Ex Parte HILLIARD et al

Patent Trial and Appeal BoardNov 6, 2018

14783652 (P.T.A.B. Nov. 6, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/783,652 10/09/2015 110933 7590 11/06/2018 Carstens & Cahoon, LLP PO Box 802334 Dallas, TX 75380 FIRST NAMED INVENTOR Greg HILLIARD 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.40886 7724 EXAMINER PETERSON, KENNETH E ART UNIT PAPER NUMBER 3724 MAIL DATE DELIVERY MODE 11/06/2018 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 GREG HILLIARD, FELIX STAN, DRAGOS ENACHE, PETR KOVALEV, and JOSE MATIAS HENRIQUES Appeal2018-007849 Application 14/783,652 1 Technology Center 3700 Before MICHAEL C. ASTORINO, CYNTHIA L. MURPHY, and AMEE A. SHAH, Administrative Patent Judges. ASTORINO, Administrative Patent Judge. DECISION ON APPEAL The Appellants appeal from the Examiner's decision rejecting claims 1-7 and 18-24 pursuant to 35 U.S.C. Â§ 134(a). 2 We have jurisdiction over the appeal under 35 U.S.C. Â§ 6(b ). We REVERSE. 1 According to the Appellants, Frito-Lay Trading Company GmbH is the real party in interest. Appeal Br. 2. 2 Claims 8-17 have been withdrawn. Appeal Br. 2. Appeal2018-007849 Application 14/783,652 STATEMENT OF THE CASE Claimed Subject Matter Claim 1, the sole independent claim, is representative of the subject matter on appeal and is reproduced below. 1. A method of using a lubricating liquid in cutting potatoes into a plurality of pieces, the method comprising the steps of: (a) providing a potato to a cutting implement having a cutting edge for cutting a potato; (b) supplying a lubricating liquid onto the cutting implement to form a liquid film over at least part of the cutting edge, the lubricating liquid comprising an aqueous dispersion of an antifoam additive; and ( c) cutting the potato using the lubricated cutting edge to cut a potato piece from the potato; whereby a reduction in a yield loss associated with cutting the potato is reduced relative to a yield loss when cutting the potato without supplying a lubricating liquid that has the aqueous dispersion of the antifoam additive, over at least part of the cutting edge. Rejections I. Claims 1--4, 7, 18-21, and 24 are rejected under 35 U.S.C. Â§ 103 as being unpatentable over Applicant Admitted Prior Art (AAP A) in view of Wachala (US 3,990,905, issued Nov. 9, 1976). Final Act. 2-3; Ans. 2--4. II. Claims 1-7 and 18-24 are rejected under 35 U.S.C. Â§ 103 as being unpatentable over AAP A in view of Wachala, and in further view of Giraldo et al. (US 6,558,725 B2, issued May 6, 2003) ("Giraldo"). See Final Act. 3--4; Ans. 4--5. III. Claims 1--4, 7, 18-21, and 24 are rejected under 35 U.S.C. Â§ 103 as being unpatentable over AAPA in view ofWachala, and in further 2 Appeal2018-007849 Application 14/783,652 view ofThemistocle (FR 2,842,821, pub. Jan. 30, 2004) and Wei et al. (CN 103013638 A, pub. April 3, 2013) ("Wei"). See Ans. 5. ANALYSIS Each of the Examiner's rejections of independent claim 1 rely on paragraph 4 of the Specification (i.e., AAP A), which describes: During the slicing process, potatoes are fed to a slicing station where a high speed rotating slicer head, including a slicing blade, cuts the potatoes into slices. A water supply is typically used within the slicing operation to help clean the slicer head during operation and provide some form of lubrication for the cutting process. See Final Act. 2--4; Ans. 2-5. The Examiner finds that AAPA "discloses a method of slicing potatoes having all of the recited limitations [ of claim 1] except there is no antifoam additive in the aqueous lubricant." Final Act. 2; see Ans. 2. Accordingly, the Examiner acknowledges that AAP A does not teach portions of steps "b" and "c" of claim 1; i.e., "(b) supplying a lubricating liquid onto the cutting implement to form a liquid film over at least part of the cutting edge, the lubricating liquid comprising an aqueous dispersion of an antifoam additive" and "( c) cutting the potato using the lubricated cutting edge to cut a potato piece from the potato." The Examiner turns to Wachala to remedy the deficiency of AAP A with regard to the subject matter of claim 1. The Examiner finds "W achala has a washer, a cutter and a diffuser (all three mentioned in paragraph extending from line 46 to 59 in column 1 )" and "suggests adding an antifoaming additive 'at or prior to any point in the food processing operation to which foaming problems might arise' (lines 50-52, column 2)." Ans. 2-3 ( emphasis omitted); see Final Act. 2. 3 Appeal2018-007849 Application 14/783,652 The Examiner determines: It would have been obvious to one of ordinary skill in the art to have provided the [ A ]AP A with an antifoaming additive at all steps, as taught by Wachala and many others, in order to avoid foaming of the water. This would include adding the antifoam additive to the aqueous blade lubricating step, as the motion of the lubricant and potatoes through the blades would create foam at the slicing location, and Wachala explicitly states that his composition should be added anywhere where foaming arises. The motivation for this modification has already been set forth above, namely to prevent wastage and reduced processing rates. Ans. 3 ( emphasis added) ( citing Wachala, col. 1, 11. 7-11 ); see id. at 6 ("[ A ]AP A applies an aqueous lubricant to the blades, which would cause foaming.). The Appellants argue persuasively that the Examiner's reasoning "appears to lean on the notion that foaming 'might' arise at the cutting edge," which is speculative. Reply Br. 3, 5; see also Appeal Br. 7-8. Also, the Appellants argue persuasively that the "[ A ]AP A does not indicate that its 'aqueous lubrication' causes foaming." Reply Br. 5. We agree. In this case, the Examiner's reasoning is based on an unsupported finding that cutting a potato while using water as a lubricant may cause foaming problems. Thus, we do not sustain the Examiner's rejection of claims 1--4, 7, 18- 21, and 24 under 35 U.S.C. Â§ 103 as being unpatentable over AAP A in view ofWachala. The remaining rejections are based on AAP A and Wachala in combination with Giraldo or Themistocle and Wei. These rejections rely on the same unsupported finding as discussed above, which are not cured by the additional findings and/or reasoning of the remaining rejections. Thus, we do not sustain the rejections under 35 U.S.C. Â§ 103 of: claims 1-7 and 18- 4 Appeal2018-007849 Application 14/783,652 24 as being unpatentable over AAP A in view of Wachala, and in further view of Giraldo; and claims 1--4, 7, 18-21, and 24 as being unpatentable over AAP A in view of Wachala and in further view of Themistocle and Wei. DECISION We REVERSE the Examiner's decision rejecting claims 1-7 and 18-24. REVERSED 5