YOGEEZ II, INC.

Patent Trials and Appeals Board

Dec 14, 2021

2021000493 (P.T.A.B. Dec. 14, 2021)

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. 14/067,234 10/30/2013 Amanda Renée DeVaul Y022.0001US2 2112 102038 7590 12/14/2021 WESTMAN, CHAMPLIN & KOEHLER, PA/Clark IP Law 121 South Eighth Street Suite 1100 Minneapolis, MN 55402 EXAMINER SMITH, PRESTON ART UNIT PAPER NUMBER 1792 NOTIFICATION DATE DELIVERY MODE 12/14/2021 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): bclark@wck.com docketing@wck.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte AMANDA RENÉE DEVAUL Appeal 2021-000493 Application 14/067,234 Technology Center 1700 Before KAREN M. HASTINGS, JAMES C. HOUSEL, and JANE E. INGLESE, Administrative Patent Judges. HOUSEL, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1-4, 7-9, 12-14, 17-20, 24-28, 30-38, and 40-46. Pending claims 21-23 and 39 have been withdrawn from consideration and are not before us on appeal. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies YOGEEZ II, Inc. as the real party in interest. Appeal Brief (“Appeal Br.”) filed March 16, 2020, 4. Appeal 2021-000493 Application 14/067,234 2 CLAIMED SUBJECT MATTER The invention recited in the claims on appeal relates to an edible food divider comprising at least one frangible edible food divider configured to fit within a container for providing a physical barrier between at least two different food product types, amounts, and/or flavors. Specification (“Spec.”) filed October 30, 2013, ¶ 3.2 Claim 1, reproduced below from the Claims Appendix to the Appeal Brief, is illustrative of the claimed subject matter: 1. A food divider system comprising: a single-layer cooked, frangible, and edible food divider having two opposing faces, wherein each face has a lower portion and an upper portion, wherein the upper portion contains a major axis dimension and a minor axis dimension, wherein said edible food divider is consumable without further processing and configured to remain frangible during use, the food divider having a thickness which is substantially the same throughout, and wherein the food divider further comprises a bottom edge having a substantially flat bottom edge length, a contiguous first side edge having a first side edge length, a contiguous second side edge having a second side edge length approximately equal to the first side edge length and wherein the first and second side edges are not parallel to one another between the bottom edge and a fourth curvilinear top edge that is contiguous with the first and second side edges, such that the minor axis dimension being substantially perpendicular to the bottom edge length provides additional length to said edible food divider beyond the first and second side edge lengths and the major axis dimension being substantially parallel to the bottom edge length and providing additional width to the said 2 This Decision also cites to the Final Office Action (“Final Act.”) dated June 19, 2019, and the Examiner’s Answer (“Ans.”) dated August 6, 2020. Appeal 2021-000493 Application 14/067,234 3 edible food divider beyond the bottom edge length at one or more widths on the edible food divider; and a container, wherein said edible divider has a shape configured to fit within the container in a substantially vertical position to provide a physical barrier within the container between at least two different types, amounts and/or flavors of frozen food products to prevent commingling, including after said frozen food products have been exposed to ambient temperatures. Independent claim 24 recites a kit comprising a plurality of edible food dividers, one or more containers, an array of additives, and instructions for using or selling the dividers, containers, and additives. REFERENCES The Examiner relies on the following prior art: Name Reference Date Leaf US 1,950,734 Mar. 13, 1934 Popeil US 2,991,814 July 11, 1961 Forkner US 4,068,007 Jan. 10, 1978 Ito US 5,298,273 Mar. 29, 1994 Gambino et al. US 2002/0039612 A1 Apr. 4, 2002 Vincent at al. US 2004/0166207 A1 Aug. 26, 2004 Hopkins et al. US 2005/0287277 A1 Dec. 29, 2005 Maroofian et al. US 2009/0211941 A1 Aug. 27, 2009 Leslie Land, IN KITCHEN AND GARDEN AND ALL AROUND THE HOUSE, Gardener’s Holiday-Solstice Cookies, Dec. 14, 2007, http://leslieland.com/2007/12/gardener%E2%80%99s-holiday- %E2%80%93-solstice-cookies, accessed June 20, 2018 (“Solstice”). Irvin Lin, EAT THE LOVE: TREATS FOR THE MIND AND MOUTH, Red Wine Caramel Apple Ice Cream & a Trip to Columbus Ohio, Dec. 1, 2011, https://www.eatthelove.com/red-wine-caramel-apple-ice-cream/, accessed April 2, 2019 (“Ice Cream”). Appeal 2021-000493 Application 14/067,234 4 REJECTIONS The Examiner maintains, and Appellant requests our review of, the following rejections under 35 U.S.C. § 103(a): 1. Claims 1, 2, 7, 9, 12-14, 17, 32, 35, 37, 38, and 41 as unpatentable over Forkner in view of Hopkins; 2. Claim 33 as unpatentable over Forkner in view of Hopkins, and further in view of Leaf; 3. Claims 24, 34, 40-44, and 46 as unpatentable over Forkner in view of Hopkins, and further in view of Vincent; 4. Claims 3, 4, 8, 25-28, 30, and 31 as unpatentable over Forkner in view of Hopkins, and further in view of Gambino; 5. Claims 1, 2, 7, 9, 12-14, 17, 32, 35, 37, 38, and 41 as unpatentable over Solstice in view of Hopkins and Forkner; 6. Claim 33 as unpatentable over Solstice in view of Hopkins and Forkner, and further in view of Leaf and Maroofian; 7. Claims 24, 34, 40-44, and 46 as unpatentable over Solstice in view of Hopkins and Forkner, and further in view of Vincent; 8. Claims 3, 4, 8, 25-28, 30, and 31 as unpatentable over Solstice in view of Hopkins and Forkner, and further in view of Gambino; 9. Claim 36 as unpatentable over Solstice in view of Hopkins and Forkner, and further in view of Popeil; 10. Claims 1, 2, 7, 9, 12-14, 17, 32, 33, 35, 37, 38, 41-46 as unpatentable over Leaf in view of Hopkins and Forkner; 11. Claims 3, 4, 8, 25-28, 30, and 31 as unpatentable over Leaf in view of Hopkins and Forkner, and further in view of Gambino; 12. Claims 24, 34, and 40 as unpatentable over Leaf in view of Hopkins and Forkner, and further in view of Vincent; Appeal 2021-000493 Application 14/067,234 5 13. Claim 36 as unpatentable over Leaf in view of Hopkins and Forkner, and further in view of Popeil; 14. Claims 1, 2, 9, 12-14, 17, 32, 35, 37, 38, and 41 as unpatentable over Ito in view of Hopkins and Forkner; 15. Claims 24, 34, 40, and 42-46 as unpatentable over Ito in view of Hopkins and Forkner, and further in view of Vincent; 16. Claims 3, 4, 8, 25-28, 30, and 31 as unpatentable over Ito in view of Hopkins and Forkner, and further in view of Gambino; 17. Claim 33 as unpatentable over Ito in view of Hopkins and Forkner, and further in view of Leaf and Ice Cream;3 18. Claim 36 as unpatentable over Ito in view of Hopkins and Forkner, and further in view of Popeil; and 19. Claim 36 as unpatentable over Ice Cream in view of Hopkins and Popeil. OPINION We review the appealed rejections for error based upon the issues Appellant identifies, and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential), cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections.”). After considering Appellant’s arguments and the evidence of record, we are persuaded of reversible error in the stated rejections. Therefore, we reverse the 3 It appears that Forkner was inadvertently omitted from the statement of this rejection as claim 33 depends from claim 32 which was rejected over the combination of Ito, Hopkins, and Forkner. See Rejection 14 above. Appeal 2021-000493 Application 14/067,234 6 Examiner’s obviousness rejections based substantially on arguments set forth in the Appeal Brief. We offer the following for emphasis. Rejection 1: Obviousness over Forkner and Hopkins The Examiner rejects claims 1, 2, 7, 9, 12-14, 17, 32, 35, 37, 38, and 41 as unpatentable over Forkner in view of Hopkins. Final Act. 3. In particular, the Examiner finds that “Forkner teaches edible wafers (or dividers) configured to fit within a container in a substantially vertical position to provide a physical barrier wherein the divider containers [sic] a major and minor dimension.” Id., citing Forkner Fig. 3. The Examiner acknowledges that Forkner fails to teach the specifically claimed shape of the wafer or divider. Id. However, the Examiner finds that Hopkins teaches the claimed shape was known in the art for similar food products. Id., citing Hopkins Fig. 2. The Examiner determines that “[t]he specific design shape and structure (being a single layer) would have been found obvious absent persuasive evidence that the particular shape of the claimed divider was significant.” Id., citing In re Dailey, 357 F.2d 669 (CCPA 1966). In addition, the Examiner concludes that it would have been obvious to modify the shape of Forkner’s food product to be in Hopkins’ shape in order to better fit in common container shapes. Id. Appellant argues that, contrary to the Examiner’s findings, neither Forkner nor Hopkins teaches an edible divider having the shape recited in claim 1. Appeal Br. 14. In particular, Appellant contends that the claimed shape is a non-standard shape that is configured to fit within the container in a substantially vertical position to provide a physical barrier between at least two types of frozen food products and to prevent commingling of these food products. Id. at 14-15. As such, Appellant urges that “[i]t is not simply that Appeal 2021-000493 Application 14/067,234 7 the claimed food divider is instead rectangular or square but rather has a specific overall shape that provides the[se] benefits.” Id. at 16. Appellant asserts that Forkner manufactures round food products from expandable food material, which is expanded in a container specifically configured to hold the round food products. Id. at 15. Appellant contends that not only would a change of Forkner’s food product not have been obvious, but Forkner teaches away from the food product having a flat bottom edge. Id. Appellant also asserts that Hopkins teaches a food product having the shape of traditional bread slices having a static width with parallel sides. Id. at 15- 16. Appellant contends that changing the shape of Hopkins’ food product would frustrate Hopkins’ purpose of providing a toastable food product (i.e., must fit in a conventional toaster). Id. at 16. Lastly, Appellant contends that there is no reason from either Forkner or Hopkins to modify the shape of their food products to better fit in common container shapes. Id. Appellant’s argument is persuasive of reversible error. As Appellant argues, the prior art fails to teach or suggest the claimed divider shape and the recited function of the divider to be a physical barrier within the container between at least two different frozen food products to prevent commingling thereof, including after the frozen food products have been exposed to ambient temperatures as recited in claim 1. Acknowledging that Forkner fails to disclose or suggest the claimed shape, the Examiner finds that Hopkins teaches this shape. However, the Examiner fails to direct our attention to any support in Hopkins for the specific requirement that the edible divider have non-parallel side edges and a major axis dimension of the upper portion of the respective faces of the divider having an additional width beyond the bottom edge length, as required by claim 1. Indeed, Appeal 2021-000493 Application 14/067,234 8 Hopkins discloses a shape that appears to approximate the shape of a conventional bread slice having a generally rectangular shape with parallel side edges. Hopkins Fig. 3. In addition, the Examiner fails to direct our attention to any support in either Forkner or Hopkins for an edible divider that functions as a physical barrier between at least two different frozen food products in a container so as to prevent commingling of these products, including after the frozen food products have been exposed to ambient temperatures. To the contrary, Forkner’s food product, though sitting vertically within a container, is shown with gaps between the container and the product that could not prevent commingling of different frozen food products if provided on opposite sides of the edible wafer. Forkner Fig. 4. Indeed, Forkner teaches that the dimensions of the container are preferably such that clearance is provided about the wafer periphery to allow for expansion in the radial direction. Id. at 4:22-25. We are cognizant that a change of shape of a product may be an obvious matter of design choice. However, in order to support such a conclusion, an examiner must make findings supporting that characterization. In re Chu, 66 F.3d 292, (Fed. Cir. 1995); In re Kuhle, 526 F.2d 553, 555 (CCPA 1975) (finding that the use of the claimed feature “would be an obvious matter of design choice” when it “solves no stated problem” and “presents no novel or unexpected result” over the disclosed alternatives); In re Rice, 341 F.2d 309, 314 (CCPA 1965) (“Appellants have failed to show that the change [in the claimed invention] as compared to [the reference], result in a difference in function or give unexpected results.”). Here, although the Examiner finds that Appellant has not shown any Appeal 2021-000493 Application 14/067,234 9 criticality to the claimed shape, we disagree. Appellant discloses, claims, and argues that the divider shape is selected so as to conform to the internal shape of a container such that the divider acts or functions a physical barrier between two frozen food products so as to prevent commingling of these products, including after these products have been exposed to ambient temperatures. Further, as Appellant contends, the Examiner fails to direct our attention to any reason from either Forkner or Hopkins to modify the shape of their food products to better fit in common container shapes, much less to provide the claimed shape. Accordingly, we do not sustain the Examiner’s obviousness rejection of claim 1, or dependent claims 2, 7, 9, 12-14, 17, 32, 35, 37, 38, and 41, over the combination of Forkner and Hopkins. Rejections 2-18: Obviousness over various combinations of prior art with Forkner and Hopkins The Examiner rejects claims 1-4, 7-9, 12-14, 17-20, 24-28, 30-38, 40-46 over various prior art references combined with Forkner and Hopkins. Final Act. 3-16. In doing so, the Examiner relies on the same erroneous findings and conclusions discussed above with regard to Forkner and Hopkins. The Examiner does not rely on the additional references to Leaf, Vincent, Gambino, Solstice, Maroofian, Popeil, Ito, and Ice Cream to remedy the deficiencies discussed above with regard to Forkner and Hopkins. In this regard, we note that claim 24, similarly to claim 1, recites an edible food divider having a shape such that its side edges are non- parallel, and a major axis dimension of the upper portion of the respective faces of the divider having an additional width beyond the bottom edge Appeal 2021-000493 Application 14/067,234 10 length, and this shape is configured to fit within a container to provide a physical barrier between at least two frozen food products so as to prevent commingling, even after the products have been exposed to ambient temperatures. Accordingly, we do not sustain the Examiner’s obviousness rejections of claims 1 and 24, or dependent claims 2-4, 7-9, 12-14, 17-20, 25-28, 30-38, and 40-46. Rejection 19: Obviousness over Ice Cream, Hopkins, and Popeil The Examiner rejects claim 36 as unpatentable over Ice Cream in view of Hopkins and Popeil. Final Act. 16. We note that the body of this rejection implies that the combination of Ice Cream and Hopkins renders obvious the invention of claim 1, but fails to teach a corrugated top edge. Id. However, we note that claim 1 was not rejected as obvious over the combination of Ice Cream and Hopkins. Notwithstanding this fact, we note that the Examiner fails to find that either Ice Cream or Hopkins teaches an edible food divider physically separating at least two frozen food products. Indeed, though Ice Cream was applied in Rejection 17, the Examiner made no findings with respect to this reference. Id. at 14. In addition, as discussed above, the Examiner erroneously finds that Hopkins teaches an edible food product having the claimed shape. Further, as Appellant argues, Popeil fails to overcome the deficiencies in Ice Cream and Hopkins. Accordingly, we do not sustain the obviousness rejection of claim 36 over the combination of Ice Cream, Hopkins, and Popeil. CONCLUSION Upon consideration of the record and for the reasons set forth above and in the Final Office Action and the Examiner’s Answer, the Examiner’s Appeal 2021-000493 Application 14/067,234 11 decision to reject claims 1-4, 7-9, 12-14, 17-20, 24-28, 30-38, and 40-46 under 35 U.S.C. § 103 is reversed. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 2, 7, 9, 12-14, 17, 32, 35, 37, 38, 41 103(a) Forkner, Hopkins 1, 2, 7, 9, 12-14, 17, 32, 35, 37, 38, 41 33 103(a) Forkner, Hopkins, Leaf 33 24, 34, 40- 44, 46 103(a) Forkner, Hopkins, Vincent 24, 34, 40- 44, 46 3, 4, 8, 25- 28, 30, 31 103(a) Forkner, Hopkins, Gambino 3, 4, 8, 25- 28, 30, 31 1, 2, 7, 9, 12-14, 17, 32, 35, 37, 38, 41 103(a) Solstice, Forkner, Hopkins 1, 2, 7, 9, 12-14, 17, 32, 35, 37, 38, 41 33 103(a) Solstice, Forkner, Hopkins, Leaf, Maroofian 33 24, 34, 40- 44, 46 103(a) Solstice, Forkner, Hopkins, Vincent 24, 34, 40- 44, 46 3, 4, 8, 25- 28, 30, 31 103(a) Solstice, Forkner, Hopkins, Gambino 3, 4, 8, 25- 28, 30, 31 36 103(a) Solstice, Forkner, Hopkins, Popeil 36 1, 2, 7, 9, 12-14, 17, 32, 35, 37, 38, 41 103(a) Leaf, Forkner, Hopkins 1, 2, 7, 9, 12-14, 17, 32, 35, 37, 38, 41 3, 4, 8, 25- 28, 30, 31 103(a) Leaf, Forkner, Hopkins, Gambino 3, 4, 8, 25- 28, 30, 31 Appeal 2021-000493 Application 14/067,234 12 24, 34, 40 103(a) Leaf, Forkner, Hopkins, Vincent 24, 34, 40 36 103(a) Leaf, Forkner, Hopkins, Popeil 36 1, 2, 9, 12- 14, 17, 32, 35, 37, 38, 41 103(a) Ito, Forkner, Hopkins 1, 2, 9, 12- 14, 17, 32, 35, 37, 38, 41 24, 34, 40,42-46 103(a) Ito, Forkner, Hopkins, Vincent 24, 34, 40,42-46 3, 4, 8, 25- 28, 30, 31 103(a) Ito, Forkner, Hopkins, Gambino 3, 4, 8, 25- 28, 30, 31 33 103(a) Ito, Forkner, Hopkins, Leaf, Ice Cream 33 36 103(a) Ito, Forkner, Hopkins, Popeil 36 36 103(a) Ice Cream, Hopkins, Popeil 36 Overall Outcome 1-4, 7-9, 12-14, 17- 20, 24-28, 30-38, 40- 46 REVERSED