CHOCOLATE HOUSE INCUBATOR RETAIL, LLC

Patent Trials and Appeals Board

Nov 24, 2020

2020001045 (P.T.A.B. Nov. 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.
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.
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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.
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Application 15/050,079

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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
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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
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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
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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
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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

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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