Ex Parte GRAHAM et al

Patent Trial and Appeal BoardApr 20, 2016

12983950 (P.T.A.B. Apr. 20, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/983,950 01/04/2011 110933 7590 04/20/2016 Carstens & Cahoon, LLP PO Box 802334 Dallas, TX 75380 FIRST NAMED INVENTOR David Wallice GRAHAM 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. CFLA Y.00644 1393 EXAMINER LEFF, STEVEN N ART UNIT PAPER NUMBER 1792 MAILDATE DELIVERY MODE 04/20/2016 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 DAVID W ALLI CE GRAHAM, CAROL MCCALL, MOHAN RAO, and SCOTT SULLIV AN1 Appeal2014-007235 Application 12/983,950 Technology Center 1700 Before BRADLEY R. GARRIS, TERRY J. OWENS, and WESLEY B. DERRICK, 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 13-24. We have jurisdiction under 35 U.S.C. Â§ 6. We REVERSE. 1 Frito-Lay North America Inc. is identified as the real party in interest. App. Br. 2. Appeal2014-007235 Application 12/983,950 Appellants claim a nut cluster comprising between 65% to about 85% of food material wherein the food material is nuts or seeds (sole independent claim 13). A copy of representative claim 13, taken from the Claims Appendix of the Appeal Brief, appears below. 13. A hexahedron-shaped nut cluster made by the method comprising the following: a) admixing a raw food material with a binder syrup into a nut mixture such that said nut mixture comprises between 65% to about 85% of said raw food material, wherein said raw food material is raw or roasted nuts or seeds, wherein said binder syrup comprises at least one ingredient selected from the group consisting of com syrup, brown rice syrup, rice malt, and honey; b) placing said nut mixture having a controlled slab temperature on a slab conveyor moving in a longitudinal direction; c) compressing said nut mixture to make a nut slab with at least one compression roller; d) using at least one rotary slitter that comprises a rotational speed greater than a slab speed to simultaneously pull and slice said nut slab into longitudinal strips; and e) cutting said longitudinal strips in the transverse direction to form a plurality of hexahedron-shaped nut clusters. The Examiner rejects claims 13-16 and 18-23 under 35 U.S.C. Â§ 102(b) as anticipated by Kayes et al. (EP 0 348 196 Al, published December 27, 1989) ("Kayes") and rejects claim 24 under 35 U.S.C. Â§ 103(a) as unpatentable over Kayes. The various disclosures of Kayes identified by the Examiner do not support a finding of anticipation for the claim 13 limitation "said nut mixture comprises between 65% to about 85% of said raw food material, wherein said raw food material is raw or roasted nuts or seeds." We recognize that Kayes discloses granola bars containing from about 30% to about 75% by weight granola (4: 19-20), wherein granola is defined as a mixture of grains, 2 Appeal2014-007235 Application 12/983,950 nuts, seeds, and usually dried fruits (3 :51 ). However, as correctly argued by Appellants, Kayes does not teach any particular percentage of the granola that is nuts or seeds (App. Br. 5). For this reason, Kayes cannot be said to anticipate claim 13. See Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008) ("We thus hold that unless a reference discloses within the four comers of the document not only all of the limitations claimed but also all of the limitations arranged or combined in the same way as recited in the claim, it cannot be said to prove prior invention of the thing claimed, and thus, cannot anticipate under 35 U.S.C. Â§ 102."). The Examiner'sÂ§ 103 rejection of dependent claim 24 does not address, and accordingly does not correct, the deficiency of the Â§ 102 rejection of independent claim 13. For these reasons, the Examiner'sÂ§ 102 andÂ§ 103 rejections based on Kayes will not be sustained. Under 35 U.S.C. Â§ 103(a), the Examiner rejects as unpatentable: claims 13-16 and 18-24 over LaBaw et al. (US 4,784,867, issued November 15, 1988) ("LaBaw") in view of Kayes; claims 13-24 over Ourceau (FR 2 863 455, published December 12, 2003, as translated) in view of Kayes and LaBaw; and claims 13-24 over Bell (US 3,009,427, issued November 21, 1961) in view of Singer (US 3,548,758, issued December 22, 1970), Kayes, and Ourceau. In each of these rejections, the Examiner relies on Kayes to support a conclusion that it would have been obvious to provide LaBaw or Ourceau or Bell with a nut cluster material comprising between 65% to about 85% of raw food material wherein the raw food material is nuts or seeds as required 3 Appeal2014-007235 Application 12/983,950 by claim 13. For example, the Examiner concludes that it would have been obvious to provide LaBaw with a desired amount of cluster material, such as in the instant case 65-85% since design incentives or market forces, with respect to the desired amount of cluster material provides a reason to make an adaptation, such as providing different tasting products as a result of a defined amount of cluster material as taught by Kayes (Final Action 5; see also id. at 10 (regarding Ourceau) and 14 (regarding Bell)). We agree with Appellants that the Examiner has failed to provide the record before us with support for the proposition that Kayes would have suggested, based on a reasonable expectation of success, providing LaBaw, Ourceau, or Bell with a percentage of nuts or seeds within the claim 13 range (see App. Br. 9-10 (regarding LaBaw), 10-11 (regarding Ourceau), and 13-14 (regarding Bell)). As an example, the Examiner has not explained with any reasonable specificity why Kayes' previously discussed teaching of a granola bar comprising up to about 75% by weight granola, which contains ingredients other than nuts or seeds, would have suggested an amount of nuts or seeds within the claimed 65% to about 85% range. As a consequence, the Examiner's obviousness conclusions are based improperly on mere conclusory statements rather than articulated reasoning with rational underpinning. See In re Kahn, 441F.3d977, 988 (Fed. Cir. 2006) ("[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") quoted with approval in KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). 4 Appeal2014-007235 Application 12/983,950 We also will not sustain, therefore, the Examiner'sÂ§ 103 rejections based LaBaw, Ourceau or Bell in view of Kayes alone or in combination with additional prior art. The decision of the Examiner is reversed. REVERSED 5