10754224 (B.P.A.I. Sep. 22, 2010)

Ex Parte Roskam et al

Board of Patent Appeals and InterferencesSep 22, 2010

10754224 (B.P.A.I. Sep. 22, 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. 10/754,224 01/09/2004 Robert O. Roskam ADV012 P309 8042 277 7590 09/22/2010 PRICE HENEVELD COOPER DEWITT & LITTON, LLP 695 KENMOOR, S.E. P O BOX 2567 GRAND RAPIDS, MI 49501 EXAMINER TRAN LIEN, THUY ART UNIT PAPER NUMBER 1781 MAIL DATE DELIVERY MODE 09/22/2010 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 ROBERT O. ROSKAM, JOHN F. STEVENS, JOEL R. TINSLEY, and CHEREE L.B. STEVENS ________________ Appeal 2009-014330 Application 10/754,224 Technology Center 1700 ________________ CHUNG K. PAK, TERRY J. OWENS, and JEFFREY T. SMITH, Administrative Patent Judges. SMITH, 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 2009-014330 Application 10/754,224 2 STATEMENT OF THE CASE The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1-58. We have jurisdiction under 35 U.S.C. § 6(b). The Invention Appellants’ invention is directed to a food product including a potato chip substrate having less than about 6% moisture content that is at least partially coated with a coating composition having a food starch component. The at least partially coated potato chip substrate contains at least about 20% less fat content (adjusted to an about 1% product moisture basis) after thermal processing as compared to a substantially similar thermal processed uncoated potato substrate. Claim 1 is illustrative: 1. A food product comprising: a thermally processed potato chip substrate comprising less than about 6% moisture content at least partially coated with a coating composition comprising a food starch component prior to thermal processing, wherein the at least partially coated potato chip substrate comprises at least about 20% less fat, adjusted to a 1 % product moisture basis, after thermal processing than a substantially similarly thermally processed uncoated potato chip substrate; wherein the thermal processing is chosen from a group consisting of (1) frying and (2) parfrying and then subsequently baking the potato chip substrate. Claims 1-58 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Higgins, US Patent 5,976,607, issued November 2, 1999. Appeal 2009-014330 Application 10/754,224 3 OPINION2 The dispositive issues for the rejection on appeal are the following: Did the Examiner err in determining that Higgins describes or suggests a potato chip substrate having a moisture content of less than 6% and a partially coated potato chip substrate that comprises at least about 20% less fat than a similarly processed uncoated potato chip substrate, as required by independent claims 1 and 32? Did the Examiner err in determining that Higgins describes or suggests a potato chip substrate having a moisture content of less than 3% and a partially coated potato chip substrate that comprises at least about 30% less fat than a similarly processed uncoated potato chip substrate, as required by independent claims 27 and 58? During examination, the Examiner bears the initial burden of establishing a prima facie case of obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). “[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” KSR Int’l v. Teleflex, Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). “[T]he analysis that ‘should be made explicit’ refers not to the teachings in the prior art of a motivation to combine, but to the court’s analysis.” Ball Aerosol & Specialty Container, Inc. v. Ltd. Brands, Inc., 555 F.3d 984, 993 (Fed. Cir. 2009). 2 Appellants have not presented separate arguments for all of the rejected claims. Rather, Appellants’ arguments are principally directed to independent claim 1. Any claim not separately argued will stand or fall with independent claim 1. See 37 C.F.R. § 41.37(c)(1)(vii) (2009). Appeal 2009-014330 Application 10/754,224 4 The Examiner found that Higgins describes water dispersible coating compositions for potato substrates. (Ans. 3-4). Regarding the independent claims, the Examiner found that Higgins did not disclose the moisture content of the potato substrate. (Ans. 4). The Examiner reasoned that it would have been obvious to a person of ordinary skill in the art to fry the potato substrate to any desired moisture content, depending upon the type of product design. (Ans. 5). The Examiner further reasoned that the claimed moisture content would have been obvious because Higgins did not place any restriction or limitation on the moisture content of the final potato substrate. (Ans. 5-6). Appellants argue that the Examiner's rejection is improper because Higgins does not describe or suggest the claimed moisture content of less than 6% or less than 3%; and the coating composition of the type described in Higgins is known to result in higher fat content whereas the claimed invention requires a decrease in fat content as compared to a similarly non- coated potato substrate. (App. Br. 6). Appellants argue that the potato substrate of Higgins is a French fry product that is different from the potato substrate of the claimed invention and is known to have a high moisture content. (App. Br. 7). In support of the argument that French fry products have a high fat content, Appellants rely upon the Background of the Invention section of the present application and the Declaration of John Stevens.3 (App. Br. 8-9). We agree with Appellants’ arguments set forth above and in the Briefs. First, the Examiner has failed to provide any credible explanation or evidence that establishes that the potato substrate of Higgins necessarily has 3 The declaration of John Stevens, signed December 21, 2007. Appeal 2009-014330 Application 10/754,224 5 the claimed moisture content or would have rendered obvious a potato substrate having the claimed moisture content. In order to establish a prima facie case of obviousness, the Examiner must show that each and every limitation of the claim is described or suggested by the prior art or would have been obvious based on the knowledge of those of ordinary skill in the art. In re Fine, 837 F.2d 1071, 1074 (Fed. Cir. 1988). We also agree with Appellants that the Examiner has failed to provide any credible explanation and/or evidence as to why the fat content of Higgins’ partially coated potato substrate is necessarily the same as that claimed, or would have rendered the claimed fat content obvious. The evidence identified by Appellants would have suggested that the fat content of a French fry potato product would have been substantially higher than the potato product described by the claimed invention. The Examiner has not directed us to any credible evidence to support his position that the French fry product of Higgins would necessarily have a fat content that would have rendered the claimed invention is unpatentable. DECISION The 35 U.S.C. §103 rejections of claims 1-58 is reversed. REVERSED bar PRICE HENEVELD COOPER DEWITT & LITTON, LLP 695 KENMOOR, S.E. P. O. BOX 2567 GRAND RAPIDS, MI 49501