Ex Parte Philbin

Patent Trial and Appeal BoardApr 29, 2016

12543464 (P.T.A.B. Apr. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/543,464 08/18/2009 77093 7590 05/03/2016 Bishop Diehl & Lee, Ltd. 1475 East Woodfield Road, Suite 800 Schaumburg, IL 60173 FIRST NAMED INVENTOR John J. Philbin 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. 001023 P0003 7385 EXAMINER SMITH, PRESTON ART UNIT PAPER NUMBER 1792 NOTIFICATION DATE DELIVERY MODE 05/03/2016 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): cmarcello@bishoppatents.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JOHN J. PHILBIN Appeal2014-009170 Application 12/543,464 Technology Center 1700 Before CHUNG K. PAK, JEFFREY T. SMITH, and WESLEY B. DERRICK, Administrative Patent Judges. SMITH, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. Â§ 134(a) from a rejection of claims 1through9 and 11through15. We have jurisdiction under 35 U.S.C. Â§ 6(b). STATEMENT OF THE CASE Appellant's invention is generally directed to a consumable food product that enables a consumable liquid to be orally drawn into the food product and absorbed. App. Br. 2. Claim 1 illustrates the subject matter on appeal and is reproduced below: 1. A consumable food product adapted to enable a consumable liquid to be orally drawn into the food product and absorbed, comprising: Appeal2014-009170 Application 12/543,464 (a) a tubular consumable structural means for providing fluid communication between two spaced-apart points on a surface of the food product and for absorbing a consumable liquid that is drawn into the consumable structural means through one of the spaced-apart points when a partial vacuum is orally applied to the other of the spaced-apart points, and wherein the consumable structural means has a longitudinal axis and is elliptical or circular in vertical cross-section to define a tubular passage about the longitudinal axis; (b) coating means that is consumable, for substantially sealing the surface of the consumable structural means, to substantially prevent free entry of air therein, except where the spaced-apart points are disposed; ( c) a porous filling extending from, on and along the longitudinal axis and wherein the porous filling adjoins and is surrounded by the consumable structural means to obstruct the tubular passage; and ( d) wherein the obstruction within the tubular passage is removable by application of the vacuum and absorption by the filling of the consumable liquid drawn into the passage by the vacuum. App. Br. 15 Claims Appendix. Appellant (see App. Br., generally) requests review of the Examiner's rejection in the Office Action mailed October 28, 2013, of claims 1-9 and 11-15 under 35 U.S.C. Â§ 103(a) as unpatentable over Rodman et al. (US 200610029696 Al, published Feb. 9, 2006). 1 OPINION After review of the respective positions provided by Appellant and the Examiner, we AFFIRM the Examiner's rejection of claims 1- 9 and 11-15 1 Appellant argues claims 1-9 and 11-15 together. See Appeal Brief, generally. Therefore, we select claim 1 as representative of these claims, which will stand or fall with claim 1. 2 Appeal2014-009170 Application 12/543,464 under 35 U.S.C. Â§ 103(a) as unpatentable over Rodman. We add the following for emphasis. To prevail in an appeal to this Board, an Appellant must adequately explain or identify reversible error in the Examiner'sÂ§ 103(a) rejection. See 37 C.F.R. Â§ 41.37(c)(l)(iv) (2012); see also In re Jung, 637 F.3d 1356, 13 65---66 (Fed. Cir. 2011) (explaining that even if the examiner had failed to make a prima facie case, it has long been the Board's practice to require an appellant to identify the alleged error in the examiner's rejection.) The Examiner finds that Rodman discloses a consumable food product comprising an interior, porous material, and Appellant does not contend that this material differs from the porous filling material recited in claim 1. Compare Office Act. 3 with App. Br. 8-13. The Examiner finds that Rodman discloses that a consumable coating is applied to an outer surface of the interior material, which substantially seals the interior material to prevent free entry of air, and Appeiiant aiso does not contend that this coating differs from the coating recited in claim 1. Compare Office Act. 3 with App. Br. 8-13. Rodman discloses that the coating can be any substantially non-porous edible food component, and indicates that more than one coating can be applied to the food product. Rodman i-fi-139, 41. In such an arrangement where more than one coating is applied, one of the coating layers could correspond to the consumable structural means recited in claim 1, and Appellant does not contend that Rodman fails to disclose a consumable structural means as recited in claim 1. App. Br. 8-13. Appellant does not dispute the Examiner's finding that Rodman discloses that a consumable liquid can be drawn into the food product and absorbed through fluid communication provided between two spaced-apart 3 Appeal2014-009170 Application 12/543,464 points on surfaces of the food product that are free of the coating(s) when a reduced pressure (partial vacuum) is orally applied to one of the spaced- apart points, and the other spaced-apart point is immersed in a consumable liquid. Compare Office Act. 3 with App. Br. 8-13; Rodman iii! 8, 35, claim 1. Nor does Appellant dispute the Examiner's finding that Rodman illustrates such a consumable food product that is tubular in shape, has a longitudinal axis, and is circular in vertical cross-section to define a tubular passage about the longitudinal axis. Compare Office Act. 3 with App. Br. 8-13; Rodman Figs. 1, 2, 3A. Appellant argues that Rodman does not disclose a food product having an interior, porous material that extends from, on, and along a longitudinal axis of a tubular passage to obstruct the passage. Appellant contends that open and unobstructed pathways exist through the interior material of each relevant embodiment disclosed in Rodman. App. Br. 9-12. SpecificaUy, AppeUant argues that the embodiment iiiustrated in Figure 1 of Rodman has an open, central channel; the embodiment illustrated in Figure 3 B contains open, interstitial spaces; and the embodiment illustrated in Figure 3C contains open, tubular passages in a core. App. Br. 10-12. Appellant argues that the open passageways in each of these embodiments do not obstruct the passage and flow of liquid along a longitudinal axis, as required by claim 1. Id. However, Appellant's arguments are contrary to Rodman' s disclosure that if sufficiently porous internal material is used in the food product, the internal channel can be omitted. Rodman if 43. In such an arrangement, the internal channel depicted in Figure 2 of Rodman would therefore not be present, and the porous, internal material illustrated in the figure would extend from, on and along the longitudinal axis of the 4 Appeal2014-009170 Application 12/543,464 depicted tubular passage to obstruct the passage. Accordingly, contrary to Appellant's arguments, open and unobstructed pathways do not exist through the internal material of each and every embodiment disclosed in Rodman, and Appellant's arguments are therefore unpersuasive of reversible error. Appellant apparently attempts to further distinguish the consumable food product recited in claim 1 from Rodman's product by asserting that paragraph 35 of Appellant's Specification makes clear that the intended function of the food product is not to serve as a straw. App. Br. 10. However, this assertion is contrary to the express language of claim 1, which requires liquid to be drawn into the food product through one spaced-apart point when a partial vacuum is orally applied to the other spaced-apart point. Therefore, we are unpersuaded of reversible error in the Examiner's rejection of claims 1-9 and 11-15 under 35 U.S.C. Â§ 103(a) as obvious over Rodman, and we accordingiy sustain this rejection. ORDER For the reasons set forth above and in the Answer, the decision of the Examiner is affirmed. TIME PERIOD No time period for taking any subsequent action in connection with this appeal maybe extended under 37 C.F.R. Â§ 1.136(a)(l). AFFIRMED 5