Ex Parte Burnett et al

Patent Trial and Appeal Board

Feb 24, 2016

11459067 (P.T.A.B. Feb. 24, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111459,067 07/21/2006
92160 7590
Merchant & Gould Ecolab
P.O. Box 2903
Minneapolis, MN 55402
02/26/2016
FIRST NAMED INVENTOR
Scott L. Burnett
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.
2103USU1 9761
EXAMINER
MCCLAIN-COLEMAN, TYNES HAL.
ART UNIT PAPER NUMBER
1793
NOTIFICATION DATE DELIVERY MODE
02/26/2016 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):
USPT092160@merchantgould.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SCOTT L. BURNETT, JOCELYN H. CHOPSKIE,
JOY G. HERDT, TERESA C. PODTBURG, TIMOTHY A. GUTZMANN,
DANIEL G. BROWN, RICHARD J. CHRISTIANSON, and
HARRIET L. E. ULLAND
Appeal2014-001955
Application 11/459,067
Technology Center 1700
Before TERRY J. OWENS, PETER F. KRATZ, and JULIA HEANEY,
Administrative Patent Judges.
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DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner's final rejection of claims 1-9, 13 and 15. We have jurisdiction
pursuant to 35 U.S.C. § 6. An oral hearing was conducted on February 11,
2016.
Appellants' 1 claimed invention is directed to a method of reducing
microorganisms on a food product using an applied antimicrobial
1 Appellants identify the real parties in interest as Ecolab USA Inc. and
Hormel Foods, LLC.
Appeal 2014-001955
Application 11/459,067
composition including packaging and sealing the food product and applying
a sub-lethal amount of heat to the sealed food product to activate the
antimicrobial composition such that the heat activated microorganisms act to
reduce the microorganism population by about 1 log to about 3.5 logs, not
the heat itself. According to the Specification, a lethal amount of heat kills
microorganisms whereas a sub-lethal amount of heat provides little, if any,
reduction in the level of microorganisms (Spec. 15, 1. 18 -16, 1. 9).
Claim 1, the sole independent claim on appeal, is illustrative and
reproduced below:
1. A method of reducing microorganisms on a food product
compnsmg:
(a) applying an antimicrobial composition to a food product;
(b) packaging the food product in a packaging to create a packaged
food product;
( c) sealing the packaged food product so that additional
microorganisms are less likely to enter the packaging; and
( d) applying a sub-lethal amount of heat at a temperature of from
about 160°F to about 210°F to the sealed food product for about 2 to about
20 seconds to activate the antimicrobial compos1t10n, wherein the heat is
applied in a shrink tunnel, the heat alone does not significantly reduce the
microorganism population, and the heat activated antimicrobial reduces the
microorganism population by about 1 log to about 3.5 logs.
The Examiner relies on the following prior art references as evidence
in rejecting the appealed claims:
Juhl et al., US 5,382,391
Wilhoit US 5,573,797
Hei WO 03/073849 Al
Jan. 17, 1995
Nov. 12, 1996
Sept. 12, 2003
The Examiner maintains the following grounds of rejection:
Claims 1-9 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Wilhoit taken in combination with Juhl (Wilhoit in view
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Appeal 2014-001955
Application 11/459,067
of Juhl and Juhl in view of Wilhoit). Claims 1-9 and 13-15 stand rejected
under 35 U.S.C. § 103(a) as being unpatentable over Juhl taken in
combination with Hei (Juhl in view of Hei and Hei in view of Juhl).
Upon consideration of the evidence on this record in light of the
arguments advanced by the Examiner and Appellants, we concur with
Appellants that the Examiner has not established a prima facie case of
obviousness regarding the subject matter recited in the rejected claims
within the meaning of 35 U.S.C. § 103(a).
Accordingly, we reverse the stated rejections. Our reasoning follows.
It is well settled that the burden of establishing a prima facie case of
non-patentability resides with the Examiner. See In re Piasecki, 7 45 F .2d
1468, 1472 (Fed. Cir. 1984).
In maintaining the obviousness rejections of sole independent claim 1
and certain identified dependent claims over a combination of the teachings
of Wilhoit and Juhl, taken in either order in separately stated rejections, and
over a combination of Hei and Juhl, taken in either order in separately stated
rejections, the Examiner turns to Juhl for an alleged teaching of activating an
antimicrobial utilizing a sub-lethal amount of heat as recited in claim 1, step
(d). In this regard, the Examiner has determined that: (1) "Wilhoit does not
disclose applying a sub-lethal amount of heat at a temperature of from about
160 F to about 210 F to the sealed food product for about 2 to about 20
seconds wherein the heat is applied in a shrink tunnel (step d). However,
Juhl is relied upon for these teachings" (Ans. 6) and (2) "Hei does not
disclose applying a sub-lethal amount of heat at a temperature of from about
160 op to about 210 op to the sealed food product for about 2 to about 20
seconds wherein the heat is applied in a shrink tunnel (step d). However,
Juhl is relied upon for these teachings" (Ans. 8-9).
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Appeal 2014-001955
Application 11/459,067
The difficulty with the obviousness position advanced by the
Examiner in each of the stated rejections is made evident by the Examiner's
further determination that Juhl, however, "fails to teach the heat activated
antimicrobial reduces the microorganism population by about 1 log to about
3.5 logs" (Ans. 7).
As argued by Appellants, the Examiner has split step d of claim 1 into
separate parts in a conclusory attempt to reconstruct the claimed subject
manner from unrelated disclosures of the applied prior art while the
Examiner has not established that the colorant transfer process described and
exemplified by Juhl, such as provided for in Examples 6 and 7 utilizing
liquid smoke, and relied upon by the Examiner for teaching the application
of sub-lethal heat does, in fact, teach the application of sub-lethal heat for
activating an antimicrobial in a manner as required by the rejected appealed
claims (App. Br. 7, 8, 11, 12, 18-20, 27-9; Reply Br. 4--7). In particular,
Juhl identifies biocides, such as nisin, as modifiers that can be transferred
from a film to a rece1vmg surface in fluid transfer relationship with the film,
such as the surface of a food product in fluid transfer relationship with the
film; however, the Examiner has not established that Juhl activates a
microbial by the application of sub-lethal heat during such a transfer (Juhl,
abstract, col. 1, 11. 10-17, col. 5, 1. 50-col. 6, 1. 48. col. 10, 1. 10, col. 11, 1.
33).
Because the Examiner has not established that any of the applied
references taken alone or in combination as applied by the Examiner teach
or suggest application of sub-lethal heat to activate an antimicrobial, we
concur with Appellants that the Examiner has not established that the
proposed combination of references would have led one of ordinary skill in
the art to the claimed subject matter, including a step corresponding to step d
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Appeal 2014-001955
Application 11/459,067
of claim 1 with a reasonable expectation of success in so doing substantially
for reasons argued by Appellants (Reply Br. 4--8; App. Br. 5-9, 11-16, 18-
22, 25-29).
Thus, the record indicates that the Examiner used impermissible
hindsight in rejecting the Appellants' claims. See In re Warner, 379 F.2d
1011, 1017 (CCP A 1967) ("A rejection based on section 103 clearly must
rest on a factual basis, and these facts must be interpreted without hindsight
reconstruction of the invention from the prior art").
Accordingly, we do not sustain the Examiner's obviousness
rejections.
CONCLUSION
The Examiner's decision to reject the appealed claims is reversed.
REVERSED
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