Ex Parte Pinchuk

Patent Trial and Appeal Board

Jul 28, 2015

11379608 (P.T.A.B. Jul. 28, 2015)

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
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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).
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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).
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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).
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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-
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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:
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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
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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.
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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.
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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.
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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
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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.
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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