Ex Parte Steiger

Patent Trial and Appeal Board

Aug 3, 2016

13059122 (P.T.A.B. Aug. 3, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/059, 122 05/11/2011
23117 7590 08/05/2016
NIXON & V ANDERHYE, PC
901 NORTH GLEBE ROAD, 11 TH FLOOR
ARLINGTON, VA 22203
FIRST NAMED INVENTOR
Georg Steiger
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.
BHD-4662-1811 7099
EXAMINER
COX, STEPHANIE A
ART UNIT PAPER NUMBER
1791
NOTIFICATION DATE DELIVERY MODE
08/05/2016 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):
PTOMAIL@nixonvan.com
pair_nixon@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte GEORG STEIGER1
Appeal2015-000351
Application 13/059, 122
Technology Center 1700
Before TERRY J. OWENS, CHRISTOPHER L. OGDEN, and
AVEL YN M. ROSS, Administrative Patent Judges.
OGDEN, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's final
decision rejecting claims 1-5 and 8-10 in the above-identified application.
We have jurisdiction pursuant to 35 U.S.C. § 6(b ).
We AFFIRM.
1 According to the Appeal Brief, DSM IP Assets, B.V. is the real party in
interest. Appeal Br. 2.
Appeal 2015-000351
Application 13/059, 122
BACKGROUND
Appellant's invention relates to "a process for the manufacture of a
rice-based rice kernel-like food product." Spec. 1: 13-14. Sole independent
claim 1 is representative:
1. A process for the manufacture of an enriched
rice-based rice kernel-like food product comprising the
steps of:
(a) providing a dry non-hydrated rice matrix
comprised of broken, cracked or otherwise
degraded rice grains;
(b) pre-treating a dry non-hydrated rice matrix by dry
heat treatment in the absence of added water to
obtain a dry heat-treated rice matrix;
( c) comminuting the rice matrix either before or after
pre-treating by dry heat treatment to obtain a
comminuted rice matrix material;
( d) hydrating the comminuted rice matrix material
after pre-treating by dry heat treatment by adding
at least one emulsifier and water and/ or steam to
the comminuted rice matrix material to obtain a
paste containing about 15 to 40 wt.-% of water;
( e) adding at least one micronutrient to the paste;
(t) preconditioning the paste by exposing the paste to
shear force while heating the paste to a
temperature of about 7 0 to 100 °C for no more
than about 5 minutes until rice starch in the paste is
semigelatinized to thereby form a semigelatinized
mass;
(g) forming the semigelatinized mass into strands and
cutting the strands to obtain reconstituted grains
similar or equal to the size of rice grains; and
(h) drying the reconstituted grains to a moisture
content of no more than 15 wt.-% to thereby obtain
an enriched rice-based rice kernel-like food
product.
Appeal Br. 14 (emphasis added).
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Appeal 2015-000351
Application 13/059, 122
The Examiner rejects claims 1-5 and 8-10 under 35 U.S.C. § 103 as
being obvious over Int'l Patent Pub. No. WO 2005/053433 Al [hereinafter
Breummer] (published June 16, 2005) in view of either U.S. Patent No.
2,969,288 [hereinafter Flynn] (issued Jan. 24, 1961) or Food and
Agriculture Organization of the United Nations, Rice Post-Harvest System:
An Efficient Approach [hereinafter PAO] (2004), http://www.rice2004.org.
Final Action 2-5.
In the Appeal Brief, Appellant argues the claims as a group. See
Appeal Br. 6-13. Therefore, consistent with the provisions of 3 7 C.F .R.
§ 41.37(c)(l)(iv) (2013), we limit our discussion to claim 1, and all other
claims stand or fall together with claim 1.
DISCUSSION
The Examiner finds that Breummer teaches the limitations of claim 1,
except that it "does not specifically disclose pre-treating a rice matrix by dry
heat treatment before hydration." Final Action 3. However, the Examiner
finds that Flynn teaches "the importance of dry heating the rice matrix as a
pre-treatment step, as it allows better control of the rice moisture." Id.
(citing Flynn 3 :55---65). Alternatively, the Examiner finds that "F AO
discloses that one of the critical steps for post-harvest of rice involves pre-
drying." Id. In light of these findings, the Examiner determines that it
would have been obvious "to dry heat the rice of Breummer as a pre-
treatment step in order to control the moisture content and allow better
manufacture of reconstituted rice kernels," and "to pre-dry the rice of
Breummer in order to improve the quality as disclosed by PAO." Id.
Appellant argues that Flynn relates to "milled rice," and not a "rice
matrix" as required by claim 1, and that there are significant differences
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Appeal 2015-000351
Application 13/059, 122
between the two starting materials. See Appeal Br. 9--10. Likewise,
Appellant argues that F AO only relates to heating post-harvested rice, not a
rice matrix. See id. at 10-11. In the Answer, the Examiner responds that
"one of ordinary skill in the art would expect the rice matrix of Breummer to
have similar properties as Flynn and F AO when exposed to dry heating, such
as allowing better control of the rice moisture." Answer 8.
We do not find Appellant's argument persuasive of error. Appellant
has not directed our attention to factual evidence to rebut the Examiner's
finding that a rice matrix and milled rice would have similar properties upon
exposure to dry heating, which was known to be useful for the control of rice
moisture. Moreover, we note that step (a) of claim 1 defines the rice matrix
open-endedly, using the phrase comprised of, which admits the presence of
other components in the matrix, such as whole rice grains. We give claims
their broadest reasonable interpretation consistent with the Specification, see
In re Translogic Tech. Inc., 504 F.3d 1249, 1256 (Fed. Cir. 2007). The
broadest reasonable interpretation of step (a) does not exclude the presence
of milled rice grains, or a mixture of broken and milled rice. Moreover, the
Specification discusses intact rice kernels as a less-preferred alternative to
broken, cracked, or otherwise degraded rice grains. Spec. 5:7-8 ("The rice
matrix material used in the process of the invention may be either intact rice
kernels or-more preferably-broken, cracked or otherwise degraded rice
grains.") Thus, in view of this broadest reasonable interpretation of the term
rice matrix, and the inclusion of intact rice as an alternative in the
Specification, we find no reversible error in the Examiner's determination
that prior art teachings relating to whole rice are applicable to a rice matrix
containing broken, cracked, or otherwise degraded rice grains.
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Appeal 2015-000351
Application 13/059, 122
Appellant also argues that Flynn only relates to rice that has
undergone added moisture, which is not "dry non-hydrated" rice. See
Appeal Br. 10 (citing Flynn 37-15, 20-27). However, we find no reversible
error in the Examiner's finding, see Answer 7, that Flynn also teaches the
use of rice that does not have added moisture. See Flynn 3:6-20 (teaching
the use of either soaked or dried rice, as necessary, to control the terminal
moisture content).
Appellant also argues that evidence set forth in a declaration by
inventor Georg Steiger establishes that the use of a heat treatment step
before comminution produces unexpected results. Appeal Br. 10 (citing
Declaration of Georg Steiger, Jan. 25, 2012). According to Steiger, a dry
preheating step (b) substantially reduced the stickiness of the mass during
the later preconditioning step (f), thus allowing the preconditioner to operate
for an extended period of time. Steiger Deel. 1-2. Without preheating,
according to tests described by Steiger in which rice was mixed with about
20% water and then heated to above 90 °C, the preconditioner had to be
stopped after 5 hours due to the high energy uptake by the engine caused by
buildup of sticky material in the machine. See id. at 3. In a subsequent run
that used a preheating step with dry steam, the preconditioner was capable of
continuous flow, without sticky buildup, using a paste with about 20% water
and heating with 150 °C steam. See id. at 4.
Claim 1 specifies that the paste used by the preconditioning step
contains about 15--40 wt.% water, and it is raised to a temperature of 70-
100 °C. See Appeal Br. 14, steps (d) and (f). The experiments cited by
Steiger are not commensurate with the scope of the claimed invention,
because they do not include evidence relating to pastes with lower or higher
water content, or with different temperatures within the scope of the claim.
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Application 13/059, 122
In addition, while Steiger notes that for the comparative example, the
preconditioner heated the paste with 150 °C steam for 120 seconds, see
Steiger Deel. 4, Appellant has not directed our attention to information in the
Steiger Declaration, or otherwise, to indicate the temperature of the paste
during that heating process, and whether that temperature was the same as
the steam, or lower. If the paste temperature in the comparative example
was raised higher than about 100 °C, this would be a higher temperature
than the temperature of about 70-100 °C used by Breummer. See
Breummer 4: 14--15. "[W]hen unexpected results are used as evidence of
nonobviousness, the results must be shown to be unexpected compared with
the closest prior art." See In re Baxter Travenol Labs., 952 F.2d 388, 392
(Fed. Cir. 1991).
In addition, while Steiger asserts that adding a preheating step "was
not obvious," Steiger Deel. 5, and that the result was surprising, see id. at 2,
these statements are conclusory, and Appellant does not direct our attention
to any factual evidence to support this contention that the result would have
been surprising to a person of ordinary skill in the art at the time of filing.
See In re Freeman, 474 F.2d 1318, 1324 (CCPA 1973) (to show unexpected
results, applicant must establish: "(1) that there actually is a difference
between the results obtained through the claimed invention and those of the
prior art, ... and (2) that the difference actually obtained would not have
been expected by one skilled in the art at the time of invention" (citation
omitted)).
For the above reasons, we find no reversible error in the Examiner's
determination that a person of ordinary skill in the art would have had reason
at the time of filing to include a pre-treating step in order to control moisture
content of the final product, as taught by Flynn, or to improve rice quality, as
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Appeal 2015-000351
Application 13/059, 122
taught by PAO. Moreover, we determine that Appellant has failed to
provide evidence sufficient to rebut the Examiner's prima facie case of
obviousness. See In re Heyna, 360 F.2d 222, 228 (CCPA 1966). Therefore,
based on a preponderance of the evidence presented to us on this appeal
record, we find no reversible error in the Examiner's decision to reject
independent claim 1. For the same reasons, we find no reversible error in
the Examiner's decision to reject dependent claims 2-5 and 8-10.
DECISION
The Examiner's decision 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)(l )(iv).
AFFIRMED
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