Yifang Chu et al.

Patent Trials and Appeals Board

Aug 21, 2019

15184609 - (D) (P.T.A.B. Aug. 21, 2019)

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.
15/184,609 06/16/2016 YiFang CHU CFLAY.01034 1024
110933 7590 08/21/2019
Carstens & Cahoon, LLP
PO Box 802334
Dallas, TX 75380
EXAMINER
WATTS, JENNA A
ART UNIT PAPER NUMBER
1791
MAIL DATE DELIVERY MODE
08/21/2019 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
Ex parte YIFANG CHU, JODEE JOHNSON, KIMBERLY KRENEK,
MARK NISBET, and YANG PAN
Appeal 2018-008594
Application 15/184,609
Technology Center 1700
Before BRADLEY R. GARRIS, CATHERINE Q. TIMM, AND
LILAN REN, Administrative Patent Judges.
TIMM, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant,1 Frito-Lay North America,
Inc., appeals from the Examiner’s decision to reject claims 1–19, 21, and 22
under 35 U.S.C. § 103(a) as obvious over Folz2, and as evidenced by

1 We use the word “Appellant” to refer to “Applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies the real party in interest as Frito-Lay
North America, Inc. Appeal Br. 2.
2 Folz et al., WO 2012/120154 A2, published Sept. 13, 2012. The Examiner
relied on and cites to the English equivalent, US 2015/0037469 A1,
published Feb. 5, 2015 without objection by Appellant. Thus, we also cite to
the English equivalent.
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Erejuwa3, and the decision to reject claims 20 and 23 over those references
further in view of Penna4. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
The claims are directed to a dough for creating a snack product (see,
e.g., claim 1), a dough-based food product (see, e.g., claim 8), and a method
for making a dough-based food product (see, e.g., claim 16). The dough and
food product contain rapidly available glucose (RAG) and slowly available
glucose (SAG) in a RAG:SAG ratio of less than 4.2. See, e.g., claims 1, 8,
and 16. According to the Specification, the food product is crunchy and the
low RAG:SAG ratio is correlated with an improved glycemic response.
Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. A dough for creating a snack product having a rapidly
available glucose and slowly available glucose (RAG:SAG)
ratio of less than 4.2, the dough comprising:
a source of rapidly available glucose (RAG) and slowly
available glucose (SAG);
a viscosity-building ingredient coated with oil;
a starch gelatinization inhibitor; and
a binding agent that binds ingredients of the dough to
form a food matrix, wherein the
binding agent comprises between 5–25% of a batch
weight of the dough;

3 Erejuwa et al., Honey – A Novel Antidiabetic Agent, Int J. Biol. Sci. 2012,
8(6):913–934, published July 7, 2012.
4 Penna et al., US 2012/0258234 A1, published Oct. 11, 2012.
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wherein the dough comprises a moisture content between
10–23%.
Appeal Br. 12 (claims appendix).
OPINION
Appellant limits the arguments to the rejection of claims 1, 15, and 16.
Appeal Br. 6–10. Thus, we focus on the rejection of those claims.
Claim 1
Beginning our review with claim 1, we note that there is no dispute
that Folz, as found by the Examiner, suggests forming a dough for creating a
snack product with a RAG:SAG ratio of less than 4.2. Compare Final 4–5,
with Appeal Br. 6–8. As pointed out by Appellant, Folz “is directed to a
method of forming ready-to-eat biscuits having a large amount of slow
release energy.” Appeal Br. 6; see also Folz ¶ 15. Nor is there any dispute
that Folz teaches that the dough contains a source of RAG and SAG (flour
such as refined soft wheat flour (Folz ¶¶ 39, 118)), a viscosity-building
ingredient (whole grain cereal flakes such as wholegrain oat flakes), oil that
coats the viscosity-building agent during mixing so that the flours retain less
water, starch gelatinization inhibitor (sugar such as lactose), and water.
Compare Final 5–7, with Appeal Br. 6–8.
It is the Examiner’s findings with regard to the binding agent and
moisture content that are at issue. Compare Final 6–7, and Ans. 15–18, with
Appeal Br. 6–8, and Reply Br. 1–3.

5 Throughout the briefs, Appellant appears to cite to the International
Application, WO 2012/120154 A2. Because the Examiner cites to the U.S.
Pre-grant Application, US 2015/0037469 A1 as an English language
equivalent without objection by Appellant, we cite to the U.S. document.
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Claim 1 requires a binding agent that comprises between 5–25% of a
batch weight of the dough. The Examiner finds that the fat and water in
Folz’s dough would function as a binding agent. Final 7. The Examiner
also finds that Folz discloses that the dough can contain honey and, as
evidenced by Erejuwa, honey contains isomaltulose, which is one of the
binding agents disclosed by Appellant. Final 7.
Appellant contends that the Examiner is improperly relying on fat
and water to satisfy multiple distinct components of the claim. Appeal Br. 7.
Thus, we must determine whether claim 1 recites the inclusion of fat and
water separately in such a way that requires they be separate and distinct
components from the binding agent. We determine that fat and water are not
so claimed.
Where a claim lists elements separately, the clear implication of the
claim language is that those elements are distinct components of the claimed
invention. Becton Dickinson & Co. v. Tyco Healthcare Group, LP, 616 F.3d
1249, 1254 (Fed. Cir. 2010). But the claim must, in fact, list the elements
separately in the manner necessary to result in the implication.
Claim 1 lists a source of RAG and SAG, a viscosity-building
ingredient, a starch gelatinization inhibitor, and a binding agent as separate
ingredients. However, claim 1 does not list oil and water separately in a
manner that indicates they are separate ingredients distinct from the binding
agent.
As to the oil, the claim requires the viscosity-building ingredient be
coated with oil, but the claim does not list oil as a separate ingredient. The
words “coated with oil” convey a location of oil within the dough, but the
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words “coated with oil” do not exclude the oil as being present as a binding
agent.
As to the water, the claim recites a moisture content, but does not list
water as a separate ingredient. Although the moisture content must be
between 10–23%, the claim does not limit which components result in the
moisture content. In fact, the moisture content appears to refer to the total
amount of water in the dough no matter its origin. See, e.g., Spec. ¶ 7 (“The
binding agent bonds the ingredients to form a food matrix, and includes an
optional amount of added water if necessary to raise the moisture content of
the dough to a range between 5 – 27% and more particularly between 10 –
23%.” (emphasis added)).
As found by the Examiner, “Folz teaches the dough can include up to
10% water when using a soft flour (Paragraph 41), which meets the claimed
limitation.” Final 6. We also agree with the Examiner water from other
components would contribute to the moisture content of the dough and Folz
suggests creating a dough with a moisture content within the 10–23% range
of claim 1. Final 7.
We also agree with the Examiner’s determination that claim 1 does
not limit the binding agent to a single compound. Ans. 17; see also claim 4
(“binding agent comprises one or more . . .”). As found by the Examiner,
Folz teaches including an amount of water (4.5%), fat (12.2%), and
isomaltulose (in the honey) within the 5–25% range of the claim. Final 7;
Folz Example 2 at ¶ 118.
The burden of precise claim drafting is on Appellant. In re Morris,
127 F.3d 1048, 1056 (Fed. Cir. 1997). Appellant’s manner of claiming the
ingredients based on their functionality, claiming the location of oil, and
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claiming a range of moisture content results in a broad claim that sweeps in
the prior art. See In re Hiniker Co., 150 F.3d 1362, 1369 (Fed.Cir.1998)
(citing Giles Sutherland Rich, Extent of Protection and Interpretation of
Claims—American Perspectives, 21 Int'l Rev. Indus. Prop. & Copyright L.
497, 499 (1990) (“The U.S. is strictly an examination country and the main
purpose of the examination, to which every application is subjected, is to try
to make sure that what each claim defines is patentable. To coin a phrase,
the name of the game is the claim.”)).
The problem here is that claim 1 is not as narrow as argued by
Appellant. Appellant is free to amend claim 1 to align it with Appellant’s
argument during further prosecution. See In re ICON Health and Fitness,
Inc., 496 F.3d 1374, 1378–79 (Fed. Cir. 2007) (“Construing claims broadly
during prosecution is not unfair to the applicant . . ., because the applicant
has the opportunity to amend the claims to obtain more precise claim
coverage.”).
Claim 15
Claim 15 depends from claim 8. Claim 8 is directed to a dough-based
food product. The product has the dough ingredients of claim 1. Claim 15
requires the hardness of the dough-based food product be between 24,000–
37,000 grams.
Appellant has not persuaded us of a reversible error in the Examiner’s
determination that Folz teaches a biscuit product would have reasonably
been expected to have a hardness in the 24,000 to 37,000 gram range of
claim 15. Compare Final 10, and Ans. 18–19, with Appeal Br. 8, and Reply
Br. 3–4.
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As we discussed above, a preponderance of the evidence supports the
Examiner’s finding that the dough moisture content and ingredients are
similar to those claimed.
Appellant contends that the Specification attributes hardness, at least
in part, to baking temperatures and Folz teaches a different manner of baking
such that Folz’s biscuit would not necessarily have a similar hardness.
Appeal Br. 8 (citing Spec. ¶ 17). But, as pointed out by the Examiner, the
Specification does not relate a particular baking method to hardness.
Ans. 19. The paragraph of the Specification cited by Appellant discloses:
Texture can be controlled by ingredient selection and
also processing parameters. For example, in one embodiment,
incorporating double-acting baking powder was added in the
range of (0.5–0.8%) to provide a cracker with a lighter, crispier
texture. In another embodiment, high temperature baking
(greater than or equal to 275°F) results in more air pockets,
which provides a lighter structure with less hardness.
Spec. ¶ 17 (pp.22–23). High temperature baking in combination with
double-acting baking powder may affect hardness, but there is no persuasive
evidence that one of ordinary skill in the art following the recipe of Folz to
obtain a biscuit with the low moisture content disclosed in Folz would have
arrived at a biscuit with a hardness outside of the 24,000–37,000 gram range
of claim 15. Folz describes the ready-to-eat biscuit as a baked, edible,
cereal-based product typically having low moisture and a crispy texture.
Folz ¶ 21. The biscuits are, according to Folz, typically small and leavened
with baking powder, baking soda, or sometimes yeast. Id. A biscuit must
have some hardness to be classified as a biscuit. The Examiner’s
determination is reasonable and shifts the burden to Appellant to show, in
fact, Folz’s biscuits, such as that of Example 2, would have a hardness
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outside the range of the claim. See In re Best, 562 F.2d 1252, 1255 (CCPA
1977).
Claim 16
Claim 16 is directed to a method for making a dough-based food
product. Claim 16 reads:
16. A method for making a dough-based food product,
the process comprising:
combining selected dry ingredients to form a dry mix;
adding oil to the dry mix to form a cold roux;
mixing a binder slurry into the cold roux to form a
dough, wherein the binder slurry comprises a binding agent,
wherein the dough has a batch weight, and wherein the dough
comprises a moisture content between 10–23%;
cooking the dough to form the dough-based food product,
wherein the dough-based food product comprises a final
moisture content between 2.0 – 4.0% and a RAG:SAG ratio of
less 10 than 4.2.
Appeal Br. 16 (claims appendix) (emphasis added).
The Examiner acknowledges that Folz may not specifically teach
adding oil to the dry mix to form a cold roux before mixing the binder slurry
into the cold roux to form a dough. Final 11. Folz discloses “mixing a
cereal flour comprising the wholegrain cereal flour with fat and sugar and
with at most 8 wt % added water relative to the total weight of the dough, to
form a dough,” without placing any emphasis on the order of mixing. Folz
¶ 17; see also ¶¶ 71 and 113 and Fig. 1.
Appellant contends that “in Folz’s method, because all the ingredients
are mixed contemporaneously, the starches in the starch-containing
ingredients have already been exposed to water, increasing the amount of
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gelatinization despite the fact that the presence of oil might cause the flours
to retain less water.” Appeal Br. 9. According to Appellant, the claimed
order of mixing has an effect on reducing the rate of starch digestion, a point
that the Examiner has not addressed. Id.
However, we agree with the Examiner that the prior art appears to be
doing the same thing that Appellant is doing. Ans. 19. Although Folz does
not teach forming a cold roux before mixing with a binder slurry, Folz
discloses that it was known in the art to increase the fat content of the dough
to enable processing at lower moisture levels. According to Folz, “[t]he fat
coats the cereal flours so that the flours retain less water; the less water that
is retained, the more water is available to lubricate the dough.” Folz ¶ 5.
Contrary to Appellant’s arguments in the Reply Brief (Reply Br. 4), one of
ordinary skill in the art would understand this to mean that the fat restricts
water from penetrating the oil coating on the flour so water remains
unabsorbed by the flour and is instead available to lubricate the dough. In
order for the oil to coat the flour and perform its necessary function, it must
be present on the flour before the water can penetrate the flour.
In determining obviousness, the question to be asked is “whether the
improvement is more than the predictable use of prior art elements according
to their established functions.” KSR, 550 U.S. at 416. Where it appears
from the prior art that different orders of mixing will accomplish the same or
substantially the same predictable result, the burden is on the applicant to
show that a change in the order of mixing is critical for producing an
unexpected result. See In re Hampel, 162 F.2d 483, 485 (CCPA
1947)(“There is nothing in the instant record which indicates that the
particular order of steps produces results differing in any way from those
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which would be brought about if another order of steps were followed”); see
also In re Burhans, 154 F.2d 690, 692 (CCPA 1946) (upholding the
rejection “in the absence of any proof in the record that the order of
performing the steps produces any new and unexpected results”). We agree
with the Examiner that Appellant has not presented evidence commensurate
in scope with the claims showing that a change in order produces a different
result. Ans. 19–21.
DECISION
The Examiner’s rejection is affirmed.
Claims
Rejected
Basis  Affirmed Reversed
1–19, 21,
and 22
§ 103 Folz, as
evidenced by
Erejuwa 
1–19, 21,
and 22

20 and 23 § 103 Folz, as
evidenced by
Erejuwa, and
further in view of
Penna
20 and 23
Outcome 1–23
FINALITY AND 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). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED