Ex parte Maeda

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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

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APPLICATION NO. | FILING DATE FIRST NAMED INVENTOR | ATTORNEY DOCKET NO. CONFIRMATION NO. |
10/519,832 01/10/2005 Kazuya Maeda 040625 9645
23850 7590 10/23/2012 | |
EXAMINER
KRATZ, QUINTOS & HANSON, LLP
1420 K Street, N.W. TYLER, CHERYL JACKSON
ath Floor ART UNIT PAPER NUMBER
WASHINGTON, DC 20005 | | |
3744
| MAIL DATE | DELIVERY MODE |
10/23/2012 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 KAZUYA MAEDA, TSUYOSHI KUROSAWA,
TAKESHI ISHII, and KOICHIRO IKEMOTO
____________________
Appeal 2010-009814
Application 10/519,832
Technology Center 3700
____________________
Before STEFAN STAICOVICI, JAMES P. CALVE, and
MITCHELL G. WEATHERLY, Administrative Patent Judges.
WEATHERLY, Administrative Patent Judge.
DECISION ON APPEAL

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Application 10/519,832
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STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 6,
8, and 10. Claims 1-5, 7, 9, and 11-18 have been canceled. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
The claims are directed to a frozen dessert manufacturing apparatus.
Claim 6, reproduced below, is representative of the claimed subject matter:
6. A frozen dessert manufacturing apparatus comprising:
a cold storage which cold-stores a liquid containing bag
constituted of a bag main body containing a mixture and having
flexibility and an outer layer member disposed outside this bag
main body, capable of forming a sealed space between the outer
layer member and the bag main body, and having flexibility;
a cooling cylinder which stirs and cools the mixture
supplied from the liquid containing bag to thereby manufacture
frozen dessert;
a cooling device which cools the cold storage or the
cooling cylinder;
an air compression device;
a mixture supply passage for connecting the inside of the
bag main body of the liquid containing bag to the inside of the
cooling cylinder;
a bag pressurizing passage for supplying compressed air
produced by the air compression device between the outer layer
member and the bag main body of the liquid containing bag;
an air supply passage for supplying compressed air into
the cooling cylinder; and

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a combined passage member detachably attached to the
cooling cylinder and disconnectably connected to the mixture
supply passage and the air supply passage,
wherein the mixture supply passage is combined with the
air supply passage, and thereafter connected to the inside of the
cooling cylinder by the combined passage member, and the
combined passage member is disposed in the cold storage.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Wilcox
Meserole
US 6,234,351 B1
US 6,494,055 B1
May 22, 2001
Dec. 17, 2002
REJECTION
The Examiner rejected claims 6, 8, and 10 under 35 U.S.C § 103(a) as
being unpatentable over the combination of Meserole and Wilcox.
OPINION
The Claimed Subject Matter
All claims on appeal recite a frozen dessert manufacturing apparatus
that includes, inter alia, a “cold storage” and a “combined passage member”
that “is disposed in the cold storage.” Br., Claims Appx. 22–23. The
claimed cold storage is a refrigerated portion of the enclosure in which a
liquid dessert mix is stored at temperatures above freezing. Spec. 7–8. This
dessert mix is combined with air in the claimed “combined passage
member” before the air/liquid mixture passes into a cooling cylinder. Id. at
13–14. The cooling cylinder further lowers the temperature of the air/liquid
mixture and freezes the dessert mixture to its final consistency. Id. at 26.

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The Specification describes the claimed combined passage member as
a “Y-type mixing unit 57” that combines dessert mix and air before entering
a cooling cylinder to ensure the correct consistency of the dessert being
dispensed from the claimed dessert maker. Id. at 13–14. The Specification
explains that the combined passage member 57 is located inside cold storage
2 so that the “temperature of the mixture or the compressed air flowing into
the cooling cylinder 8 does not rise.” Id. at 26; see also Id. at 14.
The Rejection on Appeal
The Examiner rejected claim 6, the sole independent claim, as being
unpatentable in light of Meserole and Wilcox. Ans. 3. The Examiner finds
that Meserole’s “air injection point 35,” which is shown outside the
refrigerated mix cabinet, is akin to the claimed “combined passage
member.” Ans. 3; see also Meserole, fig. 4 (illustrating air injection point
35 outside cold storage area). Appellants do not contest this finding.
Recognizing that Meserole does not explicitly disclose an air injection point
inside cold storage, the Examiner finds that:
The location of the combined passage member 35 of Meserole
is considered to be a matter of obvious choice to one of
ordinary skill in the art. No criticality or unexpected results are
seen or have been disclosed for the location of the combined
passage member being located in the cold storage.
Ans. 3.
The Appellants’ Argument
Appellants contend that the Examiner committed error by finding that
the location of the “combined passage member” in “cold storage” is merely
an obvious matter of design choice. Appellants argue no other error by the

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Examiner regarding the scope and content of the prior art or the differences
between the prior art and the claims. Specifically, Appellants argue:
Changing the location of the air injection point 35 to a
new location inside the refrigerated mix cabinet 40 would
modify the operation of the Meserole ’055 device. 	If the air
injection point were located inside the refrigerated mix cabinet
40, the mix and the air would be at colder temperatures when
they were combined, and thus the mix and the air would
combine in a different manner.
Accordingly, in view of the above, the location of the air
injection point 35 is not merely a matter of obvious design
choice.
App. Br. 15. Appellants also contend that the Examiner failed to make a
prima facie case of obviousness because the Examiner failed to cite evidence
supporting the conclusion that moving the combined passage member to
cold storage was an obvious design choice. Id. at 16.
The Examiner’s Response
The Examiner responded by noting that Appellants failed to explain
how the dessert mix and air would combine differently or how Meserole
would operate any differently if the air injection point were inside rather
than outside the cold storage area. Ans. 4. The Examiner also noted that the
Appellants’ Specification failed to explain why the location of the
“combined passage member” inside the cold storage was critical. Id. The
Examiner further noted that a skilled artisan would not expect, nor had
Appellants identified, any unexpected result stemming from moving the
“combined passage member” from outside to inside cold storage. Id. at 4–5.
To the contrary, the Examiner concluded that moving the combined passage
member to cold storage would merely achieve the result predicted by a

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skilled artisan, namely keeping the mixture of air and dessert mix colder.
Advisory Action, mailed July 6, 2009, at 2. Lastly, the Examiner found that
any cooling effect that might occur by moving the Appellants’ “combined
passage member” from outside to inside the cold storage would be negligible
because “the air supply line 51 … is a relatively short one.” Ans. 5.
Analysis
Per se rules for determining obviousness are disfavored. In re Ochiai,
71 F.3d 1565, 1571 (Fed. Cir. 1995). The Supreme Court set forth the
requirements for analyzing obviousness of patent claims as follows:
Often, it will be necessary for a court to look to interrelated
teachings of multiple patents; the effects of demands known to
the design community or present in the marketplace; and the
background knowledge possessed by a person having ordinary
skill in the art, all in order to determine whether there was an
apparent reason to combine the known elements in the fashion
claimed by the patent at issue. 	To facilitate review, this
analysis should be made explicit. 	See In re Kahn, 441 F.3d
977, 	988 	(Fed. 	Cir. 	2006) 	(“[R]ejections 	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”).
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
We agree with Appellants that the Examiner failed to provide
reasoning based upon rational underpinning to explain why a skilled artisan
would have moved the combined passage member of Meserole to cold
storage. See App. Br. 15-16. We discourage examiners from relying on
“design choice” because it is generally a mere conclusion, which is no
substitute for obviousness reasoning based on factual evidence.
Nonetheless, “design choice” may be appropriate where the applicant fails to

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set forth any reasons why the differences between the claimed invention and
the prior art would result in a different function or give unexpected results.
See In re Chu, 66 F.3d 292, 298-99 (Fed. Cir. 1995). However, in this case,
Appellants have explained how moving the combined passage member to
cold storage as claimed would result in a different function than that shown
by Meserole. Namely, combining the air and dessert mix inside the cold
storage would prevent the entrained air from increasing the temperature of
the mixture. See Br. 15; see also Spec. 26 (discussed supra). By contrast,
because Meserole injects air directly from the compressor 25a into the
cooled dessert mix at “air injection point 35,” we agree with Appellants that
Meserole’s air injection increases the temperature of the mixture of dessert
mix and air. See Br. 15. See also, Meserole, fig. 4. The Examiner has not
set forth an explanation or technical reasoning why moving the combined
passage member 35 of Meserole to cold storage would not result in a
different function than that shown by Meserole, as Appellants suggest. We
therefore find the Examiner’s proposed modification of Meserole is not an
obvious design choice and reverse the Examiner’s rejection of claims 6, 8,
and 10 under 35 U.S.C. § 103(a).
DECISION
For the reasons expressed above, we reverse the Examiner’s rejection
of claims 6, 8, and 10.
REVERSED
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