Ex parte Kronenberger
| Decision Date | 07 December 1998 |
| Docket Number | Appeal 96-0885,932,Application 08/108 |
| Parties | Ex parte ROBERT A. KRONENBERGER |
| Court | Patent Trial and Appeal Board |
ON BRIEF
Before DOWNEY, HANLON and OWENS, Administrative Patent Judges.
DECISION ON APPEAL
OWENS Administrative Patent Judge.
This is an appeal from the examiner's final rejection of claims 1-3, 5-9 and 11-21. Claims 4 and 10, which are the only other claims remaining in the application, have been canceled.
Appellant's claimed invention is directed toward a method for making an edible chip, such as a potato chip, which is bent along a fold line, and an edible chip so produced. Appellant states that the chip is sufficiently thin to be crisp, yet is sufficiently rigid to allow scooping of dips without being broken (specification, page 3, lines 12-14). Appellant's claims include five independent claims, i.e., claims 1, 12 15, 17 and 21, which are illustrative and are appended to this decision.
Humphrey
2147098
02/14/39
Robinson et al. (Robinson)
3384496
05/21/68
Mercenari
5009902
04/23/91
Yoshida (JP U46)[2]
Apr. 25, 1987 (Japanese Kokai)
Claims 1-3, 5-9 and 11-21 stand rejected under 35 U.S.C. § 112 first paragraph, on the ground that the specification fails to provide an adequate written description and an enabling disclosure of the claimed invention. Claims 1, 5, 6, 8, 12 17 and 19-21 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Robinson. The claims stand rejected under 35 U.S.C. § 103 as follows: claims 7, 9, 13, 14 18, 20 and 21 over Robinson; claims 11, 19 and 21 over Robinson in view of Humphrey; claims 15 and 16 over Robinson in view of Humphrey and JP H46; claims 1-3, 5-9 and 11-21 over Mercenari in view of Humphrey.[3]
OPINIONWe have carefully considered all of the arguments advanced by appellant and the examiner and agree with appellant that the aforementioned rejections are not well founded. Accordingly these rejections will be reversed.
Rejection of claims 1-3, 5-9 and 11-21
under 35 U.S.C. § 112, first paragraph
The examiner argues that appellant's specification does not describe or enable consistently folding a potato slice (answer, pages 4 and 10).
A specification complies with the 35 U.S.C. § 112, first paragraph, written description requirement if it conveys with reasonable clarity to those skilled in the art that, as of the filing date sought, the inventor was in possession of the invention. See Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563-64, 19 U.S.P.Q.2d 1111, 1117 (Fed. Cir. 1991); In re Kaslow, 707 F.2d 1366, 1375, 217 U.S.P.Q. 1089, 1096 (Fed. Cir. 1983); In re Edwards, 568 F.2d 1349, 1351-52, 196 U.S.P.Q. 465, 467 (CCPA 1978); In re Wertheim, 541 F.2d 257, 262, 191 U.S.P.Q. 90, 96 (CCPA 1976). The examiner has the initial burden of establishing a prima facie case of lack of an adequate written description. See Wertheim, 541 F.2d at 265, 191 U.S.P.Q. at 98.
Appellant's specification (page 3, lines 7-14) discloses that bending the sheet layer of flexible, edible material about a fold line permits consistently bent chips to be formed. The examiner has not explained, and it is not apparent, why this disclosure would not have conveyed to one of ordinary skill in the art that as of appellant's filing date, appellant was in possession of a process wherein the sheet layers are consistently folded about a fold line as recited in appellant's claims.
A specification complies with the 35 U.S.C. § 112, first paragraph, enablement requirement if it allows those of ordinary skill in the art to make and use the claimed invention without undue experimentation. See In re Wright, 999 F.2d 1557, 1561, 27 U.S.P.Q.2d 1510, 1513 (Fed. Cir. 1993); Atlas Powder Co. v. E.I. du Pont De Nemours & Co., 750 F.2d 1569, 1576, 224 U.S.P.Q. 409, 413 (Fed. Cir. 1984). The examiner has the initial burden of establishing lack of enablement. See Wright, 999 F.2d at 1561, 27 U.S.P.Q.2d at 1513.
The examiner argues that he does not see how the defining means on the sheet layer which allows the sheet layer to be consistently folded can function without the use of rod/support 16 which is not recited in any of appellant's claims. The examiner, however, does not explain why one of ordinary skill in the art, in view of appellant's specification, could not have carried out appellant's claimed invention without undue experimentation in the absence of that rod or support.
For the above reasons, we find that the examiner has not carried his burden of establishing a prima facie case of lack of an adequate written description or an enabling disclosure. The rejection under 35 U.S.C. § 112, first paragraph, therefore is reversed.
Rejections of claims I, 5, 6, 8, 12, 11 and 19-21 under 35 U.S.C. § 102(b) and claims 7, 9, 13, 14, 18, 20 and 21 under 35 U.S.C. §103 over Robinson
Robinson discloses a process wherein apple slices which may have a hole therein where the apple core has been removed are heated and dried to distort them such that at least a part of the perimeter and adjacent area of one side of each slice and at least part of the perimeter and adjacent area of the opposite side of the slice are bent at least proximate to one another (col. 1, lines 30-47; col. 3, lines 7-13). In many cases, the opposite sides of a slice contact one another either at the perimeter or the area immediately adjacent to the perimeter (col. 2, line 66 - col. 3, line 2). The slices are heated and dried using hot, dry air at a temperature of about 140*F to about 300*F and a relative humidity of up to 5.5% (col. 2, lines 4-9). While the slices are heated and dried, they can be vertically suspended from a bar, hook, wire or the like, tumbled in a rotating drum, subjected to free fall in a wind tunnel, placed in a box or press and pressed to distort them, or pressed in a mold to shape them (col. 1, lines 49-70). After the apple slices are heated, they are exposed to cool, dry air which fixes their physical form (col. 2, lines 55-58). The apple slices become brittle when they have cooled to a temperature below about 130*F (col. 2, lines 58-59).
Appellant's independent claim 1 requires means on the sheet layer to allow the sheet layer to be consistently folded in a predetermined fashion about a fold line, and independent claims 17 and 21 require means on the sheet layer for facilitating bending of the sheet layer consistently at a fold line.
The examiner argues that the hole in the center of Robinson's apple slices is the means which allows the slices to be consistently folded about a fold line (answer, page 11).
The examiner does not explain, however, and it is not apparent, how the hole allows the slices to be consistently folded about a fold line.
Appellant's claim 12 requires a space between the sheet layer walls at a midportion between the fold line and the first location where an apple slice surface abuts to itself. Robinson teaches that the perimeter 36 and perimeter 38 in Fig. 4 are proximate to one another but do not contact one another (col. 4, lines 36-39). The adjacent area 50 of the side 34 contacts the adjacent area 52 of the side 32, as shown in Figs. 4 and 8 (col. 4, lines 40-41). The line about which the apple slice in Fig. 4 is folded, however, is spaced from side 32. That is, side 32 in Fig. 4 is curved, whereas the fold line passes through the ends of curved portion 32 such that there is empty space between the fold line and side 32 where the surface abuts itself. There is no space between sheet layer walls at a midpoint of this region as required by appellant's claim 12.
In order for a claimed invention to be anticipated under 35 U.S.C. § 102(b), all of the elements of the claim must be found in one reference. See Scripps Clinic & Research Found, v. Genentech Inc., 927 F.2d 1565, 1576, 18 U.S.P.Q.2d 1001, 1010 (Fed. Cir. 1991). As discussed above, the examiner has not explained where the Robinson disclosure meets all of the limitations of any of appellant's independent claims to which the rejection under 35 U.S.C. § 102(b) is applied. The examiner therefore has not met his initial burden of establishing a prima facie case of anticipation. See In re Spada, 911 F.2d 705, 707, 15 U.S.P.Q.2d 1655, 1657 (Fed. Cir. 1990); In re King, 801 F.2d 1324, 1327, 231 U.S.P.Q. 136, 138-39 (Fed. Cir. 1986). Thus, the rejection under 35 U.S.C. § 102(b) over Robinson is reversed.
The examiner does not explain, and we do not independently find, where Robinson would have fairly suggested, to one of ordinary skill in the art, the elements of the independent claims discussed above. We therefore do not sustain the rejection under 35 U.S.C. § 103 over Robinson.
Rejection of claims 11, 19 and 21 under 35 U.S.C. §103 over Robinson in view of Humphrey Humphrey discloses a thin, elongated slice of bread having narrow compressed portions along its width which serve as hinges at which the bread can be folded for forming a sandwich (page 1, left column, lines 27-51; Figs. 5-8).
The examiner argues that incorporating Humphrey's fold lines into Robinson's apple slice would have been obvious to one of ordinary skill in the art to aid in the bending of the apple slice (answer, page 6). The examiner does not explain, however, where the references indicate that such an aid in bending would be desirable or would result in a product being produced which is shaped in the manner desired by Robinson.
In order for a prima facie case of obviousness of appellants' claimed invention to be established, the prior art must be such that it would have provided one of ordinary skill in the art with both a suggestion to carry out appellants' claimed process and a...
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