Uwe Marder et al.

Patent Trials and Appeals Board

Dec 5, 2019

13254572 - (D) (P.T.A.B. Dec. 5, 2019)

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.
13/254,572 02/17/2012 Uwe Marder 9610-97212-US 9784
109813 7590 12/05/2019
Fitch, Even, Tabin & Flannery, LLP
120 South LaSalle Street
Suite 2100
Chicago, IL 60603-3406
EXAMINER
PRAKASH, SUBBALAKSHMI
ART UNIT PAPER NUMBER
1793
MAIL DATE DELIVERY MODE
12/05/2019 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 UWE MARDER, KLAUS KEMPTER, GABRIELE KOPP,
ERICH LAUDENBACH, OLIVER SCHARR, and ETIENNE PIRNAY
____________________

Appeal 2018-003231
Application 13/254,572
Technology Center 1700
____________________

Before BEVERLY A. FRANKLIN, N. WHITNEY WILSON, and
SHELDON M. McGEE, Administrative Patent Judges.

WILSON, Administrative Patent Judge.

DECISION ON APPEAL

Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
January 24, 2017 decision finally rejecting claims 1–12 and 32–392 (“Final
Act.”). We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We affirm-in-part.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies Kraft Foods R & D, Inc., and
Mondelez International, Inc., as the real parties in interest (Appeal Br. 3).
2 Claims 13–31 were withdrawn from consideration and are not part of this
appeal (Final Act. 1).
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Application 13/254,572

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CLAIMED SUBJECT MATTER
Appellant’s disclosure relates to a process for producing a filled sheet
of process cheese (Abstract). The process cheese and a filling are co-
extruded into a packaging material to produce a continuous, filled strand
(id.). The strand is separated at predetermined locations to produce separate
filled sheets, in which the filling is fully enclosed by the process cheese (id.).
Details of the claimed process are set forth in representative claims 1, 36,
and 39 which are reproduced below from the Claims Appendix to the
Appeal Brief:
1. A process of producing a filled sheet of process cheese, the
process comprising:
co-extruding the process cheese and a filling into a packaging
material to produce a continuous, filled strand having a
thickness; and
separating the continuous, filled strand at predetermined
locations to produce separate sheets, in which the filling is fully
enclosed on all sides by the process cheese.

36. The process of claim 1, wherein the step of co-extruding the
process cheese and a filling further comprises co-extruding the
filling in an inner tube and the process cheese in an outer tube,
and wherein the inner tube diverges laterally in an extrusion
direction.

39. The process of claim 1, wherein the step of co-extruding the
process cheese and a filling further comprises co-extruding the
filling in an inner tube having an inner port for extruding the
filling and an outer port for extruding the process cheese, and
wherein a cross-section area of the inner port is about one sixth
of a cross sectional area at a beginning of the inner tube, and
wherein a cross-section area of the outer port is about one third
of a cross sectional area at a beginning of the outer tube.
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Application 13/254,572

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REJECTIONS
1. Claims 1–12 and 32–38 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Milani3 in view of Fontenille.4
4. Claim 39 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Milani in view of Fontenille and Roussel5.

DISCUSSION
Appellant argues the claims in three separate groups (claims 1–12 and
32–35, claims 36–38, and claim 39) (Appeal Br. 9). We will address each
group in turn.
Claims 1–12 and 32–35. Appellant argues these claims as a group.
Accordingly, we will focus on the rejection of claim 1 over Milani and
Fontenille. The Examiner finds that Milani discloses a process of producing
a continuous filled strand of a food product, including cheese, where the
food product and a filling are co-extruded into a packaging material and the
continuous strand is separated at predetermined locations to produce
separate sheets in which the filling is fully enclosed (Final Act. 2, citing
Milani, Abstract, 7:26–31, claim 32). The Examiner further finds that
Milani does not specifically disclose that its “filling is completely enclosed
on all sides by process cheese” as set forth in claim 1, but that Milani
discloses that its invention is applicable to cheese compositions (Final Act.

3 Milani et al., US 7,060,311 B1, issued June 13, 2006.
4 Fontenille, US 6,551,637 B1, issued April 22, 2003.
5 Roussel et al., US 2001/0019732 A1, published September 6, 2001.
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3, citing Milani 5:26). According to the Examiner, this would have
motivated one of skill in the art to apply Milani’s method to filled process
cheese compositions (id.). The Examiner further finds that Milani does not
disclose the use of process cheese to fully enclose a filling, but finds that
Fontenille discloses a composite product based on cheese having an outer
envelope and an internal filling completely enclosed in the outer envelope,
where the outer envelope is obtained from processed cheese, such that the
filling may be enclosed on all sides by the covering as claimed (Final Act. 3,
citing Fontenille, Abstract).
The Examiner determines that:
It would have been obvious to employ co-metering in the
extrusion process of Milani to produce a cheese slice having a
filling that is completely enclosed since this configuration was
known in the art to be desirable. Although Milani does not
specifically teach using cheese as the outer layer this would
have been obvious because Fontenille teaches the concept of
making filled food slices based on a cheese/filling configuration
and thus one of ordinary skill[] in the art would have found it
obvious to manufacture a cheese filled food product having the
configuration disclosed by Fontenille using the methodology
according to Milani because Milani discloses that the method as
applied to peanut butter with jelly filling can be modified by
one of ordinary skill in the art in a making a coextruded food
(i.e. cheese) filled product.
(id. at 4; Ans. 4).
Appellant first argues that Fontenille teaches a discontinuous, batch-
type process in which the outer coating is not co-extruded with the filling
(Appeal Br. 13–14). This argument is not persuasive, because the rejection
does not rely on Fontenille to teach the use of a co-extrusion process, which
instead is disclosed by Milani (see, Final Act. 2, see also, Milani, 5:13–15).
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As stated by the Examiner, “Fontenille is applied to modify Milani . . . for
the limitation that process cheese completely encloses a filling” (Ans. 12).
Therefore, that Fontenille does not teach co-extrusion is not indicative of
reversible error in the rejection.6
Appellant also argues that the rejection does not set forth an adequate
rationale for combining the references (Appeal Br. 15–18). Appellant
argues, inter alia, that because Milani discloses “co-metering and states that
the co-extrusion processing may be used in conjunction with ‘foods
unrelated to jelly, such as cheese,’” there would have been no reason to
combine its teachings with those of Fontenille which are merely cumulative
in that regard (Appeal Br. 17). This argument is similarly unpersuasive,
because it again does not address the specific points relied upon by the
rejection. That is, Fontenille is relied on the Examiner specifically for
teaching the use of a process cheese to fully enclose a filling. The Examiner
determines that a person of skill in the art would have combined Milani’s
teachings with those of Fontenille to incorporate the use of a process cheese
to fully enclose a filling because Milani discloses the use of cheese to fully
enclose a filling7, but not a process cheese.

6 Appellant also argues in its Reply Brief that Fontenille does not disclose a
co-extrusion process for its components (Reply Br. 4). However, as
discussed herein, Fontenille is not relied on for teaching co-extrusion. Thus,
Appellant’s argument that Fontenille does not teach co-extrusion does not
show error in the rejection.
7 In particular, Milani specifically states that its process can be used with
cheese (5:23–29), and also that one of the food items can completely
surround the other (i.e., the filling) (claim 32).
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Appellant also states that Milani does not disclose that either its nut
butter or jelly (the two exemplified components of its composition) fully
enclose the other in the laminate food slice product (Appeal Br. 11–12).
However, as found by the Examiner, Milani explicitly describes food
portions “in which one of the nut butter or jelly completely surrounds the
other within the wrapped food portion” (Milani, claim 32).
Thus, the preponderance of the evidence of record supports the
Examiner’s rejection of claim 1, which we affirm. We also affirm the
rejections of claims 2–12 and 32–35, which are argued together with claim
1.
Claims 36–38. Appellant relies on the same arguments for this group
of claims as for claim 1 (Appeal Br. 18), which are unpersuasive for the
same reasons. However, Appellant also argues (Appeal Br. 18–20) that the
cited art does not disclose the claimed structure of an outer and inner tube
for use in the co-extrusion step of claim 36 (and also in dependent claims 37
and 38). The Examiner finds (Final Act. 8) that the inner tube/outer tube
configuration is disclosed by Milani’s FIG. 14, which is reproduced below:
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Milani’s FIG. 14 shows a partial, perspective view of an extrusion tube
according to the Milani’s invention.

Appellant argues that extrusion tubes 40 and 41 as shown in FIG. 14
are in a parallel relationship, not an inner tube/outer tube relationship
(Appeal Br. 19–20). In the Answer, the Examiner does not directly dispute
this argument, but finds that Roussel discloses an inner tube/outer tube
arrangement and states, without a specific citation, that Milani discloses an
inner tube/outer tube configuration (Ans. 14). We agree with Appellant that
Milani’s FIG. 14 does not disclose an inner tube/outer tube relationship as
called for in the claims. However, importantly, as found by the Examiner
(Ans. 14) Milani does disclose such a relationship (Milani, 8:27–28).
Appellant has not persuasively disputed that a person of skill in the art
would have been motivated to use the concentric inner/outer tube
arrangement disclosed by Milani.
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Accordingly, we determine that Appellant has not demonstrated
reversible error in the rejection of claims 36–38, and we affirm the rejection
of those claims.
Claim 39. Claim 39 recites a specific ratio of the cross-section areas
of inner and outer tubes at the top and bottom of the tubes. The Examiner
finds that it would have been obvious to arrive at the claimed ratios in order
“to achieve a laminar flow at the end of the tubes to ensure making a
continuous filled strand of process cheese and filling with uniform
thickness” (Final Act. 9). Appellant argues that the Examiner has not
presented evidence why a person of skill in the art would have optimized the
cross-sectional areas in order to achieve laminar flow (Appeal Br. 20–21).
Appellant’s argument is persuasive. While the Examiner states that “it
would have been obvious to one of ordinary skill in the art to select
appropriate cross˗sectional profiles of inner and outer tubes in a co-extrusion
nozzle… to ensure laminar flow of materials in making a continuous filled
strand of process cheese and filling with uniform thickness” (Ans. 15), the
Examiner has not provided an explanation for this conclusory finding, which
is insufficient to support an obviousness rejection. KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 418 (2007) (“rejections on obviousness grounds cannot
be sustained by mere conclusory statements; instead, there must be some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness.”) (Citing In re Kahn, 441 F.3d 977, 988 (Fed.
Cir. 2006)).
Accordingly, we reverse the rejection of claim 39.

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Application 13/254,572

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CONCLUSION
In summary:

Claims
Rejected
Basis References Affirmed Reversed
1–12, 32–38 103(a) Milani,
Fontenille
1–12, 32–38
39 103(a) Milani,
Fontenille,
Roussel
39
Overall
Outcome
1–12, 32–38 39

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