Ex Parte Gerns

Board of Patent Appeals and Interferences

Mar 7, 2011

10467203 (B.P.A.I. Mar. 7, 2011)

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.
10/467,203 08/05/2003 Edwin Gerns 3840.01 9779
7590 03/08/2011
Howard M. Peters
PETERS, VERNY, JONES & SCHMITT, L.L.P.
425 Sherman Avenue, Suite 230
Palo Alto, CA 94306
EXAMINER
BEKKER, KELLY JO
ART UNIT PAPER NUMBER
1781
MAIL DATE DELIVERY MODE
03/08/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte EDWIN GERNS
__________

Appeal 2010-008715
Application 10/467,203
Technology Center 1700
__________

Before DONALD E. ADAMS, LORA M. GREEN, and
FRANCISCO C. PRATS, Administrative Patent Judges.

PRATS, Administrative Patent Judge.

DECISION ON APPEAL1
This appeal under 35 U.S.C. § 134 involves claims to a process of
making a manufactured meat product, as well as claims to the manufactured
meat product itself. The Examiner rejected the claims as obvious.

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2010-008715
Application 10/467,203

2
We have jurisdiction under 35 U.S.C. § 6(b). We reverse.
STATEMENT OF THE CASE
Claims 1, 15-19, 21-27 and 34-41 stand rejected and are on appeal
(App. Br. 2).2 Claims 1 and 34-36, the independent claims, are
representative and read as follows:
1. A method of production of manufactured meat including
the steps of:
providing an open-boned, boned-out whole cut of a meat
animal;
separately curing the cut and a bone;
binding the cured bone on an external surface of the flesh
of the cut proximate the recess formed by the open boning
thereof with a cook-in binding; and
cooking the bound cut.

34. A method of production of manufactured meat comprising
the steps of:
providing a cut of a meat animal;
removing a bone from the cut;
separately curing the cut and the bone;
binding the cured bone on the cut in intimate contact with
the flesh of the cut at the recess formed by the removal of the
bone from the cut, using a cook-in binding; and
cooking the bound cut.

35. A method of production of manufactured meat comprising
the steps of:
providing a boned-out cut of a meat animal;
providing a bone;
separately curing the cut and the bone;
binding the cured bone on the cut in intimate contact with
the flesh of the cut at a recess formed by open boning of the cut,
using a cook-in binding; and
cooking the bound cut.

2 Appeal Brief filed October 27, 2009.
Appeal 2010-008715
Application 10/467,203

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36. A meat product comprising:
a cured meat cut;
a bone cured separately from the cured meat cut; and
a cook-in binding configured to bind the bone to a cured
meat cut to the bone, the bone being disposed on an external
surface of the cured meat cut.

The following rejections are before us for review:
(1) Claims 1, 15, 16, 19, 21, 22, 34-36, and 38-41, under 35 U.S.C. §
103(a) as obvious over Didier3 and Spratt4 (Ans. 4-9);
(2) Claims 17, 18, and 37, under 35 U.S.C. § 103(a) as obvious over
Didier, Spratt, and Lawrie5 (10-11); and
(3) Claims 23-27, under 35 U.S.C. § 103(a) as obvious over Didier,
Spratt, and Stumpf6 (Ans. 11-12).
DISCUSSION
Appellant contends, among other things, that each of the independent
claims requires the practitioner to bind a cured bone on the external surface
of a cut of meat, and that the Examiner has not shown that the combined
teachings of Didier and Spratt would have prompted an ordinary artisan to
prepare a manufactured meat in that fashion (see App. Br. 9-17).
The Examiner responds that none of the independent claims excludes
the meat/bone arrangement described by Spratt, in which the bone is placed
in the interior portion of the cut of meat, with the end portion of the bone
being visible on the surface of the meat (see Ans. 13-14; also Spratt Figure

3 FR 2 728 435 (published June 28, 1996) (as translated).
4 U.S. Patent No. 6,027,756 (filed December 5, 1998).
5 R.A. LAWRIE, LAWRIE’S MEAT SCIENCE 146, 152, 192-93, 236, 240
(William Andrew Publishing/Noyes 1998).
6 U.S. Patent No. 4,806,373 (filed February 1, 1988).
Appeal 2010-008715
Application 10/467,203

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4). Thus, the Examiner reasons, “as the term ‘on’ as instantly claimed is
synonymous with adjacent, by teaching the bone is adjacent to the external
surface of the meat, the modified references of record (Didier in view of
Spratt) teach that the bone is on the external surface of the meat as instantly
claimed” (Ans. 13).
The Examiner also reasons that it would have been obvious to an
ordinary artisan to place the entire bone on the external surface of the cut of
meat, as opposed to the arrangement described by Spratt, since:
modify[ing] the visual position of the bone and the meat would
have been an aesthetic design change which would be obvious
and routine determination to one of ordinary skill in the art and
would have no functional or property difference from the
teachings of the prior art, absent any clear and convincing
arguments and/or evidence to the contrary . . . .

(Ans. 14.) Thus, the Examiner urges, placement of the bone is a “matter
relating to ornamentation only which ha[s] no mechanical function [and]
cannot be relied upon to patentabl[y] distinguish the claimed invention from
the prior art” (id.) (citing MPEP § 2144.04).
The Examiner further urges that Appellant’s Specification concedes
that it is known in the art that “ham on the bone is a superior product to
boneless ham and boneless products are perceived to have inferior eating
quality,” and that displaying the bone on top of a cut of meat would
therefore “be a common sense design in order to draw the consumer to the
product since the consumer would be able to visually see the portion of the
product which gave the perception of superior quality” (id.).
We conclude that Appellant has the better position.
Appeal 2010-008715
Application 10/467,203

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Claim 1 requires the practitioner to “bind[] the cured bone on an
external surface of the flesh of the cut” of meat (emphasis added). Claims
34 and 35 similarly require the practitioner to “bind[] the cured bone on the
cut” of meat (emphasis added). Claim 36 similarly requires the meat
product to have bone bound to a cut of meat by a cook-in binding, with “the
bone being disposed on an external surface of the cured meat cut” (emphasis
added).
Because each of these claims requires the bone, at a minimum, to be
bound on the cut of meat, we conclude that the entire bone must be bound to
the external surface of the meat. In contrast, Spratt’s technique binds the
separately cured bone in the cut of meat (see Spratt, col. 3, ll. 3-4 (After
curing, the ham bone is “placed within a precise incision made in the major
muscle . . . .”) (emphasis added)).
We acknowledge that Figures 2-4 of Spratt suggest that the ends of
bone may be visible on the external surface of the cut of meat. However, we
are not persuaded it is reasonable to interpret that arrangement as one in
which the bone is bound to external surface of the cut of meat.
We are also not persuaded that an ordinary artisan would have been
prompted to arrange the meat and bone in the manner required by the claims.
Specifically, in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 415
(2007), the Supreme Court emphasized “an expansive and flexible
approach” to the obviousness question, but also reaffirmed the importance of
determining “whether there was an apparent reason to combine the known
elements in the fashion claimed by the patent at issue.” Id. at 418 (emphasis
added).
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Ultimately, therefore, “[i]n determining whether obviousness is
established by combining the teachings of the prior art, the test is what the
combined teachings of the references would have suggested to those of
ordinary skill in the art.” In re GPAC Inc., 57 F.3d 1573, 1581 (Fed. Cir.
1995) (internal quotations omitted).
In the instant case, because both Spratt and Didier disclose making a
manufactured meat by placing the bone inside the meat, we are not
persuaded that those references suggest the arrangement required in
Appellant’s claims. Moreover, as the Specification shows that arranging the
bone in the claimed fashion results in a ham having a superior taste
comparable to that of a non-manufactured bone-in ham (Spec. 3-4), we are
not persuaded that the claimed arrangement can be ignored as a mere
aesthetic feature.
Lastly, at the time of Appellant’s invention, manufactured hams
configured in the manner described by Spratt already had visible indicia of
bone presence, and therefore would presumably have been identified by
consumers as being of the supposed superior quality. Given that Spratt’s
hams already possessed a desirable appearance simulating that of a natural
bone-in ham, we are not persuaded that common sense would have
prompted an ordinary artisan to modify that arrangement and place the bone
entirely on the outside of the meat, as the claims require.
Thus, as we are not persuaded that Didier and Spratt would have
prompted an ordinary artisan to perform the steps required by claims 1, 34,
and 35, or prepare the meat product recited in claim 36, we reverse the
Examiner’s obviousness rejection of those claims, and their dependents, over
those references. Because Lawrie’s teachings regarding meat reshaping, and
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Stumpf’s teachings regarding the use of fruit juices in meat curing, do not
remedy the shortcomings discussed above with respect to the independent
claims, we also reverse the Examiner’s rejections of claims 17, 18, 23-27,
and 37.
SUMMARY
We reverse the Examiners’ obviousness rejection of claims 1, 15, 16,
19, 21, 22, 34-36, and 38-41 over Didier and Spratt.
We also reverse the Examiner’s obviousness rejection of claims 17,
18, and 37 over Didier, Spratt, and Lawrie, as well as the Examiners’
obviousness rejection of claims 23-27 over Didier, Spratt, and Stumpf.

REVERSED

dm

HOWARD M PETERS
PETERS, VERNY, JONES & SCHMITT, L.L.P.
425 SHERMAN AVENUE, SUITE 230
PALO ALTO CA 94306