Ex Parte Sakai et alDownload PDFBoard of Patent Appeals and InterferencesJun 26, 200810259615 (B.P.A.I. Jun. 26, 2008) Copy Citation 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. 2 Appeal 2008-2793 Application 10/259,615 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 3 Appeal 2008-2793 Application 10/259,615 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. 4 Appeal 2008-2793 Application 10/259,615 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 5 Appeal 2008-2793 Application 10/259,615 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 6 Appeal 2008-2793 Application 10/259,615 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. 7 Appeal 2008-2793 Application 10/259,615 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 8 Appeal 2008-2793 Application 10/259,615 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 9 Copy with citationCopy as parenthetical citation