Ex Parte Garwood

Patent Trial and Appeal Board

Sep 28, 2017

13493733 (P.T.A.B. Sep. 28, 2017)

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.
13/493,733 06/11/2012 Anthony J.M. Garwood CRSL139608 8991
26389 7590 10/02/2017
rTTRTSTRNSFN OTONNOR TOHNSON KTNDNFNN PT T C EXAMINER
1201 THIRD AVENUE STULII, VERA
SUITE 3600
SEATTLE, WA 98101-3029 ART UNIT PAPER NUMBER
1791
NOTIFICATION DATE DELIVERY MODE
10/02/2017 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):
efiling @ cojk. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANTHONY J.M. GARWOOD
Appeal 2017-003115
Application 13/493,733
Technology Center 1700
Before ADRIENE LEPIANE HANLON, CHRISTOPHER L. OGDEN, and
SHELDON M. McGEE, Administrative Patent Judges.
HANLON, Administrative Patent Judge.
DECISION ON APPEAL
A. STATEMENT OF THE CASE
The Appellant filed an appeal under 35 U.S.C. § 134(a) from an Examiner’s
decision rejecting claims 1—6 and 9—11, which are all of the pending claims. We
have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
The claimed subject matter is directed to a method for separating fat from
lean, wherein a size of the lean particles is selected to result in a proportion of fat
about the same as the selected fat content of beef to be produced. Claim 1 is
reproduced below from the Claims Appendix of the Appeal Brief dated February
29, 2016 (“App. Br”).
Appeal 2017-003115
Application 13/493,733
1. A method for separating fat from lean, comprising:
selecting a fat content of beef to be produced;
chilling beef comprising fat and lean;
reducing the chilled beef into particles that comprise fat and
particles that comprise lean, wherein a size of the lean particles is
selected to result in a proportion of fat about the same as the selected
fat content of beef to be produced;
combining the particles with a fluid to produce a mixture,
wherein the fluid comprises water; and
centrifuging the mixture to separate the fluid from the particles
that comprise lean; and
collecting the lean particles to produce the beef having the
selected fat content.
App. Br. 21.
The Examiner maintains the following rejections on appeal:
(1) claim 1 under the ground of nonstatutory obviousness-type double
patenting as unpatentable over claim 1 of US 8,137,722 (“722 patent);
(2) claim 1 under the ground of nonstatutory obviousness-type double
patenting as unpatentable over claims 1 and 4 of US 7,666,456 (“456 patent”) in
view of Franklin et al.;1
(3) claim 1 under the ground of nonstatutory obviousness-type double
patenting as unpatentable over claim 1 of US 8,178,144 (“144 patent”);
(4) claim 1 under the ground of nonstatutory obviousness-type double
patenting as unpatentable over claim 1 of US 8,568,813 (“813 patent”) in view of
Franklin;
1 US 5,650,187, issued July 22, 1997 (“Franklin”).
2
Appeal 2017-003115
Application 13/493,733
(5) claim 1 under the ground of nonstatutory obviousness-type double
patenting as unpatentable over claim 1 of US 8,911,809 (“809 patent”) in view of
Franklin;
(6) claims 1—6 and 9-11 under 35 U.S.C. § 103(a) as unpatentable over
Garwood2 in view of Franklin; and
(7) claims 1—6 and 9-11 under 35 U.S.C. § 103(a) as unpatentable over
Garwood in view of Franklin and Gamay.3
B. DISCUSSION
1. Rejections 619—659
The Appellant argues that claim 1 of the 722 patent does not describe or
render obvious the following two steps recited in claim 1 on appeal:
(i) selecting a fat content of beef to be produced, and
(ii) reducing the chilled beef into particles that comprise fat and
particles that comprise lean, wherein a size of the lean particles is
selected to result in a proportion of fat about the same as the selected
fat content of beef to be produced.
App. Br. 4—5 (formatting and emphasis added).
The Appellant argues that the Examiner, in the first instance, does not
identify the differences between claim 1 on appeal and claim 1 of the 722 patent or
“provide a valid reason why the differences are obvious.” App. Br. 5.
The Appellant’s argument is supported by the record. See Ans. 2^4;4 see
also Ans. 14 (maintaining the double patenting rejections for the reasons of
record). Therefore, rejection (1) is not sustained. See In re Oetiker, 977 F.2d
2 WO 03/101210 Al, published December 11, 2003 (“Garwood”).
3 US 5,221,554, issued June 22, 1993 (“Gamay”).
4 Examiner’s Answer dated October 13, 2016.
3
Appeal 2017-003115
Application 13/493,733
1443, 1445 (Fed. Cir. 1992) (examiner bears the initial burden of presenting a
prima facie case of unpatentability).
The Appellant presents substantially the same arguments in response to the
obviousness-type double patenting rejections based on the 456 patent, the 144
patent, the 813 patent, and the 809 patent, either alone or in combination with
Franklin.5 App. Br. 7, 9, 11, 12—13. Those arguments are also supported by the
record. See Ans. 4—5, 6, 7, 8. Therefore, rejections (2)—(5) are not sustained.
Oetiker, 977 F.2d at 1445.
2. Rejection (6)
Claim 1 recites a method for separating fat from lean, comprising, inter alia,
the following steps:
(1) selecting a fat content of beef to be produced [and]
(2) reducing the chilled beef into particles that comprise fat
and particles that comprise lean, wherein a size of the lean particles is
selected to result in a proportion of fat about the same as the selected
fat content of beef to be produced.
App. Br. 21.
The Appellant argues that “[i]n the claimed method, beef having a desired
fat content is produced by the method of reducing the beef into particles of a size
such that the particles have a fat content corresponding to the desired fat content of
the beef to be produced.” App. Br. 13. The Appellant argues that “Garwood does
not disclose and the [Examiner] did not analyze how or why Garwood discloses or
renders obvious steps (1) and (2).” App. Br. 13.
5 The Examiner relies on Franklin as evidence that the use of centrifuges for the
separation of fat from lean meat was conventional in the art at the time of the
Appellant’s invention. See, e.g., Ans. 5.
4
Appeal 2017-003115
Application 13/493,733
The Appellant argues that Garwood adjusts fat content by selecting the
density of a fluid (Garwood 49,11. 1—10)6 or by dissolving fat with carbon dioxide
(Garwood 52,11. 26—31), not by selecting particle size as recited in claim 1. App.
Br. 15. The Appellant’s argument is supported by the record. See Ans. 15 (finding
that “Garwood does not explicitly states [sic] that a desired fat content has been
established prior to grinding the meat product.”). Therefore, rejection (6) is not
sustained.
3. Rejection (7)
The Examiner relies on Gamay “as a teaching of the connection between
selected particle size and fat content of the processed meat.” Ans. 13. The
Examiner finds Gamay discloses:
A fractionation process for commercially producing low-fat low-
cholesterol, reduced calorie, natural beef, fowl and seafood products.
The process involves size reduction of the meat in the presence of
water with ionic strength pH manipulation and fractionation of the
meat into fatty materials, connective tissues and extremely low-fat,
low-cholesterol meat particles.
Ans. 13 (citing Gamay Abstract).
Referring to the flow diagram of FIG. 1, the first step in one form of
the invention is the size reduction step, including micro-reduction, of
the starting meat material. In the case of the illustrated size reduction
of beef red meat, the size range is between approximately 0.5—2000
microns in diameter utilizing a size disintegrator manufactured by
Stephan Corp. (Stephan Universal Machine Type VCM-12) with
sharp cutting knives.
6 Garwood discloses that the fat lean stream will separate by components in a
separating vessel. Fat will move upward in cone 2524 and lean meat will move
downward in cone 2430. Garwood discloses that the specific density of the fluid in
the vessel may be adjusted (elevated) by adding sodium chloride, sodium chlorite,
or any other suitable salt, and the respective components of fat and lean are
directed according to density. Garwood 48,1. 32-49,1. 10.
5
Appeal 2017-003115
Application 13/493,733
Ans. 13 (citing Gamay, col. 4,11. 60-67).
The purpose of the size micro-reduction step is to “disintegrate ”
connective tissues, adipose tissues, fats, cell membranes and proteins
and increase the surface area to release various types of fats and
cholesterol. The precise size range suitable to cause such
“disintegration” can, of course, vary depending on the type of meat
(for example, beef, lamb, fish, and poultry) and even the particular
structure of any one individual animal’s fat structure (arising from,
e.g., diet or breeding).
Ans. 14 (citing Gamay, col. 5,11. 3—11 (emphasis added)).
Based on the foregoing, the Examiner finds that “Gamay recognizes the
connection between the particle size of the fractionated meat and the final fat
content of the processed meat.” Ans. 14. Therefore, the Examiner finds “one of
ordinary skill in the art would have been motivated to control the particle size of
the meat material during the fat separation process from the lean meat in order to
achieve high level of fat separation as suggested by Gamay.” Ans. 14 (emphasis
added).
The Examiner, however, does not direct us to any portion of Gamay
disclosing or suggesting that “a size of the lean particles is selected [prior to the
size reduction step] to result in a proportion of fat about the same as the selected
fat content of beef to be producecT as recited in claim 1. See App. Br. 21
(emphasis added). Rather, in the words of the Appellant, the particle size in
Gamay is selected “to enable the fats and other constituents of the meat to be
liquefied.” App. Br. 18—19. Therefore, rejection (7) is not sustained.
C. DECISION
The Examiner’s decision is reversed.
REVERSED
6