NISSIN FOODS HOLDINGS CO., LTD.

Patent Trials and Appeals Board

Mar 11, 2022

2021004182 (P.T.A.B. Mar. 11, 2022)

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. 15/761,683 03/20/2018 Sho KITANO 12844.0209USWO 4312 52835 7590 03/11/2022 HAMRE, SCHUMANN, MUELLER & LARSON, P.C. 45 South Seventh Street Suite 2700 Minneapolis, MN 55402-1683 EXAMINER KIM, BRYAN ART UNIT PAPER NUMBER 1792 NOTIFICATION DATE DELIVERY MODE 03/11/2022 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 SHO KITANO, ERIKO KANAI, and MITSURU TANAKA Appeal 2021-004182 Application 15/761,683 Technology Center 1700 ____________ Before BEVERLY A. FRANKLIN, DONNA M. PRAISS, and JEFFREY R. SNAY, Administrative Patent Judges. PRAISS, Administrative Patent Judge. DECISION ON APPEAL1 Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the Examiner’s decision to reject claims 1, 5, 7, and 8, which constitute all the claims pending in this application. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 In this Decision, we refer to the Specification filed Mar. 20, 2018 (“Spec.”), the Final Office Action dated Aug. 5, 2020 (“Final Act.”), the Appeal Brief filed Feb. 4, 2021 (“Appeal Br.”), the Examiner’s Answer dated Apr. 20, 2021 (“Ans.”), and the Reply Brief filed June 21, 2021 (“Reply Br.”). 2 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies NISSIN FOODS HOLDINGS CO., LTD. as the real party in interest. Appeal Br. 3. Appeal 2021-004182 Application 15/761,683 2 STATEMENT OF THE CASE The invention relates to a method for producing instant fried noodles. Spec. ¶ 1. According to the Specification, the claimed method reduces the fat or oil content of the produced instant fried noodles. Id. ¶¶ 27, 87. The Specification discloses a compression ratio of 90% or more and a large- diameter pressing roller having a diameter of 400 mm or more contributing to the reduced fat or oil content. Id. ¶¶ 17, 27, 31, 87. Independent claim 1, reproduced below, is illustrative of the subject matter on appeal (emphasis added). 1. A method for producing instant fried noodles, comprising: making a noodle belt by adding kneading water to a raw material powder followed by kneading so as to make a dough, and extruding the dough so as to make the noodle belt; rolling out the noodle belt into a determined noodle thickness by at least one rolling operation, each rolling operation using a pressing roller; and cutting the rolled out noodle belt with a cutting blade roller so as to obtain raw noodle strings, steaming the raw noodle strings, and drying the steamed raw noodle strings by frying, wherein the noodle belt subjected to the at least one rolling operation in the rolling out is a single noodle belt made of the dough by the extruding, a single rolling operation of the at least one rolling operation compresses the noodle belt at a compression ratio in a range of 90 % or more, and the single rolling operation is performed with a large- diameter pressing roller having a diameter in a range from 400 mm to 600 mm. Appeal 2021-004182 Application 15/761,683 3 Appeal Br. 17 (Claims Appendix). Claims 5, 7, and 8 depend from claim 1. Id. at 17-18. ANALYSIS We review the appealed rejections for error based upon the issues Appellant identifies, and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections.”)). After considering the argued claims in light of each of Appellant’s arguments, we are not persuaded Appellant has identified reversible error in the appealed rejections. The Examiner relies on the following prior art references: Name Reference Date Oakes US 669,627 Apr. 2, 1952 Nobuyasu US 6,596,331 B1 July 22, 2003 Ishii US 8,597,707 B2 Dec. 3, 2013 Yamaya US 8,993,029 B2 Mar. 31, 2015 Hirano US 9,723,862 B2 Aug. 8, 2017 Nakao3 JP 2000-245377 A Sept. 12, 2009 The Examiner rejects claims 1, 5, 7, and 8 as follows for the reasons provided in the Final Office Action. Final Act. 4-14. 3 Citations herein are to the English language translation dated January 2019 in the record. Appeal 2021-004182 Application 15/761,683 4 Claim(s) 35 U.S.C. § Basis/Reference(s) 1, 5, 7, 8 103 Nakao, Nobuyasu, Ishii, Oakes 1, 5, 7, 8 Nonstatutory Double Patenting, US 8,993,029, Nakao, Nobuyasu, Ishii, Oakes 1, 5, 7, 8 Nonstatutory Double Patenting, US 9,723,862, Nakao, Nobuyasu, Ishii, Oakes 1, 5, 7, 8 Nonstatutory Double Patenting, USSN 16/082,828, Nakao, Nobuyasu, Ishii, Oakes Obviousness over Nakao, Nobuyasu, Ishii, and Oakes Appellant argues the obviousness rejection of claims 1, 5, 7, and 8 as a group. Appeal Br. 6-13. Therefore, we confine our discussion to claim 1, which we select as representative. Claims 5, 7, and 8 stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv)(2022). The Examiner finds Nakao discloses kneading to make a dough and forming a belt, rolling the noodle belt using a pressing roller with at least one roll having a compression ratio of 75-90%, and cutting the noodle belt to obtain raw noodle strings that are then steamed and dried. Final Act. 4. The Examiner finds Nakao does not disclose 1) extruding to make the noodle belt, 2) using a cutting blade roller, and 3) a single rolling operation performed with a large-diameter pressing roller having a diameter in the range of 400-600 mm. Id. at 5-6. The Examiner determines it would have been obvious to a person having ordinary skill in the art to use Nobuyasu’s method of extruding dough into sheets followed by processing into threads to control the desired texture and density of the dough because Nakao suggests the noodle strip can be formed using conventional methods. Id. at 5 (citing Nobuyasu 2:27- 29, 3:59-61, 4:3-5; Nakao ¶ 22). The Examiner determines it would have Appeal 2021-004182 Application 15/761,683 5 been obvious to use Ishii’s cutting blade roller to obtain noodle strings because Nakao teaches that noodles can be cut by well-known cutting devices and methods. Id. at 6 (citing Nakao ¶ 25). The Examiner determines it would have been obvious to a person having ordinary skill in the art to modify the rollers of the first rolling operation to have a diameter of 400 mm to 600 mm to provide a full, smooth, and compact dough sheet having low thickness an increase production using high sheeting speeds through normal experimentation and operation. Id. at 7. The Examiner directs us to Oakes’s teaching to use 22-inch diameter rolls to produce compact dough sheets having low thickness, allowing high sheeting speeds, better control over the dough sheet, and prevents overworking. Final Act. 6 (citing Oakes 1:95-2:3, 2:23-25, 2:78-82, 2:87-90, 91-96). The Examiner finds Oakes discloses the roller can be applied to sheeting dough types other than those Oakes describes. Id. at 7 (citing Oakes 2:74-77). According to Appellant, the Examiner erred in modifying Nakao’s highest compression ratio roller with Oakes’s large diameter roller because Nakao merely discloses a broad range of about 75% to 90% compression without teaching or suggesting that (1) increasing the compression ratio to 90% or more and (2) replacing the 90 mm diameter roller with a larger diameter roller would produce a good quality noodle. Appeal Br. 10. Appellant also contends there is no reason to replace all of Nakao’s rollers with Oakes’s large diameter rollers because Oakes teaches that large diameter rolls are heavier and need more power for operation. Id. at 11. Appellant’s argument distinguishing Nakao on the basis that “about 75-90%” does not encompass the claimed range of “90% or more” is not persuasive of error because even a slight overlap in range establishes a prima Appeal 2021-004182 Application 15/761,683 6 facie case of obviousness. In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003). In addition, Nakao discloses the broader range of “60% or higher” which completely encompasses the claimed range while 75-90% is a preferred range. Nakao ¶ 24. In a determination of obviousness, a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, which, in this case, is a compression range greater than 90%. Merck & Co. v. Biocraft Labs., 874 F.2d 804, 807 (Fed. Cir. 1989) (“That the [prior art] patent discloses a multitude of effective combinations does not render any particular formulation less obvious.”). Nakao also teaches the benefit of an increased compression ratio to about 60% or higher is “improvement of the noodle quality.” Nakao ¶¶ 49 (Table 1 showing trend with increased compression), 50 (listing benefits of higher compression including avoiding blisters on the surface of the noodle ribbons). Appellant’s argument that replacing Nakao’s multiple rollers of 90 mm diameter with Oakes’s large diameter roller is not persuasive of error for a number of reasons. First, the Examiner’s rejection is not based on modifying Nakao’s multiple rollers. The rejection modifies Nakao’s first roller to have the claimed diameter for the advantages taught by Oakes. Ans. 19. As the Examiner finds, Nakao specifically teaches modifying one roller to a rolling rate of about 60% or higher. Id. (citing Nakao ¶ 24). Moreover, Nakao discloses “at least one roll rolling.” Nakao ¶ 11. Second, Appellant’s assertion that Oakes discourages the proposed combination with Nakao because Oakes teaches the larger roller is heavier and requires more power is not supported by the record. As the Examiner points out, Oakes is not referring to the 22-inch diameter roller, but, rather, Appeal 2021-004182 Application 15/761,683 7 roller sizes beyond the 36-inch diameter roller as requiring more power. Oakes 2:50-65 (“Rollers larger than 36 inches in diameter become excessively heavy . . . and consequently they will require a great deal more power.”). Third, it is not necessary that Oakes’s features be bodily incorporated into Nakao’s examples. In re Keller, 642 F.2d 413, 425 (CCPA 1981) (“[t]he test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference. . . . Rather, the test is what the combined teachings of those references would have suggested to those of ordinary skill in the art.”); see also In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983) (“[I]t is not necessary that the inventions of the references be physically combinable to render obvious the invention under review.”); In re Nievelt, 482 F.2d 965, 968 (CCPA 1973) (“Combining the teachings of references does not involve an ability to combine their specific structures.”). Fourth, Nakao’s teachings are not limited to its examples which use 90 mm diameter rollers. See In re Mills, 470 F.2d 649, 651 (CCPA 1972) (Moreover, “a reference is not limited to the disclosure of specific working examples.”). Fifth, Oakes explicitly teaches the benefits of its larger diameter roller can be equally well applied to other dough sheeting devices which employ rollers. Ans. 18; Oakes 2:23-25, 74-96. “[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.” KSR Int’l Appeal 2021-004182 Application 15/761,683 8 Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). Oakes thus supports the Examiner’s combination with Nakao. Appellant argues that the combination of Oakes with Nakao is improper because Oakes is directed to bakery products rather than instant noodle dough making it non-analogous art. Appeal Br. 11-13. Appellant distinguishes Oakes’s bakery products on the basis of their content (that they include a large amount of fat and sugar), their use (they would not be reconstituted with hot water like Nakao’s noodles), and their manufacture (they are made from dough sheets rather the produced from a noodle belt). Id. at 12-13. Appellant’s argument is not persuasive of error because both Oakes and Nakao describe methods for making dough products that are first rolled. Appellant’s distinctions between the two relate to the further processing and use of the dough product. Regarding the fat and sugar content of Oakes’s product, Appellant does not direct us to any evidence that the composition of the dough itself would make Oakes’s teachings inapplicable to rolling out doughs that differ in composition. Oakes’s disclosure that the benefits of a larger diameter roller apply to other dough processing devices refutes Appellant’s suggestion that the contents of the dough effectively renders Oakes a separate field of endeavor. Oakes 2:2-9 (“The use of these large diameter rollers . . . make a full, smooth, compact sheet of dough . . . from a wide variety of doughs.”). Appellant’s argument that Nakao and Oakes are directed to solving different problems faced by each of the inventors of Nakao and Oakes misapplies the second test for non-analogous art. Appeal Br. 13. The question is not whether one prior art reference is analogous to another prior art reference; it is whether each individual prior art reference is within the Appeal 2021-004182 Application 15/761,683 9 realm of prior art that one of ordinary skill in the field of the inventor should be charged with knowing. See Innovention Toys, LLC v. MGA Entm’t, Inc., 637 F.3d 1314, 1321 (Fed. Cir. 2011). Thus, the issue is whether a person having ordinary skill in the field of the inventor would have expected Oakes’s advantages to be transferrable to other applications of compressing a sheet of dough using rollers. Based on the record in this Appeal, both Oakes and the inventors address how to increase pressure when rolling out dough. Appellant’s Specification describes the problem of reducing oil content in the dough when it is fried being addressed by reducing the number of pores present in the cross section of the dough with the increased accumulated pressure applied to the dough belt due to the increased roller diameter and increased contact area. Spec. ¶¶ 17-18. Similarly, Oakes describes making a dough sheet very thin and compact with the increased diameter roller. Oakes 2:2-9. To the extent Appellant asserts unexpected results based on “beneficial effects” achieved by a roller diameter of 400-600mm and a single rolling operation with a compression of 90% or more, we agree with the Examiner that increased compression would have been expected to affect the dough structure, such as reducing voids in which oil can be absorbed. Ans. 15-17; Appeal Br. 7-9; Reply Br. 2-4. As the Examiner points out, the linear relationship between increased compression and decreased oil content fits the expectation of increased compression on a dough. Thus, Appellant’s data does not support unexpected results in the absence of an explanation of what would have been expected from increased compression on a dough sheet. See In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991) (“[W]hen unexpected results are used as evidence of nonobviousness, the Appeal 2021-004182 Application 15/761,683 10 results must be shown to be unexpected compared with the closest prior art.”). As the Examiner finds, any additional advantages recognized by Appellant would naturally flow from Nakao’s prior teachings that increased compression ratio provides benefits in terms of texture, stiffness, and uniformity and also prevents blisters on the surface. Ans. 18-19. In the Reply Brief, Appellant contends that none of the cited prior art references recognized the relationship between the oil content and the roller diameter. Reply Br. 2. According to Appellant’s Specification, however, the oil content flows from the structure of the dough, which both Nakao and Oakes recognize is affected by compression. Spec. 17-18; Nakao ¶ 50; Oakes 2:3-9. According to Appellant, it would not have been obvious to combine Nakao’s specific compression rate with Oakes’ specific roller diameter. Id. at 2-3. Both Nakao and Oakes, however, teach the benefits of increased compression with Nakao teaching the claimed compression rate and Oakes teaching the roller diameter for doing so as discussed above. Having considered Appellant’s arguments and evidence together with the Examiner’s findings, the evidence of record weighs in favor of the Examiner’s conclusion that the method recited in claim 1 would have been obvious to one of ordinary skill in the art. Accordingly, we affirm the Examiner’s rejection of claim 1 as well as the rejection of claims 5, 7, and 8 under 35 U.S.C. § 103 over Nakao, Nobuyasu, Ishii, and Oakes. Double Patenting over US 8,993,029, Nakao, Nobuyasu, Ishii, Oakes Appellant argues the obviousness type double patenting rejection of claims 1, 5, 7, and 8 as a group. Appeal Br. 14. Therefore, we confine our Appeal 2021-004182 Application 15/761,683 11 discussion to claim 1, which we select as representative. Claims 5, 7, and 8 stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv). Appellant argues neither US 8,993,029 (claims 1-10) nor the cited prior art references disclose the features of a single rolling operation having a diameter of 400-600 mm and a compression ratio of 90% for the reasons discussed above in connection with the rejection under 35 U.S.C. § 103. Appeal Br. 14. Because Appellant has not identified error in the Examiner’s rejection of claim 1 over the cited prior art for the reasons discussed above, we likewise sustain the Examiner’s double patenting rejection of claim 1, as well as claims 5, 7, and 8. Double Patenting over US 9,723,862, Nakao, Nobuyasu, Ishii, Oakes Appellant argues the obviousness type double patenting rejection of claims 1, 5, 7, and 8 as a group. Appeal Br. 14. Therefore, we confine our discussion to claim 1, which we select as representative. Claims 5, 7, and 8 stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv). Appellant argues neither US 9,723,862 (claims 4-6) nor the cited prior art references disclose the features of a single rolling operation having a diameter of 400-600 mm and a compression ratio of 90% for the reasons discussed above in connection with the rejection under 35 U.S.C. § 103. Appeal Br. 14. Because Appellant has not identified error in the Examiner’s rejection of claim 1 over the cited prior art for the reasons discussed above, we likewise sustain the Examiner’s double patenting rejection of claim 1 as well as claims 5, 7, and 8. Appeal 2021-004182 Application 15/761,683 12 Double Patenting over USSN 16/082,828, Nakao, Nobuyasu, Ishii, Oakes Appellant argues the obviousness type double patenting rejection of claims 1, 5, 7, and 8 as a group. Appeal Br. 15. Therefore, we confine our discussion to claim 1, which we select as representative. Claims 5, 7, and 8 stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv). Appellant states that claims 2 and 4 of USSN 16/082,828 have been canceled. Appellant argues that claims 1 and 3 of USSN 16/082,828, as well as the cited prior art references, do not disclose the features of a single rolling operation having a diameter of 400-600 mm and a compression ratio of 90% for the reasons discussed above in connection with the rejection under 35 U.S.C. § 103. Appeal Br. 15. Because Appellant has not identified error in the Examiner’s rejection of claim 1 over the cited prior art for the reasons discussed above, we likewise sustain the Examiner’s double patenting rejection of claim 1 as well as claims 5, 7, and 8. CONCLUSION For these reasons and those provided in the Final Office Action and the Examiner’s Answer, we uphold the Examiner’s rejections of claims 1, 5, 7, and 8. Appeal 2021-004182 Application 15/761,683 13 DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 5, 7, 8 103 Nakao, Nobuyasu, Ishii, Oakes 1, 5, 7, 8 1, 5, 7, 8 Nonstatutory Double Patenting, US 8,993,029, Nakao, Nobuyasu, Ishii, Oakes 1, 5, 7, 8 1, 5, 7, 8 Nonstatutory Double Patenting, US 9,723,862, Nakao, Nobuyasu, Ishii, Oakes 1, 5, 7, 8 1, 5, 7, 8 Nonstatutory Double Patenting, USSN 16/082,828, Nakao, Nobuyasu, Ishii, Oakes 1, 5, 7, 8 Overall Outcome 1, 5, 7, 8 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED