Ex Parte 6319526 et alDownload PDFBoard of Patent Appeals and InterferencesMay 25, 201190006317 (B.P.A.I. May. 25, 2011) Copy Citation 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. 90/006,317 07/03/2002 6319526 01473.302800 9581 25763 7590 05/26/2011 DORSEY & WHITNEY LLP - MINNEAPOLIS (IP/PT-23) INTELLECTUAL PROPERTY PRACTICE GROUP ATTENTION: PATENT PROSECUTION DOCKETING DEPARTMENT 50 SOUTH SIXTH STREET, SUITE 1500 MINNEAPOLIS, MN 55402-1498 EXAMINER KUNZ, GARY L ART UNIT PAPER NUMBER 3991 MAIL DATE DELIVERY MODE 05/26/2011 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 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. 95/000,003 01/08/2002 6319526 01473.302300 4575 25763 7590 05/26/2011 DORSEY & WHITNEY LLP - MINNEAPOLIS (IP/PT-23) INTELLECTUAL PROPERTY PRACTICE GROUP ATTENTION: PATENT PROSECUTION DOCKETING DEPARTMENT 50 SOUTH SIXTH STREET, SUITE 1500 MINNEAPOLIS, MN 55402-1498 EXAMINER KUNZ, GARY L ART UNIT PAPER NUMBER 3991 MAIL DATE DELIVERY MODE 05/26/2011 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 BOARD OF PATENT APPEALS AND INTERFERENCES ____________ LEPRINO FOODS CO. Requester and Respondent v. Patent of LAND O’ LAKES, INC. Patent Owner and Appellant ____________ Appeal 2011-005022 Reexamination Control Nos. 95/000,003 and 90/006,317 Patent 6,319,526 B1 Technology Center 3900 ____________ Before ROMULO H. DELMENDO, SALLY G. LANE, and RICHARD M. LEBOVITZ, Administrative Patent Judges. LEBOVITZ, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-005022 Reexamination Control Nos. 95/000,003 and 90/006,317 Patent 6,319,526 B1 2 This is a decision on appeal in a merged ex parte and inter partes reexamination of U.S. Patent No. 6,319,526. The Patent Owner appeals the Examiner’s decision to reject claims as anticipated under 35 U.S.C. § 102 and as obvious under 35 U.S.C. § 103. The Board’s jurisdiction for this appeal is under 35 U.S.C. §§ 6(b), 134, and 315. We affirm. BACKGROUND The patent in dispute in this appeal is U.S. Patent No. 6,319,526 B1, issued November 20, 2001, having claims to a process of manufacturing a pasta filata cheese or a mozzarella-like cheese (hereinafter, “the ‘526 patent”). A request for inter partes reexamination pursuant to 37 C.F.R. § 1.915 was filed on January 8, 2002, by Third-Party Requester John W. Behringer, for Leprino Foods Company, and was assigned Control No. 95/000,003. Reexamination was ordered. A request for ex parte reexamination, pursuant to 37 C.F.R. § 1.510, was subsequently filed on July 3, 2002, by the same Third-Party Requester, John W. Behringer, for Leprino Foods Company, and was assigned Control No. 90/006,317. Reexamination was also ordered. The Third-Party Requester requested merger of the ‘317 proceeding with the ‘003 proceeding. The merger was granted (Decision Merging Reexamination Proceedings, mailed January 30, 2003). In the substitute Appeal Brief filed August 6, 2009, claims 1-14 and 16-163 were under appeal. On August 10, 2009, Patent Owner filed an amendment cancelling claims 104-113, 124, and 137-163. Therefore, Appeal 2011-005022 Reexamination Control Nos. 95/000,003 and 90/006,317 Patent 6,319,526 B1 3 claims 1-14, 16-103, 114-123, and 125-136 are pending in this merged proceeding. The claims stand rejected by the Examiner under multiple grounds: 1. Claims 1-4, 7-14, 16-22, 25-29, 31, 32, 35, 36, 38, 40-48, 51, 62- 69, 89-92, and 95-101 stand rejected as anticipated under 35 U.S.C. § 102(e) as anticipated by Rhodes1 (Right of Appeal Notice (“RAN”) 22). 2. Claims 5, 6, 10, 12, 13, 14, 23, 24, 25, 30, 33, 34, 37, 39, 45, 46, 47, 49, 50, 52-61, 65, 68, 70-103, 114-123, 125, and 126-136 stand rejected under multiple grounds under 35 U.S.C. § 103 as obvious in view of Rhodes and several different secondary publications. The grounds are listed on pages 47-81 in the RAN as grounds II-XXIII.2 The grounds are also summarized on pages 10-11 of Appellant’s Appeal Brief, dated July 28, 2010 (“App. Br.”). Most of the obviousness rejections were challenged on the same basis as the anticipation rejection. Because the rejections are lengthy, we will not repeat them here, but refer to the RAN and Appeal Brief for the specific statements of the rejections. 3. Claim 1 stands rejected under 35 U.S.C. § 103(a) as obvious in view of Rhodes and Bottazzi (RAN 81; ground XXIV). Because we affirm the rejection of claim 1 as anticipated by Rhodes alone, as discussed further below, we do not reach this obviousness rejection. 1 U.S. Patent No. 6,120,809, issued Sept. 19, 2000. 2 It appears that ground XIII (RAN 65) was intended to include claims 127- 133 as indicated in grounds XIV, XV, etc. Appeal 2011-005022 Reexamination Control Nos. 95/000,003 and 90/006,317 Patent 6,319,526 B1 4 Claim 1 is representative and reads as follows: 1. A process of manufacturing, a pasta filata cheese or a mozzarella-like cheese comprising: providing a milk composition having a selected protein and fat composition; pasteurizing the milk composition; forming a coagulum from the milk composition; cutting the coagulum to separate curd and whey; draining the whey from the curd; heating the curd without aqueous immersion to an approximate temperature range of 130° F. to 160° F.; adding a cheese emulsifying salt or a dairy ingredient or both prior to mechanical working; mechanically working the curd into a fibrous mass; and forming the cheese into a selected shape. (App. Br. 37.) CLAIM INTERPRETATION Legal Principles During reexamination, as with original examination, the PTO must give claims their broadest reasonable construction consistent with the specification. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Therefore, we look to the specification to see if it provides a definition for claim terms, but otherwise apply a broad interpretation. In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007); see also In re Suitco Surface, Inc., 603 F.3d 1255, 1259 (Fed. Cir. 2010). “In some cases, the ordinary meaning of claim language as understood by a person of skill in the art may be readily apparent even to lay judges, and claim construction in such cases involves little more than the application of the widely accepted meaning of commonly understood words … In such Appeal 2011-005022 Reexamination Control Nos. 95/000,003 and 90/006,317 Patent 6,319,526 B1 5 circumstances, general purpose dictionaries may be helpful.” Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005). Findings of Fact (“FF”) FF1 In the manufacture of pasta filata cheeses like Mozzarella, curd solids are typically heated in a hot water bath. . . . Spent hot water containing cheese solids, salt and energy is a major economic concern when considering commercial mozzarella cheese manufacture. . . . Elimination or at least reduction in quantity of such spent hot water would be beneficial in terms of production cost (improved vat milk to finished cheese solids retention) as well as harm to the natural environment. (‘526 patent, col. 1, ll. 6-30 (“Background of the Invention”).) FF2 The present invention includes a process for making a pasta filata type cheese. Most common of such cheeses are mozzarella and provolone. Traditional manufacturing processes for making such cheese varieties are characterized by the fact that after the whey is drained off, the curd is immersed in hot water or hot whey and the submerged curd is worked and stretched while it is in a plastic condition to impart into the curd, the fibrous texture that characterizes such cheese varieties. (‘526 patent, col. 2, l. 66 - col. 3, l.7.) FF3 According to the process of the present invention, the working of the mozzarella curd in a hot liquid is eliminated. The working of the curd occurs in a substantially liquid-free environment. By liquid-free is meant that the curd is not immersed in a liquid such as water or whey. The curd does have water entrapped within and may have some surface wetness, but Appeal 2011-005022 Reexamination Control Nos. 95/000,003 and 90/006,317 Patent 6,319,526 B1 6 such moisture content is insufficient to be considered immersion. (‘526 patent, col. 3, ll. 8-15.) FF4 The process of the present invention initially starts out in a traditional manner. . . . The standardized cow’s milk is then pasteurized . . . . The milk is acidified before or after pasteurization using any one of a number of substances or a combination thereof. The milk may be directly acidified with a mineral or organic acid or a microbial starter or any other acidulent. The milk is set (coagulated) with rennet or other suitable proteolytic agent. After the milk has gelled, the curd is cut, curd and whey are heated after which the fluid whey is drained off. . . . (‘526 patent, col. 3, l. 66 - col. 4, l. 21.) FF5 It has also been discovered that by the addition of various ingredients such as generally recognized as safe (GRAS) ingredients to the mozzarella curd before it has been heated results in improved control of analytical and functional characteristics. (‘526 patent, col. 3, ll. 23-27.) FF6 . . . [T]he GRAS ingredients are added prior to heating and working the curd. One GRAS ingredient includes a prepared emulsifying salt combination. . . . Alternatively, this functional salt blend may be an ingredient of the initial starter culture growth medium. . . . Non-dairy components may be added to the curd prior to working. . . . Appeal 2011-005022 Reexamination Control Nos. 95/000,003 and 90/006,317 Patent 6,319,526 B1 7 Dairy ingredients may also be added prior to working of the curd. . . . (‘526 patent, col. 4, ll. 30-60.) FF7 The addition of GRAS ingredients may be done in a temperature range of between 20º F and 160º F. The blending of such ingredients can be done in a twin screw auger type mixer in which the augers overlap thereby insuring thorough mixing. . . . A number of such blenders may be required to insure that the flow of the cheese curd is continuous to the subsequent heating and kneading steps. The number of blenders required is determined by dwell time in the blenders that is required to adequately mix all the ingredients and the through put required in the subsequent heating and kneading steps. (‘526 patent, col. 5, ll. 39-51.) FF8 After grinding, the curd of the present invention is preferably worked in a dry environment. By working is meant that the curd is heated and then mechanically kneaded and stretched to a viscous molten state wherein the curd develops into a fibrous mass. By fibrous is meant that the curd develops texture. (‘526 patent, col. 5, ll. 10-15; emphasis added.) FF9 The curd is then heated preferably in a liquid-free environment and mechanically worked until the curd forms a fibrous mass. (‘526 patent Abstract.) Appeal 2011-005022 Reexamination Control Nos. 95/000,003 and 90/006,317 Patent 6,319,526 B1 8 FF10 The curd is preferably heated to a temperature range of 130º to 160º F. Steamed-jacketed and/or infused vessels equipped with mechanical agitators (waterless cookers) are used to heat and work the curd blend. The curd blend may also be heated and worked in horizontal cookers that employ screw-augers to stir or work the curd while live steam is injected directly into the cheese. Another equipment option is direct culinary steam injection into flowing curd mass. (‘526 patent, col. 5, ll. 17-25.) Discussion Claim 1 is directed to a process of manufacturing a pasta filata cheese or a mozzarella-like cheese. The process involves certain conventional steps of cheese production, such as pasteurization, coagulation, and separation of the whey from the curd (FF4; claim 1). The process also comprises the following recited process steps, which are at the heart of the dispute in this appeal: • “heating the curd without aqueous immersion to an approximate temperature range of 130° F. to 160° F.”; • “adding a cheese emulsifying salt or a dairy ingredient or both prior to mechanical working”; and • “mechanically working the curd into a fibrous mass.” We address the interpretation of these limitations below. • “adding a cheese emulsifying salt or a dairy ingredient or both prior to mechanical working” According to the ‘526 patent, it was discovered that “the addition of various ingredients . . . to the mozzarella curd before it has been heated Appeal 2011-005022 Reexamination Control Nos. 95/000,003 and 90/006,317 Patent 6,319,526 B1 9 results in improved” control of cheese characteristics (FF5). The ingredients are characterized as those which are generally recognized as safe (GRAS), and include salts, non-dairy, and dairy components (FF6). The ‘526 patent expressly states that the GRAS ingredients, such as salts and dairy components, are “added prior to heating and working the curd” (FF6). The latter step of adding a salt or diary ingredient “prior to . . . working” is reflected in the claim limitation “adding a cheese emulsifying salt or a dairy ingredient or both prior to mechanical working.” The claim does not require the salt or dairy ingredient to be added prior to “heating the curd without aqueous immersion,” but the claim does not exclude this order of steps from its scope. The proper interpretation of the claimed term “mechanical working” is disputed by the parties in this appeal. Appellant interprets “mechanical working” to include processes in which the curd is rotated, tumbled, or turned in a device at various rotations per minute (“RPM”) (App. Br. 13-17). The Requester contends that “mechanical working” means when “the curd has been heated, kneaded, and stretched into a fibrous mass” (Requester Respondent Br. 4). Quite simply, Appellant interprets “mechanical working” to be any mechanical agitation of the curd, including mixing and blending of ingredients into the curd. The Requester, on the other hand, proposes a narrower interpretation, where “mechanical working” means the mechanical agitation step in which the curd is transformed into a fibrous mass, characteristic of the finished cheese. Appeal 2011-005022 Reexamination Control Nos. 95/000,003 and 90/006,317 Patent 6,319,526 B1 10 Thus, under Appellant’s interpretation, the salt or dairy product must be added before any mechanical agitation has occurred. In contrast, the Requester’s interpretation permits addition of the salt and diary ingredient to the curd as long as it takes place before the final step in which the curd is worked into a fibrous mass. To resolve this dispute, we first turn to the written description of the ‘526 patent. The ‘526 patent expressly defines the term “working”: By working is meant that the curd is heated and then mechanically kneaded and stretched to a viscous molten state wherein the curd develops into a fibrous mass. (FF8.) Based on this definition, Appellant contends that “working” means “heating” and “mechanical working” and that “mechanical working” therefore has a broader meaning that includes any agitation or mixing of the curd (e.g., by rotation, tumbling, or turning of the curd in a device). Appellant’s construction of “mechanical working” is unreasonably broad. First, claim 1 expressly recites “mechanically working the curd into a fibrous mass.” Thus, the plain language of the claim would be reasonably understood to limit “mechanical working” to the labor exerted to turn the curd into the fibrous mass. Second, and independently, the written description of the ‘526 patent distinguishes between (a) the step in which the curd is mixed with cheese ingredients and (b) the step in which the mixed cheesed is worked into a fibrous mass, the last step of the cheese-making process. We explain this in more detail below. Appeal 2011-005022 Reexamination Control Nos. 95/000,003 and 90/006,317 Patent 6,319,526 B1 11 At column 5, lines 39-51, the ‘526 patent refers to “blending” and “adequately mix[ing] all the [GRAS] ingredients” (FF7). The latter appear to be the conventional steps in which curd and other ingredients are combined together. The patent describes a different and additional step of applying heat and then “mechanically” kneading the curd, a process which is defined in the patent as “working.” (FF8.) In this step, the curd, which previously has been mixed and blended with GRAS ingredients, is transformed into a fibrous mass characteristic of a filata or mozzarella-like cheese. In other words, the patent refers to two separate steps in its cheese- making process, and uses different language to characterize each of the steps: • mixing and blending GRAS ingredients (such as salt and dairy) into the curd; and • heating and mechanically kneading the mixed curd until it forms a fibrous mass of cheese, which together are defined as “working.” The mixing and blending steps are performed prior to kneading the mixed curd into the fibrous cheese mass. The term “working” is used to characterize the subsequent heating and kneading step. It is therefore clear that the term “working” has a special meaning that refers to the heat and labor involved in the final steps of making the cheese product. The patent uses the phrase “mechanically kneaded” to characterize the latter step in which the curd is worked into a fibrous mass. Thus, “mechanical working” would logically be understood to refer to the same process because it uses the term “working,” but to denote just the mechanical labor applied to Appeal 2011-005022 Reexamination Control Nos. 95/000,003 and 90/006,317 Patent 6,319,526 B1 12 produce the fibrous mass. This construction is consistent with the ‘526 patent abstract, which specifically states that the “curd is . . . mechanically worked until the curd forms a fibrous mass.” (FF9.) Appellant contends that the term “mechanically working” should also include the steps in which GRAS ingredients are “blend[ed]” and “mix[ed]” (FF7). However, as explained above, the ‘526 patent uses the phrase “mechanically working” in the abstract (FF9) and in the claim to refer to the specific step in which the curd is converted into a fibrous mass. On the other hand, the ‘526 patent uses blending and mixing to refer to the conventional process in which ingredients are combined together. Thus, Appellant’s interpretation is not supported by the evidence. We do not disagree with Appellant that working, as defined in the ‘526 patent, comprises a heating step and a mechanical working step, both which are used to transform the cheese components into a finished fibrous mass. However, there is inadequate support for interpreting “mechanical working” to encompass the conventional step of blending and mixing of GRAS or other ingredients into the curd. Rather, in view of the description in the ‘526 patent (FF8 & FF9) “mechanical working” would be understood to mean the labor used to turn the curd components into the fibrous mass. While it may be true that the heating facilitates the process of forming the fibrous mass, such transformation only occurs when the curd is being “mechanically worked.” Under these conditions, instead of simply mixing ingredients together, agitation – the mechanical work – kneads and stretches the curd into the fibrous mass. Appeal 2011-005022 Reexamination Control Nos. 95/000,003 and 90/006,317 Patent 6,319,526 B1 13 Consistent with the interpretation that “mechanical working” excludes “heating,” claim 1 recites a step of heating, indicating that the “heating’ component of “working” (FF8) is not included in the step of “mechanical working.” • “heating the curd without aqueous immersion” The meaning of the phrase “without aqueous immersion” is also in dispute in this appeal. The terms in a claim are given their broadest reasonable meaning as they would be understood by the ordinary skilled worker in the light of the patent Specification. Consequently, we first turn to the patent’s written description to determine what illumination is accorded to the disputed phrase. In the “Background of the Invention,” the ‘526 patent described prior art methods of manufacturing pasta filata cheeses in which curd solids were “typically heated in a hot water bath.” (FF1.) The ‘526 patent stated that in these “[t]raditional manufacturing processes,” after the whey is drained off, “the curd is immersed in hot water or hot whey and the submerged curd is worked and stretched” into the cheese’s characteristic texture (FF2). The ‘526 patent identified the “spent hot water” produced during the traditional, prior art manufacturing as a problem because of its effect on cost and its harm to the environment (FF1 & FF2). The ‘526 inventors characterized their “present invention” as a process in which “the working of the mozzarella curd in a hot liquid is eliminated,” addressing the prior art manufacturing problem (FF3). The inventors stated that the “working of the Appeal 2011-005022 Reexamination Control Nos. 95/000,003 and 90/006,317 Patent 6,319,526 B1 14 curd occurs in a substantially liquid-free environment. By liquid-free is meant that the curd is not immersed in a liquid such as water or whey.” (Id.) In sum, the ‘526 patent clearly conveys to the ordinary skilled worker that the curd is not “immersed” in liquid during the working step. The term “immersed” is not defined by the ‘526 patent. We thus adopt its ordinary meaning as “to plunge into or place under a liquid.”3 This meaning is consistent with how the term “immersed” is used in the ‘526 patent. First, the patent refers to heating the curd in a “hot water bath” (FF1), a process which would be reasonably understood to mean that the curd is placed under water. Secondly, the patent also refers to the curb as being “submerged” during the working step (FF2), another description which conveys the idea of the curb being under water during the traditional cheese-making processes. While the ‘526 patent expressly distinguishes its own invention from the prior art cheese-making process in which the curd is immersed in water, it does not expressly exclude liquid from its process. Rather, the ‘526 patent acknowledges that “curd does have water entrapped within and may have some surface wetness, but such moisture content is insufficient to be considered immersion.” (FF3.) Thus, although the ‘526 patent states the curd is “worked in a dry environment” (FF8), “dry” does not exclude “some surface wetness.” Consistently, the ‘526 patent describes steam injection as one method of heating the curd during the working process (FF10), a method which would be reasonably understood to involve at least wetting its surface with water, if not more. 3 RANDOM HOUSE DICTIONARY 664 (College ed. 1968). Appeal 2011-005022 Reexamination Control Nos. 95/000,003 and 90/006,317 Patent 6,319,526 B1 15 In sum, the phrase “heating the curd without aqueous immersion,” when read in light of the ‘526 patent’s written description, would be interpreted by the ordinary skilled worker to exclude processes in which the curd is heated when submerged in a liquid, but to permit the surface of the curd to be wetted during the heating step. ANTICIPATION REJECTION BY RHODES Legal Principles “To anticipate a claim, a prior art reference must disclose every limitation of the claimed invention, either explicitly or inherently.” In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). “[W]hen the PTO shows sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990). Findings of Fact (“FF”) FF11 Rhodes describes a method of making a cheese product. FF12 [A]n object of the one aspect of the present invention [is] to provide a system and method for reintroducing whey protein concentrate into cheese curds so as to increase the amount of cheese to be produced by a given quantity of milk. (Rhodes, col. 5, ll. 55-58.) Appeal 2011-005022 Reexamination Control Nos. 95/000,003 and 90/006,317 Patent 6,319,526 B1 16 FF13 According to Rhodes, the “whey protein is mixed with the cheese curds and subjected to negative pressure. This causes the whey protein to be absorbed into the cheese curds.” (Rhodes, col. 6, ll. 30-33.) FF14 The concentrated whey protein is moved by pump 198 through the conveying line 200 to the infuser 186. In the infuser 186, a mixture is formed between the concentrated whey protein and the cheese curds. As the curds and whey protein are subjected to negative pressure, and preferably to an elevated temperature, the concentrated whey protein coats the cheese curds and is drawn into the cheese curds. (Rhodes, col. 11, ll. 37-45.) FF15 Heating of the infuser 186 is provided by a water heater 234 that keeps water between 100 and 160 degrees Fahrenheit depending on the type of cheese being produced. Supply lines 238 and return lines 240 connect the chiller 230 and the heater 234 to a jacket shell 242 about the infuser 186. As the cheese curds 254 fall with each rotation of the infuser 186, the cheese curds are coated with the prob[i]otics and whey protein, and expand and absorb the prob[i]otics and whey protein with which they are mixed. After repeated turning, substantially all of the prob[i]otics and whey proteins are absorbed into the cheese curds. (Rhodes, col. 15, ll. 7-17.) Appeal 2011-005022 Reexamination Control Nos. 95/000,003 and 90/006,317 Patent 6,319,526 B1 17 FF16 . . . salt may be added to the mixture during the infusing process to provide the familiar taste of the cheese. Likewise, an enzyme can be added during the infusing process if desired. Heat is then continued to be applied and a vacuum is pulled on the product to finish. (Rhodes, col. 15, ll. 18-22.) FF17 The cheese curds and whey protein are then heated and turned to mix the two components together. As the mixture is heated and turned, the mixture is subjected to a negative pressure. It is believed that the stronger the vacuum the better. . . . The negative pressure causes the whey protein to be drawn into the cheese curds. Because the whey protein is absorbed into the cheese curds, the resulting product lacks the characteristic whey taste that many people find objectionable. As the cheese curds and whey mixture is tumbling, salt may be added to provide the proper taste for the cheese. The amount of salt which is added depends on the type of cheese. (Rhodes, col. 15, l. 58 - col. 16, l. 3.) Example 1 (Cols. 22-25) FF18 The mozzarella curd was added to the infuser while it was turning at 4 RPM. The infuser is preferably turning while the cheese is added as it will mat and clump if the infuser is stopped. (Rhodes, col. 23, ll. 31-34.) Appeal 2011-005022 Reexamination Control Nos. 95/000,003 and 90/006,317 Patent 6,319,526 B1 18 FF19 55 pounds of 88% protein Whey Protein Isolate was added to 130 pounds of water and the mixture was pasteurized and denatured by raising the temperature to 160º F. and holding for 15 minutes. (Rhodes, col. 23, ll. 39-43.) FF20 The denatured and pasteurized 80% Whey Protein Isolate was cooled . . . [and] added to the infuser and the vacuum pump was energized and a vacuum of 26.5 inches was developed. The speed of the infuser was 4 RPM and the time required for the liquid Whey Protein Isolate to be infused into the curd was 25 minutes. The warm water (120º F. to 130º F.) was required to maintain a curd temperature of 115º F., as the curd needed to continue to ripen. Thus, warm water was circulated through the jacket and flights. . . . The high vacuum evaporates water from the curd and lowers the curd temperature. (Rhodes, col. 23, ll. 47-61.) FF21 The cheese curd was allowed to ripen for an additional 23 minutes to a pH of 5.43 and then the water temperature was raised to 155º F. and circulated through the jacket and the flights. The RPM of the infuser was increased to 8. (Rhodes, col. 23, ll. 62-65.) FF22 The door was opened and 18 pounds of fine salt was added to the infuser. The door was closed and the vacuum pump was energized and a vacuum of 26 inches was developed. Appeal 2011-005022 Reexamination Control Nos. 95/000,003 and 90/006,317 Patent 6,319,526 B1 19 (Col. 23, l. 66 - col. 24, l. 2.) FF23 When the cheese curd temperature reached 128º F., the cheese began to form fibrous strands that stretched from the bottom to the top on each of the internal flights. At this point, an additional 40 pounds of hot water (140º F.) and 15 pounds of the lecithin phospholipid mixture as prepared in Example 5 was added to the infuser. The cheese then started to form a homogenous mass of kneaded and stretched ‘pasta filata’ cheese. The RPM of the infuser was lowered to 6. The entire curd formed into a single mass of pasta filata Mozzarella at 130º F. There was distinct fibrous strands stretching from the bottom to the top of the infuser. (Rhodes, col. 24, ll. 2-12.) FF24 There was no observable sticking of the cheese to the sidewalls of the infuser. This is generally a problem in pasta filata cookers . . . . This was not the case with this invention using the infuser to knead, fuse, and stretch the curd into a homogenous mass. (Rhodes, col. 24, ll. 12-18.) Discussion The Rhodes patent describes a method of making cheese which the Examiner found met all the recited steps of claim 1. Appellant challenges the Examiner’s determination. Appellant contends that Rhodes does not describe the recited steps of “heating the curd without aqueous immersion” Appeal 2011-005022 Reexamination Control Nos. 95/000,003 and 90/006,317 Patent 6,319,526 B1 20 and “adding a cheese emulsifying salt or a dairy ingredient or both prior to mechanical working” (App. Br. 13-22). Mechanical working step In the cheese-making process described in Example 1 of Rhodes, curds were added to the infuser while it was turning at 4 RPM (FF18). Next, whey was added to the infuser, while the infuser speed was 4 RPM (FF19 & FF20). During the infusion process, the temperature was regulated by circulating water through a jacket and a vacuum was applied (FF20). Salt was added and the vacuum applied again (FF22). When the cheese reached 128º F, a lecithin mixture was added and then “cheese then started to form a homogenous mass of kneaded and stretched ‘pasta filata’ cheese. The RPM of the infuser was lowered to 6 RPM.” (FF23). Neither party disputes that the infuser was rotating during the entire cheese-making process described in Example 1. Appellant contends that the rotating motion of the infuser is encompassed by the phrase “mechanical working,” when the latter is given its broadest reasonable interpretation. Appellant further contends that, because the infuser was turning and rotating throughout Rhodes’s cheese-making process, no salt or dairy ingredient was added by Rhodes “prior to mechanical working,” as recited in claim 1. Rather, Appellant contends the salt and dairy ingredients were added during or after “mechanical working,” but not before. For example, salt was added to the infuser (FF22), but this was after the curd had been rotated (FF18 & FF21) – a step which Appellant characterizes as “mechanical working.” Appeal 2011-005022 Reexamination Control Nos. 95/000,003 and 90/006,317 Patent 6,319,526 B1 21 As explained above, Appellant’s interpretation of “mechanical working” is unduly broad and not supported by the ‘526 patent. The term “mechanical working,” as recited in claim 1, has a special meaning that refers to the step in which the curb is kneaded and transformed into a fibrous mass. It does not refer to conventional steps in which whey, salt, and other ingredients are combined with the curd without formation of a fibrous mass. Appellant argues that the infuser is rotating throughout the cheese- making process of Rhodes. Appellant contends there is no difference in the rotating motion that occurs when the curd is mixed with the salt and other components (FF18, FF20, & FF21) and when the curd forms in a fibrous mass. The definition in the ‘526 patent makes clear that “working” is a special process involving heating and “mechanically knead[ing]” to develop the curd into a fibrous mass (FF9). As the term “working” is only used in the ‘526 patent in the context of forming the fibrous mass, the Examiner reasonably interpreted it to be limited to this process. In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989) (“When the applicants state the meaning that the claim terms are intended to have, the claims are examined with that meaning, in order to achieve a complete exploration of the applicant’s invention and its relation to the prior art.”). Like the ‘526 patent, Rhodes characterizes the motion that turns the curd into a fibrous mass as involving kneading (FF23 & FF24). While heating facilitates the process of forming the fibrous mass, such transformation only occurs when the curd is being “mechanically worked.” Under these conditions, the rotation may be set at a similar speed, but Appeal 2011-005022 Reexamination Control Nos. 95/000,003 and 90/006,317 Patent 6,319,526 B1 22 instead of simply mixing ingredients together, kneading and stretching occurs. Thus, as found by the Examiner, Rhodes describes adding the salt and dairy components prior to the working step in which the curd is transformed into a fibrous mass, meeting the corresponding claim limitation. Appellant did not dispute this conclusion, but rather argued that the claim was properly interpreted to require that the salt or dairy product be added before any mechanical agitation has occurred, an interpretation which we have found to be unreasonably broad. • Without aqueous immersion The ‘526 patent specifically distinguishes its invention from certain prior art processes in which the curd is immersed or submerged in a liquid (FFF1-FF3). To reflect its invention, the claims are drawn to the manufacture of cheese, which comprises a step of “heating the curd without aqueous immersion.” We have interpreted this phrase to exclude processes in which the curd is heated when submerged in a liquid, but to permit the surface of the curd to be wetted during the heating step. The issue is whether Rhodes describes aqueous immersion as part of its cheese-making process. We begin with the description in Rhodes. The Rhodes patent discloses a method in which whey is mixed with the curd and then subjected to negative pressure, which causes the whey to be absorbed into the curd (FF11-FF14). Rhodes takes “concentrated” whey and pumps it into the infuser where the “whey protein coats the cheese curds and is drawn into the Appeal 2011-005022 Reexamination Control Nos. 95/000,003 and 90/006,317 Patent 6,319,526 B1 23 cheese curds” (FF14). Rhodes does not describe submerging or immersing the curd in liquid, as described in the background of the ‘526 patent (FF1 & FF2). Instead, Rhodes describes pumping whey and other ingredients (probiotics) into the infuser, and then rotating the mixture repeatedly so the cheese curds are coated (FF14 & FF15). Although Rhodes does not expressly describe immersing the curd in liquid, Appellant contends that this is what happens when the Rhodes process is accomplished. Appellant argues: The curd is typically cut into small pieces, such as one-quarter inch cubes, and then added to the infuser. Rhodes ‘809 patent, col. 34, lines 24-25. A liquid, such as water, containing the enhancing agents or ingredient is added to the infuser and then the infuser is subjected to a vacuum. The liquid remains in the bottom of the infuser while the flights carry the curd out of the liquid to a height where the curd pieces tumble back into the liquid. The small cut curd pieces are cyclically immersed into the liquid and subsequently removed from the liquid with the rotating the flights. When the cut curd pieces are removed from the liquid, they are coated with and absorb the liquid. This is how the curd pieces are infused, subjecting the curd pieces to a vacuum which expands the pores of the curd and immersing the curd into a liquid. (App. Br. 18.) Appellant did not provide adequate evidence to rebut the Examiner’s conclusion that Rhodes describes a process that does not involve aqueous immersion. According to Rhodes, liquid whey protein is added to the curd while the curds are rotating inside the infuser (FF15, 17, & 20-21). As the curds tumble, they become “coated” with whey and other components (FF14 & FF15). This process is carried under pressure to draw whey into the curd (FF13, FF14, & FF15). Based on Rhodes’s description, the Examiner had Appeal 2011-005022 Reexamination Control Nos. 95/000,003 and 90/006,317 Patent 6,319,526 B1 24 reasonable basis to believe that Rhodes was carried out “without aqueous immersion,” as required by the claim. This shifted the burden to Appellant to prove that immersion occurred, a burden that cannot be met by only attorney argument, as presented here. Appellant conjectures that prior to becoming coated, the curds are immersed, but provided only attorney argument to support this position. Appellant also states that the “water added to a curd,” under the conditions described in Rhodes, “will remain in liquid form at the bottom of the infuser,” immersing the curd in a pool of water (App. Br. 18). Appellant ignores the disclosure in Rhodes that the curds are tumbling and rotating at the same time as the whey (and probiotics) are introduced into the infuser. No expert testimony or objective evidence has been offered to counter the Examiner’s reasonable conclusion that immersion does not take place in Rhodes. The Examiner’s conclusion is reasonable for at least two reasons: First, Rhodes describes coating, not immersing the curds. Second, the curds are being turned and mixed in the whey. It is not clear from Appellant’s explanation how a pool of liquid would form when the curds are being continuously tossed with whey liquid concentrate in the infuser. Appellant also contends that the “only way liquid can be drawn into the curd is if the liquid is pooled in the bottom of the infuser,” but provided no objective evidence to support this position. (App. Br. 20.) Arguments of counsel cannot take the place of evidence lacking in the record. Estee Lauder, Inc. v. L'Oreal, S.A., 129 F.3d 588, 595 (Fed. Cir. 1997). Appeal 2011-005022 Reexamination Control Nos. 95/000,003 and 90/006,317 Patent 6,319,526 B1 25 In sum, the preponderance of the evidence supports the Examiner’s determination that Rhodes described “heating the curd without aqueous immersion” as that phrase is properly interpreted. OBVIOUSNESS REJECTIONS Claims 70 and 114 Claims 70 and 114 are independent claims reciting cheese manufacturing processes similar to the process of claim 1, starting with a milk composition and then forming a curd which is mechanically worked into a fibrous mass. Claim 70 further comprises “adding, a cheese emulsifying, salt composition, a non-dairy ingredient, a dairy ingredient or any combination thereof via a starter culture medium.” Claim 114 similarly recites: “adding a cheese emulsifying salt or a dairy ingredient or both or a non-dairy ingredient via a starter culture medium prior to mechanical working.” Neither claim, as found by the Examiner, specifies the product to which the starter culture medium is added. Thus, the plain language of the claim permits the starter culture to be added to the “milk composition” or the “curd.” Although the addition of the starter culture is recited in the claim after the curd has been formed, there is no express language in the claim that requires this order. Consequently, we interpret the claims to be open to adding the starter culture to either the milk or the curd. The Examiner provided a logical reason as to why a starter culture with the claimed ingredients would be added to the milk composition (RAN 65-67). Appellant did not identify an error in the Examiner’s conclusion and we find none. Appeal 2011-005022 Reexamination Control Nos. 95/000,003 and 90/006,317 Patent 6,319,526 B1 26 Appellant contends that Rhodes with Botazzi is not compatible because the two publications use different methods of heating the curd (App. Br. 24). This argument is not persuasive. Both publications are directed to processing curd and are therefore analogous art which would have been considered pertinent to the claimed subject matter by one of ordinary skill in the art. Wyers et al. v. Master Lock Co., 616 F.3d 1231, 1237 (Fed. Cir. 2010). 37 C.F.R. § 1.131 DECLARATION Legal Principles § 1.131 Affidavit or declaration of prior invention. (a)When any claim of an application or a patent under reexamination is rejected, the inventor of the subject matter of the rejected claim, the owner of the patent under reexamination, or the party qualified under §§ 1.42, 1.43, or 1.47, may submit an appropriate oath or declaration to establish invention of the subject matter of the rejected claim prior to the effective date of the reference or activity on which the rejection is based. . . . (b)The showing of facts shall be such, in character and weight , as to establish reduction to practice prior to the effective date of the reference, or conception of the invention prior to the effective date of the reference coupled with due diligence from prior to said date to a subsequent reduction to practice or to the filing of the application. Discussion Appellant seeks to disqualify the Rhodes patent as prior art against the claimed invention. To accomplish this, a declaration under 37 C.F.R. § 1.131 was provided to establish that the claimed invention was reduced to Appeal 2011-005022 Reexamination Control Nos. 95/000,003 and 90/006,317 Patent 6,319,526 B1 27 practice prior to the effective filing date of the Rhodes patent. The declaration was by Clint Garoutte, an employee of Land O’Lakes, Inc. (LOL), the owner of the ‘526 patent. Mr. Garoutte is not one of the named inventors of the ‘526 patent. However, Appellant stated in the Appeal Brief that all three inventors of the ‘526 patent were no longer employed by the patent owner (App. Br. 34). Appellant stated that, under § 1.131(a), the owner of a patent under reexamination can sign a declaration to establish invention of the claimed subject matter (id.). Appellant stated that Mr. Garoutte signed the declaration on behalf of the patent owner (id.). In addition to objecting to Mr. Garoutte’s execution of the declaration because it had not been shown that the inventors were unavailable or unwilling to sign it, the Examiner also found the declaration deficient for substantive reasons. The Examiner agrees with the TPR that the conclusionary statements offered throughout the Declaration are nothing more than an invitation to the USPTO to identify where the 162 pending claims might be found in a collection of documents provided by the Patent Owner. They fail to provide any facts or analysis of either the claimed invention or the Exhibits upon which the conclusion rests. (RAN 13-14.) Because we agree with the Examiner’s substantive determination, we do not reach his other statements about why the declaration was defective. Under § 1.131(a), “an appropriate oath or declaration” may be submitted “to establish invention of the subject matter of the rejected claim prior to the effective date of the reference or activity on which the rejection is based.” The facts must show reduction to practice or conception “of the invention.” 37 C.F.R. § 1.131(b). The “invention” corresponds to the Appeal 2011-005022 Reexamination Control Nos. 95/000,003 and 90/006,317 Patent 6,319,526 B1 28 subject matter which is claimed. The Examiner therefore properly determined that the showing of facts must establish that the claimed invention, including all steps and features recited in the claim, were reduced to practice prior to the effective filing date of the Rhodes patent. The Examiner is correct that the Garoutte declaration did not provide adequate evidence that the subject matter of the claims was reduced to practice prior to the effective filing date of the Rhodes patent. Mr. Garoutte testified in his written declaration: Based upon my review of the unreadacted [sic] documents that are being submitted as redacted document as Exhibits A-P, and upon information and belief, LOL reduced the invention claimed in Dahlstrom ‘526 to practice prior to the effective filing date of October 29, 1997, the filing date of U.S. Provisional Application Serial No. 60/063,990 of which Rhodes ‘809 claims the benefit. (Garoutte Decl. ¶ 5.) In subsequent paragraphs, Mr. Garoutte wrote that he had reviewed certain documents attached as exhibits to his declaration, and “[u]pon and belief,” the patent owner LOL had conducted pilot plant trials “utilizing the claimed method” to evaluate certain process parameters, such as citrate concentrations, effects of hydrocolloids, salt concentrations, etc. (e.g., id. at ¶¶ 7, 8, 9, & 11-21). As concluded by the Examiner, Mr. Garoutte did not clearly show how the methods described in Exhibits A-P met the claimed method limitations. To establish an actual reduction of practice, the patent owner has the burden of demonstrating that the method reduced to practice includes all the elements of the claimed method (Manual of Patent Examining Procedure (MPEP) §§ 715.07 & 2185.05, Eighth Edition (August 2001), Appeal 2011-005022 Reexamination Control Nos. 95/000,003 and 90/006,317 Patent 6,319,526 B1 29 revised July 2010). See also In re Borkowski, 505 F.2d 713, 718-19 (CCPA 1974). Here, as found by the Examiner, conclusionary statements were made by Mr. Garoutte, but he did not adequately identify a correspondence between the claimed method steps and the method said to have been performed in the exhibits. As Mr. Garoutte did not demonstrate that the methods described in Exhibits A-P represented embodiments of the claimed invention, his § 1.131 declaration is ineffective to disqualify the Rhodes patent as prior art. SUMMARY We affirm the anticipation rejection of claims 1-4, 7-14, 16-22, 25-29, 31, 32, 35, 36, 38, 40-48, 51, 62 -69, 89-92, and 95-101. We affirm the obviousness rejection of claims 5, 6, 10, 12, 13, 14, 23, 24, 25, 30, 33, 34, 37, 39, 45, 46, 47, 49, 50, 52-61, 65, 68, 70-103, 114-123, 125, and 126-136 (rejections II-XXIII). We do not reach the obviousness rejection of claim 1 under ground XXIV. Claims not separately argued fall with claims 1, 70, and 114. See 37 C.F.R. 41.37(c)(1)(vii). TIME PERIOD FOR RESPONSE Requests for extensions of time in this inter partes reexamination proceeding are governed by 37 C.F.R. § 1.956. See also 37 C.F.R. § 41.79. Appeal 2011-005022 Reexamination Control Nos. 95/000,003 and 90/006,317 Patent 6,319,526 B1 30 AFFIRMED bim FOR PATENT OWNER: DORSEY & WHITNEY, LLP 50 SOUTH SIXTH STREET SUITE 1500 MINNEAPOLIS, MN 55402-1498 FOR THIRD-PARTY REQUESTER: TOWNSEND & TOWNSEND & CREW, LLP TWO EMBARCADERO CENTER 8TH FLOOR SAN FRANCISCO, CA 94111 Copy with citationCopy as parenthetical citation