CHOCOLATE HOUSE INCUBATOR RETAIL, LLCDownload PDFPatent Trials and Appeals BoardNov 24, 20202020001045 (P.T.A.B. Nov. 24, 2020) Copy Citation 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. 15/050,079 02/22/2016 Katherine T. Weiser TRIN09-00003 9059 23990 7590 11/24/2020 DOCKET CLERK P.O. DRAWER 800889 DALLAS, TX 75380 EXAMINER TRAN, LIEN THUY ART UNIT PAPER NUMBER 1793 NOTIFICATION DATE DELIVERY MODE 11/24/2020 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): munckwilson@gmail.com patents@munckwilson.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KATHERINE T. WEISER1 Appeal 2020-001045 Application 15/050,079 Technology Center 1700 Before ERIC B. GRIMES, DEBRA L. DENNETT, and LILAN REN, Administrative Patent Judges. GRIMES, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134(a) involving claims relating to a food product, which have been rejected as obvious. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. STATEMENT OF THE CASE The Specification “describes food products with shells that are dissolved or melted to release ingredients and form heated beverages.” 1 Appellant identifies the real party in interest as CHOCOLATE HOUSE INCUBATOR RETAIL, LLC. Appeal Br. 2. We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appeal 2020-001045 Application 15/050,079 2 Spec. ¶ 4. “As a particular example, multiple shells could be formed from chocolate and can contain ingredients for hot cocoa (such as cocoa mix and marshmallows). The multiple shells could be arranged in a particular pattern and decorated to form a character, such as a snowman.” Id. ¶ 5. Claims 1–7, 9–16, and 18–23 are on appeal. Claim 1, reproduced below, is illustrative: 1. A food product comprising: first and second shells that contain one or more ingredients within the shells and that are attached to each other by a first edible bonding agent separate from the shells; and a base to which the first shell is attached by a second edible bonding agent separate from the shells and the base such that the first shell is secured to the base; wherein the shells are configured to be dissolved or melted into a heated liquid to release the one or more ingredients and the base and the edible bonding agents are configured to be dissolved or melted into the heated liquid in order to form a heated beverage, and wherein the first shell contains a first ingredient that dissolves to form the heated beverage and the second shell contains a second ingredient that does not dissolve. Claims 9 and 18 are the other independent claims. Claim 9 is directed to a method of making the food product of claim 1, and claim 18 is directed to a method of making a heated beverage using a food product like the one defined by claim 1. Appeal 2020-001045 Application 15/050,079 3 OPINION Claims 1–7, 9–16, and 18–23 stand rejected under 35 U.S.C. § 103 as unpatentable based on Fischbach,2 Chocolate Snowman Truffles,3 Snowman Truffles,4 Oreo Truffle Snowmen,5 Chocolate Cup,6 20 Best Desserts for 2011,7 and Homemade Chocolates.8 Final Action9 2. The Examiner finds that Fischbach discloses food product comprising beverage capsules. The capsule comprises a solid shell made of chocolate enclosing multiple ingredients such as cocoa mix, chocolate syrup or various substitutes or any mixture thereof. The shape of the chocolate envelope may vary and may be tubular, disc- shaped or spherical. The capsules are configured to be dissolved into a hot water or milk for consumption. Id. at 2–3. The Examiner acknowledges that “Fishchbach [sic] does not disclose a base to which the shell is attached, first and second shells attached to each other and to the bond [sic, base?] by bonding ingredients and the base and 2 Fischbach et al.; US 4,925,683; May 15, 1990. 3 Chocolate Snowman Truffles, http://www.goodtoknow.co.uk/recipes/ 170854/Chocolate-snowman-truffles (last accessed September 26, 2017). 4 Snowman Truffles, http://momsneedtoknow.com/snowman-truffles- christmas-cookie-idea/ (last accessed August 13, 2018). 5 Oreo Truffle Snowmen, http://willowbirdbaking.com/2009/12/21/oreo- truffle-snowmen/ (last accessed August 13, 2018). 6 Chocolate Cups, https://www.howtocookthat.net/public_html/chocolate- cup-recipe/ (last accessed February 22, 2018). 7 Vangie Bage-Reyes, 20 Best Desserts for 2011, http://lifestyle.inquirer.net/ 19731/20-best-desserts-for-2011/ (last accessed February 21, 2018). 8 Homemade Chocolates, http://www.instructables.com/id/Chocolates-for- Men/ (last accessed August 26, 2017). 9 Office Action mailed January 15, 2019. Appeal 2020-001045 Application 15/050,079 4 bonding agents are configured to be dissolved or melted into heated liquid.” Id. at 3. The Examiner finds, however, that these limitations are taught by the other cited references. Specifically, the Examiner finds that “‘Homemade Chocolates’ teaches to make chocolate having different shapes and different fillings inside the chocolate. The different fillings include marshmallows.” Id. The Examiner also finds: The article on 20 Best Desserts for 2011 shows a sphere of chocolate attaching on a chocolate base. The recipe [sic, Chocolate Snowman Truffle recipe?] teaches to make chocolate snowman by joining separate portions of chocolate balls. The recipe for “Snowman Truffles”, teaches to place a small amount of white chocolate on top of the truffle to attach a hat to the snowman ball. The recipe for “Oreo Truffle Snowmen” teaches to glue the snowman head and body using melted candy coating. Id. at 3–4. The Examiner concludes that it would have been obvious to fill [Fischbach’s] capsule with any flavoring ingredients including material that does not dissolve such as marshmallows as an obvious matter of taste preference. It is notorious[ly] well known in the art and exemplified by the recipe that chocolate can contain many different types of filling. It would have been obvious to add marshmallows when such flavoring is wanted. One would have been motivated to add marshmallows because they are routinely consumed in hot chocolate. Id. at 4. The Examiner also concludes that “Fishchbach [sic] discloses the capsules can be made in a variety of shapes including sphere” and it would have been obvious “to make the capsules as multiple spheres and attach two Appeal 2020-001045 Application 15/050,079 5 or more together to obtain a snowman shape as taught by the recipes when desiring to make different configuration of the product” and “to form different character shapes to appeal to the young consumers.” Id. Finally, the Examiner concludes that it would have been obvious to use melted chocolate or melted candy coating to join different shells together “to give a stable figure so that the shells will not fall off,” to make a “base out of chocolate so that it will be consumed together with the capsule,” and “to attach the snowman shape to chocolate base[] such as shown in the recipe and the article when desiring to make the product in different configuration that is totally edible” and “so that the shape is stable on the base.” Id. at 4–5. Appellant argues that “the Examiner is clearly using the Appellant’s claims as a roadmap to simply pick and choose elements from th[e] seven references” relied on. Appeal Br. 10. More specifically, Appellant argues that “Fischbach does not disclose or suggest using two different capsules that contain different ingredients in order to make a beverage” and “does not disclose or suggest a first ingredient that dissolves to form a heated beverage and a second ingredient that does not dissolve.” Id. at 11–12. Appellant argues that the remaining references—Chocolate Snowman Truffles, Snowman Truffles, Oreo Truffle Snowmen, Chocolate Cup, 2011 Best Desserts, and Homemade Chocolates—all disclose products that are meant to be eaten directly, not dissolved in a hot liquid to make a hot beverage. Id. at 12–14. Appellant also argues that none of the references disclose “a first shell that contains a first ingredient that dissolves to form a heated beverage and a Appeal 2020-001045 Application 15/050,079 6 second shell that contains a second ingredient that does not dissolve.” Id. Appellant concludes: Thus, all seven cited references, individually and in combination, fail to disclose or suggest a food product including first and second shells that are attached and that are to be dissolved in a heated liquid, where the first shell contains a first ingredient that dissolves to form a heated beverage and the second shell contains a second ingredient that does not dissolve. Moreover, there is no reason to combine Fischbach with the other six references because the other six references disclose food products meant to be consumed in solid form. Id. at 14. We agree with Appellant that the Examiner has not persuasively shown that the cited references would have made obvious a food product meeting all of the limitations of instant claim 1. As noted above, Fischbach discloses a beverage base encapsulated in a thin-walled confectionary or chocolate envelope. Fischbach does not, however, disclose combining beverage capsules that contain different ingredients, nor does it disclose including in its beverage capsule an ingredient that does not dissolve. The Examiner cites the remaining references to make up for that deficiency. More specifically, the Examiner finds that Homemade Chocolates teaches making chocolates having different fillings, including marshmallows. Final Action 3. The Examiner reasons that it would have been obvious “to fill [Fischbach’s] capsule with any flavoring ingredients including material that does not dissolve such as marshmallows as an obvious matter of taste preference. . . . It would have been obvious to add marshmallows when such flavoring is wanted. One would have been Appeal 2020-001045 Application 15/050,079 7 motivated to add marshmallows because they are routinely consumed in hot chocolate.” Id. at 4. The record copy of Homemade Chocolates states that “[n]ow that you know how to add flavors to both the cream and ganache chocolate fillings, the possibilities are endless! You can have fun experimenting with flavors such as beer, rum, chips, peanuts, caramels, other candies and alcohols.” Homemade Chocolates, second page. The accompanying picture might show mini-marshmallows, even though marshmallows are not included in the suggested flavors, but in any case, the product described by Homemade Chocolates appears to be limited to candies intended for direct consumption, not for dissolving in a hot liquid in order to make a hot beverage. See id., first page (showing pictures that appear to be candies in pleated paper cups). In view of Fischbach’s failure to suggest combining beverage capsules containing different ingredients for use in making a hot beverage, and its failure to suggest including in its beverage capsules any ingredient that does not dissolve, the Examiner has not provided a persuasive rationale for modifying Fischbach as required by the claims on appeal, based solely on the disclosure in Homemade Chocolates of making chocolate candies that can include non-dissolving ingredients such as peanuts or marshmallows. The Examiner appears to rely on Chocolate Cup and 20 Best Desserts for 2011 for disclosure of a chocolate product (cup or sphere, respectively) attached to a base. Final Action 3. The Examiner appears to rely on Chocolate Snowman Truffles, Snowman Truffles, and Oreo Truffle Snowmen for disclosure of products made by joining together separate parts using white chocolate or melted candy coating. Id. at 3–4. The Examiner Appeal 2020-001045 Application 15/050,079 8 does not, however, point to any disclosure in any of these references of a shell that dissolves in a hot liquid and contains an ingredient that does not dissolve. The Examiner cites In re Levin, 178 F.2d 945 (CCPA 1949), for the proposition that “new recipes or formulas for cooking food which involve the addition or elimination of common ingredients, or for treating them in ways which differ from the former practice, do not amount to invention.” Final Action 5. However, as Appellant has pointed out, “In re Levin deals with the general unpatentability of food recipes, which the Appellant is not claiming in Claim 1. Rather, Claim 1 is clearly directed to a specific structure that includes various elements arranged and connected as recited in Claim 1.” Appeal Br. 11. The invention claimed in In re Levin involved a “butter substitute food product.” In re Levin, 178 F.2d at 946. The patentability of the instant claims, by contrast, does not turn on whether the composition of its components is new and nonobvious, but on whether those components are combined in a manner that would have been obvious based on the prior art. Thus, In re Levin does not support the Examiner’s rejection, and for the reasons discussed above, we conclude that the Examiner has not set out a prima facie case that the invention defined by the claims on appeal would have been obvious based on the cited references. We therefore reverse the rejection of claims 1–7, 9–16, and 18–23 under 35 U.S.C. § 103 based on the cited references. Appeal 2020-001045 Application 15/050,079 9 DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–7, 9–16, 18–23 103 Fischbach, Chocolate Snowman Truffle, Snowman Truffles, Oreo Truffle Snowmen, Chocolate Cup, 20 Best Desserts for 2011, Homemade Chocolates 1–7, 9–16, 18–23 REVERSED Copy with citationCopy as parenthetical citation