Ex Parte Baker et al

Patent Trial and Appeal BoardNov 28, 2012

11669736 (P.T.A.B. Nov. 28, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 11/669,736 01/31/2007 Rosemary Shine Baker CFLAY.00410 5892 22858 7590 11/29/2012 CARSTENS & CAHOON, LLP P.O. Box 802334 DALLAS, TX 75380-2334 EXAMINER DEGUIRE, KATHERINE E ART UNIT PAPER NUMBER 1791 MAIL DATE DELIVERY MODE 11/29/2012 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte ROSEMARY SHINE BAKER, THOMAS GEORGE CROSBY, HENRY KIN-HANG LEUNG, BRIDGET MANIS, CARLA MEJIA, KELLY SAM MILLER, NANCY J. MORIARITY, JASON THOMAS NIERMANN, JIM STALDER, and BEVERLY L. WATERS ____________ Appeal 2011-009791 Application 11/669,736 Technology Center 1700 ____________ Before BRADLEY R. GARRIS, MICHAEL P. COLAIANNI, and JAMES C. HOUSEL, Administrative Patent Judges. GARRIS, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. Â§ 134 from the Examiner's decision rejecting claims 1-22. We have jurisdiction under 35 U.S.C. Â§ 6. Appeal 2011-009791 Application 11/669,736 2 We AFFIRM. Appellants claim a vegetable chip comprising at least 14% by weight vegetable solids having an Overall Acceptability Score of at least 6.5 (claim 1) and a Flavor Acceptability Score of at least 6.5 (claim 2) as well as a fruit chip comprising at least 20% by weight fruit solids having the previously mentioned Overall Acceptability Score (claim 9) and Flavor Acceptability Score (claim 10). Representative independent claims 1 and 9, which are the only independent claims on appeal, and dependent claims 2 and 10 read as follows: 1. A vegetable chip comprising: about 10% to about 16% by weight modified starch dry matter; about 20% to about 30% by weight rice flour dry matter; about 5% to about 15% by weight whole oat flour dry matter; about 20% to about 30% by weight potato flakes dry matter; at least 14% by weight vegetable solids; less than about 3% by weight corn oil; less than about 4% by weight water; and an Overall Acceptability Score of at least 6.5. 2. The vegetable chip of claim 1 further comprising a Flavor Acceptability Score of at least 6.5. 9. A fruit chip comprising: about 10% to about 16% by weight modified starch dry matter; about 15% to about 25% by weight rice flour dry matter; about 5% to about 15% by weight whole oat flour dry matter; about 15% to about 25% by weight potato flakes dry matter; at least 20% by weight fruit solids; less than about 3% by weight corn oil; less than about 4% by weight water; and an Overall Acceptability Score of at least 6.5. Appeal 2011-009791 Application 11/669,736 3 10. The fruit chip of claim 9 further comprising a Flavor Acceptability Score of at least 6.5. The Examiner rejects all appealed claims under 35 U.S.C. Â§ 112, 2nd paragraph, as failing to particularly point out and distinctly claim the subject matter which Appellants regard as the invention. The Examiner also rejects all appealed claims under 35 U.S.C. Â§ 103(a) as unpatentable over Karwowski (US 2006/0246202 A1, published Nov. 2, 2006) in view of Villagran (US 2006/0286271 A1, published Dec. 21, 2006). The Â§ 112, 2nd paragraph, Rejection The Examiner considers the appealed claims to be rendered indefinite by the independent claim phrase "Overall Acceptability Score" (claims 1 and 9) as well as by the dependent claim phrase "Flavor Acceptability Score" (claims 2 and 10) because these scores are based on subjective consumer preferences which vary from one person to another such that different consumers might give the same chip different scores with some inside and others outside the claim scope (Ans. 3-4, 10-14). Appellants point out that the Score limitations of the claims are defined in their Specification as the average rating given by at least 60 consumers after eating at least 3 of the claimed chips (App. Br. 4-6). Appellants argue that these limitations satisfy the 2nd paragraph of Â§ 112 because they can be calculated or measured in accordance with the Specification definitions (id. at 6-8). In support of this argument, Appellants rely on Marley Mouldings Ltd. v. Mikron Industries, Inc., 417 F.3d 1356 (Fed. Cir. 2005). Appeal 2011-009791 Application 11/669,736 4 Appellants' argument is unpersuasive. As correctly indicated by the Examiner, the Marley decision is inapposite because the volume limitation thereof involved an objective determination of values which could be calculated or measured by those with ordinary skill in the art (Ans. 12-13). See Marley at 1360. In contrast, the Score limitations of the appealed claims are based entirely on subjective determinations of consumers as explained by the Examiner (Ans. 12) and not disputed by Appellants. "The scope of claim language cannot depend solely on the unrestrained, subjective opinion of a particular individual purportedly practicing the invention." Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1350-51 (Fed. Cir. 2005). "Some objective standard must be provided in order to allow the public to determine the scope of the claimed invention." Id. "A purely subjective construction of 'aesthetically pleasing' would not notify the public of the patentee's right to exclude since the meaning of the claim language would depend on the unpredictable vagaries of any one person's opinion of the aesthetics of interface screens." Id. "While beauty is in the eye of the beholder, a claim term, to be definite, requires an objective anchor." Id. Appellants have failed to establish that the claim terms "Overall Acceptability Score" and "Flavor Acceptability Score" have an objective anchor. Based on the record before us, the constructions of these claim terms are entirely subjective and depend on the unpredictable vagaries of consumers' opinions regarding the overall and flavor acceptability of the consumed chips. The same chips might receive scores inside the claimed range by one consumer group but outside the claimed range by another Appeal 2011-009791 Application 11/669,736 5 consumer group. Under such circumstances, the public would have no way to determine the scope of Appellants' claimed invention. For these reasons, the claim terms are indefinite and render the appealed claims in violation of the 2nd paragraph of Â§ 112. In addition, Appellants refer to the claim language of several recently issued U.S. patents as "evidence that Applicants['] claims lie well inside the recognized boundaries for definiteness under Section 112" (App. Br. para. bridging 8-9). We agree with the Examiner that the referenced patent claims do not evince that the appealed claims comply with the 2nd paragraph (Ans. para. bridging 14-15). Regardless whether these patent claims are based on an objective anchor and therefore definite, Appellants' claims have no such objective anchor and therefore are indefinite for the reasons explained above. The Â§ 112, 2nd paragraph, rejection of claims 1-22 is sustained. The Â§ 103 Rejection1 Appellants do not present separate arguments concerning dependent claims 2-8 and 10-22 (App. Br. 13). Therefore, these dependent claims will stand or fall with their parent independent claims 1 and 9. The Examiner finds that Karwowski discloses chips having a weight ratio of whole grain to fruit or vegetable of about 20:80 to about 95:05 1 The Examiner assumes that chips resulting from the proposed combination of Karwowski and Villagran would necessarily possess Appellants' claimed acceptability scores because these chips would be compositionally identical to the claimed chips (Ans. 8). Appellants do not contest the Examiner's assumption in the record of this appeal. Appeal 2011-009791 Application 11/669,736 6 which yields a fruit/vegetable range of 5 to 80% by weight, thereby suggesting Appellants' claimed ranges of at least 14% by weight vegetable solids (claim 1) and at least 20% by weight fruit solids (claim 9) (Ans. para. bridging 6-7; Karwowski para. [0033]). In response, Appellants point out that Karwowski teaches the above ratio may vary depending on the relative moisture and solids contents of the two ingredients and teaches moisture introduced via the fruit or vegetable helps to gelatinize starches present in the whole grain (App. Br. para. bridging 10-11). Appellants argue that, as a result of these teachings, one skilled in the art would read Karwowski as indicating that a relatively dry fruit/vegetable component having a high solids content (such as a fruit or vegetable powder) would be included at something closer to the 5% fruit/vegetable to 95% whole grain ratio . . . whereas a relatively moist fruit/vegetable component with low solids content (such as a juice) would be included at something closer to the 80% fruit/vegetable to 20% whole grain ratio (id.). Appellants' argument is unpersuasive. As the Examiner correctly observes, Karwowski contains no express disclosure that the amount of dry fruit or vegetable should be closer to 5% as urged by Appellants, and Appellants offer no direct evidence that one skilled in this art would so interpret Karwowski (Ans. para. bridging 16-17). Moreover, we agree with the Examiner that Appellants fail to explain why Karwowski, even if so interpreted, would not have suggested their claimed 14% vegetable and 20% fruit concentrations since these concentrations are at the lower end of Karwowski's 5 to 80% range (id. at 17). Appeal 2011-009791 Application 11/669,736 7 The Examiner concludes that, in view of Villagran, it would have been obvious to provide Karwowski's potato ingredient in the form of potato flakes (id. at 7) and to provide Karwowski's starch ingredient in the form of modified starch (id. at 8). Appellants argue that Karwowski teaches away from using potato flakes or modified starch because such ingredients would alter the chip texture desired by Karwowski (App. Br. 13). We again agree with the Examiner that Karwowski does not discourage, and therefore does not teach away from, using potato flakes or modified starch (Ans. 19). To the contrary, Karwowski's disclosure of using potato and starch ingredients generically would have suggested using such ingredients in their known forms such as potato flakes and modified starch. Further, Appellants have not provided the record with any evidence that potato flakes or modified starch would alter the chip texture desired by Karwowski. For the above reasons, we sustain the Â§ 103 rejection of claims 1-22 as unpatentable over Karwowski in view of Villagran. Conclusion The decision of the Examiner is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a). AFFIRMED kmm