Timothy A. Stubbs et al.

Patent Trials and Appeals Board

Aug 28, 2020

14229439 - (D) (P.T.A.B. Aug. 28, 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.
14/229,439 03/28/2014 Timothy A. Stubbs G2292-00119 2205
154352 7590 08/28/2020
Duane Morris LLP-HILLSHIRE
505 9th Street
Suite 1000
Washington, DC 20004
EXAMINER
MCCLAIN-COLEMAN, TYNESHA L.
ART UNIT PAPER NUMBER
1793
NOTIFICATION DATE DELIVERY MODE
08/28/2020 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):
HILLSHIRE.USPTO@duanemorris.com
nlvilliard@duanemorris.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TIMOTHY A. STUBBS, KENT M. BEARSON, PAUL H.
BERNTHAL, DEIJING FU, JOHN DOW HARRIS JR., KRISTINA J.
PHIPPS, BARBARA K. SCHMITT, and GLENN WILLE
Appeal 2019-001996
Application 14/229,439
Technology Center 1700
BEFORE BEVERLY A. FRANKLIN, JEFFREY B. ROBERTSON, and
LILAN REN, Administrative Patent Judges.
ROBERTSON, Administrative Patent Judge.
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DECISION ON APPEAL1
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 27 and 29–32.3 Appeal Br. 12. We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm in part.
CLAIMED SUBJECT MATTER
Appellant states the invention relates to systems and methods for
providing for adding functional additives such as smoke and/or color
additives to a food product and/or food product casing in-line during a
stuffing process for the food product. Spec. ¶ 2. Claim 30, reproduced
below, is illustrative of the claimed subject matter (Appeal Br., Claims
Appendix 35):
30. A method of making a food product, the method comprising:
providing a casing material;
extruding a food component such that the food component is
received within the casing material; and

1 This Decision includes citations to the following documents: Specification
filed March 28, 2014 (“Spec.”); Final Office Action mailed October 17,
2017 (“Final Act.”); Advisory Action mailed June 12, 2018 (“Adv. Action”);
Appeal Brief filed June 25, 2018 (“Appeal Br.”); Examiner’s Answer mailed
October 23, 2018 (“Ans.”); and Reply Brief filed December 21, 2018
(“Reply Br.”).
2 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as The Hillshire
Brands Company. Appeal Br. 2.
3 Claims 1–26, 28, and 33 have been canceled. See Adv. Action,
Continuation of 12; 15.
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applying an additive to a surface of the casing material in an
in-line manner as the food component is being received within
the casing material;
wherein at least a portion of the additive is transferred from
the casing material to the food component after the food
component is received within the casing material and the portion
is absorbed into and consumable with the food component;
wherein the step of applying the additive to the surface of the
casing material in an in-line manner as the food component is
being received within the casing material comprises:
applying the additive to a first portion of the surface of the
casing material as the food component is being received in a
second portion of the casing material;
the first portion of the casing material being attached to the
second portion of the casing material.
Claims 27, 29, and 32 are also independent and recite method making
food products. Id. at 34–36.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Bolin et al.
hereinafter “Bolin”
US 4,382,098 May 3, 1983
Townsend US 5,238,442 August 24, 1993
Jon et al.
hereinafter “Jon”
US 5,955,126 September 21, 1999
REJECTIONS
1. The Examiner rejected claims 31 and 32 under 35 U.S.C. § 112(b)
or 35 U.S.C. § 112, second paragraph as indefinite. Ans. 3–4.
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2. The Examiner rejected claims 30 and 31 under pre-AIA 35 U.S.C.
§ 102(b) as anticipated by Townsend. Ans. 4–5.
3. The Examiner rejected claims 27 and 29 under pre-AIA 35 U.S.C.
§ 103(a) as unpatentable over Townsend. Ans. 6–8.
4. The Examiner rejected claims 27 and 29–32 under pre-AIA 35
U.S.C. § 103(a) as unpatentable over Jon and Bolin. Ans. 8–11.

OPINION
Rejection 1
The Examiner’s Rejection
The Examiner determined that claim 31 is indefinite, because claim
31 recites “the first portion of the surface of the casing material receives the
food component” and claim 30, from which claim 31 depends, recites the
food component is being received in a second portion of the casing material
as opposed to the first portion of the surface of the casing material. Ans. 3–
4. The Examiner further explained that it is unclear how the first portion of
the surface of the casing material would receive the food component as
recited in claim 31, when claim 30 recites the additive is applied to the first
portion of the surface of the casing material. Id. at 24.
The Examiner determined claim 32 is indefinite because it recites
“processing a surface of casing material prior to applying the additive to the
surface of the casing material” and also “wherein the processing of the
surface of the casing material occurs simultaneous with the extruding and
the additive applying steps.” Id. at 4.

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Appellant’s Contentions
Appellant argues claim 31 is not indefinite, because a method claim
can include a scenario at different points in time, where the casing material
first portion receives additive and the casing material second portion
receives a section of the food component, and the casing material first
portion that is now coated with additive, receives another section of the food
component. Appeal Br. 31–32; Reply Br. 34–35. Appellant contends that
had the Examiner identified the issue with respect to a “first portion of the
surface” and a “first portion” earlier, Appellant would have amended claim
30. Reply Br. 34–35
Appellant argues claim 32 is not indefinite, because a time-series is
possible in the recited method, and also claim 32 additionally recites
“extruding a food component such that the food component is received with
the casing material,” such that extrusion occurs when the third portion
receives the food component. Appeal Br. 32; Reply Br. 37. Appellant
contends that a time-series is possible if the operations are performed on
varying sections of the casing material. Id.

Discussion
During examination, “[a] claim is indefinite when it contains words or
phrases whose meaning is unclear.” In re Packard, 751 F.3d 1307,
1310, 1314 (Fed. Cir. 2014 (per curiam) (citing Manual of Patent
Examining Procedure § 2173.05).
Claim 31
As to claim 31, in this case, we agree with the Examiner that claim 31
is unclear, at least because as written, it is not clear how the “surface” of the
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first portion can receive the additive as recited in claims 30 and 31, and also
a food component as recited in claim 31, even taking into account a
particular time sequence of the method as argued by Appellant.
Claim 32
Claim 32 recites, in pertinent part, “processing a surface of the casing
material prior to applying the additive to the surface of the casing material”
and “wherein the processing of the surface of the casing material occurs
simultaneous with the extruding and the additive applying steps such that a
first portion of the surface is processed while a second portion of the surface
receives the additive while a third portion of the surface receives the food
component.”
We agree with the Examiner that as written, the relationship between
the processing of the surface and recited simultaneous extruding and
additive application steps is unclear, where claim 32 further requires
processing a surface of the casing material prior to applying the additive to
the surface of the casing material. Although Appellant argues that a time
sequence is possible, claim 32 does not recite the time sequence to relate the
surface processing, additive applying, and extruding steps so that it is clear
that the first, second, and third surfaces subject to the processing steps are
the same surfaces subjected to the additive applying and extruding steps in
the order argued by Appellant. That claim 32 recites how the first, second,
and third surfaces are attached in the last three lines of the claim, does not
sufficiently relate the process steps thereto.
As a result, we affirm the Examiner’s rejection of claims 31 and 32 as
indefinite.

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Rejection 2
Appellant presents arguments only with respect to claim 30 subject to
this rejection. See Appeal Br. 15. We select claim 30 as representative for
disposition of this rejection. 37 C.F.R. § 41.37(c)(1)(iv).

The Examiner’s Rejection
In rejecting claims 30 as anticipated by Townsend, the Examiner
found Townsend discloses a method of providing a casing material,
extruding a food component such that the food component is received within
the casing material, applying an additive to a surface of the casing material,
where at least a portion of the additive is absorbed into and consumable with
the food component as recited in claim 30. Ans. 4–5.

Appellant’s Contentions
Appellant contends Townsend discloses an additive liquid, which
contacts the exterior surface of the meat emulsion, but Townsend discloses
the additive does not become intermixed with the meat emulsion. Appeal
Br. 13. As a result, Appellant contends Townsend does not disclose at least
a portion of the additive is absorbed into the food component as recited in
claim 30. Appeal Br. 13–14. Appellant argues Townsend disparages prior
art embodiments where the additive penetrates or is absorbed into the food
component. Id. Appellant argues the Examiner does not rely on such prior
art embodiments disclosed in Townsend, but rather relies on embodiments in
the detailed description of Townsend. Id. at 14. Appellant argues the
Examiner has unreasonably found claim 30 to read on embodiments
disclosed in Townsend. Id. at 14–15.
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Issue
Has Appellant demonstrated reversible error in the Examiner’s
position that Townsend discloses a method of making a food product, where
a portion of the additive is absorbed into and consumable with the food
product as recited in claim 30?

Discussion
We are not persuaded by Appellant’s arguments. Although Appellant
argues Townsend disparages prior art devices and methods where a liquid
material penetrates an extruded meat emulsion (Townsend, col. 1, ll. 15–20;
col. 3, ll. 30–34), Townsend discloses the recited steps of the method of
making a food product recited in claim 30.
In particular, as the Examiner found, and Appellant does not dispute,
Townsend discloses an in-line method where an additive is applied to a
surface of the casing material as a food component is being received within
the casing material. Indeed, Townsend discloses a meat stuffing machine
where an additive, liquid smoke, is applied to the interior surface of the
casing as a meat emulsion is fed through bores into the casing such that the
casing carries a film of additive before the meat emulsion comes into contact
with the casing. Townsend, col. 3, ll. 8–30; Figs. 2–5.
In this regard, the Specification describes that suitable additives
include liquid smoke. Spec. ¶ 35. Although the Specification states
generally that at least a portion of the additive is absorbed into the interior of
the food component, the Specification does not provide any particular
description of techniques that would differentiate the method recited in
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claim 30 from the method disclosed in Townsend. See Spec. ¶¶ 39, 51, 54,
63, 79, 81. “Where, as here, the claimed and prior art products are identical
or substantially identical, or are produced by identical or substantially
identical processes, the PTO can require an applicant to prove that the prior
art products do not necessarily or inherently possess the characteristics of his
claimed product.” In re Best, 562 F.2d 1252, 1255 (CCPA 1977). Thus,
Appellant has not demonstrated reversible error on the part of the Examiner,
where the method recited in claim 30 and the method disclosed in Townsend
are substantially identical, and thus would be expected to produce products
with the same characteristics.
Accordingly, we affirm the Examiner’s rejection of claims 30 and 31.

Rejection 3
The Examiner’s Rejection
Claim 27 recites a method of making a food product, including
applying an additive in an in-line manner, where the additive is “non-
uniformly applied to the surface of the casing material such that an exterior
of the food component . . . has a blotchy appearance.”
In rejecting claim 27 as obvious over Townsend alone, the Examiner
found Townsend does not expressly disclose the additive is applied in a non-
uniform manner and has a blotchy appearance, but determined the
appearance of the additive in the final product is a design choice and does
not provide a patentable feature over the prior art. Ans. 6–7.
Claim 29 recites a method of making a food product, including
applying an additive in an in-line manner, where the additive is applied to
the surface in liquid form, further comprising “maintaining the additive at a
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first temperature” and “applying the additive to the surface of the casing at a
second temperature, the second temperature being cooler than the first
temperature.”
In rejecting claim 29 over Townsend alone, the Examiner found
Townsend does not expressly disclose maintaining an additive at a first
temperature and applying the additive to a surface of the casing at a second
temperature cooler than the first temperature. Ans. 7. The Examiner
determined that the temperature that the additive is maintained and applied is
contingent upon the particular additive selected in order to maintain
sufficient fluidity for application. Id., citing Townsend, col. 3, ll. 8–13. The
Examiner determined it would have been obvious to have optimized the first
and second temperatures in the method of Townsend through routine
experimentation with the expectation of successfully applying the additive to
the casing. Id. at 7–8.

Appellant’s Contentions
Appellant sets forth similar arguments with respect to claims 27 and
29 as for claim 30, which we found unpersuasive as discussed above.
Appeal Br. 16–17, 22–23.
For claim 27, Appellant further argues that Townsend disparages non-
uniform application such that it was inappropriate for the Examiner to rely
on such a rationale in rejecting the claim. Id. at 17–19; Reply Br. 15–18.
Appellant argues also that the non-uniform additive application results in a
different structure and function than the prior art. Id. at 19–22.
For claim 29, Appellant argues additionally that the Examiner has
misapplied the optimization doctrine, because Townsend does not suggest
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using different maintenance and application temperatures of the additive. Id.
at 23–24; Reply Br. 20–21.

Issues
Has Appellant demonstrated reversible error in the Examiner’s
position that it would have been obvious to have applied the additive as
disclosed in Townsend in a non-uniform manner as recited in claim 27?
Has Appellant demonstrated reversible error in the Examiner’s
position that it would have been obvious to have maintained an additive at a
first temperature and applied an additive at a second temperature cooler than
the first temperature as recited in claim 29?

Discussion
Claim 27
We are not persuaded by Appellant’s arguments that Townsend
disparages meat products with a non-uniform appearance. Townsend only
discloses that prior art devices and methods are not capable of uniformly
applying the liquid to the entire surface of the meat product. Townsend, col.
1, ll.15–17. Townsend does not disparage meat products themselves having
a non-uniform appearance depending on the particular meat product being
produced.
As to Appellant’s contention that the non-uniform appearance results
in a structural difference from Townsend and would not be a design choice,
Appellant’s argument is belied by the Specification itself, which states
additive is applied in a non-uniform manner “such that the exterior of the
food component may be non-uniform, blotchy, or otherwise uneven in
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appearance, which may provide a more natural or otherwise preferred
appearance to the food component.” Spec. ¶ 50. Thus, non-uniform
application of the additive does not provide a different structure to the food
product, but rather affects the appearance of the food product, which
supports the Examiner’s position that non-uniform application of additive to
food products in order to produce a food product having a blotchy4
appearance, would have been an obvious design choice.
Accordingly, we affirm the Examiner’s rejection of claim 27.

Claim 29
As to claim 29, we are persuaded by Appellant’s argument that the
Examiner has not provided sufficient reasoning that the additive
temperatures recited therein would have been obvious. The Examiner
appears to rely on Townsend’s disclosure that the additive is a “liquid” in
order to support the position that the additive temperature in claim 29 would
have been obvious. Townsend, col. 3, ll. 13–17. However, Townsend does
not discuss any particular limitations on temperature, nor does Townsend
discuss the additive being applied at a temperature that is cooler than a
temperature the additive is maintained at as recited in claim 29.
Accordingly, the Examiner has not set forth sufficient rational underpinnings
to support the position that the temperatures of additive would have been

4 As to having a “blotchy” appearance, the Specification does not provide
any particular description of the limits of what type of non-uniform
appearance might be considered to be “blotchy.” Spec. ¶ 50. Thus, we
consider the term “blotchy” to be subjective and broad as depending on the
perception of a person viewing the meat product.
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optimized from Townsend’s disclosure to arrive at the temperature
relationship recited in claim 29.
Accordingly, we reverse the Examiner’s rejection of claim 29 as
obvious over Townsend.

Rejection 4
We limit our discussion to claim 30, which is sufficient to dispose of
the issues related to this rejection.

The Examiner’s Rejection
In rejecting claim 30 as obvious over Jon and Bolin, the Examiner
found Jon discloses a method including stuffing a casing material with a
food component and applying an additive to a surface of the casing material
as the food component is being received within the casing material. Ans. 8.
The Examiner found Jon discloses at least a portion of the additive is
transferred from the casing material to the food component after the food
component is received within the casing material and the additive is
absorbed into and consumable with the food component. Ans. 8. The
Examiner found Jon discloses simultaneous processing of the surface of the
casing material, extruding, and additive applying steps. Id. at 9. The
Examiner found Jon does not disclose extruding a food component such that
the food component is received within the casing material. Id.
The Examiner found Bolin discloses sausage emulsions may be
transferred to stuffers for extruding the emulsion into casings. Id. As a
result of Bolin’s disclosure along with Jon’s disclosure that casing may be
used with automatic food stuffing equipment, the Examiner determined it
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would have been obvious to have extruded the food component during the
stuffing step of Jon with expectation that the food component would have
been successfully received within the casing material. Id. at 9–10.

Appellant’s Contentions
As to claim 30, Appellant argues the Examiner did not provide
sufficient reasoning to reject the claim and also that Jon does not disclose
applying an additive to casing material and depositing food component in
casing material simultaneously. Id. at 30; Reply Br. 31. Appellant argues
the prior art uses two different machines, one to apply additive to a first roll
of casing, and another machine to deposit food in a second roll of casing that
has already received the additive, which does not satisfy claim 30 because
claim 30 recites simultaneous processes on a continuous piece of casing
material. Reply Br. 31–32.

Issue
Has Appellant demonstrated reversible error in the Examiner’s
position that it would have been obvious to have arrived at the method
recited in claim 30 in view of Jon and Bolin?

Discussion
We are persuaded by Appellant’s arguments. The Examiner’s
rationale relies on combining the casing treating machine of Jon with well-
known stuffing machines as disclosed in Bolin. Jon discloses coating the
inside of casings with bixin colorant, where the coated casings may be
wound on a reel or go directly to a shirring operation to be shirred into
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sticks. Jon, col. 30, l. 21 – col. 31, l. 57; Fig. 1. Bolin discloses sausage
doughs may be transferred to stuffers for extruding dough mixes into
casings. Bolin, col. 4, ll. 29–32. The Examiner has not provided sufficient
reasoning to support the position that when combining the disclosures of Jon
and Bolin, one of ordinary skill in the art would have arrived at the method
in claim 30 of “applying an additive to a surface of the casing material in an
in-line manner as the food component is being received within the casing
material” as recited in claim 30.5
That is, the Examiner has not provided sufficient support that it would
have been within the level of the ordinary skilled artisan to have combined
the separate methods of Jon, which produce rolls or shirred sticks of coated
casings, and Bolin, which discloses that cases are stuffed, in the manner
recited in claim 30, as opposed to one machine that would coat one roll of
casing while another machine stuffed food into a previously coated roll of
casing as argued by Appellant.
Accordingly, we reverse the Examiner’s rejection of claims 27 and
29–32 as obvious over Jon and Bolin.

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
31, 32 112 Indefiniteness 31, 32
30, 31 102 Townsend 30, 31
27, 29 103 Townsend 27 29
27, 29–32 103 Jon, Bolin 27, 29–32

5 Independent claims 27, 29, and 32 recite similar language.
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Overall
Outcome
27, 30–32 29
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED-IN-PART