Alice Mary. Kiely

Patent Trials and Appeals Board

May 27, 2021

2019002783 (P.T.A.B. May. 27, 2021)

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
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/347,018 01/17/2003 Alice Mary Kiely 6985
7590 05/27/2021
Alice O. Kiely
71 Stonewall Court
Yorktown Heights, NY 10598
EXAMINER
CHAWLA, JYOTI
ART UNIT PAPER NUMBER
1792
MAIL DATE DELIVERY MODE
05/27/2021 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 ALICE MARY KIELY
____________

Appeal 2019-002783
Application 10/347,018
Technology Center 1700
____________

Before HUBERT C. LORIN, JEFFREY T. SMITH, and
MONTÉ T. SQUIRE, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
The Appellant1 has filed a Request for Rehearing (“Request”) of the
Decision on Appeal (mailed Dec. 16, 2020; “Decision”) pursuant to
37 C.F.R. § 41.52.
In the Decision, the Board
1. reversed the rejection of claims 126–132 and 138–144 under 35
U.S.C. § 112, second paragraph,

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). The Appellant identifies Alice Mary O'Donnell Kiely
(Alice O. Kiely) as the real party in interest. Appeal Br. 2.

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2. affirmed the rejection of claim 131 under 35 U.S.C. § 112, second
paragraph,
3. reversed the rejection of claims 142 and 143 under 35 U.S.C.
§ 103(a) as being unpatentable over Tezuka and Cherukuri;
4. reversed pro forma the rejections of
a. claims 125, 126, 131, 133, 134, 137, and 145 under pre-AIA
35 U.S.C. § 102(b) as being anticipated by Tezuka; and,
b. claims 127–130, 132, 135, 136, and 144 under 35 U.S.C.
§ 103(a) as being unpatentable over Tezuka and Cherukuri;
and,
5. entered a new ground of rejection of claims 125–141, 144, and 145
under 35 U.S.C. § 112, second paragraph.
The Request concerns only the rejection of claim 131 under § 112,
second paragraph, and the new ground of rejection under 35 U.S.C. § 112,
second paragraph. According to Appellant, “[c]laim 131 is respectfully
submitted to be definite along with its scope and cited ingredients” (Req.
Reh’g 10) and that claims 125–141, 144, and 145 are definite (see Req.
Reh’g 10–20 for claims 124–141, 144, and 145; 21 for claims 133–137 and
144; and, 21–24 for claims 138–141).
We have carefully reviewed the arguments set forth in the Request but
for the following reasons we are unpersuaded to change the Decision.
DISCUSSION
Before we proceed to address Appellant’s arguments, we would like
to emphasize the following points.
This application was filed in 2003. We looked for an Interview
Summary in the record but could not find one, suggesting the Examiner and
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Appellant have never engaged in a phone or face–to–face discussion. We
think that would be helpful in this case as it might expedite the issues.
Also, our duty on appeal is to “review” the adverse decision of the
Examiner. 35 U.S.C. 6(b)(1). We do not determine whether Appellant has a
patentable invention. Appellant has included Information Disclosure
Statements with this Request (Exhibits A and B) in an effort to explain, we
think, what Appellant believes she is entitled to have patent protection for.
That is not something we can address. We can only address the rejections
that have been appealed to the Board.

The rejection of claim 131 under § 112, second paragraph.
The claim calls for “pressed candy compris[ing] a selection from the
group comprising a sweetener, a maltodextrin, a citric acid, and a flavoring”
(claim 131). We stated:
By using the open term “comprising” in a Markush
grouping, the claim is made to encompass more alternatives than
what is recited- i.e., more than one of “a sweetener, a
maltodextrin, a citric acid, and a flavoring” (claim 131).
However, it is unclear what other alternatives Appellant
contemplates as being included in the grouping. In this situation,
it is proper to reject the claim as indefinite.
Dec. 6 (citing MPEP § 2173.05(h)).
Appellant argues that “the claimed features of claim 131 … includes a
pressed candy comprising a sweetener, a maltodextrin, a citric acid, and a
flavoring.” Req. Reh’g 5 (emphasis added). Had the claim been drafted that
way, there would be no problem. There would not be a question of
indefiniteness. But that is not what we have here.
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What we have here is a claim with the clause “selected from the
group” followed by the term “comprising” and then the group “a sweetener,
a maltodextrin, a citric acid, and a flavoring.” The way the claim is presently
drafted, the pressed candy could comprise anything. This is so because the
claim encompasses a pressed candy comprising a sweetener or a
maltodextrin or citric acid or a flavoring or something else, which remains
unclear. Cf. KCJ Corp. v. Kinetic Concepts, Inc., 223 F.3d 1351, 1356 (Fed.
Cir. 2000) (“[T]he transition ‘comprising’ creates a presumption that the
recited elements are only a part of the device, that the claim does not exclude
additional, unrecited elements.”)
This is a situation squarely addressed by the MPEP:
If a Markush grouping requires a material selected from an open
list of alternatives (e.g., selected from the group “comprising” or
“consisting essentially of” the recited alternatives), the claim
should generally be rejected under 35 U.S.C. l 12(b) as indefinite
because it is unclear what other alternatives are intended to be
encompassed by the claim.
MPEP § 2173.05(h); Dec. 6.
Appellant argues that “[c]laim 131 is not a Markush claim.” Req. 6. See
also Req. 7 (“Markush claiming, or a ‘closed group,’ which do not pertain to claim
131, an open claim, which recites comprising, … .”) At present, that is true. At
present, claim 131 contains an improper Markush expression. The expression
“selected from the group comprising” is an improper Markush expression.
See Abbott Laboratories v. Baxter Pharmaceutical Products, Inc., 334 F.3d
1274, 1280–81 (Fed. Cir. 2003):
A Markush group is a listing of specified alternatives of a group in a
patent claim, typically expressed in the form: a member selected from
the group consisting of A, B, and C. Therefore, “if ‘wherein R is a
material selected from the group consisting of A, B, C and D’ is a proper
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limitation then ‘wherein R is A, B, C or D’ shall also be considered
proper.’ In re Harnisch, 631 F.2d 716, 724 (CCPA 1980) (containing
an Appendix describing Patent Office practice); see Manual of Patent
Examining Procedure (MPEP) § 2173.05(H) (8th ed. 2001); see also
Robert C. Faber, Landis on Mechanics of Patent Claim Drafting, § 50,
5A, VI–5–6 (4th ed. 2002) (“A Markush group is a sort of homemade
generic expression covering a group of two or more different materials
(elements, radicals, compounds, etc.), mechanical elements, or process
steps, any one of which would work in the combination claimed.”). It
is well known that “members of the Markush group are ... alternatively
usable for the purposes of the invention.” In re Driscoll, 562 F.2d 1245,
1249 (CCPA 1977). Moreover, “[a] Markush group, incorporated in a
claim, should be ‘closed,’ i.e. it must be characterized with the
transition phrase “consisting of,” rather than “comprising” or
“including.” ’ ” *1281 Stephen A. Becker, Patent Applications
Handbook § 2:17 (9th ed.2000). Thus, “members of the Markush group
are used singly.” See Meeting Held to Promote Uniform Practice In
Chemical Divisions, 28 J. Pat. & Trademark Off. Soc’y 849, 852 (1946)
(listing practices approved by the primary examiners of the USPTO’s
chemical group).
When an Examiner sees an improper Markush expression, it is proper,
as the Examiner did here, to raise a question of indefiniteness. See MPEP
§ 2173.05(h), Dec. 6. “It is the job of the Patent and Trademark Office to
ensure, on examination, that a claim is definite and that, when a Markush
expression is used, it is used properly.” Lexington Luminance LLC v.
Amazon.com Inc., 601 Fed.Appx. 963, 968 (Fed. Cir. 2015).
Appellant argues that “‘Markush claiming’ was not introduced until
the Advisory Action.” Req. Reh’g 6. However, it appears to have been
raised in the Non–Final Action, mailed March 10, 2017. It is true that the
Non–Final Action did not explicitly use the word “Markush.” But it clearly
stated that “[a]s the recited group is open-ended (i.e. said group may
comprises ingredients other than those recited), it is not clear what the metes
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and bounds of the claim are.” Id. Appellant was thus on notice about why
claim 131 was rejected as being indefinite before the Advisory Action. The
improper expression rendering the claim indefinite was clearly spelled out
for Appellant – even if the word “Markush” normally associated with such
an expression was not included. The Examiner even provided Appellant a
suggestion for how to correct it: “it will be assumed the above recitation is
equivalent of ‘said pressed candy comprises a selection from the group
comprising consisting of a.....’ (emphasis added).” Id.
Appellant argues that various other patents have claims which appear
to include improper Markush language. Req. Reh’g 7–10. The fact that other
patents appear to include improper Markush language has no bearing on this
case.
We are unpersuaded as to error in our decision to affirm the rejection
of claim 131 as being indefinite.

The new ground of rejection under 35 U.S.C. § 112, second paragraph.
“pressed candy” (claims 125–132 and 145)
We determined that “the claim phrase ‘pressed candy’ [is] unclear and
vague.” Dec. 10.
Appellant had argued that the “[t]he term ‘pressed candy’ is well
established, objectively known, and factually established.” Appeal Br. 19.
However, given the record before us at the time of the Decision, we
determined “[t]here [was] insufficient information about the well-understood
meaning of ‘pressed candy’ or about the conditions that would define what
‘pressed candy’ is.” Dec. 11.
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With this Request Appellant includes evidence that, according to
Appellant, clarifies the meaning of “pressed candy.” According to
Appellant, the evidence shows that one of ordinary skill would have
understood the claim phrase “pressed candy” to mean tableted candy. Req.
Reh’g 15–20.
Appellant submits that “pressed candy” is tableted candy. See Req.
Reh’g 18 (“Appellant submits that the term, ‘tableting,’ may be a more
widely used technical term for ‘pressed candy’; however Appellant submits
that a pressed candy is also well known to PHOSIDA.”) The Request states:
“Applicant submits that the claims ‘distinguishing feature’ over Tezuka is at
least that the ‘pressed candy,’ is made in a mold, or is ‘tableted.’ As this
kind of candy is already well-known, it is difficult to assess what
clarification is actually required, or considered remedied.” Id. at 20.
We have carefully reviewed the evidence provided with this Request.
Appellant points to “EXHIBIT H, pgs. 1-2, GOOGLE search for
‘pressed candy’ [(Req. 83–84)].” Req. Reh’g 19. This exhibit mentions
tableted candy only once. We reproduce the passage that mentions it:
www.alibaba.com , Food & Beverage
pressed candy, pressed candy Suppliers and Manufacturers ...
3167 products - Alibaba.com offers 3167 pressed candy
products. About 10% of these are Hard Candies. 0% are
Marshmallows, and 16% are Tablet Candies.
Req. Reh’g 84. This passage states that there are “3167 pressed candy
products” being offered. Of these, 16% are “Tablet Candies.” If only 16% of
the pressed candy products are tablet candies, then not all of the offered
pressed candies are tableted candies. This would suggest to one of ordinary
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skill in the art that the claim phrase “pressed candy” does not necessarily
mean tableted candy as Appellant has argued.
The other evidence provided with this Request is also insufficient in
showing that one of ordinary skill in the art would have understood “pressed
candy” to mean tableted candy. Exhibits D (“Tableted Confections
Formulation and Considerations,” The Manufacturing Confectioner,
November, 1996, p. 39) and E (US Patent 17,262) disclose making candies
using a tablet press. But they do not disclose that a tablet press is required to
make a “pressed candy.”
Appellant further points to the Specification. According to Appellant,
the “Specification paragraphs clearly teach, ‘a pressed candy: [paras. 181,
184, 297, 305, 325, 327, 394]’.” Req. Reh’g 17– 18. “Also see paragraphs
for support 60: [0336], [0338], [0339], [0350], [0353], [0356], [0357],
[0375] and [0376].” Id. at 18.
We have reviewed said disclosures but can find no mention of
“pressed candy” anywhere in the Specification. As we stated in the Decision,
“[t]he original Specification and claims, when filed, did not mention
‘pressed’ or ‘pressed candy.’” Dec. 9.
We stated in the Decision that “‘[p]ressed candy’ first appeared in the
claims by Amendment of March 13, 2006 (e.g., claim 42 called for a
‘moisture proof substantially stick-like pressed candy support’)” (id.). The
record shows that “[t]he Examiner has understood Appellant to be relying on
disclosure of ‘Lik-m-aid’ in para. 181 of the Specification as an example of
a ‘pressed candy’” (id. at 10).
We have accepted that “the Examiner is satisfied that ‘pressed candy’
has written descriptive support” (Dec. 10) based on the disclosure of “Lik-
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m-aid” in para. 181 (and 305) of the Specification. But, as we indicated, the
trademark registration for “Lik-m-aid” describes it as a powder. Id.
Appellant now confirms that “Lik-M-Aid in 1952 originally consisted
of four packets of flavored and colored sugar that a user would open and
pour into their mouths.” Req. Reh’g 13. According to Appellant, “Lik-M-
Aid was rebranded to include ‘Fun Dip,’ in 1973 which was supplied with
two candy sticks.” Id. In support, Appellant cites to Exhibit C (“Fun Dip
Information And History,” https:/fwww.snackhlstory.com/fun-dip; Req.
Reh’g 49). But Exhibit C tells a somewhat different story; that is, Fun Dip
was “invented” 20 years after Lik–m–aid to “include[ ] candy sticks called
Lik.A.Stix”. Thus, it would appear that it is Lik.A.Stix which is the stick–
like ingredient in Fun Dip, not Lik–m–aid, which is a powder.
Be that as it may, neither Lik–m–aid nor Lik.A.Stix provide sufficient
support for Appellant’s argument that “pressed candy” is tableted candy.
There is insufficient evidence that one of ordinary skill in the art reading the
Specification, namely the disclosure of Lik–m–aid, would have understood
the claim phrase “pressed candy” to mean tableted candy.
We have considered Appellant’s arguments and the provided
evidence. We are unpersuaded that the Appellant has clarified the meaning
of “pressed candy.” Thus, Appellant has not shown error in our decision to
newly reject claim 125–132 and 145 as being indefinite. We maintain that
the phrase “‘pressed candy’ remains unclear and vague, rendering the claims
indefinite.” Dec. 11. As we stated in the Decision:
“[U]nder the broadest reasonable interpretation when read in
light of the Specification, [the phrase 'pressed candy'] is vague
and unclear, and a person having ordinary skill in the art would
not be able to discern the metes and bounds of the claimed
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invention in light of this claim language.” Ex parte McAward,
2015-006416, slip op. at 15-16 (PTAB Aug. 25, 2017)
(precedential).
Id. at 12.

“pressing” (claims 133–137 and 144)
Similar to the arguments over “pressed candy,” Appellant argues that
claims 133-137, and 144 are definite having shown the required
evidence. It is shown that the term, “tablet,” or “tablet
confection,” is well known. (See: EXHIBJT C, pgs. 1-8;
EXHIBIT D, pgs. 1-11, EXHIBIT E, pgs. 1-6; EXHIBIT F, pgs.
1-6.) As the patentability of method claims are according to
structure, Appellant respectfully submits that method claims
133-137, and 144 are likewise, as above, novel over Tezuka.
Req. Reh’g 22.
We have reviewed said Exhibits. They do not sufficiently show one of
ordinary skill in the art at time of the invention would have understood
“pressing” to mean tableting. We have been unable to locate any disclosure
equating “pressing” with “tableting.” At best, the exhibits show using a press
to make tableted candy but there is no indication or suggestion that one of
ordinary skill in the art would have understood “pressed candy” to mean
tableted candy.
We are unpersuaded as to error in our decision to newly reject claims
133–137 and 144 as being indefinite.

“self-contained” (claims 138–141)
In challenging the prior art rejection, Appellant had argued, inter alia,
that “[t]he self contained support of claim 138 does not require a coating.”
Appeal Br. 26; Dec. 13. But, for the reasons discussed in the Decision (Dec.
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13), we found that the term “self-contained” was “vague and unclear, and a
person having ordinary skill in the art would not be able to discern the metes
and bounds of the claimed invention in light of this claim language” (id. at
14) and so we sought “[c]larification of the meaning of ‘self-contained.’” Id.
Appellant now responds, inter alia, that “Figures 3, 4, and 28 show a
‘self contained’ support. There is no coating needed to keep the support
moisture impervious. The support is self contained.” Req. Reh’g 24.
However, we do not see how one of ordinary skill in the art could
have discerned from Figures 3, 4, and 28 that the support is “self–contained”
so that a coating is not needed. Figure 28 simply shows an elongated object
with the reference numeral 60. The same object is shown in Figures 3 and 4.
There is no indication of it being “self–contained” in such a way that a
coating is not needed as Appellant argues.
We have considered Appellant’s arguments but find them
unpersuasive as to error in our decision to newly reject claims 138–141 as
being indefinite. The term “self-contained” remains vague and unclear.

DECISION SUMMARY
Outcome of Decision on Rehearing:
Claim(s)
Rejected
35
U.S.C.
§
Reference(s)/
Basis
Denied Granted
131 112 ¶ 2 Indefiniteness 131
125–141,
144, 145
112 ¶ 2 Indefiniteness 125–141, 144,
145

Overall
Outcome
125–141, 144,
145

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Final Outcome of Appeal after Rehearing:
Claim(s)
Rejected
35
U.S.C.
§
Reference(s)/
Basis
Affirmed Reversed New
Ground
126–132,
138–144
112 ¶ 2 Indefiniteness 131 126–130,
132, 138–
144

125, 126,
131, 133,
134, 137,
145
102 Tezuka 125, 126,
131, 133,
134, 137,
145

127–130,
132, 135,
136, 138–
144
103 Tezuka,
Cherukuri
127–130,
132, 135,
136,
138–144

125–141,
144, 145
112 ¶ 2 Indefiniteness 125–141,
144, 145
Overall
Outcome
131 125–130,
132–145
125–141,
144, 145

DENIED