Mitsuru Tanaka et al.Download PDFPatent Trials and Appeals BoardSep 4, 201913996156 - (D) (P.T.A.B. Sep. 4, 2019) Copy Citation 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. 13/996,156 06/20/2013 Mitsuru Tanaka 4605-132204 1050 28289 7590 09/04/2019 THE WEBB LAW FIRM, P.C. ONE GATEWAY CENTER 420 FT. DUQUESNE BLVD, SUITE 1200 PITTSBURGH, PA 15222 EXAMINER TRAN, LIEN THUY ART UNIT PAPER NUMBER 1793 NOTIFICATION DATE DELIVERY MODE 09/04/2019 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): patents@webblaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte MITSURU TANAKA, TATSUO YAMAYA, TAKUO NAKAZEKO, SHINICHI NAKAGAWA, and MASAHIRO ODA ____________ Appeal 2018-009168 Application 13/996,156 Technology Center 1700 ____________ Before JAMES C. HOUSEL, JEFFREY R. SNAY and MICHAEL G. McMANUS, Administrative Patent Judges. McMANUS, Administrative Patent Judge. DECISION ON APPEAL The Examiner finally rejected claims 1–3, 5, 6, and 19 of Application 13/996,156 under 35 U.S.C. § 103(a) (pre-AIA). Final Act. (Oct. 26, 2017) 2–4. Appellants1 seek reversal of these rejections pursuant to 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6(b)(1). For the reasons set forth below, we REVERSE. 1 Nissin Foods Holdings Co., Ltd. is identified as the real party in interest. Appeal Br. 2. Appeal 2018-009168 Application 13/996,156 2 BACKGROUND The present application generally relates to extruded noodles. Spec. ¶ 1. More specifically, it relates to extruded noodles “having a hole extending therethrough in a longitudinal direction.” Id. ¶ 16. The Specification teaches that “the hole closes or contracts during boiling or rehydration in hot water; and the hole in a cross section of the noodle is configured such that a plurality of grooves are formed rotationally symmetrically about a center of the cross section.” Id. The described conformation increases the surface area of the noodle so that hot water may quickly penetrate the entire noodle during boiling. Id. ¶ 17. This shortens cooking times. Id. ¶¶ 1, 14. Further, the hole is sized such that it closes or contracts during cooking so that it does not create an odd mouth feel “such as produced by macaroni” during eating. Id. ¶¶ 18, 19. Figures 1(A) and 1(B) of the Application are reproduced below. Figure 1(A) (left) shows a sectional view of a noodle prior to closure of the hot-water passage hole while Figure 1(B) (right) shows the noodle after closure of the hot-water passage hole. Spec. ¶ 55. Appeal 2018-009168 Application 13/996,156 3 Claim 1 is illustrative of the subject matter on appeal and is reproduced below: 1. An extruded noodle having a hole extending therethrough in a longitudinal direction, wherein: wheat flour is essential as a raw material for the noodle; the hole closes or contracts during boiling or rehydration in hot water; the hole in a cross section of the noodle is configured such that a plurality of grooves are formed rotationally symmetrically about a center of the cross section, extending in an outer radial direction from the center of the cross section of the noodle, wherein the cross section of the noodle has a circular outer shape; the hole having an air gap at the center of the cross- section of the noodle, wherein the plurality of grooves are located adjacent to each other in a circumferential direction of the noodle and are within the noodle, wherein the plurality of grooves open to the center of the cross section of the noodle to form the air gap; and further wherein the plurality of grooves are formed so as to have three-fold to four-fold rotational symmetries; the hole closes during boiling or rehydration in hot water, or contracts to such an extent as to allow the grooves excluding the air gap to be closed. Appeal Br. 18 (Claims App.). Appeal 2018-009168 Application 13/996,156 4 REJECTIONS The Examiner maintains the following rejections: 1. Claims 1–3, 5, and 6 are rejected under 35 U.S.C. § 103(a) (pre- AIA) as obvious over Seltzer et al.2 in view of Romano.3 Final Act. 2–3. 2. Claim 19 is rejected under 35 U.S.C. § 103(a) (pre-AIA) as obvious over Seltzer in view of Romano and further in view of Hayes-Jacobsen et al.4 Id. at 3. 3. Claims 1–3, 5, and 6 are rejected under 35 U.S.C. § 103(a) (pre- AIA) as obvious over Park et al.5 in view of Romano. Id. at 3–4. 4. Claim 19 is rejected under 35 U.S.C. § 103(a) (pre-AIA) as obvious over Park in view of Romano and further in view of Hayes-Jacobsen. Id. at 4. DISCUSSION Rejection 1. The Examiner rejects claims 1–3, 5, and 6 over Seltzer in view of Romano. Id. at 2–3. In support of this rejection, the Examiner finds that Seltzer teaches an extruded noodle made essentially of wheat flour. Id. at 2. The Examiner finds, however, that Seltzer does not teach a pasta having a hole and grooves as claimed. Id. 2 US 4,495,214, issued Jan. 22, 1985 (“Seltzer”). 3 EU Design No. 001771981-0002, filed Oct. 22, 2010 by L. Romano (referred to as “Designs@Questel” by the Examiner and referred to herein as “Romano”). 4 US 2005/0271785 Al, issued Dec. 8, 2005 (“Hayes-Jacobson”). 5 US 2012/0251701 Al, published Oct. 4, 2012 (“Park”). Appeal 2018-009168 Application 13/996,156 5 The Examiner further finds that Romano teaches a noodle having a hole with a plurality of grooves and a depressed portion between the grooves. Id. The Examiner finds that the design of Romano is the same as Figure 2(A) of the Application. These figures are reproduced below. Romano (left) shows a design for spaghetti and other food items (Romano 2) while Figure 2(A) of the present Application (right) is described in the Specification as an “exemplary sectional shape[] of a noodle,” Spec. ¶ 55. The Examiner determines that one of ordinary skill in the art would have had reason to combine the teachings of Seltzer and Romano as follows: It would have been obvious to one skilled in the art to form the extruded noodle to have the shape as shown in the Design as an obvious matter of preference depending on the appearance wanted. One would also have been motivated to have the hole to allow for homogenous and quicker cooking as known in the art shown in the Hauser reference that is already of record. Since the design is the same as shown in the instant specification, it is obvious the design has the distance as in claim 3. As to the symmetries, it would have been obvious to vary the specific symmetry depending on the configurational design wanted. It would have been within the skill of one in the art to determine the area occupied by the hole depending on the size wanted in the final product. Appeal 2018-009168 Application 13/996,156 6 Final Act. 2–3.6 Appellants argue that one of skill in the art would not have had reason to modify Seltzer as proposed by the Examiner in support of the rejection of claim 1 for a number of reasons. Appeal Br. 8–12. Appellants argue that Seltzer relies upon an additive for rapid cooking and, therefore, would not require shape modification. Id. at 9. Appellants further argue that the cited prior art does not provide any teaching to make the proposed combination. Id. Appellants additionally argue that Romano is directed to a number of food products including “cereal bars, biscuits, and pastes which may be eaten without cooking” indicating that the ornamental appearance of Romano would be lost if the grooves closed during cooking. Id. Appellants also argue that the number of grooves is not a mere design choice because a limited number of grooves (“three-fold or four-fold symmetry”) may be produced using a “die [that] is small enough to produce a hole that will entirely or partially close when the noodle is subjected to boiling or rehydration in hot water.” Id. at 10 (citing to Declaration of Takuo Nakazeko ¶ 14) (hereafter “Nakazeko Decl.”). “[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. 2006). Here, the Examiner finds that it would have been obvious to use a grooved interior 6 The Examiner relies, in part, upon the “Hauser” reference. A reference that is used to support a rejection in any way, however minor, should be included in the statement of the rejection. See In re Hoch, 428 F.2d 1341, 1342 n.3 (CCPA 1970); MPEP § 706.07(k) (8th ed., Rev. 8 July 2010). Appeal 2018-009168 Application 13/996,156 7 hole in a noodle “as an obvious matter of preference depending on the appearance wanted.” Final Act. 2. With regard to the number of grooves (the “three-fold to four-fold rotational symmetries” limitation), the Examiner determines that “it would have been obvious to vary the specific symmetry depending on the configurational design wanted.” Id. With regard to the size of the interior hole, which affects closure of the pasta, the Examiner determines “[i]t would have been within the skill of one in the art to determine the area occupied by the hole depending on the size wanted in the final product.” Id. at 2–3. Each of these is a mere conclusory statement. Stating that one of skill in the art could modify a reference in accordance with their preference is not an adequate statement as to why such modification would be made, especially where, as here, a claimed structural feature is more than merely ornamental, i.e., has a disclosed functional purpose. See InTouch Techs., Inc. v. VGO Commc’ns, Inc., 751 F.3d 1327, 1352 (Fed. Cir. 2014) (disregarding expert testimony where such analysis “primarily consisted of conclusory references to her belief that one of ordinary skill in the art could combine these references, not that they would have been motivated to do so”); see also Cutsforth, Inc. v. MotivePower, Inc., 636 F. App'x 575, 578 (Fed. Cir. 2016) (“Merely stating that a particular placement of an element is a design choice does not make it obvious. [One] must offer a reason for why a person of ordinary skill in the art would have made the specific design choice.”). The Examiner additionally determines that the limitation requiring that “the hole closes during boiling or rehydration” is merely an “intended use” of the product that does not bear upon patentability. Answer 11. “A patent applicant is free to recite features of an apparatus either structurally or functionally.” In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997); In re Appeal 2018-009168 Application 13/996,156 8 Swinehart, 439 F.2d 210, 212 (CCPA 1971) (“there is nothing intrinsically wrong with the use of [functional language] in drafting patent claims”). The Federal Circuit has often accorded patentable weight to functional language. In 2016, it observed “that the phrase ‘adapted to’ generally means ‘made to,’ ‘designed to,’ or ‘configured to,’ though it can also be used more broadly to mean ‘capable of’ or ‘suitable for.’” In re Man Mach. Interface Techs. LLC, 822 F.3d 1282, 1286 (Fed. Cir. 2016) (reversing Patent Office rejection of claim including “adapted to” limitation). Thus, functional claiming may be used to limit the scope of an apparatus claim. In order to be accorded patentable weight, however, functional language in an apparatus claim must limit the claim in terms of structure rather than function. In re Schreiber, 128 F.3d at 1477-78; MPEP § 2114. Here, the “hole closes” limitation bears upon the size and configuration of the hole. See Spec. 4:11–13; Nakazeko Decl. ¶ 12. Accordingly, it limits the structure of the noodle and should be accorded patentable weight. In view of the foregoing, Appellants have shown that the stated reason to modify the teachings of Seltzer in view of Romano are inadequate. Accordingly, Appellants have shown reversible error in the rejection of claim 1. Claims 2, 3, 5, and 6 depend from claim 1. Appeal Br. 18–19 (Claims App.). The rejection of these claims is predicated upon the same analysis described above. Final Act. 2–3. Accordingly, Appellants’ arguments regarding claim 1 are equally applicable to the rejection of these claims and Appellants have shown reversible error in regard to such rejection. Rejection 2. The Examiner rejected claim 19 as obvious over Seltzer in view of Romano and further in view of Hayes-Jacobson. Id. at 3. Claim Appeal 2018-009168 Application 13/996,156 9 19 depends from claim 1. Appeal Br. 19 (Claims App.). The rejection of claim 19 is predicated upon the same analysis described above; the Examiner does not rely on Hayes-Jacobson to remedy the deficiency in the combination of Seltzer and Romano discussed above. Final Act. 3. Accordingly, Appellants’ arguments regarding claim 1 are equally applicable to the rejection of these claims and Appellants have shown reversible error in regard to such rejection. Rejection 3. The Examiner rejected claims 1–3, 5, and 6 as obvious over Park in view of Romano. Id. at 3–4. The Examiner finds that Park teaches a hollow noodle made by passing dough through an injection machine. Id. at 3. The Examiner further finds that Park does not specifically teach extrusion or that the extruded noodle includes a hole and groove and a circular outer shape. Id. In determining that one of skill in the art would have had reason to modify Park in view of Romano, the Examiner determines as follows: It would have been obvious to one skilled in the art to form the extruded noodle to have the shape as shown in the Design as an obvious matter of preference depending on the appearance wanted. It would have been obvious to vary the distance and symmetries as an obvious matter of design choice. It would have been within the skill of one in the art to determine the area occupied by the hole depending on the size of the [hole] wanted in the final product. It would have been obvious to make the noodle to have a circular outer shape because that is a routine shape for noodle product. Id. at 4 (emphasis added). Appellant argues that the Examiner has not stated a proper basis as to why one of skill in the art would have had reason to modify the primary Appeal 2018-009168 Application 13/996,156 10 reference, Park, so as to arrive at the claimed noodle product. Appeal Br. 13–14. Appellants argue that Park teaches a hole that would not be closed during cooking. Id. at 13. Appellants further argue that the ornamental design of Romano would be undesirably lost if the grooves of the Romano pasta were to close during cooking and that Romano does not teach a circular outer shape. Id. Appellants further reiterate their argument that the limitation relating to the number of grooves (“three-fold to four-fold rotational symmetries”) is not a mere design choice because it “provides an optimal arrangement whereby an extrusion die is small enough to produce a hole that will entirely or partially close when the noodle is subjected to boiling or rehydration in hot water.” Id. at 14. The Examiner relies upon “preference,” “design choice,” what is “wanted,” and what is “routine” in finding that one of ordinary skill in the art would have combined the teachings of Park and Romano so as to arrive at the claimed noodle product. Final Act. 4. As with regard to the rejection of claim 1, such explanations are inadequate without an explanation as to why those specific design parameters would have been desirable, especially where, as here, these parameters have a disclosed functional purpose. In view of the foregoing, Appellants have shown reversible error in the rejection of claim 1 over Park in view of Romano. Claims 2, 3, 5, and 6 depend from claim 1. Appeal Br. 18–19 (Claims App.). The rejection of these claims is predicated upon the same analysis described above. Final Act. 3–4. Accordingly, Appellants’ arguments regarding claim 1 are equally applicable to the rejection of these claims and Appellants have shown reversible error in regard to such rejection. Appeal 2018-009168 Application 13/996,156 11 Rejection 4. The Examiner rejected claim 19 as obvious over Park in view of Romano and further in view of Hayes-Jacobson. Id. at 4. Claim 19 depends from claim 1. Appeal Br. 19 (Claims App.). The rejection of claim 19 is predicated upon the same analysis described above; the Examiner does not rely on Hayes-Jacobson to remedy the deficiency in the combination of Park and Romano discussed above. Final Act. 4. Accordingly, Appellants’ arguments regarding claim 1 are equally applicable to the rejection of these claims and Appellants have shown reversible error in regard to such rejection. CONCLUSION All rejections are reversed. REVERSED Copy with citationCopy as parenthetical citation