Fountain, Gerald Olean. et al.

Patent Trials and Appeals Board

Feb 3, 2020

15102849 - (D) (P.T.A.B. Feb. 3, 2020)

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.
15/102,849 06/08/2016 Gerald Olean Fountain 20203-138555-US 5230
109813 7590 02/03/2020
Fitch, Even, Tabin & Flannery, LLP
120 South LaSalle Street
Suite 2100
Chicago, IL 60603-3406
EXAMINER
TARAZANO, DONALD LAWRENCE
ART UNIT PAPER NUMBER
1791
MAIL DATE DELIVERY MODE
02/03/2020 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 OLEAN FOUNTAIN and AMY L. PENNER
____________

Appeal 2019-003914
Application 15/102,849
Technology Center 1700
____________

Before JEFFREY W. ABRAHAM, MONTÉ T. SQUIRE, and BRIAN D.
RANGE, Administrative Patent Judges.

SQUIRE, Administrative Patent Judge.

DECISION ON APPEAL1

Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1–12.3 We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM IN PART.

1 In this Decision, we refer to the Specification filed June 8, 2016 (“Spec.”);
Final Office Action dated Apr. 23, 2018 (“Final Act.”); Appeal Brief filed
Oct. 5, 2018 (“Appeal Br.”); Examiner’s Answer dated Feb. 19, 2019
(“Ans.”); and Reply Brief filed Apr. 19, 2019 (“Reply Brief”).
2 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a). Appellant identifies Kraft Foods R&D, Inc. as the real
party in interest. Appeal Br. 3.
3 Claims 13–15 are withdrawn. Appeal Br. 3.
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CLAIMED SUBJECT MATTER
Appellant’s claimed subject matter relates to a process for producing a
chocolate tablet composition and compositions produced using the method.
Spec. 1–2; Abstract. Claim 1, the sole independent claim, illustrates the
claimed subject matter on appeal and is reproduced below from the Claims
Appendix to the Appeal Brief:
1. A process for the preparation of a chocolate tablet
comprising co-milling a dry precursor comprising
(i) cocoa nibs and/or particulate cocoa butter and/or
particulate cocoa butter equivalent/substitute;
(ii) a solid bulk sweetener; and
(iii) optionally dairy powder;
to obtain a powdered composition having a particle size of
<10μm (mean) and/or <30μm (d90); and
compressing the powdered composition at a pressure of
at least 7000kPa to obtain the chocolate tablet.
Appeal Br. 16 (key disputed claim language italicized and bolded).
REFERENCES
The Examiner relies on the following prior art references as evidence
in rejecting the claims on appeal:
Name Reference Date
Beringer et al. (“Beringer”) US 4,139,589 Feb. 13, 1979
Kopp EP 1733625 A1 Dec. 20, 2006
Glacier Confection, http://www.glacierconfection.com/Glossary_ep_
44.html (archived at archive.org Jan. 9, 2012, last visited Nov. 30, 2017)
(“Glacier”).

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REJECTIONS
On appeal, the Examiner maintains (Ans. 3) the following rejections:
1. Claims 1–11 are rejected under 35 U.S.C. § 103 as being
unpatentable over Kopp in view of Beringer (“Rejection 1”). Ans. 4.
2. Claim 12 is rejected under 35 U.S.C. § 103 as being
unpatentable over Kopp in view of Beringer as applied to claims 1 and 10
above, and in further view of Glacier (“Rejection 2”). Id. at 6–7.
OPINION
Rejection 1
The Examiner rejects claims 1–11 under § 103 as obvious over the
combination of Kopp and Beringer (Ans. 4–6), which we refer to as
Rejection 1. In response to the Examiner’s rejection, Appellant presents
argument for the patentability of claims 1–4, 6–8, 10, and 11 as a group, and
presents separate arguments for the patentability of claim 5 and claim 9,
respectively, which we address in turn below.
Claims 1–4, 6–8, 10, and 11
Appellant does not present separate argument for the patentability
claims 1–4, 6–8, 10, and 11. Appeal Br. 6. We select claim 1 as
representative of this group and claims 2–4, 6–8, 10, and 11 stand or fall
with claim 1. 37 C.F.R. § 41.37(c)(1)(iv).
The Examiner determines that the combination of Kopp and Beringer
suggests a process for preparing a chocolate product satisfying all of the
limitations of claim 1, and concludes the combination would have rendered
the claim obvious. Ans. 4–6 (citing Kopp ¶¶ 1, 7, 22, 52, 54, 64; Beringer
1:26–33, 1:59–2:5, 4:25–5:17, 5:67–6:5, Fig. 8).
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The Examiner finds Kopp teaches or suggests the majority of the
limitations of claim 1, but that the reference is silent regarding the
“compressing the powdered composition at a pressure of at least 7000kPa to
obtain the chocolate tablet” recitation of the claim. Id. at 5. The Examiner,
however, relies on Beringer for teaching or suggesting that element of the
claim. In particular, the Examiner finds Beringer teaches a compression
molding method for forming gum encapsulated with a coating, which allows
for the encapsulation of gum with a powder by using conventional
pelletizing machines. Id. at 5 (citing Beringer 1:26–33, 1:59–2:5, 4:25–5:17,
Fig. 8).
The Examiner further finds Beringer teaches that the process is carried
out at sufficiently high pressure to produce layers with sufficient hardness
such that the tablet produced will be strong enough for use. Id. at 5 (citing
Beringer 5:67–6:5, Fig. 8E).
Based on the above findings, the Examiner concludes
[i]t would have been obvious to one of ordinary skill in the
art at the time the invention was filed to have used the
method of making an encapsulated gum disclosed by
Beringer to form the chocolate confection comprising a
filling and molded chocolate powder encapsulant
disclosed by Kopp since this method produces the
structure disclosed by Kopp and can be performed on
conventional pelletizing machines.
Id. at 6. The Examiner further concludes it would have been obvious to one
of ordinary skill to have optimized Beringer’s compression pressure in order
to obtain an encapsulated confection with sufficient hardness/structural
integrity for use. Id. at 6.
Appellant argues the Examiner’s rejection should be reversed because
Kopp does not teach or suggest the “compressing the powdered composition
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at a pressure of at least 7000kPa to obtain the chocolate tablet” recitation of
the claim. Appeal Br. 6–11; Reply Br. 1–3. In particular, Appellant
contends “Kopp provides no hint or suggestion that the powdered
intermediate may be compressed” (Appeal Br. 9) and “no mention is made
of compressing the powdered base composition directly to form a tablet” (id.
at 8). See also Reply Br. 1 (“Kopp Does Not Disclose or Suggest
Compressing a Powder to Form Chocolate Products.”).
Appellant further argues a person having ordinary skill in the art
would not have been led to modify Kopp to form a chocolate tablet directly
from Kopp’s powdered precursor. Appeal Br. 6. In particular, Appellant
contends
[o]ne of ordinary skill would have had no reason to modify
a reference such as Kopp . . . to arrive at process in which
ingredients are co-milled and then compressed into a tablet
form powder form.
Id. at 11; see also Reply Br. 3 (same).
Appellant also argues Beringer does not teach or suggest the use of
“chocolate” or “cocoa,” as required by the claims. Appeal Br. 11–13. In
particular, Appellant contends that, in contrast to the claimed invention,
“[t]here is absolutely no mention of chocolate or cocoa components in any
component of Beringer” and Beringer does not “mention confections of any
sort aside from referring to a plastic component occasionally as a ‘chewing
gum mass.’” Id. at 11–12.
Lastly, Appellant argues one of ordinary skill in the art would not
have had reason to combine the teachings of Kopp and Beringer to arrive at
the claimed invention. Appeal Br. 11; Reply Br. 3–4.
We do not find Appellant’s arguments persuasive of reversible error
in the Examiner’s rejection based on the fact-finding and reasoning provided
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by the Examiner at pages 4–6 and 7–14 of the Answer and pages 3–5 of the
Final Office Action. On the record before us, we find a preponderance of
the evidence and sound technical reasoning support the Examiner’s findings
and determination that the combination of Kopp and Beringer suggests a
process for preparing a chocolate tablet satisfying all of the limitations of
claim 1 and conclusion that the combination would have rendered the claim
obvious. Kopp ¶¶ 1, 7, 22, 52, 54, 64; Beringer 1:26–33, 1:59–2:5,
4:25–5:17, 5:67–6:5, Fig. 8.
We further find the Examiner provides a reasonable basis, which is
supported by a preponderance of the evidence in the record, to evince why
one of ordinary skill would have combined the teachings of Kopp and
Beringer to arrive at the claimed invention. Ans. 6 (explaining that one of
ordinary skill would have had reason to use Beringer’s compression method
to form a chocolate confection comprising a filling and molded chocolate
encapsulant because the method produces the same structure disclosed by
Kopp and can be performed on conventional pelletizing machines); see also
KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 420 (2007) (explaining that any
need or problem known in the art can provide a reason for combining the
elements in the manner claimed).
Moreover, as the Examiner finds and explains at pages 8–10 of the
Answer, it follows that, because compressing chocolate powders to form
molded chocolate products, including tablets, was well-known in the prior
art at the time of Appellant’s claimed invention, as evidenced, for example,
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by the Weaber,4 Pontzer,5 and Rumbaut6 references, which are of record in
this case, it would have been obvious to one of ordinary skill in the art at the
time of invention to have utilized a compression molding process to form a
chocolate tablet from Kopp’s chocolate base powder. KSR, 550 U.S. at 416
(“The combination of familiar elements according to known methods is
likely to be obvious when it does no more than yield predictable results.”).
Appellant’s arguments do not reveal reversible error in the
Examiner’s factual findings or analysis in this regard.
Appellant’s argument that Kopp does not teach or suggest
compressing the powdered composition to obtain the chocolate tablet
(Appeal Br. 8–9) and Beringer does not teach or suggest the use of chocolate
or cocoa (id. at 11–12) is not persuasive of reversible error in the Examiner’s
rejection because Appellant attacks the references individually rather than
the combined teachings of the prior art as a whole. One cannot show
non-obviousness by attacking references individually where the rejection is
based on a combination of references. In re Keller, 642 F.2d 413, 425
(CCPA 1981). Appellant’s contentions in this regard are misplaced because
they are premised on what Appellant contends Kopp and Beringer each
teaches individually, and not the combined teachings of the references as a
whole and what the combined teachings would have suggested to one of
ordinary skill in the art.

4 Weaber et al., US 6,309,689 B1, dated Oct. 30, 2001 (“Weaber”).
5 Pontzer et al., US 2006/0024411 A1, published Feb. 2, 2006 (“Pontzer”).
6 Rumbaut, WO 2009/068999 A2, published June 4, 2009.
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As the Examiner finds (Ans. 5, 7) and contrary to what Appellant’s
argument seems to suggest, the Examiner relies on Beringer for suggesting
the “compressing the powdered composition” element of claim 1, while
Kopp is relied upon in the rejection for teaching or suggesting the
“chocolate” and “cocoa” elements of the claim.
Appellant’s contentions that one of ordinary skill in the art would not
have been led to modify Kopp to form a chocolate tablet (Appeal Br. 6) and
would not have had reason to combine the teachings of Kopp and Beringer
to arrive at the claimed invention (Appeal Br. 11) are not persuasive because
they are largely conclusory and Appellant does not provide an adequate
explanation to support them. In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir.
1984); see also In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997)
(explaining that mere lawyer’s arguments or conclusory statements, which
are unsupported by concrete factual evidence, are entitled to little probative
value).
Moreover, as previously discussed above and contrary to what
Appellant argues, the Examiner provides sufficient reasoning (Ans. 6)
well-supported by evidence in the record to explain why one of ordinary
skill would have combined the teachings of Kopp and Beringer to arrive at
the claimed invention. Appellant’s disagreement as to the Examiner’s
factual findings and reasoning for combining the references, without more,
is insufficient to establish reversible error. SmithKline Beecham Corp. v.
Apotex Corp., 439 F.3d 1312, 1320 (Fed. Cir. 2006) (“[M]ere statements of
disagreement . . . as to the existence of factual disputes do not amount to a
developed argument.”).
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We, therefore, sustain the Examiner’s rejection of claims 1–4, 6–8,
10, and 11.
Claim 5
Appellant presents a separate argument for the patentability of
claim 5.7 Appeal Br. 13–14; Reply Br. 6. Claim 5 depends from claim 1
and further recites “wherein the powdered composition is compressed at a
pressure of from 40000 to 70000kPa.” Appeal Br. 17 (Claims Appendix).
Appellant argues the Examiner’s rejection of claim 5 should be
reversed because the cited art does not teach or suggest the recitation
“wherein the powdered composition is compressed at a pressure of from
40000 to 70000kPa” and “one of ordinary skill in the art would have had no
guidance as to the magnitude of pressure for compression.” Appeal Br. 13;
Reply Br. 6.
We do not find Appellant’s arguments persuasive of reversible error
in the Examiner’s rejection based on the Examiner’s factual findings and
reasoning provided at pages 5–6 and 12–13 of the Answer and pages 4–5 of
the Final Office Action. In particular, we find a preponderance of the
evidence and sound technical reasoning support the Examiner’s
determination that it would have been obvious to one of ordinary skill to

7 Although Appellant’s arguments at page 13 the Appeal Brief and page 6 of
the Reply Brief refer to “Claim 7,” we assume this is a typographical error
because the arguments actually appear to be directed to claim 5, which
includes the recitation “wherein the powdered composition is compressed at
a pressure of from 40000 to 70000kPa,” and not to claim 7, which does not
include that recitation. Compare claim 5 (Appeal Br. 17) with, claim 7
(Appeal Br. 17). We, therefore, consider and address Appellant’s arguments
as relating to claim 5.
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have optimized Beringer’s compression pressure to arrive at the claimed
range in order to obtain an encapsulated confection with sufficient structural
integrity/hardness. Beringer 1:26–33, 1:59–2:5, 4:25–5:17, 5:67–6:5, Fig. 8.
As the Examiner explains (Ans. 5), because Beringer teaches that the
compressing process is carried out at sufficiently high pressure to produce
layers with sufficient hardness such that the tablet produced will be strong
enough for use (Beringer 5:67–6:5), it follows that one of ordinary skill
would have had reason to compress the powdered composition within the
claimed pressure range or would have arrived at the claimed range through
routine experimentation in order to obtain a tablet with sufficient structural
integrity for use. Beringer 6:2–5 (“The press operation . . . is carried out at a
higher intensity so that the total tablet will be strong enough for use”); see
also In re Aller, 220 F.2d 454, 456 (CCPA 1955) (“[W]here the general
conditions of a claim are disclosed in the prior art, it is not inventive to
discover the optimum or workable ranges by routine experimentation.”).
In this regard, we observe that the Specification assigns no particular
criticality to the pressure range at which the powdered composition is
compressed, but rather describes embodiments encompassing very broad
pressure ranges and disclosing that “[s]uch pressures provide a tablet which
is structurally strong but still soft enough for a consumer to bite into.” Spec.
4:18–25.
We, therefore, sustain the Examiner’s rejection of claim 5.
Claim 9
Appellant also presents a separate argument for the patentability of
claim 9. Appeal Br. 14; Reply Br. 6–7. Claim 9 depends from claim 1 and
further recites “wherein the process additionally comprises a subsequent step
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of exposing the chocolate tablet to elevated temperature in order to modify
its appearance.” Appeal Br. 17 (Claims Appendix).
Regarding the “wherein the process additionally comprises a
subsequent step of exposing the chocolate tablet to elevated temperature in
order to modify its appearance” recitation of claim 9, the Examiner relies on
the combination of Kopp and Beringer for suggesting that element of the
claim. Ans. 6. In particular, the Examiner finds that
when the chocolate tablet produced by the modification of
Kopp with Beringer is consumed by a consumer the
temperature is necessarily raised above ambient
temperatures in the mouth of the consumer and the
appearance of the tablet is modified.
Id. at 6.
Appellant argues the Examiner’s rejection of claim 9 should be
reversed because, in contrast to the Examiner’s finding, a consumer eating
the product is clearly not a step in the process for the preparation of a
chocolate tablet, as required by the claim. Appeal Br. 14.
We agree with Appellant’s argument. In particular, on the record
before us, we are not persuaded the Examiner has identified sufficient
evidence or persuasively explained how or why one of ordinary skill in the
art would have considered a consumer ultimately eating the product “a
subsequent step of exposing the chocolate tablet to elevated temperature” in
the process for the preparation of the chocolate tablet, as recited in the claim.
KSR, 550 U.S. at 418 (requiring “reasoning with some rational underpinning
to support the legal conclusion of obviousness”) (quoting In re Kahn, 441
F.3d 977, 988 (Fed. Cir. 2006)).
We, therefore, do not sustain the Examiner’s rejection of claim 9.
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Accordingly, with respect to Examiner’s § 103 rejection of claims
1–11 as obvious over the combination of Kopp and Beringer, we affirm the
rejection of claims 1–8, 10, and 11 and reverse the rejection of claim 9.
Rejection 2
The Examiner rejects claim 12 under § 103 as obvious over the
combination of Kopp, Beringer, and Glacier (Ans. 6–7), which we refer to as
Rejection 2. Claim 12 depends from claim 10 and further recites “wherein
the solid filling is a chocolate having a melting point of 37°C or less.”
Appeal Br. 18 (Claims Appendix).
Appellant contends the Examiner’s rejection of claim 12 should be
reversed because
[t]here is no reason that one of ordinary skill in the art
would have been led to include a filling, particularly a
chocolate filling, in a pharmaceutical tablet of the type
described in Beringer . . . [and] Glacier would have
provided one of ordinary skill no guidance or suggestion
to include a chocolate filling within a tablet of compressed
chocolate powder.
Appeal Br. 15.
We do not find Appellant’s contention persuasive of reversible error
in the Examiner’s rejection because it is conclusory and unsupported by
persuasive evidence in the record. De Blauwe, 736 F.2d at 705.
Moreover, based on the fact-finding and reasoning provided by the
Examiner at pages 7 and 13–14 of the Answer and pages 5–6 of the Final
Office Action, we find a preponderance of the evidence and sound technical
reasoning support the Examiner’s analysis and determination that, in view of
the combined teachings of Kopp, Beringer, and Glacier, it would have been
obvious to one of ordinary skill to have arrive at the claimed invention.
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Kopp ¶¶ 1, 7, 22, 52, 54, 64; Beringer 1:26–33, 1:59–2:5, 4:25–5:17,
5:67–6:5, Fig. 8; Glacier 2.
Contrary to what Appellant contends, the Examiner does provide
articulated reasoning with a rational underpinning to explain why one of
ordinary skill would have been led to a process “wherein the solid filling is a
chocolate having a melting point of 37°C or less,” as recited in claim 12,
based on the combined teachings of the cited art. Ans. 7 (explaining it
would have been obvious to one of ordinary skill because utilizing such
filling “was routine and conventional in the chocolate arts at the time the
invention was filed” and “conventional chocolate inherently has a melting
point of less than 37°C”).
Indeed, as previously noted above in affirming the Examiner’s
rejection of claims 1–4, 6–8, 10, and 11, it is well-settled that the
“combination of familiar elements according to known methods is likely to
be obvious when it does no more than yield predictable results.” KSR, 550
U.S. at 416
Accordingly, we affirm the Examiner’s § 103 rejection of claim 12 as
obvious over the combination of Kopp, Beringer, and Glacier.
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CONCLUSION
In summary:
Claim(s)
Rejected
35 U.S.C. §  Reference(s)/Basis Affirmed Reversed
1–11 103 Kopp, Beringer

1–8, 10, 11 9
12 103 Kopp, Beringer,
Glacier
12
Overall
Outcome
1–8, 10–12 9

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 IN PART