Ex Parte Coleman et al

Patent Trial and Appeal BoardJan 31, 2013

11250425 (P.T.A.B. Jan. 31, 2013)

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. 11/250,425 10/17/2005 Edward C. Coleman 9610-77326-US 5168 109813 7590 01/31/2013 Fitch, Even, Tabin & Flannery, LLP Mondelez International, Inc. 120 South LaSalle Street Suite 1600 Chicago, IL 60603-3406 EXAMINER BEKKER, KELLY JO ART UNIT PAPER NUMBER 1791 MAIL DATE DELIVERY MODE 01/31/2013 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 EDWARD C. COLEMAN, ABIGAIL SCHMID and MICHAEL MIKLUS ____________ Appeal 2011-010206 Application 11/250,425 Technology Center 1700 ____________ Before RICHARD E. SCHAFER, JEFFREY T. SMITH, and JAMES C. HOUSEL, Administrative Patent Judges. SMITH, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-010206 Application 11/250,425 2 STATEMENT OF THE CASE This is an appeal under 35 U.S.C. § 134 from the final rejection of claims 1 through 6, 8 through 25 and 27 through 30. We have jurisdiction under 35 U.S.C. § 6. Appellants’ claimed invention relates to a food bar. App. Br. 4. Claim 1 is illustrative: 1. A food bar having less than 110 Cal/28g serving, comprising: a core layer comprising, as a unitary matrix, protein crisps, caramel, water-soluble dietary fibers, binder material, and a compound coating; a caramel layer separate from the core layer and comprising water-soluble dietary fibers; the compound coating separately applied to surface portions of the core layer and the separate caramel layer; and wherein the compound coating comprises water-soluble dietary fibers. Appeal 2011-010206 Application 11/250,425 3 The Examiner relied on the following references in rejecting the appealed subject matter: Becker US 4,673,578 June 16, 1987 Dubberke US 6,399,133 B2 June 4, 2002 Mody US 2002/0168448 A1 Nov. 14, 2002 Manning US 2002/0192265 A1 Dec. 19, 2002 Scott De Martinville US 2003/0008039 A1 Jan. 9, 2003 Rapp US 6,562,392 B1 May 13, 2003 Froseth US 6,592,915 B1 July 15, 2003 Engleson US 2005/0208180 A1 Sept. 22, 2005 Gloria Tsang, Fiber 101: Soluble Fiber vs Insoluble Fiber, October 10, 2004 (date obtained from http://web.archive.org), http://www.healthcastle.com. Appellants request review of the following rejection (App. Br. 9) from the Examiner’s final office action: 1. Claims 1-6, 8-25, and 27-30 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Manning, Froseth, Mody, Rapp, Dubberke and Tsang. OPINION The dispositive issue for this appeal is: Did the Examiner err in determining that the combination of Manning, Froseth, Mody, Rapp, Dubberke and Tsang would have led one skilled in the art to a food bar having water-soluble dietary fiber distributed across the components of the food bar as required by the subject matter of independent claims 1, 24, 25 and 27?1 1 We will limit our discussion to independent claim 1. Appeal 2011-010206 Application 11/250,425 4 After thorough review of the respective positions provided by Appellants and the Examiner, we REVERSE for the reasons presented by the Appellants and add the following. During examination, the Examiner bears the initial burden of establishing a prima facie case of obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). “[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.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). The Examiner found that Manning discloses a basic food bar comprising a core layer having water-soluble dietary fibers, a caramel top layer and a compound coating. Ans. 4-6. The Examiner also found that Manning does not disclose the protein crisps, the caramel component in the core layer, the caramel layer as having water-soluble dietary fibers and the compound coating comprising water-soluble dietary fibers as required by the subject matter of independent claim 1. Id. at 6-7. To reach the subject matter of independent claim 1, the Examiner relied on the teachings of Froseth, Mody and Rapp.2 Id. at 7-8. The Examiner concluded that it would have been obvious to one skilled in the art to distribute the water-soluble dietary fibers across multiple components of a food bar to minimize the off taste caused by the fibers. Id. at 12-14. 2 We note that the Examiner did not rely on the references to Dubberke and Tsang to reach the subject matter of independent claim 1. A discussion of these references is unnecessary for disposition of the present appeal. The Examiner relied upon these references for features of other claims not related to the dispositive issue. Appeal 2011-010206 Application 11/250,425 5 Appellants argue, and we agree, that the Examiner has not adequately explained why one skilled in the art would modify the food bar of Manning to incorporate water-soluble dietary fibers in each of the components of the food bar. App. Br. 12-14. The Examiner has not adequately explained why the redistribution of water-soluble dietary fibers would lead to any organoleptic property that would offset the fibers’ off taste because, as argued by Appellants, the off flavors would still exist whether or not the fibers are in one layer or in multiple layers. Id. at 13. Thus, the Examiner’s proposed modification does not solve the problem of the fibers’ off taste. Here, the Examiner’s proposed modification appears premised on using Appellants’ claimed invention as a road map rather than an articulated reasoning based on teachings derived from the applied references’ disclosures. 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 Int’l Co. v. Teleflex Inc., 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”)); see In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) (citing In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984) (“The mere fact that the prior art may be modified in the manner suggested by the Examiner does not make the modification obvious unless the prior art suggested the desirability of the modification.”). Under these circumstances, we cannot conclude that the Examiner has met the minimum threshold of establishing a prima facie case of obviousness under 35 U.S.C. § 103(a). Accordingly, we reverse the prior art rejection of claims 1-6, 8-25, and 27-30. Appeal 2011-010206 Application 11/250,425 6 ORDER The rejection of claims 1-6, 8-25, and 27-30 under 35 U.S.C. § 103(a) as unpatentable over Manning, Froseth, Mody, Rapp, Dubberke and Tsang is reversed. REVERSED bar