Ex Parte Goto et al

Patent Trial and Appeal Board

Nov 3, 2017

13260117 (P.T.A.B. Nov. 3, 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.
13/260,117 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.
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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.
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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
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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
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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
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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
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