Ex Parte Gentili

Patent Trial and Appeal Board

May 11, 2017

11884198 (P.T.A.B. May. 11, 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.
11/884,198 11/05/2007 Paolo Gentili SDJ-6463-2 2106
23117 7590 05/15/2017
NIXON & VANDERHYE, PC
901 NORTH GLEBE ROAD, 11TH FLOOR
ARLINGTON, VA 22203
EXAMINER
KASHNIKOW, ERIK
ART UNIT PAPER NUMBER
1792
NOTIFICATION DATE DELIVERY MODE
05/15/2017 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):
PTOMAIL@nixonvan.com
pair_nixon @ firsttofile. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PAOLO GENTILI
Appeal 2016-002356
Application 11/884,198
Technology Center 1700
Before JAMES C. HOUSEL, WESLEY B. DERRICK, and
MICHAEL G. McMANUS, Administrative Patent Judges.
DERRICK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 28-31 and 34^44 under 35 U.S.C. § 103(a) as
obvious over cited prior art. We have jurisdiction under 35 U.S.C. § 6.
We REVERSE.
THE INVENTION
The subject matter of the claims on appeal relates to a method for
processing a vegetable product in a container in which the specific weight of
the solid part is controlled by controlling the pressure of a gas in the
container. Spec. Abstract.
Appeal 2016-002356
Application 11/884,198
Claim 28—the sole independent claim on appeal—is representative:
Method for processing, in a container, a vegetable
product containing a solid part suspended in a liquid part,
comprising
controlling a pressure of a gas in said container for
modifying the specific weight of said solid part, so as to prevent
said solid part from floating on said liquid part until drying,
wherein said preventing is achieved by increasing said
pressure of said gas in said container, said increasing said
pressure causing said specific weight of said solid part to be
increased to an extent that said solid part is completely
immersed into said liquid part,
wherein said increase in said specific weight is
caused by a contraction of bubbles produced by said gas
in said solid part, said contraction being obtained
through said increasing said pressure, and
wherein said preventing is achieved without
having to break said solid part up.
Appeal Br. (Claims Appendix) 15 (formatting and emphasis added).
As manifest from the highlighted portions of claim 28, the method
comprises increasing the pressure of gas within a container containing a
solid part suspended in a liquid part so as to contract bubbles within the solid
part, thereby increasing the specific weight of the solid part to prevent the
solid part from floating on the liquid part.
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Appeal 2016-002356
Application 11/884,198
THE REJECTIONS
The claims stand rejected under 35 U.S.C. § 103(a) as follows:
1. Claims 28-31 and 34^14 over Rieger1;
2. Claims 28-31 and 34 44 over Guerin2 in view of Ervas3; and
3. Claims 42 and 43 over Guerin in view of Ervas and Enenkel.4
DISCUSSION
Having considered the Examiner’s rejections in light of Appellant’s
arguments, we are persuaded that the Examiner has failed to meet the
Office’s burden of establishing the unpatentability of the claims on appeal.5
For any ground of rejection, “the examiner bears the initial burden ... of
presenting a prima facie case of unpatentability.” In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992).
Our analysis begins with determining the meaning of the claims. Key
Pharms. v. Hereon Labs. Corp., 161 F.3d 709, 714 (Fed. Cir. 1998). We
give claim terms the broadest reasonable interpretation consistent with the
specification as it would be interpreted by one of ordinary skill in the art. In
re NTP, Inc., 654 F.3d 1279, 1288 (Fed. Cir. 2011). In doing so, we turn
1 Rieger, EP 0530820 A2, published March 10, 1993; the Examiner relies on
a machine translation, which use is not contested.
2 Guerin, FR 2359205 Al, published February 17, 1978; the Examiner relies
on a machine translation, which use is not contested.
3 Ervas et al., EP 1 028 162 A2, published August 16, 2000.
4 Enenkel, US 4,773,315, issued September 27, 1988.
5 We refer to the Specification filed August 13, 2007 (“Spec.”), the Final
Office Action issued December 22, 2014 (“Final Act.”), the Appeal Brief
filed May 14, 2015 (“Appeal Br.”), the Examiner’s Answer issued
November 3, 2015 (“Ans.”), and the Reply Brief filed December 22, 2015
(“Reply Br.”).
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Appeal 2016-002356
Application 11/884,198
first to the claims themselves. See, e.g., Rapoport v. Dement, 254 F.3d
1053, 1059 (Fed. Cir. 2001). As noted above immediately after reproduced
claim 28, the method comprises increasing the pressure of gas in order to
contract bubbles within the solid part to a degree sufficient to increase the
specific weight of the solid part and thereby prevent the solid part from
floating on the liquid part. Critically, because the claim sets forth that the
increased pressure and concomitant increased specific weight prevents the
solid part from floating, it must be that, absent the increased pressure and
resulting contraction of gas bubbles, the solid part would be sufficiently
buoyant to float on the liquid part, i.e., have a lower specific weight
(density) than the liquid part.
Rejection 1
As relied on by the Examiner, Rieger relates to producing wine and
discloses methods for fermentation in a pressure container in which gas
produced by the fermentation results in pressure that is intermittently
released (pressure relaxation) thereby causing agitation of and wetting of
solids. Ans. 2-3 (citing Rieger H 5-8, 17, 21, 27, 33, 35-36, 42, 46, 55, 77,
79); see also Ans. 9. The Examiner finds that it is inherent that bubbles
produced in Rieger contract with increased pressure. Ans. 2. The Examiner
further finds Rieger teaches that pressure can be relaxed gradually and that
“operation may be varied to achieve a desired result.” Ans. 3—4 (citing
Rieger 1133, 85).
The Examiner concludes that it would have been obvious “to have
released the pressure at a gradual rate, which would achieve the desired
result of immersion of the pomace cake without having to break said solid
part up.” Ans. 4.
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Appeal 2016-002356
Application 11/884,198
Further addressing the “preventing said solid part from floating on the
liquid part,” the Examiner maintains that claim 28 recites “a solid part” and
it is inherent that some part of the vegetable product would sink and some
would float. Ans. 10.
Having considered the record, we find no basis in the Examiner’s
articulated reasoning or in the cited portions of Rieger for any solid part to
have a specific weight affected by a gas pressure that causes gas bubbles
within the solid part to contract so that the solid part does not float where it
otherwise, absent the gas pressure, would have. See generally Final Act.;
Ans. While it may be inherent that Rieger’s fermentation in a closed vessel
creates both bubbles and increased gas pressure that would cause contraction
of the bubbles, the Examiner fails to establish that it is inherent that Rieger’s
method results in an increase of pressure sufficient to compress bubbles
within the solid part so as to prevent a solid part from floating to the surface.
As highlighted by Appellant’s arguments (see, e.g., Appeal Br. 6-8; Reply
Br. 1-3), Rieger uses the release of gas pressure to cause, inter alia,
mechanical agitation and wetting of solids that “have settled on the surface
of the juice due to its lower specific gravity” (Rieger | 6), and, thus, does not
rely on increased pressure to compress bubbles to prevent floating, but rather
uses agitation of gas bubbling from the juice upon release of pressure to wet
floating solids (Rieger || 6-8, 21, 40).
As to the Examiner’s further reasoning that it is inherent that some
part of the vegetable product would sink and some would float (Ans. 10), it
fails to squarely address the requirements of claim 28, as explained above,
that the solid part is prevented from floating by the increased pressure which
compresses bubbles causing an increase in specific weight, as highlighted by
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Appeal 2016-002356
Application 11/884,198
Appellant (Reply Br. 2-3). It is not sufficient that some part of the solid part
sinks and some floats. Accordingly, absent further explanation, the
Examiner has failed to establish the requisite factual basis for a solid part
being prevented from floating on the liquid part by the increased gas
pressure concomitantly compressing gas bubbles within the solid part and
increasing its specific weight. In re Warner, 379 F.2d 1011, 1017 (CCPA
1967) (“The Patent Office has the initial duty of supplying the factual basis
for its rejection. It may not. . . resort to speculation, unfounded assumptions
or hindsight reconstruction to supply deficiencies in its factual basis.”); see
also In re Oetiker, 977 F.2d at 1445.
Rejections 2 & 3
The Examiner relies on Guerin for its disclosure of a method in which
the solid phase of a vegetable product containing a solid part in a liquid part
is maintained in an immersed state by a horizontal tray during the wine
making process. Ans. 5 (citing Guerin 3); see also Ans. 6-7, 9. The
Examiner finds that “[t]he tank is loaded with grapes and additives . . . [and]
the tray is lowered” and that, in operation, “the liquid mass rises in the tank
and the more or less solid mass, the hat, is descended.” Ans. 5 (citing
Guerin 4). As shown in Guerin’s Figure 2, the tray 2 is used to maintain the
hat C—the solid mass—below the level of liquid mass.
The Examiner relies on Ervas for its teachings relating to regulating
the pressure of gas produced during the fermentation process, particularly by
opening or closing a valve allowing communication with the ambient
environment. Ans. 5 (citing Ervas ^fl[ 9, 17, 37). Enenkel is relied on for the
limited purpose of teaching a timing device for venting control. Ans. 7-8.
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Application 11/884,198
The Examiner concludes that “it would have been obvious to one
having ordinary skill in the art at the time of the invention to have utilized
the valve member of Ervas to effectively regulate the gas that is produced
during the fermentation process of Guerin.” Ans. 5-6.
The Examiner further maintains that it is inherent that Guerin would
produce gas and bubbles that contract with increased pressure and that “the
solid part is prevented from floating on the liquid part by the increase in
pressure in the container.” Ans. 9 (referring to both Rieger and Guerin).
Having considered the record, we find no basis in the Examiner’s
articulated reasoning for any solid part to be prevented from floating by the
increased gas pressure because, as admitted by the Examiner, Guerin teaches
that the solid phase is maintained in an immersed state by the horizontal
tray. Ans. 5, 6-7, 9; see also Guerin 3, Fig. 2. Thus, while it may be that
the relied on combination would inherently produce gas and bubbles that
contract with increased pressure, there is no sound basis for this increased
gas pressure preventing the solid part from floating on the liquid part. Nor
has the Examiner provided any rationale for modifying the method to
provide such a pressure. See generally Final Act.; Ans. The Examiner has
not, accordingly, established a prima facie case of obviousness. In re
Warner, 379 F.2d at 1017; see also In re Oetiker, 977 F.2d at 1445.
For these reasons, we are constrained to reverse the Examiner’s
obviousness rejection.
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Appeal 2016-002356
Application 11/884,198
DECISION
The Examiner’s decision rejecting claims 28-31 and 34—44 is
REVERSED.
REVERSED
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