Daniel R. Green et al.

Patent Trials and Appeals Board

Sep 18, 2019

14538303 - (D) (P.T.A.B. Sep. 18, 2019)

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.
14/538,303 11/11/2014 Daniel R. Green 7904US01 1986
30173 7590 09/18/2019
Diederiks & Whitelaw, PLC
13885 Hedgewood Dr., Suite 317
Woodbridge, VA 22193-7932
EXAMINER
COX, STEPHANIE A
ART UNIT PAPER NUMBER
1791
NOTIFICATION DATE DELIVERY MODE
09/18/2019 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 DANIEL R. GREEN, JEKATERINA SEVEROVA-
EPP, and THOMAS M. JARL
________________

Appeal 2018-008682
Application 14/538,303
Technology Center 1700
________________

Before CATHERINE Q. TIMM, JEFFREY T. SMITH, and
KAREN M. HASTINGS, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL

Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejections of claims 1–7 under 35 U.S.C. § 103(a) as being unpatentable
based on at least the combined prior art of Haag (US 4,075,356, issued Feb.
21, 1978), Decelles (US 3,868,471, issued Feb. 25, 1975), Fast (US

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant indicates the real party-in-interest is General
Mills Inc. App. Br. 4.

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Application 14/538,303

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3,318,706, issued May 9, 1967), and Richey (US 2005/0064087 A1,
published Mar. 24, 2005).2 We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
Claim 1 is illustrative of the claimed subject matter:
1. A method of making a food composition, comprising:
a. providing a stream of uncoated food pieces;
b. directing the stream through an enrober to apply a first
coating to at least a portion of a surface of each food piece to
form a coated stream;
c. drying the coated stream to produce a stream of dried
coated food pieces;
d. splitting the stream of dried coated food pieces into at
least two stream portions using a splitting apparatus,
e. selecting a stream portion representing from about
20% to about 65% of the stream of dried coated pieces; and
f. continuously redirecting the selected stream portion
using a pneumatic conveyor, a belt conveyor, a chain conveyor,
a screw conveyor, a vibrating conveyor, a roller conveyor, or a
combination thereof back through the enrober along with the
stream of uncoated food pieces to apply at least one additional
coating to the portion of the coated stream to produce a food
composition comprising a plurality of food pieces, wherein
food pieces having 1 coating layer represent about 35% to about
80% of the plurality of food pieces, food pieces having 2
coating layers represent about 16% to about 23% of the
plurality of food pieces, and food pieces having at least 3
coating layers represent about 4% to about 42% of the plurality
of food pieces.

2 The rejection of claims 5, 6, and 7 include additional prior art of Green (US
2005/0266142 A1, published Dec. 1, 2005) for claim 5 and Furda (US
4,379,171, issued Apr. 5, 1983) for claims 6 and 7 (Final Action 6, 7). A
discussion of these references is not necessary for disposition of this appeal.
Appeal 2018-008682
Application 14/538,303

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ANALYSIS
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
unpatentability.”). “[R]ejections on obviousness grounds cannot be
sustained by mere conclusory statements; instead, there must be some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)
(quoted with approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418
(2007)).
After review of the respective positions provided by Appellant and the
Examiner, we agree with Appellant that the Examiner has not met the
applicable burden in this case. A preponderance of the evidence supports
Appellant’s assertions that the Examiner’s rejection is based on improper
hindsight in proposing to modify Hang to have the configuration of elements
necessary to perform the steps the steps of drying, splitting the dried stream
into at least two stream portions, and continuously redirecting on a conveyor
a selected one of the split streams as required by claim 1.
Appellant’s arguments focus on the lack of a reason to modify Haag’s
process and structure so as to result in the claimed steps (e.g., Appeal Br. 9–
17; Reply Br. 2–4). Notably, Haag teaches that it is only “by reason of a
random displacement” that some material may be reintroduced to the first
zone of Haag’s rotating drum and thus be recoated with, e.g., a fat coating,
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Application 14/538,303

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before being advanced to the second zone of Haag’s rotating drum, which
may apply, e.g., a syrup (Haag col. 4, l. 66–col. 5, l. 8 and col. 5, ll. 55–65).
Accordingly, a preponderance of the evidence supports Appellant’s
position that the Examiner is using impermissible hindsight to reconstruct
Haag with Decelles, Fast, and Richey. The Examiner has not adequately
explained why the skilled artisan’s knowledge or inferences and creativity
would have supported the obviousness determination based on the teachings
of the applied references without an improper hindsight reconstruction. The
fact finder must be aware “of the distortion caused by hindsight bias and
must be cautious of arguments reliant upon ex post reasoning.” KSR, 550
U.S. at 421 (citing Graham v. John Deere Co., 383 U.S. 1, 36 (1966)
(warning against a “temptation to read into the prior art the teachings of the
invention in issue”)).
The Examiner does not establish that the references as applied in the
§ 103 rejections of dependent claims 5, 6, and 7 cure these deficiencies
and/or otherwise provides another rationale that cures these deficiencies.
Accordingly, we reverse the § 103 rejections on appeal.
DECISION
We reverse the Examiner’s decision .
Appeal 2018-008682
Application 14/538,303

5
Claims
Rejected Basis Affirmed Reversed
1–4 § 103 Haag, Decelles, Fast, and Richey 1–4
5 § 103 Haag, Decelles, Fast, Richey, and Green
5
6, 7 § 103 Haag, Decelles, Fast, Richey, and Furda
6, 7
Overall
Outcome
1–7

REVERSED