Ex Parte ITO et alDownload PDFPatent Trial and Appeal BoardDec 13, 201814646471 (P.T.A.B. Dec. 13, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/646,471 05/21/2015 466 7590 YOUNG & THOMPSON 209 Madison Street Suite 500 Alexandria, VA 22314 12/17/2018 UNITED ST A TES OF AMERICA FIRST NAMED INVENTOR Takashi ITO 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. 8007-1342 9317 EXAMINER TRAN, LIEN THUY ART UNIT PAPER NUMBER 1793 NOTIFICATION DATE DELIVERY MODE 12/17/2018 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): DocketingDept@young-thompson.com yandtpair@firs ttofile. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte TAKASHI ITO, KAZUKO KOJIMA, T AKASHI SES AI, KENTARO IRIE, and TATSUNORINISHIDE Appeal2018-001769 Application 14/646,471 Technology Center 1700 Before JEFFREY T. SMITH, BRIAND. RANGE, and JANEE. INGLESE, Administrative Patent Judges. INGLESE, Administrative Patent Judge. DECISION ON APPEAL Appellants 1 request our review under 35 U.S.C. § 134(a) of the Examiner's decision to finally reject claims 1, 3---6, 9, 12, 13, 16, 19, and 20. We have jurisdiction over this appeal under 35 U.S.C. § 6(b ). We AFFIRM. STATEMENT OF THE CASE Appellants claim a method for producing kaki-age (App. Br. 2), which, according to the Specification, is "a food product made by deep- frying ingredients (food items), such as vegetables and seafood, coated with 1 Appellants are the applicants, Nisshin Seifun Group Inc. and Nisshin Foods Inc. According to the Appeal Brief, Nisshin Foods Inc. is the real party in interest. Appeal Brief filed July 19, 2017 ("App. Br."), 2. Appeal 2018-0017 69 Application 14/646,471 a crust material." Spec. ,r 1. Claim 1 illustrates the subject matter on appeal and is reproduced below with contested language italicized: 1. A method for producing kaki-age comprising the steps of: coating an ingredient with a crust material such that the proportion of the crust material, in terms of solid content of the crust material, is within a range from 3 0 to 5 0 parts by mass of the solid content of the crust material per 100 parts by mass of the ingredient; and subjecting the crust-material-coated ingredient to a heating treatment including deep-frying at an oil temperature from 135°C to 155°C inclusive such that a kaki-age having a moisture content of 10 mass% or less is obtained. App. Br. 15 (Claims Appendix) (emphasis added). The Examiner sets forth the following rejections in the Final Office Action entered December 20, 2016 ("Final Act."), and maintains the rejections in the Examiner's Answer entered October 2, 2017 ("Ans."): 2 I. Claims 1, 4--6, 13, and 20 under 35 U.S.C. § 103 as unpatentable over Wheeler et al. (US 2010/0015298 Al, published January 21, 2010) in view of Baur et al. (US 6,288,179 Bl, September 11, 2001); and II. Claims 3, 9, 12, 16, and 19 under 35 U.S.C. § 103 as unpatentable over Wheeler in view of Baur and Eichenlaub et al. (US 2014/0314927 Al, published October 23, 2014). DISCUSSION Upon consideration of the evidence relied upon in this appeal and each of Appellants' contentions, we affirm the Examiner's rejections of 2 The Examiner withdrew the rejection of claim 1 under 35 U.S.C. § 112(b) in the Answer. Ans. 2. 2 Appeal 2018-0017 69 Application 14/646,471 claims 1, 3---6, 9, 12, 13, 16, 19, and 20 under 35 U.S.C. § 103 for the reasons set forth in the Final Office Action, the Answer, and below. Rejection I Appellants argue claims 1, 4--6, 13, and 20 together on the basis of claim 1, to which we accordingly limit our discussion. App. Br. 4--13; 37 C.F.R. § 4I.37(c)(l)(iv). Wheeler discloses a process for producing a fried potato product that includes applying batter ( crust material)3 to the surface of raw potatoes (ingredient), and frying the batter-coated raw potatoes in oil at a temperature of about 250QF to 400QF (121 QC to 204QC), to yield a potato product having a moisture content of about O % to about 10 % by weight. ,r,r 4, 54, 60, 101. Wheeler discloses that the effectiveness of the batter application depends on the viscosity of the batter, and Wheeler indicates that the percentage of solids in the batter affects the batter's viscosity, and the pick-up/absorption rate of the batter onto the raw potatoes. ,r 56. Wheeler discloses that if the viscosity of the batter is too low, the finished product has too little color and/or flavor, and more fat is absorbed during the frying operation, which negatively affects the "texture and aesthetics" of the fried product. Id. The Examiner finds that "[ w ]hile Wheeler does not disclose the specific solid content of the crust material [batter] as claimed, Wheeler does recognize the correlation between the quality of product and the solid content." Ans. 5. The Examiner further relies on Baur to address the proportion of solid content of crust material per mass of ingredient recited in claim 1. Ans. 3. 3 Wheeler refers to the batter as the "surface application." ,r,r 53-56. 3 Appeal 2018-0017 69 Application 14/646,471 Baur discloses a method of preparing a fried battered food product that involves coating a food substrate with a batter containing sodium caseinate, a non-gelling milk protein, and frying the coated food substrate. Col. 1, 11. 37-38, 47-50; col. 4, 11. 11-12. Baur discloses that the batter should have a total solids level of at least about 30 % by weight, and the pick-up of the batter should be sufficient to provide at least about 0.2 percent by weight of sodium caseinate based on the weight of the product. Col. 1, 11. 53-57. Baur exemplifies preparing battered fish products using batters having different pick-up levels, and discloses in table II that fish products prepared with batter having a pick-up of 45.5 % or 47.8 % exhibited a crisp texture. Col. 5, 11. 15-57. The Examiner finds that Baur thus "teaches the appropriate solid content in a batter to have sufficient pick-up level." Ans. 5. The Examiner finds that the "combined teaching of Wheeler on the viscosity and product pick-up/absorption with the Baur teaching of appropriate solid content would readily lead one skilled in the art to the optimum solid content to obtain the desirable viscosity and thus proper coating of the product to give the desirable crispness texture in the product." Id. The Examiner further finds that "[b ]oth Baur and Wheeler recognize the importance of the solid content in the batter and the pick-up level which in tum determine the solid content by mass of the solid content of crust material per 100 parts by mass of the ingredient." Ans. 5---6. Appellants argue that Baur "fails to teach a solid content as claimed in either the 'pick-up' amounts in the Examples (which includes table II) or in the general disclosure." App. Br. 5. Appellants argue that the "pick-up" amounts discussed in Examples 1-3 of Baur "do not correspond to the same 4 Appeal 2018-0017 69 Application 14/646,471 proportion as claimed" because the "pick-up" amounts described in Baur refer to the proportion of batter relative to the coated product, rather than the proportion of the mass of crust material solids relative to the mass of the ingredient, as recited in claim 1. App. Br. 5-8. Appellants assert that the general disclosure of Baur describes the percentage of dry ingredients relative to the final batter, rather than relative to the food product to which the batter is applied, as recited in claim 1. App. Br. 8-9. As discussed above, however, Wheeler discloses that the percentage of solids in a batter applied to raw potatoes affects the batter's viscosity and the pick-up/absorption rate of the batter onto the potatoes, which in tum affect the color, flavor, texture, and aesthetics of final fried product. Wheeler thus indicates that the solid content of the batter is a result-effective variable. In re Applied Materials, Inc., 692 F.3d 1289, 1297 (Fed. Cir. 2012) ("A recognition in the prior art that a property [or a result] is affected by the variable is sufficient to find the variable result-effective."). Therefore, one of ordinary skill in the art at the time of Appellants' invention seeking to produce a batter-coated fried food product as disclosed in Wheeler and Baur would have arrived at an optimum solid content for the batter that would produce the desired color, flavor, texture, and appearance in the final product through nothing more than routine experimentation. In re Boesch, 617 F.2d 272, 276 (CCPA 1980) ("[D]iscovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art."). Although Appellants assert that Baur does not suggest optimizing the solid content of the coating relative to the ingredient to achieve a desired degree of coating and viscosity (App. Br. 9; Reply Br. 1-2), as discussed 5 Appeal 2018-0017 69 Application 14/646,471 above, the Examiner finds that the solid content of a batter ( crust material) and its pick-up level determine the solid content by mass of the batter (crust material) per 100 parts by mass of the ingredient being coated, which Appellants do not dispute. Compare Ans. 5---6, with Reply Br. 1-5. Accordingly, optimizing the solid content of the batter would achieve an optimized solid content by mass of the batter ( crust material) per 100 parts by mass of the ingredient, as recited in claim 1. Appellants argue that the combination of Wheeler and Bauer fails to recognize the criticality of the proportion of the solid content of crust material relative to the ingredient as recited in claim 1, which Appellants assert produces unexpectedly improved product properties. App. Br. 9-11. Appellants rely on data provided for Comparative Examples 1 and 2 in Table 1 of their Specification. Id. The law is replete with cases in which the difference between the claimed invention and the prior art is some range or other variable within the claims. These cases have consistently held that in such a situation, the applicant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range. In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990). In the present case, Appellants do not meet their burden of establishing that the relied-upon results set forth in Table 1 of their Specification would have been unexpected at the time of their invention, and, therefore, do not meet their burden of demonstrating the criticality of the range of proportion of solid content of crust material relative to ingredient recited in claim 1. We point out initially that comparative Example 1 is directed to product prepared with a crust material solid content coating rate of 26 mass 6 Appeal 2018-0017 69 Application 14/646,471 % 4 ( outside the range of 30 to 50 mass % recited in claim 1) that exhibited poor shape retainability. Spec. ,r,r 25, 30, 31. The Specification explains that the poor shape retainability resulted from a thin crust material that "lacked the ability to join the ingredients together." Spec. ,r 31. Comparative Example 2 is directed to product prepared with a crust material having a solid content coating rate of 54 mass % ( outside the range of 30 to 50 mass % recited in claim 1) that had a moisture content of greater than 10%, outside the range of 10 mass % or less recited in claim 1. Spec. ,r,r 25, 30, 31. Examples 1--4 are directed to products having a solid content coating rate of 30, 37, 43, and 50 mass%, respectively, which had a moisture content within the range of 10 mass % or less recited in claim 1, and exhibited good shape retainability. Spec. ,r 30. Appellants do not identify any averment in the Specification or provide any other evidence establishing that the asserted improvement in shape retainability and moisture content resulting from the proportion of the solid content of crust material relative to ingredient recited in claim 1 would have been unexpected by one ordinary skill in the art at the time of their invention. App. Br. 4--13; In re Geisler, 116 F.3d 1465, 1471 (Fed. Cir. 1997) ("Geisler made no such assertion [that results were unexpected] in his application. Nor did Geisler submit any such statement through other evidentiary submissions, such as an affidavit or declaration under Rule 132 ... Instead, the only reference to unexpected results was a 4 The "crust material solid content coating rate" is the mass of the crust material's so lid content/the mass of ingredient X 100. Claim 1 requires the crust material solid content coating rate to be 30 to 50 mass% ( or 30 to 50 parts by mass of solid content of curst material per 100 parts by mass of ingredient). Spec. ,r 15. 7 Appeal 2018-0017 69 Application 14/646,471 statement by Geisler's counsel ... that Geisler's results were 'surprising."' ( citation omitted)). To the contrary, as discussed above, Wheeler evidences that it was known in the art at the time of Appellants' invention that the solid content of a batter affects the batter's viscosity and the pick-up/absorption rate of the batter onto raw food. Wheeler further discloses that if the solid content ( and thus the viscosity and pick up/absorption rate) of the batter is too low, the texture and aesthetics of the resulting fried food product are adversely affected. ,r 56. Accordingly, one of ordinary skill in the art would have expected that lowering the solids content of a batter would produce a batter having low viscosity, which would not be well-absorbed (or picked up) by a raw food material, resulting in a batter similar to that of Comparative Example 1 that had a low solids content and yielded a product having poor shape retainability because the batter was too thin to join the coated ingredients together. One of ordinary skill in the art also would have understood that if the solid content (and thus the viscosity and pick up/absorption rate) of the batter is too high, a very thick coating would be produced that would prevent evaporation of moisture from the coated food ingredient during frying, resulting in a high moisture content in the final product, similar to the batter of Comparative Example 2 that had a high solids content and yielded a product having a high moisture content. Appellants acknowledge that Wheeler discloses frying at a temperature range that overlaps the range recited in claim 1, but argue that the combination of Wheeler and Bauer fails to recognize the criticality of the oil temperature used in the heating treatment step recited in claim 1, which 8 Appeal 2018-0017 69 Application 14/646,471 Appellants assert results in an unexpectedly superior product. App. Br. 11- 13. Appellants rely on data provided for Example 7 and Comparative Example 3 in Table 2 of their Specification. Id. However, Appellants do not establish that the relied-upon results set forth in Table 2 would have been unexpected at the time of their invention, and, accordingly, do not meet their burden of establishing the criticality of the frying temperature range recited in claim 1. Woodruff, 919 F.2d at 1578. We point out initially that Example 7 is directed to a product deep fried at a temperature of 160QC (outside the range of 135QC to 155QC recited in claim 1 ), which caused the product to be overheated, and yielded a final product having an undesirable dark and burnt appearance. Spec. ,r,r 27, 32, 33. Comparative Example 3 is directed to product deep dried at a temperature of 130QC (outside the range of 135QC to 155QC recited in claim 1 ), which provided insufficient heating, and yielded a final product having a moisture content greater than 10 %, outside the range of 10 mass % or less recited in claim 1. Spec. ,r,r 32, 33. Examples 3, 5, and 6 are directed to products that were deep fried at a temperature of 145QC, 135QC, and 155QC, respectively, and had a good outer appearance and a moisture content within the range of 10 mass% or less recited in claim 1. Spec. ,r,r 32, 33. All of the products produced in the experimental examples described in Table 2 were deep fried for 6 minutes. Spec. ,r 32. Similar to the situation discussed above, Appellants do not identify any averment in the Specification or provide any other evidence establishing that the asserted improvement in outer appearance and moisture content resulting from the frying temperature recited in claim 1 would have been unexpected by one ordinary skill in the art at the time of their invention. 9 Appeal 2018-0017 69 Application 14/646,471 App. Br. 4--13; Geisler, 116 F.3d at 147. To the contrary, one of ordinary skill in the art would have understood that when keeping the frying time constant, raising the frying temperature would heat a coated food ingredient to a greater extent, which would bum the product if the temperature is too high, similar to the product of Example 7 that was deep fried at a temperature of 160QC and had a burnt appearance. One of ordinary skill in the art also would have understood that when keeping the frying time constant, lowering the frying temperature would result in evaporation of less moisture from a coated food ingredient during frying, resulting in a high moisture content in the final product, similar to the product of Comparative Example 3 that was deep fried at a temperature of 130QC and had a high moisture content. Therefore, considering the totality of the evidence relied-upon in this appeal, a preponderance of the evidence weighs in favor of the Examiner's conclusion of obviousness with respect to claim 1. In re Oetiker, 977 F .2d 1443, 1445 (Fed. Cir. 1992) ("patentability is determined on the totality of the record, by a preponderance of evidence with due consideration to persuasiveness of argument"). Consequently, we sustain the Examiner's rejection of claims 1, 4--6, 13, and 20 under 35 U.S.C. § 103. Rejection II To address this rejection, Appellants rely on the arguments made for claim 1 ( discussed above), and argue that the additional reference applied in this rejection (Eichenlaub) fails to cure the deficiencies of Wheeler and Baur. App. Br. 13-14. Because we are unpersuaded of reversible error in the Examiner's rejection of claim 1 for the reasons discussed above, Appellants' position as to this rejection is also without merit. 10 Appeal 2018-0017 69 Application 14/646,471 DECISION We affirm the Examiner's rejections of claims 1, 3---6, 9, 12, 13, 16, 19, and 20 under 35 U.S.C. § 103. 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 )(iv). AFFIRMED 11 Copy with citationCopy as parenthetical citation