Ex Parte Awad

Board of Patent Appeals and Interferences

Jun 27, 2012

10679714 (B.P.A.I. Jun. 27, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/679,714 10/06/2003 Aziz Chafic Awad Healthtreat 4.1-1 2884
7590 06/28/2012
Butzel Long
Suite 1100
110 West Michigan Ave.
Lansing, MI 48933
EXAMINER
THAKUR, VIREN A
ART UNIT PAPER NUMBER
1782
MAIL DATE DELIVERY MODE
06/28/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte AZIZ CHAFIC AWAD
________________

Appeal 2010-008860
Application 10/679,714
Technology Center 1700
________________

Before CATHERINE Q. TIMM, ROMULO H. DELMENDO, and
GEORGE C. BEST, Administrative Patent Judges.

BEST, Administrative Patent Judge.

DECISION ON APPEAL
The Examiner finally rejected claims 1, 2, 4, 6-14, and 16-34 of
Application 10/679,714 as obvious under 35 U.S.C. § 103(a). Appellant
seeks reversal of these rejections pursuant to 35 U.S.C. § 134(a). We have
jurisdiction under 35 U.S.C. § 6(b).
For the reasons set forth below, we AFFIRM-IN-PART.
Appeal 2010-008860
Application 10/679,714

2
Background
The ’714 application is directed to the preparation of fried foods with
a reduced acrylamide content. Spec. ¶ 2.
Acrylamide is classified by the U.S. Environmental Protection
Agency as a medium hazard suspected human carcinogen. Id. at ¶ 5.
Acrylamide can be formed by a high temperature reaction between a
reducing sugar, such as glucose or fructose, and asparagine, which is an
amino acid. Id. at ¶ 6. Because potatoes contain a significant amount of free
asparagine, id., baked or fried potato food products can contain significant
amounts of acrylamide, id. at ¶ 7.
The ’714 application describes a method for reducing the amount of
acrylamide formed in the processing of potatoes or other starch-based food
products into baked or fried products. The method comprises fermenting the
food product in an agitated aqueous medium with a microorganism that
consumes the free reducing sugar present in the food product. Id. at ¶ 9.
Claim 1 is representative and is reproduced below:
1. A process for reducing acrylamide production from a
reaction of free asparagine and sugars in a cooked, starch based
processed food, the process comprising:
(a) adding a raw, uncooked processed food
comprising asparagine and sugars to a fermenter with an
outlet strainer for straining fermented food, the fermenter
containing an aqueous medium having a pH between
about 4 and 8, wherein the aqueous medium contains the
uncooked processed food and the aqueous medium
comprises:
(i) a microorganism used for food
fermentations for metabolizing sugars in the
uncooked processed food,
Appeal 2010-008860
Application 10/679,714

3
(ii) yeast extract for fermentation by the
microorganism, and
(iii) a neutralizing agent comprising a food-grade
acid or an alkali metal hydroxide;
(b) agitating the aqueous medium while fermenting
the uncooked processed food in the aqueous medium so
as to ferment the sugars in the uncooked processed food
sufficiently to reduce the acrylamide production upon
cooking of the uncooked processed food;
(c) removing the aqueous medium from the uncooked
processed food in the fermenter through the outlet
strainer;
(d) washing the uncooked processed food from
step (c); and
(e) baking or frying the uncooked processed food,
thereby forming a fermented and cooked food that
contains less acrylamide than without the fermentation;
wherein no sugars are added to the processed food through
steps (a) to (e).
App. Br. 37.
Rejections
The Examiner’s Final Office Action rejected claims 1, 2, 4, 6-14, and
16-34 of the ’714 application as obvious under 35 U.S.C. § 103(a). Final
Office Action (August 13, 2009). The claims were rejected over 7 different
combinations of references. In all, the Examiner cited 25 different references
in these rejections.
After Appellant filed his initial Appeal Brief, the Examiner entered
new grounds of rejection. Ans. 2-4. Rather than reopening prosecution,
Appellant opted to maintain the present appeal. Reply 1. Currently, claims 1,
Appeal 2010-008860
Application 10/679,714

4
2, 4, 6-14, and 16-34 are the subject of 6 different rejections under 35 U.S.C.
§ 103(a) which cite a total of 25 different references. Id. at 14-15. For
Example, claims 1, 2, 8-10, 13, 14, and 17-19 are rejected as obvious under
35 U.S.C. § 103(a) over a combination of 15 references. Id. at 14.
Grouping of Claims
Appellant seeks reversal of each of the rejections. Reply 15. Rather
than addressing each of the rejections in turn, however, Appellant presents
his arguments grouped by claim limitation in several overlapping groups.
Reply 16. This organization unnecessarily complicates our review.
Appellant’s description of his preferred grouping of claims is set forth
below:
For the purposes of issue (1) on appeal (see Section VI above),
claims 1, 2, 4, 6-14, and 16-34 are grouped and argued as a
single unit with claim 1 with respect to limitations that are
common to each of the independent claims 1, 20, 28, and 29.
For issue (1), several sub-combinations of claims are
additionally argued separately with respect common limitations
in the following additional groupings:
(a) Claims 1 and 20 (grouped with claim 1)
(b) Claims 4, 16, 20, and 25 (grouped with claim 20)
(c) Claim 6;
(d) Claims 26-34 (claims 27 and 28 grouped with claim
28, claims 26, 29, and 32-34 grouped with claim 29,
claims 30 and 31 individually argued); and
(e) Claims 32-34 (each individually argued).
Id.
Appeal 2010-008860
Application 10/679,714

5
Discussion
Obviousness is a legal conclusion based upon underlying factual
determinations. In re Kumar, 418 F.3d 1361, 1365 (Fed. Cir. 2005). These
underlying factual determinations include: (1) the level of ordinary skill in
the art, (2) the scope and content of the prior art, (3) the differences between
the claimed invention and the prior art, and (4) any objective indicia of
nonobviousness that may be present. Graham v. John Deere Co., 383 U.S. 1,
17-18 (1966).
When it is necessary to select elements of various teachings in order
to form the claimed invention, we ascertain whether there is any suggestion
or motivation in the prior art to make the selection made by applicant.
Interconnect Planning Corp. v. Feil, 774 F.2d 1132, 1143 (Fed. Cir. 1985).
There are “three possible sources for a motivation to combine references: the
nature of the problem to be solved, the teachings of the prior art, and the
knowledge of persons of ordinary skill in the art.” In re Rouffet, 149 F.3d
1350, 1358-59 (Fed. Cir. 1998). The existence of a motivation to combine
references, however, is not a rigidly applied test. KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 416 (2007).
Aqueous Medium. Appellant first notes that each of the independent
claims (claims 1, 20, 28, and 29) require adding a raw, uncooked food to a
fermenter containing an aqueous medium such that the aqueous medium
then contains the uncooked processed food. Reply 26.
Appellant argues that the base reference relied upon by the Examiner
in all of the rejections, U.S. Patent No. 4,140,801 (“Hilton,” issued February
20, 1979), does not teach this limitation. Id. at 26-27.
Appeal 2010-008860
Application 10/679,714

6
However, as Appellant admits, Hilton does describe its fermentation
medium as “aqueous in nature.” Id. at 26 (citing Hilton col. 3: ll. 35-36).
Hilton further describes the moisture content of the fermentation mixture as
containing “up to about 85 or 90 weight percent moisture, and
advantageously contains at least about 50 weight percent moisture.” Hilton,
col. 3, ll. 15-18.
Appellant attempts to distinguish this teaching by arguing that Hilton
describes the fermentation of mashed potatoes, in which there is no
substantial amount of free water. Reply 26. This argument, however, rests on
an overly narrow reading of Hilton. While it is true that Hilton states that
mashed or riced potatoes are preferred, Hilton, col. 2, ll. 50-53, Hilton
describes other forms of potatoes that can be used in its process, id. at ll. 37-
53. In particular, Hilton describes the use of sliced or diced potatoes. Id. at ll.
37-41. The only limitation on the size of the pieces used in the process is
that they be sufficiently small that the yeast used in the fermentation can be
mixed with the pieces so that the fermentation proceeds at a satisfactory rate.
Id. at ll. 44-47.
We therefore agree with the Examiner’s finding that Hilton teaches
the use of an aqueous medium.
Yeast Extract. Appellant next notes that claims 1, 20, 28, and 29 each
require that the aqueous medium comprise yeast extract for fermentation by
the microorganism. Reply 27. Appellant argues that the Examiner
improperly concluded that the use of yeast extract in Hilton’s process would
have been obvious. Id. at 27-30.
The Examiner argues that the skilled artisan would have known that it
was well established in the art to use yeast extract to provide nutrients in a
Appeal 2010-008860
Application 10/679,714

7
microorganism growth medium. Ans. 9. To support this finding, the
Examiner cites four references1 and asserts that it has been well known to
the ordinarily skilled artisan that yeast and other microorganisms require
nutrients to ferment food. Ans. 9-10.
Appellant argues that the Examiner’s reliance on these additional
references is improper for at least two reasons: First, Appellant argues that
Hilton describes the use of potatoes with high sugar content as a starting
material. Reply 28; Awad Decl. ¶ 6. Because the sugar content of this
starting material is high, Appellant argues that a skilled artisan would
recognize that additional nutrients need not be added to the fermentation
medium for microorganism growth. Id. This argument is not persuasive.
While a skilled artisan would recognize that the microorganism could grow
in the presence of Hilton’s high sugar content potatoes (1-7% reducing
sugars, Hilton, col. 2, ll. 38-44), the skilled artisan also would have
recognized that the growth of the microorganism could be enhanced by the
use of a protein-containing supplement, such as a yeast extract. See, e.g.,
Lund at 1763 (describing peptones and protein hydrosylates as the prime
source of amino nitrogen in all complex culture media), 1765 (describing
content of yeast extract). Furthermore, the skilled artisan would have
recognized the importance of such supplementation as the amount of sugar
available in the starting material is decreased.

1 ATCC Catalogue of Bacteria & Bacteriophages, 18th Ed. (1992) at 415,
452; Yeast Growth Medium, http://www.bio.net/mm/yeast/1997-
December/007601.html, (Dec. 20 1997); B.M. Lund et al., “Microbiologial
Safety and Quality of Food, Volumes 1-2, at 1761-1780 (available at
http://www.knovel.com/knovel2/toc.jsp?BookID=946&VerticalID=0); U.S.
Patent No. 3,193,390 (“Champagnat,” issued July 6, 1965).
Appeal 2010-008860
Application 10/679,714

8
Second, Appellant argues that the applied references generally teach
the use of yeast extract in combination with other nutrients, particularly
sugars. Reply 28. The ’714 application’s claims, however, forbid the use of
additional sugar. Id. Therefore, Appellant argues, the Examiner’s selective
use of yeast extract without also using the additional sugar as described in
the prior art amounts to hindsight reconstruction of the claimed invention.
Id. This argument is not persuasive because one of the references describes
the use of a fermentation medium comprising yeast extract without the use
of any additional sugar. Champagnat, col. 3, ll. 23-38.
We agree with the Examiner’s conclusion that it would have been
obvious to supplement the high sugar starting material used in Hilton with
yeast extract as part of the process of optimizing fermentation. Ans. 30, 35-
36.
Claims 1 and 20. Appellant next challenges the rejections of claims 1
and 20 (i.e., rejections 1 and 5). In particular, Appellant argues that these
claims require the use of a fermenter with an outlet strainer and further
recited washing the uncooked processed food with water to remove
fermentation residues through the outlet strainer.
The Examiner relies upon the combination of Hilton with U.S. Patent
No. 1,676,166 (“Sokolsky,” issued July 3, 1928), U.S. Patent No. 4,242,361
(“Christ,” issued December, 30 1980), and U.S. Patent No. 3,891,771
(“Green,” issued June 24, 1975) as teaching these limitations.
Appellant argues that the combination of these references with Hilton
is the result of improper hindsight reconstruction. Reply 30. Appellant’s
arguments are based on the misinterpretation of Hilton discussed above—
that Hilton only describes the fermentation of mashed potatoes. Hilton,
Appeal 2010-008860
Application 10/679,714

9
however, describes the fermentation of diced and sliced potatoes in addition
to mashed potatoes. Hilton, col. 2, ll. 37-53.
For the foregoing reason, we do not see any error in the Examiner’s
combination of Hilton, Sokolsky, Christ, and Green.
Claims 4, 16, 20, and 25. Appellant next argues that claims 4, 16, 20,
and 25 are patentable because the objective evidence in the specification
demonstrates the non-obviousness of these claims. These claims require the
pH of the aqueous medium to be between 4 and 5 either in the initial or final
fermentation medium. Reply 31-33. Appellant claims that fermentation at a
lower pH results in an unexpected reduction in acrylamide levels in the
cooked food.The Examiner relies upon 7 references2 and Applicant’s
admitted prior art as describing these limitations. The cited art generally
discusses the conditions used for fermentations using lactic acid bacteria, but
a few of the references discuss yeast fermentations.
Appellant argues that the skilled artisan would not have been
motivated to lower the pH of the fermentation medium to the claimed levels
because the optimum pH for growth of the microorganisms described in the
specification is between 6 and 7. Reply 32; Awad Decl. ¶¶ 8, 11. Appellant

2 U.S. Patent No. 4, 298,620 (“Hagiwara,” issued Nov. 3, 1981); U.S. Patent
No. 3,818,109 (“Bechtle,” issued Juine 18, 1979); “Fermented Fruits and
Vegetables: A Global Perspective,” FAO Agricultural Services Bulletins—
134 http://www.fao.org/docrep/x0560e/x0560e10.htm (1998); U.S. Patent
No. 2,744,017 (“Baldwin,” issued May 1, 1956); “Lactic Acid Bacteria,”
http://web.archivbe.org;web/20010430203337/http://waksmanfoundation.or
g/labs/mbl/lactic.html (April 20, 2001); “Yeast Fermentation,”
http://web.archive.org/web/19990222083203/http://spot.colorado.edu/~kom
pala/lab2.html (Feb. 22, 1999); and “How to Restart a Stuck Fermentation,”
http://web.archive.org/web/20011023115240/www.yobrew.co.uk/stuck.htm
(Sept. 25, 2001).
Appeal 2010-008860
Application 10/679,714

10
further argues that low pH can retard microorganism growth, and that a
skilled artisan, therefore, would not use a pH of between 4 and 5 in the
fermentation.
These arguments, however, are not sufficient to overcome the
Examiner’s rejection because the unexpected results are not commensurate
with the scope of the claims. The claims are not limited to the use of yeast or
streptococcus thermophilus, which were the microorganisms tested in the
specification. Rather, the claims are limited to any “microorganism used for
food fermentations.” Lactic acid bacteria are commonly used in food
fermentations and experience optimal growth at low pH. A skilled artisan,
therefore, would have been motivated to use pH in the claimed ranges when
using lactic acid bacteria as the microorganism.
We do not see any error in the Examiner’s finding that these
limitations are taught or suggested in the prior art.
Claim 6. Appellant next argues that claim 6 was improperly rejected
as obvious. Reply 33. This claim depends from either claim 1 or claim 2 and
is reproduced below:
6. The process of Claim 1 or 2 wherein:
(i) the uncooked processed food comprises potatoes, and
(ii) step (e) comprises frying the uncooked processed food
without drying the uncooked processed food after step (b) and
before step (e).
App. Br. 37.
In rejecting this claim, the Examiner argues that it would have been
obvious to omit the drying step described in Hilton (col. 4, ll. 15-17; col. 5,
ll. 36-46) prior to frying the uncooked food product as a matter of process
Appeal 2010-008860
Application 10/679,714

11
optimization or in view of U.S. Patent No. 4,348,417 (“Greup,” issued Sept.
7, 1982). Ans. 21-22. Greup describes a fermented potato flour-based dough
that is subsequently fried without drying.
Appellant argues that the skilled artisan would have no reason to omit
the drying step described in Hilton. Reply 34. We agree. Hilton is directed to
the preparation of stable storable potato products that exhibit low degrees of
browning upon subsequent use. Omission of the drying step described in
Hilton would defeat this purpose and would render its disclosed process
unsuitable for its intended use.
We therefore reverse the rejection of claim 6 of the ’714 application.
Claims 26-34. Appellant urges reversal of the rejection of these
claims. Claims 26-34 contain limitations that restrict amount of glucose,
fructose, or both in the potatoes used as starting material.
The Examiner argues that these limitations would have been obvious
because Hilton teaches that reducing the amount of sugar in the potato
reduces the degree of undesirable browning when the potato material is
cooked. Ans. 27. Hilton, however, describes the use of fermentation as a
method to lower the sugar content of high sugar potatoes. Hilton, col. 2, ll.
16-27.
We agree with Appellant and therefore reverse the rejection of claims
26-34. A skilled artisan would have no reason to modify Hilton’s choice of
starting material to conventional low sugar potatoes because Hilton’s
fermentation process lowers the amount of sugar and therefore the degree of
unacceptable browning. Conversely, the skilled artisan would have no
reason to use Hilton’s fermentation process to reduce the sugar content of
low sugar potatoes.
Appeal 2010-008860
Application 10/679,714

12
Claims 32-34. Finally, Appellant seeks reversal of the rejection of
claims 32-34. These claims recite particular acrylamide reduction values for
the fermented cooked food produced by the claimed method relative to
cooked food that has not been fermented.
The Examiner rejected these claims, citing Baldwin, Mottram,3 and
Elder.4 Ans. 27-28. Baldwin describes the reduction of Maillard-associated
browning through the reduction of the amount of sugar present in the cooked
food. Baldwin, col. 1, ll. 32-45. Mottram identifies the Maillard reaction as a
source of acrylamide in cooked food. Elder recognizes that starch-based
foods comprise components that result in browning. Elder, ¶¶ 4, 7-9. Elder
describes a method for reducing acrylamide formation that involves
inactivation of the amino acid asparagine through its conversion into aspartic
acid. Id. at ¶¶ 18-20. The Examiner argues that achieving a specific degree
of acrylamide reduction is a matter of routine optimization by a person of
ordinary skill in the art. Ans. 28.
Appellant argues that the specific amounts of acrylamide reduction
recited in claims 32-34 are unexpected relative to the amounts of acrylamide
reduction commonly observed. Reply 37.
We cannot reverse the rejection of claims 32-34 on the basis of these
arguments. We agree with the Examiner—achieving a particular degree of
acrylamide reduction is a matter of routine optimization, including
optimization of the particular strain of microorganism used in the
fermentation process. Therefore the Examiner did not err in concluding that

3 D.S. Mottram, “Acrylamide is formed in the Maillard reaction,” Nature,
419:448 (2002).
4 U.S. Published Patent Application 2004/0058054 A1 (March 25, 2004).
Appeal 2010-008860
Application 10/679,714

13
the limitations in claims 32-34 would have been obvious in view of the cited
prior art.
Conclusion
We have reviewed the record in this case, including the Awad
Declaration, and have assessed the patentability of the claims as a whole.
After consideration of Appellant’s arguments, we sustain the Examiner’s
rejections of claims 1, 2, 4, 7-14, and 16-25. However, we are unable to
sustain the Examiner’s rejections of claims 6 and 26-34.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED IN PART

sld