Ex Parte Johal et al

Patent Trial and Appeal Board

Jun 30, 2017

13370802 (P.T.A.B. Jun. 30, 2017)

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.
13/370,802 02/10/2012 Sarjit Johal 8970-101299-US 2484
74456 7590 06/30/2017
FITCH, EVEN, TABIN & FLANNERY, LLP
120 South LaSalle Street, Suite 1600
Chicago, IL 60603-3406
EXAMINER
DICUS, TAMRA
ART UNIT PAPER NUMBER
1791
MAIL DATE DELIVERY MODE
06/30/2017 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 SARJIT JOHAL and ALBERT J. POLLMEIER1
____________

Appeal 2017-000823
Application 13/370,802
Technology Center 1700
____________

Before BEVERLY A. FRANKLIN, JEFFREY R. SNAY,
and JENNIFER R. GUPTA, Administrative Patent Judges.

FRANKLIN, Administrative Patent Judge.

DECISION ON APPEAL

1 Appellants identify the real party in interest as Grain Processing
Corporation of Muscatine, Iowa.
Appeal 2017-00823
Application 13/370,802

2
Appellants request our review under 35 U.S.C. § 134 of the
Examiner’s decision rejecting claims 1–11, 19, 21, 26–46. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).

STATEMENT OF THE CASE
Claim 1 is illustrative of Appellants’ subject matter on appeal and is
set forth below (with text in bold for emphasis):
1. A method comprising:
providing an aqueous solution that includes sodium chloride
and a crystallization interrupter selected from among nonionic
biopolymers and biooligomers; and

drying the aqueous solution to cause the biopolymer and
sodium chloride to form particles, where at least a majority of the
sodium chloride is present in an amorphous form, said particles
being suitable for consumption, the method providing particles
having an average size larger than about 100 microns.

The Examiner relies on the following prior art references as evidence
of unpatentability:
Kakiuchi et al. US 6,242,040 B1 Jun. 5, 2001
(hereafter “Kakiuchi”)
Jensen et al. US 7,923,047 B2 Apr. 12, 2011
(hereafter “Jensen”)
Zasypkin US 2009/0104330 A1 Apr. 23, 2009
Minter et al. US 2013/0295180 A1 Nov. 7, 2013
(hereafter “Minter”)

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Application 13/370,802

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THE REJECTIONS
1. Claims 1, and 4–9 are rejected under 35 U.S.C. § 103(a) as being
unpatentable Minter in view of Zasypkin.
2. Claims 28 and 31–36 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Minter in view of Zasypkin, and further in view of Jensen.
3. Claims 10, 19, 37, and 38 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Minter in view of Zasypkin, and further in view of
Kakiuchi, and Jensen.
4. Claims 2, 3, 11, 21, 26, 27, 39–41, and 42–46 are rejected under
35 U.S.C. § 103(a) as being unpatentable over Minter in view of Zasypkin,
and further in view of Kakiuchi.
5. Claims 29 and 30 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Minter in view of Zasypkin, and further in view of Jensen
and Kakiuchi.

ANALYSIS
Having considered the respective positions advanced by the Examiner
and Appellants in light of this appeal record, we reverse the Examiner’s
rejections for essentially the reasons set forth by Appellants in the record,
and add the following for emphasis.
Rejections 1–5
Appellants argue, inter alia, that their pending claims specify sodium
chloride is present in amorphous form. Appeal Br. 11. Appellants argue that
Minter expressly teaches the production of salts having a crystalline form,
and that the preparation of crystals is a primary purpose of Minter's
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Application 13/370,802

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disclosure. Minter, ¶¶ [0018], [0065], Figures 7 and 10, Examples 1 and 4.
Appeal Br. 8–11. Appellants argue that Minter discusses the purported
advantages associated with the disclosed salt crystal structures, specifically
paragraph 16 of Minter teaches including increased saltiness by weight
compared to other similar structures, capability of remaining free flowing
under ambient conditions, surprising effectiveness in bread making
applications. Appellants submit that these benefits are said to flow from the
crystal structure that is an objective of Minter. Appellants argue that
paragraph 18 of Minter even touts that “[t]he structure of such salt products
is to our knowledge unique.” Appeal Br. 11.
In response, the Examiner states:
“ . . . [t]he amorphous limitation hasn't been proven by Appellant to
date either. Minter teaches the same process and ingredients. See
Example 4, mixing salt and maltodextrin in aqueous solution and
spray-drying it. Note similarly. Appellant's specification setting forth
the same essential steps in [36-37], instant specification (spray-drying
the ingredients forcing amorphous formation). Appellant has provided
no evidence to show the process of Minter differs. Appellant points to
Minter's Figures yet, the patent is relied upon for all that it teaches,
and in this instance, the Appellant is directed to at least Example 4,
[25, 30, 18, 21] and the 100 micron end point in [17] disclosed by
Minter.
Ans. 8–9.
However, we are persuaded by Appellants’ stated reply wherein
Appellants submit that the Examiner is wrong in finding that Minter teaches
the same process. Reply Br. 3. Appellants explain that the claims do not
merely recite combining sodium chloride and a polymer in solvent and
spray drying, as the Examiner appears to suggest, but instead, recite
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5
providing an aqueous solution of sodium chloride and a crystallization
interrupter, and then forming particles where at least a majority of the
sodium chloride is present in an amorphous form. Id. Appellants explain
that their Specification discloses that forming particles with a majority of
sodium chloride in amorphous form can be accomplished by reducing the
salt:biopolymer/biooligimer ratio and controlling the speed of drying.
Spec., ¶¶| [0035]–[0037]. Reply Br. 3. Appellants state that Minter provides
examples with much higher salt:polymer ratios leading to crystalline forms
of salt. Appellants refer to Examples 1, 2, and 3 of Minter, having a
NaCl:Gum Arabic ratio of about 83:17, and Examples 4, 5, and 6 having a
ratio of NaCl:maltodextrin of about 97:3. Id. For all of these reasons, we
agree with Appellants that the Examiner has not directed us to sufficient
evidence in the record indicating that Minter’s process is the same as
claimed by Appellants.
We add that “[i]f the proposed modification would render the prior art
invention being modified unsatisfactory for its intended purpose, then there
is no suggestion or motivation to make the proposed modification.” In re
Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984). “If the proposed modification
or combination of the prior art would change the principle of operation of
the prior art invention being modified, then the teachings of the references
are not sufficient to render the claims prima facie obvious.” In re Ratti, 270
F.2d 810, 813 (CCPA 1959). In the instant case, for the reasons discussed,
supra, there is thus no suggestion to make the proposed modification of
Minter.
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In view of the above, we reverse Rejection 1. Because the additional
references applied in Rejections 2–5 were not applied by the Examiner to
cure the stated deficiencies of Minter in view of Zasypkin, we also reverse
these rejections.
DECISION
Each rejection is reversed.
.

ORDER
REVERSED