Ex Parte Gan et al

Patent Trial and Appeal BoardMar 22, 2016

11531601 (P.T.A.B. Mar. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 111531,601 09/13/2006 48940 7590 03/22/2016 FITCH EVEN TABIN & FLANNERY, LLP 120 SOUTH LASALLE STREET SUITE 1600 CHICAGO, IL 60603-3406 FIRST NAMED INVENTOR Renee Gan 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 1410-77511-US 1474 EXAMINER KING, FELICIA C ART UNIT PAPER NUMBER 1793 MAILDATE DELIVERY MODE 03/22/2016 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 RENEE GAN and KEITH DANIEL FORNECK Appeal2014-008021 Application 11/531,601 Technology Center 1700 Before JEFFREY T. SMITH, BEYERL YA. FRANKLIN, and CHRISTOPHER C. KENNEDY, Administrative Patent Judges. FRANKLIN, Administrative Patent Judge. DECISION ON APPEAL Appellants seek our review under 35 U.S.C. Â§ 134 of the Examiner's decision rejecting claims 1-12 and 17-20. We have jurisdiction over the appeal under 35 U.S.C. Â§ 6(b). Appeal2014-008021 Application 11/531,601 STATEMENT OF THE CASE Claim 1 is illustrative of Appellants' subject matter on appeal and is set forth below (with text in bold for emphasis): 1. A fully assembled frozen food product comprising a fully baked or par-baked farinaceous portion having a top bread portion and a bottom bread portion and having a filling therebetween, the filling co-extensive with the top bread and bottom bread portions, the farinaceous portion having been fully baked or par-baked in a conventional oven, wherein the fully baked or par-baked farinaceous portion has a water activity of about 0.9 to about 0.96 and is at least about ~inch thick, wherein the fully baked or par-baked farinaceous portion is prepared from a dough composition comprising, in baker's percentages, 100 percent wheat flour, about 0.1 to about 1 percent xanthan gum, about 0.2 to about 1.5 percent guar gum, and about 0.2 to about 1.5 percent methylcellulose, wherein the fully assembled frozen food product has a weight of at least about 6.5 ounces, wherein the fully assembled frozen food product has a frozen shelf life of at least about 120 days when sealed in a package, wherein the fully assembled frozen food product is effective for providing a heated food product which has an essentially uniform temperature after microwave heating and after microwave heating the top and bottom bread portions of the heated food product being softer than bread portions of an otherwise identical food product which does not include guar gum, xanthan gum and methyl cellulose. The Examiner relies on the following prior art references as evidence of unpatentability: Carmichael et al. US 2007/0241102 Al Oct.18,2007 (hereafter "Carmichael") Howard et al. US 2005/0226962 Al Oct. 13, 2005 (hereafter "Howard") 2 Appeal2014-008021 Application 11/531,601 Sadeket al. (hereafter "Sadek") Lamp Vincente Ohmura et al. (hereafter "Ohmura") Cochran Beheer US 2004/0213883 Al Oct. 28, 2004 US 2002/0146490 Al Oct. 10, 2002 US 2001/0006691 Al Jul. 5, 2001 us 5,876,858 Dec. 8, 1998 us 4,885,180 Dec. 5, 1989 EP 1 433 383 Al Jun.30,2004 Lund et al., "The Microbiological Safety and Quality of Food 2000" MICROBIAL ECOLOGY OF DIFFERENT TYPES OF FOOD (hereafter "Lund"). THE REJECTIONS 1. Claims 1and2 rejected under 35 U.S.C. Â§103(a) as being patentable over Cochran in view of Howard, Ohmura, and Beheer, and as evidenced by Lund. 2. Claims 3-6 are rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Cochran in view of Howard, Ohmura, and Beheer, and as evidenced by Lund, and in further view of Lamp and Sadek. 3. Claims 7 and 10 are rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Cochran in view of Carmichael, and Howard, Ohmura, and Beheer, and as evidenced by Lund. 3 Appeal2014-008021 Application 11/531,601 4. Claims 8, 9, 11 and 12 are rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Cochran in view of Carmichael, Howard, and Beheer, and as evidenced by Lund , and Sadek. 5. Claims 17, 19, and 20 are rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Cochran in view of Howard, and Vincente, as evidenced by Lund, and Sadek. 6. Claim 18 is rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Cochran in view of Howard, and Vincente, as evidenced by Lund, Ohmura, and Sadek, as applied to claim 1 7 above, and in further view of Beheer, and Lamp. 7. Claims 8, 9, 11and12 are rejected under 35 U.S.C. Â§103(a) as being unpatentable over Cochran in view of Carmichael, Howard, Ohmura, and Beheer, as evidenced by Lund, and Sadek. 1 ANALYSIS The Examiner's statement of the rejection for Rejection 1 is set forth on pages 2---6 of the Answer. Therein, the Examiner relies upon Beheer for teaching proportions of ingredients (xanthum gum, methyl cellulose, and guar gum) that overlap the amount claimed by Appellants. Ans. 3--4. 1 On page 26 of the Answer, the Examiner introduced this new ground of rejection to correct an inadvertent oversight of not listing Ohmura as prior art in Rejection 4 even though Ohmura was discussed in the body of the rejection. 4 Appeal2014-008021 Application 11/531,601 Appellants argue, inter alia, that the Examiner's reliance upon Beheer lacks motivation because Beheer concerns a mixture free of wheat and gluten (a gluten-free mix). As such, Appellants argue that the teachings in a gluten-free product regarding the amounts of ingredients of xanthum gum, methyl cellulose, and guar gum (Ans. 3--4) are not applicable to the product of Cochran which involves bread products that include wheat and gluten. Appeal Br. 12-13. Appellants thus submit that one of ordinary skill in the art would not have been motivated to look to Beheer's use of ingredients as a gluten substitute when trying to formulate dough comprising wheat flour as claimed. Appeal Br. 12-13. The Examiner does not specifically address these valid points raised concerning the combination with regard to Beheer. Ans. 30-31. Rather, the Examiner focuses on the teachings of Ohmura, states that "even though Ohmura did not teach the amount of each of xanthan, guar, and methylcellulose," and concludes that it would have been obvious to have included xanthan, guar, and, methylcellulose, in the amounts disclosed in Beheer, for the purpose disclosed in Ohmura. Ans. 31. We are convinced by Appellants' argument that sufficient motivation is lacking to use the disclosed amount of components (xanthum gum, methyl cellulose, and guar gum) as taught by Beheer, which pertain to a gluten-free mixture, in Cochran's bread product having wheat and gluten. The applicability of the amount of these ingredients, suitable for a gluten-free mixture, to a wheat and gluten containing mixture, is questionable for the reasons stated by Appellants in the paragraph bridging pages 12-13 of the Appeal Brief. Therein, Appellants explain how a gluten-free product is fundamentally different from a wheat and gluten containing bread product. 5 Appeal2014-008021 Application 11/531,601 The Examiner has not pointed to evidence in the record indicating otherwise, and the Examiner has not convincingly addressed this issue raised by Appellants in the record before us. It thus appears that the only teaching or suggestion for combining the applied references in such a manner as to achieve the here claimed invention derives from the Appellants' own Specification rather than the applied prior art. Therefore, we conclude that the Examiner's rejection is improperly based upon improper hindsight reasoning. See W.L. Gore &Assocs. v. Garlock, Inc., 721F.2d1551, 1553 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984) ("To imbue one of ordinary skill in the art with knowledge of the invention in suit, when no prior art reference or references of record convey or suggest that knowledge, is to fall victim to the insidious effect of a hindsight syndrome wherein that which only the inventor taught is used against its teacher."). In view of the above, we reverse Rejection 1. Because the Examiner does not rely upon the other additional references applied in Rejections 2-7 to cure the stated deficiencies of the combination of Cochran in view of Beheer, we also reverse Rejections 2-7. DECISION Each rejection is reversed. ORDER REVERSED 6