Ex Parte Kweldam

Board of Patent Appeals and Interferences

Mar 28, 2011

10502108 (B.P.A.I. Mar. 28, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte ADRIAAN CORNELIS KWELDAM
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Appeal 2010-005191
Application 10/502,108
Technology Center 1700
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Before ADRIENE LEPIANE HANLON, LINDA M. GAUDETTE, and
KAREN M. HASTINGS, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL

Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1, 2, 4-14, and 21-27, which are the only claims pending
in this application. An oral hearing was held on March 23, 2011. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
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Application 10/502,108

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Representative claim 1 reads as follows:
1. Method for the preparation of a meat substitute
product which comprises protein, wherein:

a) a protein material, alginate and water are combined,

b) the composition from step a) is formed into a
homogeneous mixture,

c) the homogeneous mixture from b) is mixed with a
solution of a metal cation with a valency of at least 2, in order
to form a fibrous product,

d) the fibrous product is isolated,

wherein the protein material comprises a milk protein material,
and the homogeneous mixture of milk protein material,
alginate, and water is formed in step b) in the presence of an
amount of a calcium complex-forming agent.

Claims 1, 2, 4-14, and 23-27 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combined prior art of Shenouda (US 4,423,083,
issued December 27, 1983) and Monsanto (W0 96/13177, published May 9,
1996).
Claims 21 and 22 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combined prior art of Shenouda, Monsanto, and Lusas
(US 5,300,312, issued April 5, 1994).
OPINION
The Examiner bears the initial burden of presenting a prima facie case
of obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
“[R]ejections on obviousness grounds cannot be sustained by mere
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conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) quoted with
approval in KSR Int'l. Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
The fact finder must be aware “of the distortion caused by hindsight
bias and must be cautious of arguments reliant upon ex post reasoning.”
KSR, 550 U.S. at 421(citing Graham v. John Deere Co., 383 U.S. 1, 36
(1966) (warning against a “temptation to read into the prior art the teachings
of the invention in issue”)).
Applying the preceding legal principles with respect to obviousness to
the factual findings in this record, we determine that the Examiner has not
properly identified factual findings and reasoning for establishing a prima
facie case of obviousness based on the applied prior art for the reasons
explained by Appellant in the briefs (see generally App. Br.; Reply Br.).
Specifically, we agree with Appellant that, contrary to the Examiner’s
position (Ans. 11), the broadest reasonable interpretation of claim 1 does
indeed require that the fibrous product is formed when the homogenous
mixture, including the calcium complex-forming agent, is mixed with the
metal cation solution (Reply Br. 3; see also App. Br. 10; see also e.g., Spec.
12:33-35 (“The solution used to form the fibres . . . is a solution of a metal
cation with a valency of at least 2”); Spec. 13:13-15 (“The salt solution for
the precipitation of the fibres . ..”)). Accordingly, the Examiner’s position is
premised on an incorrect interpretation of the claim language. We also agree
with Appellant that the deficiency of the Examiner’s obviousness conclusion
is that the Examiner has not articulated any persuasive reason why the
artisan would have modified the process of Shenouda to use the phosphate
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sequestrant of Monsanto before the metal cation gelling step of Shenouda,
nor how the proposed combination results in the claimed steps (generally
App. Br.; Reply Br.; Ans.).1
Under these circumstances, it is apparent that the only teaching or
suggestion for combining the applied references in such a manner as to
achieve the here claimed invention derives from the Appellant’s own
Specification rather than the applied prior art. Therefore, we conclude that
the Examiner’s rejection is improperly based upon improper hindsight
reasoning. See W.L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540,
1553, (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984) (“To imbue one of
ordinary skill in the art with knowledge of the invention in suit, when no
prior art reference or references of record convey or suggest that knowledge,
is to fall victim to the insidious effect of a hindsight syndrome wherein that
which only the inventor taught is used against its teacher.”).
The Examiner has failed to demonstrate that the additional reference
applied to claims 21 and 22 corrects the deficiency in the rejection of claim
1.
On this record, we cannot say the Examiner has established a prima
facie case of obviousness within the meaning of 35 U.S.C. § 103(a) for the
claims on appeal. For these reasons and those set out in the Briefs, we
reverse the Examiner’s § 103 rejections on appeal.

1 Claims 23-25 are not drawn to the process of making a meat substitute,
rather, they are drawn to the product of a meat substitute. However, the
Examiner on this record has failed to provide any separate analysis of these
product-by-process claims in relation to the applied prior art (Ans.
generally). Because the Examiner has not set forth the necessary fact
finding and reasoning to establish a prima facie case of obviousness as to the
product-by-process claims, the rejection of these claims cannot be sustained.
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CONCLUSION
In summary, the rejections before us on appeal are reversed.

REVERSED

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