Ex Parte Graham et al

Patent Trial and Appeal Board

Nov 30, 2017

13033402 (P.T.A.B. Nov. 30, 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.
13/033,402 02/23/2011 Aaron R. Graham 204471-3422-01 8788
1131 7590 12/04/2017
MICHAEL BEST & FRIEDRICH LLP (Chi)
444 West Lake Street
Suite 3200
Chicago, IL 60606
EXAMINER
WONG, LESLIE A
ART UNIT PAPER NUMBER
1793
NOTIFICATION DATE DELIVERY MODE
12/04/2017 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):
chiipdocket @ michaelbest. com
llczech@michaelbest.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte AARON R. GRAHAM, MICHAEL T. BUNCZEK,
DONALD B. BERNACCHI, and LOUIS E. WINDECKER JR. 1
Appeal 2017-004346
Application 13/033,402
Technology Center 1700
Before BEVERLY A. FRANKLIN, JULIA HEANEY, and
JANE E. INGLESE, Administrative Patent Judges.
FRANKLIN, Administrative Patent Judge.
DECISION ON APPEAL
1 Appellants identify the real party in interest as Griffith Foods
International, Inc. Appeal Br. 3.
Appeal 2017-004346
Application 13/033402
STATEMENT OF THE CASE
Appellants request our review under 35 U.S.C. § 134(a) of the
Examiner’s decision rejecting claims 1, 7, 24, and 25, 28-31, and 33-36,
which constitute all the claims pending in this application. Claims 2-6, 8-
23, 26-27, 32, and 37-38 have been cancelled. We have jurisdiction over
the appeal under 35 U.S.C. § 6(b).
CLAIMED SUBJECT MATTER Claim 1 is illustrative of Appellants’ subject
matter on appeal and is set forth below:
1. A marinade for meat and seafood comprising acetate,
propionate, lactate, citrate, tartrate and succinate sodium or
potassium salts, polypeptides, peptides, phospholipids, and
propionibacterium,
said marinade having only acetate, succinate and
propionate organic sodium or potassium salts with these salts
present at levels of 12% or more by weight of the weight of
acetate, propionate, lactate, citrate, tartrate and succinate
sodium or potassium salts, polypeptides, peptides,
phospholipids, and propionibacterium present in the marinade.
Appeal Br. 11.
THE REFERENCES
The Examiner relies on the following prior art references as evidence
of unpatentability:
Meade et al. (“Meade”)
Eaton et al. (“Eaton”)
Boudreaux et al. (“Boudreaux”)
Hughes
US 2,465,905
US 5,137,736
US 5,173,319
US 7,582,444 B2
Mar. 29, 1949
Aug. 11, 1992
Dec. 22, 1992
Sept. 1,2009
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Application 13/033402
THE REJECTIONS
1. Claims 1, 7, 25, 28-30, 33, 34, and 36 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Boudreaux in view of Eaton as
evidenced by Hughes.
2. Claims 24, 31, and 35 stand rejected under 35 U.S.C. § 103(a) as
obvious over Boudreaux in view of Eaton as applied above, and further
as evidenced by Meade.
ANALYSIS
Rejections 1 and 2
The Examiner determines that it would have been obvious to use the
compositions of Eaton (propionic acid salt produced by natural means) in
the meat treatment process of Boudreaux, since doing so would produce a
method for the treatment of meat using propionic acid produced by a
natural process desired by consumers, and the composition of Boudreaux
would necessarily and inherently include a mixture of organic acids such
as butyric, citric, fumaric, lactic, propionic, succinic, acetic and tartaric
acids, or salts thereof (the Examiner relies upon Hughes as evidence in
support of this inherency position (Ans. 2-3)). Ans. 2-7.
Appellants dispute that Boudreaux as evidenced by Hughes would
necessarily and inherently include a mixture of organic acids such as
butyric, citric, fumaric, lactic, propionic, succinic, acetic and tartaric
acids, or salts thereof as recited in their claims. Appeal Br. 7. Appellants
argue that Hughes does not teach that apropionibacterium fermentation
inherently provides fermentation products that include the mixture and
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Appeal 2017-004346
Application 13/033402
concentration of organic acids (or salts thereof) required by the
pending claims.
Appellants also argue that, while Hughes lacks teaching as to
what apropionibacterium fermentation provides, Boudreaux expressly
identifies the fermentation products that may be produced by its
fermentation. Specifically, Appellants argue that Boudreaux teaches
that its fermentation reaction yields at most three organic acids,
namely propionic acid, acetic acid and lactic acid. See Boudreaux at
col. 2, 11. 31-36 where U.S. 4,497,833 (e.g., Table I), U.S. 4,743,453
(e.g., Tables I & II) and U.S. 4,676,987 (e.g., Tables I & II) are listed
to describe Boudreaux's fermentation/fermentation products.
Appellants also state that Boudreaux specifically indicates that the
fermentation of his Examples 7 and 8 follows the fermentation taught
by U.S. 4,743,453. Appellants state that the '453 patent teaches that its
fermentation typically produces at most propionic acid, acetic acid and
lactic acid (col. 4 to col. 5, Tables I & II of U.S. 4,743,453). In other
words, Boudreaux indicates what acids are produced in its
fermentation, and does not include most of the organic acids listed by
Hughes. Appellants emphasize that Boudreaux is completely silent on
the citric, succinic and tartaric acid (or salts thereof) required by
Appellants’ claims. Appeal Br. 7.
The Examiner responds and states that Boudreaux teaches meat
marinades from sugar/whey fermentations including Propionibacterium
and Pediococcus (Example 8 and claim 12). Ans. 8. The Examiner
states that this is the same as found in Appellants’ disclosure (]| [0015] of
the Specification). The Examiner reiterates that the claimed components
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Application 13/033402
are the result of a typical fermentation as taught by Hughes (‘444) (first
of column 1). Id.
In reply, Appellants argue that the Examiner’s assertion that
Hughes discloses typical fermentation products that would inherently
and necessarily be produced by any bacterial fermentation is in error
for the following reasons:
• Boudreaux discloses fermentation products which do
not include most of the organic acids recited by
Hughes.
• All fermentations do not include all of the
fermentation products taught by Hughes (e.g., the
Boudreaux fermentation).
• Hughes makes no connection between a
propionibacterium fermentation and what it could or
does yield.
Reply Br. 2.
We are persuaded by Appellants’ aforementioned arguments.
We agree with Appellants that the teachings of Hughes are not
universal for the reasons argued by Appellants in the record. We thus
are persuaded of error regarding the Examiner’s inherency theory and
reverse Rejection 1. We also reverse Rejection 2 because the
Examiner does not rely upon Meade to cure the aforementioned
deficiencies of Rejection 1.
DECISION
Each rejection is reversed.
REVERSED
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