Ex Parte Foegler et alDownload PDFPatent Trial and Appeal BoardDec 28, 201610588477 (P.T.A.B. Dec. 28, 2016) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 10/588,477 08/01/2006 Jens Foegler 04/004 K 6689 38263 7590 12/28/2016 ProPat, LLC 1794 Deer Park Lake Road Spruce Pine, NC 28777 EXAMINER SANDERSON, LEE E ART UNIT PAPER NUMBER 1782 MAIL DATE DELIVERY MODE 12/28/2016 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte JENS FOEGLER, HERBERT GORD, BERND ADOLF LANG, and PETER WOLF ____________ Appeal 2015–008146 Application 10/588,477 Technology Center 1700 ____________ Before ROMULO H. DELMENDO, BEVERLY A. FRANKLIN, and AVELYN M. ROSS, Administrative Patent Judges. FRANKLIN, Administrative Patent Judge. DECISION ON APPEAL Appellants request our review under 35 U.S.C. § 134(a) of the Examiner’s decision rejecting claims 1–4, 7–16, 18–20, 23, 24, 26 and 28– 31. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). Appeal 2015-008146 Application 10/588,477 2 STATEMENT OF THE CASE Claim 1 is illustrative of Appellants’ subject matter on appeal and is set forth below (with text in bold for emphasis): 1. A food casing comprising (a) a textile support layer consisting of a woven fabric or knit fabric and (b) a single-layered transfer coating adhering to the textile support layer, wherein the coating (i) is essentially water-insoluble, (ii) has a closed surface, (iii) comprises a mixture of at least one edible binder that has been mixed with solid aroma substances and/or liquid aroma substances, dyes and/or flavorings that does not include plasticizer and (iv) is transferred completely onto a foodstuff located in the casing, the edible binder is gelatin or collagen and the transfer coating further comprises a crosslinker, citrate, smoke treatment or has been heated to impart water insolubility, and said casing is a constant- caliber sausage casing. The Examiner relies on the following prior art references as evidence of unpatentability: Barmore et al., US 2001/0008658 A1 Jul. 19, 2001 (hereafter “Baremore”) Ito et al. US 5,705,214 Jan. 6, 1998 (hereafter “Ito”) Rose US 3,383,223 May 14, 1968 Appeal 2015-008146 Application 10/588,477 3 THE REJECTION Claims 1–4, 7–16,18–20, 23, 24, 26 and 28–31 are rejected under 35 U.S.C. §103(a) as being unpatentable over Barmore, Ito, and Rose. ANALYSIS We reverse the rejection essentially in view of the stated position set forth by Appellants in the record, and we add the following for emphasis. It is the Examiner’s basic position that Barmore teaches most of the recited elements of the claims (Non-final Act. 2–4), but states that Barmore is silent regarding (1) the protein in the coating comprising gelatin and (2) the casing comprising a woven or knitted textile layer. Non-final Act. 4. The Examiner relies upon Rose for teaching the protein in the coating comprising gelatin. Non-final Act. 5. The Examiner relies upon Ito for teaching the casing comprising a woven or knitted textile layer. Non-final Act. 4–5. Appellants argue that the claimed single-layered transfer coating formed from insolubized gelatin or collagen adhering to a textile that completely transfers onto a foodstuff, as recited in the claims, is patentable over the combination of Barmore, Ito and Rose because there would have been no motivation to have looked to Rose to form the inventive single- layered transfer coating releasing completely from the textile casing because Rose is directed to an adhesive layer formed from crosslinked protein, such as the recited gelatin, that binds the casing to a foodstuff. Appeal Br. 10–11. Reply Br. 4–5. Appeal 2015-008146 Application 10/588,477 4 In reply, the Examiner sets forth an equivalency theory for the reasons presented on pages 8–11 of the Answer. Appellants disagree and submit, inter alia, that one of ordinary skill would not have expected the “adhesion properties” of Barmore and Rose to be similar (contrary to the Examiner’s positon) based upon the respective teachings of Barmore and Rose. Appellants submit that Barmore teaches that the transfer-coating would transfer onto food, whereas Rose teaches that the coating of Rose would act as a tie layer adhering the sausage to a cellulose casing. Appeal Br. 10, 11, 14, 15, 16–19; Reply Br. 4–7, 9–14. Appellants submit that, although both the coatings of Barmore and Rose “adhere to meat” as noted by the Examiner, the coating of Rose also adheres to the cellulose casing. Reply Br. 14. Appellants submit that the coating of Rose was specifically designed to adhere to both the casing and the sausage. Id. Appellants state that, conversely, the transfer coating of Barmore was specifically designed to release from the casing. Id. Appellants argue that one skilled in the art would thus expect the coatings of Barmore and Rose to be altogether “dissimilar,” rather than similar. Id. We agree. As such, the Examiner’s equivalency theory is unsupported. In order to rely on equivalence as a rationale supporting an obviousness rejection, the equivalency must be recognized in the prior art. In re Ruff, 256 F.2d 590, 118 USPQ 340 (CCPA 1958). In the instant case, the Examiner has not directed us to evidence in the record indicating that the equivalency is recognized in the prior art—while the coatings of Barmore and Rose “adhere to meat” (as discussed, supra), in making this observation, the Examiner is ignoring the full teachings of Rose that the coating of Rose specifically acts as a tie layer adhering the sausage to a cellulose casing. “It is impermissible within the Appeal 2015-008146 Application 10/588,477 5 framework of section 103 to pick and choose from any one reference only so much of it as will support a given position, to the exclusion of other parts necessary to the full appreciation of what such reference fairly suggests to one of ordinary skill in the art.” See In re Hedges, 783 F.2d 1038, 1041 (Fed. Cir. 1986) (citations omitted)). On the other hand, Appellants have pointed to evidence in the record indicating otherwise. In view of the above, coupled with Appellants’ position in the record, we reverse the rejection. DECISION The rejection is reversed. ORDER REVERSED Copy with citationCopy as parenthetical citation