Ex Parte PinchukDownload PDFPatent Trial and Appeal BoardJul 28, 201511379608 (P.T.A.B. Jul. 28, 2015) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE 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. 11/379,608 04/21/2006 Leonard Pinchuk PIN-003 1136 36822 7590 07/28/2015 GORDON & JACOBSON, P.C. 60 LONG RIDGE ROAD SUITE 407 STAMFORD, CT 06902 EXAMINER MORNHINWEG, JEFFREY P ART UNIT PAPER NUMBER 1793 MAIL DATE DELIVERY MODE 07/28/2015 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 LEONARD PINCHUK ____________ Appeal 2013-009242 Application 11/379,608 Technology Center 1700 ____________ Before ROMULO H. DELMENDO, JEFFREY T. SMITH, and GEORGE C. BEST, Administrative Patent Judges. BEST, Administrative Patent Judge. DECISION ON APPEAL The Examiner rejected claims 24, 25, 27‒34, and 37‒51 of Application 11/379,608 under 35 U.S.C. § 103(a) as obvious. Non-Final Act. (May 22, 2012). Appellant seeks reversal of these rejections pursuant to 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6(b). For the reasons set forth below, we AFFIRM. BACKGROUND The ’608 Application describes methods for making a hand-holdable egg-based food product. Spec. ¶ 1. The Specification describes hand- holdable egg-based food products as providing a convenient way for Appeal 2013-009242 Application 11/379,608 2 consumers to eat eggs without needing a high carbohydrate food product, such as an English muffin or a croissant as a way to hold the egg-based food product. Id. ¶ 2. Claim 24 is representative of the ’608 Application’s claims and is reproduced below: 24. A method of producing food stuff including: providing a mold defining a pressurizable mold cavity with a hand-holdable member having a first portion that is disposed within said mold cavity and a second portion that is disposed outside said mold cavity; adding at least a liquid form processed egg-based composition to said mold cavity, said liquid form processed egg-based composition including at least 50% egg (or egg portions) by weight; cooking said liquid form processed egg-based composition in said mold cavity to realize a hand-holdable food product, wherein said mold cavity is pressurized during the cooking of said liquid form processed egg-based composition, wherein said hand-holdable food product has an edible part of a solid form defined by said mold cavity, wherein the cooking of the liquid form processed egg-based composition in said mold cavity is performed at a temperature and for a time period that causes said edible part to be substantially cooked throughout and substantially retain its shape when heated and causes said edible part to bind to, surround and be supported by said first portion of said hand-holdable member, said edible part including at least 50% egg (or egg portions) by weight, and said second portion of said hand-holdable member provides surfaces that can be manually picked up and held by a human hand for handling to permit eating of said edible part as desired; and subsequent to the cooking, removing said hand-holdable food product from said mold cavity. App. Br. 35 (Claims App’x). Appeal 2013-009242 Application 11/379,608 3 REJECTIONS On appeal, the Examiner maintains the following rejections: 1. Claims 24, 27, 30‒34, 37, 38, and 47 are rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Shefet,1 Kula,2 and Knipper,3 as evidenced by Paparo.4 Non- Final Act. 2; Ans. 2‒6. 2. Claims 25, 28, and 29 are rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Shefet, Kula, Knipper, and Tillis,5 as evidenced by Paparo. Non-Final Act. 6; Ans. 6‒8. 3. Claim 39 is rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Shefet, Kula, Knipper, and Mathews,6 as evidenced by Paparo. Non-Final Act. 7‒8; Ans. 8‒9. 4. Claim 46 is rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Shefet, Kula, Knipper, Merkle,7 and Plotkin,8 as evidenced by Paparo. Non-Final Act. 9; Ans. 9‒10. 1 US 2004/0043718 A1, published March 4, 2004. 2 US 6,177,663 B1, issued January 23, 2001. 3 US 6,814,999 B2, issued November 9, 2004. 4 US 2005/0136158 A1, published June 23, 2005. 5 US 2005/0202150 A1, published September 15, 2005. 6 US 7,241,469 B2, issued July 10, 2007. 7 US 2005/0226988 A1, published October 13, 2005. 8 F. Plotkin, Fresh Herb Frittata, LA TERRA FORTUNATA, May 2001 (available at http://bit.ly/1eW1tDu). Appeal 2013-009242 Application 11/379,608 4 5. Claim 48 is rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Shefet, Kula, and Knipper, as evidenced by Paparo. Non-Final Act. 10; Ans. 10‒11. 6. Claim 50 is rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Shefet, Kula, Knipper, and Plotkin, as evidenced by Paparo. Non-Final Act. 11; Ans. 11. 7. Claims 40‒43 and 45 are rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Shefet, Kula, Knipper, and Heberle,9 as evidenced by Paparo. Non-Final Act. 11; Ans. 12‒15. 8. Claim 44 is rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Shefet, Kula, Knipper, Merkle, Plotkin, and Heberle, as evidenced by Paparo. Non-Final Act. 15; Ans. 15‒16. 9. Claim 49 is rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Shefet, Kula, Knipper, Heberle, and Paparo. Non-Final Act. 16; Ans. 16‒17. 10. Claim 51 is rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Shefet, Kula, Knipper, Plotkin, and Heberle, as evidenced by Paparo. Non-Final Act. 16‒17; Ans. 17. 9 M.O. Heberle, Bauernfrufstuck (Farmer’s Broiled Omelet), WORLD HEARTH CIRCLE OF INTERNATIONAL COOKING (available at http://bit.ly/1GLxQf0). Appeal 2013-009242 Application 11/379,608 5 DISCUSSION For the purpose of this appeal, Appellant divides the ’608 Application’s pending claims into seven groups. App. Br. 11‒12. Each group corresponds to one ground of rejection. Appellant does not present any explicit argument for reversal of Rejections 3, 5, and 9. Id. Group 1 (Rejection 1). The Examiner rejected claims 24, 27, 30‒34, 37, 38, and 47 as unpatentable over the combination of Shefet, Kula, and Knipper, as evidenced by Paparo. Non-Final Act. 2; Ans. 2‒6. Appellant has selected claim 24 as representative of this group of claims. App. Br. 16. We, therefore limit our discussion to clam 24. The remaining claims in this group stand or fall with claim 24. 37 C.F.R. § 41.37(c)(1)(iv) (2012). Appellant argues that this rejection should be reversed because: (1) the rejection relies upon erroneous factual findings, (2) the rejection relies upon erroneous legal conclusions, and (3) the Examiner failed to accord weight to the June 24, 2010 and March 6, 2012 Declarations of Marc Weber (“Weber I” and “Weber II,” respectively. See App. Br. 16‒24. We address these arguments seriatim below. First, Appellant argues that the Examiner erred in finding that Shefet describes or suggests the steps of “cooking the form processes food composition in the mold cavity to realize a hand-holdable food product” and “cooking of the liquid form processed food composition . . . at a temperature and for a time period that causes said edible part to be substantially cooked throughout and substantially retain its shape when heated.” App. Br. 17‒21. Appellant further argues that the Examiner erred in finding that Kula describes or suggests that cooking of the food product causes an edible liquid to “bind to, surround and be supported by the first portion of the hand- Appeal 2013-009242 Application 11/379,608 6 holdable member.” Id. For the following reasons, we are not persuaded by these arguments. Appellant first argues that the Examiner erred in finding that Shefet’s describes production of a cooked food product on a stick. App. Br. 19‒20. In particular, Appellant argues that the only food product on a stick described in Shefet is a popsicle—which is not a cooked food product. Id. at 20. We are not persuaded by this argument because Shefet’s discussion of popsicles was cited as describing production of a food product on a stick. Ans. 20. The Examiner relied upon Kula as teaching that the food product in question could be a cooked food product. Id. We also note that “[a] person of ordinary skill is also a person of ordinary creativity, not an automaton.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). It would have been obvious to such a person that a stick that supports a frozen food product also could support a cooked food product. Just as the popsicle stick keeps melted popsicle residue from getting on the consumer’s hand, the stick also would protect the consumer’s hand from residue from the cooked food product (e.g., grease). Appellant next argues that the Examiner erred in finding that Kula describes a food product in which the cooking causes the food product to bind to, surround and be supported the stick. App. Br. 20. We are not persuaded by this argument. We reproduce Figure 4 from Kula below: Appeal 2013-009242 Application 11/379,608 7 Figure 4 shows a view of a cooked food item. Kula col. 3, ll. 31‒32. The food item shows cooked batter 55 surrounding hot dog 74 and skewer 37. Portions of cooked batter 55 are in direct contact with and are supported by skewer 37. Second, Appellant argues that the rejection should be reversed because the Examiner has not identified any evidence or reasoning that provides a teaching, motivation, or suggestion to combine the cited references in a manner that renders the claimed process obvious. App. Br. 21‒22. We are not persuaded by this argument. As the Examiner found, Shefet describes a method for transforming a flowable food product into a non-flowable state after exposure to processing conditions. Ans. 21 (citing Shefet ¶ 46). Knipper describes egg as such a food product. Id. (citing Knipper col. 1, ll. 60‒62; col. 2, ll. 3‒5). Thus, the rejection relies upon substitution of Shefet’s flowable food product with a second food product having equivalent properties. The Examiner correctly determined that such a substitution would have been obvious to a person of ordinary skill in the art at the time of the invention. See In re Fout, 675 F.2d 297, 301 (CCPA Appeal 2013-009242 Application 11/379,608 8 1982) (“Express suggestion to substitute one equivalent for another need not be present to render such substitution obvious.”). Third, Appellant argues that the Examiner erred by failing to consider Weber I and Weber II declarations. App. Br. 23‒24. We are not persuaded by this argument for the reasons expressed on pages 22‒23 of the Examiner’s Answer. For the reasons set forth above, we affirm the rejection of claim 24. Appellant has stipulated that claims 27, 30‒34, 37, 38, and 47 stand or fall with claim 24. App. Br. 16. Thus, we also affirm the rejection of those claims as obvious over the combination of Shefet, Kula, and Knipper, as evidenced by Paparo. Group 2 (Rejection 2). The Examiner rejected claims 25, 28, and 29 as unpatentable over the combination of Shefet, Kula, Knipper, and Tillis, as evidenced by Paparo. Non-Final Act. 6; Ans. 6‒8. Appellant has selected claim 25 as representative of this group of claims. App. Br. 24. Appellant argues that this rejection should be reversed for reasons that we have already considered in our discussion of Group 1. Id. For the reasons set forth in our consideration of Appellant’s appeal with respect to Group 1, we are not persuaded by these arguments. Appellant also argues that this rejection should be reversed because Shefet only describes the use of a stick with a frozen food product and not with a cooked food product. App. Br. 25‒26. Appellant argues that this description means that “while Tillis and Knipper et al. may be combinable in the abstract, Tillis is not properly combined with the Four Combined References [Shefet, Kula, Knipper, and Paparo] due to the inherent conflict between Shefet’s frozen popsicle and the temperature range of Tillis.” Id. Appeal 2013-009242 Application 11/379,608 9 For reasons we already discussed, we are not persuaded by this argument. In particular, we have concluded that the Examiner did not err in finding that the use of a stick to support a frozen food product would have suggested use of a stick to support a cooked food product to a person of ordinary skill in the art. Thus, we affirm the rejection of claim 25. Appellant has stipulated that claims 28 and 29 stand or fall with claim 25. App. Br. 24. We, therefore, also affirm the rejection of those claims as obvious over the combination of Shefet, Kula, Knipper, and Tillis, as evidenced by Paparo. Group 3 (Rejection 7). The Examiner rejected claims 40‒43 and 45 as unpatentable over the combination of Shefet, Kula, Knipper, and Heberle, as evidenced by Paparo. Non-Final Act. 11; Ans. 12‒15. Appellant has selected claim 40 as representative of this group of claims. App. Br. 26. Appellant first argues that this rejection should be reversed for reasons that we have already considered in our discussion of Group 1. Id. at 27. For the reasons set forth in our consideration of Appellant’s appeal with respect to Group 1, we are not persuaded by these arguments. Appellant also argues that Heberle “is not properly combinable with Shefet if Shefet is used for its popsicle aspect.” Id. As discussed above, we are not persuaded by this line of argument. Thus, we affirm the rejection of claim 40. Appellant has stipulated that claims 41‒43 and 45 stand or fall with claim 40. App. Br. 26. We, therefore, also affirm the rejection of those claims as obvious over the combination of Shefet, Kula, Knipper, and Heberle, as evidenced by Paparo. Group 4 (Rejection 6). The Examiner rejected claim 50 as unpatentable over the combination of Shefet, Kula, Knipper, and Plotkin, as evidenced by Paparo. Non-Final Act. 11; Ans. 11. Appeal 2013-009242 Application 11/379,608 10 Appellant first argues that this rejection should be reversed for reasons that we have already considered in our discussion of Group 1. App. Br. 28. For the reasons set forth in our consideration of Appellant’s appeal with respect to Group 1, we are not persuaded by these arguments. Appellant also argues that “Plotkin does not relate to cooking an egg product in a pressurized mold to form a shaped product defined by the mold cavity.” Id. at 29. We are not persuaded by this argument. The Examiner relies upon Plotkin for its description of an appropriate cooking temperature for an omelet. Ans. 11 (citing Plotkin 3, ¶ 5). The Examiner relies upon other references for the description of cooking the egg product in a pressurized mold. Thus, it is not necessary for Plotkin to describe or suggest other limitations of claim 50 for it to be properly used as part of the rejection. Furthermore, the Examiner correctly found that a person of ordinary skill in the art would have arrived at the temperature described in Plotkin through routine optimization. Ans. 25‒26. For the reasons set forth above, we affirm the rejection of claim 50 as obvious over the combination of Shefet, Kula, Knipper, and Plotkin, as evidenced by Paparo. Group 5 (Rejection 10). The Examiner rejected claim 51 as unpatentable over the combination of Shefet, Kula, Knipper, Plotkin, and Heberle, as evidenced by Paparo. Non-Final Act. 16‒17; Ans. 17. Appellant first argues that this rejection should be reversed for reasons that we have already considered in our discussion of Group 3. App. Br. 29. For the reasons set forth in our consideration of Appellant’s appeal with respect to Group 3, we are not persuaded by these arguments. Appellant also argues that the Examiner has not provided an adequate reason to combine Plotkin with Shefet, Kula, Knipper, Paparo, and Heberle. Appeal 2013-009242 Application 11/379,608 11 Id. at 30. We are not persuaded by this argument. The Examiner relies upon Plotkin for its description of an appropriate cooking temperature for an omelet. Ans. 11 (citing Plotkin 3, ¶ 5). The Examiner relies upon other references for the description of cooking the egg product in a pressurized mold. Thus, it is not necessary for Plotkin to describe or suggest other limitations of claim 51 for it to be properly used as part of the rejection. Furthermore, the Examiner correctly found that a person of ordinary skill in the art would have arrived at the temperature described in Plotkin through routine optimization. Ans. 25‒26. For the reasons set forth above, we affirm the rejection of claim 51 as unpatentable over the combination of Shefet, Kula, Knipper, Plotkin, and Heberle, as evidenced by Paparo. Group 6 (Rejection 8). The Examiner rejected claim 44 as unpatentable over the combination of Shefet, Kula, Knipper, Merkle, Plotkin, and Heberle, as evidenced by Paparo. Non-Final Act. 15; Ans. 15‒ 16. Appellant first argues that this rejection should be reversed for reasons that we have already considered in our discussion of Group 3. App. Br. 31. For the reasons set forth in our consideration of Appellant’s appeal with respect to Group 3, we are not persuaded by these arguments. Appellant also argues that the Examiner has not provided an adequate reason to combine Plotkin and Merkle with Shefet, Kula, Knipper, Paparo, and Heberle. Id. at 30. We are not persuaded by this argument. As the Examiner found, Plotkin and Merkle both describe conditions that can be used to cook eggs. A person of ordinary skill in the art, therefore, would have combined Plotkin and Merkle with the other references in this rejection because they provide guidance for appropriate cooking conditions for the Appeal 2013-009242 Application 11/379,608 12 eggs described in Knipper. Furthermore, the Examiner correctly found that a person of ordinary skill in the art would have arrived at the combination of temperature and pressure recited in claim 44 through routine optimization. Ans. 26‒27. Thus, we affirm the rejection of claim 44 as unpatentable over the combination of Shefet, Kula, Knipper, Merkle, Plotkin, and Heberle, as evidenced by Paparo. Group 7 (Rejection 4). The Examiner rejected claim 46 as unpatentable over the combination of Shefet, Kula, Knipper, Merkle, and Plotkin, as evidenced by Paparo. Non-Final Act. 9; Ans. 9‒10. Appellant first argues that this rejection should be reversed for reasons that we have already considered in our discussion of Group 1. App. Br. 32. For the reasons set forth in our consideration of Appellant’s appeal with respect to Group 1, we are not persuaded by these arguments. Appellant also argues that the Examiner has not provided an adequate reason to combine Plotkin and Merkle with Shefet, Kula, Knipper, Paparo, and Heberle. Id. at 33‒34. We are not persuaded by this argument. As the Examiner found, Plotkin and Merkle both describe conditions that can be used to cook eggs. A person of ordinary skill in the art, therefore, would have combined Plotkin and Merkle with the other references in this rejection because they provide guidance for appropriate cooking conditions for the eggs described in Knipper. Furthermore, the Examiner correctly found that a person of ordinary skill in the art would have arrived at the combination of temperature and pressure recited in claim 46 through routine optimization. Ans. 26‒27. Appeal 2013-009242 Application 11/379,608 13 Thus, we affirm the rejection of claim 46 as obvious over the combination of Shefet, Kula, Knipper, Merkle, and Plotkin, as evidenced by Paparo. Rejections 3, 5, and 9. As discussed above, Appellant does not provide any substantive argument for reversal of these rejections. We, therefore, summarily affirm the rejections of claims 39, 48, and 49. CONCLUSION For the reasons set forth above, we affirm the rejection of claims 24, 25, 27‒34, and 37‒51 of the ’608 Application. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED dm Copy with citationCopy as parenthetical citation