Ex Parte Estrada

Patent Trial and Appeal Board

Apr 22, 2014

12042647 (P.T.A.B. Apr. 22, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE
THE PATENT TRIAL AND APPEAL BOARD
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Ex parte JOE JESS ESTRADA1
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Appeal 2012-011565
Application 12/042,647
Technology Center 1700
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Before BRADLEY R. GARRIS, BEVERLY A. FRANKLIN, and
MARK NAGUMO, Administrative Patent Judges.

NAGUMO, Administrative Patent Judge.

DECISION ON APPEAL
Joe Jess Estrada (“Estrada”) timely appeals under 35 U.S.C. § 134(a)
from the final rejection2 of claims 1-8, which are all of the pending claims.
We have jurisdiction. 35 U.S.C. § 6. We affirm.

1 The Real Party in Interest is listed as the inventor, Joe Jess Estrada.
(Appeal Brief, filed 3 April 2012 (“Br.”), 3.)
2 Office action mailed 8 July 2011 (“Final Rejection,” cited as “FR”).
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OPINION
A. Introduction3
The claimed invention is directed to an aqueous solution said to
inhibit wilting and discoloration of leafy produce.
Representative Claim 1 reads:
An aqueous solution for inhibiting wilting and discoloration
of leafy produce, said solution comprising:
at least one of sodium hypochlorite and calcium
hypochlorite at a combined concentration in the range
from 5% to 16% by weight;
at least one of trisodium phosphate (Na3PO4), disodium
phosphate (Na2HPO4), tricalcium phosphate (Ca3(PO4)2),
and dicalcium phosphate (CaHPO4), at a combined
concentration in the range from 0.5 g/l to 3 g/l; and
water.
(Claims App., Br. 9, indentation added.)
The Examiner maintains the following ground of rejection:4
Claims 1-8 stand rejected under 35 U.S.C. § 103(a) in view of the
combined teachings of Estrada 5715 and Ueno.6

3 Application 12/042,647, Compositions and methods for reducing spoilage
of leafy produce, filed 5 March 2008. We refer to the specification as the
“647 Specification and cite it as “Spec.”
4 Examiner’s Answer mailed 16 May 2012 (“Ans.”).
5 Joe J. Estrada, Process for preserving leafy produce, U.S.
Patent 5,599,571 (1997).
6 Ryuzo Ueno et al., Aqueous sterilizing agent for foods or food processing
machines and utensils, U.S. Patent 4,592,892 (1986).
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B. Discussion
Findings of fact throughout this Opinion are supported by a
preponderance of the evidence of record.
The Examiner finds that Estrada 571 and Ueno are both “concerned
with procedures for making and using preservatives and sterilants on
comestibles for human consumption.” (FR 3, ¶ 7.) In particular, the
Examiner finds that Estrada teaches the use of 10% sodium hypochlorite
with 0.05% sodium hexametaphosphate (0.5 g/L) (FR 6), but does not teach
the use of trisodium phosphate of disodium phosphate. (FR 3, ¶ 6.) The
Examiner finds that Ueno teaches using a solution containing 0.25 wt%
trisodium phosphate (Ueno, column 5, Table I.) Moreover, the Examiner
finds that the ordinary worker would have recognized that sodium
hexametaphosphates hydrolyze in dilute aqueous solutions to form simpler
forms of phosphoric acid salts, including phosphate ions, “the same result as
if one had used sodium phosphate.” (Id. at 5, ¶ 13.) In further support of
this argument, the Examiner cites a publication by Bell7 to substantiate the
Official Notice taken previously that hexametaphosphate hydrolyses to form
orthophosphate and other phosphate ions. (Id. at 6.) The Examiner
concludes that it would have been obvious “to combine the alkaline
substance of Ueno and the sodium hypochlorite of Estrada [because] both
compounds [are] known to be antimicrobial and preservatives, in order to
retard spoilage by microorganisms during transportation. . . . ”
(Id. at 3, ¶ 8.)

7 Russell N. Bell, Hydrolysis of dehydrated sodium phosphates, 39 Industrial
and Engineering Chemistry 136-140 (1947).
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Estrada urges, inter alia, that there is no suggestion or motivation to
combine the teachings of Estrada 571, which concerns an aqueous solution
for inhibiting wilting and discoloration of leafy produce, with the teachings
of Ueno, which concerns an alcoholic aqueous solution for sterilizing foods
or food processing machines and utensils. Estrada grants that Ueno suggests
the treatment of lettuce “in a rather lengthy list,” but, Estrada emphasizes,
“nowhere are there any data presented of treating lettuce or other leafy
produce with the material.” (Id. at 6, 1st full para.) Rather, according to
Estrada, Ueno’s treatment of vegetables is limited to cucumbers, a very
different food from leafy produce. (Id.) Estrada urges that the advantages
(synergistic effects) taught by Ueno would not have been achieved by the
mere substitution of the alkali phosphates suggested by Ueno for the sodium
hexametaphosphate in the solution taught by Estrada 571. (Id.at 2d full
para.) Estrada urges further that the aims of inhibiting wilting and
discoloration of leafy produce (Estrada) and aqueous sterilization (Ueno),
are distinct, and operate through different mechanisms. (Id. at 7, 1st para.)
As a result, Estrada argues, there would have been no reason to combine the
teachings of the two references to arrive at the claimed invention.
Estrada’s arguments that Estrada 571 and Ueno are not directed to
common concerns overlooks the teaching of Estrada 571, that “[t]his process
utilizes a composition which inhibits bacterial degradation of the produce.”
Estrada 571 col. 2, ll. 36-37. The aims and concerns of Estrada 571 thus
coordinate well with Ueno’s aim of providing “a sterilizing agent for foods
and food processing machines and utensils, which has a reduced toxicity and
a high degree of safety, does not reduce the flavors and qualities of foods
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. . . ”. (Ueno, col. 2, ll. 28-32.) On the present record, the differences
between Estrada 571 and Ueno are less than Estrada urges. Moreover,
Estrada appears to have overlooked Ueno Example 8, which reports tests of
dipping various foods, including cucumber, leek, parsley, and lettuce, into
the solution of Example 7 at 100:6 dilution. (Ueno, col. 13, ll. 15-34.)
Finally, Estrada’s argument that the Examiner’s proposed substitution would
not obtain the synergistic benefits taught by Ueno does not address the
Examiner’s proposed substitution of trisodium phosphate for
hexametaphosphate. In this regard, Estrada has not addressed the teachings
of Bell, cited by the Examiner as support for the thesis that the substitutions
are merely substitutions of recognized equivalent sources of phosphate ions.
Estrada has not substantiated the arguments that the mechanisms are
sufficiently distinct that the routineer would not have made the proposed
substitution with a reasonable expectation of success.
Finally, Estrada urges that the Declaration8 of Mr. Estrada
(“Declaration”), provides evidence of “greater than expected results and
superiority of a shared property, i.e., the inhibition of wilting and
discoloration of leafy produce,” sufficient to rebut any prima facie case of
obviousness advanced by the Examiner. (Br. 7.) In particular, Estrada urges
that the Sodium Dibasic III (“Dibasic”) solution representative of the

8 Declaration of Joe Jess Estrada, filed 6 October 2010, after the Final
Rejection. The Declaration is not provided in the Evidence Appendix, as
required by 37 C.F.R. § 41.37(c)(1)(ix), in force for appeals in which the
Notice of Appeal was filed prior to 23 January 2012. 76 Fed. Reg. 72270,
77270 (22 November 2011). Nonetheless, because the Examiner has
considered the Declaration (Ans. 12-14), we shall also consider it.
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claimed invention was consistently better at inhibiting wilting and
discoloration of spinach and mixed greens than the Sodium Hex I solution
and the Salt II (“Salt”) solution. (Id.) Estrada urges that “[t]he superiority
of the Sodium Dibasic III solution was surprising and against the
expectations of those of skill in the art at the time the present invention was
made.” (Id.) Estrada does not, in the Brief, describe or explain the tests that
were conducted. Nor does Estrada, in the Brief, explain what the
expectations of those of skill in the art would have been.
The Declaration contains a description of the composition of each
solution, a brief summary of the preparation of the solutions, and five
Exhibits that describe, in varying degrees of brevity, the tests conducted.
Generally, spinach or “spring mixed greens” were dipped into the solutions,
spun dry, and then packaged and cold-stored until the day of the test. The
samples were then unpackaged at room temperature (Exhibit 3, the most
detailed test, reports an initial temperature of 61°F (at 9:15 a.m.) and a final
temperature of 70°F (at 12:00 noon)). The wilting and color evaluated at
intervals by members of a panel.
The Examiner finds that the “important test” is the one reported in
Exhibit 3, comparing Dibasic with Salt. (Ans. 13.) The Examiner finds that
when the samples were opened [after 17 days in cold storage], there was no
difference between the Dibasic-treated sample and the Salt-treated sample,
and that there were no marked differences between the two samples
until 12:00 noon, when the Dibasic-treated sample was better. (Id.) The
Examiner finds further that the 647 Specification teaches that the purpose of
the invention is to provide a treatment that will prolong the freshness of the
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produce in cold storage. (Ans. 13, 3d full para., citing Specification
paragraphs 1, 11, 12, 16, and 18-20.) The Examiner states that “it is not
clear how the declaration promotes the invention by testing the preservation
at ambient temperatures.” (Id. at sentence bridging 13-14.) Because the
Dibasic- and Salt-treated samples were identical after 17 days of cold
storage, the Examiner concludes that unexpectedly superior results have not
been demonstrated for the claimed invention.
Estrada did not file a Reply Brief.
Whether results are unexpected is a question of fact. The predecessor
to the Federal Circuit held that unexpected results must be proved by clear
and convincing evidence. See, e.g., In re Passal, 426 F.2d 409, 412 (CCPA
1970) (“Certainly, at least, that ‘clear and convincing evidence’ of
unexpected properties required by this court in In re Lohr, 317 F.2d 388 . . .
(1963), is lacking.”) The Federal Circuit has also explained that “a fact
finder is entitled to his own ideas, within reason, as to what evidentiary facts
will persuade him of unexpected results. Thus whether rebuttal evidence is
sufficient to persuade the examiner that unexpected results exist is an
evidentiary matter left for the trier of fact.” In re Johnson, 747 F.2d 1456,
1460 (Fed. Cir. 1984).
The Examiner’s uncontested conclusions are supported by substantial
evidence. As our reviewing court has explained, “[s]ubstantial evidence is
more than a mere scintilla. It means such relevant evidence as a reasonable
mind might accept to support a conclusion . . . . The Court has also stated,
however, that ‘the possibility of drawing two inconsistent conclusions from
the evidence does not prevent an administrative agency’s finding from being
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supported by substantial evidence.’ See Consolo v. Federal Maritime
Comm'n, 383 U.S. 607, 619-20 (1966)).”) In re Gartside, 203 F.3d 1305,
1312 (Fed. Cir. 2000). In the absence of a detailed exposition in the
Principal Brief on appeal, and in the absence of rebuttal argument in a
Reply, we conclude that harmful error in the appealed rejection has not been
shown.
C. Order
We affirm the rejection of claims 1-8.
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

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