Applicants/Appellants in the food arts, rejoice!
In Ex parte Elejalde, US Patent Application Serial No. 14/119,935, Appeal 2019-003528 decided November 21, 2019 (Ex parte Elejalde), the claims recite a pan coating process using two drums. A liquid is taught to be applied in the first drum, and a powder applied in the second such that the powder binds to the liquid material coating applied in the first. The Examiner applied prior art teaching a method for continuously coating pieces of a confectionary product, including transporting the pieces through a first rotating drum wherein a first material is applied and a second rotating drum wherein a second material is applied. The Examiner conceded that the art does not teach that the first material is a liquid and the second is a powder, but argued:
One of ordinary skill would have recognized that in order for a powder coating to adhere, the surface of the comestible must be tacky (Note: it is common sense that a dry, non-tacky surface would not adhere dry powder.) A simple solution of making the surface tacky by coating it with a liquid would be well within the ordinary skill in the art in the same way that the home cook coats food with a liquid in order for a dry coating material to adhere when breading food in the home kitchen. The level of skill in the art is very low…
The Board disagreed and reversed, stating that “The Examiner’s reasoning relies on common sense to supply a limitation of the claim missing from the cited art – an approach discouraged by our reviewing court.” citing DSS Tech. Mgmt v. Apple, Inc., 885 F.3d 1367 (Fed. Cir 2018) (“In cases in which ‘common sense’ is used to supply a missing limitation, as distinct from a motivation to combine, our search for a reasoned basis for resort to common sense must be searching” quoting Randall Mfg. v. Rea, 733 F.3d 1355, 1363 (Fed. Cir. 2013).