Ex Parte Sakai et al

Board of Patent Appeals and Interferences

Jun 26, 2008

10259615 (B.P.A.I. Jun. 26, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte HIDEAKI SAKAI,
SHIN KOIKE,
and MASAO SHIMIZU
____________

Appeal 2008-2793
Application 10/259,615
Technology Center 1700
____________

Decided: June 26, 2008
____________

Before BRADLEY R. GARRIS, CHUNG K. PAK, and
PETER F. KRATZ, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 1, 3-5, 7, 8, and 10-22. We have jurisdiction under
35 U.S.C. § 6.
We AFFIRM-IN-PART.
Appeal 2008-2793
Application 10/259,615

Appellants claim a method for frying food comprising cooking a food
in an oil composition comprising at least 15% by weight of diglycerides,
wherein during the cooking for at least four hours, a total nitrogen content of
the oil composition of a value of 0.2% by weight or lower is controlled by
adding new oil to replace a part of old oil. Further details regarding
Appellants’ claimed method are set forth in representative independent claim
1 and dependent claims 3, 5, and 21 which reads as follows:
1. A method for frying food comprising:
cooking a food in an oil composition comprising at least 15%
by weight of diglycerides,

wherein during said cooking for at least four hours, a total
nitrogen content of said oil composition of a value of 0.2% by weight
or lower is controlled by adding new oil to replace a part of old oil;
and

wherein a volume of oil is at least 5 liters

wherein frying is conducted under frying conditions wherein
the time required to replace the whole oil, which is defined by the
following equation (1), amounts to 10 to 25 hours when the proportion
of the material of fry is lower than 2.5 parts by weight per 100 parts
by weight of said oil and 3-20 hours when the proportion of the
material of fry is not lower than 2.5 parts by weight per 100 parts by
weight of said oil

Time required to replace the whole oil (unit: hour) =

(Total amount of oil in a fryer) /

(Average amount of new oil supplied per hour) (1)

3. The method according to Claim 1, wherein said frying oil is
treated with a nitrogen adsorbent.

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5. The method according to Claim 1, wherein migration of
nitrogen from said food, into the frying oil is prevented

21. The method of claim 1, further comprising evaluating said
total nitrogen content of said oil composition during said cooking.

The references set forth below are relied upon by the Examiner as
evidence of unobviousness:
Scavone 5,470,598 Nov. 28, 1995
Mori 6,106,879 Aug. 22, 2000
Akoh 6,187,355 B1 Feb. 13, 2001
Council 6,346,286 B1 Feb. 12, 2002
Bertram 6,368,648 B1 Apr. 9, 2002

Edward G. Perkins and Michael D. Erickson, Deep Frying Chemistry,
Nutrition, and Practical Applications, AOCS Press, Champaign, Illinois,
246-247 (1996).

K. I. Holownia, M.S. Chinnan, M.C. Erickson, and P. Mallikarjunan,
Quality Evaluation of Edible Film-Coated Chicken Strips and Frying Oils,
JFS: Sensory and Nutritive Qualities of Food, 65(6), 1087 (2000).

Under 35 U.S.C. § 103(a):
1) claims 1, 4, 5, 7, 8, and 10-21 are rejected over Mori in view of
Perkins;
2) claim 3 is rejected over Mori, Perkins and Council or Akoh or
Bertram;
3) claim 5 is rejected over Mori, Perkins and Holownia; and
4) claims 1 and 22 are rejected over Mori in view of Scavone and
further in view of Perkins.
Appellants have separately argued independent claim 1 and dependent
claims 3, 5, 21, and 22. Accordingly, we will consider these separately
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argued claims in our disposition of this appeal. The remaining claims on
appeal will stand or fall with independent claim 1 from which they depend.
For the reasons which follow, we will sustain the rejections of claims
1, 4, 7, 8, 10-20, and 22 but will not sustain the rejections of claims 3, 5, and
21.
The Rejection based on Murray and Perkins
There is no dispute that Mori discloses a method of frying potatoes to
produce potato chips using an oil composition comprising at least 15% by
weight of diglycerides as required by claim 1 (see Example 11 and cols. 5-7).
While Mori fails to disclose the claim 1 feature of adding new oil to replace
old oil, Perkins teaches that this feature is known in prior art methods for
frying food as a technique for replacing absorbed and degraded frying oil
(246-47). Perkins also teaches that the amount of time required to replace
all of the oil in a fryer, known as frying oil turnover, typically includes a
range (e.g., 5-12 hours) which overlaps with the corresponding ranges of
claim 1 (id).
Based on these prior art findings, we agree with the Examiner that it
would have been obvious for one with ordinary skill in this art to modify
Mori’s process for frying food by replacing old oil with new oil such that all
of the oil would be replaced (i.e., turnover rate) within an acceptable period,
for example, 10 hours, in accordance with the teachings of Perkins. In this

1 The potato chip of Mori’s Example 1, which is prepared by frying with a
fresh diglyceride oil composition, appears to fully satisfy the claim 10
requirement for “[a] fried food produced by the method according to claim
1”, particularly when the claim 10 method is practiced with a fresh
diglyceride oil composition.
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way, the disadvantages described by Perkins of absorbed and degraded oil
would have been avoided.
Appellants argue that it would not have been obvious to combine the
teachings of Mori and Perkins in the manner discussed above because Mori
relates to frying with a diglyceride oil composition whereas Perkins
allegedly relates to frying with a triglyceride oil composition (App. Br. 7;
Reply Br. 3). This argument is unpersuasive for multiple reasons.
First, nothing in the Perkins’ reference limits the teachings thereof to a
triglyceride oil composition as Appellants believe.
Second, the diglyceride containing oil compositions of both Mori and
claim 1 may include significant amounts of triglyceride. Indeed, the oil
composition of claim 1 may contain as little as 15% diglycerides and as
much as 85% triglycerides. Therefore, even if the Perkins’ teachings were
limited to frying with a triglyceride oil composition, an artisan would have
considered such teachings applicable to a diglyceride containing oil
composition containing significant amounts (e.g., 85%) of triglycerides such
as the oil compositions of Mori and claim 1.
Third, Perkins unquestionably teaches the desirability of replacing
degraded or deteriorated oil (246-47). In this regard, Appellants’
Specification teaches that the institutional use of diglycerides as frying oils
has been hampered by the propensity of diglycerides to become colored and
to emit offensive odor over a period of time compared with triglycerides
(Specification 1-3). Significantly, this color and odor deterioration of
diglycerides would have been apparent to an artisan using such oils for
frying. Particularly in light of Perkins, an artisan would have been
motivated to replace such deteriorated diglyceride oil and correspondingly
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would have been able to determine appropriate turnover times for
diglyceride containing oil in order to avoid the aforementioned deterioration.
For these reasons, we adhere to the conclusion of obviousness
discussed above.
Concerning the nitrogen content requirement of claim 1, we
acknowledge (as did the Examiner) that neither Mori nor Perkins contains
any express teaching (or suggestion) of controlling the total nitrogen content
to a value of 0.2% by weight or lower. Nevertheless, the above-modified
process of Mori would inherently achieve this nitrogen content control. This
determination is well supported by the record of this appeal.
Specifically, the Specification teaches four methods, which may be
used either singly or in any combination, for controlling the nitrogen content
of the diglyceride containing frying oil to a value of 0.2% by weight or
lower (Specification 11). These methods include (1) replacing old oil with
new oil and (2) using materials of fry whose nitrogen content is 2% or lower
(id). In this latter regard, potato chips are expressly taught as a material of
fry whose nitrogen content is 2% or lower (Specification para. bridging 13-
14).
In light of the foregoing, it is reasonable to believe that Mori’s
process, even when not modified by Perkins, would satisfy the nitrogen
content control required by claim 1 since this process includes potato chips
as a material of fry which contains 2% or less nitrogen and therefore would
yield a 0.2% by weight or lower total nitrogen content of the oil composition
in accordance with the Specification teachings and as required by claim 1.
Moreover, the Mori process when modified with Perkins, would assist in
controlling the nitrogen content as required by claim 1 via the technique of
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replacing old oil with new oil, again in accordance with the Specification
teachings.
Under these circumstances, the record before us supports a
determination that the process of Mori, both when unmodified and especially
when modified by Perkins, would inherently control nitrogen content in the
manner required by claim 1. See In re Napier, 55 F.3d 610, 613 (Fed. Cir.
1995) (inherency arises both in the context of anticipation and obviousness).
See also Ex parte Levy, 17 USPQ2d 1461, 1463-64 (BPAI 1990) (a rejection
based on inherency must be reasonably supported by fact and/or technical
reasoning).
For the above-stated reasons, we sustain the § 103 rejection based on
Mori in view of Perkins of argued claim 1 and of non-separately argued
claims 4, 7, 8, and 10-20.
We do not sustain the corresponding rejection of claim 5 since the
Examiner has failed to even assert that Mori and Perkins contain any
teaching (either express or inherent) or suggestion of the claimed feature.2
We also do not sustain the corresponding rejection of claim 21. As
properly argued by Appellants (App. Br. 10, Reply Br. 4), Mori and Perkins
contain no teaching or suggestion of the evaluating step required by claim
21, and the Examiner does not contend otherwise.

The Rejection based on Mori, Scavone and Perkins
We share the Examiner’s conclusion that claims 1 and 22 would have
been obvious over these references. Regarding claim 1, a prima facie case

2 The inclusion of claim 5 in this rejection appears to have been an oversight
on the Examiner’s part.
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of obviousness is evinced by Mori and Perkins alone for the reasons
discussed previously. As for dependent claim 22, we agree with the
Examiner that it would have been obvious for an artisan to replace the
ascorbic ester antioxidant of Mori (col. 5, ll. 37-40) with citric acid in view
of Scavone’s teaching that this ingredient is a known antioxidant for an
edible oil composition (col. 6, ll. 4-38).
In support of their contrary view, Appellants point out that the oil
composition of Scavone is based on triglycerides rather than diglycerides
(App. Br. 13-14; Reply Br. 8). However, we do not perceive and Appellants
do not explain why their aforenoted point militates against an obviousness
conclusion. Mori evinces that an antioxidant is desirable in a diglyceride
and triglyceride mixture, and Scavone evinces that citric acid is known to
perform an antioxidant function in a triglyceride oil composition. In light of
this evidence, we are convinced an artisan would have reasonably expected
citric acid to perform its antioxidant function in the diglyceride and
triglyceride mixture of Mori. See Pfizer v. Apotex, Inc., 480 F.3d 1348,
1364 (Fed. Cir. 2007) (the expectation of success need only be reasonable,
not absolute).
We sustain the § 103 rejection of claims 1 and 22 as being
unpatentable over Mori, Scavone, and Perkins.

The Remaining Rejections
We do not sustain the § 103 rejection of claim 3 as being unpatentable
over Mori, Perkins and Council or Akoh or Bertram. On this record, the
Examiner has failed to show that any of these last three mentioned
references would have suggested treating the frying oil of Mori with an
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absorbent which is even capable of absorbing nitrogen as required by claim
3.
Likewise, we do not sustain the § 103 rejection of claim 5 as being
unpatentable over Mori, Perkins and Holownia. This is because the
Examiner again has failed to establish on this record that Holownia’s
teaching of film-coated chicken strips would have suggested modifying the
process of Mori in such a way as to prevent the migration of nitrogen from
the food into the frying oil as required by the rejected claim.

CONCLUSION
We have sustained the rejections of claims 1, 4, 7, 8, 10-20, and 22.

We have reversed the rejections of claims 3, 5, and 21.

The decision of the Examiner is affirmed-in-part.

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)(iv).

AFFIRMED-IN-PART

ls

OBLON, SPIVAK, MCCLELLAND MAIER
& NEUSTADT, P.C.
1940 DUKE STREET
ALEXANDRIA VA 22314
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