Ex Parte Linton

Board of Patent Appeals and Interferences

Feb 22, 2010

10850919 (B.P.A.I. Feb. 22, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DAVID B. LINTON
____________

Appeal 2009-002362
Application 10/850,919
Technology Center 1700
____________

Decided: February 22, 2010
____________

Before JEFFREY T. SMITH, LINDA M. GAUDETTE, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner's final rejection of claims 8 through 13, 18, 20, and 21, which are all
of the claims pending in the above-identified application. We have jurisdiction
pursuant to 35 U.S.C. § 6.
We AFFIRM.
Appeal 2009-002362
Application 10/850,919

2
STATEMENT OF THE CASE
The subject matter on appeal is directed to a method of cooking potatoes.
Claim 8 is illustrative:
8. A method of cooking raw potatoes for later consumption or
processing, comprising the steps of:

blanching the raw potatoes at a temperature of about 175 degrees F or
more for a period of about 10 minutes;

applying a vacuum to the blanched potatoes to a predetermined level of
vacuity while the potatoes are still heated from the blanching step, thereby
vacuum cooking the potatoes until the microfibril cellulose structure of the
potatoes is strengthened and purged of excess water; and

removing the vacuum from the potatoes, the potatoes having a residual
temperature of about 106 degrees F when the vacuum is removed.

As evidence of unpatentability of the claimed subject matter, the
Examiner relies upon the following:
Gross 4,018,908 Apr. 19, 1977
Later 6,434,951 B2 Aug. 20, 2002

"Cooking Tip: Grilling Vegetables" CD Kitchen [online], [retrieved on 2005-
11-9]. Retrieved from the Internet (hereinafter "CD
Kitchen")

As evidence of patentability of the claimed subject matter, Appellant
relies upon the following:
Loaiza-Velarde, J. G. et al. "Effect of Intensity and Duration of Heat-shock
Treatments on Wound-induced Phenolic Metabolism in Iceberg Lettuce," J.
Amer. Soc. Hort. Sci., 122(6): 873-877 (1977) (hereinafter "Loaiza-Velarde")

Appeal 2009-002362
Application 10/850,919

3
The Examiner maintains the following rejections:
1) Claims 8-11 and 13 under 35 U.S.C. § 103(a) as unpatentable over
Later;
2) Claims 12, 20, and 21 under 35 U.S.C. § 103(a) as unpatentable over
Later and Gross; and
3) Claim 18 under 35 U.S.C. § 103(a) as unpatentable over Later and CD
Kitchen.
With respect to rejection (1), Appellant's arguments focus on claim 8.
With respect to rejection (2), Appellant's arguments are directed to features
recited in claim 21. With respect to rejection (3), Appellant's arguments are
directed to claim 18, which is the only claim rejected. Accordingly, we address
Appellant's arguments regarding rejections (1), (2), and (3) with respect to
claims 8, 21, and 18, respectively. See 37 C.F.R. § 41.37(c)(1)(vii)(2009).

REJECTION (1): The § 103 rejection over Later

ISSUE
Has Appellant shown reversible error in the Examiner's determination
that Later would have rendered obvious a vacuum cooking process for potatoes
that results in strengthened microfibril cellulose structure as required by claim
8? We decide this issue in negative.

FINDINGS OF FACT (FF)
1. The Specification discloses that blanching may occur in "mediums that
include a water bath, a water deluge, heated saturated air environment,
Appeal 2009-002362
Application 10/850,919

4
microwave energy or live, high temperature steam." (Spec. ¶ [0009]).
The Specification also discloses that “the cellular structure of the
vegetable portions is purged of excess water during the low temperature,
low pressure cooking process. This results in the toughening of the cell
walls and cellulose fibers." (Spec. ¶ [00037]).
2. Later teaches in one embodiment involving lettuce that "it is important
not to heat the produce too much." (Later, col. 3, ll. 4-5).
3. Later teaches that "[p]roper heat shock treatment therefore depends on
the temperature of the produce at the outset of the heat-shock process, the
temperature of the water utilized to cause the shock, and the time needed
to create the heat-shock response." (Later, col. 3, ll. 5-9). In this regard,
Later teaches that "[h]eat-shock protein synthesis redirection differs
depending on the nature of the produce." (Later, col. 3, ll. 46-47).
4. Loaiza-Velarde, which is incorporated by reference in Later at column 1,
line 46, teaches that a temperature of 70 °C (i.e., 158° F) for 60 seconds
causes "extensive damage to the synthetic pathways in the tissue" of
lettuce. (Loaiza-Velarde, p. 874).
5. The Examiner finds and Appellant does not specifically dispute that Later
teaches a heat shock process of applying to the produce, which may be a
potato, water having a temperature between 50 degrees Fahrenheit and
212 degrees Fahrenheit. (Ans. 4; see also Later, col. 5, ll. 58-62).
Appellant also does not specifically dispute the Examiner's finding that
the exposure to the high temperature water may last for about 30 to 480
seconds (i.e., about 0.5 minute to 8 minutes). (Ans. 4; see also Later, col.
3, ll. 14-17 and col. 8, ll. 13-18). Moreover, Appellant does not
Appeal 2009-002362
Application 10/850,919

5
specifically dispute the Examiner's determination that "it would have
been obvious to vary [the] time/temperature profile and to employ time
and temperatures corresponding to disclosed ranges such as claimed
depending on a particular choice of vegetables." (Compare Ans. 5 with
App. Br. 5-15 and Reply Br. 2-4).
6. Appellant does not specifically dispute the Examiner's determination that
"[s]ince Later teach[es] applying the vacuum to heated potatoes . . . some
degree of cooking" would occur. (Compare Ans. 5 with App. Br. 5-15
and Reply Br. 2-4; see also Later, col. 2, ll. 55-64, col. 4, ll. 2-5, and col.
5, ll. 20-30) (emphasis added). Nor does Appellant specifically dispute
the Examiner's determination that "the microfibril cellulose structure data
would have been expected to be as claimed . . . [since] [t]he reference
discloses the same starting materials and methods as instantly (both
broadly and more specifically) claimed." (Compare Ans. 5-6 with App.
Br. 5-15 and Reply Br. 2-4).

PRINCIPLES OF LAW
As stated in In re Best:
Where, as here, the claimed and prior art products are identical or
substantially identical, or are produced by identical or substantially
identical processes, the PTO can require an applicant to prove that
the prior art products do not necessarily or inherently possess the
characteristics of his claimed product. See In re Ludtke, supra.
Whether the rejection is based on ‘inherency’ under 35 U.S.C.
§ 102, on ‘prima facie obviousness' under 35 U.S.C. § 103, jointly
or alternatively, the burden of proof is the same, and its fairness is
evidenced by the PTO's inability to manufacture products or to
obtain and compare prior art products.

Appeal 2009-002362
Application 10/850,919

6
562 F.2d 1252, 1255 (CCPA 1977) (footnote omitted).
"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 taken by the applicant." In re Gurley, 27 F.3d 551, 553
(Fed. Cir. 1994).
"[O]ne cannot show non-obviousness by attacking references
individually where . . . the rejections are based on combinations of references."
In re Keller, 642 F.2d 413, 426 (CCPA 1981).

ANALYSES AND CONCLUSIONS
Appellant argues that Later "does not teach either the cooking of
vegetables or otherwise treating them to structurally alter their cellulose
structure." (App. Br. 7). Appellant argues that Later does not teach or suggest
blanching the raw potatoes at 175 degrees Fahrenheit or more for a period of
about 10 minutes as required by claim 8. (App. Br. 8) Appellant further argues
that the "problems addressed by Later (avoidance of browning of cut produce)
and those by the Applicant (increasing handling qualities, organoleptic qualities
and the shelf-life of cooked vegetables) are . . . completely unrelated and non-
analogous." (App. Br. 10).
While Later teaches in one embodiment involving lettuce that "it is
important not to heat the produce too much," the Examiner does not rely on this
embodiment to meet the blanching step required by claim 8. (FF 2). Instead,
the Examiner finds, and Appellant does not specifically dispute, that Later
teaches temperature and time ranges (i.e., temperature between 50 degrees
Appeal 2009-002362
Application 10/850,919

7
Fahrenheit and 212 degrees Fahrenheit and a period of time about 0.5 minutes
to 8 minutes) that are suggestive of the claimed temperature and time ranges
(i.e., temperature of about 175 degrees Fahrenheit or more and a period of time
about 10 minutes). (FF 5). Moreover, Appellant does not specifically dispute
the Examiner's determination that "it would have been obvious to vary [the]
time/temperature profile and to employ time and temperatures corresponding to
disclosed ranges such as claimed depending on a particular choice of
vegetables." (FF 5).
Furthermore, Appellant has not supported the arguments that the claimed
microfibril structure is not achieved by Later’s process and that Later is non-
analogous art by explaining or identifying the handling qualities, organoleptic
qualities and the shelf-life of cooked vegetables achieved by the Later process,
or arguing that Later is in a different field of endeavor. Indeed, Appellant does
not specifically dispute the Examiner's determination that "[s]ince Later
teach[es] applying the vacuum to heated potatoes . . . some degree of cooking"
would occur. (FF 6). Nor does Appellant specifically dispute the Examiner's
determination that "the microfibril cellulose structure data would have been
expected to be as claimed . . . [since] [t]he reference discloses the same starting
materials and methods as instantly (both broadly and more specifically)
claimed." (FF 6).
In other words, Appellant has not provided persuasive arguments or
evidence which identify reversible error in the Examiner’s determination that
Later's potatoes would possess the cellulose structure of claim 8 because the
potatoes are heated for a period of time within the claimed temperature and time
Appeal 2009-002362
Application 10/850,919

8
range and then placed into a vacuum chamber (i.e., vacuum cooking) like
Appellant's method. Best, 562 F.2d at 1255.
Appellant argues that Later teaches away because Later would have led
one of ordinary skill in the art in a direction divergent from Appellant's path for
all vegetables. (App. Br.8-11; see also App. Br. 5-7). In support of this
position, Appellant contends that Loaiza-Velarde, which is incorporated by
reference in Later at column 1, lines 46-50, would have discouraged one of
ordinary skill from using the time and temperature feature required by claim 8.
While Later teaches (FF 2) in one embodiment involving lettuce that "it
is important not to heat the produce too much," nowhere does Later discourage
one of ordinary skill from using the claimed time and temperature or lead one
of ordinary skill in the art in a direction divergent from Appellant's path for all
vegetables including potatoes. See Gurley, 27 F.3d at 553. Appellant has
provided no persuasive argument or evidence showing how this specific time
and temperature provided in the discussion concerning lettuce also causes
damage to other vegetables such as potatoes.
Thus, it follows that Appellant has not shown reversible error in the
Examiner's determination that Later would have rendered obvious a vacuum
cooking process for potatoes that results in strengthened microfibril cellulose
structure as required by claim 8.

REJECTION (2): The § 103 rejection over Later and Gross
ADDITIONAL FINDINGS OF FACT (FF)
7. The Examiner states that
Gross discloses a vacuum treatment to remove vaporized liquid from
unfrozen cellular substances while keeping the cell walls intact
Appeal 2009-002362
Application 10/850,919

9
thereof. The disclosure recites that it is well known to impart food by
marinade, and that one factor in shortening marinade time is the
inclusion of a vacuum technique (col. 1, lines 39-60). Gross also
discloses introducing specific flavor liquid during the vacuum and
temperature treatment (Col.4 lines 14-35). Gross discloses vacuum
level up to 29.6 inches of Hg depending on water temperature.

(Ans. 7). In this regard, Gross teaches removing liquid from a cellular
substance via a combination of reduced pressure and temperature control to
"cause vaporized liquid and/or dissolved gases to be released from the
cellular substance." (Gross, col. 4, ll. 10-16). Gross also teaches that "[this]
vaporized liquid . . . migrate[s] through . . . [the] cell wall or membrane
while keeping the cell wall intact." (Gross, col. 6, ll. 9-12 and col. 1, ll. 1-5).
Gross also teaches employing a vacuum of up to 29.5 Inches of Mercury to
cause vapor release. (Gross, col. 5, ll. 5-20).
8. Appellant does not specifically dispute the Examiner's reason for
combining Later and Gross to arrive at the claimed invention. (Compare
Ans. 7 with App. Br. 5-15 and Reply Br. 2-4). In this regard, Appellant
does not specifically dispute the Examiner's determination that
It would have been obvious . . .to modify [the] invention of Later and
introduce flavorings to the plant food products during the vacuum and
temperature treatment in order to retain their original flavor and/or
texture as taught by Gross . . . [and] . . . to employ [the] vacuity level
disclosed by Gross in order to achieve an optimal vapor release.
(Compare Ans. 7 with App. Br. 5-15 and Reply Br. 2-4).

Appeal 2009-002362
Application 10/850,919

10
ANALYSIS AND CONCLUSION
Appellant argues that Gross teaches away from Appellant's invention
because Gross "explicitly cautions against overheating produce." (App. Br. 13)
(emphasis omitted).
Although Gross at column 7, lines 63-66 states that "vegetable products
should not be heated to the point where the texture and identity of the product
will be changed," nowhere does Gross discourage vacuum cooking the potatoes
until the microfibril cellulose structure of the potatoes is strengthened and
purged of excess water as required by claim 21. (See FF 1 and 7.)
Appellant simply has not provided any persuasive reasoning or evidence
to show that vacuum cooking to strengthen the microfibril cellulose structure of
the potatoes and purging the potatoes of excess water changes the texture and
identity of the potatoes. Accordingly, we find unpersuasive Appellant's
arguments that Gross teaches away from Appellant's invention.
In addition, Appellant argues that
It was improper for the Examiner to conclude that Gross '908
taught the removal of moisture to preserve cell wall structure,
as there is no teaching for this in the underlying Later '951
reference or a suggestion or motivation to combine it with
Gross '908.

(App. Br. 14). Appellant’s argument is unpersuasive because it fails to address
the Examiner’s stated rejection. Specifically, in reference to our above
discussion, the Examiner relies on Later to teach potatoes having the claimed
microfibril structure, like Appellant's, are heated and then placed into a vacuum
chamber. The cell wall structure argued by Appellant would flow naturally
Appeal 2009-002362
Application 10/850,919

11
therefrom. In addition, the Examiner finds that Gross teaches adding flavorings
(claim 12) and the claimed level of vacuity (claims 20 and 21). (FF 7).
Based on these teachings, the Examiner determines and Appellant does
not specifically dispute that it would have been obvious to combine Gross’
flavoring process and vacuity level with Later to add flavoring while retaining
the original flavor and texture as taught by Gross and to optimize vapor release.
(FF 7-8).
Appellant further argues that the Examiner relies upon impermissible
hindsight to combine Later and Gross since "Applicant's own inventiveness was
read into a number of references." (App. Br. 14-15). As noted above, however,
the Examiner relies on the teachings of the references and what they would
have suggested to one of ordinary skill in the art to make the combination and
not on impermissible hindsight.
In addition, Appellant refers to the arguments made in connection
with rejection (1). (App. Br. 13). For the reasons discussed above,
Appellant has not persuaded us that the Examiner reversibly erred.
Thus, it follows that Appellant has not identified reversible error in the
Examiner’s finding that Gross does not teach away from the claimed invention.

REJECTION (3): The § 103 rejection over Later and CD Kitchen
Appellant does not specifically dispute the Examiner's determination that
it would have been obvious to arrive at the features recited in dependent claim
18. (Compare Ans. 8 with App. Br. 5-15 and Reply Br. 2-4). Rather, Appellant
states that "[f]or the same reasons that Later '951 is improper art to cite against
the Applicant's invention with respect to Claims 8-13, 20, and 21, it is likewise
Appeal 2009-002362
Application 10/850,919

12
improper and ineffective to assert Later '951 against Claim 18." (App. Br. 15).
Thus, for the reasons discussed above, Appellant has not persuaded us that the
Examiner reversibly erred.
Appellant’s arguments (App. Br. 11-12) regarding the substance of the
interview summary dated June 28, 2006 are unavailing. Appellant in the Brief
has not identified the conditions utilized in treating the vegetable presented
during the interview. Consequently, it cannot be determined whether the
claimed invention has been limited to that scope.
Therefore, based on the totality of record, we determine that the
preponderance of evidence weighs most heavily in favor of obviousness within
the meaning of 35 U.S.C. § 103(a).

ORDER
We sustain all of the Examiner's rejections.
Accordingly, the Examiner's decision is affirmed.

TIME PERIOD
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)(2009).
AFFIRMED

cam

Appeal 2009-002362
Application 10/850,919

13
ELEY LAW FIRM CO.
7870 OLENTANGY RIVER ROAD
SUITE 311
COLUMBUS, OH 43235