Keith Alan. Barber et al.

Patent Trials and Appeals Board

Aug 15, 2019

13904889 - (D) (P.T.A.B. Aug. 15, 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.
13/904,889 05/29/2013 Keith Alan BARBER CFLAY.00809 5777
110933 7590 08/15/2019
Carstens & Cahoon, LLP
PO Box 802334
Dallas, TX 75380
EXAMINER
LEFF, STEVEN N
ART UNIT PAPER NUMBER
1792
MAIL DATE DELIVERY MODE
08/15/2019 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 KEITH ALAN BARBER,
JUSTIN FRENCH, GIRISH GANJYAL,
CHRISTOPHER JAMES KOH, and SCOTT L. SULLIVAN
____________

Appeal 2018-004635
Application 13/904,889
Technology Center 1700
____________
Before BEVERLY A. FRANKLIN, GEORGE C. BEST, and
SHELDON M. McGEE, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 5 and 6 of Application
13/904,889 under 35 U.S.C. § 102(b) as anticipated and claims 1–8 under
35 U.S.C. § 103(a) as obvious. Final Act. (April 12, 2017). Appellant1
seeks reversal of these rejections pursuant to 35 U.S.C. § 134(a). We have
jurisdiction under 35 U.S.C. § 6.
For the reasons set forth below, we reverse.

1 Frito-Lay North America, Inc. is identified as the applicant and real party
in interest. Appeal Br. 2.
Appeal 2018-004635
Application 13/904,889
2
BACKGROUND
The ’889 Application describes methods and systems for controlling
the oil content of a fried potato chip. Spec. ¶¶ 2, 7. In a particular
embodiment, washed potato slices are par-fried by immersion in hot oil at a
first temperature. Id. ¶ 8. The par-fried chips are then finish fried,
preferably by immersion, at a second, higher, temperature.2 Id.
The claims at issue in this appeal are directed to the products of the
methods described in the ’889 Application. According to Appellant, chips
prepared in the manner described above differ from the prior art chips in at
least two measurable ways that are defined in the Specification. These
methods are the Surface Oil Difference, and Residual Viscometric Analysis
(“RVA”). See id. ¶¶ 32–38.
Claims 1 and 5 are representative of the ’889 Application’s Claims
and are reproduced from the Claims Appendix of the Appeal Brief with key
claim terms italicized.
1. A potato chip comprising:
a potato slice comprising a thickness between 0.040
inches and 0.080 inches which has been washed and fried to a
moisture content below about 2% by weight to produce said
potato chip, wherein said potato chip comprises a Surface Oil
Difference of 0.5 or greater.

2 The double-frying of potato products is well known in the cooking art:
“Deep-fried potato sticks and slices and the technique of double-frying were
all well known in Europe by the middle of the 19th century, and in England
were attributed mainly to the French: hence the term ‘French fry’ for what
the French simply call fried potatoes (pommes frites).” Harold McGee, On
Food and Cooking: The Science and Lore of the Kitchen 303 (rev. ed. 2004);
see also Mark Bittman, How to Cook Everything: Simple Recipes for Great
Food 599 (1998) (recipe for double-fried French fries).
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5. A potato chip comprising:
a potato slice comprising a thickness between 0.040
inches and 0.080 inches which has been washed and fried to a
moisture content below about 2% by weight to produce said
potato chip, wherein said potato chip comprises a first RVA
peak and a second RVA peak, wherein (second RVA peak/first
RVA peak) is between 0.25 and 0.45, and wherein said first
RVA peak is between 6000 and 8100.
Appeal Br. 14 (emphasis added).
REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 5 and 6 are rejected under 35 U.S.C. § 102(b) as
anticipated by Teras.3 Final Act. 2.
2. Claims 1–8 are rejected under 35 U.S.C. § 103(a) over the
combination of Barber ’7194 and Barber ’633.5 Final Act. 3.
3. Claims 1–4, 7, and 8 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Teras. Final Act. 6.
DISCUSSION
For the purposes of this appeal, Appellant divides the ’889
Application’s claims into two groups. Appeal Br. 5–12. Group I consists of
claims 1–4. Id. at 5–8. Group II consists of claims 5–8. Id. at 8–12. We
address each of these groups of claims separately.

3 US 2002/0028273 A1, published March 7, 2002.
4 US 2013/0022719 A1, published January 24, 2013.
5 US 2006/0088633 A1, published April 27, 2006.
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Application 13/904,889
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Group I. The Examiner rejected claims 1–4 as unpatentable over the
combination of Barber ’719 and Barber ’633. Final Act. 3. The Examiner
also rejected these claims as unpatentable over Teras. Final Act. 6. We
address each of these rejections below.
Obviousness rejection over the combination of Barber ’719 and
Barber ’633. Appellant argues for reversal of this rejection on the basis of
limitations present in claim 1, which we select as representative of this group
of claims. 37 C.F.R. § 41.37(c)(1)(iv). Accordingly, claims 2–4 will stand
or fall with claim 1.
In an obviousness rejection, an examiner bears the initial burden of
establishing a prima facie case of obviousness. In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992). To do so, an examiner must demonstrate that
the prior art describes or suggests each element of the claimed invention. Id.
Here, the Examiner found that Barber ’719 does not explicitly
disclose a potato chip having a Surface Oil Difference of 0.5 or greater.
Final Act. 3. Nor does the Examiner find that Barber ’633 describes or
suggests such a potato chip. See id. at 3–4. Nevertheless, the Examiner
concluded that the combination of Barber ’719 and Barber ’633 renders the
subject matter of claim 1 obvious because Barber ’719
teaches drawing oil out from the interior spaces of the potato
slices to the surface (Par. 0026), where the oil content of the
interior and surface may be measured, (par. 0036, 0038-0042],
and since Barber [’719] teach[es] a relationship between
internal oil content and surface oil content and providing
desired vacuum conditions for a time to achieve a final product.
Id. at 3. The Examiner reasoned that it would been obvious to optimize
Barber ’719’s process conditions to arrive at a potato chip having the
claimed Surface Oil Difference “‘so that a large portion of the oil remaining
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Application 13/904,889
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with the food piece after the oiling is immediately available to be detected
when the food piece is consumed[’] (Para. [0026]]).” Id. at 4 (quoting
Barber ’719 ¶ 26). The Examiner further reasoned that, as part of this
optimization process, a person of ordinary skill in the art would be motivated
to measure and determine the relationship between the amount of internal oil
and surface oil on the potato chip. Id.
In this case, we determine that the Examiner has not established a
prima facie case of obviousness. In particular, the Examiner erred by
finding that Barber ’719 describes or suggests the step of measuring the oil
content of the interior and surface segments of a potato chip. The Examiner
cited paragraphs 26, 36, and 38–42 of Barber ’719 as supporting this finding.
Nothing in these paragraphs discussed measuring the amount of oil in the
interior and surface segments of a potato chip. Rather, these portions of
Barber ’719 describe measurements of the total oil content of potato chips
and demonstrate that the total oil content of a potato chip may be reduced
through centrifugation and vacuum centrifugation of the potato chip. See
Barber ’719 ¶¶ 26, 36, 38–42. Nor does our review of the entirety of Barber
’719 reveal any discussion of quantifying the relative amounts of oil in the
interior and surface segments of the potato chip.
Because the Examiner’s alleged prima facie case of obviousness is
based upon an erroneous factual determination, we are constrained to reverse
the rejection of claim 1. We, therefore, also reverse the rejection of claims
2–4.
Obviousness rejection over Teras. Appellants argue for reversal of
this rejection on the basis of limitations present in claim 1, which we select
as representative of this group of claims. 37 C.F.R. § 41.37(c)(1)(iv).
Accordingly, claims 2–4 will stand or fall with claim 1.
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We begin our analysis by considering the proper interpretation of the
claim term “potato slice.”
During prosecution, the PTO gives the language of the proposed
claims the broadest reasonable meaning of the words in their ordinary usage
as they would be understood by one of ordinary skill in the art, taking into
account any definitions or other enlightenment provided by the written
description contained in the applicant’s specification. In re Morris, 127 F.3d
1048, 1054–55 (Fed. Cir. 1997).
In this context, a person having ordinary skill in the art would
understand a slice to be “a thin flat piece cut from something.” Webster’s
Ninth New Collegiate Dictionary 1108 (1985). Here, the “something” is a
potato. Thus a person having ordinary skill in the art would understand the
ordinary meaning of the term “potato slice” to be “a thin flat piece cut from
a potato.”
Next, we turn to the ’889 Application’s Specification to see whether
Appellant has indicated that the term “potato slice” has other than its
ordinary meaning. We unable to find any indication that this is so. Indeed,
the Specification explains that “[c]onventional potato chip products are
prepared by the basic steps of slicing peeled, raw potatoes, water washing
the slices to remove surface starch and frying the potato slices in hot oil until
a moisture content of about 1% to 2% by weight is achieved.” Spec. ¶ 3.
In view of the foregoing, we conclude that the broadest reasonable
interpretation of the claim term “potato slice” is “a thin flat piece cut from a
potato.”
The Examiner found that Teras describes a potato chip comprising a
potato slice. Final Act. 6 (citing Teras ¶¶ 49, 154, 201). Teras, however,
describes fried food a products made from a thin sheet of dough. See, e.g.,
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Teras ¶¶ 48, 148–55. Teras teaches that the dough may comprise potato
flour, potato granules, potato flanules, potato flakes, and modified starches
derived from potatoes. Id. ¶ 49. Teras, however, does not describe the use
of a thin flat piece cut from a potato in its process. The Examiner’s finding
to the contrary is erroneous.
We, therefore, reverse the rejection of claims 1–4 as obvious over
Teras.
Group II. The Examiner rejected claims 5–8 as obvious over the
combination of Barber ’719 and Barber ’633. Final Act. The Examiner also
rejected claims 5 and 6 as anticipated by Teras and claims 7 and 8 as
obvious over Teras. Id. at 2, 6.
Obviousness rejection over the combination of Barber ’719 and
Barber ’633. Appellant argues for reversal of this rejection on the basis of
limitations present in claim 5, which we select as representative of this group
of claims. 37 C.F.R. § 41.37(c)(1)(iv). Accordingly, claims 6–8 will stand
or fall with claim 5.
In rejecting claim 5, the Examiner found that Barber ’719 does not
describe or suggest the recited first and second RVA peaks and, therefore,
does not describe the claimed ratio between the peak heights. Final Act. 5.
Nevertheless, the Examiner determined that the subject matter of claim 5
would been obvious over a combination of Barber ’719 and Barber ’633. In
particular, the Examiner stated:
Though silent to an RVA peak, Barber does teach
applicants same claimed potato slice which is exposed to
conditions to cause the oil to be forced from the interior to the
surface, in the instant case vacuum. Thus since the time and
degree of vacuum dictates the amount of oil removed from the
interior to the exterior to achieve a final product chip which
comprises more surface oil than interior oil, and since RVA of
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Application 13/904,889
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the product is determined by processing conditions such as
heating time and temperature. Thus the RVA peak is a result of
desired frying with respect to an initial product and therefore
given that Barber disclose frying as presently claimed, and
removing interior oil through the surface by processing
conditions, it is clear that the RVA peak is a result of rate
dependent variables where the constant is a moisture content of
less than 2 % as taught (par. 0028).
Id.
As Appellant argues, this analysis does not support the conclusion of
obviousness. As the ’889 Application’s Specification states, the RVA
reported in the Specification and recited in claim 5 concerns the properties
of the starch left behind after a potato chip is defatted. See Spec. ¶ 36. The
Examiner’s analysis is premised upon the erroneous factual determination
that Barber ’719 discloses the same frying process that is used to produce
potato chips that fall within the scope of claim 5. As described in the
Specification, potato chips that fall within the scope of claim 5 are double-
fried, with the second frying occurring at a higher temperature than the first
frying. Spec. ¶¶ 21–26, 36–38; Fig. 4. Barber ’719, however, describes
potato chips that are fried once and then partially defatted through vacuum
centrifugation. Because the heat treatment history of the ’889 Application’s
potato chips differs from the heat treatment history of Barber ’719’s potato
chips, the Examiner’s finding that Barber ’719 describes or suggests a potato
chips within the scope of claim 5 is erroneous.
We, therefore, reverse the rejection of claims 5 and 6 as obvious over
the combination of Barber ’719 and Barber ’633.
Anticipation rejection of claims 5 and 6 over Teras. The Examiner
rejected claims 5 and 6 as anticipated by Teras. Final Act. 2.
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Claim 5 is an independent claim directed to a potato chip comprising a
“potato slice.” Claim 6 depends from claim 5.
As discussed above, the Examiner erred by finding that Teras
describes use of a potato slice in its process. We, therefore, reverse the
finding that claims 5 and 6 are anticipated by Teras.
Obviousness rejection of claims 7 and 8 over Teras. Appellant argues
that the obviousness rejection of claims 7 and 8 over Teras should be
reversed because “[c]laims 7 and 8 are novel and nonobvious, at least, by
virtue of their dependence on claim 5.” Appeal Br. 11. As discussed above,
we have reversed the rejection of claim 5 as anticipated by Teras. We,
therefore, also reverse the rejection of claims 7 and 8 as unpatentably
obvious over Teras.
CONCLUSION
For the reasons set forth above, we reverse the rejection of claims 1–8
as obvious over the combination of Barber ’719 and Barber ’633. We
reverse the rejection of claims 5 and 6 as anticipated by Teras. We also
reverse the rejection of claims 1–4, 7, and 8 as obvious over Teras.
REVERSED