Ex Parte Desai et al

Patent Trial and Appeal Board

Mar 10, 2014

11777839 (P.T.A.B. Mar. 10, 2014)

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.
11/777,839 07/13/2007 Pravin Maganlal Desai CFLAY.00379 9342
110933 7590 03/10/2014
Carstens & Cahoon, LLP
PO Box 802334
Dallas, TX 75380
EXAMINER
GEORGE, PATRICIA ANN
ART UNIT PAPER NUMBER
1793
MAIL DATE DELIVERY MODE
03/10/2014 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 PRAVIN MAGANLAL DESAI,1
Annette Stiers Jones, Renu Mathew, Donald Vaughn Neel,
Gerald Vogel, and Sheila Wright
________________

Appeal 2012-008096
Application 11/777,839
Technology Center 1700
________________

Before JEFFREY T. SMITH, MARK NAGUMO, and
DONNA M. PRAISS, Administrative Patent Judges.

NAGUMO, Administrative Patent Judge.

DECISION ON APPEAL
Pravin Maganlal Desai, Annette Stiers Jones, Renu Mathew, Donald
Vaughn Neel, Gerald Vogel, and Sheila Wright (“Frito-Lay”) timely appeal
under 35 U.S.C. § 134(a) from the Final Rejection2 of claims 1-10

1 The real party in interest is listed as Frito-Lay North America, Inc. (“Frito-
Lay”). (Appeal Brief, filed 18 January 2012 (“Br.”), 2.)
2 Office action mailed 31 August 2011 (“Final Rejection”; cited as “FR”).
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Application 11/777,839

2
and 12-25, which are all of the pending claims. We have jurisdiction.
35 U.S.C. § 6. We affirm-in-part.
OPINION
A. Introduction3
The subject matter on appeal relates to methods of making reduced oil
potato chips in a fryer. The 839 Specification teaches that, in one
embodiment, the amount of oil taken up by the slice may be reduced by,
after introducing a slice of potato to hot oil, rapidly cooling the temperature
of the oil from about 320°F to a temperature between about 220°F and
about 260°F, then maintaining the temperature in this range for a longer
‘low-cook period,’ before increasing the temperature to “standard frying
temperatures” (Spec. 7, ll. 5-10), e.g., between 230°F and 400°F (id. at 5,
ll. 12-15). By such means, the Specification reports (Spec. 10, ll. 14-15), the
oil content can be reduced from about 30 % by weight (batch frying), or
from about 34 to about 38% by weight (continuous frying) (id. at 5, ll. 5-7),
to about 20-22% by weight (id. at 7, ll. 11-16).
The Specification discloses further that pretreatment of the potato by
submerging the whole (peeled) potato in hot water at about 130°F to
about 140°F until “complete temperature penetration” has been achieved
(a period said to range from about 5 minutes to about 2 hours) (Spec. 13,
ll. 11-15) can lead to improved removal of moisture from the potato slices

3 Application 11/777,839, Method for reducing the oil content of potato
chips, filed 13 July 2007. The specification is referred to as
the “839 Specification,” and is cited as “Spec.”
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Application 11/777,839

3
and decreased permeation of oil into the potato (id. at 11, l. 16, to 12, l. 3).
The inventors hypothesize that a permeable matrix is created by the
interaction between Ca2+ and pectin-methyl-esterase, and involves the
gelatinizing of starch and the altering of the pectin structure. (Id. at 11,
ll. 16-20.) The matrix is said to form readily between 130°F and 160°F, but
to be destroyed at higher temperatures. (Id. at ll. 20-21.)
The Specification also teaches that the oil content may be reduced
another 4-5% by blasting the fried chips with superheated steam. (Id. at 22,
ll. 1-8.) In this regard, the Specification teaches that prior art treatment with
saturated steam results in disadvantageous increased moisture content.
(Id. at 6, ll. 2-4, citing U.S. Patent 4,721,625 [to Lee, citation at n.8, infra].)
Claim 12, the narrower of the two independent claims, reads:
A method for making a reduced-oil potato chip in a fryer
comprising the steps of:
a) submerging a whole potato in a water bath of
about 130°F to about 140°F for a period of time necessary
to allow complete temperature penetration;
b) cutting said whole potato to form at least a potato slice;
c) introducing said potato slice into a body of cooking oil
within a fryer;
d) decreasing the temperature of the cooking oil within the
fryer from an initial temperature of about 320°F to a
reduced temperature of about 220°F within the
first 120 seconds;
e) maintaining said cooking oil, at least within the vicinity
of the potato slice, below about 260°F for a residence time
of at least 3 minutes;
f) increasing the temperature of the cooking oil, at least
within the vicinity of the potato slice, to between
about 230°F to about 400°F;
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Application 11/777,839

4
g) frying said potato slices at between about 230°F to
about 400°F;
h) removing said potato slice from fryer, wherein said
potato slice comprises an oil content of less than
about 30% by weight; and
i) blasting said potato slice with superheated steam;
thereby producing a reduced-oil potato chip.
(Claims App., Br. 33; indentation and emphasis added.)
Claims 13-20, 22, and 23 depend from claim 12.
Claim 1, the broader independent claim, reads:
A method for reducing oil uptake of a potato chip while in a
fryer, said method comprising the steps of:
a) introducing an unwashed potato slice into a body of
cooking oil, wherein the body of cooking oil has an initial
temperature of about 320°F;
b) decreasing the temperature of the oil from an initial
temperature of about 320°F to a reduced temperature
between about 220°F and about 260°F within no more than
about 3 minutes to about 5 minutes;
c) maintaining the temperature of the oil, at least in the
vicinity of the potato slice, below about 260°F for a
residence time of at least 3 minutes;
d) increasing the temperature of said potato slice to
between about 230°F to about 400°F; and
e) frying said potato slice, wherein said potato slice
comprises an oil content of less than about 30% by weight.
(Claims App., Br. 30; indentation and emphasis added.)
Claims 2-10, 21, 24, and 25 depend from claim 1.
Appeal 2012-008096
Application 11/777,839

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The Examiner maintains the following grounds of rejection:4, 5, 6
A. Claims 23 and 24 stand rejected under 35 U.S.C. § 112(1) for
lack of an adequate written description for the sequential
performance of steps.
B. Claim 8 stands rejected under 35 U.S.C. § 112(2) in the term
“to further alter oil content.”
C. Claims 12, 13, 17-20, 22, and 23 stand rejected under
35 U.S.C. § 103(a) in view of the combined teachings of
Schonauer7 and Lee.8
C1. Claim 14 stands rejected under 35 U.S.C. § 103(a) in view of
the combined teachings of Schonauer and Abu-Ghannam.9
C2. Claim 15 stands rejected under 35 U.S.C. § 103(a) in view of
the combined teachings of Schonauer and Hale.10
C3. Claim 16 stands rejected under 35 U.S.C. § 103(a) in view of
the combined teachings of Schonauer and Neel.11

4 Examiner’s Answer mailed 13 March 2012 (“Ans.”).
5 The rejection of claims 1 and 12 for lack of written description has been
withdrawn. (Ans. 4.)
6 The order of rejections has been changed to track more closely our
discussion of the dispositive issues.
7 Sylvia L. Schonauer et al., Process for producing batch type potato chips
on a continuous basis, U.S. Patent 4,929,461 (1990) (assigned to Frito-Lay;
Donald V. Neel, who appears to be one of the inventors involved in this
appeal, is listed as an inventor).
8 Yanien Lee et al., Process for preparing low oil potato chips, U.S.
Patent 4,721,625 (1988).
9 Nissreen Abu-Ghannam and Helen Crowley, The effect of low temperature
blanching on the texture of whole processed new potatoes, 74 J. FOOD ENG’G
335-44 (2006).
10 Douglas B. Hale, Potato preservation method, U.S. Patent 4,957,761
(1990).
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Application 11/777,839

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D. Claims 1-10, 21, 24, and 25 stand rejected under
35 U.S.C. § 103(a) in view of Schonauer.
B. Discussion
Findings of fact throughout this Opinion are supported by a
preponderance of the evidence of record.
Initially, we find that Frito-Lay presents nominally distinct arguments
for patentability of many of the claims “[i]n order to streamline review of
this brief for the Board.” (Br. 6, summarizing Groups I-XVIII.)
We consider the rejections in order of the increasing complexity of the
dispositive issues.
Rejections under § 112
The Examiner finds that the limitations recited in claim 24 and in
claim 23, which require that the steps recited in claim 1 and claim 12,
respectively, be performed sequentially, are not described in the original
disclosure. (FR 3; Ans. 6.)
Whether the written description requirement of 35 U.S.C. § 112(1)
has been met is a question of fact. Ariad Pharms., Inc. v. Eli Lilly and Co.,
598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). “[T]he test for sufficiency
is whether the disclosure of the application relied upon reasonably conveys
to those skilled in the art that the inventor had possession of the claimed
subject matter as of the filing date.” (Id.)

11 Donald V. Neel and Richard B. Reed, Process for preparing low oil
potato chips, U.S. Patent 4,933,199 (1990) (assigned to Frito-Lay; Mr. Neel
appears to be listed as an inventor of the appealed claims).
Appeal 2012-008096
Application 11/777,839

7
The Examiner holds that independent claims 1 and 12 do not require
that the steps be performed in the order recited. It is also clear, however,
that the most natural reading of the claims corresponds to the general
description, which follows the recited sequence. The Examiner has not
come forward with credible evidence, or provided a satisfactory explanation,
to the contrary.
We reverse the rejection for lack of written description.
The Examiner holds that claim 8 is indefinite because it is unclear in
what way—e.g., by what properties— the oil content is further “altered.”
(FR 3; Ans. 6.) The Examiner holds further that claim 25, which depends
from claim 8 and which further limits the oil content to the quantity of oil,
does not remove the indefiniteness of claim 8. (FR 16; Ans. 23.)
Indefiniteness is a question of law.12 Breadth, however, is not to be
equated with indefiniteness.13 The Examiner has not explained how the
language of claim 8 cannot be construed, other than because it is broad. The
Examiner has not directed our attention to some contradiction within the
claim, or between some term in the claim and the disclosure (or the general
understanding of those skilled in the art), that would render the scope of the
claim indeterminable.
We therefore reverse the rejection for indefiniteness.

12 In re Warmerdam, 33 F.3d 1354, 1361 (Fed. Cir. 1994).
13 In re Miller, 441 F.2d 689, 693 [169 USPQ 597, 600] (CCPA 1971).
Appeal 2012-008096
Application 11/777,839

8
Rejection C: Claim 12
The Examiner finds, inter alia, that “Schonauer does not provide a
step of blasting said potato slice with superheated steam, as in [step] i) of
claim 12.” (FR 11, 1st para.; Ans. 14, last para.) The Examiner finds that
Lee describes blasting fried potato slices with superheated steam to remove
oil from the surface of the chips. (FR 11, 2d para.; Ans. 15, 1st para.)
As Frito-Lay argues, however, Lee discloses that the oil is removed
with jets of saturated steam, not with superheated steam. (Br. 14, 1st para.,
citing Lee, col. 2, ll. 40-43.) Indeed, the 839 Specification discusses Lee
briefly, stating that “this method [i.e., the use of saturated steam] results in
increased moisture content and could require costly subsequent drying.”
(Spec. 6, ll. 2-4.) Lee does describe the use of superheated steam, but only
to reduce the moisture content to the range from about 1.5% to 2%. (Lee,
col. 2, ll. 42-65.) The Examiner’s finding regarding Lee’s teachings of
superheated steam is not supported by the weight of the evidence. We
therefore reverse Rejection C.14
Rejections C1 and C2: Claims 14 and 15
Although Frito-Lay presents separate arguments for the patentability
of claims 14, 15, and 16, which depend from claim 12, these arguments are
nominal, as Frito-Lay refers us to arguments made for Group IV. (Br. 21,
“Group XII.”) Group IV, however, consists of claim 24 (id. at 6; see also

14 We need not consider Frito-Lay’s additional arguments regarding the
patentability of claim 12 and claims dependent on claim 12 over the
combined teachings of Schonauer and Lee.
Appeal 2012-008096
Application 11/777,839

9
id. at 12-13), which, as discussed supra, requires that the steps of claim 1 be
performed sequentially. The relevance of those arguments (which we
discuss infra, with respect to claim 24) to claims dependent from claim 12 is
not apparent.
Ordinarily, as an appellate tribunal, we take arguments for
patentability as presented, and do not scour the record seeking evidence or
further arguments that might support an appellant’s position. The present
case is rather unusual, however, so we exercise our discretion to consider the
record for these rejections somewhat more fully than argued by Frito-Lay.
In Rejections C1 and C2, the Examiner relies on Abu-Ghannam and
on Hale, respectively, as evidence of the obviousness of conditions for
step (a), submerging whole potatoes in water, recited in claims 14 and 15.
(FR 12-14; Ans. 16-18.) The Examiner combines these teachings with the
teachings of Schonauer to reject claims 14 and 15 as obvious. (Id.) The
Examiner had already found, however, that Schonauer does not teach the use
of superheated steam, required by step i) of claim 12. The Examiner does
not find that Abu-Ghannam or Hale teaches the use of superheated steam to
remove oil from fried chips. Accordingly, we reverse Rejections C1 and C2
for the same reasons we reverse Rejection C.
Rejection C3 of claim 16 stands differently, and we postpone
discussion of this rejection until we have discussed Rejection D of claim 1,
in order to provide context for a number of similar limitations found in
claim 12 (and therefore in dependent claim 16) and in claim 1.
Appeal 2012-008096
Application 11/777,839

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Rejection D: Claim 1
The most fundamental issue requiring resolution regarding claim 1 is
the extent to which steps a) through e) must occur in the sequence recited.
In this regard, claim 24, which depends from claim 1, requires that “said
steps occur sequentially.” (Claims App., Br. 35.)15 Because a dependent
claim must further limit the claim from which it depends, claim 24 stands as
evidence that the steps recited in claim 1 can occur in some other sequence
than the sequence recited. If claim 1 required the sequential performance of
the steps, then claim 24 would be nugatory.
Claim 1 uses the initial transitional phrase “comprising,” thus opening
the claim to non-recited steps. On close consideration, it becomes apparent
that claim 1 contains no express or necessary linkages between any given
step and the previous recited step or the next recited step. In other words, all
such “sequential” linkages are permissible, but none are required. Step b),
for example, requires “decreasing the temperature of the oil from an initial
temperature of about 320°F” (emphasis added). Step b) does not recite “said
oil” and “said initial temperature,” which would provide an express and
necessary link to previously recited step a). Thus, without express linkages,
nothing absolutely requires that step b) follow step a). Consequently, the
implicit initial time for the period recited in step b) remains open. Similar
considerations apply to step c)—one may infer that step c) may follow
step b), but one cannot conclude that step c) cannot be performed at any
other stage of the process, with other, non-recited steps setting the initial

15 Claim 23 similarly limits independent claim 12.
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Appeal 2012-008096
Application 11/777,839

12
A potato slice 1 is introduced to shallow flume area 3 of the fryer 40 on the
upper right, which is filled with oil at a temperature of about 300°F to
about 320°F through inlet 41. (Spec. 14, ll. 1-3.) Flume agitators 5 ensure
slice separation during the 15 to 20 second residence time. (Id. at ll. 4-7.)
The slices are discharged into the main portion of the fryer 40, into a region
containing oil introduced through inlet 25 at a temperature between
about 120°F. (Id. at 16, ll. 9-11.) The potato slices are said to achieve a
low-cook temperature between about 100°F and 260°F, more preferably
between about 120°F and about 160°F. These low-cooking temperatures are
said to “allow for the creation of a water-permeable matrix that inhibits, for
a time, the ability of oil to permeate the potato slices.” (Id. at ll. 18-20.)
Hotter oil is introduced at inlets 35, 45, 55, and 65, and the completely fried
slices are removed from the oil by conveyor 19 on the left of fryer 40 once
the slices have reached a moisture content below 2%, more preferably below
about 1.5% by weight. (Id. at 17 (especially ll. 19-20) through 18.)
In light of the description of the frying process, it is reasonable to
refer to any part of the process in which a slice is in the oil of the fryer as a
“frying” step. Frito-Lay has not come forward with evidence from
the 839 Specification or the art of record defining the term “frying” as being
limited in a more specific way.
The meaning of the term “frying” in step e) of claim 1 is also
illuminated by a comparison of claim 1 with claim 12. Step h) of claim 12
recites “removing said potato slice from fryer, wherein said potato slice
comprises an oil content of less than about 30% by weight.” (Claims App.,
Br. 33.) In step h), “said potato slice” can only be the slice that is removed
Appeal 2012-008096
Application 11/777,839

13
from the fryer. In contrast, step e) of claim 1 does not recite any conditions
under which the frying must occur, such as the point in the process at which
the frying must start, how long the frying must continue, or at what oil
content or temperature the frying must stop.
One further point needs to be emphasized before we consider the
rejection in view of Schonauer. Generally, the term “about” is one of
degree, and the extent of allowable variation may be determined in various
ways. It is not uncommon, for example, for a specification to provide an
express definition, which may be arbitrary. Alternatively, some condition
under which a process is conducted may provide an upper limit. However,
Frito-Lay has not directed our attention to any express definitions,
conditions, or limits for the initial temperature of “about 320°F” recited in
step a) of claim 1, or indeed, for any other recited “about” temperature or
time recited in the steps. These temperatures and times are not indefinite,
but they are broad.
Turning to the rejection of claim 1 in view of Schonauer, which is
assigned to Frito-Lay, the real party in interest in this appeal, it is apparent
that the Examiner (FR 4-6, 2d para.; Ans. 7-9) conflated the disclosure in
Schonauer Example I16 and Fig. 5, shown on the following page, which
describe a typical batch-type frying temperature profile, with the process
invented by Schonauer, which is a continuous frying process. However,
Frito-Lay has not demonstrated harmful error in the Examiner’s reliance
(FR 5, last para., to 6, 2d para.; Ans 8, last para., through 9) on Schonauer

16 Schonauer, col. 7, ll. 1-20 and Fig. 5.
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Appeal 2012-008096
Application 11/777,839

15
As the Examiner finds (FR 5, last para., through 6, 1st para.; Ans. 9,
1st & 2d paras.), Figure 5 and the associated description at column 7
describe a process of frying potato slices in which a potato slice is
introduced to oil at a temperature of 300°F. In light of the disclosure in
the 839 Specification that the temperature of the oil in flume 3 is “between
about 300°F and about 320°F” (Spec. 14, ll. 1-3), we find no merit in Frito-
Lay’s argument that 300°F is substantively different from “about 320°F.”
Figure 5 then shows that the temperature of the oil undergoes a rapid
decrease—in under one minute—from 300°F to less than 260°F. The
temperature at 2 minutes is about 215°F, and the lowest temperature reached
(at 5 minutes) is closer to 210°F. Again, however, Frito-Lay has not
explained, with supporting evidence of record, why these lower temperatures
are not “about 220°F.” Thus, the conditions of the temperature decrease
recited in step b) are met. Figure 5 shows that the temperature rises steadily
to 230°F at about 9 minutes, and remains below 260°F until 16-17 minutes
have passed. The requirement of step c) that the temperature be maintained
below about 260°F for at least 3 minutes is thus met. Frito-Lay does not
dispute the Examiner’s finding that step d) is met, so we regard that
argument as waived in this appeal.
Finally, as we have held, the steps of the process recited in claim 1
need not occur in the order recited. In particular, therefore, step e) is met by
introduction of the sliced potato slice to the hot oil at fry time = 0 and
T = 320°F. At that time, and for some time afterwards, the slice, which is
being fried, contains less than 30 weight% oil.
Appeal 2012-008096
Application 11/777,839

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We conclude that Schonauer discloses a process within the scope of
claim 1, and we affirm Rejection C of claim 1 in view of Schonauer.
Following Frito-Lay’s grouping of claims (Br. 6), claims 3-6, 9, and 10 fall
with claim 1.
Because claim 2 (“Group II”), which depends from claim 1, and
which requires that the frying process be a batch process (Claims App.,
Br. 30), is also met by the batch process described in Figure 5 of Schonauer,
we affirm the rejection of claim 2.
Claim 24 (“Group IV”) requires that “said steps [of claim 1] occur
sequentially.” (Claims App., Br. 35; emphasis added.) The Examiner’s
reasoning, that “the term ‘the’ denotes one of [sic: or] more of the things
being referred to” (Ans. 11, 4th para.) is based on a mis-reading in which the
adjective “said” has been replaced by article “the.” As Frito-Lay urges
(Br. 12-13), claim 24 requires that all the recited steps be performed in the
recited sequence. Moreover, although Examiner reasons that “a similar
process results in similar properties” (Ans. 8, 4th para.; cf. FR 6, 2d para.;
see In re Spada17 and In re Best18), the Examiner does not address
adequately the teaching in the Specification that “[t]he traditional batch-fried
kettle chip has an oil content of about 30% oil.” (Spec. 5, ll. 6-7.) The
burden, during examination, is initially on the examiner to demonstrate that
a claimed process is sufficiently similar to a prior art process. Only then is

17 In re Spada, 911 F.2d 705 (Fed. Cir. 1990).
18 In re Best, 562 F.2d 1252 (CCPA 1977).
Appeal 2012-008096
Application 11/777,839

17
the burden shifted to the applicant to show why the claimed process does not
read on the prior art.
In the process covered by claim 24, step e) occurs only after all of
steps a) through d) have been completed. Moreover, by the plain language,
claim 24 only covers processes in which the potato slice fried in the last
step e) has less than about 30% oil by weight. The Examiner has not come
forward with sufficient evidence to shift the burdens of coming forward with
evidence and of showing that, more likely than not, the oil content of a prior
art kettle-fried chip would have been likely less than 30% by weight. To be
clear, we do not find that the weight content is about 30% by weight or
more—only that the Examiner has not shown, by the preponderance of the
evidence of record, that the oil content is less than about 30% by weight.
We therefore reverse the rejection of claim 24.
Frito-Lay urges (Br. 19) that the Examiner erred in rejecting claim 21
(“Group IX”) for failing to demonstrate obviousness of a process in which
step e) of claim 1 “comprises frying to a moisture content of below
about 2%” (Claims App., Br. 34) as well as frying a potato slice having an
oil content of less than about 30% by weight.
A moisture content of less than 2% by weight is characteristic of the
end-point of potato-chip frying processes. (Spec. 2, ll. 14-15; 3, ll. 7-8;
Schonauer, col. 1, ll. 35-40.) For processes covered by claim 21, the weight
of the evidence is even more clearly in favor of an oil content of about 30%
by weight or higher than in processes covered by claim 24.
We reverse the rejection of claim 21.
Appeal 2012-008096
Application 11/777,839

18
Claim 8 (“Group III”), which depends from claim 1, requires that the
“reduced temperature of step b) and said residence time of step c) are
adjusted automatically and in real-time to further alter oil content.” (Claims
App., Br. 31.) Frito-Lay argues that the Examiner has not shown that
Schonauer suggests automatic adjustment of the residence time for the
purpose of altering the oil content. (Br. 12.) However, the Examiner finds
that Schonauer teaches a process comprising “a wide variety of stages (i.e.,
steps) wherein the temperature of the potato slice is increasing . . .” (FR 6,
1st para.; Ans. 9, 2d para., both citing Schonauer col. 7, Example I (col. 7,
ll. 1-20.) In particular, Schonauer teaches that the frying time can be
adjusted according to the scale of the batch frying. (Schonauer, col. 7,
ll. 15-20.) Automatic adjustment of parameters known to affect a process—
here, the recited reduced temperature between about 220°F and about 260°F
in step b), and the residence time of about at least 3 minutes below about
260°F in step c)—is generally obvious. Moreover, consistent with the
discussion of our reversal of the rejection of claim 8 as indefinite, the
evidence of unexpected results is not commensurate in scope with the
claimed process.
We therefore affirm the rejection for obviousness of claim 8 in view
of Schonauer.
Frito-Lay does not present substantively distinct arguments for the
separate patentability of claim 25 (“Group V”), which depends from claim 8,
but rather, “reincorporate[s] herein [arguments for] Groups I and III.”
(Br. 13.) Accordingly, we affirm the rejection of claim 25.
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19
Finally, Frito-Lay urges that the Examiner erred in rejecting claim 7,
which requires that “said potato chip comprises an oil content of less
than 20% by weight” (Claims App., Br. 31; emphasis added). The only
“chip” recited in claim 1 is the product chip named in the preamble.
Because the Examiner has not indicated a basis for concluding that the
product chip disclosed or obvious in view of Schonauer would have been
expected to have an oil content of less than 20% by weight, we reverse the
rejection of claim 7.
Rejection C3: claim 16
As we noted at the conclusion of our discussion of the claims of
Group XII, supra, claim 16 stands differently from claims 14 and 15.
Claim 16 depends from independent claim 12 and recites further limitations
regarding the superheated steam used to treat “said potato slice” recited in
step i) of claim 12.
Frito-Lay does not dispute the Examiner’s finding (FR 8; Ans. 12)
that Schonauer describes a step of submerging a whole potato that meets the
limitations recited in step a) of claim 12. (Br. 13-17, discussing Group VI
(claims 12, 17, 18, and 20).) The Examiner finds that Neel describes using
superheated steam at 300°F to about 340°F for “preparing potatoes.”
(FR 14-15; Ans. 18-19.) The Examiner holds that it would have been
obvious to combine the teachings of Neel with those of Schonauer to obtain
a process within the scope of claim 16. (Id.)
Although the Examiner’s treatment of Neel is terse, the presence of a
common inventor—Donald V. Neel—and the common assignee—Frito-
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20
Lay—and the closely related subject matter—the title of the Neel patent is
Process for preparing low oil potato chips—all indicate that Frito-Lay
cannot be said to have been prejudiced by the Examiner’s terse reliance on
Neel. Indeed, Frito-Lay may be presumed to be fully aware of the teachings
of Neel and of Schonauer, which is also assigned to Frito-Lay.
Neel describes de-oiling and dehydrating partially fried (“par-fried”)
potato slices having a moisture content of about four to about ten weight
percent, and having oil contents ranging from about 28 to about 40 weight
percent. (Neel, col. 4, ll. 23-39.) In Neel’s words, “[t]he de-oiling unit is
operated to provide optimal de-oiling of the par-fried potato slices without
attempting to also optimize the moisture content of the potato slices exiting
the de-oiling unit.” (Id. at 4, ll. 47-51.) Removing any excess moisture is
accomplished in a separate step in a dehydrating unit by any of several
diverse methods, “such as radiant heat, microwave energy, dielectric drying,
forced hot air, and superheated steam.” (Id. at col. 6, ll. 1-5.)
Regarding claim 12, Frito-Lay argues that the Examiner failed to
establish a reason or a reasonable expectation of successfully combining
Lee’s teaching of steam- treating par-fried potato slices (which have a
moisture content of about 10 weight % to about 25 weight%), with the
process taught by Schonauer, which is directed to fully fried slices, which
have a much lower moisture content of less than about 2 weight%. (Br. 14.)
These arguments, transferred to the combined teachings of Schonauer and
Neel, are not persuasive in light of Neel’s teachings that de-oiling and de-
moisturizing are separable operations. In other words, the direct teaching by
Neel that superheated steam is useful for removing excess oil from par-fried
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21
potato slices, and that superheated steam can also be used to further dry the
de-oiled slices, would have suggested that superheated steam could be used
to de-oil fully fried slices.
Frito-Lay has not shown good cause why the rejection of claim 16 in
view of Schonauer and Neel was not disputed substantively. Under the
regulations governing appeals to the Board, such argumentation in this
proceeding has been waived. See 37 C.F.R. § 41.37(c)(1)(vii) (2011) (in
force when the brief was filed).
We affirm the rejection of claim 16.19
C. Order
We reverse the rejection of claims 23 and 24 under 35 U.S.C. § 112(1)
for lack of written description.
We reverse the rejection of claim 8 under 35 U.S.C. § 112(2).
We affirm the rejection of claims 1-6, 8-10, and 25 under
35 U.S.C. § 103(a) in view of Schonauer.
We reverse the rejection of claims 7, 21, and 24, under
35 U.S.C. § 103(a) in view of Schonauer.

19 Frito-Lay argues (e.g., Br. 21, 2d para.) that “[i]f an independent claim is
nonobvious under 35 U.S.C. 103, then any claim depending therefrom is
nonobvious.” (Br. 21, 2d para., citing In re Fine, 837 F.2d 1071 [1076]
(Fed. Cir. 1988). The converse is also true. See, e.g., Application of
Muchmore, 433 F.2d 824, 824-25 [167 USPQ 681, 684] (CCPA 1970)
(“Since we agree with the board’s conclusion of obviousness as to these
narrow claims, the broader claims must likewise be obvious.”)
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22
We reverse the rejection of claims 12, 13, 17-20, 22, and 23 under
35 U.S.C. § 103(a) in view of the combined teachings of Schonauer and Lee.
We reverse the rejection of claim 14 under 35 U.S.C. § 103(a) in view
of the combined teachings of Schonauer and Abu-Ghannam.
We reverse the rejection of claim 15 under 35 U.S.C. § 103(a) in view
of the combined teachings of Schonauer and Hale.
We affirm the rejection of claim 16 under 35 U.S.C. § 103(a) in view
of the combined teachings of Schonauer and Neel.
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

cdc