Ex Parte TANAKA et al

Patent Trials and Appeals BoardJan 10, 2019

15026501 - (D) (P.T.A.B. Jan. 10, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 15/026,501 03/31/2016 Mitsuru TANAKA 52835 7590 01/14/2019 HAMRE, SCHUMANN, MUELLER & LARSON, P.C. 45 South Seventh Street Suite 2700 MINNEAPOLIS, MN 55402-1683 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. 12844.0195USWO 4250 EXAMINER TRAN, LIEN THUY ART UNIT PAPER NUMBER 1793 NOTIFICATION DATE DELIVERY MODE 01/14/2019 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): PTOMail@hsml.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MITSURU TANAKA, TOSHIO YOSHINUMA, and HIROUMI ISHIKAWA Appeal2018-009193 Application 15/026,501 1 Technology Center 1700 Before ADRIENE LEPIANE HANLON, CHRISTOPHER C. KENNEDY, and JENNIFER R. GUPTA, Administrative Patent Judges. HANLON, Administrative Patent Judge. DECISION ON APPEAL A. STATEMENT OF THE CASE The Appellants filed an appeal under 35 U.S.C. Â§ 134(a) from an Examiner's decision finally rejecting claims 1, 3, and 5-8. We have jurisdiction under 35 U.S.C. Â§ 6(b). We AFFIRM. 1 The real party in interest, and the Applicant, is said to be NISSIN FOODS HOLDINGS CO., LTD. Appeal Brief dated May 21, 2018 ("App. Br."), at 2. Appeal2018-009193 Application 15/026,501 The claims on appeal are directed to instant noodles and a method for producing instant noodles. The method comprises the step of treating, with superheated steam, raw noodle strings prepared from a noodle dough comprising a powder fat or oil in an amount from 1.0 to 3.0 wt% relative to the weight of the main raw material powder, wherein the temperature of the superheated steam is in a range from 120 to 200Â°C. Claims 1 and 8 are reproduced below from the Claims Appendix to the Appeal Brief. 1. A method for producing instant noodles, comprising: treating, with superheated steam, raw noodle strings prepared from a noodle dough comprising a fat or oil in a solid powder form in an amount from 1.0 to 3.0 wt% relative to weight of a main raw material powder, wherein the fat or oil in a solid powder form has an open tube melting point in a range from about 45 to 7 5 Â°C, and a temperature of the superheated steam to which the raw noodle strings are exposed is in a range from 120 to 200Â°C. App. Br. 20. 8. Instant noodles produced by the production method according to claim 1. App. Br. 21. The Examiner maintains the following rejections on appeal: (1) claims 1, 3, 5, 6, and 8 under 35 U.S.C. Â§ 103 as unpatentable over Hatsugai et al. 2 in view of Miyazaki et al.; 3 (2) claim 7 under 35 U.S.C. Â§ 103 as unpatentable over Hatsugai in view of Miyazaki, and further in view of Sakamaki et al.; 4 and 2 US 4,590,083, issued May 20, 1986 ("Hatsugai"). 3 US 8,236,363 B2, issued August 7, 2012 ("Miyazaki"). 4 US 7,402,326 B2, issued July 22, 2008 ("Sakamaki"). 2 Appeal2018-009193 Application 15/026,501 (3) claim 8 under 35 U.S.C. Â§ 102(a)(l) as anticipated by Hatsugai. B. DISCUSSION 1. Rejections (1) and (2) In the obviousness rejection on appeal, the Examiner finds that the difference between Hatsugai' s method for producing instant noodles and the method recited in claim 1 is that "[ w ]hile Hatsugai et al disclose steaming, they do not disclose super-heated steaming at the temperature recited in claim[] 1." Final Act. 2; 5 Ans. 4. 6 The Examiner, however, finds Miyazaki discloses a method for producing instant noodles wherein the noodle strands are treated with superheated steam at a temperature of 125-220Â°C. Final Act. 3; Ans. 4. The Examiner finds Miyazaki teaches that treatment with superheated steam "make[ s] the surfaces of the noodle strings soft and the center portions hard; these properties enable the instant noodles to resemble fresh noodles." Final Act. 3; Ans. 4. The Examiner concludes that it would have been obvious to one of ordinary skill in the art to use superheated steam in Hatsugai's method to improve the properties of the instant noodles as taught by Miyazaki. Final Act. 3; Ans. 5. The Appellants argue that "Hatsugai ... discloses that when the solid emulsifier and/or fat (or oil) is heated with the starch and melts, many tiny holes are formed on the surface and inside of the noodle strands." App. Br. 15-16. The Appellants argue that "these holes remain in the noodles even after the drying step," making the noodle strands porous and allowing the noodles to be quickly reconstituted. App. Br. 16. The Appellants argue that Miyazaki, on the other 5 Final Office Action dated September 20, 2017. 6 Examiner's Answer dated July 27, 2018. 3 Appeal2018-009193 Application 15/026,501 hand, "discloses that a surface of the noodle strings treated with superheated steam has a surface layer made of broken starch particles and has few irregularities, which is completely different from that treated with the conventional steaming." App. Br. 16. "If the noodle strings of Hatsugai were treated with superheated steam as taught in Miyazaki," the Appellants argue that "the many tiny holes on the surface would not be formed on the surface or inside of the noodle strings of Hatsugai." App. Br. 16. For that reason, the Appellants argue that one of ordinary skill in the art would not have combined Hatsugai and Miyazaki as proposed by the Examiner. App. Br. 16. The Appellants' argument is not persuasive of reversible error. Hatsugai discloses that "[i]n the steaming step, the starch is gelatinized and the solid emulsifier and/or fat (or oil) is melted so as to form many tiny holes on or within the strands." Hatsugai, col. 3, 11. 19--22 (emphasis added); see also id. at col. 3, 11. 40-44. The Appellants do not direct us to any evidence establishing that the superheated steam disclosed in Miyazaki would not have been expected to melt solid fat or oil and thus form tiny holes on or within the strands as disclosed in Hatsugai. 7 In that regard, we note that Miyazaki does not disclose using a solid fat or oil in combination with the superheated steam. Thus, Miyazaki alone is not evidence of what the combined teachings of Hatsugai and Miyazaki would have taught one of ordinary skill in the art. See Ans. 9--10. The Appellants also argue that "those skilled in the art would not expect the excellent properties of the instant noodles that the method of claim 1 can provide, e.g., softness of the surface, moderate elasticity of core, cooked feeling of the core, 7 See Spec. 15, Table 2 (showing that a substantial number of voids are formed with powder fat or oil and either a superheated steam treatment or a non- superheated steam treatment). 4 Appeal2018-009193 Application 15/026,501 and excellent reconstitution property and suppleness. " 8 App. Br. 6 ( emphasis added). For support, the Appellants rely on a Declaration of Mr. Toshio Yoshinuma ("Yoshinuma Declaration"). App. Br. 10-13. The Y oshinuma Declaration describes instant noodle Examples 1-24, which are said to have been prepared according to the method of Example 1-1 in the Appellants' Specification, except that the amount of powder fat or oil was varied from 0% to 6% and the temperature of the superheated steam was varied from 100Â°C to 200Â°C. Y oshinuma Deel. 2. Mr. Y oshinuma states that the "instant noodle samples were subjected to the sensory evaluation of the texture from five different perspectives (i.e., softness of the surface, moderate elasticity of the core, [ cooking feeling of the core,] reconstitution property, and suppleness) as conducted in Example 1 of the present specification (see paragraph [0066] on page 13) by ... five [trained] panelists." Yoshinuma Deel. 3. Mr. Yoshinuma states: When the exposing temperature of the superheated steam is in the range of 120-200 Â°C and the amount of the powder fat or oil in the noodle dough and thus in the raw noodle strings is in the range of 1.0- 3 .0 wt% as claimed, the average score of the five evaluated items is within the range of 4.0-5.0 consistently through the ranges (see the shadowed portion in Table B [at page 4 of the Yoshinuma Declaration] and Table C [ at page 5 of the Y oshinuma Declaration]. Even if the exposing temperature of the superheated steam is in the 8 The Appellants, on the other hand, state: It is reasonably expected that the noodle strings having few convex and concaves on their surface [ due to the superheated steam] and relatively large voids inside the noodle strings [ due to the powder fat or oil contacting the superheated steam] can contribute to excellent properties of the instant noodles made of the method of claim 1, e.g. softness of the surface voids, suitable moderate elasticity, sufficiently cooked feeling of the core, and excellent reconstitution property and suppleness, etc .... App. Br. 7 ( emphasis added); see also App. Br. 14. 5 Appeal2018-009193 Application 15/026,501 range of 120-200 Â°C, if the amount of the powder fat or oil is outside the range of 1.0-3.0 wt%, the raw scores can be as low as 2 (see sample 2 in Table C []), and the average score 4.0 or higher cannot be obtained consistently (see Table B [J).[9, 10J Yoshinuma Deel. 4. The Examiner responds as follows: The [Y oshinuma Declaration] does not have any objective measurement. Characteristics such as softness, elasticity, cooking feeling, reconstitution property and suppleness are subjective evaluation. Even if the evaluation comes from trained panelists, the characteristics being evaluated are still subjective and can vary; furthermore, a determination by a small number of people cannot represent a large population. Ans. 7. The Appellants contend that "[t]hose skilled in the art would recognize that the sensory evaluation is objective and a common tool to evaluate food quality." Reply Br. 8. 11 For support, the Appellants direct our attention to "the excerpt of Asian Noodle; Science, Technology, and Processing, edited by Gary G. Hou (2010) (Asian Noodle) and that of Sato, 'Introduction of sensory analysis' [and more particularly, the section entitled 'Laboratory panel' on page 156 of Sato (Laboratory panel)] both submitted on February 20, 2018." Reply Br. 7; see also App. Br. 10-11. According to Asian Noodle: Sensory evaluation is considered the most reliable method for measuring the quality attributes of noodles. Besides the parameters of 9 The Appellants disclose that the scale is as follows: "5: very good; 4: good; 3: fair; 2: slightly poor; and 1: poor." Spec. ,r 66. 10 It appears that the duration of the superheated steam treatment also has an effect on the texture of the noodles. Spec. 20 (Table 4). 11 Reply Brief dated September 27, 2018. 6 Appeal2018-009193 Application 15/026,501 appearance, texture, and flavor, the processing characteristics of noodles can be evaluated using sensory rating scales. Two distinct types of sensory tests exist, including product- and consumer-oriented tests. In product-oriented tests, trained panelists evaluate the quality attributes of a product .... Product-oriented tests are considered objective since they meet the criteria of objectivity: freedom from personal bias and repeatability. Asian Noodle 251 ( emphasis added). The Appellants argue that: [ A ]lthough the number of the panelists is five in the sensory evaluations of the additional experimentation of the Declaration and the examples in Appellant's disclosure, the sensory evaluations were performed by five highly trained panelists having at least three years of experience as a panelist . . . . Thus, the sensory evaluations in the Declaration and those I [sic] the Appellant's disclosure must be recognized in the art as suitable, objective, and reproducible sensory evaluations .... App. Br. 11. Significantly, neither the Appellants nor Mr. Y oshinuma direct us to any evidence establishing that each of the five "highly trained" panelists identified in the Y oshinuma Declaration is an expert panelist. As explained in Laboratory panel: [A] testing laboratory panel is divided into a general panel and an expert panel. The general panel is selected from researchers, engineers, and general employees in the company, and composed of people, for example, who have undergone the primary selection process as described in Section 4.2 (page 159)Y2J This panel is an experienced panel ... [ and] this panel is thought to have the character in the middle of the expert panel and the consumer panel .... The expert panel is composed of people who have received a high level of training selected from highly capable panelists in the 12 The Appellants do not provide a translation of page 159. 7 Appeal2018-009193 Application 15/026,501 general panel, and not only expert knowledge on the products and processes, but also understanding of statistics, psychology, etc. are required. The size of the panel is usually from 30 to 150 people for the general panel, andfrom 5 to 20 people for the expert panel. [Emphasis added.] Mr. Y oshinuma states that all five panelists were trained according to the company's training program. The training requires that a trainee receive a training, once a week for at least one year, of how to evaluate texture of noodles objectively and how to express the texture. by an experienced panelist, who is a manager or higher and is authorized by the company for managing the sensory evaluation of the products including noodles. Y oshinuma Deel. 3 ( emphasis added). Laboratory panel, however, discloses that an expert panelist also has an understanding of statistics and psychology. The Appellants do not direct us to any evidence establishing that the five panelists identified in the Y oshinuma Declaration each have an understanding of statistics and psychology and thus are properly qualified as expert panelists rather than general panelists as disclosed in Laboratory panel. For that reason, it is unclear on this record whether the evaluation of noodle texture by only the five panelists identified in the Y oshinuma Declaration is reliable and sufficiently objective. 13 Moreover, "an applicant relying on comparative tests to rebut a prima facie case of obviousness must compare his claimed invention to the closest prior art." 14 13 We note that the scores given by each of the five panelists are not disclosed in either the examples in the Appellants' Specification or the examples in the Y oshinuma Declaration. Rather, an average score is given for each of softness of surface, moderate elasticity of core, cooking feeling of core, reconstitution property, and suppleness. 14 Appellants are not required to compare "the results of the invention with the results of the invention." In re Chapman, 357 F.2d 418,422 (CCPA 1966); see also In re Tiffin, 443 F.2d 394, 399 (CCPA 1971) ("[W]e cannot agree that 8 Appeal2018-009193 Application 15/026,501 In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). It appears that Comparative Example 1-1 substantially corresponds to noodles prepared according to the method disclosed in Miyazaki, i.e., no powder fat or oil and superheated steam at 140Â°C. 15 Spec. ,r 63; Yoshinuma Deel. 5. At a temperature of 140Â°C, softness of surface and cooking feeling of core are both 4, reconstitution property is 3, and moderate elasticity of core and suppleness are both 2. Spec. 13 (Table 1 ); Y oshinuma Deel. 5. The Appellants recognize that the temperature of the superheated steam in Miyazaki's method is not limited to 140Â°C. See App. Br. 14 (stating that "[i]n Miyazaki' s examples, the temperature of the superheated steam to which the raw noodle strings are exposed is in a range of 125-170 Â°C"). The Appellants, however, do not provide a comparison between noodles prepared by the claimed method and noodles prepared by Miyazaki' s method at temperatures higher than 140Â°C. It would be informative to know whether the five perspectives in Comparative Example 1-1 (i.e., softness of surface, moderate elasticity of core, cooking feeling of core, reconstitution property, and suppleness) increase at the higher temperatures disclosed in Miyazaki and approach the scores of Appellants' Examples 6-11 and 13-18 in Table C of the Yoshinuma Declaration. appellants' affidavits are irrelevant because they compare products of the claimed process to products of prior-art processes seriatim, rather than to products of the composite process fashioned by the examiner. The examiner's composite process is the appellants' process, and thus cannot be compared with it."). 15 According to the Appellants, "[t]he exposure temperature of 140 Â°C to superheated steam is the same temperature as that used in Example 1 of Miyazaki, and the time of 36 seconds is close to the time of 30 seconds used in Example 1 of the reference." App. Br. 14. 9 Appeal2018-009193 Application 15/026,501 Based on the foregoing, a preponderance of the evidence of record weighs in favor of the Examiner's conclusion of obviousness. Therefore, the obviousness rejection of claim 1 is sustained. The Appellants do not present arguments in support of the separate patentability of any of claims 3, 5, 6, and 8. 16 As for claim 7, the Appellants argue that Sakamaki does not remedy the deficiencies of Hatsugai and Miyazaki. App. Br. 16. For the reasons discussed above, there are no deficiencies in the rejection of claim 1 that require curing by Sakamaki. Therefore, the obviousness rejections of claims 3 and 5-8 also are sustained. 2. Rejection (3) In the anticipation rejection on appeal, the Examiner finds that "[ w ]hile Hatsugai does not disclose super-heated steam, the product of claim 8 does not set forth any feature which differentiate[s] the product from one not treated with super-heated steam." Final Act. 4; Ans. 5---6. In that regard, the Examiner explains that "[t]he evaluation of [a] product-by-process claim is based solely on the product." Final Act. 4; Ans. 6. The Appellants argue: The claimed method can form on a surface of the noodle strings, a paste-like layer that has a smooth surface with few fine irregularities and is made of broken starch particles, and further form inside the noodle strings, a significant number of relatively large voids .... App. Br. 17. 16 According to the Appellants, "[ f]or purposes of this appeal only, dependent claims 3, 5, 6, and 8 are considered to stand or fall together with independent claim 1 ... , other than the features of these dependent claims discussed separately." App. Br. 6. 10 Appeal2018-009193 Application 15/026,501 In contrast, the Appellants argue: Hatsugai discloses noodle strands that are treated with non- superheated steam and have many tiny holes on the surface or inside the noodle strands (see coln. 3, lines 16-26), rather than a smooth surface having few fine irregularities and made of broken starch particles, as the noodle strings of claim 8 can have .... App. Br. 17. For support, the Appellants direct our attention to Example 1-1' ( with powder fat or oil and superheated steam treatment) and Comparative Example 1-2' (powder fat or oil and non-superheated steam treatment) in Table 2 of the Appellants' Specification. The Appellants argue: [A] number of voids having a major axis of 50 Âµm or larger formed inside the noodle strings [ ( comparative Example 1-2 ')] is significantly smaller compared with that of the noodle strings treated with superheated stream [sic] (Example 1-1 ', e.g. 50 versus 72, respectively; and total volume of such voids in the noodle strings treated with non-superheated steam are significantly smaller than those treated with superheated steam, e.g. 4.61 x 105 versus 5.9 x 105, or 4 7 versus 7 5 as relative values .... App. Br. 18. Thus, the Appellants argue that the claimed method produces structurally different noodles from the noodles disclosed in Hatsugai. App. Br. 17; see also Reply Br. 10-11. In response, the Examiner reiterates that "the claim does not set [forth] any structural or functional difference that distinguishes the claimed product from the Hatsugai product." Ans. 10. "In order to be patentable, a product must be novel, useful and unobvious. In our law, this is true whether the product is claimed by describing it, or by listing the process steps used to obtain it." In re Brown, 459 F.2d 531, 535 (CCPA 1972) ( emphasis added). "[W]hen the prior art discloses a product which reasonably appears to be either identical with or only slightly different than a product claimed 11 Appeal2018-009193 Application 15/026,501 in a product-by-process claim, a rejection based alternatively on either section 102 or section 103 of the statue is eminently fair and acceptable." Id. In this case, the Examiner has failed to establish, in the first instance, that the noodle product described in Hatsugai reasonably appears to be either identical or only slightly different than a noodle product produced according to the method recited in claim 1. See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) ( examiner bears the initial burden of presenting a prima facie case of unpatentability). For that reason, the anticipation rejection of claim 8 is not sustained. C. DECISION The Examiner's decision rejecting claims 1, 3, 5, 6, and 8 under 35 U.S.C. Â§ 103 as unpatentable over Hatsugai in view of Miyazaki is affirmed. The Examiner's decision rejecting claim 7 under 35 U.S.C. Â§ 103 as unpatentable over Hatsugai in view of Miyazaki, and further in view of Sakamaki is affirmed. The Examiner's decision rejecting claim 8 under 35 U.S.C. Â§ 102(a)(l) as anticipated by Hatsugai is reversed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l ). AFFIRMED 12