This drawing comes from application 13/691,176 filed by General Mills, which happens to have its world headquarters in our favorite city of Minneapolis, Minnesota. This application was handled by Attorney Everett G. Diederiks, Jr. (Reg. No. 33,323). Mr. Diederiks is with the Virginia law firm of Diederiks & Whitelaw.
The title of the ‘176 application is “Shelf-Stable Food Product.” The invention is essentially a method of making a cake ball. Element 10 in this Figure above is the cake ball. To make it, some shortening based slimy stuff 16 is mixed with some cake crumbs 14 and covered by something yummy like a chocolate layer 11. As you can imagine, the claims pertain to certain ingredients being combined at certain ratios, etc. You get the idea, right?
This case caught our attention due to an interesting exchange between the Board and Attorney Diederiks.
In his appeal brief, Mr. Diederiks argues that the examiner’s proposed combination of references fails to specifically teach or suggest a claimed combination of dehydrated cake crumbs and shortening mixture having a certain moisture profile. Particular emphasis is given to the recitation that the cake crumbs are claimed so as to requirE “a water activity of 0.2 to 0.6.” Mr. Diederiks further argues that the Examiner simply declared the moisture profile obvious without providing any specific corresponding teaching or suggestion in the references themselves. Mr. Diederiks provides case law that supports the position that rejecting a claim on a combination of references is improper when the combination is missing a recited claim element, and if the record also lacks substantial evidence to support the position that the missing element is still an obvious part of the proposed combination. Mr. Diederiks argues: 1) that the cited references fail to teach the claimed moisture profile; and 2) that the examiner failed to provide proper evidence that the claimed moisture profile obviously achievable or even desirable.
The examiner does seem to struggle with the fact that the cited references do not specifically teach crumbs having the claimed water activity of 0.2 to 0.6. In the Answer to Mr. Diederiks appeal brief, the examiner does a lot of hand waving. The relevant arguments made by the examiner are as follows:
From the examiner’s perspective, the Leavitt reference mentions a preference for stale crumbs, so therefore the claimed range can be assumed. Alternatively, it is argued that the Beuchat reference teaches the goal of lower moisture to prevent microbial growth, so therefor the claimed range can be assumed. Suffice it to say that Mr. Diederiks was not satisfied with these arguments. He decides to file a Replay Brief and he responds to the examiner’s position in this way:
Accordingly, this case seemed to go to the Board with a legitimate question as to whether there was enough of a teaching and suggestion in the cited references to support the conclusion that the not specifically taught moisture range limitation is alternatively enough obvious to reasonably prohibit patentability.
So, what did the Board do with this issue?!
The Board’s decision was issued on July 12, 2018. They affirmed the examiner’s position. A copy of the decision can be accessed by clicking on this link:
But how exactly did they respond to the particular issue noted above? With all do respect, the approach they took there seems a bit unfair. First, they side stepped the issue by instead accusing Mr. Diederiks of “failing to identify error in the examiner’s finding and conclusions.” They say that Mr. Diederiks noted the lack of teaching of the specifically recited claim elements without making any argument against the examiner’s assertion that the claimed ranges should be implied. What? Did Mr. Diederiks not argue that the examiner did not make an acceptable argument in support of a missing claim element so therefore the missing claim element is not excusable? Is not arguing that the examiner’s support is insufficient an appropriate and acceptable position to take? Why did they refuse to weigh whether the examiner’s position was sufficient at least because Mr. Diederiks specifically argued that it was not?
But the Board does not stop there. They also take issue with Mr. Diederiks argument in the replay brief that water activity affects other properties such as mouthfeel so should not be considered in isolation. The Board decides that Mr. Diederiks failed by not providing an explanation as to why these arguments were” necessitated by the Examiner’s Answer or could not have been presented in the principal brief.” In other words, the Board refuses to even consider the argument because it allegedly is untimely and irrelevant due to being presented inappropriately in a reply brief in the absence of good cause under 37 C.F.R. § 41.41 (b)(2)(2015). But was Mr. Diederiks comment about mouthfeel not provided as a minor example directly in response to the speculative arguments made by the examiner in the Answer Brief? Is this really the intent of Section 41(b), which reads:
What exactly are practitioners supposed to take away from this Board decision in terms of learning about best practice? They seem to be saying that it is insufficient to argue that an examiner’s position as to inference of a not specifically taught claim element is not an acceptable approach. They also seem to be saying that 37 C.F.R. 41.41(b)(2) is going to be very narrowly construed in terms of what issues can be raised in a Reply to an Examiner’s Answer.
It is hard not to think that instead the Board was working really hard to find a way to side step some decent arguments presented by Mr. Diederiks. Anyone else have any thoughts or opinions?