Ex Parte Townsend et al

Patent Trial and Appeal BoardJan 4, 2019

11418457 (P.T.A.B. Jan. 4, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 11/418,457 05/05/2006 48940 7590 01/07/2019 FITCH EVEN TABIN & FLANNERY, LLP 120 SOUTH LASALLE STREET SUITE 2100 CHICAGO, IL 60603-3406 FIRST NAMED INVENTOR Gerald William Townsend 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. 1410-137471-US 8747 EXAMINER BEKKER, KELLY JO ART UNIT PAPER NUMBER 1791 MAIL DATE DELIVERY MODE 01/07/2019 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 GERALD WILLIAM TOWNSEND, DAVID JOHN FELLOWES, CAROLINE EMMA CLARKE, and SIMON JAMES WALTER SHAW Appeal2018-002042 Application 11/418,457 Technology Center 1700 Before TERRY J. OWENS, MICHAEL P. COLAIANNI, and CHRISTOPHER C. KENNEDY, Administrative Patent Judges. OWENS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The Appellant (H.J. Heinz Company Brands LLC) appeals under 35 U.S.C. Â§ 134(a) from the Examiner's rejection of claims 1-3, 5-16, 26- 28, and 34--37. We have jurisdiction under 35 U.S.C. Â§ 6(b). The Invention The claims are to a soup concentrate product. Claim 1 is illustrative: 1. A retorted or heat treated soup concentrate product compnsmg: a sealed pouch container, a single serving volume of liquid soup concentrate, disposed and retorted or heat treated within the sealed container, and dilutable, after being expressed, poured, or Appeal2018-002042 Application 11/418,457 otherwise removed from the container once the sealed container is opened, by a volume of boiling or near boiling water greater than the volume of liquid soup concentrate to form a ready to serve soup without further heating, wherein the liquid soup concentrate comprises a food stuff or food stuff flavoring, or both, that has not been processed to a dry powder form, the concentrate within the sealed container has a weight of from 50 g to 100 g, and the soup has a single serving volume less than 400 ml consumable immediately after dilution. Taku (as translated) Anema The References JP 52-020199 A EP O 012 465 Al Feb. 15, 1977 June 25, 1980 Norman N. Potter & Joseph H. Hotchkiss, Food Science 138, 139, 152, 153, 478 (Chapman & Hall, 5th ed. 1995) (hereinafter Potter). Kay Cooksey, Portable Packaging I--4 (New Tech., June 2000), https://www.naturalproductsinsider.com/articles/2000/06/portable- packaging.aspx (hereinafter Cooksey). The Rejections The claims stand rejected as follows: claims 1-3, 5-16, 26-28, and 34--37 under 35 U.S.C. Â§ I03(a) over Anema in view of Taku, Potter, and Cooksey, claims 6 and 34--36 under 35 U.S.C. Â§ 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the Appellant regards as the invention, and claims 8 and 9 under 35 U.S.C. Â§ 112, first paragraph, as failing of comply with the enablement requirement. 1 1 The Examiner withdraws a rejection of claim 1-3, 5, 7-16, 26-28, and 37 under 35 U.S.C. Â§ 112, second paragraph, in the Examiner's Answer (Ans. 2). 2 Appeal2018-002042 Application 11/418,457 OPINION We affirm the rejection under 35 U.S.C. Â§ 103(a) and reverse the rejections under 35 U.S.C. Â§ 112, first and second paragraphs. Rejection under 35 US.C. Â§ 103(a) The Appellant argues the claims as a group (App. Br. 20). We therefore limit our discussion to one claim, i.e., claim 1, which is the sole independent claim. Claims 2, 3, 5-16, 26-28, and 34--37 stand or fall with that claim. See 37 C.F.R. Â§ 4I.37(c)(l)(iv) (2012). Anema discloses "a process for producing ambient stable aqueous concentrates containing starch, which on dilution with water or an aqueous liquid reconstitute into a homogeneous, lump-free, thick soup, sauce, gravy, dessert or beverage" (p. 1, 11. 1--4). Exemplified soup concentrates are filled into containers and pasteurized, and are reconstituted into lump-free soup by diluting 41 or 42 g of concentrate with 200 ml of boiling water in a bowl and gently stirring (Examples 1, 2). Cooksey discloses soups in single-serve pouches and teaches that "[p ]ortable packages should have the following elements in common: allow one-handed access, provide a single serving size, require minimal assembly, need little or no cooking, and eliminate the need for utensils or a level eating surface" (p. 2). Taku sterilizes (retorts) foodstuffs at high temperature and pressure while they are sealed in a packaging bag (p. 2). Potter discloses that "[ fJood packaging should have features which make the product easier to utilize and add convenience" (p. 478) and can contain "an amount to be used at a single time like most canned foods" (id.). 3 Appeal2018-002042 Application 11/418,457 The Appellant argues that Cooksey's disclosure that portable packages should allow one-handed access and require minimal assembly (p. 2) and Potter's disclosure that food packaging should have features that make the product easier to use and add convenience (p. 478) teach away from a liquid soup concentrate product which must be removed from its container and diluted and, therefore, necessarily is less convenient to use than soup at a ready-to-eat concentration (App. Br. 14--15, 17; Reply Br. 4). That argument is not well taken because the Appellant does establish that one of ordinary skill in the art would have considered those disadvantages to render a packaged soup concentrate unsuitable for use. The Appellant argues that "the cited combination of references not only fails to disclose or suggest a product as claimed that comprises a single serving volume of soup concentrate in a container, but also fails to disclose or suggest a product as claimed that comprises any volume of soup concentrate product disposed in a pouch" (App. Br. 18). Anema reconstitutes 41 or 42 g of soup concentrate, which appears to be a single serving (Examples 1, 2). One of ordinary skill in the art, through no more than ordinary creativity, would have adjusted the single serving size to amounts including 50-100 g based upon the desired amount to be served. Due to the compositional similarity of soup and soup concentrate, Cooksey' s disclosure of a pouch as a soup's single serving container (p. 2) would have led one of ordinary skill in the art, through no more than ordinary creativity, to likewise use a pouch as a soup concentrate' s single serving container. See KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) ("A person of ordinary skill is also a person of ordinary creativity, not an automaton"). In 4 Appeal2018-002042 Application 11/418,457 making an obviousness determination one "can take account of the inferences and creative steps that a person of ordinary skill in the art would employ." KSR, 550 U.S. at 418. Thus, we are not persuaded of reversible error in the rejection under 35 U.S.C. Â§ 103(a). Rejection under 35 USCÂ§ 112, second paragraph "[T]he indefiniteness inquiry asks whether the claims 'circumscribe a particular area with a reasonable degree of precision and particularity."' Marley Mouldings Ltd. v. Milrron Industries Inc., 417 F.3d 1356, 1359 (Fed. Cir. 2005) (quoting In re Moore, 439 F.2d 1232, 1235 (CCPA 1971)). The Examiner concludes that "suitable starch and/or starch derivative" in claims 6 and 34 and "suitable fruit and/or vegetable fiber" in claims 6, 35, and 36 are unclear because it is unknown which starches, starch derivatives, fruits and vegetable fibers would be suitable (Ans. 3). That Examiner's reasoning pertains to enablement rather than claim clarity. The ordinary meaning of "suitable" is "adapted to a use or purpose."2 The Appellant's claim term "suitable" indicates that the starch, starch derivative, fruit and vegetable fiber are adapted to use in the claimed soup concentrate product. We therefore reverse the rejection under 35 U.S.C. Â§ 112, second paragraph. Rejection under 35 USCÂ§ 112,first paragraph, enablement requirement A specification complies with the 35 U.S.C. Â§ 112, first paragraph enablement requirement if it allows those of ordinary skill in the art to make 2 Merriam-Webster's Collegiate Dictionary 1249 (11th ed. 2003). 5 Appeal2018-002042 Application 11/418,457 and use the claimed invention without undue experimentation. See In re Wright, 999 F.2d 1557, 1561 (Fed. Cir. 1993); Atlas Powder Co. v. E.I. du Pont De Nemours & Co., 750 F.2d 1569, 1576 (Fed. Cir. 1984 The Examiner concludes that the Appellant's Specification does not provide an enabling disclosure for "lump free soup" because it asks "processing questions, including which ingredients are needed for cooking, how well ingredients will integrate (fat/lumping/sink/float), how thick the mix will be after each ingredient addition (try to thicken late) ... however no guidance is given with the parameters needed to achieve the claimed concentrate" (Ans. 3). The Examiner does not provide evidence that one of ordinary skill in the art would have needed additional disclosure in the Appellant's Specification to make lump free soup. Nor does the Examiner address Anema's Examples land 2 wherein lump free soup is obtained by diluting 41 or 42 g of soup concentrate with 200 ml of boiling water in a bowl and gently stirring. Accordingly, we reverse the rejection under 35 U.S.C. Â§ 112, first paragraph, enablement requirement. DECISION The claims rejection of claims 1-3, 5-16, 26-28, and 34--37 under 35 U.S.C. Â§ I03(a) over Anema in view of Taku, Potter, and Cooksey is affirmed. The rejections of claims 6 and 34--36 under 35 U.S.C. Â§ 112, second paragraph, and claims 8 and 9 under 35 U.S.C. Â§ 112, first paragraph, enablement requirement are reversed. The Examiner's decision is affirmed. 6 Appeal2018-002042 Application 11/418,457 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a). AFFIRMED 7