NISSIN FOODS HOLDINGS CO., LTD.

Patent Trials and Appeals Board

Sep 29, 2021

2020006392 (P.T.A.B. Sep. 29, 2021)

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.
16/082,828 09/06/2018 Yusuke YAMADA 12844.0213USWO 4796
52835 7590 09/29/2021
HAMRE, SCHUMANN, MUELLER & LARSON, P.C.
45 South Seventh Street
Suite 2700
Minneapolis, MN 55402-1683
EXAMINER
TRAN, LIEN THUY
ART UNIT PAPER NUMBER
1793
NOTIFICATION DATE DELIVERY MODE
09/29/2021 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 YUSUKE YAMADA, TAKAYUKI YAGI, and
MITSURU TANAKA
Appeal 2020-006392
Application 16/082,828
Technology Center 1700

Before ADRIENE LEPIANE HANLON, CATHERINE Q. TIMM, and
JEFFREY B. ROBERTSON, Administrative Patent Judges.

ROBERTSON, Administrative Patent Judge.

DECISION ON APPEAL1
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the
Examiner’s decision to reject claims 1 and 3.2 See Appeal Br. 5. We have
jurisdiction under 35 U.S.C. § 6(b). We REVERSE.

1 This Decision includes citations to the following documents:
Specification filed September 6, 2018 (“Spec.”); Final Office Action entered
August 13, 2019 (“Final Act.”); Appeal Brief filed March 13, 2020 (“Appeal
Br.”); Examiner’s Answer entered July 13, 2020 (“Ans.”), and Reply Brief
filed September 14, 2020 (“Reply Br.”).
2 “Appellant” refers to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies Nissan Foods Holdings Co., LTD., as the real
party in interest. Appeal Br. 2.
Appeal 2020-006392
Application 16/082,828

2
CLAIMED SUBJECT MATTER
Appellant states the invention relates to a method for producing
instant fried noodles that are inhibited from puffing. Spec. ¶¶ 1, 5. Claim 1,
reproduced below, is illustrative of the claimed subject matter (Appeal Br.,
Claims Appendix 16):
1. A method for producing instant fried noodles,
comprising:
obtaining a noodle belt from a noodle dough by kneading
main raw material powder with a liquid-form edible fat or oil
added to the main raw material in an amount in a range from 20
to 60 ml per kg of the main raw material powder;
producing a crude noodle belt from the noodle dough
using a shaping roller and producing a compounded noodle belt
from the crude noodle belt using a compounding roller;
rolling out the compounded noodle belt using a roll-out
roller into a prescribed noodle thickness by performing a rolling
operation of once or twice;
cutting the rolled noodle belt into raw noodle strings
using a cutting blade;
steaming the raw noodle strings; and
fry drying the steamed noodle strings.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Yoshida et al.
(“Yoshida”)
US 4,230,735 Oct. 28, 1980
Alam US 2012/0003376 A1 Jan. 5, 2012

Appeal 2020-006392
Application 16/082,828

3
REJECTION
The Examiner rejected claims 1 and 3 under 35 U.S.C. § 103 as being
unpatentable over Alam and Yoshida. Final Act. 2–3.
OPINION
We limit our discussion to claim 1, which is sufficient for disposition
of this rejection.

The Examiner’s Rejection
In rejecting claim 1, the Examiner found Alam discloses a method for
preparing a fried noodle that includes kneading a raw material comprising
flour and oil, rolling into sheets, slitting, steaming, and frying to obtain an
instant oil-fried noodle. Final Act. 2. The Examiner found Alam does not
disclose producing a crude noodle belt using a shaping roller, producing a
compounded noodle belt from the crude noodle belt using a compounding
roller, and rolling out the compounded noodle belt using a roll-out roller into
a prescribed noodle thickness by performing a rolling operation once or
twice as recited in claim 1. Id. The Examiner found Alam discloses
percentages of oil in the noodle dough that overlap the ranges recited in
claim 1, and as such, concluded that it would have been obvious to have
added oil to the dough in the amounts recited in claim 1. Id. at 2–3.
The Examiner found Yoshida discloses a process for producing quick-
cooking noodles including passing dough through two sets of first rollers to
form continuous noodle sheets (shaping roller), a second roller to combine
them (compounding roller), and a nip roller to make the thickness suitable
for slitting (roll-out roller). Final Act. 2.
Appeal 2020-006392
Application 16/082,828

4
The Examiner determined that it would have been obvious to one
skilled in the art to use the rollers and steps disclosed in Yoshida to make the
noodle strands in Alam to obtain noodles of desired thickness. Final Act. 2.

Appellant’s Arguments
Appellant contends, inter alia, that Yoshida does not disclose a rolling
operation that is performed only once or twice, but rather Yoshida discloses
a conventional method of rolling operations, where such conventional
methods generally include a noodle sheet being passed through a nip roller
several times. Appeal Br. 6. Appellant argues that experiments in the
instant Specification show a difference in the amount of puffing when
noodles are prepared according to the claimed method relative to
comparative methods including different amounts of oil and different
numbers of rolling operations. Id. at 8–11. Appellant also contends Alam
teaches away from including oil in noodle dough. Id. at 12–13.

Discussion
We have carefully considered the evidence of record and as a result,
we are of the view that as a whole, the evidence weighs in favor of
Appellant’s position. Accordingly, we reverse the Examiner’s rejection of
claims 1 and 3 for the following reasons.
At the outset, we address the step in claim 1 that the rolling operation
is performed “once or twice.” The Examiner’s position is that because claim
1 recites the transitional phrase “comprising,” the claim does not exclude an
additional rolling out step. Ans. 5. Appellant contends the rolling operation
Appeal 2020-006392
Application 16/082,828

5
in claim 1 is limited to one or two rolling operations. Reply Br. 4. We agree
with Appellant.
Claim 1 plainly recites the rolling operation is performed “once or
twice.” Thus, although the transitional phrase “comprising” in a method
claim “allows for additional steps” (Invitrogen Corp. v. Biocrest Mfg., L.P.,
327 F.3d 1364, 1368 (Fed. Cir. 2003)), we are of the view that interpreting
the “rolling out operation” in claim 1 to include additional rolling out steps
would be inconsistent with the express language of claim 1.
In addition, the Examiner’s an interpretation is inconsistent with the
Specification. That is, the Specification describes the rolling operation is
performed three times or less and preferably twice or less. Spec. ¶¶ 7, 8, 20.
The Specification further describes that if the rolling operation is performed
more than this, gluten tissue is extended and the noodles are subject to
puffing. Id. ¶ 20. Accordingly, interpreting claim 1 to include additional
rolling out steps not only eviscerates the express language of claim 1, but is
also inconsistent with the Specification. See In re Baker Hughes, Inc., 215
F.3d 1297, 1303 (Fed. Cir. 2000) (the PTO cannot adopt a construction that
is “beyond that which was reasonable in light of the totality of the written
description” in the Specification).
Therefore, we interpret claim 1 to be limited to rolling operations that
are performed only once or twice. As a result of this interpretation we
consider only the Examiner’s position that Yoshida’s disclosure of passing
the noodle sheet through “a” nip roller to provide a noodle thickness suitable
for slitting (Yoshida, col. 4, ll. 43–51), constitutes a single rolling out step in
our review of the rejection. Ans. 5–6.
Appeal 2020-006392
Application 16/082,828

6
We do not view Yoshida’s disclosure to be a clear or express
disclosure of one rolling operation as indicated by the Examiner. See Ans.
5–6. On the one hand, Yoshida discloses “a” nip roller and does not
expressly disclose a requirement for multiple passes through a roller. On the
other hand, Yoshida is silent as to the number of passes through the nip
roller, and in Example 1, Yoshida does not provide express details as to the
rolling out procedure.3 Yoshida, col. 5, ll. 52–53. Rather, Yoshida discloses
that the noodles are rolled out “according to the conventional manner.”
Yoshida col. 5, ll. 54–55. In this regard, Appellant directs us to other
disclosures4 indicating that noodles may be rolled out conventionally from
5–7 times. Appeal Br. 6–8.
Regarding the amount of oil, Alam discloses an oil fried noodle that
includes introducing an amount of oil between 1 and 20% to obtain a
dough.5 Alam ¶¶ 13, 16. Alam discloses that “[i]t can be also considered
according to the invention to minimize the content of oil near zero %.” Id.
¶ 26. As Appellant points out, Alam’s sole example of a noodle dough does

3 The noodles in Yoshida’s remaining examples are said to be produced
according to the procedures described in Example 1. Yoshida, col. 6, l. 15 –
col. 8, l. 68.
4 Partial translation of New Instant Noodle Introduction filed July 26, 2019;
JP 63-133958 machine translation by Espacenet (EPO) filed November 12,
2019; JP 53-121955 machine translation by Espacenet (EPO) filed
November 12, 2019 (Yoshida claims foreign priority to JP53-121955
(Yoshida Box 30). Appeal Br. 17, Evidence Appendix. We observe that
these translations appear to be machine translations, and as such, the
accuracy of the translations have not been confirmed, for example, by an
accompanying declaration.
5 The Examiner converted the amount of oil in claim 1 to include ranges
from 1.82% to 5.58% by weight depending on the density of oil used. Final
Act. 2–3. Appellant does not challenge this conversion.
Appeal 2020-006392
Application 16/082,828

7
not include oil. Id. ¶¶ 36–45; Appeal Br. 12. The Appellant’s Specification,
on the other hand, discloses “[w]hen the amount [of edible fat or oil] is less
than about 20 ml, the sufficient effect of inhibiting the puffing cannot be
obtained.” Spec. ¶ 16.
Appellant has also presented evidence in the form of comparative
examples that tends to show the amount of oil in combination with number
of rolling operations reduces the cross sectional area of the resulting fried
noodles (inhibits puffing). Spec. ¶ 51 Table 1 (compare Examples 1–6, with
Comparative Examples 1–4), ¶ 52; Appeal Br. 8–11. We acknowledge the
Examiner’s position that Examples 1–6 test only one set of ingredients and
the lack of criteria to determine the significance of the degree of suppression
of puffing expressed in the results. Ans. 7–8. However, the Examiner’s
position that Appellant’s data does not compare the closest prior art (Ans. 7)
is not sufficiently supported by the record. As discussed above, although
Alam discloses oil may be added to the noodle dough, Alam does not
disclose an example containing oil. Appellant is not required to compare
examples that do not exist in the prior art. See In re Chapman, 357 F.2d
418, 422 (CCPA 1966); Reply Br. 10–11.
Further, although the Examiner’s position is that there is insufficient
data to evaluate the effect of the number of rolling operations (Ans. 7), as
Appellant explains, Examples 2, 6, 7, and Comparative Example 4 all have
the same composition of noodle dough, vary only the number of rolling
operations performed in order to reach a noodle thickness of 1.6 mm, and
show that as the number of rolling operations is increased, the cross
sectional area of the resulting fried noodle is increased. Spec. ¶¶ 31, 36, 40,
41, 45, 51. Reply Br. 8–10.
Appeal 2020-006392
Application 16/082,828

8
The ultimate determination of whether a claimed invention would
have been obvious or non-obvious is a legal conclusion, which is made
based on considering and weighing all of the facts in evidence. See In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). As a result of the above
discussion, we are of the view that the preponderance of the evidence weighs
in favor of Appellant’s position. In particular, after weighing the disclosures
in Yoshida and Alam suggesting performing one or two rolling operations
and an amount of oil within the claimed range incorporated into the noodle
dough, against the lack of express disclosure in Yoshida for the number of
rolling out operations, the lack of examples in Alam for amounts of oil in
noodle dough that are within the claimed range for comparison, and the
statements and examples in the Specification for the criticality of the
amounts of oil and rolling operations within the claimed range, we find the
weight of the evidence favors Appellant’s position.
Accordingly, the Examiner’s rejection of claims 1 and 3 is reversed.

DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 3 103 Alam, Yoshida 1, 3

REVERSED