Ex Parte Terry et al

Patent Trials and Appeals Board

Apr 30, 2019

14395372 - (D) (P.T.A.B. Apr. 30, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/395,372 10/17/2014
110933 7590 04/30/2019
Carstens & Cahoon, LLP
PO Box 802334
Dallas, TX 75380
FIRST NAMED INVENTOR
Leon A. Terry
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
CFLAY.40721 4268
EXAMINER
KIM,BRYAN
ART UNIT PAPER NUMBER
1792
MAIL DATE DELIVERY MODE
04/30/2019 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
Exparte LEON A. TERRY,
SIMON CHARLES MCWILLIAM,
and BRIAN ROBERT MEYER
Appeal2018-006425
Application 14/395,372
Technology Center 1700
Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and
N. WHITNEY WILSON, Administrative Patent Judges.
WILSON, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner's
September 12, 2017 decision finally rejecting claims 1, 2, 5, 8, 10, 15, 17,
21, 74, 82, 87, and 88. We have jurisdiction over the appeal under 35 U.S.C.
§ 6(b).
We reverse.
1 Appellants identify the real party in interest as Frito-Lay Trading Co.
GmbH (Appeal Br. 2).
Appeal2018-006425
Application 14/395,372
CLAIMED SUBJECT MATTER
Appellants' invention is directed to a method of storing potatoes and,
in particular, initiating or extending ecodormancy to control the sugar
content of stored potatoes (Spec. ,-J 2). Claim 1 is representative and is
reproduced below from the Claims Appendix of the Appeal Brief ( emphasis
added):
1. A method of storing potatoes, the method comprising the
steps of:
ii. [sic, i.] providing a plurality of endodormant or
ecodormant potatoes;
ii. in a first storage step, storing the potatoes in a first
gaseous environment, the first gaseous environment
including carbon dioxide in an amount of from 0.25 to 5 mol
% based on the composition of the first gaseous
environment;
iii. transitioning to a second storage step after eye
movement of at least one stored potato, or at least one
control potato stored in atmospheric air; and
iv. in a second subsequent storage step, storing the
potatoes in a second gaseous environment, the second
gaseous environment including carbon dioxide in an amount
of from 0.1 to 1.0 mol % based on the composition of the
second gaseous environment, the first and second gaseous
environments having different carbon dioxide contents;
wherein the method is carried out at a temperature in the
range from 1 to 15 °C.
Appeal Br. 24 (Claims App.).
DISCUSSION
The only rejection on appeal is the rejection of claims 1, 2, 5, 8, 10,
15, 17, 21, 74, 82, 87, and 88 under 35 U.S.C. § 103(a) as unpatentable over
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Appeal2018-006425
Application 14/395,372
Gabler2 in view of Knowles, 3 Brouwer,4 and further in view of Lajoie. 5
Appellants' arguments are directed to limitations recited in independent
claim 1 (see Appeal Br. 5-22; see also Reply Br. 2-12). Accordingly, our
discussion will focus on the rejection of claim 1, which we select as
representative of the claims subject to the rejection. 37 C.F.R.
§ 41.37(c)(l)(iv).
The Examiner finds, inter alia, that Gabler' s method for controlling
the storage of plant products teaches each step and limitation of independent
claim 1, except that the reference "does not specifically teach the plant
product being a potato, ... an amount of carbon dioxide in a first gaseous
environment, [and] an amount of carbon dioxide in a second gaseous
environment" (Ans. 3). The Examiner, however, finds that Lajoie teaches
storing potatoes in a first carbon dioxide environment having a concentration
of 2-50% by volume (id. at 4 ( citing Lajoie 1 :37; 2:8-23)). The Examiner
determines that it would have been obvious to one of ordinary skill in the art
to modify Gabler' s method to introduce carbon dioxide in the claimed
amount because Lajoie teaches that "the amount is conventional in the art
for storage of ... potatoes, [ and] controlled amounts of carbon dioxide
retards spoilage, controls the rate of crop maturation, and inhibits fungus and
mold growth" (Ans. 4 (citing Lajoie 3:47-55)).
The Examiner further finds that Brouwer teaches storing potatoes in
an atmosphere having up to 0.2% carbon dioxide (Ans. 5 ( citing Brouwer
2 Gabler, US 7,208,187 B2, issued April 24, 2007.
3 Knowles et al., US 2013/0183419 Al, published July 18, 2013.
4 Brouwer, US 4,735,134, issued April 5, 1988.
5 Lajoie et al., US 5,273,769, issued December 28, 1993.
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Appeal2018-006425
Application 14/395,372
7:30-35)). The Examiner determines that it would have been obvious to one
of ordinary skill in the art to modify Gabler' s method "to have the claimed
carbon dioxide content in the second gaseous environment since the
composition was commonly used to store potatoes, in order to reduce sugar
production and weight loss once eye movement begins" as taught by
Knowles (Ans. 5 (citing Brouwer 7:30-35); see also Knowles ,i 4).
According to the Examiner, each of "the claimed carbon dioxide values
would have been used during the course of normal experimentation and
optimization procedures due to such factors as the type of potato, storage
time, and intended use" (Ans. 4, 5).
There is no dispute that Brouwer explicitly discloses that "if the
potatoes are ... exposed to high carbon dioxide levels, certain enzymes
within the potatoes responsible for converting the sugar to starch, become
very active as a result of these stress factors, causing unacceptably high
sugar levels, which in tum result in a darkish appearance to the processed
potato" (Brouwer 2:64-68; see also Ans. 4; Appeal Br. 12).
Appellants argue that Brouwer teaches away from the claimed range
of carbon dioxide in an amount of from 0.25 to 5 mol % (Appeal Br. 12).
Appellants specifically assert that in "the claimed subject matter[,] the
carbon dioxide levels are increased during storage to above atmospheric
levels, contrary to the Examiner's assertion of the Brouwer teaching that this
is deleterious" (id.).
In response, the Examiner argues that "Brouwer teaches that carbon
dioxide levels above ambient are still acceptable up to about 2,000 ppm, or
about 0.2%" (Ans. 8). The Examiner, however, fails to adequately refute
Appellants' teaching away argument. In this regard, the Examiner does not
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Appeal2018-006425
Application 14/395,372
explain why it would have been obvious to employ Lajoie's potato storage
in a carbon dioxide environment of 2-50% by volume, which is known to
activate potato enzymes that convert sugar to starch, thereby causing
unacceptably high sugar levels and an unacceptable darkish appearance in a
processed potato.
Thus, it follows that a preponderance of the evidence or record weighs
in favor of Appellants' argument that Brouwer teaches away from the
method of storing potatoes recited in claim 1.
Accordingly, we reverse the rejection of claim 1 under
35 U.S.C. § 103(a) as unpatentable over Gabler in view of Knowles,
Brouwer, and further in view of Lajoie. Claims 2, 5, 8, 10, 15, 17, 21, 74,
82, 87, and 88 stand with representative independent claim 1. 37 C.F.R.
§ 41.37(c)(l)(iv).
CONCLUSION
We REVERSE the rejection of claims 1, 2, 5, 8, 10, 15, 17, 21, 74, 82, 87,
and 88 under 35 U.S.C. § 103(a) as unpatentable over Gabler in view of
Knowles, Brouwer, and further in view of Lajoie.
REVERSED
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