Christopher J. Reuter et al.

Patent Trials and Appeals Board

Sep 3, 2019

14208959 - (D) (P.T.A.B. Sep. 3, 2019)

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.
14/208,959 03/13/2014 Christopher J. Reuter 141499-0059 3675
35684 7590 09/03/2019
BUTZEL LONG, P.C.
IP DEPARTMENT
41000 Woodward Avenue
Stoneridge West
Bloomfield Hills, MI 48304
EXAMINER
FERNANDEZ, SUSAN EMILY
ART UNIT PAPER NUMBER
1651
NOTIFICATION DATE DELIVERY MODE
09/03/2019 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):
PATENT@BUTZEL.COM
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte CHRISTOPHER J. REUTER, STEVEN J. MACKENZIE,
LAUREN G. DANIELSON, and VINCENT SCUILLA
____________

Appeal 2017-011710
Application 14/208,9591
Technology Center 1600
____________

Before FRANCISCO C. PRATS, RACHEL H. TOWNSEND, and DAVID
COTTA, Administrative Patent Judges.

COTTA, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal under 35 U.S.C. § 134 involving claims to a process
for inhibiting foodborne pathogens. The Examiner rejected the claims on
appeal as anticipated under 35 U.S.C. § 102(a).
We REVERSE.

1 According to Appellants, the real party in interest is Osprey Biotechnics,
Inc. App. Br. 3.
Appeal 2017-011710
Application 14/208,959

2
STATEMENT OF THE CASE
The Specification states “[t]his disclosure relates to the use of bacillus
strains to inhibit the growth, reproduction or propagation of foodborne
pathogens to improve food safety and reduce incidents of disease such as
gastroenteritis.” Spec. ¶ 2.
Claims 1, 2, 4, and 9–11 are on appeal.2 Claim 1 is illustrative and
reads as follows:
1. A process for inhibiting foodborne pathogens,
comprising contacting a living animal, dressed carcass, or cut of
meat with an effective amount of Bacillus licheniformis strain
OBT 618 as deposited with the American Type Culture
Collection under accession number PTA-122188 that exhibits
antibacterial activity.
App. Br. 12.
The Examiner rejected claims 1, 2, 4 and 9–11 under 35 U.S.C.
§102(a)(1) as anticipated by Maketon et al., Efficacies of some Beneficial
Bacteria on the Colonization and Inhibition of Vibrio harveyi in Black Tiger
Shrimp (Penaeus monodon Fabricus) Larvae, 38 Kasetsart J. (Nat. Sci.)
393–399 (2004) (“Maketon”).3
ANALYSIS
In finding the pending claims anticipated, the Examiner found that
“[t]he B. licheniformis strain AM-04 disclosed in Maketon appears to be
identical to the presently claimed OBT 618 strain based on the fact that the

2 After the filing of the Appeal Brief, the claims were amended to cancel
claims 12–15. See Response to Notification of Non-Compliant Appeal
Brief, filed March 13, 2014 at 2.
3 In the Examiner’s Answer, the Examiner withdrew five pending
obviousness rejections over various combinations of prior art. Ans. 4.
These rejections are no longer a part of this appeal.
Appeal 2017-011710
Application 14/208,959

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microorganism of Maketon is of the same species and has the same property
of exhibiting antibacterial activity (specifically, against Vibrio).” Ans. 3–4.
More specifically, the Examiner asserts that it is “possible to prove or
disprove whether the AM-04 strain of Maketon is the same as the claimed
OBT 618 [strain] by comparing their colonization activity on V. harveyi or
their effects on the morphology of V. harveyi after colonization.” Ans. 6.
Appellants argue that “Maketon does not provide sufficient
information from which it can be determined whether . . . the AM-04 strain
[disclosed in Maketon] and the [O]BT 618 strain recited in the claims are the
same.” App. Br. 3.
As stated in In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992):
“[T]he examiner bears the initial burden ... of presenting a prima facie case
of unpatentability.” Appellants have persuaded us that the Examiner has not
carried the burden of establishing that the claimed invention would have
been obvious over the cited art.
The pending claims require a particular strain of Bacillus
licheniformis, strain OBT 618. The Examiner contends that it is possible to
establish that two strains of bacteria are identical by comparing their
colonization activity on Vibrio harveyi and their effects on the morphology
of Vibrio harveyi after colonization.4 However, as Appellants point out,
these characteristics are common to multiple different species of bacteria.

4 While the Examiner asserts that it is “possible” to prove two bacterial are
identical, the Examiner does not make that comparison here. We do not find
anywhere in the Examiner’s Answer or Final Action a citation to evidence
establishing the characteristics of Bacillus licheniformis OBT 618 to use as a
basis for comparing to the properties of Bacillus licheniformis AM-04
disclosed in Maketon. +
Appeal 2017-011710
Application 14/208,959

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Reply Br. 2–3 (discussing Maketon’s disclosure that Nitrosomas, B. subtilis,
and B. licheniformis all evidenced the ability to colonize on Vibrio harveyi
and to affect the morphology of Vibrio harveyi). Absent evidence that these
characteristics are unique to the OBT 618 strain of Bacillus licheniformis,
we lack an evidentiary basis on which to conclude that that AM-04 strain of
Bacillus licheniformis disclosed in Maketon is the same as the claimed OB
618 strain of Bacillus licheniformis.
Accordingly, we reverse the Examiner’s rejection of claims 1, 2, 4 and
9–11 as anticipated by Maketon.
SUMMARY
For the reasons set forth herein, we reverse the Examiner’s rejection of
claims 1, 2, 4, and 9–11 under 35 U.S.C § 102(a) as anticipated by Maketon.
REVERSED