Ajinomoto Co., Inc.

Patent Trials and Appeals Board

Dec 1, 2021

2020006402 (P.T.A.B. Dec. 1, 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.
16/045,515 07/25/2018 Yosuke Ohama 514459US 5453
22850 7590 12/01/2021
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
EXAMINER
TRAN, LIEN THUY
ART UNIT PAPER NUMBER
1793
NOTIFICATION DATE DELIVERY MODE
12/01/2021 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):
OBLONPAT@OBLON.COM
iahmadi@oblon.com
patentdocket@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YOSUKE OHAMA, MISAKI ASANO,
CHIAKI KURIHARA, and HIROSHI ISHII
Appeal 2020-006402
Application 16/045,515
Technology Center 1700
Before BEVERLY A. FRANKLIN, DONNA M. PRAISS, and
JANE E. INGLESE, Administrative Patent Judges.
FRANKLIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–16. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM–IN–PART.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as AJINOMOTO
CO., INC. Appeal Br. 2.
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CLAIMED SUBJECT MATTER
Claim 1 is illustrative of Appellant’s subject matter on appeal
and is set forth below:
1. A filling-wrapping dough sheet food, the food comprising:
a filling; and
a dough sheet wrapping the filling,
wherein the dough sheet comprises grain flour, acetylated
phosphate-crosslinked starch, and hydroxypropylated starch.

REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Tamaki US 2015/0181898 A1 July 2, 2015
Kawata US 2016/0338395 A1 November 24, 2016
Omura JP 2015-002695 A January 8, 2015

THE REJECTION
Claims 1–16 are rejected under 35 U.S.C. § 103 as being unpatentable
over Omura in view of Tamaki and Kawata.
OPINION
Appellant’s arguments focus primarily on claim 1 (Appeal Br. 5–12)2.
In addition, Appellant provides additional comments or arguments under
separate sub-headings for claims 2 and 11 together (Appeal Br. 12–13),

2 Claim 1 is a product claim and claim 10 is a method claim. Appellant does
not discuss method claim 10 when presenting arguments for the rejection of
claims 1–16. Appeal Br. 5–12. Hence, we select claim 1 as representative.
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claim 12 (Appeal Br. 13–17), and claim 16 (Appeal Br. 17–19). Therefore,
we address claims 2 and 11 together, claim 12, and claim 16 to the extent
these claims are separately argued within the meaning of 37 C.F.R.
§ 41.37(c)(1)(iv). Otherwise, all claims on appeal stand or fall with claim 1,
which we select as representative.
We review the appealed rejections for error based upon the issues
Appellant identifies, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential)
(cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)
(“[I]t has long been the Board’s practice to require an applicant to identify
the alleged error in the examiner’s rejections.”)). After considering the
argued claims and each of Appellant’s arguments, we are persuaded of
reversible error in the appealed rejections with regard to claim 16, but not
with regard to claims 1–15, as discussed below.
Claim 1
We refer to the Examiner’s statement of the rejection set forth on
pages 3–5 of the Answer which we adopt as our own.
We refer to Appellant’s arguments made in response thereto as set
forth on pages 5–12 (Appellant also presents arguments on pages 2–11 of
the Reply Brief). Therein, Appellant argues that although Omura discloses
that one or more starches can be used (Omura, ¶ 16), Omura does not
exemplify the combined use of acetylated phosphate-crosslinked starch and
hydroxypropylated starch or suggest any benefits resulting from the
combined use of acetylated phosphate-crosslinked starch and
hydroxypropylated starch. Appeal Br. 6. In this regard, Appellant points to
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Table 2, Examples 1–9 of Omura to show that only 1 starch is exemplified.
Appeal Br. 6.
We agree with the Examiner’s response that this line of argument is
not persuasive for the reasons stated therein. Ans. 5–6. We note that the
teaching of the prior art is not limited to particular examples, but, rather,
extends to all that is disclosed, and is good for all that it would have fairly
suggested to one of ordinary skill in the art at the time of the invention.
Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989)
(quoting In re Lamberti, 545 F.2d 747, 750 (CCPA 1976) (“[T]he fact that a
specific [embodiment] is taught to be preferred is not controlling, since all
disclosures of the prior art, including unpreferred embodiments, must be
considered.”); In re Fracalossi, 681 F.2d 792, 794 n.1 (CCPA 1982) (A
prior art reference’s disclosure is not limited to its examples.); In re Boe, 355
F.2d 961, 965 (CCPA 1966) (All of the disclosures in a prior art reference
“must be evaluated for what they fairly teach one of ordinary skill in the
art.”); see also In re Courtright, 377 F.2d 647, 651–52 (CCPA 1967); In re
Nehrenberg, 280 F.2d 161, 164 (CCPA 1960). As such, we agree with the
Examiner that the combination of Omura in view of Tamaki and Kawata set
forth a prima facie case as stated on pages 3–5 of the Answer.
As rebuttal evidence, Appellant discusses unexpected results
regarding use of acetylated phosphate-crosslinked starch and
hydroxypropylated starch, beginning on page 6 of the Appeal Brief.
Appellant argues that the applied art provides no suggestion of the benefits
afforded by claimed subject matter. Appeal Br. 6. Appellant states that the
combination of acetylated phosphate-crosslinked starch and
hydroxypropylated starch provides the unexpected benefit of (1) softness of
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the adhering portion of the wrapping and (2) good mouthfeel of the
wrapping. In this regard, Appellant refers to Table 2 in the Specification
(Appeal Br. 7–8), and to Tables 5 and 6 of the Specification (Appeal Br. 8–
9). Appellant argues that the Examiner erroneously ignores the unexpected
results argued by Appellant for the reasons presented on pages 9–12 of the
Appeal Brief. Appellant submits that the Examiner erroneously takes the
position that any benefits arising out of the combined use of acetylated
phosphate-crosslinked starch and hydroxypropylated starch cannot be
considered unexpected since their use is already taught in the art.3 Appeal
Br. 10; see also Reply Br. 5–6.
Appellant’s aforementioned position overlooks the point made by the
Examiner that any benefits arising out of the use of the combination of
acetylated phosphate-crosslinked starch and hydroxypropylated starch
following the suggestion of the applied art cannot be considered unexpected
since their use is already taught in the art. The point is that a prima facie
case of obviousness cannot be rebutted by merely recognizing additional
advantages or latent properties present but not recognized in the prior art.
“The fact that appellant has recognized another advantage which would flow
naturally from following the suggestion of the prior art cannot be the basis
for patentability when the differences would otherwise be obvious.” Ex parte
Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985)4. See also Lantech

3 On pages 6 of the Answer, the Examiner states that one skilled in the art
does not need to be aware of any benefit provided by use of the combination
of acetylated phosphate-crosslinked starch and hydroxypropylated starch to
select such a combination because its use is expressly taught in Omura.
4 In Ex parte Obiaya, the prior art taught combustion fluid analyzers which
used labyrinth heaters to maintain the samples at a uniform temperature.
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Inc. v. Kaufman Co. of Ohio Inc., 878 F.2d 1446 (Fed. Cir. 1989), cert.
denied, 493 U.S. 1058 (1990) (unpublished — not citable as precedent)
(“The recitation of an additional advantage associated with doing what the
prior art suggests does not lend patentability to an otherwise unpatentable
invention.”).
In the instant case, the benefit of (1) softness of the adhering portion
of the wrapping and (2) good mouthfeel of the wrapping resulting from the
use of the combination of acetylated phosphate-crosslinked starch and
hydroxypropylated starch in making of dough wrappers are additional
advantages associated with doing what the prior art suggests and therefore
an unconvincing basis for patentability. At the bottom of page 11 of the
Appeal Brief, Appellant submits that the benefits of the presently claimed
subject matter are not inherent in Omura since Omura only exemplifies the
use of a single starch. As discussed supra, Omura teaches the combined use
of the combination of acetylated phosphate-crosslinked starch and
hydroxypropylated starch. The Examiner reiterates this on page 6 of the
Answer. Therein, the Examiner also states that the art does not need to be
aware of any benefit provided by the combination to select the combination
because its use is expressly taught by Omura (see footnote 2, supra).
Also on page 6 of the Answer, the Examiner remarks upon the data in
Table 2. On page 7 of the Answer, the Examiner remarks upon the data in
Tables 5 and 6. Appellant responds to these remarks on pages 5–11 of the

Although appellant showed an unexpectedly shorter response time was
obtained when a labyrinth heater was employed, the Board held this
advantage would flow naturally from following the suggestion of the prior
art.).
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Reply Brief. Therein, Appellant argues, inter alia, that even if Omura
discloses the combination of acetylated phosphate-crosslinked starch and
hydroxypropylated starch, the result of improving softness of an adhering
portion of a wrapping sheet requires the presence of an adhering portion of a
wrapping sheet, and thus, such a result is obtained only for foods having an
adhering portion of a wrapping sheet (such as filled-wrapping dough sheet
foods). Reply Br. 6. Appellant argues that since Omura does not disclose
foods having an adhering portion of a wrapping sheet, the result of
improving softness of an adhering portion of a wrapping sheet distinguishes
the instant claims from the teachings of Omura. Reply Br. 6. Appellant
submits that therefore the results of Table 2 showing improvement of both
softness of an adhering portion of a wrapping sheet and mouthfeel of the
wrapping sheet would have been unexpected compared to Omura, the closest
prior art. Id.
We are unpersuaded by this line of argument. The rejection involves
a combination of Omura in view of Tamaki and Kawata, and not Omura
alone. As stated by the Examiner in the statement of the rejection (Ans. 3–
5), Omura teaches a method of forming dough comprising the steps of
blending hydroxypropylated starch, acetylated phosphoric acid-crosslinked
starch and grain flour, to form dough and forming noodles from the dough.
The Examiner relies upon Kawata for teaching that dough for forming
noodles can also be used to form dough wrappers. Ans. 4–5. The Examiner
relies upon Tamaki for teaching certain techniques involved for forming a
filling, wrapping the filling in a dumpling coating dough to give a raw
dumpling, and heating the raw dumpling, including adding water, and
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freezing the dumpling. Ans. 4–5. The Examiner concludes the combination
suggests the claimed subject matter. Ans. 4–5.
We agree with Appellant that the closest prior art, Omura, involves
use of acetylated phosphate-crosslinked starch and hydroxypropylated starch
for making noodles and not for making a wrapping sheet, and thus a
comparison involving a wrapping sheet was not possible (Reply Br. 6) as
representing Omura as the closest prior art. Hence, Appellant submits that
Table 2 involves a proper comparison showing unexpected results. Reply Br.
6. However, although we do not adopt the Examiner’s entire assessment of
the discussed data, we agree with the Examiner’s conclusion regarding the
data (both in Table 2 as well as in Tables 5 and 6) that the data does not
sufficiently rebut the prima facie case for the reason discussed supra that an
additional advantage associated with doing what the prior art suggests does
not lend patentability to an otherwise unpatentable invention. Lantech Inc.v.
Kaufman Co. of Ohio Inc., 878 F.2d 1446 (Fed. Cir. 1989). As explained by
the Examiner on pages 3–5 of the Answer, the applied art suggests the
claimed filling-wrapping dough sheet food and method of making the same.
As quoted supra, “[t]he fact that appellant has recognized another advantage
which would flow naturally from following the suggestion of the prior art
cannot be the basis for patentability when the differences would otherwise
be obvious.” Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter.
1985). Additionally, the Examiner explains on page 5 of the Answer how
Tamaki teaches that the dumpling can be heated with added water and that it
would have been obvious to have determined the degree of hydration needed
to achieve a desired texture.
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In view of the above, we affirm the rejection of claim 1 and the claims
that stand or fall with claim 1.

Claim 2 and 11
The filling-wrapping dough sheet food of Claim 2 and the method of
Claim 11 each requires that the dough sheet contains 15 to 63% by weight of
the grain flour, from 1 to 48% by weight of the acetylated phosphate-
crosslinked starch, and from 1 to 42% by weight of the hydroxypropylated
starch based on the total weight of the dough sheet, and wherein a weight
ratio between the grain flour and the acetylated phosphate-crosslinked starch
plus the hydroxypropylated starch is 90:16 to 20:80.
On page 4 of the Answer, the Examiner states that Omura teaches the
amounts of starches is from 3–50% to the total mass of the grain flour and
the starch, and that Example 1 of Omura shows formulation comprising
about 43% grain flour and about 28% starch, and that Example 2 of Omura
shows combination of starches including acetylated phosphate crosslinked
starch. The Examiner states that Omura does not disclose the specific ratios
between the grain flour and acetylated phosphate-crosslinked starch plus
hydroxypropylated starch as recited in claims 2 and 11. Ans. 4. On page 5
of the Answer, the Examiner states that the process of making dumplings is
well known in the art as exemplified in Tamaki, and that because the
amounts of grain flour and starches disclosed in Omura fall within the
claimed ranges, such ranges make obvious the ratios between the grain flour
and acetylated phosphate-crosslinked starch plus hydroxypropylated starch
as claimed in claims 2 and 11. Ans. 5.
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Appellant argues that the amounts of the grain flour, acetylated
phosphate-crosslinked starch, and hydroxypropylated starch, and the weight
ratio between the grain flour and the acetylated phosphate-crosslinked starch
plus the hydroxypropylated starch recited in claims 2 and 11 are further
representative of the Examples in the Specification, which show unexpected
results, and refers to Table 5 of the Specification in this regard. Appeal Br.
12–13.
On page 7 of the Answer, the Examiner states that the comparisons
made in Table 5 are not persuasive because the amounts of wheat flour,
wheat gluten and water are different between the comparative examples and
the examples. On pages 9–10 of the Appeal Brief, Appellant states that
adjustments were made according relative to the total amount of ingredients.
However, we agree with the Examiner’s position and note that with regard to
side-by-side comparisons, the court stated in In re Dunn, 349 F.2d 433, 439
(CCPA 1965) “[t]he cause and effect sought to be proven is lost here in the
welter of unfixed variables.”
In view of the above, we affirm the rejection of claims 2 and 11.

Claim 12
Appellant states that claim 12 requires that water is sprayed on the
filling-wrapping dough sheet food in the heating step, so that a moisture
content of a peripheral portion of the dough sheet becomes 30 to 40% by
weight after completion of the step. Appeal Br. 13–14.
Appellant argues that that the Examiner relies upon Tamaki for
teaching this claimed subject matter, but that Tamaki fails to teach that water
is sprayed on the filling-wrapping dough sheet in the heating step. Appeal
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Br. 14–15. Appellant also refers to Tables 3 and 4 of the Specification
showing how the spraying of water in the heating step improves softness of
the adhering portion of the wrapping sheet and mouthfeel of the wrapping
sheet. Appeal Br. 16–17.
We are unpersuaded by the aforementioned line of argument
essentially for the reasons stated by the Examiner on pages 9–10 of the
Answer. Therein, the Examiner states that Tamaki teaches to add water
when heating the dumplings. The Examiner states whichever way water is
added is not critical as long as the water is present to create a steam-like
environment. Ans. 9. The Examiner concludes that it would have been
within the skill of one in the art to determine the percent of moisture needed
depending on the degree of hydration desired.
With regard to Appellant’s Tables 3 and 4, the Examiner is not
persuaded that the result is unexpected because the difference between soft
in Example 1 (with water spray) versus slightly hard in Comparative
Example 1 (without the water spray) would be expected because if water is
added, it hydrates the filling-wrapping dough whereas the one without the
water would not become hydrated relative to the one with the water added.
Ans. 9. Thus, the Examiner states that it is expected the product will be
drier and consequently slightly harder than the one with hydration. Ans. 9.
We agree and not that it is not enough for the Appellant to show that the
results for the Appellant’s invention and the comparative examples differ.
The difference must be shown to be an unexpected difference. See In re
Freeman, 474 F.2d 1318, 1324 (CCPA 1973); In re Klosak, 455 F.2d 1077,
1080 (CCPA 1972).
In view of the above, we affirm the rejection of claim 12.
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Claim 16
Claim 16 requires that the dough sheet consists of:
(a) grain flour;
(b) acetylated phosphate-crosslinked starch:
(c) hydroxypropylated starch;
(d) water; and
(e) optionally, one or more ingredients selected from the group
consisting of gluten, common salt, an oil, a fat, glycine, and a saccharide.

Appellant argues that Omura discloses that an organic acid is a
required component:
In the present invention, in preparing the noodle dough,
it is necessary to add an organic acid in an amount of
0.03 to 1% by weight . . .
Appeal Br. 18 (quoting Omura ¶ 21, emphasis omitted).
Appellant argues that there is nothing in the other references which
would provide any motivation to modify Omura to exclude an organic acid.
Appeal Br. 18. Appellant argues that, in contrast, claim 16 excludes such an
organic acid. Appellant submits that one of ordinary skill in the art would
have had no motivation to exclude the organic acid from Omura’s dough
since this reference discloses that it is “necessary to add an organic acid.”
Appeal Br. 18. Appellant argues that a teaching away from an applicant’s
invention is indicative of nonobviousness. Appeal Br. 18–19.
In response, the Examiner states that it is not the Examiner’s position
to exclude Omura’s acid. The Examiner explains that with respect to claim
16, Omura’s dough comprises organic acid; however the amount can be as
low as .03 mass % by weight of the grain flour and selected starch. Ans. 10.
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The Examiner states that the claimed amount in claim 16 is 0% because no
organic acid is added. Id. The Examiner concludes that a prima facie case
of obviousness exists where the claimed ranges and prior art ranges do not
overlap but are close enough that one skilled in the art would have expected
them to have the same properties. Titanium Metals Corp. v. Banner, 778
F.2d 775 (Fed. Cir. 1985). The Examiner states that Appellant has not
established any criticality or unexpected result over the amount of .03%
versus 0%. Id. The Examiner states that there is no showing that dough
sheet comprising .03% organic acid differs significantly or at all over dough
sheet not containing organic acid. Id.
Omura’s paragraph 21 is reproduced in its entirety below:

In the present invention, in preparing the noodle dough, it is necessary
to add an organic acid at a ratio of 0.03 to 1 % by weight based on the
total weight of flour and starch (A), preferably 0.05 to 0.9% by
weight, more preferably 0.05 to 0.5% by weight.

Here, the amount of the organic acid to be added in the present
invention refers to the amount of the “organic acid” itself added.
Therefore, when vinegar containing an organic acid such as brewed
vinegar is used, it refers to an amount of an organic acid contained in
the vinegar.

By adding an organic acid in an amount within the range described
above, it is possible to produce noodles having high viscoelasticity, a
soft texture and good texture, and excellent smoothness and taste. If
the amount of the organic acid added is less than 0.03% by weight
based on the total weight of flour and starch (A), it is not possible to
obtain noodles having a strong viscoelasticity and a good texture, and
when the amount is more than 1 % by weight, the taste and flavor of
the obtained noodles are reduced and the resulting noodles are too
soft.

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Based upon Omura’s teachings reproduced above, Omura indicates
that adding an amount of organic acid not within the disclosed range results
in a product that is different from one that has an amount of organic acid
within the disclosed range in terms of viscoelasticity, texture, smoothness,
and taste.
On the one hand, Appellant submits that Omura requires an amount of
organic acid and therefore teaches away from claim 16. On the other hand,
the Examiner believes the difference in the amounts of 0.03% versus 0% is
close enough that one skilled in the art would have expected them to have
the same properties; however, the teachings set forth in Omura’s paragraph
21 discussed, supra, that “[i]f the amount of the organic acid added is less
than 0.03% by weight based on the total weight of flour and starch (A), it is
not possible to obtain noodles having a strong viscoelasticity and a good
texture” indicate otherwise. We therefore agree with Appellant’s stated
position as the preponderance of the evidence in the cited record supports
Appellant’s stated position. “If the proposed modification would render the
prior art invention being modified unsatisfactory for its intended purpose,
then there is no suggestion or motivation to make the proposed
modification.” In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984). “If the
proposed modification or combination of the prior art would change the
principle of operation of the prior art invention being modified, then the
teachings of the references are not sufficient to render the claims prima facie
obvious.” In re Ratti, 270 F.2d 810, 813 (CCPA 1959).
In view of the above, we reverse the rejection of claim 16.
CONCLUSION
We affirm the Examiner’s decision with regard to claims 1–15.
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We reverse the Examiner’s decision with regard to claim 16.
DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–16 103 Omura, Tamaki,
Kawata
1–15 16

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-IN-PART