Uwe Marder et al.Download PDFPatent Trials and Appeals BoardDec 5, 201913254572 - (D) (P.T.A.B. Dec. 5, 2019) Copy Citation 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R & D, Inc., and Mondelez International, Inc., as the real parties in interest (Appeal Br. 3). 2 Claims 13–31 were withdrawn from consideration and are not part of this appeal (Final Act. 1). Appeal 2018-003231 Application 13/254,572 2 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. Appeal 2018-003231 Application 13/254,572 3 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. Appeal 2018-003231 Application 13/254,572 4 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). Appeal 2018-003231 Application 13/254,572 5 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). Appeal 2018-003231 Application 13/254,572 6 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: Appeal 2018-003231 Application 13/254,572 7 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. Appeal 2018-003231 Application 13/254,572 8 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. Appeal 2018-003231 Application 13/254,572 9 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 Copy with citationCopy as parenthetical citation