Ex Parte Chatel et al

Patent Trial and Appeal Board

Sep 29, 2014

11853876 (P.T.A.B. Sep. 29, 2014)

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