Ex Parte Wang et al

Board of Patent Appeals and Interferences

Feb 27, 2009

09863928 (B.P.A.I. Feb. 27, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte LIN WANG, PETE MILLER,
JEFF UNDERWOOD, TONYA ARMSTRONG,
MICHAEL KRAMER, SUSAN FREERS,
ROGER MCPHERSON, E. DANIELD HUBBARD
and TERRY ANDREN
____________

Appeal 2008-4344
Application 09/863,928
Technology Center 1700
____________

Decided:1 February 27, 2009
____________

Before CAROL A. SPIEGEL, CATHERINE Q. TIMM, and ROMULO H.
DELMENDO, Administrative Patent Judges.

TIMM, Administrative Patent Judge.

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the Decided Date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2008-4344
Application 09/863,928

DECISION ON APPEAL
I. STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1-7 and 33-43. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.
The invention relates to a process of preparing an extruded starch
product and a process of preparing a coated food product. Claims 1 and 33
are illustrative:
1. A process for preparing a cold-water soluble extruded starch
product that has a solubility greater than 90% in water at 25° C that is film-
forming in aqueous solution and that is gelatinized to a gelatinization level,
said gelatinization level being at least 95%, the process comprising:

providing a hydroxyalkyl starch, said starch being derivatized with a
hydroxyalkyl substituent having from 2 to 6 carbon atoms, said starch being
a granular starch having a particle size distribution such that at least 90% by
weight of the starch particles pass through a 180 micron screen; and

extruding said starch in an extruder, said extruder having a barrel, a
die, and at least one rotating shaft, said barrel having at least first and second
zones, said first zone being upstream from said second zone, the conditions
in said first zone being insufficient to gelatinize said starch to said
gelatinization level and the conditions in said second zone being sufficient to
gelatinize said starch to said gelatinization level, said starch being extruded
in the presence of total moisture in said barrel no greater than about 25% by
weight of said starch, said process including the step of controlling the
rotational speed of said shaft to impart a specific mechanical energy to said
starch sufficient to result in a soluble extruded starch product that is capable
of extrusion through said die at said rotational speed.

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33. A process for preparing a coated food product, comprising:

providing a food substrate;
providing a seasoning adherence solution; and

applying said seasoning adherence solution to said food product in a
manner effective to cause seasoning in said solution to adhere to said food
substrate; said seasoning adherence solution having been prepared by mixing
water, an extruded starch product, and a seasoning to form said solution, said
product having been formed by a process comprising:

providing a hydroxyalkyl starch, said starch being derivatized with a
hydroxyalkyl substituent having from 2 to 5 carbon atoms, said starch being
a granular starch having a particle size distribution such that at least 90% by
weight of the starch particles pass through a 180 micron screen; and

extruding said starch in an extruder, said extruder having a barrel, a
die, and at least one rotating shaft, said barrel having at least first and second
zones, said first zone being upstream from said second zone, the conditions
in said first zone being insufficient to gelatinize said starch to a
gelatinization level of 95% and the conditions in said second zone being
sufficient to gelatinize said starch to a gelatinization level of 95%, said
starch being extruded in the presence of total moisture in said barrel no
greater than about 25% by weight of said starch, said process including the
step of controlling the rotational speed of said shaft to impart a specific
mechanical energy to said starch sufficient to result in a soluble an extruded
starch product that has a solubility greater than 90% in water at 25° C and
that is capable of extrusion through said die at said rotational speed.

Appellants request review of the Examiner’s rejections maintained
under 35 U.S.C. § 103(a), namely:
(1) the rejection of claims 1-6 and 33-43 as unpatentable over
Nakatsuka (US 4,076,846, issued Feb. 28, 1978 to Nakatsuka et al.) in view
of Redding (US 5,455,342, issued Oct. 3, 1995 to Redding, Jr.), and further
in view of Altieri (US 5,849,233, issued Dec. 15, 1998 to Altieri et al.); and
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(2) the rejection of claim 7 over the above references and further in
view of Protzman (US 3,137,592, issued Jun. 16, 1964 to Protzman et al.).

II. DISPOSTIVE ISSUE
The dispositive issue on appeal is: have Appellants shown that the
Examiner reversibly erred in finding that Nakatsuka teaches or suggests a
process of preparing a cold-water extruded starch product including
providing a hydroxyalkyl starch and extruding said starch such that the
conditions in a first zone of the extruder are insufficient to gelatinize said
starch to a gelatinization level of at least 95% and the conditions in a second
downstream zone are sufficient to gelatinize said starch to said gelatinization
level?
We answer this question in the affirmative.

III. PRINCIPLES OF LAW
The examiner bears the initial burden of presenting a prima facie case
of obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). In
order to establish a prima facie case of obviousness, the examiner must show
that each and every limitation of the claim is described or suggested by the
prior art or would have been obvious based on the knowledge of those of
ordinary skill in the art. In re Fine, 837 F.2d 1071, 1074 (Fed. Cir. 1988).
“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.” In re Kahn, 441 F.3d 977, 988, (Fed. Cir. 1996) (quoted with
approval in KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1741 (2007)).
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In general, a limitation is inherent if it is the “natural result flowing
from” the explicit disclosure of the prior art. Schering Corp. v. Geneva
Pharms., Inc., 339 F.3d 1373, 1379 (Fed. Cir. 2003). Where the examiner
has reason to believe that a claimed property may, in fact, be an inherent
characteristic of the prior art product, an examiner possesses the authority to
require applicant to prove that the subject matter shown to be in the prior art
does not in fact possess the property. In re Best, 562 F.2d 1252, 1254-55
(CCPA 1977). However, before applicant can be put to this burdensome
task, the examiner must provide enough evidence or scientific reasoning to
establish that the examiner’s belief that the property is inherent is a
reasonable belief. Ex parte Levy, 17 USPQ2d 1461, 1464-65 (BPAI 1990);
Ex parte Skinner, 2 USPQ2d 1788, 1789 (BPAI 1986).

IV. FINDINGS OF FACT
With regard to the extrusion step, the rejection: (1) reproduces the
language of the extruding step verbatim from claim 1; (2) cites column 8,
lines 9-17, 31-33, 49-53; column 13, lines 31-40; column 14, lines 5-12, 25-
28 in support of a finding that Nakatsuka teaches this step; and (3) notes that
“gelatinization occurs about 150C-175C.” (Ans. 3.).
In responding to Appellants’ arguments, the Examiner finds that
Nakatsuka “clearly shows an extruder having varying temperature zones”
citing column 13, lines 33-37, and “[a]lthough the specific gelatinization
temperature for Nakatsuka’s particular starch material is not known, it is
known that gelatinization temperatures of starches such as are used in
Nakatsuka range from 150C-175C and that gelatinization temperatures of
starches in general range from about 70C-200C.” The Examiner maintains
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that Nakatsuka’s extruder contains a first zone that does not allow
gelatinization (30C-50C), wherein a second zone allows gelatinization
(120C-200C) (Ans. 9).
Appellants contend that because the material processed in Nakatsuka
is a complex of starch with protein, “it is uncertain whether this material
even has a gelatinization temperature, or is capable of gelatinization.” (Br.
6-7.). Appellants also contend the Examiner’s determination that the zone
conditions inherently meet the claimed gelatinization requirements lacks
evidentiary support (Br. 7; Reply Br. 3).
Nakatsuka forms a water-soluble molding composition comprising
starch material, an inorganic salt of a protein material, plasticizer, and
lubricant (col. 3, ll. 64-68). The starch and protein-based materials may
chemically react to some degree (col. 6, ll. 34-47).
Column 13, lines 33-37, discloses a step of molding that occurs after a
step of milling a composition containing high-amylose cornstarch (starch
component), sodium caseinate (protein component), and glycerol (plasticizer
component) (Nakatsuka, col. 12, ll. 11-35). Milling occurs at a surface
temperature of 120 °C (col. 12, ll. 20-21). The milled composition is
introduced into the barrel of an injection molding machine with a hopper end
at a temperature of 30-50 °C, a middle part at 120-160 °C, and a front part at
160-200 °C (col. 13, ll. 31-37).
Column 14, lines 5-12, disclose that an Example 2 composition is
extrusion molded under the conditions of Example 1. This composition
includes hydroxyethylated starch (Table 3, col. 13, ll. 56) and is obtained by
the extrusion molding conditions of Example 1 (col. 14, ll. 5-7).

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V. ANALYSIS
The Examiner offers no evidence in support of the finding that
“gelatinization occurs about 150C-175C.” (Ans. 3.) Nor does the Examiner
offer any evidence in support of the finding that “it is known that
gelatinization temperatures of starches such as are used in Nakatsuka range
from 150C-175C and that gelatinization temperatures of starches in general
range from about 70C-200C.” (Ans. 9.) Moreover, it is unclear what
starches the Examiner is referring to as “starches such as are used in
Nakatsuka.”
According to the Examiner, column 13, lines 33-37 of Nakatsuka
describes an extruder having varying temperature zones, i.e., a first zone at
30-50 °C and a second zone at 120-200 °C such that the first zone does not
allow gelatinization but the second zone allows gelatinization (Ans. 9).
Column 13, lines 33-37, describes injection molding a composition
including high-amylose corn starch and sodium caseinate protein (see col.
12, ll. 14-18). We agree with Appellants that the Examiner has offered no
reasoning, nor pointed to any evidence of record, indicating that the starch-
protein composition of Nakatsuka’s Example 1 undergoes gelatinization.
In order to establish that gelatinization inherently occurs as claimed
within the injection molding machine barrel of Nakatsuka’s Example 1
process, the Examiner must provide sufficient evidence and technical
reasoning to establish that gelatinization would not occur in the 30-50 °C
range of the first zone of Nakatsuka’s injection molding machine barrel, but
would occur in a later 120-200o C zone(s). The Examiner has not provided
the required evidence in support of a finding of inherency.
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We further note that the extruding step of claim 1 is a step of
extruding “said starch.” Said starch must be read as referring to the
hydroxyalkyl starch recited in the providing step of the claim; that is the
only “starch” referred to in the claim. The Examiner has not established that
the composition processed in Example 1, the Example containing the
column 13 disclosure relied upon, contains hydroxyalkyl starch. There can
be no gelatinization of hydroxyalkyl starch if that component is not
contained in the composition.
The composition processed in Example 2 contains hydroxyalkyl
starch, but the Example 2 composition is processed according to the
extrusion molding process disclosed at column 12, lines 39-59 of Nakatsuka,
not the injection molding process of column 13, lines 31-37. Nakatsuka
only discloses one temperature zone for the barrel of that extrusion molding
apparatus (Nakatsuka, col. 12, ll. 43-44). The Examiner has not established
that the extrusion barrel used to mold the Example 2 composition has
different barrel conditions such that the gelatinization level is not reached in
the first zone, but is reached in the second zone as claimed.
Moreover, in both Examples 1 and 2, the composition is milled at 120
°C before molding (Nakatsuka, col. 12, ll. 20-35). Assuming the Examiner
is correct that "gelatinization temperatures of starches in general range from
about 70C to 200C" (Ans. 9), it is possible that gelatinization may occur in
the milling step. It is not clear whether the Examiner considered the effects
of the milling step in the determination of inherency.
The rejection of claim 33 fails for the same reason as the rejection of
claim 1.
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Furthermore, claim 33 further requires mixing the extruded starch
product with water and seasoning to form a seasoning adherence solution
and further requires a step of applying the seasoning adherence solution to
cause seasoning in the solution to adhere to a food substrate.
The Examiner relies upon the disclosures in column 11 of Nakatsuka
as teaching what is required by claim 33 (Ans. 5 and 9-10).
According to Nakatsuka at column 11, one can use the extruded film
to form packages containing dry granulates or powders such as seasonings
(col. 11, ll. 6-14). The packages can be introduced into cold or hot water
without being unwrapped (col. 11, ll. 14-18). The film disintegrates and
releases the seasonings into the water (col. 11, ll. 24-26). The film can also
be used to wrap baking additives, and can be integrated to the baked product
(col. 11, ll. 32-36 and 43-47).
This portion of Nakatsuka, as pointed out by Appellants, does not
disclose forming a solution from the shaped article, incorporating seasoning
into the solution, and coating a food substrate with the seasoning solution as
claimed (Br. 10). The Examiner has not explained how the packaging and
wrapping disclosures of Nakatsuka provide a suggestion for doing what is
required by claim 33.
Appellants have established that the Examiner reversibly erred in
rejecting claim 33 for this additional reason.
Redding and Altieri are relied upon for other limitations of the claims.
These references as relied upon by the Examiner do not remedy the above
discussed deficiencies in the rejection.
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With respect to claim 7, the Examiner relied upon Nakatsuka as
discussed above, and Protzman, as applied by the Examiner, does not
remedy the deficiencies of the rejection.

VI. CONCLUSION
We do not sustain the rejection of claims 1-6 and 33-43 under
35 U.S.C. § 103(a) over Nakatsuka, Redding and Altieri. Nor do we sustain
the rejection of claim 7 over those references further in view of Protzman.

VII. DECISION
The decision of the Examiner is reversed.

REVERSED

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