Ex Parte Westphal et al

Patent Trial and Appeal Board

Nov 13, 2014

12805950 (P.T.A.B. Nov. 13, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte KATHY WESTPHAL,
PETER MATTSON, and STEVEN GUNDRUM1
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Appeal 2013-001748
Application 12/805,950
Technology Center 1700
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Before MARK NAGUMO, GEORGE C. BEST, and
JEFFREY W. ABRAHAM, Administrative Patent Judges.

ABRAHAM, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
decision of the Primary Examiner finally rejecting claims 1–22. We have
jurisdiction pursuant to 35 U.S.C. § 6(b). We reverse.
BACKGROUND
Appellants’ claimed invention relates to methods for making ready-to-
eat oatmeal products. Spec. 1.

1 According to the Appeal Brief, the Real Party in Interest is Seneca Foods
Corporation. App. Br. 3.
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Claim 1 is the only independent claim at issue on appeal, and is
reproduced below from the Claims Appendix (App. Br. 19; emphasis
added):2
1. A method of producing a ready to eat oatmeal
product for consumption in a container of a desired size,
comprising:
adding to a processing receptacle a mixture of acid, salt,
fruit juice concentrate, sweetener and water;
heating and agitating said mixture at a temperature of
approximately 120°F to 140°F for a predetermined time
period;
adding a predetermined amount of uncooked dry thick
cut oats and the heated and agitated mixture to the
container;
sealing the filled container and pasteurizing it for a
predetermined time period; and
cooling the sealed container to ambient temperature.
The Examiner maintains, and Appellants appeal, the rejection of
claims 1–22 as unpatentable under 35 U.S.C. § 103(a) over Foster (US
2007/0248741 A1, published Oct. 25, 2007), in view of Birch (US
2005/0053713 A1, published Mar. 10, 2005) and Sky (US 5,035,913, issued
July 30, 1991).3
Appellants present arguments directed at limitations in independent
claim 1. Appellants state, without elaboration, that dependent claims 9, 14,

2 The claims presented in the Claims Appendix of the Appeal Brief reflect
Amendments made to the claims after the Final Action, which were entered
by the Examiner pursuant to the Advisory Action dated April 13, 2012.
3 According to the Examiner, “extrinsic evidence for the recitation of plant
sterol content in the composition of the invention, in Claim 17, [is] provided
by the disclosure in 21 CFR § 101.83.” Final Act. 2.
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and 22 “contain novel recitations that are not disclosed or rendered obvious
by the teachings of the cited references.” App. Br. 16. In the absence of any
substantive arguments directed towards specific elements of dependent
claims 2–22, these claims stand or fall together with our analysis of
independent claim 1.
OPINION
The Examiner finds that the combination of Foster and Birch discloses
[i.e., renders obvious] a method of producing a ready-to-consume oatmeal
product in a container, wherein a mixture of fruit juice concentrate, acid,
salt, sweetener, and water is first heated in a processing receptacle, oats are
then added to the processing receptacle, and the mixture is pasteurized in a
sealed container. See Ans. 3–4. The Examiner acknowledges that neither
reference discloses “adding a predetermined amount of uncooked dry cut
oats as in claim 1; or a pasteurizing process for oatmeal in a serving
container.” Id. at 4.
The Examiner finds that Sky discloses adding rolled oats at a selected
point during the preparation process of a microwavable oatmeal composition
to minimize processing and avoid producing a “paste-like” product. Id.
According to the Examiner, Sky further describes a way to “achieve the
effects of pasteurization in the serving container as recited in claim 1.” Id.
The Examiner concludes that it would have been obvious to a person
of ordinary skill in the art to combine the methods in Foster, Birch, and Sky
to prepare “a ready[-]to[-]consume oatmeal product comprising a mixture of
acid, salt, fruit juice concentrate, sweetener, water and oatmeal; with pre-
determined texture or mouthfeel characteristics, and shelf life.” Id. at 4–5.
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According to the Examiner, persons of ordinary skill in the art were
already aware of methods for making ready-to-eat food products, such as
spaghetti, that include in-package hydration, cooking, and pasteurization.
Ans. 9. As a result, the Examiner takes the position that it would have been
“an obvious adaptation of known methods in the art” to modify the methods
of Foster, Birch, and Sky by adding uncooked, dry, thick-cut oats to the
serving container without first premixing and heating the oats in the mixture
of acid, salt, fruit juice concentrate, sweetener, and water. Id. (citing Hong
(US 2006/0286226 A1, published Dec. 21, 2006) as evidence of known in-
package cooking methods routinely used in the art).
Appellants argue that the combined teachings of the prior art fail to
disclose or suggest the claimed method. App. Br. 14. Specifically,
Appellants contend that
There is no teaching or even a suggestion in any of the cited
references of [Appellants’] novel method wherein uncooked dry
thick[-]cut oats are added to the serving container and not
heated or agitated with the mixture of the acid, salt, fruit juice
concentrate, sweetener and water prior to being added to the
serving container.
Id. Appellants further argue that it would not have been obvious to one
skilled in the art to modify the methods disclosed in Foster, Birch, and Sky,
by adding uncooked oats to the serving container, based on known methods
in the art as allegedly evidenced by Hong. Id. at 15–16. According to
Appellants, the Examiner has failed to show “that there is any objective
suggestion or motivation in the prior art references relied upon, or in the
knowledge available to one skilled in the relevant art at the time of the
invention, to apply the references in the manner done so by the Examiner in
rejecting Appellant[s’] claims.” Id. at 17. Appellants also contend that the
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Examiner relies on hindsight to apply the teachings of the prior art as set
forth in the final rejection. Id.
The Examiner recognizes that the plain language of the claims
requires that uncooked oats be added to the serving container. But, as
Appellants point out, the Examiner has not identified a disclosure or even a
suggestion in Foster, Birch, or Sky of adding uncooked thick-cut oats to the
serving container, wherein the uncooked oats are not heated with the mixture
of acid, salt, fruit juice concentrate, sweetener and water prior to being
added to the serving container. See, e.g., Reply Br. 2–3. To the contrary, in
each of these references, the oats are first heated in the aqueous mixture
before being transferred to the serving container.
The fact that in-package hydration, cooking, and pasteurization was
independently known in the art as of the date of invention alone is not
sufficient to establish obviousness. KSR Int’l Co. v. Teleflex Inc., 550 U.S.
398, 418 (2007) (“[A] patent composed of several elements is not proved
obvious merely by demonstrating that each of its elements was,
independently, known in the prior art.”). The Examiner has failed to direct
us to persuasive evidence of a reason or suggestion as to why a person of
ordinary skill in the art would have modified the methods disclosed in
Foster, Birch, or Sky to incorporate an in-package cooking or pasteurization
step in order to arrive at the claimed method for producing oatmeal,
including carrying out the required steps in the order specified. Id. (“[I]t can
be important to identify a reason that would have prompted a person of
ordinary skill in the relevant field to combine the elements in the way the
claimed new invention does.”).
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In the absence of any such evidence, we find that the Examiner has
failed to establish a prima facie case of obviousness.
CONCLUSION
For the reasons set forth above, we reverse the Primary Examiner’s
final rejection of claims 1–22 under 35 U.S.C. § 103.

REVERSED

cdc