Ex Parte Carter

Patent Trial and Appeal Board

Jun 2, 2016

11437204 (P.T.A.B. Jun. 2, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111437,204 05/19/2006
103126 7590
Robert D. Katz, Esq.
Eaton & Van Winkle LLP
3 Park A venue, 16th Floor
New York, NY 10036
06/06/2016
FIRST NAMED INVENTOR
Philip R. Carter
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.
75144/RDK 1231
EXAMINER
STIJLII, VERA
ART UNIT PAPER NUMBER
1791
NOTIFICATION DATE DELIVERY MODE
06/06/2016 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):
docket@blackhillsip.com
rkatz@evw.com
patents@evw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PHILIP R. CARTER
Appeal2014-000667
Application 11/437 ,204
Technology Center 1700
Before ADRIENE LEPIANE HANLON, GEORGE C. BEST, and
WESLEY B. DERRICK, Administrative Patent Judges.
BEST, Administrative Patent Judge.
uECISION ON APPEAL
The Examiner finally rejected claims 1, 2, 5-9, and 12-14 of
Application 11/437,204 under 35 U.S.C. § 103(a) as obvious. Final Act.
(June 26, 2012). Appellant seeks reversal of those rejections pursuant to
35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6.
A hearing was held in this appeal on May 24, 2016.
For the reasons set forth below, we AFFIRM and enter a NEW
GROUND OF REJECTION.
Appeal2014-000667
Application 11/437,204
BACKGROUND
The '204 Application describes methods for making pastrami
products. Spec. 1. In particular, the Specification describes a method for
manufacturing sausage made of fresh pastrami. Id. at 3.
Claim 1 is representative of the '204 Application's claims and is
reproduced 1 below:
1. A method for making pastrami sausage consisting
essentially of:
providing a beef cut for use in making pastrami;
curing the beef cut in a salt and a pastrami spice mixture
including salt, pepper, cloves, sugar, garlic, bay leaves, onion,
paprika, marjoram, mace, mustard seeds, juniper berries,
coriander, or ginger for about one to three weeks;
smoking the beef cut for from four [to] about six hours to
import a smoked flavor to the pastrami;
grinding the cured and smoked pastrami to produce
ground pastrami;
and
filling a sausage casing with the ground pastrami to form
a pastrami sausage.
Appeal Br. Claims App. Al.
1 We note that the Claims Appendix, which is the source of this version of
claim I-appears to be inconsistent with the most recent amended form of
the claim. If prosecution of the '204 Application continues, we urge
Appellant to verify the language of claim 1.
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Application 11/437,204
REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 1, 2, 5, 6, 9, and 12 are rejected under 35 U.S.C. § 103(a)
as unpatentable over the combination of Deppner2 and Gerrard. 3
Final Act. 2.
2. Claims 7 and 8 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Deppner, Gerrard, and
Muse. 4 Final Act. 5.
3. Claims 13 and 14 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Deppner and Williams. 5
Final Act. 5.
DISCUSSION
Rejections 1 and 2. Appellant presents a single, combined argument
with respect to Rejections 1 and 2. See Appeal Br. 6-12. Appellant's
argument does not malce specific reference to any particular claim.
Accordingly, we select claim 1 as representative of the group of claims
subject to Rejections 1 and 2. See 37 C.F.R. § 41.37(c)(l)(iv). Claims 2, 5-
9, and 12 will stand or fall with claim 1.
2 US 4,156,027, issued May 22, 1979.
3 Frank Gerrard, Sausage and Small Goods Production: A Practical
Handbook on the Manufacture of Sausages and Other Meat Products
(1969).
4 US 3,776, 127, issued December 4, 1973.
5 US 2,247,425, issued July 1, 1941.
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Application 11/437,204
The Examiner rejected claim 1 as unpatentable over the combination
of Deppner and Gerrard. Final Act. 2.
Appellant argues that this rejection should be reversed because (1) the
Examiner incorrectly applied the law, Appeal Br. 6-9; (2) Gerrard teaches
away from the claimed invention, id. at 11-12; (3) the Examiner erred by
finding that a person of ordinary skill in the art at the time of the invention
would have been motivated to combine Deppner and Gerrard to arrive at the
claimed invention, id. at 9-10; and (4) the Examiner erred by failing to give
sufficient weight to the Reyes Declaration, id. at 10-11. For the reasons set
forth below, we are not persuaded by these arguments.
First, Appellant argues that the Examiner incorrectly applied the law
by adopting a per se test regarding the obviousness of inventions related to
the preparation of food. Appeal Br. 6-9. In particular, Appellants point to
the Examiner's citation of, and apparent reliance upon, In re Levin, 84
U.S.P.Q. 232, 234 (C.C.P.A. 1950). Id. at 7.
Levin:
In the Final Action, the Examiner quoted the following passage from
This court has taken the position that the new recipes or
formulas for cooking food which involve the addition or
elimination of common ingredients, or for treating them in
ways which differ from the former practice, do not amount to
invention, merely because it is not disclosed that, in the
constantly developing art of preparing food, no one else ever
did the particular thing upon which the applicant asserts his
right to a patent. In all such cases, there is nothing patentable
unless the applicant by a proper showing further establishes a
coaction or a cooperative relationship between the selected
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Application 11/437,204
ingredients which produces a new, unexpected and useful
function.
Final Act. 4. The Examiner quoted the same material in the Answer, but did
not otherwise response to Appellant's arguments regarding Levin. See
generally Answer.
We understand why Appellant is concerned by the Examiner's
citation of Levin. As Appellant points out, Levin was decided before
enactment of the current patent law. Furthermore, the Federal Circuit has
held that the current statute does not require synergy for patentability. Ryko
Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 717 (Fed. Cir. 1991) ("We do agree
that the absence of synergism is irrelevant to the issue of obviousness.
Synergism is probative only of non-obviousness; the obverse is not true."
(footnotes omitted)). The Supreme Court has explained that the inquiry
required by § 103 is nuanced because
the claimed subject matter may involve more than the simple
substitution of one known element for another or the mere
application of a known technique to a piece of prior aii ready
for the improvement. Often, it will be necessary ... to look to
interrelated teachings of multiple patents; the effects of
demands known to the design community or present in the
marketplace; and the background knowledge possessed by a
person having ordinary skill in the art, all in order to determine
whether there was an apparent reason to combine to known
elements in if the fashion claimed by the patent at issue. To
facilitate review, this analysis should be made explicit.
KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 417-18 (2007) (citing In re
Kahn, 441F.3d977, 988 (Fed. Cir. 2006)).
Thus, the current state of the law precludes application of per se rules
regarding any particular type of invention in a patentability determination
under§ 103. In re Ochiai, 71F.3d1565, 1572 (Fed. Cir. 1995) ("[R]eliance
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Application 11/437,204
on 'per se' rules of obviousness is legally incorrect and must cease."). All
claims directed to any type of patentable subject matter (as defined by§ 101)
are analyzed for patentability under § 103 in the same manner.
In this case, we have reviewed the Final Action and the Answer.
Based upon our review, we are not convinced that the Examiner applied an
improper per se rule. If prosecution of the '204 Application continues, we
trust that the Examiner will conduct the patentability analysis regarding
Appellant's claims in the same manner as she would with regard to any other
application.
Second, Appellant argues that Gerrard teaches away from the claimed
invention. Appeal Br. 11. In particular, Appellant argues that the claimed
curing process requires several weeks to carry out, while Gerrard describes a
method for accelerating meat curing processes. "[Gerrard] seeks to
mechanize and speed up mass production. As such it teaches away from
applicant's claimed invention." Id.
We are not persuaded by this argument because it misapprehends the
standard for determining when a particular prior art reference "teaches
away" from the claimed invention. In describing an earlier case, the
Supreme Court stated that it had "relied upon the corollary principle that
when the prior art teaches away from combining certain known elements,
discovery of a successful means of combining them is more likely to be non
obvious." KSR, 550 US at 416 (emphasis added) (discussing US. v. Adams,
383 U.S. 39 (1966)). Here, Appellant has not explained why or how Gerrard
discourages the successive use of pastrami-and sausage-making processes on
a particular piece of meat (e.g., beef, turkey, etc.).
Third, Appellant argues that the Examiner erred by finding that a
person of ordinary skill in the art at the time of the invention would have
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been motivated to combine Deppner and Gerrard to arrive at the claimed
invention. Id. at 9--10. In particular, Appellant argues that
Id.
it is undisputed that the Examiner has never found any
statement of the problem or any motivation or suggestion to
solve the problem as applicant has done. The record on this
application is completely silent on both the existence of the
problem and any suggestion or motivation from any source on
how to solve the problem. None of the cited references,
Deppner, Gerrard, or Muse ever mentions the word "pastrami"
nor do they mention any issue about the problem that the
applicant attempts to solve: the inability to preserve the fresh
spicy flavor of pastrami one packaging it for distant
consumption. Given the complete lack of any statement of the
problem or any motivation or suggestion to search for the
solution arrived at by applicant, applicant submits that the
Examiner has failed to put forth a prima facie case of
obviousness.
We are not persuaded by this argument. The Examiner found that a
person of ordinary skill in the art at the time of the invention would have
been motivated to modify Deppner's sausage-making method to incorporate
various spices described by Gerrard to impart a desired flavor and aroma.
Final Act. 3 ("one of ordinary skill in the art would have been motivated to
choose the mixture of spices based on the desired flavor and aroma of the
final product . . . . ").
As the '204 Application's claims are currently written, this is a
sufficient reason to combine Deppner and Gerrard in a manner that leads to
an embodiment of the claimed invention. We begin by considering the
scope of claim 1. During prosecution, the PTO gives the language of the
proposed claims "the broadest reasonable meaning of the words in their
ordinary usage as they would be understood by one of ordinary skill in the
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art, taking into account whatever enlightenment by way of definitions or
otherwise that may be afforded by the written description contained in the
applicant's specification." In re Morris, 127 F.3d 1048, 1054--55 (Fed. Cir.
1997).
In the relevant part, claim 1 requires the step of "curing the beef cut in
a salt and a pastrami spice mixture including salt, pepper, cloves, ...
coriander, or ginger for about one to three weeks." Claim 1 (emphasis
added). We begin by considering the proper interpretation of the phrase
"pastrami spice mixture." The '204 Application's Specification does not
define this term. The Specification, however, provides a discussion of
spices that were originally used in the preparation of beef in Eastern Europe:
"the meat was rubbed with a mixture of salt and spices, mainly coriander,
pepper, juniper berries, garlic, and saltpeter and the meat was dry cured in
barrels for about three weeks." Spec. 1. The Specification also provides
two recipes for pastrami spice mixtures. See id. at 6, 8. These examples of
pastrami spice mixtures are so diverse that we are unable to determine
whether a spice mixture must comprise a particular ingredient or
combination of ingredients to be considered a pastrami spice mixture. 6
Furthermore, it is improper to read limitations from the specification into the
claims.
6 At the hearing in this appeal, Appellant stated that pastrami products
characteristically have a rub comprising ground black pepper and,
optionally, one or more additional spices applied either immediately before
or after the product is cold smoked. A transcript of the hearing will be made
part of the record in this appeal. We note that this characteristic step in
pastrami production does not appear in claim 1
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Application 11/437,204
Because the Specification does not provide a specific definition of the
term "pastrami spice mixture," we are left with the definition recited in
claim 1. In that claim, the list of spices comprising the "pastrami spice
mixture" is written in open and alternative form. Thus, the claim requires
the use of a "pastrami spice mixture" that includes any one or more of the
listed spices.
In view of this claim construction, the Examiner's finding that a
person having ordinary skill in the art would have been motivated to
combine Deppner and Gerrard to arrive at the claimed invention suffices.
See In re Beattie, 974 F.2d 1309, 1312 (Fed. Cir. 1992) ("[a]s long as some
[reason,] motivation or suggestion to combine the references is provided by
the prior art taken as a whole, the law does not require that the references be
combined for the reasons contemplated by the inventor"). We express no
opinion regarding whether or not the Examiner has identified an adequate
motivation for a person of ordinary skill in the art to arrive at any particular
complex spice mixture based upon the combination of Deppner and Gerrard.
Fourth, Appellant argues that the Examiner failed to give proper
weight to the Reyes Declaration, which was submitted to provide objective
evidence of nonobviousness. Appeal Br. 10-11. In particular, Appellant
argues that the Declaration provides evidence of unexpected results. Id. We
are not persuaded by Appellant's argument.
The existence of unexpected results vel non is a question of fact. In re
Mayne, 104 F.3d 1339, 1343 (Fed. Cir. 1997). A showing of unexpected
results must be based upon evidence rather than argument or speculation.
Id. at 1343-44. To establish the existence of unexpected results, Appellant
must establish (1) that there actually is a difference between the results
obtained through the claimed invention and those of the closest prior art and
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(2) that the difference actually obtained would not have been expected by a
person of ordinary skill in the art at the time of the invention. In re
Freeman, 474 F.2d 1318, 1324 (CCPA 1973) (citing In re Klosak, 455 F.2d
1077 (CCPA 1972); In re D'Ancicco, 439 F.2d 1244 (CCPA 1971)). "It is
well settled 'that objective evidence of non-obviousness must be
commensurate in scope with the claims which the evidence is offered to
support."' In Graselli, 713 F.2d 731, 743 (Fed. Cir. 1983) (quoting In re
Tiffin, 448 F.2d 791, 792 (CCPA 1971)).
Once a showing of unexpected results (or some other objective indicia
of nonobviousness) has been made, the presumption of unpatentability
created by the Examiner's identification of a prima facie case of obviousness
dissolves and all of the evidence must be weighed together to reach a final
conclusion regarding the obviousness of the claim in question. In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). "[P]atentability is
determined on the totality of the record, by a preponderance of evidence
with due consideration to persuasiveness of argument." Id.
The Examiner considered the Reyes Declaration and found that it did
not demonstrate that Appellant had obtained unexpected results:
In response to Appellant's arguments regarding the
Declaration of Mark Reyes, it is noted that the fact that sausage
that has been made from the cured meat such as pastrami has
pastrami taste is not considered to be an unexpected result. ...
It is expected that the final encased sausage product would have
the same or very similar taste to the meat product used in the
production of such sausage. Hence, the fact that sausage has
been made from the cured meat such as pastrami has pastrami
taste is not considered to be an unexpected result.
Answer 8-9.
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Application 11/437,204
We cannot sustain the Examiner's finding that Appellant has not
established the existence of unexpected results. The Reyes Declaration does
all that is needed to establish the existence of unexpected results. The
Declaration establishes that Mr. Reyes is a person of at least ordinary skill in
the art, Reyes Deel. iii! 1-3; provides the factual basis for Mr. Reyes' s
opinion, id. at if 4; and provides Mr. Reyes's opinion that sausage made
according to the claimed invention "tasted surprisingly like fresh
traditionally cured pastrami," id.
The Examiner rejected Mr. Reyes's sworn testimony without
providing an adequate reason to do so. In particular, the Examiner did not
find that Mr. Reyes was not a person of ordinary skill in the art or that his
opinion did not have an adequate factual basis. Rather, the Examiner
concluded that Mr. Reyes' s opinion must be incorrect based upon her own
intuition. This is improper and cannot be sustained.
We, therefore, find that Appellant has demonstrated the existence of
unexpected results. Rather than simply reversing the Examiner due to this
erroneous factual determination, we undertake the final step in the
obviousness determination. In doing so, we consider the totality of the
record. Based upon our review, we conclude that Appellant has not met the
burden of demonstrating nonobviousness by a preponderance of the
evidence. We reach this conclusion because, as currently written, claim 1 is
very broad. Because of this breadth, the Examiner has established a
particularly strong prima facie case of obviousness. The evidence of
unexpected results as to the pastrami referenced by Mr. Reyes provided by a
single declaration is not, in our view, sufficient to overcome such a strong
prima facie case because it is not commensurate with the scope of claim 1
that lists the included spices in open and alternative form.
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For the reasons stated above, we affirm the rejection of claim 1. Thus
we also affirm the rejection of claims 2, 5-9, and 12. Because we rely upon
facts and reasoning that differ from those the Examiner relied upon, we
designate our affirmance as constituting a new ground of rejection pursuant
to 37 C.F.R. § 41.50(b).
Rejection 3. The Examiner rejected claims 13 and 14 as unpatentable
over the combination of Deppner and Williams. Final Act. 5. Appellant's
arguments for reversal of this rejection are substantially the same as those
we have considered and found unpersuasive above. Furthermore, we note
that that the Reyes Declaration does not provide any evidence regarding the
question of whether or not the subject matter of claims 13 and 14---which
are directed to com beef rather than pastrami-would have been unexpected
to a person of ordinary skill in the art. We, therefore, sustain the Examiner's
rejection of claims 13 and 14.
CONCLUSION
For the reasons set forth above, we affirm the rejection of claims 1, 2,
5-9, and 12-14 as obvious. We designate our affirmance of the rejection of
claims 1, 2, 5-9, and 12 as constituting a new ground of rejection pursuant to
37 C.F.R. § 41.50(b).
This decision contains new grounds 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." Section
41.50(b) also provides that the appellant, WITHIN TWO MONTHS FROM
THE DATE OF THE DECISION, must exercise one of the following two
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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
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. . ..
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED; NEW GROUND OF
REJECTION PURSUANT TO 37 C.F.R. § 41.50(b)
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