art of
record, specifically Gibson, that persons skilled in the art of chocolate crumb
preparation would have consider that term to include a large, let alone a
predominant12, quantity of flour. Nor has the Examiner come forward with
any credible evidence or explanation of the differences between the
conditions described by Mao for making bread crumbs from flour, water,
and other ingredients, and those described by Gibson---or the present
Specification-for making a concentrated chocolate crumb. Thus, the
Examiner has not shown that the conditions for preparing bread crumb
would have been considered relevant for processing chocolate crumb.
12 The composition described in Mao, Example 1 (Mao col. 6), comprises
about 7 4 wt. % flour.
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Application 12/297,674
The legal conclusion of obviousness rests upon findings of fact in the
prior art of record. It is of course true that some claims are so broad---or that
some terms are so poorly defined on the record-that they become
susceptible to rejections for obviousness based on combinations of disparate
art that are joined only by some concern with a common property or
condition that would have been recognized by persons skilled in the relevant
art. No such conditions have been established in the present case. The
Specification provides a definition of the term "chocolate crumb" that the
remainder of the record does not broaden sufficiently to make plausible a
determination that Mao is concerned with a common problem that would
have commended its teachings to the preparer of chocolate.
The Examiner has not made findings of fact regarding the remaining
references that cure the fundamental defects of Mao. Accordingly, we
reverse the rejections for obviousness.
C. Order
It is ORDERED that the rejection of claims 3 and 46-70 is reversed.
REVERSED
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