Ex Parte Mishra et al

Patent Trial and Appeal Board

Feb 25, 2019

13498311 (P.T.A.B. Feb. 25, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/498,311 11/06/2012 Jyoti Prakash Mishra
959 7590 02/27/2019
NELSON MULLINS RILEY & SCARBOROUGH LLP
FLOOR 30, SUITE 3000
ONE POST OFFICE SQUARE
BOSTON, MA 02109
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.
FHW-175USRCE 3026
EXAMINER
TRAN, LIEN THUY
ART UNIT PAPER NUMBER
1793
NOTIFICATION DATE DELIVERY MODE
02/27/2019 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):
ipbos ton.docketing@nelsonmullins.com
chris.schlauch@nelsonmullins.com
ipqualityassuranceboston@nelsonmullins.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JYOTI PRAKASH MISHRA, V ADIVELAN P ALANIVEL,
LARISSA SCHEFER, MARKUS BROCKFELD, NADINA PATRIZIA
MULLER-FISCHER, and DETLEF BLASS
Appeal2018-003020
Application 13/498,311
Technology Center 1700
Before BEYERL YA. FRANKLIN, 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, 5, 9, 13-21, 25-27, 32-36,
38, and 41-502. We have jurisdiction over this appeal under 35 U.S.C.
§ 6(b).
We AFFIRM.
1 Appellants identify Buhler Sortex Ltd. as the real party in interest. Appeal
Brief filed September 6, 2017 ("App. Br."), 1.
2 Final Office Action entered August 5, 2016 ("Final Act.").
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Application 13/498,311
STATEMENT OF THE CASE
Appellants claim a process for whitening rice. Independent claim 1
illustrates the subject matter on appeal and is reproduced below with
emphases added to highlight contested subject matter:
1. A process for whitening rice, comprising the steps of:
moistening brown rice with a moistening agent
comprising water and an additive comprising at least one of a
sugar or a derivative thereof, including a sugar alcohol, and
sodium chloride; and
mechanically whitening the moistened brown rice after
the moistening step.
App. Br. 7 (Claims Appendix) ( emphasis added).
Independent claim 9 includes the subject matter recited in claim
1 and further recites that "the additive comprises less than 10 wt% of
the moistening agent." Independent claim 21 includes the subject
matter recited in claim 1 and further recites that "the moistening step
comprises applying the moistening agent to the brown rice or mixing
together the brown rice and the moistening agent and the moistening
agent is applied to the brown rice for less than 2 minutes."
Independent claim 32 includes the subject matter recited in claim 1
and further recites that "the moistening agent is added to the brown
rice in an amount of less than 2 wt%."
The Examiner sets forth the following rejections in the Final
Office Action, and maintains the rejections in the Examiner's Answer
entered November 9, 2017 ("Ans."):
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Application 13/498,311
I. Claims 1, 3, 5, 13, 17-19, 25-27, 35, 36, 42--44, and 48-503
under 35 U.S.C. § I03(a) as unpatentable over Lynn4;
II. Claims 14, 15, and 41 under 35 U.S.C. § I03(a) as unpatentable
over Lynn in view of Sadakiyo5;
III. Claim 16 under 35 U.S.C. § I03(a) as unpatentable over Lynn
in view of Guraya6;
IV. Claims 1, 3, 5, 13, 17, 20, 25, 35, and 42--44 under 35 U.S.C. §
I02(b) as anticipated by Akio7, or alternatively, under 35 U.S.C. § I03(a) as
unpatentable over Akio;
V. Claims 18, 19, and 36 under 35 U.S.C. § I03(a) as unpatentable
over Akio;
VI. Claims 9, 21, 32-34, 38, and 45--47 under 35 U.S.C. § I03(a) as
unpatentable over Aki in view of Satake8; and
VII. Claims 14, 15, and 41 under 35 U.S.C. § I03(a) as unpatentable
over Aki in view of Sadakiyo.
DISCUSSION
Upon consideration of the evidence relied upon in this appeal and
each of Appellants' contentions, we affirm the Examiner's rejections of
claims 1, 3, 5, 9, 13-21, 25-27, 32-36, 38, and 41-50 under 35 U.S.C. §
3 Although the Examiner lists claim 40 in this ground of rejection (Final Act.
2), claim 40 is not pending in the application. Final Act. 1.
4 Lynn et al., US 3,667,523, issued June 6, 1972.
5 Sadakiyo et al., EP 1 568 284 Al, published August 31, 2005.
6 Guraya, US 6,586,036 Bl, issued July 1, 2003.
7 Akio, JP 58-175456, published October 14, 1983.
8 Satake, US 4,155,295, issued May 22, 1979.
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Application 13/498,311
103(a), and the Examiner's alternative rejection of claims 1, 3, 5, 13, 17, 20,
25, 35, and 42--44 under 35 U.S.C. § 102(b ), for the reasons set forth in the
Final Office Action, the Answer, and below.
We review appealed rejections for reversible error based on the
arguments and evidence Appellants provide for each ground of rejection
Appellants contest. 37 C.F.R. § 4I.37(c)(l)(iv); Ex parte Frye, 94 USPQ2d
1072, 1075 (BPAI 2010) (precedential) (cited with approval in In re Jung,
637 F.3d 1356, 1365 (Fed. Cir. 2011) (explaining that even if the examiner
had failed to make a prima facie case, "it has long been the Board's practice
to require an applicant to identify the alleged error in the examiner's
rejections")).
Rejections I-III
Appellants argue the claims subject to these rejections (claims 1, 3, 5,
13-19, 25-27, 35, 36, 41--44, and 48-50) together on the basis of claim 1, to
which we accordingly limit our discussion. App. Br. 3--4; 37 C.F.R.
§ 4I.37(c)(l)(iv).
Appellants argue that Lynn does not disclose moistening brown rice
with a moistening agent comprising water and an additive. Br. 3--4.
Appellants argue that "Lynn expressly requires the use of a liquid or liquid
mixture which avoids hydration, i.e., moistening ... for the reason that
liquids which contain an excess of water, as in claim 1 to provide for
moistening, damage the quality of the rice." Br. 3--4 ( citing Lynn col. 3, 11.
21-27). Appellants argue that in view of this disclosure in Lynn "one of
ordinary skill in the art would not have contemplated the use of a liquid
which caused the moistening of rice grains." Br. 4.
Appellants' arguments are unpersuasive of reversible error in the
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Application 13/498,311
Examiner's rejection, however, for reasons that follow.
Lynn discloses a method for removing the bran and germ from a
grain, such as rice, that involves supplying liquid and grain kernels to vessel
1, dispersing the grain throughout the liquid by mild agitation, and passing
impacting means 10, such as rotating shaft 11, through the liquid for a period
of time sufficient to substantially or fully remove the bran layer from the
grain. Col. 1, 11. 6-8; col. 3, 11. 43-55. Lynn discloses that the liquid
supplied to vessel 1 "may be any suitable liquid which is compatible with
the grain to be processed," and Lynn indicates that aqueous solutions such as
sugar solutions have "been successfully used in the practice of the present
invention." Col. 3, 11. 15-17, 28-32.
Contrary to Appellants' arguments, Lynn thus discloses removing the
bran and germ from rice-which one of ordinary skill in the art would have
understood to be brown rice due to the presence of the bran and germ
layers-using a process that involves dispersing grains of the brown rice
throughout a liquid, such as an aqueous sugar solution, which corresponds to
moistening brown rice with a moistening agent comprising water and an
additive comprising sugar, as recited in claim 1.
Although Lynn cautions that "as is known in the rice milling arts,
some liquids, such as liquids containing an excess of water over that
required to maintain the moisture content of the grain, will damage the
quality of the rice and may reduce the yield of unbroken clean kernels" ( col.
3, 11. 20-24) (emphasis added), this disclosure indicates that excess water,
above the amount required to maintain the moisture content of the grain-
rather than water itself in an appropriate amount----damages the quality of
rice. In view of this disclosure, one of ordinary skill in the art would have
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adjusted the amount of aqueous sugar solution used in Lynn's method to
avoid damaging the rice, and would have arrived at a suitable amount
through nothing more than routine experimentation. As the Examiner
correctly points out (Ans. 8), claim 1 does not require any particular amount
of moistening agent, and therefore encompasses any amount of moistening
agent, such as an amount that would not damage brown rice processed using
Lynn's method.
Although Lynn further indicates that liquid "for processing rice to
produce a whole grain product should be selected or adjusted to avoid
hydration or dehydration of the endosperm of the kernel" (col. 3, 11. 25-27),
one of ordinary skill in the art would have understood this disclosure to be
directed to a process for producing a whole grain product, rather than white
rice. Therefore, contrary to Appellants' arguments, one of ordinary skill in
the art seeking to produce white rice from brown rice using Lynn's method
would have contemplated using a liquid that moistened the brown rice
grains, in view of Lynn's disclosure ( discussed above) of successfully using
an aqueous sugar solution in such a process.
Appellants argue that Lynn discloses supplying liquid and grain
kernels to vessel 1 in which impacting means 10 is operating, and argues
that mechanical whitening is thus performed in Lynn "while the grains
remain immersed in the liquid during operation of the impacting means."
Br. 4. Appellants argue that "there is no disclosure in Lynn of mechanically
removing the germ and bran layers from cereal grains other than while the
cereal grains are immersed in the vessel ( 1 ), and hence there exists no
suggestion of performing a mechanical whitening step after a moistening
step as set forth in claim 1." Id.
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Application 13/498,311
As the Examiner correctly explains in the Answer, however, claim 1
does not exclude mechanically whitening rice while the rice is immersed in a
liquid, such as an aqueous sugar solution as disclosed in Lynn. Ans. 9-10.
As the Examiner points out, claim 1 does not include a limitation that
requires removal of the moistening agent before the mechanical whitening
step, and claim 1 therefore does not exclude the moistening agent from being
present during the mechanical whitening step. Ans. 9-10.
Therefore, contrary to Appellants' arguments, Lynn's disclosure of
first supplying a liquid, such as an aqueous sugar solution, and brown rice
grains to vessel 1, dispersing the grains throughout the liquid by mild
agitation, followed by passing impacting means 10, such as rotating shaft 11,
through the liquid, corresponds to performing a mechanical whitening step
after a moistening step, as recited in claim 1.
We accordingly sustain the Examiner's rejections of claims 1, 3, 5,
13-19, 25-27, 35, 36, 41--44, and 48-50 under 35 U.S.C. § 103(a) as
unpatentable over Lynn, and over Lynn in view of the secondary references
applied in the rejections of claims 14--16 and 41.
Rejections IV-VII
Appellants argue the claims subject to these rejections (claims 1, 3, 5,
9, 13-15, 17-21, 25, 32-36, 38, and 41--47) in two separate groups. Br. 4--5.
Appellants first present arguments directed to claim 1, and Appellants then
present separate arguments directed to independent claims 9, 21, and 32,
which Appellants argue together as a group. Id. We accordingly decide the
appeal as to claim 1 and its dependent claims (claims 3, 5, 13-15, 17, 18-20,
25, 33, 35, 36, 38, and 41--45) based on claim 1 alone. 37 C.F.R.
§ 4I.37(c)(l)(iv). We separately decide the appeal as to claims 9, 21, and
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32, and the claims depending from these claims ( claims 34, 46, and 47),
based on claim 9 alone. Id.
Claims 1, 3, 5, 13-15, 17, 18-20, 25, 35, 36, 38, and 41-45
We point out initially that a subset of the claims in this group of
claims ( claims 1, 3, 5, 13, 1 7, 2 0, 2 5, 3 5, and 4 2--44) stands rejected under
35 U.S.C. § I02(b) as anticipated by Aldo, or alternatively, under 35 U.S.C.
§ I03(a) as unpatentable over Aldo, while the remaining claims in this group
(claims 14, 15, 18, 19, 33, 36, 38, 41, and 45) stand rejected under 35 U.S.C.
§ I03(a) as unpatentable over Aldo alone (claims 18, 19, and 36), or over
Aldo in view of Satake (claims 33, 38, and 45) or Sakakiyo (claims 14, 15,
and 41) ( as set forth above).
Appellants argue that Akio does not disclose or suggest mechanical
whitening of moistened brown rice after a moisturizing step. Br. 4.
Appellants argue that Akio discloses friction polishing grains while the
grains are being wetted by an aqueous saccharide solution, and Appellants
assert that mechanical whitening is therefore performed during wetting or
moistening. Br. 4. Appellants argue that "Akio discloses that the friction
polishing is required to be done while wetting the grains, in order to prevent
oil from leaching out of the bran layer and coating the surface of the grains."
Br. 4--5.
Contrary to Appellants' arguments, however, Akio discloses a process
for preparing grains of rice for storage that corresponds to the process
recited in claim 1. Specifically, Akio discloses a process that involves
spraying rice grains with an aqueous saccharide solution, such as an aqueous
glucose or dextrin solution, stirring the grains to uniformly wet the bran
layer and surface starch layer of each rice grain, and using friction to polish
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the grains while the grains are in this wetted state, which Aldo indicates
prevents oil from leaching out of the bran layer and coating the surface of
the grains. Abst. Appellants do not dispute the Examiner's finding that
because the rice grains disclosed in Aldo contain a bran layer, Aldo
inherently discloses that the rice grains are brown rice grains. Compare
Final Act. 5, with App. Br. 4--5.
Because claim 1 does not exclude the moistening agent from being
present during the mechanical whitening step ( as discussed above), Aldo's
disclosure of first spraying grains of brown rice with an aqueous glucose
solution, followed by polishing the wetted grains using friction, corresponds
to mechanically whitening moistened brown rice after a moistening step, as
recited in claim 1.
We accordingly sustain the Examiner's rejection of claims 1, 3, 5, 13,
17, 20, 25, 35, and 42--44 under 35 U.S.C. § I02(b) as anticipated by Aldo,
and the Examiner's rejections of claims 1, 3, 5, 13-15, 17, 18-20, 25, 35, 36,
38, and 41--45 under 35 U.S.C. § I03(a) as unpatentable over Aldo alone, or
over Aldo in view of Satake (claims 33, 38, and 45) or Sakakiyo (claims 14,
15, and 41).
Claims 9, 21, 32, 34, 46, and 47
As discussed above, independent claim 9 includes the subject matter
recited in claim 1 and further recites that "the additive comprises less than
10 wt% of the moistening agent."
The Examiner finds that Akio discloses spraying grains of brown rice
with an aqueous glucose solution, but does not disclose the concentration of
glucose ( or additive) in the aqueous solution, and the Examiner relies on
Satake for suggesting this feature of claim 9. Final Act. 5-7; Ans. 10.
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Appellants argue that Satake does not disclose or suggest mechanical
whitening of moistened brown rice after a moisturizing step. Br. 5.
Appellants argue that to the contrary, Satake requires mechanical whitening
to be performed during a moistening step, because Satake expressly requires
water to be added for purposes of scouring during mechanical pearling of
nee. Br. 5 ( citing Satake col. 1, 11. 6-10).
As the Examiner explains in the Answer, however, Akio----rather than
Satake----discloses preparing grains of brown rice for storage that involves
first spraying the grains with an aqueous glucose solution, followed by
polishing the wetted grains using friction, which corresponds to
mechanically whitening moistened brown rice after a moistening step, as
recited in claim 9. Ans. 10.
Because Akio discloses the subject matter of claim 9 that Appellants
assert to be missing from Satake, Appellants' arguments are unpersuasive of
reversible error in the Examiner's finding that the combined disclosures of
Akio and Satake would have suggested a process for whitening rice as
recited in claim 9. Jung, 637 F.3d at 1365. We accordingly sustain the
Examiner's rejection of claims 9, 21, 32, 34, 46, and 47 under 35 U.S.C.
§ 103 (a) as unpatentable over Aki in view of Satake.
DECISION
We affirm the Examiner's rejections of claims 1, 3, 5, 9, 13-21, 25-
27, 32-36, 38, and 41-50 under 35 U.S.C. § 103(a), and the Examiner's
rejection of claims 1, 3, 5, 13, 17, 20, 25, 35, and 42--44 under 35 U.S.C.
§ 102(b).
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.I36(a)(l)(iv).
AFFIRMED
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