Michael Sauvageau et al.

Patent Trials and Appeals Board

Sep 22, 2021

2020006113 (P.T.A.B. Sep. 22, 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.
15/618,698 06/09/2017 Michael G. Sauvageau NWCH.3531.USU2 1689
93582 7590 09/22/2021
ZIEGLER IP LAW GROUP, LLC.
3135 Easton Turnpike
SHU i-HUB, W-256
Fairfield, CT 06825
EXAMINER
AXTELL, ASHLEY
ART UNIT PAPER NUMBER
1792
NOTIFICATION DATE DELIVERY MODE
09/22/2021 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
eofficeaction@appcoll.com
ptomail@gziplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte MICHAEL G. SAUVAGEAU and
JENNIFER L. SAUVAGEAU
____________________

Appeal 2020-006113
Application 15/618,6981
Technology Center 1700
____________________

Before JAMES C. HOUSEL, MICHELLE N. ANKENBRAND, and
JULIA HEANEY, Administrative Patent Judges.

HOUSEL, Administrative Patent Judge.

DECISION ON APPEAL

A. STATEMENT OF THE CASE
Appellant filed an appeal under 35 U.S.C. § 134(a) from the
Examiner’s final decision rejecting claims 1–3 and 5–17.
We have jurisdiction under 35 U.S.C. § 6(b).2
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the inventors as the real party in
interest. Appeal Brief (“Appeal Br.”) filed January 30, 2020, 2.
2 Our Decision additionally refers to the Specification (“Spec.”) filed June
9, 2017, the Final Office Action (“Final Act.”) dated October 23, 2019, the
Examiner’s Answer (“Ans.”) dated June 22, 2020, and the Reply Brief
(“Reply Br.”) dated August 24, 2020.
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CLAIMED SUBJECT MATTER
The subject matter on appeal relates methods of producing a chocolate
confection (see, e.g., claims 1, 16, and 17). Specifically, the Specification
describes conventional customized convections that are created with a mold.
Spec ¶ 2. According to the Specification, this process is disadvantageous
because it requires time, materials, expenses, and is typically not cost
effective for single or low volume production. Id. The Specification
therefore discloses a laser engraving process that allows for individual
customization of messages in chocolate without the investment that
conventional processes require. Id. ¶ 14.
Independent claim 1 is illustrative and is reproduced below from the
Claims Appendix of the Appeal Brief.
1. A method of producing a chocolate confection
comprising:
selecting a type of chocolate for the chocolate confection;
selecting a finished size of the chocolate confection;
selecting a design template for a border of the confection,
and adjusting the design template by adding graphical elements
to the design template or removing graphical elements from the
design template according to the selected finished size of the
chocolate confection, prior to laser engraving;
providing a message to be laser engraved onto the
chocolate confection; and
laser engraving the message and the adjusted design
template directly onto the chocolate confection.
Appeal Br. 14 (Claims App.).
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REJECTIONS ON APPEAL
The Examiner maintains, and Appellant requests our review of, the
following grounds of rejection under 35 U.S.C. § 103:
I. Claims 1, 2, 7–10, 13, 14, 16, and 173 as unpatentable
over Cielo;4
II. Claim 3 as unpatentable over Cielo and Sweet
Engravings;5
III. Claims 5 and 6 as unpatentable over Cielo and Laser
Etched Chocolate Bar;6
IV. Claims 11 and 12 as unpatentable over Cielo and
Kuwabara;7 and
V. Claim 15 as unpatentable over Cielo and Chocolate
Making Luster Dust.8 Final Act. 2–8.

3 The Examiner lists claims 1, 7–10, 13, 14, 16, and 17 in the statement of
the rejection, but provides a rejection for claim 2. Final Act. 2–3.
Therefore, claim 2 is included in this rejection.
4 Cielo, US 2007/0202242 A1, published Aug. 30, 2007 (“Cielo”).
5 “Sweet Engravings” home page,
https://web.archive.org/web/20130503025624/https://www.sweetengravings.
com/index.html (last visited February 27, 2019).
6 “Laser etched Chocolate bar,”
https://www.scrapbook.com/galleries/594583/view/3518595/-1/1.html (last
visited February 26, 2019).
7 Kuwabara et al., US 2009/0169686 A1, published July 2, 2009
(“Kuwabara”).
8 “Chocolate Making (Luster Dust) by JK’s Kitchen 021,”
https://www.youtube.com/watch?v=2KUQ-uUl6qA (last visited September
9, 2021).
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B. DISCUSSION
Rejection I
Claims 1, 2, 7–10, 13, 14, 16, and 17 are rejected under 35 U.S.C.
§ 103 as unpatentable over Cielo.
Appellant presents arguments for claim 1 as a first group; claims 7,
13, and 14 as a second group; claims 8–10 as a third group; claim 16 as a
fourth group; and claim 17 as a fifth group. Appeal Br. 6–11. Appellant
does not argue dependent claim 2 separately from claim 1. Id. Therefore,
claim 2 stands or falls with claim 1. 37 C.F.R. § 41.37(c)(1)(iv).
Claims 1 and 2
The Examiner finds Cielo discloses a method of producing a
chocolate confection that includes selecting a type of chocolate, selecting a
finished size of the chocolate confection, selecting a design template of the
confection, providing a message to be laser engraved, and laser engraving
the message and design template directly onto the chocolate confection.
Final Act. 2–3.
The Examiner finds Cielo does not disclose that the selection of the
design template includes selecting a design template for a border of the
confection and adjusting the design template by adding or removing
graphical elements from the design template according to the selected
finished size of the chocolate confection, as claim 1 recites. Id. at 3. The
Examiner, however, finds Cielo discloses that a greeting is limited by the
size of the confection being shaped and the size of the symbols being
shaped. Id.
The Examiner concludes it would have been obvious for one of
ordinary skill in the art to add or remove graphical elements from Cielo’s
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design template, based on the finished size of the chocolate confection, so a
user could customize the overall design of the engraved chocolate
confection, and as an obvious matter of design choice. Id.
Appellant argues that Cielo does not even imply selecting a design
template for a border and to add or remove graphical elements from the
design template based on the finished size of the chocolate confection.
Appeal Br. 6–7. Appellant contends that the Examiner has not articulated
reasoning with some rational underpinning to support the Examiner’s
conclusion of obviousness because Cielo’s teachings regarding the
limitations of a greeting’s size due to a confection’s size does not suggest the
claimed limitation of “selecting a design template for a border of the
confection, and adjusting the design template by adding graphical elements
to the design template or removing graphical elements from the design
template according to the selected finished size of the chocolate confection”
(the “disputed limitation”). Id. at 7.
Appellant further asserts that paragraph 27 of the Specification
demonstrates the criticality of the disputed limitation and, therefore, the
rationales of design choice and ornamental, aesthetic design changes do not
apply because Cielo and the disputed limitation perform different functions
and because the disputed limitation has a mechanical function that is more
than mere ornamentation. Id. at 7– 9.
The Examiner responds, finding that Cielo’s teachings, which include
the use of a set of templates and that a user can “completely customize the
greeting,” “would necessarily include the steps of ‘selecting a design
template and adjusting the design template by adding graphical elements to
the design template or removing graphical elements from the design
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template according to the selected finished size of the chocolate
confection.’” Ans. 3–5. The Examiner also disagrees that Cielo and the
claimed invention perform different functions and disagrees that the use of a
border is not merely for ornamentation purposes. Id. at 6–8.
Appellant replies that the Examiner admits in the Answer that Cielo
fails to disclose the disputed limitation. Reply Br. 2. Appellant disagrees
that the disputed limitation would have been obvious as a matter of design
choice because Cielo’s teachings would not necessarily include the disputed
limitation, Cielo and the claimed invention perform different functions, and
the disputed limitation is related to more than ornamentation. Id. at 2–4.
Appellant also argues that the Examiner admits in the Answer that Cielo
does not provide a design template for a border of a confection. Id. at 5.
Appellant’s arguments are unpersuasive. The Examiner’s Answer
refers to non-functional descriptive material, which includes “printed
matter.” Ans. 6–7. We agree that claim 1 regards non-functional descriptive
material because the disputed limitation recites the addition or removal of
graphical elements to or from a border, which would merely produce non-
functional descriptive material content because “the border” merely
describes the location of graphical elements applied to the confection and the
graphical elements themselves are merely non-functional descriptive
material.
In considering whether the descriptive material of a claim is entitled
to patentable weight, the critical question is whether there is a functional
relationship between the descriptive material and the substrate. In re
Gulack, 703 F.2d 1381, 1386 (Fed. Cir. 1983). Claim limitations directed to
descriptive material are not entitled to patentable weight unless the
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descriptive material is functionally related to the substrate on which the
descriptive material is applied, thereby rendering the descriptive material
functional. Praxair Distribution, Inc. v. Mallinckrodt Hosp. Products IP
Ltd., 890 F.3d 1024, 1031 (Fed. Cir. 2018). Functional descriptive
material—material that is functionally related to its substrate—is given
patentable weight. Id. at 1032. On the other hand, descriptive material that
is not functionally related to the substrate on which it is applied is non-
functional and not entitled to patentable weight. Id.
Appellant’s arguments do not persuade us that the descriptive material
(i.e., a border and its graphical elements) has a functional relationship to its
substrate (i.e., a chocolate confection). Appellant argues that paragraph 27
of the Specification demonstrates criticality and that the disputed limitation
provides an advantage or particular purpose. Appeal Br. 7–8. Paragraph
27’s discussion regards adjusting a design template for a border to
accommodate different chocolate confection sizes so “the line width, line
length, and sizes of the features of the design template may remain constant,
or within certain specifications, avoiding any problems with laser engraving
lines and features that may be too small or too large to maintain a proper
resolution and visibility.” (emphasis added).
Adding or removing graphical elements to maintain proper resolution
and visibility, even in light of the size of a chocolate confection, does not
demonstrate a functional relationship between the descriptive material and
the confection on which it is applied. For instance, Appellant does not
demonstrate that the content of the graphical elements is functionally related
to the chocolate confection, such as, for example, by conveying a size of the
chocolate confection due to the location of a particular graphical element on
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the chocolate confection. See In re Miller, 418 F.2d 1392, 1396 (CCPA
1969) (a legend and volumetric indicia indicating a certain ratio to actual
volume had a functional relationship to a measuring vessel). Therefore, the
descriptive material is non-functional and is not entitled to patentable
weight.
Moreover, the record supports a conclusion that the disputed
limitation regards ornamental or aesthetic purposes that is within the
ordinary skill in the art and would have been obvious based on Cielo’s
teachings. Although the Examiner finds that Cielo does not specifically
include a border, the Examiner finds that Cielo teaches that a user may
customize a design of a template including a greeting and that the greeting is
limited by the size of the confection. Ans. 5, 7. Cielo teaches that a
“greeting is only limited by the size of the confection being shaped and the
size of the symbols being shaped.” Cielo ¶ 22. Thus, Cielo teaches
modifying a template with a greeting, including its symbols, in view of a
confection’s size. Cielo also teaches that a user is allowed “to completely
customize the greeting.” Id. ¶ 50. Therefore, to the extent Cielo does not
explicitly disclose a design template including a border, Cielo teaches
customizing a template with a greeting, including its symbols, and that
customization depends upon the available size of a confection.
Appellant’s arguments that the addition of a border and its design
template to Cielo’s process would not have been an obvious ornamental
change are unpersuasive. As noted above, Appellant argues the disputed
limitation regards a mechanical function and does not merely regard
ornamental changes. Appeal Br. 8–9. However, the discussion in paragraph
27 of the Specification indicates that the claimed addition or removal of
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graphical elements to or from a border’s design template is for aesthetic
purposes; to ensure that the border has proper resolution and visibility. This
does not sufficiently demonstrate the mechanical function Appellant asserts
or that the disputed limitation regards a different function than what Cielo
contemplates; modifying a template including a greeting according to a
user’s desire and in view of a confection’s size.
For these reasons and those set forth in the Examiner’s Answer,
Appellant’s arguments do not identify a reversible error in the Examiner’s
§ 103 rejection of claim 1.
Claims 7–10, 13, 14, 16, and 17
Although Appellant argues claims 7–10, 13, 14, 16, and 17 separately,
we discuss these claims together for purposes of efficiency because
Appellant’s arguments for each group are essentially the same.
Claims 7–10, 13, 14, 16, and 17 regard conditioning data relating to a
selected design template and/or message by scheduling engraving to be
performed at different locations or different times that would be sufficient to
allow portions of a chocolate confection to cool between engravings. The
Examiner finds that these claims are obvious in view of Cielo because Cielo
discloses providing user input for a desired greeting to a controller, which
processes the information and instructs an engraving tool, and because Cielo
discloses the use of a cooling air stream. Final Act. 4–5.
Appellant asserts that “simply disclosing an air stream provided to
cool the region immediately around the point of the laser beam, is different
than purposely scheduling engraving to be performed at different locations
in order to ensure cooling.” Appeal Br. 9. Appellant contends that Cielo’s
disclosure does not relate to scheduling engraving and that Cielo does not
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have a “disclosure related to actually performing a scheduling operation
such that engraving is performed at different locations in order to prevent
blurring of the selected design template and message.” Id. at 10–11.
Appellant also argues that “Cielo has no disclosure related to purposely or
actively scheduling engraving of proximate elements to be performed at
different locations in order to ensure cooling” and there is no factual basis in
Cielo or technical reasoning to support the conclusion that Cielo’s air stream
would allow portions of a confection to cool between engravings, as the
claims recite. Reply Br. 6–7.
Appellant’s arguments are unpersuasive. Cielo discloses an input
device for accepting user input, which is provided to a controller that
processes the information and instructs an etching tool accordingly. Cielo
¶ 49. Therefore, Cielo discloses conditioning data and scheduling engraving
based on this data. Although Appellant argues “purposely or actively”
scheduling engraving, the claimed processes of scheduling engraving at
different locations or times read upon a process in which each character is
engraved one after another, such as consecutive letters of a word. In such a
process, the letters are engraved at different locations in order to form the
word and be legible and, due to this scheme, are engraved at different times.
Cielo discloses such a process. See id. ¶¶ 54–60.
Cielo also discloses the use of an air stream that may “help to cool the
region of the confection immediately around the impingement point of the
laser beam.” Id. ¶ 31. Therefore, Cielo’s teachings provide a reasonable
basis for concluding that Cielo’s process is sufficient to allow portions of a
chocolate confection to cool between engravings. Appellant does not cite
sufficient evidence or persuasive technical reasoning to demonstrate
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otherwise. As a result, Appellant does not persuasively argue a patentable
difference between claims 7–10, 13, 14, 16, and 17 and Cielo’s process.
For these reasons and those set forth in the Examiner’s Answer, we
sustain the Examiner’s § 103 rejections of claims 1, 2, 7–10, 13, 14, 16, and
17 over Cielo.

Rejections II and III
Claim 3 is rejected under 35 U.S.C. § 103 as unpatentable over Cielo
and Sweet Engravings.
Claims 5 and 6 are rejected under 35 U.S.C. § 103 as unpatentable
over Cielo and Laser Etched Chocolate Bar.
Appellant asserts that the additional references cited in Rejections II
and III fail to remedy the deficiencies for the rejection of claim 1. Appeal
Br. 11–12. For the reasons discussed above with regard to Rejection I, there
are no deficiencies in the rejection of claim 1 that require a remedy.
Therefore, we sustain the Examiner’s § 103 rejections of claims 3, 5, and 6.

Rejection IV
Claims 11 and 12 are rejected under 35 U.S.C. § 103 as unpatentable
over Cielo and Kuwabara.
The Examiner finds that Cielo does not suggest conditioning data
related to a selected design template and a message by selecting laser
engraving parameters according to a selected type of chocolate, as claim 11
recites. Final Act. 7. The Examiner finds that Kuwabara discloses selecting
laser engraving parameters according to a selected type of chocolate. Id.
The Examiner concludes it would have been obvious to modify Cielo in
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view of Kuwabara so different chocolates could be laser engraved without
impairing the taste or flavor of the chocolate. Id. at 7–8.
The Examiner also finds that Cielo does not disclose the laser
engraving parameters that claim 12 recites. Id. at 8. The Examiner
concludes it would have been obvious to optimize Cielo’s laser parameters
in view of Kuwabara’s teachings. Id.
Appellant contends that Kuwabara discloses the use of a pulsed laser
to form a rough source on a solid chocolate to change the luster of its
surface. Appeal Br. 12. Appellant argues that “[t]he present claims teach a
different process where the message and the adjusted design template are
directly engraved onto the chocolate confection without forming a rough
surface with a changed luster.” Id.
Appellant’s arguments are unpersuasive because claims 11 and 12 do
require a specific surface smoothness or luster for the engraved chocolate.
Therefore, Appellant’s arguments fail from the outset because they are not
based on limitations set forth in the claims. In re Self, 671 F.2d 1344, 1348
(CCPA 1982). As a result, we sustain the Examiner’s § 103 rejection of
claims 11 and 12.

Rejection V
Claim 15 is rejected under 35 U.S.C. § 103 as unpatentable over Cielo
and Chocolate Making Luster Dust.
The Examiner finds that Cielo does not disclose that selecting a
finished size for a chocolate confection includes coating a mold for molding
the chocolate confection with an edible colored dust to enhance engraving
visibility, as claim 15 recites. Final Act. 8. The Examiner finds Chocolate
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Making Luster Dust discloses coating a mold for molding a chocolate
confection with an edible colored dust to enhance the appearance of the
molded chocolate. Id. The Examiner concludes it would have been obvious
for one of ordinary skill in the art to modify Cielo in view of Chocolate
Making Luster Dust to enhance the appearance of Cielo’s product and
enhance its engraving visibility. Id.
Appellant argues that “[t]he Chocolate Making Luster Dust video
discloses using a finger to coat a mold with luster dust before pouring
chocolate into the mold” but “the video fails to disclose coating the mold to
enhance engraving visibility.” Appeal Br. 12. Appellant further contends
that Cielo is silent with regard to claim 15’s limitation and “The Chocolate
Making Luster Dust video only discloses using a finger to coat a mold with
luster dust before pouring chocolate into the mold.” Reply Br. 8.
As Appellant acknowledges, Chocolate Making Luster Dust coats a
mold with “luster dust.” Appeal Br. 12. Chocolate Making Luster Dust
indicates that the luster dust provides a visual contrast effect for three-
dimensional features molded into the surface of chocolate. Chocolate
Making Luster Dust 12. Although Chocolate Making Luster Dust may use
its luster dust for a different purpose than Appellant’s invention, the
Examiner’s reason to combine need not be the same reason that an inventor
used a certain technique. “[T]he motivation in the prior art to combine the
references does not have to be identical to that of the applicant to establish
obviousness.” In re Kemps, 97 F.3d 1427, 1430 (Fed. Cir. 1996).
Therefore, Appellant’s arguments do not identify a reversible error in the
rejection of claim 15. For these reasons and those set forth in the
Examiner’s Answer, we sustain the Examiner’s § 103 rejection of claim 15
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over Cielo and Chocolate Making Luster Dust.

CONCLUSION
The rejections are affirmed.
DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2, 7–10,
13, 14, 16,
17
103 Cielo 1, 2, 7–10,
13, 14, 16,
17

3 103 Cielo, Sweet
Engravings
3
5, 6 103 Cielo, Laser Etched
Chocolate Bar
5, 6
11, 12 103 Cielo, Kuwabara 11, 12
15 103 Cielo, Chocolate
Making Luster Dust
15
Overall
Outcome:

1–3, 5–17

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED