Ex Parte Shimizu et al

Patent Trial and Appeal Board

Mar 19, 2014

11094167 (P.T.A.B. Mar. 19, 2014)

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.
11/094,167 03/31/2005 Hideki Shimizu KOH-0206 8797
74384 7590 03/19/2014
Cheng Law Group, PLLC
1100 17th Street, N.W.
Suite 310
Washington, DC 20036
EXAMINER
DEES, NIKKI H
ART UNIT PAPER NUMBER
1791
MAIL DATE DELIVERY MODE
03/19/2014 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte HIDEKI SHIMIZU and HISAO SHIMIZU
____________

Appeal 2012-007551
Application 11/094,167
Technology Center 1700
____________

Before ADRIENE LEPIANE HANLON, LINDA M. GAUDETTE, and
GRACE KARAFFA OBERMANN, Administrative Patent Judges.

GAUDETTE, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-007551
Application 11/094,167

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Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision1 finally rejecting claims 1, 3-7, 9, 11, and 13-19.2 We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM for the reasons expressed in the Answer. (See
Examiner’s Answer, mailed Jan. 9, 2012 (“Ans.”), 5-14.)
The Examiner maintains the following grounds of rejection under
35 U.S.C. § 103(a)3:
1. claims 1, 3, 4, 6, 7, 9, 11, 13, 14, and 16-19 are rejected as
unpatentable over Fenn et al. (US 2004/0121051 A1, published Jun. 24,
2004) in view of Tye et al. (US 5,308,636, patented May 3, 1994) (Ans. 5-
7);
2. claim 5 is rejected as unpatentable over Fenn in view of Tye,
further in view of Tai et al. (US 6,093,426, patented Jul. 25, 2000) (Ans. 8);
and
3. claim 15 is rejected as unpatentable over Fenn in view of Tye,
further in view of Linden et al. (NEW INGREDIENTS IN FOOD PROCESSING:
BIOCHEMISTRY AND AGRICULTURE 323 (Woodhead Publishing Limited
1999)) (Ans. 9).
Appellants’ arguments in support of patentability are primarily
directed to limitations found in claim 1, the sole independent claim on
appeal, which is reproduced below from the Claims Appendix to the Appeal
Brief:

1 Final Office Action mailed Mar. 29, 2011.
2 Appeal Brief filed Oct. 31, 2011 (“Br.”).
3 The Examiner has withdrawn the rejection under 35 U.S.C. § 112, second
paragraph. (Ans. 4.)

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Application 11/094,167

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1. A method of preventing migration of water and a coloring matter in
foods, said method comprising interposing between a first foodstuff
containing water and/or a coloring matter and a second foodstuff making
contact with said first foodstuff a water/coloring matter migration-proof
agent to prevent migration of the water and/or the coloring matter from said
first foodstuff to said second foodstuff,
wherein the first and second foodstuff are not heat-treated after
applying the water/coloring matter migration-proof agent,
wherein the water/coloring matter migration-proof agent is in the form
of sol or gel comprising a thickening polysaccharide or a mixture of the
thickening polysaccharide, oils-and-fats, and water-insoluble food fibers,
wherein said foods comprise a combination of more than one
foodstuff and includes at least one foodstuff containing either water or a
coloring matter, or both water and coloring matter,
wherein the water/coloring matter migration-proof agent further
comprises a mixture of a coagulating agent and a substrate consisting of
arum root or glucomannan that is in the form of powder, either in sol or
dissolved-in-water, or alternatively, pasted glucomannan,
wherein a concentration of the glucomannan is in the range of 0.1 to
5.0 % by weight with respect to water, and
wherein the coagulating agent is contained in an amount of 0.05 to 15
% by weight with respect to the substrate.

Appellants also raise arguments directed to the Examiner’s proposed
modification of Fenn in view of Tai, applied only in rejecting claim 5.
Claim 5 depends directly from claim 1, and recites “wherein the water-
insoluble food fibers comprise cellulose.” However, claim 5, as drafted,
does not require water-insoluble food fibers. (See Claim 1 (“wherein the
water/coloring matter migration-proof agent is in the form of sol or gel
comprising a thickening polysaccharide or a mixture of the thickening
polysaccharide, oils-and-fats, and water-insoluble food fibers.” (emphasis
added)).) Arguments in support of patentability must be based on claim
limitations. In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (“Many of
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Application 11/094,167

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appellant’s arguments fail from the outset because, . . . they are not based on
limitations appearing in the claims.”).
Fenn discloses a “hydrocolloid containing barrier [that] is able to
inhibit the migration of moisture across [multi-component food] system[s],
thereby improving the shelf life of the food product, as well as enhancing the
ability of the product to survive freeze/thaw cycles.” (Fenn Abstract.)
“[T]he moisture barrier is formed from any water swellable material
including cold water swelling starches . . . [and] konjac gum” (id. at
[0028]), i.e., glucomannan (cf. Tye (col. 2, l. 38 (“Konjac is the most
common of the glucomannans with which the invention may be
practiced.”)). Fenn discloses the moisture barrier is in the form of a powder
which can be applied in a variety of manners (Fenn [0058]), including “by
dispersing it in a solution such as water or fat, including vegetable oil, butter
and shortening” (id. at [0061]; see also, id. at [0038] (“The powder may be
combined with any other components/compounds to enhance any
functionality and/or ease of application and manufacturing, such as films,
adhesive agents, flow aides, lipids, waxes, proteins and coatings.”)). Fenn
discloses an example wherein the moisture barrier was added to a chocolate
compound coating and applied to previously baked cookies. (Id. at [0077].)
Ice cream was placed between two cookies to form a sandwich which was
frozen. (Id.)
Tye discloses a gellable starch-based system comprising starch and a
glucomannan which becomes thermally stable by addition of an alkali, i.e., a
coagulant (see Ans. 6; Spec. 6, 3rd para.). Tye discloses dry blending a cold-
swelling starch and konjac, followed by admixing with water to provide a
viscous sol. (Tye, col. 2, ll. 55-63.) The dry starch/konjac mixture may be
Appeal 2012-007551
Application 11/094,167

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blended with other formula ingredients, including alkaline materials (col. 3,
ll. 6-7), prior to dispersing in water (col. 4, ll. 4-5). The gels are described
as heat-stable when frozen (id. at 65-66) and “have particular application in
food, animal and industrial systems such as confectionery, water or milk
based foods, fruit glazes, pie fillings, soups, sauces, gravies, pet foods,
icings, frostings and other systems containing starch as a major or minor
component” (id. at col. 5, ll. 13-18).
The Examiner determined it
would have been obvious to one of ordinary skill in the art at
the time the invention was made to have utilized an alkali
coagulation agent as taught by Tye et al. in combination with
the glucomannan and starch as taught by Fenn et al. in order to
improve the stability and moisture holding properties of
glucomannan gels, as taught by Tye.
(Ans. 7.)
Appellants argue one of ordinary skill in the art would not have been
motivated to modify Fenn based on the teachings of Tye, because Tye
relates to wet compositions while Fenn relates to a dry composition. (App.
Br. 7-8.) Appellants’ argument is not persuasive because it is not supported
by Fenn’s disclosure which clearly teaches that the composition may be
dispersed in a solution such as water or fat for ease of application, and
includes an example wherein the compound was added to a chocolate
coating. (See Fenn [0061] supra p. 4.)
Appellants argue the moisture barrier properties of the Fenn and Tye
compositions are a result of their collective components and that one of
ordinary skill of art would not have had a reasonable expectation that the
properties of the Fenn composition would be improved by addition of only
one of the components used in the Tye composition. (App. Br. 9-10.) As
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Application 11/094,167

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explained below, Appellants’ arguments are unpersuasive as they are not
supported by the relevant case law.
“[I]f a technique has been used to improve one device, and a person of
ordinary skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless its actual
application is beyond his or her skill.” KSR Int'l Co. v. Teleflex Inc., 550
U.S. 398, 417 (2007); see also, In re Thrift, 298 F.3d 1357, 1365 (Fed. Cir.
2002) (explaining that when a second reference identifies the benefits of
adding a feature to the primary reference, an obviousness rejection is
proper); In re Kerkhoven, 626 F.2d 846, 850 (CCPA 1980).
The Examiner found one of ordinary skill in the art would have had a
reasonable expectation that Fenn’s glucomannan/starch mixture would
benefit from the addition of an alkali coagulation agent in the same manner
as Tye’s glucomannan/starch mixture, i.e., a similar mixture. (Ans. 7.)
Where the Examiner establishes that the products claimed by the
applicant and disclosed in the prior art appear to be the same, the burden is
properly shifted to the applicant to show that they are not. See In re Spada,
911 F.2d 705, 708 (Fed. Cir. 1990); In re Best, 562 F.2d 1252, 1254-56
(CCPA 1977).
Appellants have not provided persuasive evidence to support their
argument that addition of an alkali coagulation agent would not have
improved the stability and moisture holding properties of Fenn’s mixture
due to the presence of other components which differ from those present in
Tye’s mixture. See In re Geisler, 116 F.3d 1465, 1471 (Fed. Cir. 1997)
(argument by counsel cannot take the place of evidence).
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Application 11/094,167

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In conclusion, for the reasons expressed in the Answer and above, we
affirm the Examiner’s decision to reject claims 1, 3-7, 9, 11, and 13-19.
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

cdc