Appeal No. 1999-2509
Application 08/752,917
be further manipulated such as by cutting, scraping, having other materials added thereto and/or
being homogenized and/or injection molded or otherwise treated alone or with other materials
that are added. Indeed, representative claim 14 is open to other materials being added in amounts
that would dwarf the chocolate or syrup containing confection in the extrudate. Given that claim
breadth, it can hardly be said that the ultimately obtained claimed product requires any particular
vein arrangement such that it necessarily would be patentably distinct from the products
suggested by the applied prior art based on the arguments appellant presents in the briefs. In this
regard, appellant argues for patentability of the claimed product as if that product is required to
have particular type veins (comet shape) and random or non-patterned arrangement thereof in the
chocolate (interspersed) that would differentiate over Pelletier taken with Cloud with or without
the admitted prior art or differentiate over Mackey with Kehoe, Wedin or Butcher with or
without the admitted prior art. However, those arguments, as well as the sample product
submitted in the record (Paper No. 14), are clearly not commensurate in scope with the claimed
subject matter for reasons as discussed above and as set forth by the examiner in the answer.
While I agree with the majority that the teachings of Mackey alone seem sufficient to
render the claimed subject matter prima facie obvious, I do not find implicit support in
appellant’s statements in the reply brief (i.e., an admission) for bolstering such a position as the
majority apparently suggests in their opinion. Moreover, I agree with the examiner that the
combined teachings of Mackey with the secondary references relied upon by the examiner would
have rendered the claimed product obvious within the meaning of 35 U.S.C. § 103. Concerning
this matter, whether or not the examiner’s reasoning is complete and fully correct with regard to
the so called “single vein” theory in describing the teachings of Mackey, it is clear that Mackey
alone or in combination with the secondary references relied upon by the examiner reasonably
suggests forming an extrudate from a mixture of chocolate and syrup based confectionary
material, such as caramel or toffee so as to obtain a striated appearance in a snack food item.
necessitates that the final product, as claimed, has any particular veined structure, let alone veins
which are inlayed in the chocolate in a non-touching manner so as to patentably differ from the
modified Pelletier molded chocolate advanced by the examiner as a basis for rejecting the
claimed subject matter.
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