Ex Parte Chatel et alDownload PDFPatent Trial and Appeal BoardSep 29, 201411853876 (P.T.A.B. Sep. 29, 2014) 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. 11/853,876 09/12/2007 Robert Chatel CQKER.2656 3852 110933 7590 09/29/2014 Carstens & Cahoon, LLP PO Box 802334 Dallas, TX 75380 EXAMINER YOO, HONG THI ART UNIT PAPER NUMBER 1793 MAIL DATE DELIVERY MODE 09/29/2014 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 ROBERT CHATEL, YONGSOO CHUNG, ANN MARIE BAKER, THOMAS S. WOLTERS, TIMOTHY A. BELL, and STEVEN W. COUCH ____________ Appeal 2012–012413 Application 11/853,876 Technology Center 1700 ____________ Before CHARLES F. WARREN, CATHERINE Q. TIMM, and GEORGE C. BEST, Administrative Patent Judges. BEST, Administrative Patent Judge. DECISION ON APPEAL On October 20, 2011, the Examiner finally rejected claims 1, 2, 5–17, and 33 of Application 11/853,876 under 35 U.S.C. § 103(a) as obvious. Appellants1 seek reversal of these rejections pursuant to 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6(b). For the reasons set forth below, we AFFIRM. 1 Pepsico Inc. and E.I. Du Pont De Nemours & Co. are identified as the real parties in interest. (App. Br. 3.) Appeal 2012–012413 Application 11/853,876 2 BACKGROUND The ’876 Application describes methods for making a flavored and/or fortified grain-based product such as oatmeal. Spec. ¶¶ 1–3. In particular, the Application describes methods for making the flavoring or other additives into granules that can be mixed with the oats. Id. Claim 15 is representative of the ’876 Application’s claims and is reproduced below: 15. A method of making a flavored or fortified grain-based product comprising a mixture of a premix of ingredients and oats in instant, non-instant, or semi-instant form, comprising: processing a premix of ingredients wherein at least one of the ingredients is effective as a binder, comprising the steps of: 1) compacting the premix, 2) granulating the premix to form granules, and 3) screening the granules to obtain granules having a particle size distribution of from 400 to 2,000 microns, filling the granules into containers; and separately adding the oats to the containers before, during, or after filling the granules into containers to form the mixture of granules and oats. (Response to Non-Compliant Brief iv (May 14, 2012) (containing corrected Claims App’x).) Appeal 2012–012413 Application 11/853,876 3 REJECTION Claims 1, 2, 5–17, and 33 are rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Rogers,2 Karwowski,3 Clark,4 and Applicants Admitted Prior Art. Final Rejection (FR) 3. DISCUSSION Appellants argue for reversal of the Examiner’s rejection without referring to the specific language of any particular claim. Accordingly, we also shall treat the claims as a single group. We select claim 15, reproduced above, as representative. 37 C.F.R. § 41.37(c)(1)(iv) (2012) (effective Jan. 23, 2012). Appellants argue that the rejection should be reversed because the Examiner has not provided an adequate reason to combine the references and, even if the combination of references is proper, that the combined references do not describe or suggest the claimed process. (App. Br. 11–15.) We address these arguments in turn. First, Appellants’ argument that the Examiner has not provided an adequate reason to combine Rogers, Karwowski, and Clark is not persuasive. The Examiner found that Rogers and Karwowski both describe the methods for making flavored oatmeal cereals. FR 3–4, 5. Karwowski describes the use of a granulated premixture of flavoring agents in a packaged cereal mixture. Id. at 4. Karwowski teaches that the use of the granulated flavoring agents reduces the amount of fine particulate matter 2 US Patent No. 5,505,974, issued April 9, 1996. 3 US Patent No. 4,585,657, issued April 29, 1986. 4 US Patent No. 6,168,811 B1, issued January 2, 2001. Appeal 2012–012413 Application 11/853,876 4 present in the final product. Col. 5, ll. 5–11. An excessive amount of fines results in a product that has poor consumer acceptance. Id. The Examiner also found that Karwowski and Clark both describe methods for making granules comprising a mixture of flavoring or fortifying agents for use in cereal products. Id. at 5. Appellants argue that these findings are insufficient and that the combination of references is improper because “[n]one of Rogers, Karwowski, or Clark recognizes the problems the claimed invention is solving or the benefits of the claimed invention.” (App. Br. 14.) While this may be true, it does not necessarily evince a reversible error in the Examiner’s rejection. The reason identified by the Examiner to combine references need not address the problem or problems identified by Appellants. Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1323 (Fed. Cir. 2005) (“One of ordinary skill in the art need not see the identical problem addressed in a prior art reference to be motivated to apply its teachings.”); see also In re Oetiker, 977 F.2d 1443, 1448 (Fed. Cir. 1992) (Nies, C.J., concurring). The Examiner has advanced a rationale for combining the teachings of the references (Ans. 4–5) that Appellants have not persuasively shown to be inadequate. On this record, Appellants have not demonstrated reversible error in the Examiner’s findings with respect to the reasons a person of ordinary skill in the art would have had to combine the cited references. Second, we also are not persuaded that the Examiner reversibly erred in concluding that the differences between the claimed process as a whole and the process described or suggested by the combination of Rogers, Appeal 2012–012413 Application 11/853,876 5 Karwowski, and Clark would have been obvious to a person of ordinary skill in the art at the time of the invention. Appellants argue that the cited references “are all missing the process steps of first compacting and then granulating as recited in the instant claims.” (App. Br. 15.) Although it is true that none of the references use the claimed steps in the particular embodiments they describe, this is not sufficient to establish patentability in the present case. Karwowski describes the use of a granulated premix of flavoring agents in a cooked grain cereal such as oatmeal. See, e.g,, Abstract, col. 1, ll. 16–21. Karwowski, however, does not use the claimed steps to produce the flavor granules. Col. 4, ll. 1–65 (describing manufacture of granules by an agglomeration process). Clark, like Karwowski, describes the manufacture of flavor granules by an agglomeration process. Clark, col. 3, ll. 30–35. This, however, is Clark’s preferred embodiment. Id. Clark expressly states that many different methods can be used to produce flavor granules: The agglomerated granules of the present invention can be prepared using any agglomeration or granulation process known in the art, such as, for example, using pan pelletizing, pellet milling, compacting, extruding, drum dry/flake, drum/tumble mixer, a high speed mixer, or a mixer/granulator. Col. 3, ll. 29-29. In the absence of evidence that Appellants’ claimed process results in granules with unexpected properties, the claims are directed to a unpatentable combination of known steps that work in the expected manner to yield the expected results. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (“The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable Appeal 2012–012413 Application 11/853,876 6 results.”). Appellants’ Briefs do not rely upon any evidence of unexpected results. We, therefore, are not persuaded that the Examiner reversibly erred in rejecting claims 1, 2, 5–17, and 33 as obvious. CONCLUSION For the foregoing reasons, we affirm the Examiner’s rejection of claims 1, 2, 5–17, and 33 of the ’876 Application as obvious over the combination of Rogers, Karwowski, and Clark. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED lp Copy with citationCopy as parenthetical citation