Ex Parte GarwoodDownload PDFPatent Trial and Appeal BoardSep 28, 201713493733 (P.T.A.B. Sep. 28, 2017) 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. 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 Copy with citationCopy as parenthetical citation