Ex Parte Scholz et al

Patent Trial and Appeal BoardAug 8, 2017

12937536 (P.T.A.B. Aug. 8, 2017)

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. 12/937,536 06/01/2011 Martin Scholz 9610-67651-US 3386 109813 7590 08/08/2017 Fitch, Even, Tabin & Flannery, LLP 120 South LaSalle Street Suite 1600 Chicago, IL 60603-3406 EXAMINER DICUS, TAMRA ART UNIT PAPER NUMBER 1791 MAIL DATE DELIVERY MODE 08/08/2017 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 MARTIN SCHOLZ, DEAN A. LIPPOLD, and SATWINDER S. PANESAR ____________ Appeal 2016-001712 Application 12/937,536 Technology Center 1700 ____________ Before MARK NAGUMO, JEFFREY B. ROBERTSON, and JEFFREY R. SNAY, Administrative Patent Judges. ROBERTSON, Administrative Patent Judge. DECISION ON APPEAL Appeal 2016-001712 Application 12/937,536 2 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1, 3, 4, 7, 8, 10–12, and 14–20.1 (App. Br. 5.) We have jurisdiction pursuant to 35 U.S.C. § 6(b). We summarily AFFIRM the Examiner’s decision to reject claims 1, 3, 4, 7, 8, 10–12, and 14–16 under the doctrine of non-statutory obviousness- type double patenting. However, we REVERSE the Examiner’s decision to reject the claims 1, 3, 4, 7, 8, 10–12, and 14–20 as obvious over the prior art of record. THE INVENTION Appellants state that the invention relates to coffee and creamer compositions, and in particular a multi-layered drink. (Spec. 1, ll. 3–4; 7, ll. 1–6.) Claim 1, the only independent claim on appeal, reproduced below, is representative of the appealed subject matter. 1. A layered coffee beverage comprising: instant coffee; a creamer; confectionery particles having a size of at least 1 mm; wherein the confectionery particles comprise: a chocolate part having a density of greater than 1 g/cm3; and a non-chocolate part having a density of less than 1 g/cm3; 1 Claims 2, 5, 6, 9, and 13 have been canceled. (Appeal Brief filed March 26, 2015, hereinafter “App. Br.,” Claims Appendix.) Appeal 2016-001712 Application 12/937,536 3 wherein the non-chocolate part comprises a toffee, fudge, biscuit or nougat; wherein the instant coffee, the creamer, and the confectionery particles form the layered coffee beverage with a bottom layer formed by the chocolate part, a top layer formed by the non-chocolate part, and a middle layer formed by the instant coffee positioned between the bottom layer and the top layer. THE REJECTIONS The Examiner rejected claims 1, 3, 4, 7, 8, 10–12, and 14–20 as follows: I. claims 1, 3, 4, 7, 8, 10–12, and 14–16 on the ground of non- statutory obviousness-type double patenting over claims 1–19 of Massey2 in view of Toblerone;3 II. claims 1, 3, 7, 8, 10–12, 14, and 20 under 35 U.S.C. § 103(a) as obvious over Mickowski4 as evidenced by Sigma5 in view of Roberts,6 Rabinovitch,7 Devine,8 and Clara;9 2 U.S. Patent 8,529,973 B2 issued September 10, 2013. 3 TOBLERONE – Chocolate – The TOBLERONE taste experience dated January 30, 2014, www.toblerone.com/toblerone1/page?siteid=toblerone1- prd&locale=usen1&PagecRef=629. 4 U.S. Patent 6,207,206 B1 issued March 27, 2001. 5 Sigma-Aldrich (R) Particle Size Conversion chart dated March 15, 2012, http://wayback.archive.org/web/*/http://www.sigmaaldrich.com/chemistry/st ockroom-reag.... 6 WO 01/80660 A1 published November 1, 2001. 7 U.S. Patent 7,232,584 B2, issued June 19, 2007. 8 U.S. Patent 6,737,098 B1, issued May 18, 2004. 9 Latte Macchiato – 3 Layered Coffee September 23, 2014, http://www.food.com/recipeprint.do?rid=58617. Appeal 2016-001712 Application 12/937,536 4 III. claim 4 under 35 U.S.C. § 103(a) as obvious over Mickowski as evidenced by Sigma in view of Roberts, Rabinovitch, Devine, Clara, and Dubberke;10 IV. claims 15 and 16 under 35 U.S.C. § 103(a) as obvious over Mickowski as evidenced by Sigma in view of Roberts, Rabinovitch, Devine, Clara, and Hachiya;11 and V. claims 17–19 under 35 U.S.C. § 103(a) as obvious over Mickowski as evidenced by Sigma in view of Roberts, Rabinovitch, Devine, Clara, Hachiya, and Wragg.12 (Examiner’s Answer entered September 15, 2015, hereinafter “Ans.” 4–13.) Obviousness Double Patenting Appellants do not present any substantive arguments with respect to the rejection of claims 1, 3, 4, 7, 8, 10–12, and 14–16 as unpatentable for obviousness double patenting over claims 1–19 of Massey in view of Toblerone. (App. Br. 30.) Accordingly, we summarily affirm the Examiner’s rejection of claims 1, 3, 4, 7, 8, 10–12, and 14–16. 10 U.S. Patent 6,399,133 B2, issued June 4, 2002. 11 EP 0 494 384 A2, published July 15, 1992. 12 U.S. Patent 6,838,110 B2, issued January 4, 2005. Appeal 2016-001712 Application 12/937,536 5 Obviousness Rejections over Prior Art Claims 1, 3, 7, 8, 10–12, 14, and 20 ISSUE The Examiner found that Mickowski discloses a “layered coffee beverage composition” including instant coffee, a creamer, and confectionary particles comprising chocolate having sizes falling within Appellants’ range of at least 1 mm. (Ans. 5.) The Examiner relied on Roberts as disclosing a chocolate part having non-chocolate confectionary particles having a density greater than 1 g/cm3. (Id. at 6.) The Examiner relied on Rabinovitch as disclosing a non-chocolate part with a nougat core having a density of less than 1 g/cm3 coated in chocolate for maintaining the shape and having variation of density and texture. (Id. at 6–7.) Further, the Examiner pointed to Devine as disclosing a multilayered coffee drink having layers in which coffee is the bottom or middle layer and cocoa is disclosed as a top layer, and stated that the ingredients could be interchanged based on which layer one would like to taste first. (Id. at 7.) The Examiner found that Mickowski does not explicitly teach that coffee forms a middle layer, and pointed to Clara as disclosing a three-layered beverage, where coffee is in the middle layer, and there is an upper foam layer as well as a lower milk layer. (Id. at 7–8.) The Examiner stated that the combination of ingredients would form a layered beverage as claimed when diluted with water, because the ingredients would have the same densities and sizes, and would be expected to function in the way claimed. (Id. at 7.) The Examiner concluded that it would have been obvious to have modified the composition of Mickowski, Roberts, and Rabinovitch to form a Appeal 2016-001712 Application 12/937,536 6 three-layered beverage as claimed in view of the disclosures of Devine and Clara depending upon the desired ordered taste. (Id. at 8.) The Examiner stated also that it is well known that with respect to a non-chocolate top layer, to sprinkle candy as a garnish. (Id. at 8.) Appellants contend, inter alia, that Mickowski fails to disclose a layered beverage as recited in the claims, but instead Mickowski discloses a uniform beverage. (App. Br. 18.) Appellants argue that Mickowski teaches away from a layered beverage and as a result, it would not have been obvious to combine the prior art in the manner set forth in the rejection. (Id. at 18–19.) In this regard, Appellants contend that the Examiner’s rationale is based on hindsight. (Id. at 19.) The dispositive issue is: Did the Examiner reversibly err in determining that the prior art renders a layered coffee beverage as recited in the claims? DISCUSSION After careful review of the prior art of record, we agree with Appellants that Mickowski does not disclose a layered coffee beverage. In particular, as pointed out by Appellants, Mickowski discloses a variegated coffee product without significant particle segregation. (App. Br. 18; Mickowski col. 1, l. 67 – col. 2, l. 5; col. 2, ll. 17–19, col. 6, ll. 22–23.) Additionally, Mickowski expressly discloses (emphasis added): “Controlling the particle size distribution of the respective agglomerates also enhances the variegated appearance of the product and prevents significant segregation of the two colored portions of agglomerates into two distinct phases.” (Col. 3, ll. 4549.) Appeal 2016-001712 Application 12/937,536 7 Thus, contrary to the Examiner’s findings, Mickowski does not disclose a layered beverage—rather Mickowski expressly desires to prevent layered beverages. Indeed, Mickowski’s disclosure of the sizing and combining of dried agglomerated particles further illustrates this objective, as Mickowski emphasizes that the particles are selected to form a substantially uniform appearance. (Col. 8, ll. 7–44.) Devine and Clara, while both directed to layered coffee beverages, do not provide sufficient disclosures to lead one of ordinary skill in the art to modify Mickowski to achieve the layered beverage recited in the claims in view of the express disclosure and purpose for the beverages disclosed in Mickowski. Thus, notwithstanding the fact that the additionally cited prior art such as Rabinovitch discloses confectionary particles greater than 1 mm as recited in claim 1 in the form of confectionary centers with a spherical shape made of nougat (density 1 g/cm3) having a diameter of 15 mm and chocolate layers from about 0.5 mm to 4 mm (col. 1, ll. 66–67; col. 4, ll. 23–24 and 40–67), there is insufficient reasoning on this record to modify Mickowski to incorporate such particles for the reasons discussed above. Accordingly, we reverse the Examiner’s decision to reject claims 1, 3, 7, 8, 10–12, 14, and 20 as obvious over the prior art of record. Claims 4 and 15–19 The rejections of claims 4 and 15–19 rely on the same based combination of references as discussed above. The additionally cited prior art references, Dubberke, Hachiya, and Wragg do not remedy the deficiencies discussed above. Accordingly, for the reasons previously discussed, we reverse the Examiner’s decision to reject claims 4 and 15–19. Appeal 2016-001712 Application 12/937,536 8 ORDER We summarily affirm the Examiner’s decision rejecting claims 1, 3, 4, 7, 8, 10–12, and 14–16 on the ground of non-statutory obviousness-type double patenting over claims 1–19 of Massey in view of Toblerone. However, we reverse the Examiner’s decision to reject claims 1, 3, 4, 7, 8, 10–12, and 14–20 under 35 U.S.C. § 103(a) as obvious over the prior art of record. 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-IN-PART