Ex Parte Goto et alDownload PDFPatent Trial and Appeal BoardNov 3, 201713260117 (P.T.A.B. Nov. 3, 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. 13/260,117 12/09/2011 Tsuyoshi Goto 12844.162USWO 3039 52835 7590 11/07/2017 HAMRE, SCHUMANN, MUELLER & LARSON, P.C. 45 South Seventh Street Suite 2700 MINNEAPOLIS, MN 55402-1683 EXAMINER TURNER, FELICIA C ART UNIT PAPER NUMBER 1793 NOTIFICATION DATE DELIVERY MODE 11/07/2017 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 @hsml. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte TSUYOSHI GOTO, YASUHIRO FUKUDA, ITARU SHIOYA, HIDEKINIKAIDO, YOSUKE TANAKA, and TAEKO KOUSAKA Appeal 2017-002023 Application 13/260,1171 Technology Center 1700 Before KAREN M. HASTINGS, MICHELLE N. ANKENBRAND, and DEBRA L. DENNETT, Administrative Patent Judges. DENNETT, Administrative Patent Judge. DECISION ON APPEAL2 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims 4—13 and 30—35. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 Appellants identify NIPPON SUISAN KAISHA, LTD. as the real party in interest. Appeal Brief 2. 2 In our Opinion, we refer to the Specification filed September 23, 2011 (“Spec.”); the Declaration of Yasuhiro Fukuda signed February 26, 2014 (“Fukuda Decl.”); the Final Office Action mailed August 13, 2015 (“Final Act.”); the Appeal Brief filed February 19, 2016 (“Appeal Br.”); the Examiner’s Answer mailed September 22, 2016 (“Ans.”); and the Reply Brief filed November 21, 2016 (“Reply Br.”). Appeal 2017-002023 Application 13/260,117 The claims are directed to feed for fish farming of tuna or yellowtail species. Claim 4, reproduced below, is illustrative of the claimed subject 4. A feed for tuna or yellowtail species comprising: an outer layer comprising a heat-induced gel, which comprises at least one material selected from the group consisting of a protein and a starch; and an inner layer comprising a composition that comprises nutrient ingredients comprising fish meal and an oil as essential ingredients, wherein the heat-induced gel in the outer layer is obtained by forming an outer layer including the at least one material for the heat-induced gel and then heating the outer layer including the at least one material, a formulation of the outer layer is different from a formulation of the inner layer, and the feed is ingested by at least one fish species selected from the group consisting of tuna species and yellowtail species. Appeal Br. 20 (Claims App’x). The Examiner relies on the following prior art in rejecting the claims matter: REFERENCES on appeal: Hanson et al. US 4,579,741 Apr. 1, 1986 (“Hanson”) Kim Lanter et al. US 5,773,051 US 6,830,771 B2 June 30, 1998 Dec. 14, 2004 (“Lanter”) Jonsson et al. WO 97/22265 June 26, 1997 (“Jonsson”) Cerestar EP 1 527 700 Al May 4, 2005 WO 2006/090866 Al Aug. 31, 2006Takahashi et al. 2 Appeal 2017-002023 Application 13/260,117 (“Takahashi”)3 Johnsen WO 2006/098629 A1 Sept. 21, 2006 REJECTIONS The Examiner maintains and Appellants seek review of the following rejections under 35 U.S.C. § 103(a): 1. claims 4—7, 9, 12, 32, and 34 over Takahashi in view of Cerestar; 2. claims 8 and 13 over Takahashi and Cerestar, and further in view of Johnsen; 3. claim 10 over Takahashi and Cerestar, and further in view of Jonsson; 4. claim 11 over Takahashi and Cerestar, and further in view of Kim; 5. claims 30 and 31 over Takahashi and Cerestar, as evidenced by Hanson; and 6. claim 33 over Takahashi and Cerestar, and further in view of Lanter. Final Act. 2—8. OPINION The Examiner concludes that all of the pending claims are obvious over the combination of at least Takahashi and Cerestar. Id. at 2—8. With respect to the sole independent claim, claim 4, the Examiner finds that Takahashi discloses fish feed containing an outer shell with starch or protein, an inner core portion containing fish meal and oil, the shell material contains water, and feeding the feed to tuna and yellowtail. Id. at 2. The 3 The Examiner cites to an AIPN accessed machine translation of Takahashi. Final Act. 2. Appellants cite to the machine translation, as well as AU 2006216144 as a human translation of Takahashi. Appeal Br. 5. In our Opinion, we cite to AU 2006216144 as a clearer translation of the reference. 3 Appeal 2017-002023 Application 13/260,117 Examiner finds that “Takahashi does not disclose that the heat induced gel in the outer layer is obtained by forming an outer layer including the at least one material for the heat induced gel and then heating the outer layer including the at least one material.” Id. However, the Examiner finds that Cerestar discloses fish feed containing a coating of starch, gelatin, or wheat gluten, and heating the coated pellets with steam. Id. at 3 (citing Cerestar 1115 and 31). Appellants dispute that Cerestar teaches the claimed heat-induced gel in the outer layer. Appeal Br. 7 (citing Cerestar H 15 and 31). The paragraphs of Cerestar to which the Examiner and Appellants cite (paragraphs 15 and 31), along with paragraph 14 (included for clarity), are reproduced below: [0014] According to a further aspect of the present invention, there is provided a process for preparing fish feed pellets characterized in that it consists of (a) blending the ingredients of the fish feed composition; and (b) shaping the blend obtained in step (a) into pellets. [0015] In one embodiment, said process may further comprise a step (ci) of treating the pellets obtained in step (b) with steam for 1 to 30 seconds and/or a step (C2) of coating the pellets obtained in step (b) or (ci). [0031] According to one embodiment, the process of preparing the pellets of the present invention may comprise a further step (ci) of treating the pellets obtained in step (b) with steam for 1 to 30 seconds. This simple procedure allows the surface of the pellet to be hardened thereby further improving the pellets’ oil retention and water stability properties. The thickness of the hardened layer will increase with the length of steam treatment and will affect the sinking behaviour of the resultant pellets. Thus, this steam treatment can be used to ensure that the pellets have the correct floatability for the type 4 Appeal 2017-002023 Application 13/260,117 of fish being fed. It will also improve the pellets[’] resistance against physical stress, for instance during storage, transport and distribution. Thus, Cerestar teaches coating shaped pellets, or steaming (heating) shaped pellets, or steaming then coating shaped pellets, but not coating shaped pellets and then steaming them. See id.; see also id. claims 21—23. In response to Appellants’ challenge of Cerestar’s teaching, the Examiner finds that Appellants rely on a process step (a “heat induced gel which is obtained by forming an outer layer and then heating the outer layer”) in order to distinguish claim 4 over the product of Takahashi as modified by Cerestar. Ans. 9. The Examiner points out that the patentability of a product does not depend on its method of production. Id. (citing In re Thorpe, 111 F.2d 695, 698 (Fed. Cir. 1985)). The Examiner, therefore, finds that Cerestar is sufficient to teach a heat-induced gel in the outer layer. Id. at 10. “In determining validity of a product-by-process claim, the focus is on the product and not on the process of making it.” Amgen Inc. v. F. Hoff man ia Roche Ltd., 580 F.3d 1340, 1369 (Fed. Cir. 2009). “That is because of the . . . long-standing rule that an old product is not patentable even if it is made by a new process.” Id. at 1370. There is, however, “an exception to this general rule that the process by which the product is made is irrelevant.” Greenliant Sys., Inc. v. XicorLLC, 692 F.3d 1261, 1268 (Fed. Cir. 2012). If the process by which a product is made imparts “structural and functional differences” distinguishing the claimed product from the prior art, those differences are relevant, even if not explicitly part of the claim . Id. (c it ing Amgen, 580 F.3d at 1370). Where a process limit in a product claim is capable of construction as a structural limitation, the correct inquiry'' is 5 Appeal 2017-002023 Application 13/260,117 whether the product defined by the claim is patentably distinguished over the prior art in view of that structural limitation. See In re Garnero, 412 F,2d 276, 279 (CCPA 1969). In the instant case, Appellants define the “heat-induced gel” of claim 4 as: [A] gel able to be formed by heating a protein to 60°C or higher or by heating a protein to 60°C or higher and then cooling, or a gel able to be formed by adding water to a starch and then heating to 60°C or higher so as to cause gelatinization. Spec. 115. Appellants identify “softness, extensibility, and the like” as physical properties of the outer layer resulting from heating the protein or starch of the outer layer to 60°C or higher. Id. 116. Appellants also provide evidence in the form of a declaration that establishes that the outer layer of the feed made with heat-induced gel has desirable cohesiveness, breaking stress, and breaking strain, while the shell made according to the disclosure of Takahashi does not. Fukuda Deck 2-4. Appellants, thus, demonstrate that the claimed process imparts structural and functional differences to the product of clam 4 that distinguish it from the prior art. See Greenliant Sys., 692 F,3d at 1268; see also In re Gamero, 412 F.2d at 279. The preponderance of the evidence supports Appellants’ position that the Examiner misinterprets Cerestar, which we find does not disclose teaching an outer layer comprising a heat-induced gel. In addition, Appellants show that the process limitation imparts structure to the claimed outer layer comprising a heat-induced gel. The Examiner, therefore, does not make a case of prima facie obviousness of claim 4 over Takahashi in view of Cerestar, and we cannot sustain the Examiner’s rejection of claim 4. As all other pending claims depend from claim 4, we also cannot sustain the 6 Appeal 2017-002023 Application 13/260,117 Examiner’s rejections of these claims over Takahashi in view of Cerestar and additional references. DECISION For the above reasons, the Examiner’s rejections of claims 4—13 and 30-35 are reversed. REVERSED 7 Copy with citationCopy as parenthetical citation