SANYO FOODS CO., LTD.

Patent Trials and Appeals Board

Dec 2, 2021

2021000186 (P.T.A.B. Dec. 2, 2021)

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.
15/536,623 06/16/2017 Yoshiaki NAGAYAMA 00594.0733FPWO 6994
23552 7590 12/02/2021
MERCHANT & GOULD P.C.
P.O. BOX 2903
MINNEAPOLIS, MN 55402-0903
EXAMINER
GEORGE, PATRICIA ANN
ART UNIT PAPER NUMBER
1793
NOTIFICATION DATE DELIVERY MODE
12/02/2021 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
USPTO23552@merchantgould.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte YOSHIAKI NAGAYAMA

Appeal 2021-000186
Application 15/536,623
Technology Center 1700
____________

Before BEVERLY A. FRANKLIN, JAMES C. HOUSEL, and
DONNA M. PRAISS, Administrative Patent Judges.

PRAISS, Administrative Patent Judge.

DECISION ON APPEAL1

Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 4–8.3 We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 In this Decision, we refer to the Specification filed June 15, 2017
(“Spec.”), the Final Office Action dated Jan. 30, 2020 (“Final Act.”), the
unpaginated Appeal Brief filed June 8, 2020 as corrected June 26, 2020
(“Appeal Br.”), the Examiner’s Answer dated Aug. 7, 2020 (“Ans.”), and the
Reply Brief filed Oct. 2, 2020 (“Reply Br.”).
2 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant
identifies Sanyo Foods, Co., Ltd. as the real party in interest. Appeal Br. [2].
3 Claims 1–3 have been withdrawn from consideration. Final Act. 1.
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STATEMENT OF THE CASE
The invention relates to producing high-temperature air-dried instant
dried noodles. Spec. ¶ 1. According to the Specification, the phenomenon of
“noodle splitting,” where cracks form in noodle strings, can be prevented or
inhibited by Appellant’s invention. Id. ¶ 18. The Specification describes
mixing and kneading a main raw material, at least one crosslinked
gelatinized potato starch selected from the group consisting of estherified
crosslinked gelatinized potato starch and esterified crosslinked gelatinized
potato starch, and water to form a dough. Id. ¶ 39. The Specification states
that classifying the degree of crosslinking in the starch as “high,” “medium,”
and “low” consists of “measuring a viscosity curve of the starch by using a
Brabender amylograph.” Id. ¶ 35. The Specification describes excessive
gelatinization of starch granules is inhibited by subjecting starch to a
crosslinking treatment making the starch granules resistant to collapse even
if subjected to retort processing. Id. ¶ 37.
Independent claim 4, reproduced below from the Claims Appendix of
the Appeal Brief, is illustrative of the subject matter on appeal (emphasis
added).
4. A method of producing dried noodles, comprising:
combining a main raw material;
at least one crosslinked gelatinized potato starch selected
from the group consisting of etherified crosslinked gelatinized
potato starch and esterified crosslinked gelatinized potato
starch; and
water, thereby forming a dough,
wherein the at least one crosslinked gelatinized potato
starch has a viscosity of 50 mPa·s or less under measuring
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conditions of a slurry temperature of 20°C, slurry
concentration of 5% by weight, and rotating speed of 60 rpm,
making noodle strings from the dough;
molding the noodle strings and
drying the noodle strings.
Appeal Br. [19] (Claims Appendix).

ANALYSIS
The Examiner maintains the rejection of claims 4–8 as follows for the
reasons provided in the Final Office Action. Final Act. 2–10.
Claim(s) 35 U.S.C. § Basis/Reference(s)
4–6 103 Ross,
4 Tachibe,5 Fresh Loaf,6 SJU
Rheology,7 Takizawa8
7, 8 103 Ross, Tachibe, Fresh Loaf, SJU Rheology, Takizawa, Nagayama9
We review the appealed rejections for error based upon the issues
Appellant identifies, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential)
(cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)
(“[I]t has long been the Board’s practice to require an applicant to identify

4 US 2004/0170736 A1, pub. Sept. 2, 2004.
5 US 2008/0095909 A1, pub. Apr. 24, 2008.
6 Fresh Pasta Producing and Cooking, The Fresh Loaf (Mar. 22, 2012)
(http://www.thefreshloaf.com/node/27851/fresh-pasta-producing-and-
cooking).
7 Rheology measurements (June 9, 2013)
(http://people.sju.edu/~phabdas/physics/rheo.html).
8 EP 2356913 A1, pub. Aug. 17, 2011.
9 JP 2001-58740 A, pub. Sept. 10, 2002 (citations herein are to the English
language translation of record to which Appellant does not object).
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the alleged error in the examiner’s rejections.”)). After considering the
argued claims in light of each of Appellant’s arguments, we are not
persuaded Appellant has identified reversible error in the Examiner’s
rejections.
Rejection of Claims 4–6 under 35 U.S.C. § 103
The Examiner finds Ross discloses making a dough using flour,
potato starch, water, and kansui, a sodium carbonate composition used in
Asian noodles. Final Act. 4–5 (citing Fresh Loaf for teaching baking soda
called “kansui” is used in making Asian noodles). The Examiner finds Ross
does not disclose the particular potato starch required by claim 4 and
combines Tachibe’s teaching to subject starch materials to an esterification
treatment, a weak phosphate-crosslinking treatment which does not control
the swelling of the starch, an etherified-crosslinking treatment, an esterified-
crosslinking treatment, and a pre-gelatinization treatment to form a
crosslinked gelatinized potato starch on the basis that it would have been
reasonable to use Tachibe’s dough to make noodles because Tachibe’s
dough is made from similar ingredients to that of Fresh Loaf. Id.
Appellant argues that the Examiner’s combination of prior art
references does not disclose each element of claim 1 because none of the
cited references disclose the “ultra-high degree of crosslinking” that
Appellant asserts is specified by the viscosity of 50 mPa•s required by the
claims. Appeal Br. 13 (citing Spec. ¶ 51). It is Appellant’s position that
Tachibe’s swelling-control free starch “must have a low degree of
crosslinking” because Tachibe teaches a “weak phosphate-crosslinking
treatment.” Id. (citing Tachibe ¶¶ 33, 35).
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We do not find Appellant’s argument persuasive of error because
Appellant’s assertion that Tachibe’s treatments do not produce the degree of
cross linking that the claimed viscosity reflects is not supported by evidence.
Appellant’s reliance on the phrase “weak phosphate-crosslinking” that
describes one of Tachibe’s treatments does not adequately distinguish
Tachibe’s crosslinked gelatinized potato starch as a starting material for a
dough product from the claimed crosslinked gelatinized potato starch.
Tachibe does not correlate its crosslinked gelatinized potato starch to a
viscosity. Thus, Appellant’s argument that Tachibe’s weak phosphate-
crosslinking treatment does not meet the viscosity measurements in a 5%
slurry is attorney argument. It is well settled that arguments of counsel
cannot take the place of factually supported objective evidence. See, e.g., In
re Huang, 100 F.3d 135, 139–40 (Fed. Cir. 1996); In re De Blauwe, 736
F.2d 699, 705 (Fed. Cir. 1984).
Moreover, as the Examiner finds, Tachibe teaches the claimed type of
potato starch for making dough, etherified crosslinked gelatinized starch
and/or esterified crosslinked gelatinized starch, as well as optional
treatments that relate to swelling. Ans. 17. The record supports the
Examiner’s findings. Tachibe ¶ 35. Appellant’s Specification states
crosslinking treatment inhibits the expansion of the starch and decreases the
viscosity of a crosslinked starch slurry. Spec. ¶ 36. The Specification
describes “ultra-high crosslinked starch” being “crosslinked to a degree to
which starch granules do not collapse.” Id. ¶ 37. As Appellant points out,
Tachibe discloses both swelling-controlled starch and swelling-control free
starch. Appeal Br. 14. Tachibe’s disclosure of the claimed etherified and/or
esterified crosslinked gelatinized starch as well as optional treatments for
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controlling the swelling or expansion of the starch is a disclosure of the
starch required by claim 4. Because the same specific starch is disclosed, the
same viscosity claimed would be expected as the Examiner states. Ans. 20;
see In re Papesch, 315 F.2d 381, 391 (CCPA 1963) (“a compound and its
properties are inseparable”).
Appellant argues that the Examiner’s reason for combining the
references is insufficient because Tachibe teaches away from using swelling-
control free starch alone. Appeal Br. [14–15]. Appellant directs us to
Tachibe’s comparative examples that contain only a swelling-control free
starch and Tachibe’s disclosed benefits attributed to using a combination of
swelling controlled starch and swelling-control free starch in bakery foods.
Id. at [14]. Appellant contends the fact that kansui is used in noodle dough
does not suggest combining Ross, Tachibe, and Fresh Loaf to predictably
form a dough using crosslinked gelatinized potato starch. Id. at [15].
We do not find Appellant’s argument persuasive of error because in a
determination of obviousness, a reference may be relied upon for all that it
would have reasonably suggested to one having ordinary skill in the art.
Merck & Co. v. Biocraft Labs., 874 F.2d 804, 807 (Fed. Cir. 1989) (“That
the [prior art] patent discloses a multitude of effective combinations does not
render any particular formulation less obvious.”). Moreover, “a reference is
not limited to the disclosure of specific working examples.” In re Mills, 470
F.2d 649, 651 (CCPA 1972) (citation omitted). We agree with the Examiner
that claim 4 does not preclude any additional components disclosed by the
cited prior art. Ans. 22.
Appellant argues that the Examiner erred in rejecting the claims
because the claimed viscosity and measuring conditions are not result
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effective variables. Appeal Br. [16]. Appellant contends the cited prior art
references do not disclose viscosity as a critical factor or predict a viscosity
range or degree of cross linking that prevents “noodle string cracking” thus a
person having ordinary skill in the art would not have had a reason to
optimize viscosity to arrive at the claimed method. Id. (citing Spec. Tables 3
and 4 for the viscosity relationship to noodle string cracking).
We do not find Appellant’s argument persuasive of error because it is
not necessary that Tachibe recognize the viscosity property of the esterified
and/or etherified crosslinked gelatinous starch used to form a dough. See
Boston Scientific Scimed, Inc. v. Cordis Corp., 554 F.3d 982, 991 (Fed. Cir.
2009) (“Boston Scientific argues that Wolff fails to recognize the additional
non-thrombogenic benefits of a topcoat that is substantially drug-free over a
topcoat that contains drug, but Wolff need not have recognized the
additional benefit of one embodiment to have rendered the claim obvious.”).
In sum, Appellant’s arguments are not persuasive of error in the
Examiner’s conclusion of obviousness. Accordingly, we affirm the
Examiner’s rejection of claim 4 under 35 U.S.C. § 103 over Ross, Tachibe,
Fresh Loaf, SJU Rheology, and Takizawa. We, likewise, affirm the rejection
of claims 5 and 6, which depend from claim 4, in the absence of separate
arguments concerning these claims. 37 C.F.R. § 41.37(c)(1)(iv).
Rejection of Claims 7 and 8 under 35 U.S.C. § 103
Claim 7 depends from claim 6, which, in turn, depends from claim 4.
Claim 6 recites “filling individual servings of the noodle strings in a mold
form before drying the noodle strings” and claim 7 recites “wherein the
drying further comprises drying and swelling the noodle strings by using hot
air at a temperature of 100ºC to 150ºC and air flow rate of 5 m/s to 25 m/s.”
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Appeal Br. 20 (Claims Appendix). Claim 8 also depends from claim 6 and
requires “pre-drying the noodle strings” followed by the drying according to
claim 7. Id.
Appellant argues the rejection of dependent claims 7 and 8 over Ross,
Tachibe, Fresh Loaf, SJU Rheology, Takizawa, and Nagayama as a group.
Appeal Br. 15. We select claim 7 as representative of the group and claim 8
stands or falls with claim 7. See 37 C.F.R. § 41.37(c)(1)(iv) (2019).
Appellant contends the Examiner erred in finding the combination
discloses the claimed method because Nagayama does not disclose drying a
dough containing crosslinked gelatinized potato starch having the viscosity
property recited in claim 4. Appeal Br. 15. Appellant’s argument does not
persuade us that the Examiner reversibly erred in rejecting claim 7 as
obvious over the cited prior art references because the Examiner relies on
Tachibe for the claimed starch having the recited properties and Nagayama
for the drying step required by claim 7. Final Act. 9–10; Ans. 18. Therefore,
Appellant’s argument is not persuasive of error because it does not address
the Examiner’s rejection of claim 7. Accordingly, we affirm the Examiner’s
rejection of claims 7 and 8 under 35 U.S.C. § 103 over the cited prior art
references.

CONCLUSION
For the above reasons we uphold the Examiner’s decision to reject
claims 4–8.

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DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C.
§ Reference(s)/Basis Affirmed Reversed
4–6 103
Ross, Tachibe, Fresh
Loaf, SJU Rheology,
Takizawa
4–6
7, 8 103
Ross, Tachibe, Fresh
Loaf, SJU Rheology,
Takizawa,
Nagayama
7, 8
Overall
Outcome
4–8
TIME PERIOD FOR RESPONSE
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). See
37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED