Ex Parte MATTEI

Patent Trial and Appeal Board

Jan 31, 2019

12136588 (P.T.A.B. Jan. 31, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/136,588 06/10/2008 GIANFRANCO MATTEI
24998 7590 02/04/2019
Blank Rome LLP
1825 Eye Street, NW
Washington, DC 20006-5403
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.
Gl919.0001/P001 5861
EXAMINER
MOORE, WALTER A
ART UNIT PAPER NUMBER
1793
NOTIFICATION DATE DELIVERY MODE
02/04/2019 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
W ashingtonDocketing@blankrome.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GIANFRANCO MATTEI
Appeal2018-000076
Application 12/136,588
Technology Center 1700
Before CATHERINE Q. TIMM, MONTE T. SQUIRE, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
SQUIRE, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner's
decision to reject claims 15-17 and 26-29, which constitute all the claims
pending in this application. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 In explaining our Decision, we refer to the Specification filed June 10,
2008 ("Spec."); Non-Final Office Action dated September 22, 2016 ("Non-
Final Act."); Appeal Brief filed March 9, 2017 ("Appeal Br."); Examiner's
Answer dated August 7, 2017 ("Ans."); and Reply Brief filed October 3,
2017 ("Reply Br.").
2 According to the Appeal Brief, S.p.A. Egidio Galbani is the real party in
interest. Appeal Br. 1.
Appeal2018-000076
Application 12/136,588
The Claimed Invention
Appellant's disclosure relates to a method for producing and
packaging a pasta filata cheese, including substantially dry packaging, i.e.
without preserving liquid, and heat packaging of the pasta filata cheese.
Abstract; Spec. 1, 3--4. Claim 15 is illustrative of the claimed subject matter
on appeal and is reproduced below from the Claims Appendix to the Appeal
Brief (key disputed claim language italicized and bolded):
15. A multi-portion container, comprising:
two dry half-shells, each half-shell having an inner
portion with an opening heat-sealed by a separate film
isolating the inner portion from an external environment,
each half-shell having a hemispheric shape,
wherein each half-shell contains a portion of a
pasta filata cheese, each half-shell being free of a
preserving liquid, wherein the pasta filata cheese has a
lactose content and a Na Cl content, and wherein the
pasta filata cheese has a moisture of 62%,
wherein a projecting edge is provided, projecting
from each half-shell, each projecting edge comprising a
hinge portion, the hinge portion connecting the two half-
shells, and a tab portion arranged in an opposite position
relative to the hinge portion,
wherein the half-shells are closed on each other
around the hinge portion to form a multi-portion
container provided with a spherical shell, a tab portion
and projecting edges,
wherein the half-shells are fixed to each other at
preset locations along the projecting edge projecting from
each half-shell to define the spherical shell, and
wherein each half-shell is configured to maintain
unchanged the lactose and Na Cl contents of the pasta
filata cheese.
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Application 12/136,588
The References
The Examiner relies on the following prior art references as evidence
in rejecting the claims on appeal:
Reuman us 2,834,686 May 13, 1958
Mauk et al., us 3,692,540 Sept. 19, 1972
("Mauk")
Dahlstrom et al., US 6,319,526 Bl Nov. 20, 2001
("Dahlstrom")
Silver et al., US 6,372,268 B 1 Apr. 16, 2002
("Silver")
Dunker et al., US 2004/0040448 Al Mar. 4, 2004
("Dunker")
Duffield et al., US 2004/01153575 Al June 1 7, 2004
("Duffield")
Fux US 2005/0257503 Al Nov. 24, 2005
Sinichko et al., US 2006/0062874 Al Mar. 23, 2006
("Sinichko")
Kemper DE 2981903 Ul Oct. 27, 1998
The Rejection
On appeal, the Examiner maintains the following rejection: claims
15-17 and 26-29 rejected under 35 U.S.C. § I03(a) as being unpatentable
over Kemper in view of Fux, Sinichko, Duffield, Reuman, Dahlstrom,
and/or Silver, and/or Mauk, as evidenced by Dunker. Ans. 2; Non-Final
Act. 3--4.
OPINION
Having considered the respective positions advanced by the Examiner
and Appellant in light of this appeal record, we affirm the Examiner's
rejection based on the fact-finding and reasoning set forth in the Answer and
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Application 12/136,588
Non-Final Office Action, which we adopt as our own. We highlight and
address specific findings and arguments below.
Appellant argues claims 15-17 and 26-29 as a group. Appeal Br. 3,
11. We select claim 15 as representative and claims 16, 17, and 26-29 stand
or fall with claim 15. 37 C.F.R. § 4I.37(c)(l)(iv).
The Examiner determines that the combination of Kemper, Fux,
Sinichko, Duffield, Reuman, Dahlstrom, Silver, and Mauk, as evidenced by
Dunker suggests a multi-portion container satisfying all of the limitations of
claim 15 and thus, concludes that the combination would have rendered the
claim obvious. Ans. 2-15. Regarding the recitations "a pasta filata
cheese ... being free of a preserving liquid" and "wherein the pasta filata
cheese has a moisture of 62%," the Examiner relies on the combination of
Dahlstrom and Mauk for teaching or suggesting those claim elements. Id. at
8-15 (citing Dahlstrom, Title, 2:52-53, 3:9, 3:12-15, 3:37-38, 4:2, 4:33-35,
4:38-39, 6:39--41,7:6, 7:44, 8:38-39, 9:29-30, 9:32-33; Mauk, 1:11, 1:33-
34, 1:64---66, 5:11-12, 6:13-15, 6:18-19).
Appellant principally argues that the Examiner's rejection of claim 15
should be reversed because the prior art does not teach or suggest "a pasta
filata cheese ... being free of a preserving liquid" and "wherein the pasta
filata cheese has a moisture of 62%," as recited in the claim. Appeal Br. 3-
4; Reply Br. 2. In particular, Appellant argues that"[ e ]ven when it is
considered together with the other prior art references, Dahlstrom does not
suggest packaging a very wet and juicy pasta filata cheese, especially one
with a moisture content of 62%, without preserving liquid." Appeal Br. 8.
Appellant further argues that the moisture content range Dahlstrom
discloses of from about 20% to about 90% is "so broad" that it would not
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Application 12/136,588
have been helpful to one of ordinary skill because "it covers the moisture
contents of essentially all known cheeses." Appeal Br. 5.
Appellant also argues that Dahlstrom teaches that the moisture content
should be centered around the moisture contents provided in Dahlstrom's
Examples I (48.61 %), II (47.22%), and III (44.38%) (Appeal Br. 5) and
preferably should not be more than 60% (id. at 5) ( citing Dahlstrom, claim
127 of Reexamination Certificate).
Additionally, Appellant argues that, although Mauk discloses and
refers to the dry packaging of pasta filata cheese without preserving liquid as
being "conventional" (see Mauk, 1 :33-34, 1 :64---66), Mauk's teachings are
"no more than cumulative to the background art" and the reference does not
disclose or suggest a "pasta filata cheese (the very wet and juicy type)
without the known preserving liquid." Id. at 9.
We do not find Appellant's arguments persuasive of reversible error
in the Examiner's rejection. On the record before us, we find that a
preponderance of the evidence and sound technical reasoning support the
Examiner's analysis and determination that the combination of cited
references suggests all of the limitations of claim 15, and the Examiner's
conclusion that the combination would have rendered the claim obvious.
Ans. 2-15.
In particular, based on the Examiner's fact-finding and reasoning
provided at pages 8-15 and 18-28 of the Answer and pages 8-13 of the
Non-Final Office Action, we concur with the Examiner's analysis and
determination that the combination of Dahlstrom and Mauk teaches or
suggests the "pasta filata cheese ... being free of a preserving liquid" and
"wherein the pasta filata cheese has a moisture of 62%" recitations of the
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claim, and that the references' disclosures would have rendered each of
these claim elements obvious. Dahlstrom, Title, 1:4--7, 2:52-53, 3:9, 3:12-
15, 3:37-38, 4:2, 4:33-35, 4:38-39, 6:39-41,7:6, 7:44, 8:38-39, 9:29-30,
9:32-33; Mauk, 1:11, 1:33-34, 1:64--66, 5:11-12, 6:13-15, 6:18-19.
As the Examiner finds (Ans. 8-10, 18-20), Dahlstrom discloses a
pasta filata cheese having a final moisture content of about 20% to about
90%, which encompasses the claimed moisture content of 62%. Dahlstrom,
Title, 1:4--7, 2:52-53, 5:1-2, 8:38-39, 9:29-31. As the Examiner concludes
(Ans. 20), based on Dahlstrom's disclosure, it would have been obvious to
one of ordinary skill to have arrived at the claimed moisture content of 62%
through routine experimentation. See also In re Petersen, 315 F.3d 1325,
1329 (Fed. Cir. 2003); In re Aller, 220 F.2d 454, 456 (CCPA 1955) ("where
the general conditions of a claim are disclosed in the prior art, it is not
inventive to discover the optimum or workable ranges by routine
experimentation").
Appellant's argument regarding the moisture content disclosed in
Dahlstrom being too broad (Appeal Br. 5) is not persuasive of reversible
error because this is not the type of case where the prior art's disclosed range
is so broad as to encompass a very large number of possible distinct
compositions analogous to the obviousness of a species when the prior art
broadly discloses a genus. See, e.g., In re Baird, 16 F.3d 380, 383 (Fed. Cir.
1994). Rather, as the Examiner finds here (Ans. 8-10, 22-24), the prior art
discloses only a single type of composition-pasta filata cheese----over the
specified range of moisture content.
Moreover, as the Examiner correctly points out (Ans. 23), Appellant
has not proffered or directed us to any objective evidence in the record to
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suggest the criticality of the claimed moisture content or that a pasta filata
cheese having the claimed moisture content achieves unexpected results
relative to the prior art. Peterson, 315 F.3d at 1330 (explaining that "the
existence of overlapping or encompassing ranges shifts the burden to the
applicant to show that his invention would not have been obvious").
Appellant's argument that Dahlstrom teaches that the moisture content
should be centered around the moisture contents provided in Dahlstrom's
examples (Appeal Br. 5) is not persuasive because, as the Examiner points
out (Ans. 22), disclosure of examples having a specific or preferred range
for the moisture content, without more, does not constitute a teaching away
from the broader range Dahlstrom discloses. In re Susi, 440 F .2d 442, 445-
46 ( CCP A 1971) ( disclosure of particularly preferred embodiments does not
teach away from broader disclosure).
Appellant's argument that Dahlstrom's claim 127 of the
Reexamination Certificate teaches that the cheese moisture content
preferably should not be more than 60% (Appeal Br. 5) is not persuasive
because it misconstrues claim 12 7. Claim 12 7 of the Reexamination
Certificate recites:
127. The process of claim 126 wherein the cheese has a
final moisture content in the range of about 30 to 60
weight percent.
Thus, contrary to what Appellant's argument suggests, the claim does not
teach that the cheese moisture content should not be more than 60%.
As the Examiner further finds (Ans. 8, 12-13, 24--25), Dahlstrom
discloses that the finished cheese product is directly extruded into packaging
while hot (Dahlstrom, 6:39-41) and the process neither requires nor suggests
adding a preserving liquid before or after the packaging the cheese (id. at
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Application 12/136,588
3:9, 3: 12-15, 3:37-38, 6:29-42). As the Examiner also finds (Ans. 13-14),
Mauk discloses a "conventional procedure" for preparing a pasta filata
cheese that includes the step of dry packaging the cheese without a
preserving liquid. Mauk, 1:11, 1:33-34 (disclosing a "conventional
procedure for preparing pasta filata cheese"), 1 :64---66, ( disclosing that the
cheese is "dried in air and packaged for shipment").
Appellant's assertions that "Mauk refers to two different packaging
processes" and is "no more than cumulative to the background art" (Appeal
Br. 9) are conclusory and do not reveal reversible error in the Examiner's
factual findings and conclusions in this regard. Attorney argument is not
evidence. In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984).
Appellant's repeated assertions that the prior art does not disclose or
suggest packaging a "very wet and juicy type" of pasta filata cheese (Appeal
Br. 3, 4, 5, 8, 9) are not persuasive of reversible error because, as the
Examiner notes (Ans. 20), there are no such limitations recited in the claims.
In re Van Geuns, 988 F.2d 1181, 1184--85 (Fed. Cir. 1993).
Accordingly, we affirm the Examiner's rejection of claims 15-17 and
26-29 under 35 U.S.C. § 103 as obvious over the combination of Kemper,
Fux, Sinichko, Duffield, Reuman, Dahlstrom, Silver, and Mauk, as
evidenced by Dunker.
DECISION/ORDER
The Examiner's rejections of claims 15-17 and 26-29 are affirmed.
It is ordered that the Examiner's decision is affirmed.
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Application 12/136,588
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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