Ex Parte Thomas

Board of Patent Appeals and Interferences

Nov 7, 2011

11161034 (B.P.A.I. Nov. 7, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte SHARON THOMAS
__________

Appeal 2011-000047
Application 11/161,034
Technology Center 1700
__________

Before TONI R. SCHEINER, DEMETRA J. MILLS, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

MILLS, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal under 35 U.S.C. § 134. The Examiner has rejected
the claims for obviousness. We have jurisdiction under 35 U.S.C. § 6(b).
Appeal 2011-000047
Application 11/161,034

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STATEMENT OF CASE
The following claims are representative of the claims of appeal:
Claim 1: A process for producing frozen sweet potatoes,
the process comprising the steps of:
slicing unblanched sweet potatoes into a plurality of unblanched sweet
potato slices;
applying a juice containing citric acid to the plurality of unblanched
sweet potato slices and maintaining the juice-applied plurality of unblanched
sweet potato slices at room temperature;
coating the room temperature juice-applied plurality of unblanched
sweet potato slices with a mixture that includes corn syrup, honey, brown
sugar, lemon flavor and vanilla flavor;
pan frying the mixture-coated plurality of unblanched sweet potato
slices on a greased pan;
cooling the pan-fried plurality of sweet potato slices to about room
temperature; and
freezing the cooled, pan-fried plurality of sweet potato slices.

Claim 12: A process for producing frozen sweet potatoes,
the process comprising the steps of:
slicing unblanched sweet potatoes into a plurality of unblanched sweet
potato slices;
spraying lemon juice on the plurality of unblanched sweet potato
slices and maintaining the lemon juice-applied plurality of unblanched sweet
potato slices at room temperature;
coating the room temperature lemon juice-applied plurality of
unblanched sweet potato slices with a mixture that includes corn syrup,
honey, brown sugar, lemon flavor and vanilla flavor;
pan frying the mixture-coated plurality of unblanched sweet potato
slices on a greased pan, wherein the pan is greased with an oil selected from
the group consisting of olive oil, vegetable oil, and corn oil;
applying a flavor-enhancing mixture that includes cinnamon, cane
sugar, allspice and nutmeg to the mixture-coated plurality of pan-fried sweet
potato slices;
cooling the pan-fried plurality of sweet potato slices to about room
temperature; and
freezing the cooled, pan-fried plurality of sweet potato slices.

Appeal 2011-000047
Application 11/161,034

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Cited References

Barnes et al., US 4,632,834 Dec. 30, 1986.
Zhang CN 1101512 A April 19, 1995.

“Oven Fried Sweet Potatoes” Cooking Light, November 1995.
.
“Sweet Potato and Yam Galette” Bon Appétit, November 1997.

“Spiced Syrup” Bon Appétit, September 2004.

“Preserve it right-Freezing fruits and vegetables” Iowa State University-
University Extension, September 2001.

“Freezing Yams or Sweet Potatoes” LSU Ag Center Research & Extension,
1964.

“Sweet Spiced Nuts” Gourmet, November 2003.

Grounds of Rejection
1. Claims 1-7, 10-11, 14-17 and 20 are rejected under 35 U.S.C. §
103(a) over Cooking Light in view of Barnes in combination with
Bon Appétit 1997, Bon Appétit 2004, Zhang, Iowa State
University as evidenced by LSU.
2. Claims 8-9, 12-13 and 18-19 are rejected under 35 U.S.C. §
103(a) over Cooking Light in view of Barnes in combination with
Bon Appétit 1997, Bon Appétit 2004, Zhang, in further view of
Gourmet 2003 and Iowa State University as evidenced by LSU.

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Application 11/161,034

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FINDINGS OF FACT
The Examiner’s findings of fact are set forth in the Answer at pages 4-18.

The following facts are highlighted.
1. Cooking Light teaches slicing sweet potatoes and pan frying them.
The sweet potatoes would reasonably appear to be unblanched as the
recipe does not call for blanching the potatoes.
2. Cooking light does not disclose applying juice containing citric acid to
unbalanced sweet potatoes.
3. Barnes teaches that blanched sweet potato slices should be coated
with orange juice and then should be quick-frozen. (Barnes, Abstract.)
4. Preserve It Right discloses that natural “enzymes in foods cause
changes in flavor, color, texture and nutritive value. Freezing slows
this activity but does not stop it. To prevent further enzyme activity,
vegetables need to be blanched in boiling water or steamed before
freezing.” (Iowa State University, col. 1.)
5. Preserve It Right states that “[e]nzymatic browning in light colored
fruits can be prevented by using ascorbic acid mixtures or other
substances.” (Id.)
6. Freezing yams states that boiled potatoes are cooked and then dipped
in ascorbic acid dissolved in a little water or in lemon or orange juice.
7. Freezing yams alternatively discloses peeling and slicing yams and
then blanching them in boiling water.
8. None of the cited references discloses applying orange juice to
unblanched potatoes.

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Discussion
ISSUE
The Examiner concludes that
It would have been obvious to one of ordinary skill in the art at
the time the invention was made to have applied juice
containing citric acid (i.e. orange juice), as taught by Barnes, to
the sweet potato slices of Cooking light for the purpose of
preserving the sweet potato color.

(Ans. 5.)
Appellant argues that Barnes teaches that blanched sweet potato slices
should be coated with orange juice and then should be quick-frozen. (App.
Br. 11.) “Applicant respectfully submits that one having ordinary skill in the
art would therefore not have found it obvious to apply orange juice to
unblanched sweet potatoes and to maintain their temperature in view of a
reference that teaches applying orange juice to blanched sweet potatoes and
quick-freezing them.” Id.
The issue is: Does the cited prior art support the Examiner’s rejection
of the claims for obviousness?

PRINCIPLES OF LAW
In rejecting claims under 35 U.S.C. § 103, the examiner bears the
initial burden of presenting a prima facie case of obviousness. Only if that
burden is met, does the burden of coming forward with evidence or
argument shift to the applicant.” In re Rijckaert, 9 F.3d 1531, 1532 (Fed.
Cir. 1993) (citations omitted). In order to determine whether a prima facie
case of obviousness has been established, we consider the factors set forth in
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Graham v. John Deere Co., 383 U.S. 1, 17 (1966): (1) the scope and content
of the prior art; (2) the differences between the prior art and the claims at
issue; (3) the level of ordinary skill in the relevant art; and (4) objective
evidence of nonobviousness, if present.
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).
Attention is invited to In re Levin, 84 USPQ 232 and the
cases cited therein, which are considered in point in fact
situation of the instant case. At page 234, the Court stated as
follows:

This court has taken the position that new recipes or
formulas for cooking food which involve the addition or
elimination of common ingredients, or for treating them
in ways which differ from the former practice, do not
amount to invention, merely because it is not disclosed
that, in the constantly developing art of preparing food,
no one else ever did the particular thing upon which the
applicant asserts his right to a patent. In all such cases,
there is nothing patentable unless the applicant by a
proper showing further establishes a coaction or
cooperative relationship between the selected ingredients
which produces a new, unexpected and useful function.
In re Benjamin D. White, 17 C.C.P.A. (Patents) 956, 39
F.2d 974, 5 USPQ 267; In re Mason et al., 33 C.C.P.A.
(Patents) 1144, 156 F.2d 189, 70 USPQ 221.

(Ans. 25-26.)

ANALYSIS
We do not find that the Examiner has provided sufficient facts to
support a prima facie case of obviousness. None of the cited references
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discloses applying orange juice or another juice containing citric acid to
unblanched potatoes prior to pan frying and freezing, as claimed.
Appellant argues that there is insufficient teaching in the references as
to when in the process the orange juice should be applied. (App. Br. 12.)
Appellant argues that Barnes teaches that blanched sweet potato slices
should be coated with orange juice and then should be quick-frozen. (Id. at
11.) Appellant “submits that one having ordinary skill in the art would
therefore not have found it obvious to apply orange juice to unblanched
sweet potatoes and to maintain their temperature in view of a reference that
teaches applying orange juice to blanched sweet potatoes and quick-freezing
them.” (Id.)
We agree. The prior art suggests “that natural enzymes in food cause
changes in flavor, color, texture and nutritive value. Freezing slows this
activity but does not stop it. To prevent further enzyme activity, vegetables
need to be blanched in boiling water or steamed before freezing.” (FF4.)
Freezing Yams states that boiled potatoes are cooked and then dipped in
ascorbic acid dissolved in a little water or in lemon or orange juice. (FF6.)
Thus, no reference discloses that treating unblanched, sliced, uncooked
sweet potatoes with orange juice provides for a desirable frozen sweet potato
product. The rejection is reversed.

Appeal 2011-000047
Application 11/161,034

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CONCLUSION OF LAW
The cited references do not support the Examiner’s obviousness
rejections.

REVERSED

cdc