Ex Parte Spurr et al

Patent Trial and Appeal Board

Jun 21, 2016

13982468 (P.T.A.B. Jun. 21, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/982,468 10/09/2013
110933 7590 06/22/2016
Carstens & Cahoon, LLP
PO Box 802334
Dallas, TX 75380
FIRST NAMED INVENTOR
Michael Alfred James Spurr
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 .40665 8317
EXAMINER
NGUYEN, PHUONG T
ART UNIT PAPER NUMBER
3742
MAILDATE DELIVERY MODE
06/22/2016 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 MICHAEL ALFRED JAMES SPURR and
BRIAN RICHARD NEWBERRY
Appeal2016-005498
Application 13/982,468
Technology Center 3700
Before JENNIFER. D. BAHR, GEORGE R. HOSKINS, and
FREDERICK C. LANEY, Administrative Patent Judges.
HOSKINS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Michael Alfred James Spurr and Brian Richard Newberry
("Appellants") 1 appeal under 35 U.S.C. § 134 from the Examiner's final
decision rejecting claims 1-19 in this application. The Board has
jurisdiction over the appeal under 35 U.S.C. § 6(b ).
We REVERSE.
1 The Appeal Brief identifies Frito-Lay Trading Company GmbH as the real
party in interest. Appeal Br. 2.
Appeal 2016-005498
Application 13/982,468
CLAIMED SUBJECT MATTER
Claim 1 is the sole independent claim on appeal, and it recites:
1. An apparatus for de-oiling potato slices, the apparatus
compnsmg:
an elongate conveyor having an upstream end and a
downstream end, the conveyor being permeable to oil, water and
air and being adapted to convey potato slices on the conveyor,
the upstream end of the elongate conveyor receiving potato slices
pre-treated in oil from an exit end of a lipophilic preconditioning
unit for potato slices;
a water spray station located towards the upstream end, the
water spray station comprising upper and lower water spray units
adapted to spray water downwardly and upwardly, respectively,
towards potato slices pre-treated in oil on the conveyor to
displace and lift surface oil from the potato slices pre-treated in
oil·
'
a plurality of air-blower stations located in succession
downstream of the water spray station, each air-blower station
comprising upper and lower air knife units adapted to direct an
air blade downwardly and upwardly, respectively, towards
potato slices pre-treated in oil on the conveyor to remove oil and
water from the potato slices pre-treated in oil;
a longitudinally extending hold-down belt co-extensive
with and vertically separated from the elongate conveyor such
that when potato slices pre-treated in oil are being de-oiled, the
potato slices pre-treated in oil are held in position, between the
elongate conveyor below and the longitudinally extending hold
down belt above, as they are conveyed past the plurality of air
blower stations; and
an oil capture trap located below the elongate conveyor to
receive oil removed from potato slices during the de-oiling
process.
Appeal Br. 35 (Claims App., emphases added).
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Appeal 2016-005498
Application 13/982,468
REJECTIONS ON APPEAL
Claims 1, 2, 5, and 6 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Benson (US 5,802,959, iss. Sept. 8, 1998) and Macaluso
(US 7,238,381 B2, iss. July 3, 2007). 2
Claims 3, 7, and 8 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Benson, Macaluso, and Gunawardena
(US 2006/0040029 Al, pub. Feb. 23, 2006).
Claim 4 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Benson, Macaluso, and Delvaux (US 5,445,849, iss. Aug. 29, 1995).
Claims 9--12 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Benson, Macaluso, and Ovadia (US 2010/0119659 Al, pub. May 13,
2010).
Claims 13 and 14 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Benson, Macaluso, and Gallo (US 5,858,435, iss. Jan. 12,
1999).
Claims 15-18 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Benson, Macaluso, Gallo, and Gunawardena.
Claim 19 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Benson, Macaluso, Gallo, Gunawardena, and Ovadia.
ANALYSIS
A. Obviousness based on Benson and Macaluso
In rejecting claim 1, the Examiner finds Benson discloses
substantially all of the claimed subject matter, including the claimed
2 The Final Office Action includes claim 20 in this group of claims, but that
claim is cancelled. Final Act. 2; Appeal Br. 2, 5, 38.
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Appeal 2016-005498
Application 13/982,468
"lipophilic preconditioning unit" as the potato slicer 24 illustrated in
Figures 4--5 of Benson. Final Act. 2-3. The Examiner reasons: "since the
applicants have not clearly defined the structure of the 'lipophilic
preconditioning unit'; for the purpose of examination, the slicer 24, figs. 4--5
of Benson is considered as a lipophilic preconditioning unit." Id. at 10; see
also Ans. 3 (providing substantially identical analysis). The Examiner
further states "the system of Benson is capable of using in the lipophilic
preconditioning." Ans. 3. The Examiner suggests that Appellants "include
more structure limitations" in claim 1, "to clarify the improvement of the
invention, rather than the process step or functional language." Final
Act. 11.
Appellants argue the Examiner errs in finding Benson's potato
slicer 24 is a lipophilic preconditioning unit for potato slices, as recited in
claim 1. Appeal Br. 6-9; Reply Br. 2-3. We agree.
As an initial matter, the rejection rests upon a determination that
claim 1 fails to recite that the potato slices are pre-treated in oil, and a
finding that Benson's potato slicer 24 corresponds to the lipophilic
preconditioning unit recited in claim 1. Final Act. 2-3; Ans. 2-3.
Appellants agree with the Examiner's interpretation of claim 1 to require the
lipophilic preconditioning unit. See Appeal Br. 6-9. Thus, it is undisputed
that claim 1 affirmatively requires a lipophilic preconditioning unit to supply
potato slices pre-treated in oil to the upstream end of the elongate conveyor.
We agree with that interpretation.
Next, we consider what the claimed lipophilic preconditioning unit
requires. Our reviewing court has instructed that:
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Appeal 2016-005498
Application 13/982,468
[U]nder the broadest reasonable interpretation, the Board's
construction "cannot be divorced from the specification and the
record evidence," In re NTP, Inc., 654 F.3d 1279, 1288 (Fed. Cir.
2011 ), and "must be consistent with the one that those skilled in
the art would reach," In re Cortright, 165 F.3d 1353, 1358 (Fed.
Cir. 1999). A construction that is "unreasonably broad" and
which does not "reasonably reflect the plain language and
disclosure" will not pass muster.
Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015)
(quoting In re Suitco Surface, Inc., 603 F.3d 1255, 1260 (Fed. Cir. 2010)).
Appellants' Specification describes "lipophilic preconditioning" as "placing
the [potato] slices into a warm oil flume, a batch kettle or a continuous oil
dip." Spec. i-f 8. 3 Appellants' Specification further indicates:
The potato slices 6 have been pre-treated in oil in the lipophilic
preconditioning process and initially, prior to the de-oiling step,
have about 30 to 45 wt% surface oil ... to provide the required
organoleptic properties to the resultant potato chip, which has
been cooked by the combination of the preliminary oil treating
step and the subsequent microwave cooking step ....
Id. i-f 22 (emphasis added). In light of these disclosures, we determine a
person of ordinary skill in the art would understand the lipophilic
preconditioning unit of claim 1 to be a structure capable of applying a
lipophilic material, such as oil, to potato slices. This determination is further
consistent with the repeated references in claim 1 to "potato slices pre-
treated in oil." Appeal Br. 35 (Claims App.).
A preponderance of the evidence does not indicate Benson's potato
slicer 24 is capable of applying a lipophilic material, such as oil, to potato
3 Citations to the Specification herein refer to the Substitute Specification
submitted by Appellants on July 29, 2013.
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Application 13/982,468
slices. See Benson, 3:61--4:10, 7:11-20. Indeed, Benson states it prepares
potato chips without using cooking oil. Benson, Abstract, 1: 13-17, 3 :3 7--41.
The Examiner relies on Macaluso as disclosing a water spray station
having the claimed upper and lower water spray units, and proposes to
modify Benson's water spray station 31 to have such a spraying
configuration. Final Act. 3--4. Thus, Macaluso does not cure the deficiency
of Benson as to the lipophilic preconditioning unit. The analysis of
dependent claims 2, 5, and 6 similarly pertains to other limitations in the
claims. Final Act. 4. Therefore, we do not sustain the rejection of claims 1,
2, 5, and 6 as unpatentable over Benson and Macaluso.
B. Obviousness based on Benson, Macaluso, and one or more of
Gunawardena, Delvaux, Ovadia, and Gallo
The rejections of claims 3, 4, and 7-19 as obvious over Benson,
Macaluso, and one or more of Gunawardena, Delvaux, Ovadia, and Gallo do
not cure the deficiency of Benson noted above. See Final Act. 5-10. We,
therefore, likewise do not sustain these rejections.
DECISION
The Examiner's decision to reject claims 1-19 is reversed.
REVERSED
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