Ex Parte Joseph et al

Board of Patent Appeals and Interferences

Jun 21, 2012

11062193 (B.P.A.I. Jun. 21, 2012)

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.
11/062,193 02/18/2005 Ponnattu Kurian Joseph CFLAY.00265 6241
22858 7590 06/21/2012
CARSTENS & CAHOON, LLP
P.O. Box 802334
DALLAS, TX 75380-2334
EXAMINER
GEORGE, PATRICIA ANN
ART UNIT PAPER NUMBER
1789
MAIL DATE DELIVERY MODE
06/21/2012 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 PONNATTU KURIAN JOSEPH, RENU MATHEW, DONALD
VAUGHN NEEL, and SHEYLA RIVERA RAMSAY
____________

Appeal 2011-007014
Application 11/062,193
Technology Center 1700
____________

Before JEFFREY T. SMITH, LINDA M. GAUDETTE, and
DONNA M. PRAISS, Administrative Patent Judges.

PRAISS, Administrative Patent Judge.

Appeal 2011-007014
Application 11/062,193

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DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s decision1
finally rejecting:
(a) Claim 1, and all claims depending on it, under 35 U.S.C. § 112, first
paragraph as failing to comply with the written description requirement,
(b) Claims 1-4, 7, and 9-13 under 35 U.S.C. §103(a) as unpatentable over Succo
(US 3,493,390, patented Feb. 3, 1970) in view of Wisdom (US 3,835,222,
patented Sept. 10, 1974).2
We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM in part.
The invention relates to a food product, more specifically a dough, made
from fresh potato mash for an improved, more natural flavor (Spec.3 2.) Claim 1 is
representative of the invention and is reproduced below from the Claims Appendix
to the Appeal Brief:
1. A potato dough formulation comprising a fresh potato mash, wherein
said fresh potato mash comprises fully-gelatinized potato, wherein said
fresh potato mash has a moisture content greater than about 60% by
weight, and wherein said fresh potato mash refers to a mash which has
been processed at a temperature up to 190°F, and wherein said fully-
gelatinized potato comprises potato particles having thicknesses on the
order of about five-thousandths of an inch to about three-hundreds of an
inch.

1 Final Office Action mailed June 3, 2010 (“Final”). While the Final Office Action
includes a heading reciting a rejection of claim 1 under 35 U.S.C. § 112, second
paragraph, as being indefinite, which Appellants list among the rejections on
appeal, the actual rejection that immediately follows the heading and the rejection
that Appellants actually respond to at page 17 et seq. in the Appeal Brief, is under
35 U.S.C. § 112, first paragraph, for failure to comply with the written description
requirement. Final 2.
2 Appeal Brief filed Dec. 22, 2010 (“App. Br.”).
3 Specification filed Feb. 18, 2005.
Appeal 2011-007014
Application 11/062,193

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Rejection under 35 U.S.C. § 112, first paragraph (written description)
The Examiner contends that the original Specification does not describe the
claim language “fully-gelatinized potato comprises potato particles having
thicknesses on the order of about five-thousandths of an inch to about three-
hundreds of an inch” in the “fresh potato mash.” Ans. 4. The Examiner explains
that the size limitation refers to the size of the raw cut potato particles, which has
not been shown to be the same size as the particles of potatoes in a cooked
gelatinized potato mash. Id.
Appellants do not dispute that the Specification literally discloses only the
thickness of the raw potato slices that are subsequently sent to a decanter, a cooker,
and then to a cooler, rather than the thickness of the potato particles at any other
point in the process. Appellants assert that what is claimed is “a potato mash
comprising potato slices of the claimed thickness” and that “one skilled in the art
would understand that by disclosing thicknesses of the entering potato slices, that
[Appellants] were in possession of the thickness of the potato slices after they had
been decanted, cooked, and cooled.” App. Br. 19. Appellants do not direct us to
any evidence concerning the relative size of the raw potato slices to the “potato
particles” in the “fully-gelatinized potato” nor the actual size of the “potato
particles” in the “fully-gelatinized potato.”
To satisfy the written description requirement, a patent applicant must
“convey with reasonable clarity to those skilled in the art that, as of the filing date
sought, he or she was in possession of the invention. The invention is, for purposes
of the ‘written description’ inquiry, whatever is now claimed.” Vas-Cath Inc. v.
Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991). Such description need not
recite the claimed invention in haec verba but must do more than merely disclose
that which would render the claimed invention obvious. Univ. of Rochester v.
Appeal 2011-007014
Application 11/062,193

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G.D. Searle & Co., 358 F.3d 916, 923 (Fed. Cir. 2004); Regents of the Univ. of
Cal. v. Eli Lilly & Co., 119 F.3d 1559, 1566-67 (Fed. Cir. 1997); see also
PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1306-07 (Fed. Cir. 2008)
(explaining that § 112, ¶ 1 “requires that the written description actually or
inherently disclose the claim element”).
Without being directed to evidence as to the size of the potato particles in
the fully-gelatinized potato, the preponderance of the evidence favors the
Examiner’s finding that the inventors were not in possession of the invention as
claimed.

Rejection under 35 U.S.C. § 103(a)
The Examiner finds that Succo discloses “forming potato dough by using a
fresh potato mash.” Ans. 5. Cubical pieces of potatoes are “from about ¼-inch to
about ½-inch in size” then the size is reduced by pulverization to provide a potato
mash with a particle size of “from about 0.015 inch to about 0.03 inch, which
overlaps the claimed range.” Ans. 6; Succo, col. 2, ll. 7-9, 19-23. The water
content is “from about 50% to about 60% by weight of the mash.” Ans. 6; Succo,
col. 2, ll. 38-42. The Examiner finds that “about 60%” overlaps the claimed range
of “greater than about 60%” since Succo “reads on an amount that is slightly more
of [sic, or] less than 60 wt%.” Ans. 15. Succo does not disclose the potato particle
size in the fully-gelatinized potato and a processing temperature of up to 190°F.
Ans. 8-9.
The Examiner further finds that Wisdom discloses making potato dough
using fresh raw potato pieces “having a moisture content of at least 70 percent by
weight in water or steam that are blanched at a temperature of from about 180
degree F to 212 degree F for a time sufficient to gelatinize (i.e. fully gelatinize) the
Appeal 2011-007014
Application 11/062,193

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starch contained therein and to prevent enzymatic darkening.” Ans. 9; Wisdom,
col. 2, l. 42-col. 3, l. 16, col. 7, l. 15-col. 8, l. 2. The potato pieces are then dried
“at ambient temperatures, or, preferably, by heating in an oven at a temperature of
from about 175° to 225°F” to reduce the moisture content thereof to “from 25 to 60
percent” (Wisdom, col. 3, ll. 18-20), which range also is expressed as “about 25 to
60 percent” (id., abstract).
Based on the above findings of fact, the Examiner concluded
[i]t would have been obvious to one of ordinary skill in the
art, at the time the invention was made, to modify the potato dough,
as Succo, to include the use of potato mash which has been
processed at a temperature of up to 190[°] F, as claimed, because
one of skill in the art would have a reasonable expectation of
success in the teaching of Wisdom which illustrates the use of a
step of heating the potato mash to a temperature of up to 190[°]F
provides the benefit of such a step is preventing enzymatic
darkening.

Ans. 9.
Appellants contend the Examiner reversibly erred in rejecting the claims
because “Succo expressly teaches away from a moisture content of greater than
60%.” App. Br. 8 (quoting Succo, col. 2, ll. 43-56 (“if ‘the water content of the
mixture is greater than about 60% by weight the dough which is subsequently
formed is difficult to handle in that it is weak and thin in body.’”)). Similarly,
Appellants argue that Wisdom discloses “that the moisture content needed to be
less than 60%” and teaches “several dehydration stages to reduce the moisture
content of the raw potatoes.” App. Br. 7-8 (without citation to Wisdom); Reply Br.
7 (citing Wisdom, col. 2, ll. 59-62 (“Wisdom teaches of drying its pellets to about
‘25 to 60% by weight.’”)).
Appeal 2011-007014
Application 11/062,193

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A prima facie case of obviousness exists where the prior art and claimed
ranges overlap, as well as in those cases where the claimed range and the prior art
range, though not overlapping, are sufficiently close that one skilled in the art
would have expected them to have the same properties. See, e.g., In re Geisler,
116 F.3d 1465, 1469 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 (Fed.
Cir. 1990); Titanium Metals Corp. v. Banner, 778 F.2d 775, 783 (Fed. Cir. 1985).
We agree with the Examiner that the combination of Succo with Wisdom
teaches overlapping ranges for both the temperature range and the moisture range
to form the claimed potato mash. Where the Examiner has established a prima
facie case of obviousness, Appellants must show 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 at 1578.
Appellants have not directed us to evidence to establish the criticality of the
claimed ranges. The Specification further supports the lack of criticality as to the
claimed range of “greater than about 60% by weight” by disclosing a range as low
as 10% moisture concentration in the potato mash and describing the claimed
moisture range as a preferred embodiment. Spec. 18-19 (“The present invention
enables potato mash moisture concentrations from as low as roughly 10% (using
vacuum drying) to as high as 85%, depending on potato solids and decanter
settings. However, in a preferred embodiment, the cooked potato mash is virtually
completely gelatinized and has a moisture content greater than about 60% by
weight.”)
We are not persuaded that Succo teaches away from the claimed moisture
range. “A reference may be said to teach away when a person of ordinary skill,
upon reading the reference, would be discouraged from following the path set out
in the reference, or would be led in a direction divergent from the path that was
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Application 11/062,193

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taken by the applicant.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). Succo
cannot be said to discourage a person of ordinary skill in the art from a moisture
content of “about 60%” which clearly overlaps with Appellants’ claimed range.
For the reasons stated above and in the Answer, we affirm the Examiner’s
decision to reject claims 1-4, 7, and 9-13 under 35 U.S.C. §103(a).

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).
AFFIRMED

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