Ex Parte Elder et al

Board of Patent Appeals and Interferences

Nov 30, 2010

10931021 (B.P.A.I. Nov. 30, 2010)

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.
10/931,021 08/31/2004 Vincent Allen Elder CFLAY.00236 8215
22858 7590 12/01/2010
CARSTENS & CAHOON, LLP
13760 NOEL ROAD, SUITE 900
DALLAS, TX 75240
EXAMINER
THAKUR, VIREN A
ART UNIT PAPER NUMBER
1782
MAIL DATE DELIVERY MODE
12/01/2010 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 VINCENT ALLEN ELDER, JOHN GREGORY FULCHER,
HENRY KIN-HANG LEUNG, and MICHAEL GRANT TOPOR,

Appellants.
_________________

Appeal 2010-001232
Application 10/931,021
Technology Center 1700
_________________

Before SALLY GARDNER LANE, RICHARD E. SCHAFER, and
MICHAEL P. TIERNEY, Administrative Patent Judges.

LANE, Administrative Patent Judge.
DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode shown on the PTOL-90A cover letter attached to this decision).
Appeal 2010-001232
Application 10/931,021

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I. STATEMENT OF THE CASE
The appeal, under 35 U.S.C. § 134, is from a Final Rejection of claims
1-14. (App. Br. 2). We have jurisdiction under 35 U.S.C. § 6(b). We
affirm.
Appellants’ specification is directed to reducing acrylamide formation
in thermally processed food. (Spec. 2).
The Examiner relied on the following patent publications:
Simon US 2,893,878 July 7, 1959
Melnick US 2,910,367 October 27, 1959
Johnston US 2,987,401 June 6, 1961
Akerboom US 3,038,810 June 12, 1962
Sutton US 3,305,366 February 21, 1967
Schwank US 5,087,467 February 11, 1992
Beck US 5,389,389 February 14, 1995
Martinez-Serna
Villagran US 6,599,547 July 29, 2003

Gonzalez ES 2019044 May 16, 1991

The Examiner rejected claims 1, 2, 4, 6-12, and 14 under 35 U.S.C.
§ 103(a) over Beck, Simon, Gonzalez, Schwank, Sutton, Akerboom,
Melnick, Johnston, and Martinez-Serna Villagran.2

2 The Examiner indicated that either Beck or Simon could be
considered first (Ans. 6), and also made a separate rejection listing Martinez-
Serna Villagran first (Ans. 17). We consider these rejections to be the same.
See In re Cowles, 156 F.2d 551, 554 (CCPA 1946) (holding, in regard to
Appellant’s argument that the Board erred by considering the rejection as
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Application 10/931,021

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The Examiner provisionally rejected claims 1, 2, 4, 6-12, and 14
under 35 U.S.C. § 103(a) over copending application 10/929,922 in view of
Simon, Akerboom, Melnick, and Matrinez-Serna Villagran.3 Application
10/929,922 has not been issued as a patent.4 Thus, we do not reach a
decision on the merits of this provisional rejection.
Appellants argue for the separate patentability of claims 1, 2, 4, and
6-8, as a group, and of claims 9, 12, and 14, as a group. Claim 1 recites a
method of making a dried food product by adding acrylamide-reducing
agents, while claim 9 recites a method of preparing potato flakes by adding
the same acrylamide-reducing agents. (See FF5s 1 and 2, below).
Appellants’ arguments regarding these two groups are overlapping and
would apply to each group. Thus, while we recite both claims 1 and 9
below, we focus on the limitations of claim 9 in our review. See 37 C.F.R.
§ 41.37(c)(1)(vii).

“Seyfried in view of Foret,” instead of “Foret in view of Seyfried,” as the
Examiner did, that the “the appealed claims define nothing inventive over
the cited art and it is a matter of little consequence, we think to consider the
Foret patent less pertinent than the Seyfried.”).
3 The Examiner withdrew rejections of claims 3, 5, and 13 under the doctrine
of obviousness-type double-patenting over co-pending application
10/929,922 in view of Simon, Akerboom, Melnick, and Martinez-Serna
Villagran. (Ans. 3-4).
4 Appellants have filed an Appeal Brief for Application 10/929,922.
5 “FF” indicates Finding of Fact.
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II. FINDINGS OF FACT
1. Appellants’ claim 1 recites:
A method of making a dried food product, said method
comprising the steps of:
a) disrupting the cellular structure of a starch-based food
having a solids content containing asparagine;
b) adding at least two different acrylamide-reducing agents
to said starchbased food to form a mixture, wherein said
acrylamide reducing agents are selected from:
1 ) a food grade acid added in an amount
comprising between about 0.2% and about 0.40% by
weight of said solids content;
2) a divalent or trivalent cation, where said cation
is added in amount comprising between about 0.45% and
about 0.90% by weight of said solids content; and
3) a free amino acid, wherein said free amino acid
is selected from lysine, glycine, histidine, alanine,
methionine, glutamic acid, aspartic acid, proline,
phenylalanine, valine, arginine, and mixtures thereof; and
c) drying said mixture to form said dried food product.

(App. Br. 28; Claims App’x).
2. Appellants’ claim 9 recites:
A method of preparing potato flakes, said method comprising
the steps of:
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a) cooking and mashing potatoes to form mashed potatoes
having a solids content;
b) adding at least two different acrylamide-reducing agents
to said mashed potatoes to form enhanced mashed
potatoes wherein said acrylamide reducing agents are
selected from:
1) a food grade acid added in an amount
comprising between about 0.2% and about 0.90% by
weight of said solids content;
2) a divalent or trivalent cation where said cation
is added in amount comprising between about 0.45% and
about 0.90% by weight of said solids content; and
3) a free amino acid. wherein said free amino
acid is selected from lysine, glycine, histidine, alanine,
methionine, glutamic acid, aspartic acid, proline,
phenylalanine. valine. arginine, and mixtures thereof; and
c) drying said enhanced mashed potatoes to form a dried
potato product.
(App. Br. 30; Claims App’x).
3. Appellants’ specification explains that acrylamide production in
food is believed to be the result of the “Maillard reaction” between a free
amino group, for example in free amino acids, and reducing sugars present
in the food. (Spec. pp. 3-4). Appellants provide this information in the
“Description of Related Art” portion of their specification and do not assert
that involvement of the Maillard reaction in acrylamide production was not
known in the art when they filed their application.
4. Beck teaches that the Maillard reaction between sugars and
amino compounds causes undesirable non-enzymatic browning in fruits and
vegetables, including potatoes. (Beck col. 2, ll. 38-48).
5. Simon teaches reduction of undesirable browning of potatoes
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and, like Beck, explains that browning is caused by changes in sugars and
amino acids. (Simon col. 1, ll. 18-37).
6. Simon teaches adding calcium chloride and sodium bisulfite
(Simon col. 4, l. 1-52, Table I) to diced potatoes and steam blanching the
cubes (id. col. 3, ll. 56-59).
7. Simon teaches that the calcium chloride is added so that the
bivalent Ca++ ion concentration is 0.50% of the weight of the solids (Simon
Table I), a concentration that falls within the claimed range of “between
about 0.45% and about 0.90% by weight of said solids content” (FFs 1
and 2).
8. Sodium bisulfite is not a “food-grade acid.”
9. Beck is directed to reducing browning of potato and other
vegetables using as little sulfite as possible. (Beck col. 4, l. 66, through col.
5, l. 13, and col. 9, ll. 5-14).
10. Beck teaches that food-grade acids such as citric and
phosphoric acid can be used instead of sulfiting agents to reduce browning
(Beck col. 9, ll. 31-49), but does not teach how much to use.
11. Martinez-Serna Villagran relates to preparing dehydrated food
products and teaches that non-enzymatic browning results from the Maillard
reaction. (Martinez-Serna Villagran col. 24, ll. 25-45).
12. Martinez-Serna Villagran teaches adding phosphoric acid to
potato mash to reduce non-enzymatic browning (Martinez-Serna Villagran
col. 11, ll. 23-26), but does not teach how much to add.
13. Martinez-Serna Villagran also teaches adding calcium chloride
to potato mash to alter cell wall strength. (Martinez-Serna Villagran col. 10,
ll. 64-67).
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14. The other prior art references cited by the Examiner (Gonzalez,
Akerboom, Melnick, Sutton, Schwank, and Johnston) teach using
phosphoric acid, an acid Beck identifies as a substitution for sulfating
agents, to treat potatoes.
III. ISSUE
Would those of skill in the art have considered it obvious to add a
food grade acid, such as phosphoric acid, and a divalent cation, such as
calcium chloride, to a starch-based food with a disrupted cellular structure to
reduce acrylamide in the food?
Would those of skill in the art have considered it obvious to use the
recited concentration of food grade acid to reduce acrylamide in a starched-
based food?
IV. ANALYSIS
Appellants’ claim 9 recites a method of making potato flakes by
cooking and mashing potatoes and adding at least two acrylamide-reducing
agents at recited concentrations. (FF 2; App. Br. 30, Claims App’x). One of
the acrylamide-reducing agents can be a food grade acid, such as phosphoric
acid, and another agent can be a divalent cation, such as calcium chloride.
Similarly, Appellants’ claim 9 recites a method of preparing potato flakes by
cooking and mashing potato and adding at least two acrylamide reducing
agents to the mashed potato, including a food grade acid and a divalent or
trivalent cation. (Id.).
The Maillard reaction between sugars and amino groups is the likely
cause of acrylamide in starch-based food products. (FF 3; Spec. 3-4). We
understand that this result of the Maillard reaction was known in the art
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because Appellants discuss it in the “Description of Related Art” portion of
their specification (FF 3; Spec. 3-4) and do not argue or provide evidence to
the contrary.
The prior art cited by the Examiner shows that the Maillard reaction
was known to also be responsible for undesireable, non-enzymatic browning
in vegetables such as potatoes. (See FFs 4, 5, and 11; Beck col. 2, ll. 38-48;
Simon col. 1, ll. 18-37; Martinez-Serna Villagrosa col. 24, ll. 25-45). Simon
teaches adding calcium chloride and sodium bisulfite to reduce non-
enzymatic browning (FF 6; Simon col. 3, ll. 56-59, and col. 4, ll. 1-52),
while Beck teaches that sulfite can be eliminated by substituting phosphoric
acid (FF 10; Beck col. 9, ll. 31-49). Like Beck, Martinez-Serna Villagrosa
teaches using phosphoric acid, by adding it to potato mash, to reduce
browning. (FF 12; Martinez-Serna Villagrosa col. 11, ll. 23-26). Thus,
those in the art would have considered it obvious to use both calcium
chloride and phosphoric acid to reduce the effects of the Maillard reaction.
Simon teaches adding calcium chloride to be within the range, by
weight of the solids, recited in Appellants’ claims 1 and 9. (FF 7; Simon
Table I).
Neither Beck nor Martinez-Serna Villagrosa teaches a concentration
of phosphoric acid, or any other food grade acid, that reduces browning.
(FFs 10 and 12). Because Beck teaches that phosphoric acid is instrumental
in reducing the effects of the Maillard reaction (non-enzymatic browning)
and Martinez-Serna Villagrosa reinforces this by teaching that phosphoric
acid reduces browning in general, there would have been reason for those in
the art to determine its most effective concentration.
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[D]iscovery of an optimum value of a result effective variable
in a known process is ordinarily within the skill of the art. . . .
It is well settled that a prima facie case of obviousness may be
rebutted “where the results of optimizing a variable, which was
known to be result effective, (are) unexpectedly good.”

In re Boesch, 617 F.2d 272, 276 (CCPA 1980) (quoting In re Antonie, 559
F.2d 618, 620 (CCPA 1977). Appellant provides no argument or evidence
that the claimed concentration of food-grade acid was unexpectedly good, or
would not have been determined by varying the addition of phosphoric acid
to reduce non-enzymatic browning. Thus, those of skill in the art would
have considered the claimed concentration of phosphoric acid to be obvious.
Appellants argue that none of the prior art references cited by the
Examiner teach reduction of acrylamide formation. (App. Br. 10, 13, and
22). It was known, though, that the Maillard reaction causes both browning
and acrylamide formation. The Examiner reasonably concluded that
reduction of non-enzymatic browning by the Maillard reaction would
inherently reduce acrylamide formation. (See Ans. 12 and 16).
MEHL/Biophile Int'l Corp. v. Milgraum, 192 F.3d 1362, 1366
(Fed.Cir.1999) ( “Where ... the result is a necessary consequence of what
was deliberately intended, it is of no import that the article's authors did not
appreciate the results.”). Appellants have not provided argument or
sufficient evidence to the contrary. See In re King, 801 F.2d 1324, 1327
(Fed. Cir. 1986) (“after the PTO establishes a prima facie case of
anticipation based on inherency, the burden shifts to appellant to ‘prove that
the subject matter shown to be in the prior art does not possess the
characteristic relied on. [citing In re Swinehart, 439 F.2d 210, 212-213
(CCPA, 1971)].’”). Thus, we are not persuaded that because a reference
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fails to acknowledge acrylamide reduction, it does not inherently teach
reducing acrylamide formation. The functional language implied by
Appellants’ choice of the claim term “acrylamide-reducing agents” does not
mean that the steps recited in Appellants’ claim are not the same as in the
prior art, where the same chemicals are added to potatoes. See
MEHL/Biophile, 192 F.3d at 1366 (“The [prior art’s] failure to mention [the
purpose of the claimed method] as a goal is . . . irrelevant.”).
Appellants argue that the Examiner has incorrectly applied the
reasoning that “it would have been obvious to substitute compound B for
compound A and it would have been obvious to use concentration B in
solution as concentration B by weight of the food.” (App. Br. 8). But, the
prior art teaches that compound B (phosphoric acid, as taught in Beck) can
be substituted for compound A (sulfite, as taught in Simon), and that
because compound B was known, from Beck and Martinez-Serna
Villagrosa, to be a result effective variable in reducing effects of the
Maillard reaction, those in the art would have found the claimed range of
concentrations, to be obvious.
Appellants argue that the prior art references do not teach “disrupting
the cellular structure” of the starched-based food before applying the
calcium chloride or phosphoric acid because slicing and dicing potatoes
would not “disrupt[] the cellular structure” as it should be properly
construed, citing their own specification and other prior art. (See App. Br. 7-
8, citing Spec. p. 6, ll. 6-10, and US 3,821,435, at col. 3, ll. 4-15).
Appellants argue further that because the concentrations of many of the prior
art references were provided only for washes used with vegetable slices or
dices to reduce discoloration, much less of the agent than claimed would
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remain after removal from the bath. (See App. Br. 9). Appellants have not
argued or provided sufficient evidence that the Maillard reaction is affected
differently in diced or sliced potatoes compared to mashed potatoes so that it
would be beyond ordinary skill in the art to determine an optimal
concentration in the mash.
Appellants also argue that because prior art references teach other
ways of reducing browning, they “conflict” with (App. Br. 15) or “teach
away” from (App. Br. 20) the claimed method. “Under the proper legal
standard, a reference will teach away when it suggests that the developments
flowing from its disclosures are unlikely to produce the objective of the
applicant's invention. In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).”
Syntex LLC v. Apotex, Inc., 407 F.3d 1371, 1380 (Fed. Cir. 2005).
Appellants do not cite to portions of the cited prior art references that
indicate adding the agents to food with disrupted cellular structure would
reduce their effectiveness in inhibition of the Maillard reaction even if other
methods, such as applying infared energy, would also achieve similar
results.
V. CONCLUSION
Those of skill in the art would have considered it obvious to add
phosphoric acid and calcium chloride to potato to reduce acrylamide in the
potato.
Those of skill in the art would have considered it obvious to use the
recited concentration of food grade acid to reduce acrylamide in potato.
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VI. ORDER
Upon consideration of the record and for the reasons given, the
rejection of claims 1, 2, 4, 6-12, and 14 under 35 U.S.C. § 103(a) over Beck,
Simon, Gonzalez, Schwank, Sutton, Akerboom, Melnick, Johnston, and
Martinez-Serna Villagran is AFFIRMED.
We decline to consider the rejection of claims 1, 2, 4, 6-12, and 14
under the doctrine of obvious-type double-patenting over claims 1, 24, and
36 of copending application 10/929,922.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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