Ex Parte Harvey et al

Patent Trial and Appeal Board

Mar 30, 2015

11348898 (P.T.A.B. Mar. 30, 2015)

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.
11/348,898 02/06/2006 Michael S. Harvey 8568/13290 8056
7590 03/30/2015
Audrey A. Millemann
Weintraub Genshlea Chediak
11th Floor
400 Capitol Mall
Sacramento, CA 95814
EXAMINER
GEORGE, PATRICIA ANN
ART UNIT PAPER NUMBER
1793
MAIL DATE DELIVERY MODE
03/30/2015 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MICHAEL S. HARVEY and JONATHAN N. HOWARTH
____________

Appeal 2013-002697
Application 11/348,898
Technology Center 1700
____________

Before CHUNG K. PAK, CHARLES F. WARREN,
and JEFFREY T. SMITH, Administrative Patent Judges.

Opinion for the Board by SMITH, Administrative Patent Judge.

Opinion dissenting by PAK, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 2, 4, and 5. We have jurisdiction under 35 U.S.C. § 6.
The Examiner maintains the following § 103 rejections:
Claims 1 and 2 are rejected under 35 U.S.C. § 103(a) over Oakes (US
5,200,189, issued Apr. 6, 1993) in view of Shin, J.H., Application of
antimicrobial ice for reduction of foodborne pathogens (Escherichia coli
O157:H7, Salmonella Typhimurium, Listeria monocytogenes) on the surface
of fish, Journal of Applied Microbiology, Volume 97, Issue 5, pp. 916–922
(2004), and Cosentino (US 5,508,046, issued Apr. 16, 1996).
Appeal 2013-002697
Application 11/348,898

2

Claims 4 and 5 are rejected under 35 U.S.C. § 103(a) over Oakes in
view of Shin, Cosentino, and Roberts (US 2,949,019, issued Aug. 16, 1960).
A complete statement of the appealed rejection appears in the Final
Office Action mailed July 19, 2011.
Appellants’ invention relates to compositions and methods to prevent
spoilage and microbial contamination of perishable foods. (Spec. 1). Claim
1 is representative of the subject matter on appeal and is reproduced below:
1. A frozen antimicrobial composition for use in reducing
microbial contamination and spoilage of a perishable food
product, comprising a peroxycarboxylic acid, hydrogen
peroxide, and water, wherein said composition contains about 2
to about 200 ppm of the peroxycarboxylic acid and about 10 to
about 1000 ppm of the hydrogen peroxide.

After review of the arguments presented by Appellants in the Brief
and the responses presented by the Examiner in the Final Office Action and
the Answer, we affirm the appealed rejections. We add the following.
1

Appellants argue Oakes teaches away from the claimed invention
because Oakes’ composition comprising peroxycarboxylic acid, hydrogen
peroxide, and water is intended to be a solution to be used for cleaning
equipment and Oakes provides no advantage or reason to freeze the
composition. (Br. 11). Appellants also rely on the Declaration of Jonathan

1
In addressing the rejections, Appellants’ arguments for patentability are
principally directed to independent claim 1. Br. 9–16. Appellants have not
presented substantive arguments directed to the remaining claims. Id. We
select independent claim 1 as representative and will limit our discussion to
this claim.
Appeal 2013-002697
Application 11/348,898

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N. Howarth
2
of record to support their arguments for patentability of the
claimed subject matter. (Br. 10–11).
Oakes describes compositions containing biocidally active
(antimicrobial) components that are used to sterilize surfaces intended to
contact food products. Oakes teaches the antimicrobial composition is
capable of being diluted with water to form sanitizing solutions. (Oakes,
col. 2, ll. 33–37). Oakes teaches aqueous compositions comprising
peroxycarboxylic acid and hydrogen peroxide as biocidally active
components. Oakes discloses the antimicrobial components are used in
amounts that are suitable for surfaces in contact with food products. (Oakes,
col. 1, ll. 43–53).
Shin teaches it was known to form frozen compositions (ice)
containing an antimicrobial component (chlorine dioxide) to reduce
pathogens on the surface of fish. (Shin, Abstract).
The problem of bacterial spoilage of perishable food products caused
by a variety of microbes was recognized by persons of ordinary skill in the
art at the time of the invention. (Shin; Spec. 1). According to the
Specification, “[c]hemical intervention measures and low temperature
processing are also routinely practiced in the meat and poultry industries in
an attempt to control the growth of pathogenic or decay-causing
microorganisms.” (Spec. 2). Concerns for controlling the bacterial spoilage
of perishable food products include human health and financial
repercussions. (Spec. 3). An ice containing biocidally active components
has been commonly or conventionally used to prevent spoilage and

2
Filed on March 10, 2010.
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4

pathogenic microorganism growth on food products. (Spec. 4). The
specification specifically states:
Several attempts have been made to delay the onset of
the naturally occurring decomposition processes that occur in
perishable foods that are commonly packed on ice. Most of
these attempts include incorporating a biocidally active
composition or additive into water used to make ice. This ice is
sometimes referred to as a frozen biocidally-active composition.
During storage and transportation, as the ice melts, the biocide
is released to provide efficacy against spoilage and pathogenic
microorganisms still remaining on the food.

(Spec. 4).
The use of water and ice compositions containing chlorine dioxide (a
biocidally active component) in contact with food products has been
restricted by the FDA due to toxicological concerns. (Spec. 5). Other failed
techniques to prevent spoilage include the incorporation of silver-
impregnation zeolites as a biocidally active component in ice compositions.
(Spec. 6). In other words, Appellants acknowledge
3
and Shin teaches that
the use of biocidally active containing compositions to reduce and prevent
spoilage and pathogenic microorganisms growth on food was known to
those of ordinary skill in the art. These biocidally active compositions are
composed of biocidally active containing components ingredients which are

3
It is axiomatic that admitted prior art in an applicants’ specification may
be used in determining the patentability of a claimed invention. (In re
Nomiya, 509 F.2d 566, 570–71 (CCPA 1975)); and that consideration of the
prior art cited by the Examiner may include consideration of the prior art
found in applicants’ specification. (In re Davis, 305 F.2d 501, 503 (CCPA
1962); cf., In re Hedges, 783 F.2d 1038, 1039–40 (Fed. Cir. 1986)).
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known to be assessed for their acceptable for the use on foods.
4
Thus, we
determine that one of ordinary skill in the art is imputed with knowledge
regarding the suitability of forming compositions containing biocidally
active components to prevent spoilage and pathogenic microorganisms
growth on food which are not harmful to humans.
In determining obviousness under 35 U.S.C. § 103, the relevant
inquiry is “whether the person of ordinary skill in the art, possessed with the
understandings and knowledge reflected in the prior art, and motivated by
the general problem facing the inventor, would have been led to make the
combination recited in the claims.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006). A person of ordinary skill in the art concerned with the toxicological
contamination of food products would have sufficient skilled to determine
suitable antimicrobial components for use in frozen biocidally active
compositions. Oakes describes known antimicrobial components that are
suitable for use in aqueous solutions. A person of ordinary skill in the art
would have reasonably expected that these antimicrobial components when
contained in a frozen composition would function as the composition melts.
We have considered the Declaration of the inventor, but do not find it
persuasive of establishing patentability of the appealed subject matter.
Although factual evidence is preferable to opinion testimony, such testimony
is entitled to consideration and some weight so long as the opinion is not on
the ultimate legal conclusion at issue. While an opinion as to a legal
conclusion is not entitled to any weight, the underlying basis for the opinion
may be persuasive. In re Chilowsky, 306 F.2d 908, 916 (CCPA 1962)

4
See the above discussed Description of the Related Art section of
the Specification.
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(expert opinion that an application meets the requirements of 35 U.S.C.
§ 112 is not entitled to any weight; however, facts supporting a basis for
deciding that the specification complies with 35 U.S.C. § 112 are entitled to
some weight); In re Lindell, 385 F.2d 453, 456 (CCPA 1967). On this
record, Declarant has not directed us to evidence that establishes a person of
ordinary skill in the art would not have recognized the suitability of
incorporating antimicrobial components in frozen compositions.
Appellants, in the Briefs, have not directed us to evidence of
unexpected results in rebuttal to the appealed rejection.
Accordingly, we affirm the Examiner’s obviousness rejection of
claims 1, 2, 4, and 5 for the reasons presented by the Examiner and given
above.

ORDER
The Examiner’s obviousness rejection is AFFIRMED.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1).

AFFIRMED

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MICHAEL S. HARVEY and JONATHAN N. HOWARTH
____________

Appeal 2013-002697
Application 11/348,898
Technology Center 1700
____________

Pak, Administrative Patent Judge, Dissenting

Because the Examiner has not demonstrated that one of ordinary skill
in the art would have been led to freeze Oak’s sanitizing solutions
comprising peroxycarboxylic acid, hydrogen peroxide, and water to form a
frozen composition containing the same, I dissent from the affirmance of the
Examiner’s obviousness rejections set forth in the Answer.
As is apparent from the majority’s discussion supra, the Examiner has
relied upon known compositions containing an antimicrobial component
(chlorine dioxide) used in the form of an ice (frozen form), as taught by
Shin, to reduce pathogens on the surface of fish as a reason to freeze Oak’s
sanitizing solutions in the form of an ice. However, the Examiner has not
shown that Oak’s sanitizing solutions are not toxic and are suitable for food.
Nor has the Examiner shown that there is any other reason for freezing
Oak’s sanitizing solutions in the form of an ice.
Appeal 2013-002697
Application 11/348,898

2

The majority also relies on information in the Specification as
admitted prior art in affirming the Examiner’s obviousness rejections set
forth in the Answer. According to the majority, biocidally active
compositions composed of biocidally active components, inclusive of Oak’s
sanitizing solutions containing biocidally active components, were known to
be assessed for their acceptability for the use on foods, thus imparting some
reason or suggestion to form Oak’s sanitizing solutions in the form of an ice
upon determining their acceptability for use in the food through routine
experimentation. However, Appellants have not unequivocally or clearly
stated in the Specification that such information was known in the art despite
the fact that Appellants have the duty to disclose the prior art status of such
material information if such information is, in fact, prior art.
Accordingly, based on the reasons set forth in the Appeal Brief and
above, I would reverse the Examiner’s decision rejecting the claims on
appeal under 35 U.S.C. §103(a).

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