Yusuke Tsuchiya et al.

Patent Trials and Appeals BoardSep 23, 2021

2020005055 (P.T.A.B. Sep. 23, 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. 14/112,730 10/18/2013 Yusuke Tsuchiya P23280US00 9247 38834 7590 09/23/2021 WESTERMAN, HATTORI, DANIELS & ADRIAN, LLP 8500 LEESBURG PIKE SUITE 7500 TYSONS, VA 22182 EXAMINER COX, STEPHANIE A ART UNIT PAPER NUMBER 1791 NOTIFICATION DATE DELIVERY MODE 09/23/2021 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): patentmail@whda.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte YUSUKE TSUCHIYA, HISAYUKI IESATO, TORU NAKAJIMA, and NORIKAZU UCHIDA ____________ Appeal 2020-005055 Application 14/112,730 Technology Center 1700 ____________ Before JEFFREY T. SMITH, LINDA M. GAUDETTE, and JEFFREY R. SNAY, Administrative Patent Judges. SNAY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1, 3–5, and 7–9. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies Nippon Starch Chemical Co., Ltd. as the real party in interest. Appeal Br. 2. Appeal 2020-005055 Application 14/112,730 2 BACKGROUND The invention relates to a coating material for fried or deep-fried food. Spec. ¶ 1. Conventional coating materials comprising low-gluten flour, proteins, starch, and emulsifiers exhibit poor adhesiveness when coated on a food item. Id. ¶ 2. Use of oil/fat-processed starch can improve adhesiveness but yields poor textural characteristics. Id. ¶¶ 3, 17. According to the Specification, “the inventors have discovered that a coating material for frying or deep-frying, comprising an oil/fat-processed legume starch having a swelling degree of 2.5–8.5 ml, which has been derived from a swelling- inhibited legume starch[,] and premix comprising the coating material have excellent adhesion and texture.” Id. ¶ 25. Claim 1 is the sole independent claim on appeal and reads as follows: 1. A coating material for fried or deep-fried food, wherein the coating material comprises an oil/fat- processed swelling-inhibited legume starch having a swelling degree of 2.5–8.5 ml, wherein, in the oil/fat- processed swelling-inhibited legume starch, an oil/fat is attached to at least a part of a surface of a particle of a raw swelling-inhibited legume starch, and the oil/fat is present in an amount of 0.01% and 1.0% by mass relative to the raw swelling-inhibited legume starch, wherein the raw swelling-inhibited legume starch is a legume starch treated by swelling-inhibition to be a raw material for producing the oil/fat-processed swelling-inhibited legume starch. Appeal Br. 20 (Claims Appendix). Appeal 2020-005055 Application 14/112,730 3 REJECTION Claims 1, 3–5, and 7–9 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Yamaguchi2 and Hoover.3 OPINION Relevant to Appellant’s arguments on appeal, and with regard to claim 1, the Examiner finds Yamaguchi discloses a coating comprising “an oil/fat processed starch having a swelling degree of 1.0 – 8.5 ml, overlapping the claimed range of 2.5 – 8.5 ml.” Final Act. 3. The Examiner finds Yamaguchi fails to teach use of a legume starch, but that Hoover teaches legume starch offers certain benefits regarding digestibility and viscosity. Id. at 4. Based on the foregoing findings, the Examiner determines it would have been obvious “to substitute the starch of Yamaguchi with a legume starch.” Id. Appellant argues Yamaguchi’s disclosed swelling degree refers to starch prior to oil/fat processing, whereas claim 1 recites swelling degree of the oil/fat processed starch. Appeal Br. 7; Reply Br. 3. To that point, the Examiner contends Yamaguchi teaches oil/fat processing further inhibits swelling and, on that basis, finds Yamaguchi implicitly teaches use of an oil/fat processed starch having a swelling degree within the range recited in claim 1. See Final Act. 6; Ans. 7. According to the Examiner, “Yamaguchi further teaches that the starch is oil/fat processed in order to inhibit swelling of the starch.” Final Act. 3 (citing Yamaguchi ¶ 6) (emphasis added). 2 JP 2004-113236 A, published April 15, 2004 (“Yamaguchi”). 3 R. Hoover et al., Effect of Cross-Linking on Functional Properties of Legume Starches, 38 Starch/Stärke 149–155 (1986). Appeal 2020-005055 Application 14/112,730 4 There is no dispute that Yamaguchi identifies swelling degree values only for starch prior to oil/fat processing. See Yamaguchi ¶ 8 (referring to starch or swelling-inhibited (cross-linked) starch as “precursor powder”); id. ¶ 9 (specifying swelling degree ranges for “precursor powder”); id. ¶ 11 (describing oil/fat processing of precursor powder). We find no teaching in Yamaguchi regarding whether or how oil/fat processing would impact swelling degree of the precursor starch. At the passage cited by the Examiner, Yamaguchi teaches oil/fat processing may be performed on precursor starch or swelling-inhibited precursor starch, without mention of any effect of oil/fat processing on swelling degree. See Yamaguchi ¶ 6. Moreover, Appellant presents evidence that oil/fat processing of starch can increase or decrease swelling degree of the starch, depending on the starch and oil/fat processing conditions. See Appeal Br. 8–12 (compiling data reported in Specification Tables 1–16). For Example, swelling degree of phosphate cross-linked pea starch reportedly remained constant or decreased after oil/fat processing, whereas swelling degree of phosphate cross-linked corn and tapioca starch increased after oil/fat processing. See id. at 8–9, Table A. As explained in the Specification, oil/fat processing involves heat- aging a starch and oil/fat mixture. Spec. ¶ 51. “As the heating temperature becomes higher, the difference between the swelling degrees before and after heat aging becomes greater.” Id. ¶ 54. In light of the foregoing discussion, we conclude a preponderance of the evidence presented does not support the Examiner’s finding that Yamaguchi implicitly teaches an overlapping range of swelling degree values for an “oil/fat-processed swelling-inhibited starch,” as is recited in claim 1. Accordingly, the Examiner’s rejection is not sustained. Appeal 2020-005055 Application 14/112,730 5 CONCLUSION The Examiner’s decision rejecting claims 1, 3–5, and 7–9 is reversed. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 3–5, 7– 9 103(a) Yamaguchi, Hoover 1, 3–5, 7–9 REVERSED