Ex Parte Copado

Patent Trial and Appeal Board

Jun 23, 2016

12399179 (P.T.A.B. Jun. 23, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/399, 179 0310612009
110933 7590 06/23/2016
Carstens & Cahoon, LLP
PO Box 802334
Dallas, TX 75380
FIRST NAMED INVENTOR
Luis Fernando Trejo Copado
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.
CFLAY.20499 1521
EXAMINER
ZILBERING, ASSAF
ART UNIT PAPER NUMBER
1792
MAILDATE DELIVERY MODE
06/23/2016 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 LUIS FERNANDO TREJO COP ADO
Appeal2014-007099
Application 12/399,179 1
Technology Center 1700
Before JEFFREY T. SMITH, MARK NAGUMO, and
N. WHITNEY WILSON, Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner's final rejection of claims 10-22. We have jurisdiction pursuantto
35 U.S.C. § 6(b). We affirm.
1 According to the Appeal Brief, the Real Party in Interest is Sabritas, S. De
R.L. De C.V. App. Br. 2.
Appeal2014-007099
Application 12/399, 179
BACKGROUND
Appellant's appealed invention is directed to a reduced fat potato
chip. Claim 1 is reproduced below from the Claims Appendix to the Appeal
Brief:
1. A reduced fat potato chip produced by the steps of:
a) slicing raw potato stock to produce potato pieces;
b) marinating said potato pieces in a brine solution
comprising at least 3 % by weight acacia gum; and
c) frying said potato pieces to a moisture content of less
than 2% by weight after the marination step b ), wherein said
potato pieces are fried to a fat content of less than 33% by
weight.
The Examiner maintains, and Appellant appeals the following
rejections:
Claims 10-15 and 17-22 under 35 U.S.C. § 103(a) as obvious over
Barber et al. (US 2003/0183092 Al published Oct. 2, 2003) in view of
Annapure et al., "Screening of hydrocolloids for reduction in oil uptake of a
model deep fat fried product", Gold (US 3,424,591 issued Jan. 28, 1969) and
Neel et al. (US 4,933,199 issued Jun. 12, 1990).
Claim 16 is rejected under 35 U.S.C. § 103(a) as obvious over Barber,
Annapure, Gold, Neel, and Smith et al., "Gum Arabic".
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Application 12/399, 179
OPINION2
The Examiner's statement of the rejection focuses on the process
limitations of the claims. The Examiner found Barber describes the
application of brine solution to potato chip slices however fails to disclose
the moisture content of the fried potato pieces or that the brine solution
contains hydrocolloid acacia gum. (Ans. 2-3). The Examiner cited Gold for
describing the treatment of potato pieces with a hydrocolloid brine solution.
The Examiner cited Annapure for providing a suggestion to substitute
hydrocolloid acacia gum brine solution for the solution of Gold. (Ans. 4).
The Examiner additionally found Barber failed to describe the moisture
content or the fat content of the fried potato chips. (Ans. 6-7). To account
for these differences the Examiner cited Neal for describing a potato chip
product having a moisture content of less than about 2% and less than 25%
weight percent oil. (Ans. 6-7). The Examiner concluded that it would have
been obvious to modify Barber to produce low fat potato chips having a
moisture content less than 2% by weight and comprising a fat content of
about 24.5% by weight. (Ans. 6-7).
Appellant's arguments in rebuttal to the appealed rejections are
principally directed to the process limitations. (See App. Br. generally).
Appellant also provides specific arguments directed to Neel addressing a
potato chip product having a moisture content of less than 2% and having
2 Appellant has not presented arguments addressing separately rejected
claim 16. (App. Br. 11). Appellant has presented separate headings
addressing claims 19-22; however, Appellant's arguments rely solely on
those that were presented in addressing independent claim 10. (App. Br. 11-
12). We therefore limit our discussion to the independent claim 10.
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Appeal2014-007099
Application 12/399, 179
less than 25% oil. (App. Br. 9-10). Appellant argue just because two
products have the same moisture content does not indicate the products are
identical. Appellant specifically argues
Neel demonstrates, the two products can be very dissimilar. Neel
discloses that par-frying and using superheated steam to dehydrate the
pieces to below 2% moisture results in a reduced fat chip compared to
a chip which has been fried to below 2%. In fact, Neel discloses a
chip made from its method results in a chip with less than 25% oil
compared to chips which were fried to a low moisture content which
had greater than 30% oil. Col. 3, lines 25-29; col. 1, lines 18-20. As
such, Neel makes it clear that how you dehydrate the chip has a
profound effect on the final properties of the chip. Put differently,
there is a difference in par-frying a chip followed by application of
superheated steam and frying to a specified moisture content. It is
improper for Examiner to simply state that Neel discloses the
limitation of frying to a moisture content of below 2% as this is
untrue.
(App. Br. 9-10).
Appellant argues it is improper for the Examiner to ignore the product
=by=process limitations of the claimed invention. In support of this position,
Appellant argues Neel is proof that frying has an effect on the final
properties of the product. Appellant specifically argues
Examiner argues ignoring the limitations is allowed when the final
result is the same. Applicant submits as proof that Neel discloses that
frying has an effect on the final properties. As such, it is improper for
Examiner to ignore these limitations. Taken further it is noted that
Neel actually teaches away from simultaneously obtaining low oil and
low moisture content. Neel discloses that "[a]ttempting to de-oil
potato slices to produce low oil potato chips and simultaneously arrive
at a desired final moisture content has been found to be difficult to
achieve in the same unit since optimized de-oiling and optimized final
moisture content are not arrived at simultaneously." Col. 5, lines 51-
56. Applicant is obtaining low oil and low moisture content
simultaneously in the fryer. Respectfully, Examiner is ignoring the
clear teaching of Neel. Thus, while Examiner relies upon Neel, Neel
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Appeal2014-007099
Application 12/399, 179
fails to disclose "frying said potato piece to a moisture content of less
than 2%" as required in claim 1 [sic 1 OJ.
(App. Br. 10).
Independent claim 10 on appeal is drafted in a product-by-process format.
The patentability of this type of claims does not depend on the process steps,
except to the extent that the process steps are shown to result in properties
not possessed by prior art products. It has long been held that "'[i]f the
product in a product-by-process claim is the same as or obvious from a
product of the prior art, the claim is unpatentable even though the prior
product was made by a different process.'" Smithkline Beecham Corp. v.
Apotex Corp., 439 F.3d 1312, 1317 (Fed. Cir. 2006)(quoting In re Thorpe,
777 F.2d 695, 697 (Fed. Cir. 1985)). It is also well settled that when a
claimed product reasonably appears to be substantially the same as a product
disclosed in the prior art, the burden of proof is on the applicants to prove
that the prior art product does not inherently or necessarily possess the
characteristics attributed to the claimed product. Cf In re Spada, 911 F .2d
705, 708, (Fed. Cir. 1990)(holding that similarity in terms of reactants and
reaction conditions amounted to a prima facie case of unpatentability and
that the burden was properly shifted to applicants to show that the prior art
product does not have the claimed property); see also In re Best, 562 F.2d
1252, 1255, (CCPA 1977).
In this case Appellant argues the claimed invention requires the potato
pieces to have been fried to a fat content less than 33% and a moisture
content of less than 2%. (App. Br. 10). However, Appellant has not
identified or claimed elements that establishes the claimed potato chip
product is patently distinct from that of Neel. Appellant relies on Neel to
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Appeal2014-007099
Application 12/399, 179
suggest that the mode of dehydration has a profound effect on the final
properties of the chip. (App. Br. 10). However, Appellant has not identified
and established that these alleged differences achieved by frying versus
dehydration are incorporated in the claimed invention. Appellant has chosen
to limit the claimed properties to the moisture and oil content. It is not
disputed that the moisture and oil content properties are described and
suggested by Neel.
For these reasons, we sustain the appealed rejections.
SUMMARY
The Appealed rejections are affirmed. Because our affirmance of
claims 10-20 relies on new facts not previously raised to the Appellant, we
designate our affirmance as including a new ground of rejection.
37 C.F.R. § 41.50(b) provides "[a] new ground of rejection pursuant
to this paragraph shall not be considered final for judicial review." Section
41.50(b) also provides:
When the Board enters such a non-final decision, the appellant, within
two months from the date of the decision, must exercise one of the following
two options with respect to the new ground of rejection to avoid termination
of the appeal as to the rejected claims:
( 1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new Evidence relating to the claims so rejected, or
both, and have the matter reconsidered by the examiner, in which event the
prosecution will be remanded to the examiner. The new ground of rejection
is binding upon the examiner unless an amendment or new Evidence not
previously of Record is made which, in the opinion of the examiner,
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Application 12/399, 179
overcomes the new ground of rejection designated in the decision. Should
the examiner reject the claims, appellant may again appeal to the Board
pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be reheard under§
41.52 by the Board upon the same Record. The request for rehearing must
address any new ground of rejection and state with particularity the points
believed to have been misapprehended or overlooked in entering the new
ground of rejection and also state all other grounds upon which rehearing is
sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure§ 1214.01.
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).
AFFIRMED; 37 C.F.R. § 41.50(b)
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