Ex Parte Barnett et al

Patent Trial and Appeal Board

Nov 16, 2012

11669580 (P.T.A.B. Nov. 16, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/669,580 01/31/2007 Michelle Latrese Barnett CFLAY.00390 5638
22858 7590 11/16/2012
CARSTENS & CAHOON, LLP
P.O. Box 802334
DALLAS, TX 75380-2334
EXAMINER
WILLIAMS, LELA
ART UNIT PAPER NUMBER
1792
MAIL DATE DELIVERY MODE
11/16/2012 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 MICHELLE LATRESE BARNETT,
THOMAS GEORGE CROSBY, and
DAVID GUAJARDO-FLORES
____________

Appeal 2011-004988
Application 11/669,580
Technology Center 1700
____________

Before PETER F. KRATZ, MARK NAGUMO, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

KRATZ, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1, 3-5, 7-15, and 24-29. We have
jurisdiction pursuant to 35 U.S.C. § 6.

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Application 11/669,580

2
Appellants’ claimed invention is directed to a method of making a
fried legume snack food, wherein intact hulls of the legume are hydrated,
surface moisture removed, the legumes are fried, then further cooked in a
non-oil environment, wherein the hulls are pierced before frying .
Alternatively, the frying step includes two sequential frying stages with an
intervening resting period, and the hull piercing step is optional.
Claims 1 and 24 are illustrative and reproduced below:
1. A method for making a fried legume snack, said
method comprising the steps of:
a) hydrating whole legumes with hulls intact;
b) removing surface moisture from the legumes;
c) frying said legumes to an oil content of the legumes of
10% to 20% by weight; and
d) further cooking the partially fried legumes of step c) in
a non-oil environment to a moisture level of about 1 % to about
4% by weight, wherein the hulls of the legumes are physically
pierced prior to the frying step c).
24. A method for making a fried legume snack, said
method comprising the steps of:
a) hydrating whole legumes with hulls intact;
b) removing surface moisture from the legumes;
c) frying said legumes to an oil content of the legumes of
10% to 20% by weight; and
d) further cooking the partially fried legumes of step c) in
a non-oil environment to a moisture level of about 1 % to about
4% by weight, wherein the frying step c) further comprises at
least two sequential frying stages with a resting period
interposed between said at least two sequential frying stages.
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The Examiner relies on the following references as prior art evidence1
in rejecting the appealed claims:
Morris 2,584,150 Feb. 5, 1952
Thompson 3,203,808 Aug. 31, 1965
Mader 3,738,848 June 12, 1973
Sijbring 3,812,775 May 28, 1974

Barry Farm Foods, Fried Green Peas (2005)
http://www.barryfarm.com/nuti_info/snacks (last visited Aug. 10, 2009).
Beans (Legumes) (Clovegarden),
http://www.clovegarden.com/ingred/bp_legume.html (last visited Feb. 25,
2010).
Grain Processing Corporation, Pure Food Starches,
http://www.grainprocessing.com/food/starchinfo.html (last visited
Feb. 25, 2010).
Kariba Farms, Product Details (2003),
karibafarms.com/ProductCart/pc/viewPrd.asp?idcategory=121&idpro
duct=104.
The Examiner maintains the following grounds of rejection:
Claims 1, 3, 4, 5, 7, 8, 9, 11, and 12 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Morris in view of Thompson.
Claim 10 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Morris in view of Thompson and Fried Green Peas (Barry
Farm Foods).2

1 Appellants do not challenge the availability of the contents of the applied
references as prior art to the claimed subject matter.
2 While not listed in the first sentence of the stated rejection, the Examiner
additionally relies on Mader and Clovegarden. Appellant presents
arguments concerning the Mader and Clovegarden references (Reply Br. 2;
App. Br. 12). Consequently, we consider these latter two references as
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Claims 13-15 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Morris in view of Thompson and Kariba Farms.
Claims 24-28 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Morris in view of Sijbring.3
Claim 29 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Morris alone or in view of Sijbring, and Kariba Farms.
We affirm the stated rejections for substantially the reasons set forth
by the Examiner in the Answer.4 In so doing, we substantially adopt the
Examiner’s factual findings and rebuttal of Appellants’ argument as our
own. We add the following for emphasis.
Concerning the first stated rejection, Appellants argue the rejected
claims together as a group. Accordingly, we select claim 1 as the
representative claim on which we decide this appeal as to this ground of
rejection.
There is no reasonable dispute that Morris provides a method of
making a fried legume food product wherein whole legumes (navy, pinto,
cranberry beans, etc.) are hydrated via soaking, moisture is removed from

being before us in considering this ground of rejection as maintained by the
Examiner.
3 The Examiner inadvertently omitted listing claims 27 and 28 in the first
sentence of this rejection (Ans. 7). This is a harmless oversight as the
Examiner addresses claims 27 and 28 in the body of the rejection and
Appellants acknowledge that these latter claims are subject to the
obviousness rejection over the cited combination of references (Ans. 9; App.
Br. 4, Item No. 5).
4 The assertion alleging that the Examiner may have improperly excluded
an Information Disclosure Statement filed May 07, 2010 from consideration
appears to be moot (App. Br. 5: see Communication mailed November 26,
2010). In any event, this matter is subject to petition, not appeal. Hence, it is
not before us for review.
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the legumes after partial cooking via draining, the legumes are fried and the
fried legumes are further cooked (roasted) as found by the Examiner (Ans. 4;
Morris, col. 1, l. 9- col. 3, l. 6). Morris discloses that the roasting step can be
conducted by placing the fried beans on sheets of absorbent paper to reduce
the oil content of the product (sentence bridging columns 2 and 3). While
Morris does not specify the oil content of the legumes after frying or the
moisture content after cooking, we agree with the Examiner that one of
ordinary skill in the art would have known to control the oil amounts taken
up during frying and the residual moisture levels attained upon roasting in a
manner to contribute to the taste, texture, and other organoleptic properties
of the food product and would have readily arrived at moisture values and
oil levels in the roasting and frying steps, respectively, that are within the
claimed ranges upon the exercise of routine skill in so doing for reasons
advanced by the Examiner (Ans. 4-5).
As for the hull piercing step required by claim 1, we likewise agree
with the Examiner that the addition of such a step to the method of Morris
would have been prima facie obvious to one of ordinary skill in the art in
light of the additional teachings of Thompson. In this regard, there is no
dispute that Thomson teaches a method of preparing beans and peas for
cooking that entails piercing the hulls of the legumes prior to cooking, such
as after soaking the legumes to hydrate and soften them (id. at 5; Thompson,
col. 1, ll. 25-31 and col. 2, ll. 4-24). According to Thompson and as found
by the Examiner, the piercing step permits moisture (steam) to escape during
cooking so as to retain the integrity of the legumes and their individuality
(Ans. 5; Thompson, col. 1, ll. 32-34 and 43-45).
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In light of these findings by the Examiner, we agree with the
Examiner that one of ordinary skill in the art would have been led to employ
a piercing procedure, such as taught by Thompson in the method of Morris
in order to better insure that the skins of the beans employed in Morris do
not rupture, a consequence that Morris teaches should be avoided (Ans. 6, 10
and 1; Morris, col. 2, ll. 13-15).
Appellants maintain that the Examiner has not presented a prima facie
case of obviousness because Thompson represents non-analogous art to
Morris and/or the claimed method, there is a lack of incentive or suggestion
for one of ordinary skill in the art to combine the teachings of Morris and
Thompson, and Morris teaches away from the proposed combination (App.
Br. 7-11; Reply Br. 1 and 2).
These arguments and the supporting Affidavit of Michelle Barnett, a
named co-inventor, are not persuasive and lack merit for the reasons set
forth above and for reasons well-articulated by the Examiner (Ans. 4-6 and
10-13). From our perspective, these arguments appear to be premised on
incorrect and/or incomplete readings of the applied references’ teachings and
a lack of persuasive objective support in the tendered Affidavit of Michelle
Barnett (see generally Barnett Affidavit).
For example and not withstanding Appellants’ repeated observations
to the contrary (App. Br. 10-11; Reply Br. 1; Barnett Affidavit para. 6.),
Thompson discloses that the cooked bean or pea product can be subjected to
frying (col. 3, ll. 3-6). Thus, Thompson is clearly analogous art. Contrary to
Appellants’ assertions, the purpose of perforating legumes is to retain their
integrity and individuality as expressly taught by Thompson, not to rupture
them, a consequence desired to be avoided by Morris. Moreover,
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Appellants’ argument to the effect that making perforations as taught by
Thompson in the legumes of Morris would lead to a bursting of the skin of
the legumes of Morris, which is contrary to the desires of Morris, appears to
be a contention premised on meritless conjecture that is not only undercut by
Appellants’ Specification disclosure, it stands in striking contrast thereto
(App. Br. 10; Spec. 4, ll. 8-10). Accordingly and on this record, we agree
with the Examiner that Morris does not teach away from Thompson.
Appellants suggest via the arguments in the Briefs and the assertions
in the Barnett Affidavit that the pre-fry cooking step of Morris, which should
or would be expected to decrease the possibility of the splitting of the
legumes in the subsequent frying step, indicates a lack of motivation for one
of ordinary skill in the art to additionally employ the perforation technique
of Thompson for the same purpose (App. Br. 7 and 8; Barnett Affidavit,
paras. 7 and 8). However, Appellants have not supported the notion
underlying this argument; that is, that an ordinarily skilled artisan would not
have been led to use more than one rupture preventing technique to enhance
the prevention of the legume rupturing in the method of Morris. In this
regard, we agree with the Examiner that the subjective opinion in the Barnett
Affidavit does not substantiate the arguments with credible objective
evidence reasonably establishing that using the perforation technique of
Thomson in addition to the partial cooking step of Morris would have been
expected to be a contraindicated step and/or a step lacking any useful
purpose by one of ordinary skill in the art based on the combined teachings
of Morris and Thompson (see Ans. 11-13 and 17).
On this record, we shall affirm the Examiner’s first stated rejection.
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Claim 10, which is subject to the second stated rejection, is a
dependent claim, which requires that the legumes employed in the method of
claim 1 consist of peas. In addition to arguments made with respect to the
Examiner’s base combination of Morris and Thompson, as discussed above
and in the Examiner’s Answer with respect to claim 1, Appellants further
argue that the additionally cited Barry Farms Food, Mader, and Clovegarden
references relied upon by the Examiner do not support the Examiner’s
proposed substitution of peas for beans as the legume to be cooked and fried
in the process of Morris as a modification that would have been suggested to
one of ordinary skill in the art (App. Br. 11-12; Reply Br. 2). We are not
persuaded by the arguments presented for reasons articulated by the
Examiner (Ans. 6, 7, 13, and 14). In this regard, we further note that
Thompson teaches that both peas and beans are legumes that can be
alternatively employed for making a cooked storage stable product without
losing their individuality (col. 1, ll. 10-24 and col. 2, ll. 4-21). Given the
teachings of the applied references, we agree with the Examiner that
substituting peas for the beans of Morris would have been well within the
skill level of the ordinarily skilled artisan as this is merely the replacement
of one legume with another for forming a fried snack food product. As
indicated by the Examiner, one of ordinary skill in the art would have been
well aware that peas are different than beans and would have adjusted the
cooking and frying times accordingly (Ans. 6, 7, 13, and 14).
It follows that we shall affirm the Examiner’s second stated rejection.
Concerning the Examiner’s third through fifth rejections, we likewise
agree with the Examiner’s obviousness assessments and are not persuaded
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by the additional arguments furnished by Appellants for reasons stated by
the Examiner in the Answer (id. at 7-10 and 14-17).
In this regard and concerning the third rejection, Appellants argue the
rejected claims together as a group (App. Br. 12-13). Hence, we select claim
13 as the representative claim. We disagree with Appellants’ assertion that
one of ordinary skill in the art would have had no incentive to employ starch
(as required by claim 13), such as wheat and/or rice flour, as a covering for
the product fried legumes, such as the fried beans (or peas) of the modified
Morris process (App. Br. 13; Reply Br. 3). For reasons stated by the
Examiner and as taught by Kariba Farms, one of ordinary skill in the art
would have readily recognized that starch, such as wheat or rice flour, is a
known additional or optional coating that is suitable for covering the surface
of a fried legume snack food, such as fried peas (Ans. 7 and 14-15).
Concerning the fourth stated rejection and rejected claims 24-26
which are argued together as a group, we select claim 24 as the
representative claim. Independent claim 24 requires sequential frying steps
after hydration and before further cooking in a non-oil environment, wherein
a resting step is interposed between the sequential frying stages. The
Examiner relies on Sijbring in addition to Morris (Ans. 7-9). In this regard,
Sijbring discloses the preparation of fried edible products using two
sequential frying stages with the second frying stage being conducted under
reduced pressure and temperature as compared to the first stage so as to
achieve a desirable color of the fried product while forming a crisp dry
product (col. 2, l. 54-col. 3, l. 29). Based on the teachings of Morris with or
without Sijbring, the Examiner has determined that it would have been
obvious to one of ordinary skill in the art to conduct the pre-cooking/frying
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operations of Morris using sequential frying steps with an intervening
resting time between the separate stages to control the moisture and oil
contents of the product while achieving a desired coloration during these
cooking/frying steps (Ans.8-9; Morris, col. 2, ll. 27-30 and 45-55).
Appellants argue that the purpose of the multiple frying steps and the
intervening resting step of claim 24 is to avoid rupture of the legume hulls
and the Examiner’s stated motivation for modifying the method of Morris to
include multiple frying steps does not address this purpose and goes against
the requirements and intended benefits of the claim 24 method steps (App.
Br. 16).
However and as basically explained by the Examiner, a resting period
of some duration would have been involved in performing the sequential
frying steps suggested by the combined teachings of Morris and Sijbring
(Ans. 15 and 16). In this regard and to the extent the Examiner combines the
prior art of record for reasons other than for the purpose of further enhancing
rupture resistance of the legumes of Morris, we note that the reason for
combining the prior art need not be the same as the Appellants’ reason. KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007) (“any need or problem
known in the field of endeavor at the time of invention and addressed by the
patent can provide a reason for combining the elements in the manner
claimed”); In re Kemps, 97 F.3d 1427, 1430 (Fed. Cir. 1996) (“the
motivation in the prior art to combine the references does not have to be
identical to that of the applicant to establish obviousness”). While Sijbring
may be primarily concerned with frying a starch food product, such as
potatoes, Appellants have not established that the coloration and drying
benefits suggested by Sijbring would not also accrue to the legume frying
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method of Morris (Reply Br. 6). In this regard, Sijbring indicates that the
teachings therein are not limited to the frying of potatoes (col. 2, ll. 20-24).
As for separately argued claims 27 and 28, we agree with the
Examiner that Morris reasonably suggests hydration moisture levels
corresponding to the moisture levels required by claims 27 and 28 (Ans. 9).
On this record, we shall sustain the Examiner’s fourth stated rejection.
As for the separate rejection of dependent claim 29, Appellants’
arguments concerning the addition of starch are not persuasive for reasons
set forth in the Examiner’s Answer and as discussed above with respect to
the third stated rejection.

CONCLUSION/ORDER
The Examiner’s decision to reject the appealed claims is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 CFR § 1.136(a).

AFFIRMED

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