Ex parte Bechtold

• Docket Number: Appeal 2023-000614,Application 16/613,685,Technology Center 1700
• Decision Date: 19 January 2024
• Parties: Ex parte ROY A. BECHTOLD and ADAM CORY NELSON
• Court: Patent Trial and Appeal Board

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Ex parte ROY A. BECHTOLD and ADAM CORY NELSON

Appeal 2023-000614

Application 16/613,685

Technology Center 1700

United States Patent and Trademark Office, Patent Trial and Appeal Board

January 19, 2024

FILING DATE: 11/14/2019

Before JEFFREY W. ABRAHAM, JEFFREY R. SNAY, AND LILAN REN, Administrative Patent Judges.

DECISION ON APPEAL

REN, ADMINISTRATIVE PATENT JUDGE

STATEMENT OF THE CASE

Pursuant to 35 U.S.C. § 134(a), Appellant^[1] appeals from the Examiner's decision to reject claims 1, 2, and 4-12. See Final Act. 2, 4. We have jurisdiction under 35 U.S.C. § 6(b).

We AFFIRM-IN-PART.

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CLAIMED SUBJECT MATTER

Claim 1, reproduced below, illustrates the claimed subject matter:

1. A method of making rotary molded dough pieces from a dough having a fat content of about 8% to about 30% by weight of the dough and a water content of about 0.5% to about 5% by weight of the dough, the method comprising

a. providing an initial dough, the initial dough including water, sugar, flour, and a portion of fat that contributes up to 75% of the fat content of the dough from which the rotary molded dough pieces are made

b. mixing the initial dough with an additional fat to produce the dough having a fat content of about 8% to about 30% by weight of the dough and a water content of about 0.5% to about 5% by weight of the dough; and

c. forming the dough having a fat content of about 8% to about 30% by weight of the dough and a water content of about 0.5% to about 5% by weight of the dough into pieces using a rotary molding machine

App. Br. 16 (Claims Appendix).

REFERENCES

The Examiner relies on the following references to reject the claims:

Name	Reference	Date
Laughlin	US 5,855,945	Jan. 5, 1999
Paulson	US 2008/0274251 A1	Nov. 6, 2008
Mihalos	US 2009/0291169 A1	Nov. 26, 2009
Folz	US 2015/0037469 A1	Feb. 5, 2015
Rade-Kukic	US 2018/0317502 A1	Nov. 8, 2018

REJECTIONS

The Examiner maintains the following rejections:

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Claim(s) Rejected	35 U.S.C. §	Reference(s)/ Basis
1, 2, 4-8, 10-12	103	Laughlin, Rade-Kukic, Folz, Paulson
9	103	Laughlin, Rade-Kukic, Folz, Paulson, Mihalos

OPINION

Claim I^[2]

Appellant argues that the Examiner erred because Laughlin teaches a batter as opposed to the "dough" recited in claim 1. Appeal Br. 7. Appellant argues that "a dough is stiff enough to be kneaded or rolled while a batter has a thinner consistency that allows it to be poured and/or applied as a coating." Id.

Appellant's argument is unpersuasive. From the outset, Appellant's argument regarding the purported differences between dough and batter does not show that the Examiner reversibly erred in finding that Laughlin teaches "an initial dough as required by claim 1," which Appellant recognizes is the claim term at issue. Appeal Br. 7 (arguing that "the failure of Laughlin to teach providing an initial dough as required by claim 1 is not remedied by Rade-Kukic, Folz or Paulson").

Moreover, "during examination proceedings, claims are given their broadest reasonable interpretation consistent with the specification." In re Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000). Appellant does not address the claim term "initial dough" and does not clearly or persuasively argue that the

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claim term "initial dough" - which is different from the claim term "dough" as the claim language requires - should be narrowly construed to be interchangeable with "dough" to include only a product that "is stiff enough to be kneaded or rolled." Appeal Br. 7; see also Reply Br. 2-3. Appellant does not argue that the claim term "dough" or "initial dough" requires a certain composition or physical property (such as viscosity) to be "stiff enough to be kneaded or rolled." Appeal Br. 7; see also Reply Br. 2-3. Appellant does not argue that the claim term "dough" or "initial dough" requires a certain composition or physical property (such as viscosity) to exclude the prior art batter. Appeal Br. 7; see also Reply Br. 2-3. We therefore decline to construe the claim term "initial dough" to be interchangeable with the term "dough" and we also decline to construe the claim term "initial dough" to exclude batter.

Appellant next argues that using a dough that is "stiff enough to be kneaded or rolled" (Appeal Br. 7) rather than Laughlin's batter would result in "non-uniform mixing [which] can cause various problems, such as inadequate proofing and low specific volumes in the baked goods," rendering Laughlin unsatisfactory for its intended purpose. Appeal Br. 7. According to Appellant, "[m]aking an initial dough instead of an initial batter in Laughlin would not provide a viscosity sufficiently low enough to ensure uniform mixing of the leavening agent as intended by Laughlin." Id. at 7-8. Appellant's argument is unpersuasive because it is based on the premise that the claim term "initial dough" is interchangeable with "dough" and excludes the prior art dough. As we note supra, Appellant does not specify any distinction based on composition or physical property between initial dough (or dough) and batter, and we decline to limit the scope of

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"initial dough" to exclude batter. Additionally, Appellant's argument is unpersuasive because it lacks evidentiary support. "Attorneys' argument is no substitute for evidence." Johnston v. IVAC Corp., 885 F.2d 1574, 1581 (Fed. Cir. 1989).

Appellant next argues that although the combined prior art teaches "mixing the initial dough with an additional fat to produce the dough having a fat content of about 8% to about 30% by weight of the dough and a water content of about 0.5% to about 5% by weight of the dough" as claim 1 recites, "[modifying the method of Laughlin to provide a dough with a water content reduced by at least 75% would require reducing the water content of the initial batter of Laughlin." Appeal Br. 8. Appellant argues that because "the reduced viscosity provided by the water content in the initial batter of Laughlin helps ensure the leavening agent is thoroughly mixed," "reducing the water content of the initial batter by at least 75% would render the method of Laughlin modified unsatisfactory for its intended purpose." Id. at 8-9.

Appellant's argument is unpersuasive first and foremost because it lacks evidentiary support. Johnston, 885 F.2d at 1581 ("Attorneys' argument is no substitute for evidence."). Additionally, Appellant's argument is unpersuasive because all of the features of the remaining references need not be bodily incorporated into Laughlin and the skilled artisan is not compelled to blindly follow the teaching of one prior art reference over the other without the exercise of independent judgment. See Lear Siegler, Inc. v. Aeroquip Corp., 733 F.2d 881, 889 (Fed. Cir. 1984).

Lastly, we emphasize that our reviewing court has taken the position that:

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new recipes or formulas for cooking food which involve the addition or elimination of common ingredients, or for treating them in ways

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