Ex Parte ITO et al

Patent Trial and Appeal Board

Dec 13, 2018

14646471 (P.T.A.B. Dec. 13, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/646,471 05/21/2015
466 7590
YOUNG & THOMPSON
209 Madison Street
Suite 500
Alexandria, VA 22314
12/17/2018
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
Takashi ITO
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
8007-1342 9317
EXAMINER
TRAN, LIEN THUY
ART UNIT PAPER NUMBER
1793
NOTIFICATION DATE DELIVERY MODE
12/17/2018 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):
DocketingDept@young-thompson.com
yandtpair@firs ttofile. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TAKASHI ITO, KAZUKO KOJIMA, T AKASHI SES AI,
KENTARO IRIE, and TATSUNORINISHIDE
Appeal2018-001769
Application 14/646,471
Technology Center 1700
Before JEFFREY T. SMITH, BRIAND. RANGE, and
JANEE. INGLESE, Administrative Patent Judges.
INGLESE, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 request our review under 35 U.S.C. § 134(a) of the
Examiner's decision to finally reject claims 1, 3---6, 9, 12, 13, 16, 19, and 20.
We have jurisdiction over this appeal under 35 U.S.C. § 6(b ).
We AFFIRM.
STATEMENT OF THE CASE
Appellants claim a method for producing kaki-age (App. Br. 2),
which, according to the Specification, is "a food product made by deep-
frying ingredients (food items), such as vegetables and seafood, coated with
1 Appellants are the applicants, Nisshin Seifun Group Inc. and Nisshin Foods
Inc. According to the Appeal Brief, Nisshin Foods Inc. is the real party in
interest. Appeal Brief filed July 19, 2017 ("App. Br."), 2.
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Application 14/646,471
a crust material." Spec. ,r 1. Claim 1 illustrates the subject matter on appeal
and is reproduced below with contested language italicized:
1. A method for producing kaki-age comprising the steps
of:
coating an ingredient with a crust material such that the
proportion of the crust material, in terms of solid content of the
crust material, is within a range from 3 0 to 5 0 parts by mass of
the solid content of the crust material per 100 parts by mass of
the ingredient; and
subjecting the crust-material-coated ingredient to a
heating treatment including deep-frying at an oil temperature
from 135°C to 155°C inclusive such that a kaki-age having a
moisture content of 10 mass% or less is obtained.
App. Br. 15 (Claims Appendix) (emphasis added).
The Examiner sets forth the following rejections in the Final Office
Action entered December 20, 2016 ("Final Act."), and maintains the
rejections in the Examiner's Answer entered October 2, 2017 ("Ans."): 2
I. Claims 1, 4--6, 13, and 20 under 35 U.S.C. § 103 as
unpatentable over Wheeler et al. (US 2010/0015298 Al, published January
21, 2010) in view of Baur et al. (US 6,288,179 Bl, September 11, 2001); and
II. Claims 3, 9, 12, 16, and 19 under 35 U.S.C. § 103 as
unpatentable over Wheeler in view of Baur and Eichenlaub et al. (US
2014/0314927 Al, published October 23, 2014).
DISCUSSION
Upon consideration of the evidence relied upon in this appeal and
each of Appellants' contentions, we affirm the Examiner's rejections of
2 The Examiner withdrew the rejection of claim 1 under 35 U.S.C. § 112(b)
in the Answer. Ans. 2.
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Application 14/646,471
claims 1, 3---6, 9, 12, 13, 16, 19, and 20 under 35 U.S.C. § 103 for the
reasons set forth in the Final Office Action, the Answer, and below.
Rejection I
Appellants argue claims 1, 4--6, 13, and 20 together on the basis of
claim 1, to which we accordingly limit our discussion. App. Br. 4--13;
37 C.F.R. § 4I.37(c)(l)(iv).
Wheeler discloses a process for producing a fried potato product that
includes applying batter ( crust material)3 to the surface of raw potatoes
(ingredient), and frying the batter-coated raw potatoes in oil at a temperature
of about 250QF to 400QF (121 QC to 204QC), to yield a potato product having a
moisture content of about O % to about 10 % by weight. ,r,r 4, 54, 60, 101.
Wheeler discloses that the effectiveness of the batter application depends on
the viscosity of the batter, and Wheeler indicates that the percentage of
solids in the batter affects the batter's viscosity, and the pick-up/absorption
rate of the batter onto the raw potatoes. ,r 56. Wheeler discloses that if the
viscosity of the batter is too low, the finished product has too little color
and/or flavor, and more fat is absorbed during the frying operation, which
negatively affects the "texture and aesthetics" of the fried product. Id.
The Examiner finds that "[ w ]hile Wheeler does not disclose the
specific solid content of the crust material [batter] as claimed, Wheeler does
recognize the correlation between the quality of product and the solid
content." Ans. 5. The Examiner further relies on Baur to address the
proportion of solid content of crust material per mass of ingredient recited in
claim 1. Ans. 3.
3 Wheeler refers to the batter as the "surface application." ,r,r 53-56.
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Application 14/646,471
Baur discloses a method of preparing a fried battered food product
that involves coating a food substrate with a batter containing sodium
caseinate, a non-gelling milk protein, and frying the coated food substrate.
Col. 1, 11. 37-38, 47-50; col. 4, 11. 11-12. Baur discloses that the batter
should have a total solids level of at least about 30 % by weight, and the
pick-up of the batter should be sufficient to provide at least about 0.2 percent
by weight of sodium caseinate based on the weight of the product. Col. 1, 11.
53-57. Baur exemplifies preparing battered fish products using batters
having different pick-up levels, and discloses in table II that fish products
prepared with batter having a pick-up of 45.5 % or 47.8 % exhibited a crisp
texture. Col. 5, 11. 15-57.
The Examiner finds that Baur thus "teaches the appropriate solid
content in a batter to have sufficient pick-up level." Ans. 5. The Examiner
finds that the "combined teaching of Wheeler on the viscosity and product
pick-up/absorption with the Baur teaching of appropriate solid content
would readily lead one skilled in the art to the optimum solid content to
obtain the desirable viscosity and thus proper coating of the product to give
the desirable crispness texture in the product." Id. The Examiner further
finds that "[b ]oth Baur and Wheeler recognize the importance of the solid
content in the batter and the pick-up level which in tum determine the solid
content by mass of the solid content of crust material per 100 parts by mass
of the ingredient." Ans. 5---6.
Appellants argue that Baur "fails to teach a solid content as claimed in
either the 'pick-up' amounts in the Examples (which includes table II) or in
the general disclosure." App. Br. 5. Appellants argue that the "pick-up"
amounts discussed in Examples 1-3 of Baur "do not correspond to the same
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Application 14/646,471
proportion as claimed" because the "pick-up" amounts described in Baur
refer to the proportion of batter relative to the coated product, rather than the
proportion of the mass of crust material solids relative to the mass of the
ingredient, as recited in claim 1. App. Br. 5-8. Appellants assert that the
general disclosure of Baur describes the percentage of dry ingredients
relative to the final batter, rather than relative to the food product to which
the batter is applied, as recited in claim 1. App. Br. 8-9.
As discussed above, however, Wheeler discloses that the percentage
of solids in a batter applied to raw potatoes affects the batter's viscosity and
the pick-up/absorption rate of the batter onto the potatoes, which in tum
affect the color, flavor, texture, and aesthetics of final fried product.
Wheeler thus indicates that the solid content of the batter is a result-effective
variable. In re Applied Materials, Inc., 692 F.3d 1289, 1297 (Fed. Cir.
2012) ("A recognition in the prior art that a property [or a result] is affected
by the variable is sufficient to find the variable result-effective.").
Therefore, one of ordinary skill in the art at the time of Appellants'
invention seeking to produce a batter-coated fried food product as disclosed
in Wheeler and Baur would have arrived at an optimum solid content for the
batter that would produce the desired color, flavor, texture, and appearance
in the final product through nothing more than routine experimentation. In
re Boesch, 617 F.2d 272, 276 (CCPA 1980) ("[D]iscovery of an optimum
value of a result effective variable in a known process is ordinarily within
the skill of the art.").
Although Appellants assert that Baur does not suggest optimizing the
solid content of the coating relative to the ingredient to achieve a desired
degree of coating and viscosity (App. Br. 9; Reply Br. 1-2), as discussed
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Application 14/646,471
above, the Examiner finds that the solid content of a batter ( crust material)
and its pick-up level determine the solid content by mass of the batter (crust
material) per 100 parts by mass of the ingredient being coated, which
Appellants do not dispute. Compare Ans. 5---6, with Reply Br. 1-5.
Accordingly, optimizing the solid content of the batter would achieve an
optimized solid content by mass of the batter ( crust material) per 100 parts
by mass of the ingredient, as recited in claim 1.
Appellants argue that the combination of Wheeler and Bauer fails to
recognize the criticality of the proportion of the solid content of crust
material relative to the ingredient as recited in claim 1, which Appellants
assert produces unexpectedly improved product properties. App. Br. 9-11.
Appellants rely on data provided for Comparative Examples 1 and 2 in
Table 1 of their Specification. Id.
The law is replete with cases in which the difference between the
claimed invention and the prior art is some range or other variable within the
claims. These cases have consistently held that in such a situation, the
applicant must show that the particular range is critical, generally by
showing that the claimed range achieves unexpected results relative to the
prior art range. In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990). In
the present case, Appellants do not meet their burden of establishing that the
relied-upon results set forth in Table 1 of their Specification would have
been unexpected at the time of their invention, and, therefore, do not meet
their burden of demonstrating the criticality of the range of proportion of
solid content of crust material relative to ingredient recited in claim 1.
We point out initially that comparative Example 1 is directed to
product prepared with a crust material solid content coating rate of 26 mass
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% 4 ( outside the range of 30 to 50 mass % recited in claim 1) that exhibited
poor shape retainability. Spec. ,r,r 25, 30, 31. The Specification explains
that the poor shape retainability resulted from a thin crust material that
"lacked the ability to join the ingredients together." Spec. ,r 31.
Comparative Example 2 is directed to product prepared with a crust material
having a solid content coating rate of 54 mass % ( outside the range of 30 to
50 mass % recited in claim 1) that had a moisture content of greater than
10%, outside the range of 10 mass % or less recited in claim 1. Spec. ,r,r 25,
30, 31. Examples 1--4 are directed to products having a solid content coating
rate of 30, 37, 43, and 50 mass%, respectively, which had a moisture
content within the range of 10 mass % or less recited in claim 1, and
exhibited good shape retainability. Spec. ,r 30.
Appellants do not identify any averment in the Specification or
provide any other evidence establishing that the asserted improvement in
shape retainability and moisture content resulting from the proportion of the
solid content of crust material relative to ingredient recited in claim 1 would
have been unexpected by one ordinary skill in the art at the time of their
invention. App. Br. 4--13; In re Geisler, 116 F.3d 1465, 1471 (Fed. Cir.
1997) ("Geisler made no such assertion [that results were unexpected] in his
application. Nor did Geisler submit any such statement through other
evidentiary submissions, such as an affidavit or declaration under
Rule 132 ... Instead, the only reference to unexpected results was a
4 The "crust material solid content coating rate" is the mass of the crust
material's so lid content/the mass of ingredient X 100. Claim 1 requires the
crust material solid content coating rate to be 30 to 50 mass% ( or 30 to 50
parts by mass of solid content of curst material per 100 parts by mass of
ingredient). Spec. ,r 15.
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statement by Geisler's counsel ... that Geisler's results were 'surprising."'
( citation omitted)).
To the contrary, as discussed above, Wheeler evidences that it was
known in the art at the time of Appellants' invention that the solid content of
a batter affects the batter's viscosity and the pick-up/absorption rate of the
batter onto raw food. Wheeler further discloses that if the solid content ( and
thus the viscosity and pick up/absorption rate) of the batter is too low, the
texture and aesthetics of the resulting fried food product are adversely
affected. ,r 56. Accordingly, one of ordinary skill in the art would have
expected that lowering the solids content of a batter would produce a batter
having low viscosity, which would not be well-absorbed (or picked up) by a
raw food material, resulting in a batter similar to that of Comparative
Example 1 that had a low solids content and yielded a product having poor
shape retainability because the batter was too thin to join the coated
ingredients together.
One of ordinary skill in the art also would have understood that if the
solid content (and thus the viscosity and pick up/absorption rate) of the
batter is too high, a very thick coating would be produced that would prevent
evaporation of moisture from the coated food ingredient during frying,
resulting in a high moisture content in the final product, similar to the batter
of Comparative Example 2 that had a high solids content and yielded a
product having a high moisture content.
Appellants acknowledge that Wheeler discloses frying at a
temperature range that overlaps the range recited in claim 1, but argue that
the combination of Wheeler and Bauer fails to recognize the criticality of the
oil temperature used in the heating treatment step recited in claim 1, which
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Appellants assert results in an unexpectedly superior product. App. Br. 11-
13. Appellants rely on data provided for Example 7 and Comparative
Example 3 in Table 2 of their Specification. Id.
However, Appellants do not establish that the relied-upon results set
forth in Table 2 would have been unexpected at the time of their invention,
and, accordingly, do not meet their burden of establishing the criticality of
the frying temperature range recited in claim 1. Woodruff, 919 F.2d at 1578.
We point out initially that Example 7 is directed to a product deep
fried at a temperature of 160QC (outside the range of 135QC to 155QC recited
in claim 1 ), which caused the product to be overheated, and yielded a final
product having an undesirable dark and burnt appearance. Spec. ,r,r 27, 32,
33. Comparative Example 3 is directed to product deep dried at a
temperature of 130QC (outside the range of 135QC to 155QC recited in claim
1 ), which provided insufficient heating, and yielded a final product having a
moisture content greater than 10 %, outside the range of 10 mass % or less
recited in claim 1. Spec. ,r,r 32, 33. Examples 3, 5, and 6 are directed to
products that were deep fried at a temperature of 145QC, 135QC, and 155QC,
respectively, and had a good outer appearance and a moisture content within
the range of 10 mass% or less recited in claim 1. Spec. ,r,r 32, 33. All of the
products produced in the experimental examples described in Table 2 were
deep fried for 6 minutes. Spec. ,r 32.
Similar to the situation discussed above, Appellants do not identify
any averment in the Specification or provide any other evidence establishing
that the asserted improvement in outer appearance and moisture content
resulting from the frying temperature recited in claim 1 would have been
unexpected by one ordinary skill in the art at the time of their invention.
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App. Br. 4--13; Geisler, 116 F.3d at 147. To the contrary, one of ordinary
skill in the art would have understood that when keeping the frying time
constant, raising the frying temperature would heat a coated food ingredient
to a greater extent, which would bum the product if the temperature is too
high, similar to the product of Example 7 that was deep fried at a
temperature of 160QC and had a burnt appearance. One of ordinary skill in
the art also would have understood that when keeping the frying time
constant, lowering the frying temperature would result in evaporation of less
moisture from a coated food ingredient during frying, resulting in a high
moisture content in the final product, similar to the product of Comparative
Example 3 that was deep fried at a temperature of 130QC and had a high
moisture content.
Therefore, considering the totality of the evidence relied-upon in this
appeal, a preponderance of the evidence weighs in favor of the Examiner's
conclusion of obviousness with respect to claim 1. In re Oetiker, 977 F .2d
1443, 1445 (Fed. Cir. 1992) ("patentability is determined on the totality of
the record, by a preponderance of evidence with due consideration to
persuasiveness of argument"). Consequently, we sustain the Examiner's
rejection of claims 1, 4--6, 13, and 20 under 35 U.S.C. § 103.
Rejection II
To address this rejection, Appellants rely on the arguments made for
claim 1 ( discussed above), and argue that the additional reference applied in
this rejection (Eichenlaub) fails to cure the deficiencies of Wheeler and
Baur. App. Br. 13-14. Because we are unpersuaded of reversible error in
the Examiner's rejection of claim 1 for the reasons discussed above,
Appellants' position as to this rejection is also without merit.
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DECISION
We affirm the Examiner's rejections of claims 1, 3---6, 9, 12, 13, 16,
19, and 20 under 35 U.S.C. § 103.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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