Ex Parte Crosby et al

Board of Patent Appeals and Interferences

Sep 9, 2010

10896208 (B.P.A.I. Sep. 9, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte THOMAS GEORGE CROSBY, GEOFFREY THOMAS LEY,
V.N. RAO, and DIANNE RENEE RIPBERGER
____________

Appeal 2009-013074
Application 10/896,208
Technology Center 1700
____________

Before TERRY J. OWENS, BEVERLY A. FRANKLIN, and KAREN M.
HASTINGS, Administrative Patent Judges.

FRANKLIN, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2009-013074
Application 10/896,208

Appellants appeal under 35 U.S.C. § 134 from the Examiner's
rejection of claims 1-14 and 16-24. We have jurisdiction under 35 U.S.C.
§ 6(b).
STATEMENT OF THE CASE

Claims 1, 3, 7, 14, and 20 are representative of the subject matter on
appeal and are set forth below:
1. A method for making cooked rolled snack pieces having a
monoglyceride, said method comprising the steps of:

a. mixing a starch-based material comprising amylose with
monoglyceride and water to form a starch based dough;

b. forming said starch based dough into a plurality of
uncooked snack pieces;

c. rolling said uncooked snack pieces to make a plurality of
rolled snack pieces, wherein each rolled snack piece further
comprises:

an inner facing surface;

an outer facing surface;

wherein at least a portion of said inner facing surface is adjacent to at
least a portion of said outer facing surface and thereby forms an
overlaps area; and

d. cooking said rolled pieces to make a plurality of cooked
rolled snack pieces.

3. The method of claim 1 wherein said starch-based material at
step a) comprises at least about 40% amylose by weight.

7. The method of claim 1 wherein said monoglyceride at step a)
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comprises a powder having an average particle size at or below about
400 microns.

14. The method of claim 1 wherein said rolling at step c) comprises
between one and two full turns.

20. The method of claim 1 wherein said cooking at step d)
comprises toasting followed by frying.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Gregersen 4,178,393 Dec. 11, 1979
Zimmerman 5,928,700 Jul. 27, 1999
Rodriguez 2002/0168458 A1 Nov. 14, 2002

THE REJECTION
1. Claims 1-6, 8-14, 16-24 are rejected under 35 U.S.C. 103(a) as being
unpatentable over Zimmerman in view of Rodriguez.
2. Claim 7 is rejected under 35 U.S.C. 103(a) as being unpatentable over
Zimmerman et al in view of Rodriquez as applied to claims 1-6, 8-14, and
16-24 above, and further in view of Gregersen.
ANALYSIS
(with Findings of Fact and Principles of Law)

Claim 1
We essentially adopt the Examiner’s findings pertinent to the issue(s)
raised by Appellants for this rejection. We therefore incorporate the
Examiner’s position as set forth in the Answer. We add the following for
emphasis only.
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Application 10/896,208

We begin with Appellants’ arguments directed to whether the
combination of Zimmerman in view of Rodriquez is improper.
Appellants first assert that the references teach away from their
combination. Appellants argue that Zimmerman is directed to a low
moisture content dough, i.e., Zimmerman teaches a dough comprising about
20% to about 40% added water. (Zimmerman, col. 4, ll. 38-31). Br. 9-10.
Appellants argue that Example 10 of Rodriguez teaches that a dough
having 40% moisture resulting in a "dough of fragile and dry consistency for
forming a small tortilla and for performing rolling up of the same."
(Rodriguez, p. 4, ¶44). Br. 10.
Appellants conclude that because more water would presumably have
to be added to Zimmerman to provide sufficient rheological properties and
because Zimmerman teaches away from high moisture content doughs, one
skilled in the art would not be motivated to make the combination as
suggested by the Examiner. Br. 10
Appellants’ arguments are unpersuasive because, as pointed out by the
Examiner on pages 8-9 of the Answer, Rodriguez is relied upon for teaching
the claimed rolled-up configuration and not for the ingredients of the dough.
The Examiner recognizes that the dough of Zimmerman and the dough of
Rodriguez are different. The Examiner emphasizes that the dough of
Zimmerman alone is sufficient because the dough of Zimmerman contains
substantially the same ingredients as claimed. Ans. 8-9.
Appellants then argue that not just any dough can be rolled-up, and
that Rodriguez provides evidence that one skilled in the art would not be
motivated to roll-up the dough of Zimmerman. We refer to pages 10-11 of
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the Brief in this regard (which includes Appellants’ referral to the
prosecution history of Rodriguez).
Appellants reiterate that it would not have been obvious for one
skilled in the art to merely roll the dough of Zimmerman in view of 1) the
prior art section of the Appellants' invention (¶¶ 8 and 9 of the Specification)
and 2) Rodriguez’s teachings that not just any dough can be rolled-up and
cooked and result in a desirable food product, as the Examiner assumes. Br.
11.
Appellants also argue that the Examiner’s position that "‘even [sic]
without the Rodriguez reference, a rolled shape is known in the art such as
rolled cookie, rolled wafer, etc.’" is conclusory “without any articulated
rational or evidentiary support”. Br. 11-12 quoting Final Office Action, 4.
We are not convinced by the above-mentioned arguments for the
following reasons.
As expressed by the Examiner on pages 7-8 of the Answer,
Appellants’ arguments concerning the prior art discussed in the Specification
or Rodriguez regarding the difficulties associated with rolling dough is not
convincing argument. We refer to the Examiner’s specific comments made
in the paragraph bridging pages 7-8 of the Answer in this regard. Most
importantly, the Examiner correctly points out that the dough disclosed in
Zimmerman contains substantially the same ingredients as claimed.
Appellants do not dispute this fact. See generally Brief and Reply Brief. As
such, we agree with the Examiner that the dough in Zimmerman meets the
subject matter of Appellants’ method claim 1, absent rebuttal evidence to the
contrary.
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With regard to the specific shape of the rolled product, we agree with
the Examiner that even without Rodriguez2, the claimed rolled shape is
known in the art. This is made evident by the admitted prior art in
Appellants’ Specification on pages 2-4, for example. Furthermore, it has
been generally held that changes in shape of a known element are obvious.
In re Dailey, 357 F.2d 669, 676 (CCPA 1966) (The court held that the
configuration of the claimed disposable plastic nursing container was a
matter of choice which a person of ordinary skill in the art would have found
obvious absent persuasive evidence that the particular configuration of the
claimed container was significant). Therefore, modification of the shape of
the food product in Zimmerman is prima facie obvious.
Appellants discuss rebuttal evidence, beginning on page 6 of their
Brief. Appellants refer to aspects of Zimmerman, as well as paragraphs 7
and 8 of their Specification, as evidence of the difficulty of rolling “just any
dough”. At the bottom of page 7 and top of page 8 of the Brief, Appellants
submit that “merely rolling up just any dough product will not result in a
snack food having a light, crispy texture” as does their claimed invention.
Appellants also argue that paragraphs 7 and 8 of their Specification
and Rodriguez evidence that the Examiner’s conclusion that the elastic
dough sheet of Zimmerman can be rolled into a rolled shape is without
merit. Br. 8.

2 Appellants argue that Rodriguez is directed to a U-shaped taco shell
which is different from the shape recited in their method claim 1. Br. 9.
Reply Br. 1-6. However, such an argument is not convincing since the
claimed rolled shape is known and changes in shape of a known element are
obvious.

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Appellants also argue that the Examiner’s position that the dough of
Zimmerman can be rolled into a variety of shapes is a “conclusory
allegation” and the frying or cooking of a two-dimensional shape (U-shaped
taco shell of Rodriquez) does not impart the same difficulties as a three-
dimensional rolled shape as presently claimed. Br. 8.
Appellants also argue that the dough in Zimmerman would result in a
hard and undesirable food product. Br. 8
The above-mentioned rebuttal evidence is not convincing. As stated
by the Examiner on page 8 of the Answer, Appellants have not submitted
evidence showing that the dough pieces in Zimmerman cannot be formed
into a rolled snack piece as claimed, especially in view of the undisputed
fact that the dough disclosed in Zimmerman contains substantially the same
ingredients as claimed. Arguments of counsel cannot take the place of
factually supported objective evidence. See, e.g., In re Huang, 100 F.3d
135, 139-40 (Fed. Cir. 1996); In re De Blauwe, 736 F.2d 699, 705 (Fed.Cir.
1984).
In view of the above, we agree with the Examiner’s rejection of claim
1.
Claim 3
Clam 3 recites “wherein said starch-based material at step a)
comprises at least about 40% amylose by weight.”
Appellants argue that Zimmerman fails to teach the subject matter of
claim 3. Br. 13. We agree with the Examiner’s response made on pages 9-
10 of the Answer, wherein the Examiner states that Zimmerman discloses
the same starch-based materials as disclosed in Appellants’ Specification
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and that therefore the amylase content would inherently be within the
claimed range as recited in claim 3. Notably, Appellants do not dispute this
in their Reply Brief.
In view of the above, we agree with the rejection of claim 3.
Claim 7
Claim 7 recites “wherein said monoglyceride at step a) comprises a
powder having an average particle size at or below about 400 microns.” The
Examiner relies upon Gregerson for teaching this aspect of the claimed
invention. Appellants argue that Gregerson requires additional additives not
required in the present invention. Br. 13-14.
As pointed out by the Examiner on page 10 of the Answer,
Appellants’ claims do not exclude additional additives. Furthermore, the
Examiner’s reason for combining the references as expressed on pages 5-6
of the Answer adequately supports a prima facie case of obviousness.
In view of the above, we agree with the rejection of claim 7.
Claim 14
Claim 14 recites “wherein said rolling at step c) comprises between
one and two full turns.” Appellants’ argument addresses only the reference
of Rodriguez. Br. 14-15. This type of argument is unconvincing. The test
for obviousness is what the combined teachings of the references would
have suggested to those of ordinary skill in the art; one cannot show non-
obviousness by attacking references individually where the rejections are
based on combinations of references. In re Young, 927 F.2d 588, 591 (Fed.
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Cir. 1991); In re Merck & Co., Inc., 800 F.2d 1091, 1097-98 (Fed. Cir.
1986); In re Keller, 642 F.2d 413, 425 (CCPA 1981).
In view of the above, we therefore agree with the rejection of claim
14.

Claim 16

Claim 16 recites “wherein said outer facing surface and said inner
facing surface substantially mate together in said overlap area.” Again,
Appellants’ arguments only address the Rodriguez reference, and for the
reasons stated supra, such arguments are not convincing.
In view of the above, we agree with the rejection of claim 16.
Claims 20-22
Claim 20 recites “wherein said cooking at step d) comprises toasting
followed by frying.” Claim 21 recites “wherein said cooking at step d)
comprises frying.” Claim 22 recites “wherein said uncooked snack chips are
fried in oil at between about 300°F and about 400°F.”
On page 16 of the Brief, Appellants argue that the Examiner has not
provided a reference teaching a fried, rolled product. The Examiner disputes
this statement. Ans. 10. On pages 4 and 5 of the Answer, the Examiner
correctly finds that Rodriguez teaches to toast snack pieces before frying.
Rodriguez, ¶ 0032. This teaching, in combination with the other applied
references, as discussed supra, suggests the subject matter of claims 20-22.
In view of the above, we agree with the rejection of claims 20-22.

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CONCLUSIONS OF LAW AND DECISION
Each rejection is affirmed.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(v).
AFFIRMED

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