Ex Parte Bontenbal

Patent Trial and Appeal Board

Nov 2, 2016

12213157 (P.T.A.B. Nov. 2, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/213, 157 06/16/2008
25944 7590 11/04/2016
OLIFF PLC
P.O. BOX 320850
ALEXANDRIA, VA 22320-4850
FIRST NAMED INVENTOR
Elize Willem Bontenbal
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.
132918 8818
EXAMINER
STIJLII, VERA
ART UNIT PAPER NUMBER
1791
NOTIFICATION DATE DELIVERY MODE
11/04/2016 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):
OfficeAction25944@oliff.com
jarmstrong@oliff.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL
AND APPEAL BOARD
Ex parte ELIZE WILLEM BONTENBAL
Appeal2014--009575
Application 12/213, 157
Technology Center 1700
Before CATHERINE Q. TIMM, BEVERLY A. FRANKLIN, and
ELIZABETH M. ROESEL, Administrative Patent Judges.
FRANKLIN, Administrative Patent Judge.
DECISION ON APPEAL
Appellant requests our review under 35 U.S.C. § 134 of the
Examiner's decision rejecting claims 1--4, 6, and 9-11. We have jurisdiction
over the appeal under 35 U.S.C. § 6(b). An oral hearing was held on
October21, 2016.
Appeal2014-009575
Application 12/213, 157
STATEMENT OF THE CASE
Claim 1 is illustrative of Appellant's subject matter on appeal and is
set forth below:
1. A process for manufacturing a cooked meat product comprising
combining an uncooked meat product with an organic acid salt and a lactic
acid oligomer, followed by cooking the meat product, the lactic acid
oligomer being a compound which does not show acidic properties when it
is added to the uncooked meat product, but which is converted to an active
carboxylic acid with at least 3 carbon atoms under the conditions prevailing
during the cooking of the meat product, the organic acid salt being selected
from lactate salts, acetate salts, and combinations thereof.
The Examiner relies on the following prior art references as evidence
of unpatentability:
Hammond
Ming
Newkirk
us 2,982,654
US 2003/0108648 Al
US 2004/0170745 Al
THE REJECTION
May 2, 1961
Jun. 12,2003
Sep.2,2004
Claims 1-4, 6, and 9-11 are rejected under 35 U.S.C §103(a) as being
unpatentable over Newkirk in view of Ming and Hammond.
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Appeal2014-009575
Application 12/213, 157
ANALYSIS
We select claim 1 as representative of all the claims on appeal, based
upon Appellant's presented arguments. 37 C.F.R. § 41.37(c) (1) (iv) (2014).
We adopt the Examiner's findings and conclusions in the record and
AFFIRM. We add the following for emphasis.
The Examiner's findings are set forth on pages 2-5 of the Final Office
Action and on pages 2--4 of the Answer, which we incorporate herein.
Appellant argues that it would not have been obvious to have replaced
Newkirk's acid with Ming's organic acid salt for the reasons set forth on
pages 4--7 of the Appeal Brief (and also discussed in the Reply Brief).
Therein, Appellant submits that Ming lacks any teaching that an organic acid
or an organic acid salt are fully interchangeable. Appeal Br. 5. Appellant
also argues that Newkirk requires an acid, whereas an organic acid salt is
neutral and not acidic. Appeal Br. 6. Appellant also argues that Ming
• 1• ' .1 ' .1 • • 1 1. 1 1 •,1 • •1 ' • 1 ' 1 1 •, mmcaces mac me orgamc ac10 san oe usea wnn prop10moac1ena1 memo01ne
and lantabiotic and/or lytic enzyme. Id.
We are unpersuaded by the aforementioned arguments for the reasons
stated by the Examiner on pages 4 and 5 of the Answer. Therein, the
Examiner explains that there is no significance of the salt presence as
opposed to acid presence in the composition of Newkirk. Ans. 5. The
Examiner also explains how Ming teaches that either acids or their salts can
be using in an antimicrobial composition used for meat preservation. Id. It
follows (as stated by the Examiner) that one would have been motivated to
have made the proposed substitution (regardless of the presence or not of
metabolites and lantabiotics). Ans. 5.
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Appeal2014-009575
Application 12/213, 157
Appellant also argues that one skilled in the art would not have had a
reasonable expectation of success because there would have been no
expectation that an organic acid salt would have performed effectively when
heated for the reasons stated on page 7 of the Appeal Brief. We are
unpersuaded by such argument because absent supporting evidence,
Appellant's assertion amounts to a mere conclusory statement that is entitled
to little, if any, probative weight. See, e.g., In re Geisler, 116 F.3d 1465,
1470 (Fed. Cir. 1997).
With regard to Appellant's arguments pertaining to Hammond
(Appeal Br. 8-10; Reply Br. 3--4), we are unpersuaded by such arguments
for the reasons provided by the Examiner in the record (Ans. 6). Therein,
the Examiner adequately explains how Hammond teaches that both lactides
and glucono-delta-lactones are acidogens that are capable of slowly
hydrolyzing to form carboxylic acids, in food industry applications. Ans. 6.
We are thus not persuaded of error in the Examiner's conclusion that it
would have been obvious to have modified Newkirk by employing either
glucono-delta-lactone or lactide, for the same purpose and function as
disclosed by Hammond.
Appellant then refers to rebuttal evidence (evidence of unexpected
and advantageous results), which we have carefully reviewed. Appeal Br.
10-11; Reply Br. 4--5. Appellant refers to Figure 1, Example 1, and the
Tables, found in the Specification. Appeal Br. 10. Appellant states that this
evidence supports the position that the particularly claimed combination
significantly reduces bacterial numbers over time. Id. However, the burden
rests with Appellant to establish, inter alia, ( 1) that the comparisons are to
the disclosure of the closest prior art, and (2) that the supplied evidentiary
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Appeal2014-009575
Application 12/213, 157
showing is commensurate in scope with the claimed subject matter. See In
re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). In the instant case, Appellant
has not adequately explained how the evidence meets these criteria, and we
note that it is not within the province of the Board to independently review
Appellant's data and ferret out possible evidence of unexpected results. On
the contrary, the burden of establishing unexpected results rests squarely
upon the party asserting them. Klosak, at 1088.
In view of the above, we thus affirm the rejection. However, because
the Examiner has not addressed the rebuttal evidence in the same manner as
set forth herein above (Final Act. 6; Ans. 7), we denominate our affirmance
as involving a new ground of rejection pursuant to our authority under 37
C.F.R. § 41.50(b).
DECISION
r-y-'11 T"""'1 • , 1 • • • ..... 1 1 ' 1 .. • ' • •
l ne bXammer s aecis10n Is arnrmea ou1 a new grouna or reJecuon Is
entered pursuant to our authority under 37 C.F.R. § 41.50(b).
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b), which provides that a "new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review."
37 C.F.R. § 41.50(b) also provides that 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
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Appeal2014-009575
Application 12/213, 157
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner. ...
(2) Request rehearing. Request that the proceeding be
reheard under§ 41.52 by the Board upon the same record ....
Should the appellant elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(l), to preserve the right to seek review
under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection(s), the
effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
If Appellant elects prosecution before the Examiner and this does not
result in allowance of the application, abandonment, or a second appeal, this
case should be returned to the Patent Trial and Appeal Board for final action
on the affirmed rejection, including any timely request for rehearing thereof.
TIME PERIOD FOR RESPONSE
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).
AFFIRMED; NEW GROUND OF REJECTION
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