Ex Parte Elder et al

Patent Trial and Appeal Board

Nov 1, 2012

11627748 (P.T.A.B. Nov. 1, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/627,748 01/26/2007 Vincent Allen Elder CFLAY.00395 2523
22858 7590 11/01/2012
CARSTENS & CAHOON, LLP
P.O. Box 802334
DALLAS, TX 75380-2334
EXAMINER
THAKUR, VIREN A
ART UNIT PAPER NUMBER
1792
MAIL DATE DELIVERY MODE
11/01/2012 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 Frito-Lay North America
(Inventors: Vincent Allen Elder, John Gregory Fulcher, Henry Kin-Han Leung,
Michael Grant Topor, and Rayford Thomas Smith)
____________________

Appeal 2011-002020
Application 11/627,748
Technology Center 1700
____________________

Before RICHARD E. SCHAFER, RICHARD TORCZON, and
DEBORAH KATZ, Administrative Patent Judges.

SCHAFER, Administrative Patent Judge.

DECISION ON APPEAL

Frito-Lay North America (Applicant) appeals the Examiner’s decisions
rejecting Claims 1-24 and 26-27. We affirm.
Exemplary Claims
Claims 1 and 15, the only independent claims, are reproduced below:
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1. A method for reducing the level of acrylamide in a potato
piece comprising the steps of:
a) providing an unmashed dehydrated potato piece;
b) rehydrating said potato piece in a rehydration solution
having a temperature of between about 1°C and about 18°C to
create a rehydrated potato piece, wherein said rehydrating
consists of only rehydrating said unmashed dehydrated potato
piece; and
c) thermally processing said rehydrated potato piece.

15. A method for making an asparagine deficient food, said
method comprising the steps of:
a) providing a plant-based food having a native
asparagine concentration
b) dehydrating said plant-based food to make a
dehydrated food such that a reduced asparagine concentration
after step c) comprises at least 50% less than said native
asparagine concentration; and
c) rehydrating said dehydrated food in a rehydration
solution to make a rehydrated food wherein said rehydration
solution comprises at least one acrylamide reducing agent,
wherein said rehydrating consists of only rehydrating said
plant-based food and wherein said rehydrating occurs in a
solution having a temperature of between about 1°C and about
18°C.

The Rejections
In the Answer, the Examiner maintained 16 separate rejections, all under
35 U.S.C. § 103(a):
1. Claims 1, 2, 4, 5, and 13 over the combined teachings of Stubbs1,
Beck2 and “Temperature and Heat3”;

1 U.S. Patent 5,071,661, patented Dec. 10, 1991.
2 U.S. Patent 5,292,542, patented Mar. 8, 1994.
3http://web.archive.org/web/20030321105136/http://www.pa.uky.edu/sciworks/xtr
a/local.htm (March 2003).
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2. Claim 3 over the combined teachings of Stubbs, Beck, “Temperature
and Heat,” Katucki4, and “Harmony House Foods5”;
3. Claim 6 over the combined teachings of Stubbs, Beck, “Temperature
and Heat,” Standing6, Katucki, Lewis7, and Hilton8;
4. Claims 7 and 12 over the combined teachings of Stubbs, Beck,
"Temperature and Heat", Durance,9 Welch10, Lewis11, Zyzak 60712, and Zyzak
04613;
5. Claims 8-11, 15-18, 20-24, and 26 over the combined teachings of
Stubbs, Beck, "Temperature and Heat", Durance, Welch, Lewis, Zyzak 607, Zyzak
046, and Lindsay14;.
6. Claim 14 over the combined teachings of Stubbs, Beck,
“Temperature and Heat”, Katucki , Zyzak 607, and Durance;
7. Claim 19 over the combined teachings of Stubbs, Beck, "Temperature
and Heat", Durance, Welch, Lewis, Zyzak 607, Zyzak 046, Lindsay, Standing,
Katucki, Lewis, and Hilton;

4 U.S. Patent 3,359,123, patented Dec. 19, 1967.
5 http://web.archive.org/web/20050425210612/www.harmonyhousefoods.com/
slicedpotato.html (April 25, 2005).
6 U.S. Patent 4,073,952, patented Feb. 14, 1978.
7 U.S. Patent 5,441,758, patented Aug. 15, 1995.
8 U.S. Patent 4,140,801, patented Feb. 20, 1979.
9 U.S. Patent 5,972,397, patented Oct. 26, 1999.
10 U.S Patent 5,534,280, patented Jul. 9, 1996.
11 U.S. Patent 5,441,758, patented Aug. 16, 1995.
12 U.S. Patent Publication 2004/0101607 A1, pub. May 27, 2004.
13 U.S. Patent Publication 2004/0058046 A2, pub. Mar. 25, 2004.
14 U.S. Patent Publication 2004/0224066 A1, pub. Nov. 11, 2004.
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8. Claim 27 under 103(a) over the combined teachings of Stubbs, Beck,
"Temperature and Heat", Durance, Welch, Lewis, Zyzak 607, Zyzak 046, Lindsay,
and Katucki;.
9. Claims 1, 2, 4, 5, and 13 over the combined teachings of Lewis,
Stubbs, Beck, and "Temperature and Heat";
10. Claim 3 over the combined teachings of Lewis, Stubbs, Beck,
"Temperature and Heat," Katucki, and Harmony House Foods;
11. Claim 6 over the combined teachings of Lewis, Stubbs, Beck,
"Temperature and Heat", Standing, Katucki, Beck, and Hilton;
12. Claims 7 and 12 over the combined teachings of Lewis, Stubbs, Beck,
"Temperature and Heat", Durance, Welch, Zyzak 607, and Zyzak 046;
13 Claims 8-11, 15-18, 20-24, and 26 over the combined teachings of
Lewis, Stubbs, Beck, "Temperature and Heat", Durance, Welch, Zyzak 607, Zyzak
046, and Lindsay;
14. Claim 19 over the combined teachings of Lewis, Stubbs, Beck,
"Temperature and Heat", Durance, Welch, Zyzak 607, Zyzak 046, Lindsay,
Standing, Katucki, Beck, and Hilton.
15. Claim 14 over the combined teachings of Lewis, Stubbs, Beck,
"Temperature and Heat”, Katucki, and Zyzak 607; and
16. Claim 27 over the combined teachings of Lewis, Stubbs, Beck,
"Temperature and Heat", Durance, Welch, Zyzak 607, Zyzak 046, Lindsay,
Katucki, and Zyzak 607.

Analysis
Applicant’s Brief identifies and argues five groups of claims. We limit our
discussion to the arguments made with respect to each group.
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Applicant’s Group I: Claims 1-6 and 13
Applicant contends that Stubbs does not meet the claim requirement that
“said rehydrating consists of only rehydrating said unmashed dehydrated potato
piece”.15 According to Applicant, Stubbs’ “adhesive material” and “separation
particles,” which are present during dehydration in Stubbs’s process will rehydrate
during the rehydration step. Brief, 7. Thus, Applicant argues, Stubbs discloses
rehydrating more than “only” the “unmashed dehydrated potato piece.”
The “rehydrating” step must be evaluated in light of Applicant’s
specification. In order to be “rehydrated” the material must first be dehydrated.
Applicant specification does not use “dehydrate” in the conventional sense of
removing water. Instead, Applicant has provided a specific definition referring to
a particular outcome –the reduction of asparagine after rehydration:
As used herein, dehydration is defined as a water removal
process in a non-oil medium that removes sufficient water such
that when the dehydrated piece of food is rehydrated, it has
about 50% less asparagine than the food piece had prior to
dehydration. As used herein, a dehydrated food piece is any
food piece that is dehydrated such that at subsequent
rehydration the food piece comprises an asparagine-deficient
food. As used herein, an asparagine-deficient food comprises
about 50% less and more preferably about 70% less and most
preferably about 90% less of the asparagine concentration of
the food piece prior to dehydration.

Specification, 6:1 - 7:2. In short, “dehydration,” as used by Applicant, requires
that asparagine be reduced on rehydration.

15 In this regard, we note that Applicant has not challenged the Examiner’s finding
(Answer, 5) that Stubbs’ process would inherently reduce the amount of
acrylamide in the potato piece. Consistent with the Examiner’s finding, we also
note that Applicant’s rehydration solution may be water alone. Specification, 8:20-
22; 13:3-5.

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We fail to see why, and Applicant has not directed us to evidence showing
that, Stubbs’ adhesive material and separator particles would be “dehydrated” such
that the asparagine level of the adhesive and separators would be decreased upon
rehydration. Stubbs teaches that crystalline starches may be used as both the
separation particles and adhesive materials. Stubbs, 8:22-44. The pure starches
would not contain asparagine. While the starch adhesive material and separator
particles might be dehydrated and rehydrated in the conventional sense of those
terms, only Stubbs’ potato pieces would be dehydrated as defined by Applicant.
In any event, one having ordinary skill in the art would have recognized the
benefits resulting from the use of separator particulate and adhesive material. See
Stubbs, 3:13-49. As correctly noted by the Examiner, where the benefits of the
separator particulates and adhesive materials would not be desired or necessary, it
would have been obvious to eliminate both and their respective functions. Answer,
32.
Applicant also challenges the Examiner’s reliance on Beck for teaching
rehydration with cold water at a temperature of 1-18º C. Applicant argues that
Beck, teaches two hydration steps, one hot and one cold, and says the Examiner
failed to articulate why one skilled in the art would choose only the cold
rehydration step. Brief, 8.
Applicant misapprehends the Examiner’s argument. Stubbs teaches
rehydration with cold tap water. Stubbs, 6:2-5; 9:40-44. Beck, along with the
“Temperature and Heat” publication, were relied upon as evidence that one having
ordinary skill in the art would understand cold tap water to include temperatures in
the range specified in Applicant’s claims. Answer, 7. We also note that the
rehydration solution temperature is apparently not critical to achieving the goals of
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the invention. Applicant says that the rehydration solution may be at any “suitable
temperature.” Specification, 8:8-10.
We do not perceive error in the Examiner’s decisions rejecting Claims 1-6
and 13.
Applicant’s Group III: Claim 12
Claim 12 limits the rehydration temperature to the range of 7-12º C. As
noted above, Stubbs teaches rehydration in cold tap water and Beck and “Heat and
Temperature” show that those working in the art would understand “cold water” to
include temperatures in the range specified by Applicant’s claims. Thus, Beck
teaches rehydrating potatoes in the range of about 2-21ºC (30-70ºF) (Beck, 3: 24-
26) and specifically teaches rehydrating at temperatures as low as 10ºC (50ºF)
(Beck, 7:32-35). In this regard we again note that Applicant’s specification
indicates the temperature of the rehydration solution is not critical. Specification,
8:8-10. Using a rehydration temperature within the range specified in Claim 12
would have been obvious.
We also see no error in the Examiner’s finding that the potato rehydration
temperature is a result effective variable. Stubbs teaches that the temperature
effects the rehydration time. Stubbs, 6:2-6. This is consistent with Applicant’s
disclosure that the “rehydration solution can be kept at any suitable temperature
range and the potato pieces can be kept in the solution for the amount of time
required to result in an asparagine-deficient potato piece.” Specification, 8:8-10.
Absent a showing that the claimed temperature range is particularly good,
determination of the appropriate or optimal temperature range is within the skill of
the art and would have been obvious.
We see no error in the Examiner’s decisions rejecting Claim 12 and affirm
the rejections.
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Applicant’s Group II: Claim 7
Claim 7 adds that the rehydration solution includes asparaginase. Applicant
contends that one having ordinary skill in the art would not have included
asparaginase during the rehydration step. Applicant asserts that the Examiner’s
reliance on the Zyzak references as suggesting the addition is classic hindsight and
teaches away from using asparaginase. Brief, 9-10.
We disagree. The hypothetical person of ordinary skill in the art was aware
that acrylamide in cooked food products may be undesirable. Zyzak 607, ¶¶ 0004.
Acrylamide forms when food products containing asparagine are heated. Zyzak
607, ¶¶ 0015. The amount of acrylamide may be reduced by decreasing the
amount asparagine in the foods. Zyzak 607, ¶¶ 0017. The asparagine may be
extracted by soaking, leaching, washing, and rinsing using water as a solvent.
Zyzak 607, ¶¶ 0039-0041. The solvent may include an asparagine-altering enzyme
such as asparaginase. Zyzak 607, ¶¶ 0046 – 0048. A variety of foods including
potato products may be treated. Zyzak 607, ¶ 0064. Zyzak 607 provides an
example of a method of preparing potato chips having reduced asparagine and
acrylamide. Zyzak 607, ¶¶ 0107 – 0115. The process steps include peeling,
washing and slicing the potatoes to make slices; rinsing, blanching and extracting
the slices; drying the slices and frying the slices to form potato chips. Zyzak 607,
¶¶ 0107-0115. While that specific example describes extracting prior to drying the
slices, Zyzak 607 teaches that the point in the process where the extraction is done
is not critical: “it should be understood that the extraction may be conducted at any
suitable stage of the process.” Zyzak 607, ¶ 0116.
In view the above teachings, as well as others in the record, we agree with
the Examiner’s conclusion that it would have been obvious to include asparaginase
in Stubb’s rehydration solution to reduce the amount of acrylamide in the final
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potato product. Applicant has merely arranged steps known in the art with each
performing the same function it had been known to perform and yields no more
than one would expect from that arrangement.
We do not see reversible error in the Examiner’s decisions rejecting Claim 7.
Applicant’s Group IV: Claims 8-11, 15-18, 20-24 and 26
With respect to this group of claims, Applicant challenges the Examiner’s
reliance on the Lindsay reference arguing that the Examiner has not provided a
rational underpinning to support the conclusion of obviousness. Brief, 12.
Applicant notes that “Stubbs has no discussion regarding acrylamide and Lindsay
fails to teach or suggest using an acrylamide reducing compound in a rehydration
solution used to rehydrate a dehydrated food.” Brief, 12.
The Examiner rejected these claims under 35 U.S.C. 103(a) as unpatentable
over the combined teachings of Stubbs, Beck, "Temperature and Heat", Durance,
Welch, Lewis, Zyzak 607, Zyzak 046, and Answer, 14-17. The Examiner also
separately rejected the claims over the combined teachings of Lewis, Stubbs, Beck,
Durance, Welch, Zyzak 607, Zyzak 046, and Lindsay. Answer, 27-30.
Applicant’s argument simply does not address the rejection made by the
Examiner. Applicant is attempting to rebut obviousness by attacking the references
individually where the rejection is based upon the combined teachings of the
references. Stubb’s and Lindsay may not be read in isolation but must be read for
what they fairly teach in combination with the prior art as a whole. See In re
Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed.Cir.1986).
The Examiner relied on the Zyzak references as evidence that the person of
ordinary skill in the art would have known of the possible acrylamide problem and
the treatment with an asparaginase effecting enzyme to alleviate that problem.
Answer, 12.
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We do not see error in the Examiner’s rejections of Claims 8-11, 15-18, 20-
24 and 26 and affirm the rejections.
Applicant’s Group V: Claims 1, 2, 4, 5, and 13
Applicant contends that Lewis does not teach the use of a rehydration
“solution” but teaches the use of a rehydration “mist.” Brief, 13-14. Applicant
directs us to the portions of the Specification that refer to the solution as a “liquid
solution,” “water solution” and an “enzyme solution.” Brief, 14.
We fail to see how Applicant’s usage of “solution” in the written description
excludes the use of a mist or spray for rehydration. Indeed, Lewis teaches
rehydrating using a salt water solution spray. Lewis, Example 3.
Applicant argues that Lewis teaches away from soaking to rehydrate the
potatoes. Brief, 15. Applicant’s claims however, are not limited to soaking the
dehydrated potatoes in a bath. If Applicant had wanted to limit the method to
soaking in a water bath, it could have easily and expressly stated such a limitation
in its claims.
Applicant also argues that one skilled in the art would not have a reason to
combine Stubbs with Lewis’ teachings. Brief, 15. As noted by the Examiner,
Lewis does not specify the temperature of the water to be used for rehydration.
The Examiner relied upon Stubbs, as well as Beck, to provide the temperature of
the rehydration solution. Stubbs teaches rehydration using cold tap water and Beck
teaches rehydrating in cold water at a temperature of 2-21ºC (30-70ºF). Stubbs,
6:2-5, 9:40-44; Beck, 3:24-26. It would have been appropriate and obvious to use
cold water within the temperature range claimed for Lewis’ rehydration spray. In
this regard, we again note that Applicant’s Specification indicates that the
rehydration temperature is not critical in that “any suitable temperature range” can
be used.” Specification, 8:8-10.
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We fail to see error in the Examiner’s decisions rejecting Claims 1, 2, 4, 5,
and 13 and affirm those rejections.
Other Arguments
We have considered Applicant’s remaining arguments and find none that
warrant reversal of the Examiner’s decisions. Cf. Hartman v. Nicholson, 483 F.3d
1311, 1315 (Fed. Cir. 2007).
DECISION
The Examiner’s decisions rejecting Claims 1-24 and 26-27 under 35 U.S.C.
§ 103(a) are affirmed.
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136.

AFFIRMED

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