12921223 - (D) (P.T.A.B. Sep. 28, 2020)

Toru Nakajima et al.

Patent Trials and Appeals BoardSep 28, 2020

12921223 - (D) (P.T.A.B. Sep. 28, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 12/921,223 09/07/2010 Toru Nakajima 100246 1287 23850 7590 09/28/2020 KRATZ, QUINTOS & HANSON, LLP 1420 K Street, N.W. 4th Floor WASHINGTON, DC 20005 EXAMINER COX, STEPHANIE A ART UNIT PAPER NUMBER 1791 MAIL DATE DELIVERY MODE 09/28/2020 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 TORU NAKAJIMA, MAKOTO NAKAUMA, and TAKAHIRO FUNAMI Appeal 2020-000270 Application 12/921,223 Technology Center 1700 Before BEVERLY A. FRANKLIN, JEFFREY R. SNAY, and LILAN REN, Administrative Patent Judges. FRANKLIN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–12 and 15–20. We have jurisdiction under 35 U.S.C. § 6(b). An oral hearing was held on September 17, 2020. We REVERSE. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as SAN-EI GEN F.F.I., INC. Appeal Br. 3. Appeal 2020-000270 Application 12/921,223 2 CLAIMED SUBJECT MATTER Claim 1 is illustrative of Appellant’s subject matter on appeal and is set forth below: 1. A method of modifying starch, comprising subjecting a powdery mixture consisting essentially of starch and water- soluble hemicellulose at a weight ratio of 95:5 to 80:20 to moist-heat treatment at 100 to 200°C. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Yoshino et al. (“Yoshino” US 5,362,329 Nov. 8, 1994 Stute et al. (“Stute”) US 5,489,340 Feb. 6, 1996 Narimatsu et al. (“Narimatsu”) US 6,224,931 B1 May 1, 2001 REJECTIONS Claims 1, 2, 4, 6, 7, 9, 11, 12, 15, and 16 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Yoshino in view of Narimatsu. Claims 3, 5, 8, 10, and 17–20 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Yoshino and Narimatsu as applied to claims 1, 2, 4, 6, 7, 9, and 11–16 above, and further in view of Stute. OPINION We review the appealed rejections for error based upon the issues Appellant identifies, and in light of the arguments and evidence produced thereon. 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) Appeal 2020-000270 Application 12/921,223 3 (“[I]t has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections.”). Upon review of the evidence and each of the respective positions set forth in the record, we find that the preponderance of evidence supports Appellant’s position in the record. Accordingly, we reverse each of the Examiner’s rejections on appeal essentially for the reasons set forth in the record by Appellant, and add the following for emphasis. Appellant states on page 6 of the Appeal Brief that the powdery mixture as recited in method claim 1 includes mixtures containing starch and water-soluble hemicellulose, and which do not contain other materials that would affect the basic and novel characteristics of the invention. Appellant explains that the basic and novel characteristics of the invention are suppression of swelling and disintegration of starch granules. Appeal Br. 7. Appellant states that as a result of the limitation of “a powdery mixture consisting essentially of starch and water-soluble hemicellulose”, the powdery mixture cannot include any substance that would interfere with the basic and novel characteristics of the invention (suppression of swelling and disintegration of starch granules). Reply Br. 2. Appellant refers to the 37 CFR § 1.132 Declaration submitted with the Response filed on July 23, 2018 (hereafter the “Nakauma Declaration”). Appeal Br. 12–13. Appellant states that the Nakauma Declaration shows that wheat flour is an ingredient that interferes with the basic and novel characteristics of the invention (suppression of swelling and disintegration of starch granules) because no inhibitory effect on swelling and/or disintegration of starch granules resulted when wheat flour is included as an ingredient. Appeal Br. 13. As such, it is Appeal 2020-000270 Application 12/921,223 4 Appellant’s position that because the combination of Yoshino and Narimatsu includes wheat flour, the claimed subject matter is not suggested by the combination. Appeal Br. 10. The Examiner states that the rejection is not relying upon bodily incorporating the entire composition of Narimatsu into Yoshino. Ans. 9. The Examiner states that Yoshino fails to teach heat treating water-soluble hemicellulose along with the starch, and that Narimatsu teaches adding water-soluble hemicellulose to starch in powder form. Id. The Examiner states that the rejection is relying upon incorporating the water- soluble hemicellulose into the composition of Yoshino. Ans. 9. However, we agree with Appellant that Narimatsu teaches adding water-soluble hemicellulose to a mixture of wheat flour and starch for the reasons presented on pages 3–5 of the Reply Brief. An adequate case has not been made in the record by the Examiner that such a teaching suggests adding water-soluble hemicellulose to a mixture of starch alone. With regard to the Nakauma Declaration, we agree with Appellant that the Examiner’s reasoning that the Nakauma Declaration is unpersuasive because Appellant has not compared the closest prior art (Ans. 8) is improper for the reasons stated on page 5 of the Reply Brief. In view of the above, we reverse the rejections. CONCLUSION We reverse the Examiner’s decision. Appeal 2020-000270 Application 12/921,223 5 DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 2, 4, 6, 7, 9, 11, 12, 15, 16 103 Yoshino, Narimatsu 1, 2, 4, 6, 7, 9, 11, 12, 15, 16 3, 5, 8, 10, 17–20 103 Yoshino, Narimatsu, Stute 3, 5, 8, 10, 17–20 Overall Outcome 1–12, 15–20 REVERSED