Ex Parte Yoshida et al

Patent Trial and Appeal Board

Sep 20, 2018

12996275 (P.T.A.B. Sep. 20, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/996,275 12/03/2010
20277 7590 09/24/2018
MCDERMOTT WILL & EMERY LLP
The McDermott Building
500 North Capitol Street, N.W.
WASHINGTON, DC 20001
FIRST NAMED INVENTOR
Kunihiko Yoshida
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
083624-0013 6421
EXAMINER
TRAN, LIEN THUY
ART UNIT PAPER NUMBER
1793
NOTIFICATION DATE DELIVERY MODE
09/24/2018 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):
ipdocketmwe@mwe.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KUNIHIKO YOSHIDA, YOSHIFUMI MIYAZAKI, and
MITSURU TANAKA
Appeal2017---010898
Application 12/996,275
Technology Center 1700
Before LINDA M. GAUDETTE, WESLEY B. DERRICK, and
MICHELLE N. ANKENBRAND, Administrative Patent Judges.
DERRICK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants 1 seek review under 35 U.S.C. § 134 from the Examiner's
maintained rejection2 under 35 U.S.C. § 103(a) of claims 1--4 and 7 over
Murata3 and over Ikeda. 4 We have jurisdiction under 35 U.S.C. § 6.
We affirm, designating the rejection as a new ground of rejection.
1 Nissin Food Holdings Co., Ltd. is identified as the real party in interest.
Appeal Br. 1.
2 A rejection for lack of written description has been withdrawn. Ans. 5.
3 Murata, JP 35-013645, published Sept. 19, 1960. The Examiner relies on a
machine translation, which use Appellants do not contest.
4 Ikeda et al., JP 10-210924, published Nov. 8, 1998. The Examiner relies
on a machine translation, which use Appellants do not contest.
Appeal2017---010898
Application 12/996,275
CLAIMED SUBJECT MATTER
The subject matter of the claims on appeal relates to a bundle of fresh
noodles useful as ingredient noodles of instant noodles. Specification filed
December 3, 2010 ("Spec."), Abstract. Claims 1 and 3 are independent.
Claim 1 is representative.
1. Bunchy fresh noodles disposed on a conveyor, the
bunchy fresh noodle comprising:
a noodle stack including a plurality of noodle strings that
randomly overlap one another, wherein:
each of the plurality of noodle strings has multiple loops,
which are disposed to be sequentially shifted in a first direction,
each of the plurality of noodle strings, as a whole,
extends along the first direction,
locations of the loops of each of the plurality of noodle
strings are not in synchronization with location of the loops of
adjacent one of the plurality of noodle strings,
each of the plurality of noodle strings is disposed over
adjacent one of the plurality of noodle strings,
positions of the loops of the each of the plurality of
noodle strings are [are] not aligned with positions of the loops
of the adjacent one of the plurality of noodle strings,
the loops are disposed on both sides of each of the
plurality of the noodle strings such that a direction of a loop on
one side is different from a direction of a loop on the other side,
when traced from one end of the each of the plurality of the
noodle strings, and
more than two noodle strings are overlapped such that
more than two loops of the more than two noodle strings are
overlapped in the noodle stack.
Appeal Brief filed March 31, 2017 ("Appeal Br."), 21.
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Application 12/996,275
DISCUSSION
We have reviewed the maintained grounds of rejection set forth by the
Examiner, Appellants' arguments, and the Examiner's response. 5 On this
record, we affirm the obviousness rejection of the claims over Murata,
designating it as a new ground, but reverse the rejection over Ikeda.
For any ground of rejection, "the Examiner bears the initial burden ...
of presenting a prima facie case ofunpatentability." In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992). We consider the record to determine whether
Appellants have identified reversible error in the Examiner's rejection. See
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," citing Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI
2010) (precedential)). Moreover, "the burden of showing that the error is
harmful normally falls upon the party attacking the agency's determination."
In re Chapman, 595 F.3d 1330, 1338 (Fed. Cir. 2010) (quoting Shinseki v.
Sanders, 556 U.S. 396, 409 (2009)).
Obviousness over Murata
Murata relates to a method of manufacturing noodles in which
noodles are formed by cutting dough into stripes and, by use of guiding
pipes, the noodles formed are directed onto an endless conveying belt.
Murata 1. The Examiner relies on Murata as teaching "noodles repeatedly
bended and formed [into] loops" and the "noodles forming loops on a
conveyor." Ans. 3 ( citing Murata, Fig. 3). The Examiner finds that "[i]t is
5 We refer to the Specification, the Final Office Action dated November 1,
2016 ("Final Act."), the Appeal Brief, the Examiner's Answer dated June
26, 2017 ("Ans."), and the Reply Brief filed August 24, 2017 ("Reply Br.").
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Application 12/996,275
expected [that] the loops will overlap adjacent loops as more noodle strings
come out." Id. The Examiner further finds "Murata discloses the same
product coming out of the same apparatus as shown in figure 3 of Murata in
comparison to figure 3 of the instant specification." Id. Regarding the
manifest difference in that the claims require "loops forming on both sides
of the string and having different direction," the Examiner determines that
the limitation is not patentably significant because it is a
variation in design choice that does not have any effect on the
product. Variation in appearance of a product is an obvious
matter of preference and would have been obvious to one
skilled in the art .... A noodle string having loops on both
side[s] is not different from [a] noodle string having loop[s] on
one side in composition or taste or flavor; they are both noodle
strings.
Id. at 3--4. As to the limitations relating to the loops being sequentially
shifted in a first direction, the strings extending in that first direction, and the
strings ( and their loops) not being synchronized, the Examiner determines
these are processing limitations that "do not define any structure or property
to the noodles." Id. at 3. As to "more than two noodle strings [being]
overlapped in the noodle stack," the Examiner determines that "[a]s more
noodle strings come out, they have to stack on top of the strings that came
before." Id. at 6; see also Final Act. 7 ("As more noodle strings come out
[ onto Murata' s conveyor], the strings will overlap to form stacks of noodle
strings.").
Appellants contend that claim 1 is patentable over Murata because
Murata fails to disclose or render obvious certain features of the claim. 6
6 Our discussion focuses on Appellants' arguments as to claim 1, as the same
argument is relied on for each of independent claims 1 and 3. Compare
Appeal Br. 9-12, with id. at 12-15.
4
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Application 12/996,275
Appeal Br. 9-12; see also Reply Br. 2---6. Appellants argue that the
Examiner has failed to support the determination that Murata' s process
would result in "'a plurality of noodle strings that randomly overlap on
another' and 'more than two loops of the more than two noodle strings are
overlapped in the noodle stack."' Appeal Br. 9-10. Appellants also argue
that the Examiner erred in failing to consider the limitations relating to the
loops being sequentially shifted in a first direction, the strings extending in
that first direction, and the strings ( and their loops) not being synchronized,
as structural limitations. Id. at 10-11. Further, Appellants contend that
Murata fails to disclose the recited structural limitations because "its spiral
loops are necessarily formed on one side only" ( emphasis omitted) and its
"noodle strings are necessarily synchronously placed on the conveyor." Id.
at 11-12. Appellants also contend that "[i]n Murata, three or more noodles
would never be overlapped with each other" (id. at 11) and, that "since the
noodle strings of Murata are not stacked, Murata' s noodles are inappropriate
for manufacturing instant noodles for industrial purposes" (id. at 12).
On this record, we are unpersuaded that the Examiner erred harmfully
in rejecting claim 1 as obvious over Murata. As to the random overlapping
orientation of noodles, the non-synchronized, sequentially-shifted
orientation of loops, and loops forming on both sides of the string and
having different direction, the differences between what is disclosed in
Figure 3 of Murata and the recited structure reasonably is a matter of design
choice. In re Chu, 66 F.3d 292, 298-99 (Fed. Cir. 1995) (providing
guidance that "design choice" is appropriate where the applicant fails "to set
forth any reasons why the differences between the claimed invention and the
prior art would result in a different function or give unexpected results"); see
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also In re Rice, 341 F.2d 309, 314 (CCPA 1965) ("[A]ppellants have pointed
to no results traceable to this feature which would indicate that it is other
than an obvious matter of design choice" and "Appellants have failed to
show that the change [in the claimed invention] as compared to [the
reference], result in a difference in function or give unexpected results."); cf
In re Gal, 980 F.2d 717, 719 (Fed. Cir. 1992) (holding a rejection grounded
on obvious design choice improper where "the different structure of
[applicant's invention] and [that of applied art] achieve different purposes").
Appellants contend that
[ w ]hen instant noodles are manufactured from this stacked
status of the noodle strings [ showing unique random shapes, as
recited by claim 1], it is possible to obtain substantially straight
noodles when the instant noodles are cooked with hot water.
Such a unique and unexpected feature of the present subject
matter cannot be derived from Murata.
Appeal Br. 12. Appellants further contend that "the instant noodles,
manufactured from the stacked noodle strings, have different shapes after the
instant noodles are cooked" (Reply Br. 5 ( citing Spec. Figs. 14--16) ), and
that "the shape and taste of the cooked instant noodles is [sic] unexpected"
(id.). Appellants, however, do not direct us to persuasive record evidence of
significant differences in shape or taste of the noodles after cooking. 7
In the Specification, the conventional example cited (Fig. 15) is
disclosed as having a significantly different single noodle string trace (Fig.
7 The Declaration submitted October 17, 2016 ("Deel."), does not address
the properties of noodles after cooking. The additional Declaration
submitted April 20, 2016, in Application No. 13/951,452, that Appellants
urge us to consider (Reply Br. 6, nl) is not evidence of record in this appeal.
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Application 12/996,275
4) than either the comparative example (Fig. 5) or the example (Fig. 6). 8
Spec. 12-13, Figs. 4---6, 15. As to single noodle strings, the comparative
example (Fig. 5) differs from that of the example (Fig. 6) in that adjacent
loops in the same noodle string overlap in the comparative example, but not
in the example. The stack of noodle strings in the comparative example is
depicted as having the synchronized loops, i.e., loops of adjacent noodle
strings are aligned, (Fig. 5), while this is not the case for the example (Fig.
6). Turning to the relied on results, we do not find any differences
sufficiently manifest between the noodles depicted in Figure 14 (example)
and Figure 16 ( comparative example), or between the comparative example
and example in Figure 17 to establish a difference in function or any
unexpected result. Moreover, as the comparative example is depicted as
including overlap between loops on the same noodle string (Fig. 5), which
differs from both the individual noodle string without overlap depicted in the
example (Fig. 6) and in Murata's Figure 3, the comparison is not so
straightforward that it would otherwise suffice without further explanation.
As to Murata neither disclosing nor suggesting forming a noodle
stack, Appellants' arguments are not persuasive of reversible error.
Although Murata' s Figure 3 does depict schematically a single layer of
noodles, there is no persuasive evidence that the Examiner erred in finding
that Murata, as a whole, would have led one of ordinary skill in the art at the
time of the invention to form layers of noodles into a stack on the conveyor.
See In re Preda, 401 F.2d 825, 826 (CCPA 1968) ("[I]n considering the
8 The depicted "example" does not correspond to claim 1 at least in that the
loops in the "example" are disposed on a single side of the noodle strings.
See Spec., Fig. 6; Appeal Br. 21 ( claim 1 ).
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disclosure of a reference, it is proper to take into account not only specific
teachings of the reference, but also the inferences which one skilled in the
art would reasonably be expected to draw therefrom."); see also In re
Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (quoting In re Samour, 571
F.2d 559,562 (CCPA 1978)) ("[A] prior art reference must be 'considered
together with the knowledge of one of ordinary skill in the pertinent art.'").
In this circumstance, Appellants maintain that "Murata' s noodles are
inappropriate for manufacturing instant noodles for industrial purposes"
because "the noodles of Murata are not stacked." Appeal Br. 12; Reply Br.
6; Deel. ,r 7. Murata, however, specifically discloses "noodle stripes [being]
fed onto an endless conveying belt to manufacture [its] noodle [product]"
(Murata 1 ( emphasis added)), and Appellants provide neither sufficient
explanation nor evidence why Murata is not, in fact, directed to
manufacturing instant noodles (see generally Appeal Br.; Reply Br.; Decl.). 9
Moreover, Appellants fail to offer persuasive argument why the manner of
operation for its apparatus that Murata would have suggested to one of
ordinary skill in the art at the time of the invention would not have resulted
in noodle stacks meeting the requirements of claim 1.
For the reasons above, we affirm the rejection of claims 1-4 and 7
over Murata. Because our reasoning relies on facts and reasoning that
differs in some respects to that of the Examiner, we designate this
9 Although Appellants do not expressly rely on the Declaration as evidence
supporting their argument, it would fall short because it contains only a
conclusory statement mirroring Appellants' argument. See, e.g., In re Am.
Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) ("[T]he Board
is entitled to weigh the declarations and conclude that the lack of factual
corroboration warrants discounting the opinions expressed in the
declarations.") ( citations omitted).
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Application 12/996,275
affirmance as setting forth a new ground of rejection. See In re Stepan Co.,
660 F.3d 1341, 1344 (Fed. Cir. 2011).
Obviousness over Ikeda
Ikeda relates to a method of manufacturing noodles that prevents
noodles from adhering to one another. Ikeda ,r 1. The Examiner relies on
Ikeda as disclosing a noodle cutting roll using scrapers having different
lengths and contact angles that, in conjunction with a noodle cutting roll,
provides for noodles being scraped on the roll at different positions on the
cutting ro 11. Ans. 4 (citing Ikeda ,r,r 1, 6, 11-19, Drawings).
The Examiner concedes that "[Ikeda] do[es] not disclose a conveyor
and the noodle disposed on the conveyor." Id.
The Examiner concludes that "it would have been obvious to include
a conveyor because it is conventional to provide such means for the noodle
strings to fall on for automation of the process." Id. at 5. The Examiner
further finds that "it is inherent the noodles are disposed on a conveyor in
the same ways and having all the configurations claimed." Id.
Appellants argue that "Ikeda's cutting operation would not necessarily
result in the noodle stack same as the claims" (Appeal Br. 16), and that the
Examiner has erred in failing to provide a basis reasonably supporting that
the allegedly inherent characteristic is necessarily present (id. at 16-17).
The Examiner responds that "[t]he key words to appellant's argument
are 'would not necessarily'; appellant has not shown that Ikeda would not
produce the claimed noodle stack." Ans. 11. The Examiner also turns to the
Specification for its disclosure that conditions can be adjusted to form a
noodle stack of particular characteristics (id. (citing Spec. ,r 29)) and for
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Application 12/996,275
disclosure relating to the device used without guide tubes (id. at 12 ( citing
Spec. ,r,r 32, 45)).
The Examiner has failed to establish a prima facie case of obviousness
over Ikeda because it is not established that the claimed noodle stack would
necessarily result, as the Examiner in effect concedes. In re Montgomery,
677 F.3d 1375, 1379-80 (Fed. Cir. 2012) ("The inherent result must
inevitably result from the disclosed steps; '[i]nherency ... may not be
established by probabilities or possibilities.'") ( citations omitted). Rather,
the Examiner improperly shifts the burden to Appellants to establish that
"Ikeda would not produce the claimed noodle stack." Ans. 11. The
Examiner's reliance on the Specification's disclosure for teaching that the
conditions can be adjusted is likewise insufficient to meet the Examiner's
initial burden of establishing a prima facie case. Oetiker, 977 F.2d at 1445.
Accordingly, on this record, we reverse the rejection of claims 1--4
and 7 over Ikeda.
DECISION
The rejection under 35 U.S.C. § 103 of claims 1--4 and 7 over Murata
is AFFIRMED, but pursuant to 37 C.F.R. § 4I.50(b), it is designated as a
NEW GROUND OF REJECTION.
The rejection under 35 U.S.C. § 103 of claims 1--4 and 7 over Ikeda is
REVERSED.
Section 41.50(b) provides "[a] new ground of rejection pursuant to
this paragraph shall not be considered final for judicial review." Section
41.50(b) also provides:
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Application 12/996,275
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
( 1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the prosecution
will be remanded to the examiner. The new ground of rejection
is binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the
opinion of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the
claims, appellant may again appeal to the Board pursuant to this
subpart.
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
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Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure§ 1214.01.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED; NEW GROUND OF REJECTION
PURSUANT TO 37 C.F.R. § 4I.50(b)
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