Ex parte Carroll

Board of Patent Appeals and Interferences

Sep 21, 1998

08069456 (B.P.A.I. Sep. 21, 1998)

Application for patent filed June 1, 1993. According to1
appellant this application is a continuation of Application
No. 07/750,925 filed July 28, 1991, now abandoned.
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the
Board.
Paper No. 23
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte DANIEL E. CARROLL, Jr.
____________
Appeal No. 95-0658
Application No. 08/069,4561
____________
ON BRIEF
____________
Before DOWNEY, ELLIS and WEIMAR, Administrative Patent Judges.
WEIMAR, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the examiner's decision finally
rejecting claims 1-5, 7-11, 13-22, and 24-31, all of the
claims pending in the application.
Appeal No. 95-0658
Application No. 08/069,456
2
Claim 1 is illustrative of the subject matter and reads
as follows:
Appeal No. 95-0658
Application No. 08/069,456
3
1. A method of preparing and preserving fresh fruit for
extended storage comprising the steps of:
separating the fruit into a plurality of individual
pieces;
introducing the fruit pieces into an aqueous preservative
solution comprising about 8-20% by weight of a non-
artificial sweetening agent, about 0.1-0.6% by
weight
of an edible acid, and about 0.015-0.025% by weight
of
sulfur dioxide;
placing the fruit pieces in the preservative solution
under a vacuum to remove at least a portion of the air
from
the fruit pieces;
releasing the vacuum and maintaining the fruit pieces in
the
preservative solution for at least a sufficient time
to
allow the fruit pieces to absorb at least a portion
of
the preservative solution therein; and
then placing the fruit pieces directly in a non-freezing
refrigerated environment at a pH of about 3.0 to 3.2
for storage.
The references relied upon by the examiner are:
Tierney 2,004,354 June 11,
1935
Glabe 2,678,277 May 11,
1954
Guadagni 3,025,169 Mar. 13,
1962
Silver et al. (Silver) 4,767,630 Aug. 30,
1988
Claims 1-5, 7-11, 13-22, and 24-31, all of the claims
pending in the application, stand rejected under 35 U.S.C. §
Appeal No. 95-0658
Application No. 08/069,456
4
103 over a combination of the teachings of Glabe, Tierney,
Guadagni and Silver. We reverse this rejection.
BACKGROUND
All of the pending claims are directed to methods of
preparing and preserving fresh fruit for extended storage.
The goal stated on page 1 of the specification is to preserve
fresh fruit for up to 3 months at refrigerator temperatures
without the fruit deteriorating with respect to color, flavor
or texture. Although individual features of the claimed
method have been applied to fresh fruit, such as vacuum
treatment in combination with a preservative solution and
sulfite treatment, the specific combination of steps is
presented as novel and the results are characterized as
unexpected. See the paragraph bridging pages 3 and 4 of the
specification.
DISCUSSION
Claims 1-5, 7-11, 13-22, and 24-31 stand rejected under
35 U.S.C. § 103 over a combination of the teachings of Glabe
and Tierney, alone or in combination with Guadagni and Silver.
We refer to pages 3 and 4 of the Examiner's Answer for a
presentation of the rejection at issue herein.
Appeal No. 95-0658
Application No. 08/069,456
5
The examiner has an initial burden of establishing that
one of ordinary skill in the art would have found the claimed
invention to have been obvious at the time that it was made,
including all of the recited limitations. The evidence relied
upon must support such a conclusion. In this instance we
cannot agree with the examiner that the cited art provides the
disclosure required to conclude that the claimed methods would
have been obvious to one of ordinary skill in the art at the
time the invention was made, thus we are constrained to
reverse the rejection on this record.
None of the references teach an appropriate range for the
storage pH which can be compared to the claimed narrow range.
Each of the three independent claims require the following as
a last step:
then placing the fruit pieces directly in a
non-freezing refrigerated environment at a pH
of about 3.0 to 3.2 for storage.
The specification refers to this limitation on page 8, lines
1-8, of the specification, and states:
Applicant believes that there is a synergistic
interaction between the malic acid and the sulfur
dioxide of the aqueous preservative solution which
serves to maintain the pH of the apples during
storage in a low range of about 3.0-3.2 to allow
Appeal No. 95-0658
Application No. 08/069,456
6
the very small amount of residual sulfur dioxide
(apparently about .006% or 60 ppm) to effectively
act to prevent browning and spoilage of the apple
slice tissue.
Thus, this limitation is not presented as a selection from
amongst known choices of storage pH ranges.
Appellant raises this issue in the sentence bridging
pages 7 and 8 and in the first complete paragraph on page 12
of the Appeal Brief. The examiner responds in the paragraph
bridging pages 5 and 6 of the Examiner's Answer that:
the applied art in fact discloses the use of
acids in processing apples and the selection
of the optimum pH for apples viewing the
clear teachings of the art disclosing the
conventionality of the use of acids would
have been no more than the selection of a
suitable control well within the determination
of one having the ordinary skill in the art.
This statement fails to set forth the desired result that is
to be optimized or controlled. Is the examiner suggesting
optimization with respect to (1) the degree of tartness
imparted to the fruit pieces by the solution, or (2) to the
antioxidant, anti-browning effect of the acid in the solution,
or to some other effect? The acid component in the
preservative applied to the fruit is characterized by Tierney,
Appeal No. 95-0658
Application No. 08/069,456
7
Guadagni and Silver as effecting both the tartness and the
color of the treated fruit. However, these references do not
recite an appropriate pH for either the preservative solution
or the storage environment. Would the optimization of either
the taste or antioxidant effect result in a method which
included a storage environment pH of 3.0-3.2? The examiner
has not provided any reason why this would be the case.
As quoted above, the last phrase of each of the
independent claims at issue herein requires the storage
environment to be "a non-freezing refrigerated environment" in
addition to stating the specific pH for the storage
environment.
We have reviewed the art for the features of refrigerated
storage and acid use, and found the following:
1) Glabe teaches storage of treated fruit at refrigerator
temperatures, but does not add acid to the preservative
solution which has been used to treat the fruit;
2) Tierney treats fruit with a solution including acid,
but does not include sulfur dioxide in the treatment; does not
specify a desirable pH range for the resultant fruit; and,
teaches that the treated fruit is to be frozen for storage;
Appeal No. 95-0658
Application No. 08/069,456
8
3) Guadagni treats fruit with an acid containing solution
which can include sulfites, but fails to discuss a desirable
pH for storage and teaches that the treated fruit is to be
frozen for storage; and
4) Silver sprays a solution containing both acid and
sulfite onto fruit pieces which are subsequently dried, and
discusses the effects of varying the amount of acid used in
the treatment solution. Silver mentions the variation in the
amount of acid used only with respect to the degree of
tartness imparted to the fruit, as opposed to any enhancing
effect on the storage conditions.
The only reference (Glabe) that teaches refrigerated
storage does not treat the fruit with an acid and suggests the
use of substantially greater amounts of sulfur dioxide than
those allowed in the methods claimed herein. The broadest
range claimed herein is "0.015% - 0.025%" of the preservative
solution (claims 1 and 16) which translates to 150 - 250 ppm
of the solution. The specification discusses the criticality
of this range in the paragraph bridging pages 11 and 12
wherein the use of 300 ppm of sulfur dioxide in the
preservative solution results in undesirable noticeable
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Application No. 08/069,456
9
bleaching of the fruit. Glabe teaches in column 3, lines 20-
23, that:
It has been found that a range of 600 to 700
parts per million of sulfur dioxide on the
weight of the juice gives very satisfactory
results.
Tierney, Guadagni and Silver teach treating the fruit
with an acid-containing solution, but they do not teach
storing the treated fruit at refrigerator temperatures. Nor
do we find that these references suggest that the fruit could
be stored successfully at these temperatures for an extended
period without deterioration of the texture, taste and color
of the fruit.
We note that Silver teaches in column 4, lines 54-57,
that:
the pH should be adjusted since polyphenol
oxidase which is associated with browning
is pH dependent.
There is no art of record to establish the pH associated with
polyphenol oxidase, thus, the teaching of Silver in this
regard would not have led one of ordinary skill in the art to
Appeal No. 95-0658
Application No. 08/069,456
10
a refrigerated storage environment and maintaining the fruit
at a pH between 3.0-3.2. Moreover, Silver teaches away from
contacting the fruit with a liquid for any extended length of
time, since such "tends to leach out flavors" (col. 5, lines
16-33, and col. 6, lines 1-11).
Thus, in our view the references, neither alone nor in
combination, would have led one of ordinary skill in the art
to the claimed storage temperature and pH range subsequent to
the claimed preservative treatment.
For the reasons stated above we do not find that the
examiner has established a prima facie case of obviousness
with respect to claims 1-5, 7-11, 13-22 and 24-31 based on the
art before us.
CONCLUSION
The decision of the examiner refusing to allow claims 1-
5, 7-11, 13-22 and 24-31 under 35 U.S.C. § 103 is reversed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
Appeal No. 95-0658
Application No. 08/069,456
11
REVERSED
MARY F. DOWNEY )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOAN ELLIS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
ELIZABETH C. WEIMAR )
Administrative Patent Judge )
Appeal No. 95-0658
Application No. 08/069,456
12
Richard E. Jenkins
Suite 1510, University Tower
3100 Tower Boulevard
Durham, North Carolina 22707
Susan Thompson
Appeal No. 95-0658
Serial No. 08/069,456
Judge WEIMAR

Judge ELLIS

Judge DOWNEY
DECISION: REVERSED
Send Reference(s): Yes No
or Translation(s)
Panel Change: Yes No
3-Person Conf. Yes No
Heard: Yes No
Remanded: Yes No
Index Sheet-2901 Rejection(s):
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