Ex Parte FRENCH et al

Patent Trial and Appeal Board

Sep 27, 2018

14475061 (P.T.A.B. Sep. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/475,061 09/02/2014
110933 7590 09/27/2018
Carstens & Cahoon, LLP
PO Box 802334
Dallas, TX 75380
FIRST NAMED INVENTOR
Justin FRENCH
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.
CFLA Y.00965 1577
EXAMINER
MCGRATH,ERINE
ART UNIT PAPER NUMBER
3742
MAIL DATE DELIVERY MODE
09/27/2018 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JUSTIN FRENCH,
GIRISH GANJY AL, and CHRISTOPHER JAMES KOH
Appeal2017-010531
Application 14/475,061
Technology Center 3700
Before DANIEL S. SONG, JEFFREY A. STEPHENS, and
PAUL J. KORNICZKY, Administrative Patent Judges.
KORNICZKY, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2017-010531
Application 14/475,061
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner's decision, as set forth in the Final Office Action dated December
14, 2017 ("Final Act."), rejecting claims 1, 3-7, and 9. 2 We have
jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
THE CLAIMED SUBJECT MATTER
The claims are directed to a system for producing fried food products.
Claim 1, the only independent claim on appeal, is reproduced below with
disputed limitations italicized for emphasis:
1. A system for continuously producing fried food products
compnsmg:
a first continuous immersion fryer that receives food
pieces at one end;
a takeout conveyor that removes par-fried food pieces
from said first immersion fryer at an end opposite said end that
receives food pieces, and feeds said par-fried food pieces into
one end of a second immersion fryer;
wherein said first immersion fryer comprises a final par-
fry oil temperature,
further wherein said second immersion fryer comprises an
initial finish-fry oil temperature which is higher than said final
par-fry oil temperature, and
wherein said second immersion fryer comprises a
residence time of less than about 10 seconds.
Frito-Lay North America, Inc. ("Appellant") is the applicant pursuant
to 37 C.F.R. § 1.46, and is identified as the real party in interest. Appeal
Brief, dated March 27, 2017 ("Appeal Br."), at 2.
2 Claims 2 and 8 are cancelled. Appeal Br. 2.
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Application 14/475,061
REFERENCES
In rejecting the claims on appeal, the Examiner relied upon the
following prior art:
Weiss
Schonauer
Re. 31,819
us 4,929,461
REJECTIONS
Jan.29, 1985
May 29, 1990
The Examiner made the following rejections:
1. Claims 1, 3-7, and 9 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Schonauer.
2. Claims 1, 3-7, and 9 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Schonauer and Weiss.
Appellant seeks our review of these rejections.
DISCUSSION
Rejection 1: Claims 1, 3-7, and 9
as Anticipated By Schonauer
Appellant argues claims 1, 3-7, and 9 as a group. Appeal Br. 5-8. We
select claim 1 as the representative claim, and claims 3-7 and 9 stand or fall
with claim 1. 37 C.F.R. § 4I.37(c)(l)(iv).
The Examiner finds that Schonauer discloses all of the limitations of
claim 1. Regarding the limitation that the "second immersion fryer
comprises a residence time of less than about 10 seconds," the Examiner
finds that "it is clear each fryer [in Schonauer] would inherently have its
desired frying oil temperature and residence time and such functional
language would not constitute further patentable weight to the recitation of
the fryer." Final Act. 3. The Examiner explains that
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Application 14/475,061
Schonauer discloses, in Fig. 4, the claimed structure, the two
fryers being capable of maintaining different temperatures.
Furthermore, regarding residence time, it is unclear how the
shortened residence time structurally differentiates the claimed
invention over that of Schonauer. Are there specific structural
requirements of the fryers or the conveyor which are necessitated
by the shortened residence time? Based on the present
disclosure, Examiner has not found a differentiating structure or
reason which would prevent the apparatus shown in Fig. 4 of
Schonauer from being used in such a manner.
Final Act. 8-9.
Appellant asserts that the Examiner's rejection is erroneous for
several reasons. First, Appellant argues that "the Examiner has not provided
a basis in fact or technical reasoning to support the notion that the second
immersion fryer of Schonauer inherently comprises a residence time of less
than 10 seconds." Appeal Br. 6.
We disagree. Appellant does not dispute the Examiner's finding that
Schonauer's first fryer is capable of frying food "at least about I minute but
usually not more than about 3 minutes to partially fry the slices" (Schonauer,
2:51-54), and Schonauer's second fryer is capable of frying food "for about
5-6 minutes to form potato chips" (id. at 2:58---60). Appeal Br. 6. We also
note that Schonauer discloses that "the time [i.e., residence time] during
which the potato slices remain in the initial frying region can be controlled
by the speed of oil flow . . . and the speed of rotation of paddle wheels 18."
Id. at 5: 18-22. Thus, the Examiner correctly finds that the "device of
Schonauer can be operated with the claimed residence time without
requiring any structural modifications." Ans. 9. Thus, Appellant's argument
is not persuasive.
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Application 14/475,061
Second, Appellant asserts that because "[ f]eatures of an apparatus
may be recited either structurally or functionally," "the Examiner's assertion
that the residence time limitation does not provide any patentable weight" is
erroneous. Appeal Br. 7. According to Appellant,
There are a number of different structural modifications
that can affect the residence time of a fryer. If the fryer is a
continuous fryer, where products enter one end and exit on the
opposite end, the distance between the two ends can be shortened
in order to shorten the residence time. Alternatively or
additionally, the speed at which the products pass from one end
to the other can be altered by the use of paddle wheels,
conveyors, submergers, oil pumps, etc. Appellant herein is not
restricted to any of these possibilities because the crux of the
invention is a system that includes a second immersion fryer with
a very short residence time.
Id. at 7-8. Appellant asserts that "it is enough to show that the residence
time of a fryer is a functional characteristic and a property of a fryer that
imparts patentable weight to a fryer." Id. at 8.
We agree with Appellant that one may choose to define an element of
an apparatus functionally, i.e., by what it does, but this carries a risk: Where
there is reason to believe that the prior art structure possesses all the claimed
structural characteristics including the capability of performing the claimed
function, the burden shifts to the applicant to show that the claimed function
structurally distinguishes the claimed apparatus from the prior art apparatus.
See In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997); In re Swinehart,
439 F.2d 210,213 (CCPA 1971). Specifically, "[w]here, as here, the
claimed and prior art products are identical or substantially identical ... the
PTO can require an applicant to prove that the prior art products do not
necessarily or inherently possess the characteristics of his claimed product."
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In re Best, 562 F.2d 1252, 1255 (CCPA 1977). Here, Appellant does not
adequately carry its burden, and does not persuasively show how the
claimed residence time distinguishes claim 1 from Schonauer's fryer----e.g.,
none of Appellant's alleged fryer components are recited in claim 1. Thus,
Appellant's argument is not persuasive.
For the reasons above, the rejection of claim 1 is sustained. Appellant
does not argue claims 3-7 and 9 apart from claim 1. We discern no error in
the Examiner's rejection of claims 3-7 and 9, and also sustain the rejection
of those claims.
Rejection 2: Claims 1, 3-7, and 9
as Unpatentable Over Schonauer and Weiss
Appellant argues claims 1, 3-7, and 9 as a group. Appeal Br. 8-10.
We select claim 1 as the representative claim, and claims 3-7 and 9 stand or
fall with claim 1. 37 C.F.R. § 4I.37(c)(l)(iv).
The Examiner finds that Schonauer discloses all of the limitations of
claim 1. Regarding the limitation that the "second immersion fryer
comprises a residence time of less than about 10 seconds," the Examiner
finds "that for a system (apparatus) claim, the manner of operating the
device does not differentiate the apparatus from the prior art (MPEP 2114 ).
Therefore, ... the time of frying, do[ es] not suffice to distinguish the
claimed invention from the prior art," and "while Schonauer's method
discloses frying times of up to 60 seconds, for reasons noted above, the
frying time does not distinguish the claimed invention from the prior art."
Final Act. 5---6.
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As an alternative ground for the rejection, the Examiner finds that
"Weiss teaches a frying time of less than about 10 seconds ( 5 seconds)." Id.
at 6 (citing Weiss, 2:40). The Examiner determines that it would have been
obvious to one having ordinary skill in the art "to modify the system of
Weiss [ sic, Schonauer] by configuring the frying time to be less than about 5
seconds as taught by Weiss because this frying time produces a desirable
texture in certain food products." Id. The Examiner further explains that
Weiss teaches a shortened frying time for the purposes of
reducing moisture content of the chip (Col. 2, Lines 22-25) and
Schonauer teaches an apparatus which is capable of continuously
processing chips, and a method of operating the apparatus which
results in batch-fried texture chips. However, the fact that
Schonauer' s preferred method of operation of the apparatus
results in chips with a batch-fried texture does not preclude the
use of Schonauer's apparatus to produce chips with a different
texture, such as that of a more traditional potato chip, as taught
by Weiss.
Id. at 10.
Appellant asserts that the Examiner's rejection is erroneous for
several reasons. First, Appellant argues that "the arguments provided above
[in Rejection 1] regarding the propriety of functional claim limitations and
the disclosure of Schonauer are incorporated herein by reference." Appeal
Br. 8. For the reasons discussed above in Rejection 1, Appellant's
arguments are not persuasive.
Second, Appellant argues that the Examiner's proposed modification
would erroneously "change the principle of operation of' Schonauer (id. at
9), and "Schonauer also teaches away from the proposed modification" (id.).
According to Appellant, "Schonauer asserts that its initial low temperature
frying step 'sets up' the batch-like texture of the potato chip- or 'case
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hardens' the potato slice 'before driving moisture out of the slices during the
high temperature fry."' Id. at 8 (citing Schonauer, 3:11-16). Appellant
concludes "that any proposed modification of Schonauer to use its first
frying step as the primary dehydration step and shorten the finish frying step
to a residence time of less than 10 seconds would alter its operative
principle, and would not be an obvious modification of Schonauer." Id. at 9.
Appellant misunderstands the Examiner's rejection. The Examiner
does not state that the first frying step is being used as "the primary
dehydration step," rather than a "case harden step." The Examiner proposes
to modify the residence time in Schonauer's second fryer to less than about
10 seconds. Appellant does not offer persuasive evidence that moisture will
not or cannot leave the food during this modified second step. See, e.g.,
Weiss, 2:23--40 (stating fryer can be used to dehydrate food). Appellant's
argument also is not persuasive because Appellant does not identify any
portion of Schonauer that criticizes, discredits, or otherwise discourages the
Examiner's proposed combination of Schonauer and Weiss' shortened
residence time. DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567
F.3d 1314, 1327 (Fed. Cir. 2009) ("A reference does not teach away,
however, if it merely expresses a general preference for an alternative
invention but does not 'criticize, discredit, or otherwise discourage'
investigation into the invention claimed." (quoting In re Fulton, 391 F.3d
1195, 1201 (Fed. Cir. 2004))). Because Appellant does not address the
rejection as articulated by the Examiner, Appellant does not identify error.
Finally, Appellant asserts that the Examiner's rejection is erroneous
because the Declaration of Mr. Justin French "demonstrates that the results
that can be obtained using the inventive system are surprising." Appeal Br.
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9. Mr. French essentially testifies, in relevant part, that the claimed system
and the claimed resident time "produce[] a fried food product that is
unknown in the art and has surprising characteristics." French Deel. ,r 5.
We agree with the Examiner that Mr. French does not present evidence that
"there are structural limitations imposed by the requirements of different
frying times [i.e., residence times]." Ans. 8. Thus, the French declaration
does not identify error by the Examiner.
DECISION
For the above reasons, the Examiner's rejections of claims 1, 3-7, and
9 are 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). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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