Ex Parte White et al

Patent Trial and Appeal Board

Nov 30, 2016

10903021 (P.T.A.B. Nov. 30, 2016)

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.
10/903,021 07/30/2004 Neal E. White WCB 3.0-037 3208
530 7590 12/02/2016
LERNER, DAVID, LITTENBERG,
KRUMHOLZ & MENTLIK
600 SOUTH AVENUE WEST
WESTFIELD, NJ 07090
EXAMINER
BECKER, DREW E
ART UNIT PAPER NUMBER
1792
NOTIFICATION DATE DELIVERY MODE
12/02/2016 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):
eOfficeAction @ ldlkm. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NEAL E. WHITE and KENNETH W. CASHION JR.1
Appeal 2015-007184
Application 10/903,021
Technology Center 1700
Before CHUNG K. PAK, JEFFREY T. SMITH, and
WESLEY B. DERRICK, Administrative Patent Judges.
DERRICK, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134(a) from the
Examiner’s maintained rejection of claims 1—3, 6—16, 19-24, 26, 53, 54, and
57.2 We have jurisdiction pursuant to 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, the real party in interest is Alliance Food
Equipment Processing, LLC. Appeal Brief filed February 19, 2015 (“App.
Br”), 1.
2 Non-Final Office Action entered September 5, 2014, 1.
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Application 10/903,021
CLAIMED SUBJECT MATTER
Appellants’ claimed invention is generally directed to a system and
method for manufacturing a frozen edible product. Spec. Abstract.
Claim 1 is illustrative:
1. A method for manufacturing a churned product having
between 5% and 10% milk fat on a manufacturing system
having a plurality of manufacturing stations, the manufacturing
stations including a continuous mixer and a freezer, the method
comprising:
preparing a mix of ingredients for the product;
providing a continuous supply of compressed air from a
compressed air source ;
continuously directing the mix and the compressed air
through a first conduit and into the continuous mixer;
creating an emulsion of the mix and the compressed air
in the continuous mixer;
directing the emulsion from the continuous mixer into the
freezer wherein the continuous mixer is connected by a second
conduit to the freezer;
partially freezing the emulsion in the freezer; and
selectively, continuously, and simultaneously
transmitting both a first portion of the partially frozen emulsion
from the freezer back into the first conduit, wherein the first
portion of the partially frozen emulsion is recirculated and
combines with the mix and compressed air in the first conduit
which is continuously directed into the continuous mixer, and a
second portion of the partially frozen emulsion to a further one
of the manufacturing stations, wherein the further
manufacturing stations do not include a cold extrusion process.
App. Br. 33 (Claims Appendix).
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REJECTIONS
The Examiner maintains the following rejections3:
I. Claims 1—3, 6—16, 19-24, 26, 53, 54, and 57 under 35 U.S.C.
§112, second paragraph as being indefinite for failing to particularly point
out and distinctly claim the subject matter that applicants regard as the
invention.
II. Claims 1-3, 6, 7, 9-12, 1^N16, 19, 20, 22-24, 53, 54, and 57
under 35 U.S.C. § 103(a) as obvious over Applicants’ Admitted Prior Art at
pages 1^4 of Appellants’ Specification and Figures 1—3 (“AAPA”), Swier
(US 5,692,392, issued December 2, 1997) (“Swier”), Wakeman (US
2,975,617, issued March 21, 1961) (“Wakeman”), and Martin, Jr. et al. (US
6,352, 734 Bl, issued March 5, 2002) (“Martin”).
III. Claims 8 and 21 under 35 U.S.C. § 103(a) as obvious over
AAPA, Swier, Wakeman, Martin, and Sullivan et al. (US 5,355,691, issued
October 18, 1994) (“Sullivan”).
IV. Claims 13 and 26 under 35 U.S.C. § 103(a) as obvious over
AAPA, Swier, Wakeman, Martin, and Kress et al. (US 5,615,559, issued
April 1, 1997) (“Kress”).
DISCUSSION
Having carefully reviewed the Examiner’s rejections in light of
arguments advanced by Appellants in their Appeal Brief and Reply Brief,4
we are not persuaded that the Examiner errs reversibly in concluding that
claims 1—3, 6—16, 19-24, 26, 53, 54, and 57 are unpatentable for
3 Examiner’s Answer entered June 1, 2015 (“Ans.”).
4 Reply Brief filed July 24, 2015 (“Reply Br.”).
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Application 10/903,021
obviousness, but we are persuaded that the Examiner errs in rejecting claims
1—3, 6—16, 19-24, 26, 53, 54, and 57 for indefmiteness. We add the
following.
Rejection I
The Examiner notes that independent claims 1, 14, 53, 54, and 57
require the further manufacturing stations, further processing, and
processes/systems recited in the claims to not include a cold extrusion
process, while dependent claims 11 and 24 recite that the further
manufacturing station is an extrusion system. Ans. 2—3. The Examiner
finds that the difference between the excluded “cold extrusion” and required
“extrusion system” is unclear because “cold” is a relative term, and it is
uncertain what “cold extrusion” entails. Id.
However, the Examiner does not carry the burden of showing that one
of ordinary skill in the art would not understand the scope and meaning of
“cold extrusion” recited in the claims. In re Oetiker, 977 F.2d 1443, 1445
(Fed. Cir. 1992) (“[T]he examiner bears the initial burden, on review of the
prior art or on any other ground, of presenting a prima facie case of
unpatentability”); Amgen, Inc. v. Chugai Pharm. Co., Ltd., 927 F.2d 1200,
1217 (Fed. Cir. 1991) (A claim is considered indefinite under 35 U.S.C.
§112, second paragraph, if it does not reasonably apprise those skilled in the
art of its scope). As Appellants correctly argue (App. Br. 10-11), the
Specification provides sufficient guidance to allow one of ordinary skill in
the art to understand that “cold extrusion” refers to slow churning that
“follows freezing of the ice cream in the continuous-process freezer.” Spec.
19. The Examiner does not establish that such slow churning is not well-
known in the art, and thus the Examiner does not adequately show or explain
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why the recitation of omitting cold extrusion, or slow churning, from the
claimed methods and systems renders the scope of the claims unclear.
Therefore, we reverse the Examiner’s rejection of claims 1—3, 6—16,
19-24, 26, 53, 54, and 57 under 35 U.S.C. § 112, second paragraph.
Rejection II
Claims 1, 7, 9-12, 14, 20, 22-24, 53, 54, and 57
Appellants effectively argue claims 1, 7, 9-12, 14, 20, 22—24, 53, 54,
and 57 as a group on the basis of claim 1, to which we limit our discussion.5
App. Br. 12-25, 28-29.
Relying on the disclosures of AAPA, Martin, Wakeman, and Swier,
discussed below, the Examiner concludes that
all [of] the claimed elements were known in the prior art and
one skilled in the art could have combined the elements as
claimed by known methods with no change in their respective
functions, and the combination would have yielded predictable
results to one of ordinary skill in the art at the time of the
invention.
Ans. 8.
Appellants argue in essence that each of the applied prior art
references—AAPA, Martin, Wakeman, and Swier—individually fail to
disclose a process for manufacturing a churned product having between 5%
and 10% milk fat that includes the step of selectively, continuously, and
simultaneously transmitting both a first portion of the partially frozen
emulsion from the freezer back into the first conduit, wherein the first
5 Although Appellants provide separate arguments for claim 14, the
arguments Appellants advance for claim 14 are essentially the same
arguments that Appellants make for claim 1.
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portion of the partially frozen emulsion is recirculated and combines with
the mix and compressed air in the first conduit which is continuously
directed into the continuous mixer. App. Br. 12—16.
Appellants further argue that the applied prior art references do not
disclose a process for manufacturing a churned product having between 5%
and 10% milk fat that does not include a slow churning or cold extrusion
process. Id. at 15—16, 18—19. Appellants contend that AAPA discloses that
such a product must be manufactured by a process that includes slow-
churning. Id. at 19. Appellants further contend, relying on two Declarations
of Neal White, dated January 29, 2013 (“first White Declaration”) and
August 21, 2013 (“second White Declaration”), that Martin discloses a
process for producing ice milk that incorporates reduced milk fat but does
not involve slow-churning, or recirculation as recited in claim 1, which
results in an inferior product that does not have the texture of a churned
product. App. Br. 15—16, 19.
Appellants contend that one of ordinary skill in the art seeking to
produce a high quality, low milk fat product, upon review of AAPA’s
disclosure of known technology for producing such a product utilizing slow
churning or cold extrusion, would not have been motivated to look to any
other technology as an alternative, and thus would not have been led to
incorporate a recycle stream as recited in claim 1 into the process of AAPA.
Id. at 17.
However, we agree with the Examiner that the combined disclosures
of the applied prior art reasonably would have led one of ordinary skill in the
art to modify the process of AAPA, as suggested by Martin, Wakeman, and
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Swier, to arrive at the method of claim 1 through no more than ordinary skill
and creativity.
As the Examiner correctly finds, AAPA discloses a conventional
system and process for producing ice cream having 10—16% milk fat that
involves pumping product mix and pressurized air into a conduit, where the
air mixes with the product mix, transmitting the product mix/air mixture
from the conduit into a continuous mixer that mechanically shears the
product mix/air mixture to create an emulsion, transmitting the emulsion into
a continuous-process freezer having a dasher that chums the emulsion while
a portion of the water in the mix is rapidly frozen, and pumping the partially-
frozen emulsion from the continuous-process freezer into a further
manufacturing station, such as an ingredient feeder, a package filler, or an
extmsion system. Ans. 3^4; Spec. 2—7.
AAPA discloses that quality ice cream has an even mixture of small
entrapped air cells, and also has an even mixture of small ice crystals and fat
globules. Spec. | 8. The Examiner correctly finds that AAPA discloses that
smaller ice crystals provide a richer, smoother and creamier texture to the ice
cream, and are produced by freezing the ingredient mix rapidly to a low
temperature in the continuous-process freezer. Ans. 6; Spec. 1 8.
AAPA further discloses that reduced-fat ice cream containing between
5% and 10% milk fat can be produced to have a texture and creaminess
similar to that of full-fat ice cream by adding an additional slow churning or
cold extmsion step to the conventional process for producing ice cream after
the step of freezing the emulsion in the continuous-process freezer. Spec.
19.
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As the Examiner acknowledges, AAPA does not disclose a device and
method for producing ice cream having a milk fat content of 5—10% that
includes simultaneously transmitting a first portion of the partially frozen
emulsion back to the first conduit where the compressed air, initial product
mixture, and recycled emulsion are combined in the first conduit. Ans. 4.
However, consistent with the Examiner’s findings, Martin discloses a
process for producing a creamy frozen dairy product having from about 4%
to about 16% milk fat that involves repeated agitation and mixing of
ingredients, and Martin exemplifies a product having 5—10% milk fat. Ans.
4; Martin col. 3,11. 57—60; col. 4,11. 8—14, 40-44; col. 8,1. 54—col. 9,1. 12.
The Examiner correctly determines that Martin’s disclosures indicate that
churned, frozen dairy products having 5—10% milk fat were conventionally
made at the time of Appellants’ invention without slow churning. Ans. 12.
Wakeman discloses an apparatus for the production of ice cream that
includes a refrigerated chamber 106 to which a first conduit 12 is connected
for introducing air into the chamber 10, and to which a second conduit 13 is
connected for introducing a mixture of liquid ice cream ingredients into the
chamber 10. Wakeman col. 1,11. 15—18; col. 2,11. 16—27; Figs. 1, 2.
Wakeman discloses that a dasher is mounted within the chamber 10 that
agitates the ingredients flowing through the chamber and causes the
introduced air to be effectively mixed into and uniformly distributed
throughout the liquid. Wakeman col. 2,11. 43—50. Wakeman discloses that
the apparatus further includes a discharge conduit 17 through which a first
portion of the partially frozen mixture passes after exiting the chamber 10,
6 Reference numerals used in the discussion of Wakeman refer to Figure 1 of
Wakeman.
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before continuing on to a packaging machine. Wakeman col. 2,11. 36-43.
Consistent with the Examiner’s findings, Wakeman further discloses that
discharge conduit 17 is also connected to a recirculation conduit 20 through
which a second portion of the partially frozen mixture that exits the chamber
10 passes before it reenters the conduit 13 where fresh ingredients are also
introduced, resulting in mixing of the fresh and partially frozen ingredient
mixtures in conduit 13 before they enter chamber 10. Ans. 5; Wakeman col.
2,11. 51—64. Wakeman discloses that the partially frozen mixture discharged
from chamber 10 that passes through conduit 20 has a temperature of
approximately 22-F, while the temperature of the fresh ingredient mix is
approximately 40-F, resulting in a temperature of approximately 27-F for the
admixture of the partially frozen and fresh ingredients. Wakeman col. 2,
11. 64—70. As the Examiner correctly finds, Wakeman discloses that
numerous advantages result from pre-cooling the fresh ingredients with the
partially frozen ingredients before introduction of the admixture into the
chamber 10, including more effective mixing of air into the liquid, providing
a greater and more uniform distribution of the air throughout the liquid
flowing through the chamber, which reduces the liquid’s density, and causes
it to be more efficiently cooled. Ans. 7; Wakeman col. 2,1. 70-col. 3,1. 9.7
7 The Examiner also finds in essence that Swier discloses a device and
method for making a soft frozen edible product that involves preparing a
mix of ingredients in a mixer, directing the mixture via a conduit to a freezer
where it is partially frozen, using a pump to continuously recirculate a first
portion of the partially frozen mixture from the freezer back to the mixer
through a recirculation line or conduit, and opening a diverting valve to
selectively dispense a second portion of the partially frozen mixture from the
freezer. Ans. 5.
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We find no definition or limiting description in Appellants’
Specification of a “churned product.” Therefore, AAPA’s disclosure of a
conventional process for producing ice cream that involves churning an
emulsion of ingredients in a continuous-process freezer with a dasher,
reasonably corresponds to a process for producing a “churned product,” as
does Martin’s disclosure of a process for producing a frozen dairy product
that involves repeated agitation and mixing of ingredients. In re ICON
Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (During
prosecution of patent applications, “the PTO must give claims their broadest
reasonable construction consistent with the specification. . . . Therefore, we
look to the specification to see if it provides a definition for claim terms, but
otherwise apply a broad interpretation.”).
In addition, Appellants do not dispute the Examiner’s finding that
neither AAPA’s conventional process (depicted in Appellants’ Figure 2), nor
Martin’s process for producing a frozen dairy product having 5—10% milk
fat, involves slow churning. Compare Ans. 11—12, 16 with Reply Br. 3^4.
Accordingly, we agree with the Examiner that Martin’s disclosures indicate
that churned, frozen dairy products having 5—10% milk fat were
conventionally produced at the time of Appellants’ invention without slow
churning. Ans. 12. Appellants’ arguments to the contrary, and the
unsupported assertions in the White Declaration that the product disclosed in
Martin is inferior and does not have the texture of a churned product, fail to
establish reversible error in the Examiner’s finding that Martin discloses
preparing churned, frozen dairy products having 5—10% milk fat without
slow churning, particularly in view of Martin’s disclosure that the product
has a creamy texture. Martin, col. 4,11. 40-44. In re De Blauwe, 736 F.2d
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699, 705 (Fed. Cir. 1984); In re Payne, 606 F.2d 303, 315 (CCPA 1979); see
also In re Greenfield, 571 F.2d 1185, 1189 (CCPA 1978); In re Pearson,
494 F.2d 1399, 1405 (CCPA 1974).
Because it was known in the art—as taught by AAPA—that ice cream
having an even mixture of small entrapped air cells, and an even mixture of
small ice crystals, has a rich, smooth, and creamy texture, Wakeman’s
disclosure that recirculating a partially frozen mixture of ice cream
ingredients discharged from a mixing/freezing chamber so that they mix
with, and pre-cool, fresh ingredients before the fresh ingredients enter the
chamber, results in the air introduced into the chamber being more
effectively mixed in and more uniformly distributed throughout the liquid
flowing through the chamber, and results in more efficient cooling of the
ingredient mixture, reasonably would have led one of ordinary skill in the art
seeking to produce reduced-fat frozen dairy products as taught by Martin to
modify the conventional process for producing a churned product disclosed
by AAPA to include a recirculation process as taught by Wakeman to
achieve the advantages taught by Wakeman.
In other words, one of ordinary skill in the art would have reasonably
expected that more effectively mixing the air into a mixture of ice cream
ingredients, more uniformly distributing the air throughout the ingredient
mixture, and more efficiently cooling the mixture, as achieved by
Wakeman’s recirculation process, would result in ice cream having 5—10%
milk fat as disclosed by Martin having a rich, smooth, and creamy texture, in
light of AAPA’s disclosure that rapidly-frozen ice cream having an even
mixture of small entrapped air cells, and an even mixture of small ice
crystals, has such a texture. Accordingly, one of ordinary skill in the art
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seeking to produce a frozen dairy product having 5—10% milk fat would
have been led to incorporate Wakeman’s recirculation process into AAPA’s
conventional process for producing a churned ice cream product to achieve a
rich, smooth, and creamy texture for the product, and the skilled artisan
would not have had a reason to utilize slow churning or cold extrusion to
achieve such benefits, as recited in claim 1. Accordingly, Appellants’
arguments against the references individually, the statements in the White
Declarations regarding Martin, and Appellants’ assertion that one of
ordinary skill in the art would not have been led to incorporate a recycle
stream as recited in claim 1 into the process of AAPA, are unpersuasive of
reversible error.
Appellants further argue that even if the applied prior art were
combined, the combined disclosures would “not disclose the invention as
claimed” in which “the first conduit combines the mix, compressed air and
the first portion of the partially frozen emulsion from the freezer to be
directed, once combined, into the mixer.” App. Br. 17—18. Appellants
contend that AAPA does not disclose a recirculation process, Swier’s
process does not include the introduction of compressed air, Swier’s
recirculation stream feeds directly into the storage chamber, and Martin does
not remedy these deficiencies. Id. at 18. Appellants further argue that
Wakeman discloses a separate feed stream 12 for the addition of air directly
into chamber 10 and, therefore, the air is not combined in a first conduit with
new and recycled mix such that the three combined elements are fed into the
chamber together. Id. Appellants contend that the Examiner’s rejection is,
therefore, based on impermissible hindsight reconstruction of the claimed
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process achieved by “cherry picking” random elements from the applied
prior art. App. Br. 19.
However, as discussed above, the combined disclosures of the applied
prior art would have led one of ordinary skill in the art seeking to produce a
churned product having 5—10% milk fat as disclosed by Martin to
incorporate a recirculation process into AAPA’s conventional process so that
the resulting product would have a rich, smooth, and creamy texture as
taught by Wakeman. In addition, one of ordinary would have understood
that the added air could be provided directly to the mixing chamber
containing the recycled partially frozen mix and fresh mix as disclosed by
Wakeman, or provided into the conduit to which the product mix is also
added as disclosed by AAPA, with a reasonable expectation of successfully
forming the same mixture or substantially the same mixture of air and
ingredients in either case. This is particularly manifest in view of
Wakeman’s disclosure that effectively mixing the air into and uniformly
distributing the air throughout the ingredient mixture with the dasher occurs
in the mixing chamber, rather than in the conduit, reasonably indicates that
adding air either to the chamber or to the conduit would not materially affect
this process. Appellants’ arguments are, therefore, unpersuasive of
reversible error.
Appellants further argue that White Declarations, including Exhibits
B—D, provide evidence of the commercial success of the C.R.E.A.M.®
Freezer, which, according to Appellants, is the commercial embodiment of
the invention of claim 1. App. Br. 20—22. The White Declarations state that
the C.R.E.A.M.® Freezer is used by the vast majority of major ice cream
manufacturers worldwide, including Edy’s and Dreyer’s (both Nestle
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companies), Breyers (Unilever), Smith Dairy, Creamy Creations (HEB),
Friendly’s and Kemps, as supposedly demonstrated by Exhibits B and C.
First White Declaration 16; Second White Declaration | 6.
In addition, the second White Declaration states that Exhibit D
provides a list of manufacturers that have purchased the C.R.E.A.M.®
Freezer from its debut in December 2005 through February 2013, which,
according to the Declarant, represent many of the leading ice cream
manufacturers in the world, and Exhibit D lists the revenue generated from
the sales. Second White Declaration | 8.
However, although Exhibits B and C describe various “churned”
products, Appellants do not provide any evidence indicating that the
products were produced by the C.R.E.A.M.® Freezer, rather than the prior
art “slow churned” process. App. Br. 20-22. In addition, Appellants do not
provide any evidence indicating the portion of the market represented by the
sales of the C.R.E.A.M.® Freezer set forth in Exhibit D. Id.
Moreover, to the extent that the C.R.E.A.M.® Freezer has enjoyed
commercial success, Appellants do not provide sufficient evidence to
demonstrate that the success was due to the merits of the method of claim 1.
Id. In other words, Appellants do not establish that the commercial success
of the C.R.E.A.M.® Freezer, to the extent it occurred, was due to features of
the method of claim 1, rather than to unclaimed features of the machine, or
other factors such as advertising and marketing. In re Huang, 100 F.3d 135,
140 (Fed. Cir. 1996) (Appellants must offer proof that the asserted
commercial success occurred in the relevant market and “that the sales were
a direct result of the unique characteristics of the claimed invention—as
opposed to other economic and commercial factors unrelated to the quality
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of the patented subject matter.”); Geo. M. Martin Co. v. Alliance Machine
Systems Int’lLLC, 618 F.3d 1294, 1304 (Fed. Cir. 2010) (“The commercial
success of a product is relevant to the non-obviousness of a claim only
insofar as the success of the product is due to the claimed invention.”).
The first White Declaration also states that because of the obvious
success of low-fat, churned products in the marketplace, the success of the
C.R.E. A.M.® Freezer demonstrates that a long-felt need was filled by the
C.R.E.A.M.® Freezer. First White Declaration | 8.
However, Appellants do not supply sufficient evidence to demonstrate
that there was a long-felt need, i.e., an unsolved problem, which was solved
by their invention. App. Br. 20-22; In re Mixon, 470 F.2d 1374, 1377
(CCPA 1973). Appellants do not show that the solution to the problem of
developing a low-fat ice cream having a rich, creamy texture would not have
been apparent to one of ordinary skill in the art from the teachings of the
applied prior art, particularly AAPA. App. Br. 11—22; In re Gershon, 372
F.2d 535, 538—39 (CCPA 1967) (Establishing long-felt need requires
objective evidence showing existence of a persistent problem recognized by
those of ordinary skill in the art for which a solution was not known.). In
fact, AAPA discloses that the slow churning or cold extrusion process was
known in the art to be used to produce low-fat ice cream having a texture
similar to that of ice cream having a higher percentage of milk fat. Spec.
19; Newell Cos., Inc. v. Kenney Mfg. Co., 864 F.2d 757, 768 (Fed. Cir.
1988) (The long-felt need must not have been satisfied by another before the
invention by applicant.).
Moreover, even assuming that the C.R.E.A.M.® Freezer has enjoyed
commercial success with a nexus to the method of claim 1, and has met a
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long-felt need, the evidence of obviousness discussed above outweighs the
evidence of non-obviousness. Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348,
1372 (Fed. Cir. 2007) (Evidence of unexpected results and other secondary
considerations will not necessarily overcome a strong prima facie showing
of obviousness.); see also, e.g., In re Nolan, 553 F.2d 1261, 1267 (CCPA
1977) (“Considering all of the evidence, we are not persuaded that the
evidence of the unexpected higher luminous efficiency and lower peak
discharge current rebuts the strong showing of obviousness.”).
We accordingly sustain the Examiner’s rejection of claims 1, 7, 9-12,
14, 20, 22-24, 53, 54, and 57 under 35 U.S.C. § 103(a).
Claims 2, 3, 6, 15, 16, and 19
Appellants rely on arguments presented for claims 2, 3, 15, and 16 in
asserting the patentability of claims 6 and 19, and we accordingly limit our
discussion to claims 2, 3, 15, and 16. App. Br. 28.
Appellants argue that Martin does not disclose a process for making a
churned product, much less a churned frozen dairy product, as recited in
claims 2 and 15. Id. at 25—26. Appellants further argue that one of ordinary
skill in the art would have understood that Martin discloses a process for
making ice milk, rather than a process for making churned ice cream, as
recited in claims 3 and 16. Id. at 27.
However, as discussed above, we find no definition or limiting
description in Appellants’ Specification of a “churned” product. Therefore,
Martin’s disclosure of a process for producing a creamy frozen dairy product
that involves repeated agitation and mixing of ingredients reasonably
corresponds to a process for producing a “churned” frozen dairy product.
Martin col. 3,11. 57—60; col. 4,11. 8—14, 40-44. In addition, although
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Appellants argue that one of ordinary skill in the art would understand
Martin to disclose preparation of ice milk rather than churned ice cream,
Appellants fail to provide persuasive evidence establishing that one of
ordinary skill in the art would not have understood Martin’s churned,
creamy frozen dairy product having 5—10% milk fat to be ice cream. App.
Br. 25—27. Appellants’ unsupported arguments to that effect cannot take the
place of evidence. De Blauwe, 736 F.2d at 705; Payne, 606 F.2d at 315; see
also Greenfield, 571 F.2d at 1189; Pearson, 494 F.2d at 1405.
We accordingly sustain the Examiner’s rejection of claims 2, 3, 6, 15,
16, and 19 under 35 U.S.C. § 103(a).
Rejection IV
The Examiner acknowledges that AAPA, Martin, Wakeman, and
Swier do not disclose a diverting valve that diverts a first portion of the
partially frozen mix of ingredients to the first conduit and diverts a second
portion to the further manufacturing station. Ans. 9. The Examiner finds
that Kress discloses a method and apparatus for making frozen confections
that utilizes a three-way diverting valve to divert a first portion of frozen
product for recirculation and a second portion of frozen product to further
processing stations. Id. The Examiner concludes that it would have been
obvious to one of ordinary skill in the art at the time of the invention to
incorporate a diverting valve as disclosed in Kress into the method of
AAPA, modified as suggested by Martin, Wakeman, and Swier, because all
of the references are directed to methods of making frozen confections, and
a three-way diverting valve would have provided more accurate and precise
control of flow parameters. Ans. 9—10.
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Appellants argue that Kress’ diverting valve causes a flow of product
to be alternated from one path or another, and Appellants contend that Kress,
therefore, does not disclose or suggest simultaneously transmitting a first
portion of frozen emulsion back to a first conduit while transmitting a
second portion of frozen emulsion to a further manufacturing station, as
required by claims 13 and 26. App. Br. 29-30. Appellants also contend that
Kress does not provide a reason why such simultaneous flow to different
destinations would have been desirable. Id. at 30—31.
However, Appellants’ arguments are unpersuasive of reversible error
because they fail to consider Kress’ disclosures as a whole. Kress discloses
an apparatus and method for recirculating a processed frozen product, such
as ice cream, that utilizes a divert valve. Kress col. 2,1. 65—col. 3,1. 1;
col. 3,11. 12—16; col. 4,11. 10-12. Kress discloses that “the processed
product may selectively be recycled back to the freezing cylinder . . .
Alternatively, the divert valve 62 may be set to supply the frozen product to
further processing stations . . .” Kress col. 4,11. 14—19 (emphasis added).
Kress’ use of “may” indicates that utilizing the diverting valve to send
product to either the freezing cylinder or further processing stations is an
exemplary embodiment of Kress’ invention, and is not a required aspect of
Kress’ method. Contrary to Appellants’ arguments, Kress’ disclosures are
not limited to this exemplary embodiment. Kress reasonably teaches use of
a diverting valve providing simultaneous flow. In re Preda, 401 F.2d 825,
826 (CCPA 1968) (“[I]t is proper to take into account not only specific
teachings of the reference but also the inferences which one skilled in the art
would reasonably be expected to draw therefrom.”); see also In re Boe, 355
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Application 10/903,021
F.2d 961, 965 (CCPA 1966) (Disclosures in a prior art reference “must be
evaluated for what they fairly teach one of ordinary skill in the art.”).
In addition, as discussed above, Wakeman’s disclosures reasonably
suggest simultaneously sending portions of partially frozen ice cream
ingredients through a recirculation conduit to a mixing/freezing chamber and
through a discharge conduit. Wakeman col. 2,11. 36-43, 51—65.
Accordingly, we agree with the Examiner that the combined disclosures of
the applied prior art as a whole reasonably would have suggested
incorporating a diverting valve such as reasonably taught by Kress into the
method of AAPA modified as suggested by Martin, Wakeman, and Swier to
more precisely control the flow of partially frozen ice cream ingredients.
We, accordingly, sustain the Examiner’s rejection of claims 13 and 26
under 35 U.S.C. § 103(a).
Rejection III
We summarily affirm the Examiner’s rejection of claims 8 and 21
under 35 U.S.C. § 103(a) because Appellants do not contest this rejection.
App. Br. 10-32; 37 C.F.R. § 41.37(c)(l)(iv) (requiring that “arguments shall
explain why the examiner erred as to each ground of rejection . . . [and that]
any arguments or authorities not included in the appeal brief will be refused
consideration by the Board”); see also Manual of Patent Examining
Procedure (MPEP) § 1205.02 (9th ed., Mar. 2014) (“If a ground of rejection
stated by the examiner is not addressed in the appellant’s brief, appellant has
waived any challenge to that ground of rejection and the Board may
summarily sustain it, unless the examiner subsequently withdrew the
rejection in the examiner’s answer.”).
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Appeal 2015-007184
Application 10/903,021
DECISION
In view of the foregoing, we AFFIRM the Examiner’s rejections of
claims 1—3, 6—16, 19-24, 26, 53, 54, and 57 under 35 U.S.C. § 103(a), but
REVERSE the Examiner’s rejection of claims 1—3, 6—16, 19-24, 26, 53, 54,
and 57 under 35 U.S.C. § 112, second paragraph.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1).
AFFIRMED
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