Jonathan M. Griebel et al.

Patent Trials and Appeals Board

Jul 24, 2020

2019002645 (P.T.A.B. Jul. 24, 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.
14/476,996 09/04/2014 Jonathan M. GRIEBEL 6910US01 6965
30173 7590 07/24/2020
Diederiks & Whitelaw, PLC
13885 Hedgewood Dr., Suite 317
Woodbridge, VA 22193-7932
EXAMINER
THAKUR, VIREN A
ART UNIT PAPER NUMBER
1792
NOTIFICATION DATE DELIVERY MODE
07/24/2020 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):
gmi.mail@dwpatentlaw.com
mail@dwpatentlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JONATHAN M. GRIEBEL, VINCENT PAUL SOMMER,
and IVAN HAJOVY
____________________

Appeal 2019-002645
Application 14/476,996
Technology Center 1700
____________________

Before BEVERLY A. FRANKLIN, JEFFREY B. ROBERTSON, and
N. WHITNEY WILSON, Administrative Patent Judges.

WILSON, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
April 30, 2018 decision finally rejecting claims 52–64 (“Final Act.”). We
have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We reverse.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies General Mills, Inc. as the real party in
interest (Appeal Br. 4).
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CLAIMED SUBJECT MATTER
Appellant’s disclosure generally relates to edible carriers for foods that
are soft but still hold a preformed shape (Abstract). The claimed carriers are
said to have a shelf life of at least six months at room temperature (Spec. 21).
Details of the claimed method are set forth in representative claim 52, which
is reproduced below from the Claims Appendix to the Appeal Brief:
52. A method of preparing a baked soft shaped tortilla piece
packaged food article, comprising the steps of:
A. providing a quantity of a chemically leavened gluten plastic
dough, the dough including:
about 55 to 80% by dry weight flour,
about 1 % to about 10% sugar,
about 4% to about 15% humectant,
about 1 % to about 15% fat,
about 1 % to about 5% salt, and
about 30% to about 35% moisture;
B. forming the quantity into shaped, heat set three dimensional
pieces having a thickness of about l-5mm;
C. baking the shaped, heat set pieces to form a plurality of
finished soft shaped tortilla pieces each having a
moisture content of from about 23% to about 28%, from
about 1 % to about 15% of an edible fat or shortening
ingredient, and having a water activity value of about
0.88 or less, each of the finished soft shaped tortilla
pieces having a formed shape selected from a cup, bowl,
U- or square bottomed shaped taco shell, boat, tube,
envelope or cone; and,
D. packaging the plurality of finished soft shaped tortilla pieces
within a hermetically sealed, modified atmosphere
package to form soft shaped tortilla piece packaged food
article having a shelf life of at least six months at room
temperature storage, wherein the plurality of baked soft
shaped tortilla pieces has a shelf life of at least six
months at room temperature storage within the
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hermetically sealed food package while still remaining
flexible and pliable.

REJECTIONS
1. Claims 52, 53, 58, 61, and 64 are rejected under
35 U.S.C. § 103(a) as unpatentable over Nockemann2 in view of Skarra,3
Dembecki,4 and Wampler,5 and further in view of Peters,6 Thomas,7 and
Langston.8
2. Claim 54 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Nockemann in view of Skarra, Dembecki, and Wampler, and further in
view of Peters, Thomas, and Langston, and further in view of “How to make
tortillas.”9
3. Claims 55 and 56 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Nockemann in view of Skarra, Dembecki, and Wampler,
and further in view of Peters, Thomas, and Langston, “How to make
tortillas,” and further in view of Chedid.10

2 Nockemann, WO 92/15199, published September 17, 1992. Because
Nockemann is in German, the Examiner, Appellant, and the Board make
reference to the translation of record.
3 Skarra et al., US 4,735,811, issued April 5, 1988.
4 Dembecki, US 4,313,964, issued February 2, 1982.
5 Wampler et al., US 5,759,599, issued June 2, 1998.
6 Peters, CA 2,060,464, published April 11, 1993.
7 Thomas, et al., US 6,245,374 B1, issued June 12, 2001.
8 Langston et al., US 2005/0281921 A1, published December 22, 2005.
9 “How to Make Really Good Soft Taco Shells,” MacResource,
http://forums.macresource.com/read.php?l ,330158,330263 (last accessed on
September 7, 2011).
10 Chedid et al., US 2004/0071854 A1, published April 15, 2004.
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4. Claim 57 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Nockemann in view of Skarra, Dembecki, and Wampler, and further in
view of Peters, Thomas, and Langston, “How to make tortillas,” Chedid, and
further in view of Boscolo,11 Spanier,12 or King.13
5. Claims 59 and 60 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Nockemann in view of Skarra, Dembecki, and Wampler,
and further in view of Peters, Thomas, and Langston, and further view of
any of Gornet,14 Heiderpriem,15 and/or Kashou.16
6. Claim 62 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Nockemann in view of Skarra, Dembecki, and Wampler, and further in
view of Peters, Thomas, and Langston, and further view of Schellhaass.17
7. Claim 63 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Nockemann in view of Skarra, Dembecki, and Wampler, and further in
view of Peters, Thomas, and Langston, and further view of Kuhn.18

11 Boscolo, US 2006/0216378 A1, published September 28, 2006.
12 Spanier et al., US 4,822,626, issued April 18, 1989.
13 King et al., US 2005/0048182 A1, published March 3, 2005.
14 Gornet, US Des. 402,085, issued December 8, 1998.
15 Heiderpriem, US 3,794,455, issued February 26, 1974.
16 Kashou et al., US 6,746,701 B2, issued June 8, 2004.
17 Schellhaass et al., US 2005/0142273 A1, published June 30, 2005.
18 Kuhn, US 6,123,973, issued September 26, 2000.
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DISCUSSION
Because we decide the appeal of the prior art rejections on the basis of
limitations common to each of the claims, we focus our analysis on the
rejection of claim 52 over Nockemann, in view of Skarra, Dembecki, and
Wampler, and further in view of Peters, Thomas, and Langston.
The Examiner’s findings are set forth at pages 4–9 of the Final
Action. In general, the Examiner finds that Nockemann discloses using
leavened (but not chemically leavened) plastic dough to form heat set three
dimensional pieces which are then baked so that the final product has the
shape of a bowl, cup or boat (Final Act. 4). The Examiner further finds that
the baked pieces are elastic “and thus teaches soft shaped baked pieces”
(id.). The Examiner also finds that Nockemann is silent with respect to the
use of chemically leavened dough, and also the specific properties of the
dough as recited in the claims (Final Act. 4–5). The Examiner finds that
Skarra discloses chemically leavened dough formulations having the
claimed properties (Final Act. 5). The Examiner determines that it would
have been obvious to use Skarra’s dough in Nockemann’s process because,
inter alia, both references disclose baked, foldable tortilla-like products (id.).
The Examiner relies on Wampler as teaching that tortillas can be
formulated using 6% sugar, and that it therefore would have been obvious to
use 6% sugar in Skarra’s dough to achieve a particular flavor profile (Final
Act. 7).
Finally, with respect to the limitation “packaging the plurality of
finished soft shaped tortilla pieces within a hermetically sealed, modified
atmosphere package to form soft shaped tortilla piece packaged food article
having a shelf life of at least six months at room temperature storage,” the
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Examiner finds that Thomas teaches that it is desirable to exclude
substantially all of the oxygen from a package comprising a tortilla type
dough based product (Final Act. 7–8), and that other art discloses the use of
similar non-oxygen atmospheres within their packaging as are disclosed in
the Specification. Therefore, according to the Examiner, “absent any
convincing evidence to the contrary, the product taught by the combination
teaches the elements taught by the claim and thus would have reasonably
have been expected to also possess an at least six month shelf-life” (Final
Act. 8).
Appellant argues Nockemann does not disclose a product which can
hold a shape such as a cup or bowl (Appeal Br. 10). Appellant argues that
Nockemann explicitly teaches that its product must be immediately filled,
baked, or frozen over, suggesting that it would otherwise collapse (i.e., it
cannot hold its shape) (Appeal Br, 10–11, citing Nockemann, 8). This
argument is persuasive. While Nockemann states that “[a]s a result of the
heating up, the batter 10 is stabilized in such a way that it retains the shape
of the molding chamber 8, imparted to it, even when the concave dough
mold 1 is removed” (Nockemann 7–8), the drawings to which this sentence
refers show that the batter 10 is stabilized because it is sitting on top of the
bottom of the mold. Thus, there is no reason to believe that it would retain
its shape in the absence of the support of the bottom of the mold.
The Examiner has the initial burden of establishing a prima facie case
of obviousness based on an inherent or explicit disclosure of the claimed
subject matter under 35 U.S.C. § 103. In re Oetiker, 977 F.2d 1443, 1445
(Fed. Cir. 1992) (“[T]he examiner bears the initial burden, on review of the
prior art or on any other ground, of presenting a prima facie case of
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unpatentability.”). To establish a prima facie case of obviousness, the
Examiner must show that each and every limitation of the claim is described
or suggested by the prior art or would have been obvious based on the
knowledge of those of ordinary skill in the art. In re Fine, 837 F.2d 1071,
1074 (Fed. Cir. 1988). In this instance, the preponderance of the evidence of
record does not support the Examiner’s finding that the combined prior art
teaches a finished soft shaped tortilla pieces having a formed shape selected
from a cup, bowl, U- or square bottomed shaped taco shell, boat, tube,
envelope or cone, where the tortilla pieces are flexible and pliable.
Accordingly, we reverse the rejection of claim 52. Because each of
the independent claims (and hence all of the dependent claims), contain
analogous limitations, we reverse the prior art rejections of the remaining
claims as well.

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CONCLUSION
In summary:

Claims
Rejected
35
U.S.C. §
Basis/Reference Affirmed Reversed
52, 53, 58,
61, 64
103(a) Nockemann,
Skarra, Dembecki,
Wampler, Peters,
Thomas, Langston
52, 53,
58, 61,
64
54 103(a) Nockemann,
Skarra, Dembecki,
Wampler, Peters,
Thomas, Langston,
“How to make
tortillas”
54
55, 56 103(a) Nockemann,
Skarra, Dembecki,
Wampler, Peters,
Thomas, Langston,
“How to make
tortillas,” Chedid
55, 56
57 103(a) Nockemann,
Skarra, Dembecki,
Wampler, Peters,
Thomas, Langston,
“How to make
tortillas,” Chedid,
Boscolo, Spanier,
King
57
59, 60 103(a) Nockemann,
Skarra, Dembecki,
Wampler, Peters,
Thomas, Langston,
Gornet,
Heiderpriem,
Kashou
59, 60
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62 103(a) Nockemann,
Skarra, Dembecki,
Wampler, Peters,
Thomas, Langston,
Schellhaass
62
63 103(a) Nockemann,
Skarra, Dembecki,
Wampler, Peters,
Thomas, Langston,
Kuhn
63
Overall
Outcome
52–64

REVERSED