Ex Parte Nace et al

Patent Trial and Appeal Board

Jan 30, 2018

12806317 (P.T.A.B. Jan. 30, 2018)

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.
12/806,317 08/10/2010 Gary L. Nace 3494-10519US 4569
137604 7590 01/30/2018
Magleby Cataxinos & Greenwood
170 S. Main Street, Suite 1100
Salt Lake City, UT 84101
EXAMINER
BADR, HAMID R
ART UNIT PAPER NUMBER
1791
MAIL DATE DELIVERY MODE
01/30/2018 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 GARY L. NACE, TERRY L. McANINCH,
VICTOR M. REUSCH, and ELIS M. OWENS
Appeal 2017-005403
Application 12/806,317
Technology Center 1700
Before TERRY J. OWENS, MICHAEL P. COLAIANNI,
and MICHAEL G. McMANUS, Administrative Patent Judges.
McMANUS, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 1—35, 38, and 39 of Application
12/806,317 under 35 U.S.C. § 103(a) as obvious. Final Act. (Dec. 24, 2014)
2—12. Appellants1 seek reversal of these rejections pursuant to 35 U.S.C.
§ 134(a). We have jurisdiction under 35 U.S.C. § 6.
For the reasons set forth below, we AFFIRM.
1 Birko Corporation is identified as the real party in interest. Appeal Br. 2.
Appeal 2017-005403
Application 12/806,317
BACKGROUND
The present application generally relates to a method for reducing the
incidence of Salmonella in harvested poultry comprising treating the poultry
with an effective antimicrobial solution comprising a blend of lactic and
citric acids in proportions containing a predominance of lactic acid.
Abstract.
Claim 1 is representative of the pending claims and is reproduced
below:
1. An antimicrobial solution for reducing the incidence of
Salmonella in non-comminuted meat, the antimicrobial solution
consisting essentially of an acid blend of lactic and citric acids
wherein there is a predominance of lactic acid with citric acid
being present so that there is a minimum ratio of 40:40 wt./wt.
lactic acid to citric acid;
wherein the acid blend is 1 to 2.5 wt. % of the
antimicrobial solution; and
wherein the pH of the antimicrobial solution is less
than 3.2.
Appeal Br. 24 (Claims App.).
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Application 12/806,317
REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 1—30, 38, and 39 are rejected under 35 U.S.C. § 103(a) as
obvious over the combination of Desmond2 and Smulders3. Final
Act. 2-9.
2. Claims 31—35 are rejected under 35 U.S.C. § 103(a) as obvious
over the combination of Desmond, Smulders, and Van Der Marel4.
Id. at 9—12.
DISCUSSION
Rejection 1. The Examiner rejected claims 1—30, 38, and 39 over the
combination of Desmond and Smulders. Id. at 2—9. In support of such
rejection, the Examiner determined that Desmond teaches the use of lactic
acid and citric acid to treat low value beef to improve the sensory
perceptions thereof. Id. at 3. The Examiner further determined that
Desmond teaches that lactic acid may be used at a weight percent of .45% up
to 1.4% and citric acid may be used at a concentration of 0.9%. Id. The
Examiner further determined that Desmond does not teach the use of lactic
acid and citric acid in combination nor that they may be used for the
2 Desmond, E.M., et al., Effect of Lactic and Citric Acid on Low-value Beef
used for Emulsion-type Meat Products, LWT Food Sci. and Tech. 34 (2001)
374—379.
3 Smulders, F.J.M., et al., Review: Lactic acid: considerations in favour of
its acceptance as a meat decontaminant, Int. J. of Food Tech. 21 (1986)
419-436.
4 Van Der Marel, G.M., et al., Effect of lactic acid treatment during
processing on the sensory quality and lactic acid content of fresh broiler
chickens, Int. J. Food Sci. and Technol. 24 (1989) 11—16.
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Application 12/806,317
decontamination of meat. Id. at 3—4. The Examiner determined, however,
that it is prima facie obvious to combine two compositions each of which is
taught by the prior art to be useful for the same purpose. Id. at 4.
The Examiner additionally found that Smulders teaches the use of
lactic acid at concentrations of 1 and 2% and at a pH of 2.4 to disinfect
chicken carcasses. Id. at 5. The Examiner further found that Smulders
discloses the use of lactic acid, ascorbic, and citric acids in aqueous
solutions for decontamination of beef, sheep, and poultry meats. Id.
The Examiner thus determined that the combination of Desmond and
Smulders teaches the use of lactic acid at 1 to 2% and citric acid at about
0.9% as an antimicrobial solution. Id. at 6—8.
Appellants argue that the Examiner has failed to establish a prima
facie case of obviousness and that, even if the claims are prima facie
obvious, such case is rebutted by Appellants’ showing of an unexpectedly
strong antimicrobial effect against Salmonella bacteria.
The Prima Facie Case
Appellants argue that a person of skill in the art would not have been
motivated to blend lactic acid with citric acid at the time of the invention.
Appeal Br. 8—11; Reply 2—5. Appellants assert that Desmond teaches that
lactic acid is superior to citric acid “in improving texture, flavour and
acceptability.” Appeal Br. 9. Appellants further assert that Desmond
teaches that a high concentration of acid is detrimental to flavor and
acceptability of meat therefore one of skill in the art would have been
motivated to use as little acid as possible. Id. Accordingly, Appellants
argue that one would have had no motivation to dilute the effect of lactic
acid with citric acid. Id.
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Application 12/806,317
Appellants argue that Smulders includes only a single mention of
citric acid and does not teach or suggest the effectiveness of citric acid for
antimicrobial action in meat treatment. Id. at 10.
Appellants additionally rely upon the declaration of named inventor
E. M. Owens5. Id. The Owens Declaration indicates that lactic acid was
known to be “a very functional antimicrobial” while citric acid was known
to be “a poor performing antimicrobial.” Appeal Br. 10 (quoting Owens
Declaration | 5). Appellants additionally cite to two journal articles which
report that lactic acid is more effective against certain microbes than citric
acid. Id. at 10—11.
The evidence of record indicates that both lactic acid and citric acid
were known to have antimicrobial effect. Smulders 431. Appellants cite to
evidence indicating that lactic acid was known to have greater antimicrobial
effect. Giving such evidence full effect, one of skill in the art may still be
motivated to combine lactic acid with an additional antimicrobial compound,
even if somewhat less effective. In similar cases, the Federal Circuit has
determined the combination of components known to be useful for the same
purpose to be obvious. See, e.g., Merck & Co. v. Biocraft Labs., Inc., 874
F. 2d 804, 808—09 (Fed. Cir. 1989) (finding, in regard to the combination of
two known diuretics, that “it is to be expected that their co-administration
would induce more sodium excretion than would either diuretic alone.”); see
also In re Crockett, 279 F.2d 274, 276 (1960) (the “joint use [of magnesium
oxide and calcium carbide] is not patentable” where the prior art teaches
“that both magnesium oxide and calcium carbide, individually, promote the
5 Declaration of Elis M. Owens, Ph.D. (July 25, 2014).
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Application 12/806,317
formation of a nodular structure in cast iron, and it would be natural to
suppose that, in combination, they would produce the same effect and would
supplement each other”). This is particularly so here where the record
indicates that excess lactic acid impairs the taste and acceptability of meats.
See, e.g., Smulders 419 (Summary); Desmond 375 (discussing Seuss and
Martin). Nor do Appellants show error in the Examiner’s findings regarding
the concentrations of the acids taught by the cited references.
Accordingly, Appellants have not shown error in the prima facie case
of obviousness.
Rebuttal of the Prima Facie Case
Appellants argue that even if a prima facie case of obviousness is
established, such case is rebutted by evidence of the surprising efficacy of
the claimed combination relative to lactic acid or citric acid alone. Appeal
Br. 11—14. Appellants first point to evidence tending to show that lactic acid
has greater efficacy against Salmonella than citric acid at a similar
concentration. Id. at 12 (citing Spec. 14 (Table IA)). Appellants next cite to
certain data tending to show that, at certain concentrations, a blend of lactic
acid and citric acid has greater efficacy against Salmonella than lactic acid
alone. Id. at 12—14.
In general, an applicant may overcome a prima facie case of
obviousness by establishing “that the [claimed] range is critical, generally
by showing that the claimed range achieves unexpected results relative to the
prior art range.” In re Geisler, 116 F.3d 1465, 1469-70 (Fed. Cir. 1997)
(alteration in original) (citation omitted). “Although it is well settled that
comparative test data showing an unexpected result will rebut a prima facie
case of obviousness, the comparative testing must be between the claimed
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invention and the closest prior art.” In re Fenn, 639 F.2d 762, 765 (CCPA
1981). Moreover, “[i]t is well settled that unexpected results must be
established by factual evidence. Mere argument or conclusory statements in
the specification does not suffice.” In re De Blauwe, 736 F.2d 699, 705
(Fed. Cir. 1984), quoted with approval in In re Soni, 54 F.3d 746, 750 (Fed.
Cir. 1995).
Evidence of unexpected results must be commensurate with the scope
of the rejected claims. See In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir.
2003) (“the applicant's showing must be commensurate in scope with the
claimed range”); In re Clemens, 622 F.2d 1029, 1035 (CCPA 1980) (“In
order to establish unexpected results for a claimed invention, objective
evidence of non-obviousness must be commensurate in scope with the
claims which the evidence is offered to support.”); In re Patel, 566 F. App'x
1005, 1011 (Fed. Cir. 2014), reh'g denied (Sept. 30, 2014).
Claim 1 requires “an acid blend of lactic and citric acids wherein there
is a predominance of lactic acid with citric acid being present so that there is
a minimum ratio of 40:40 wt./wt. lactic acid to citric acid.” Thus, the low
end of the claimed range of acids requires a 1:1 ratio (expressed as “40:40”
in the claim) of lactic acid to citric acid. Appellants do not, however, supply
any evidence that the 40:40 ratio is any more effective against Salmonella
than a simple lactic acid solution. In their brief, Appellants reproduce
Figures 5A and 5B. Appeal Br. 13. The data in these figures correspond to
Tables 5A and 5B of the Specification. Spec. 19-20. Neither Table 5 A nor
Table 5B supplies data for the 40:40 ratio of lactic acid to citric acid. Table
5C of the Specification shows such data; however, Table 5C indicates that a
40:40 ratio of lactic acid to citric acid is a less effective microbial than a
simple lactic acid solution (indicated as “80/0” in Table VC.) Accordingly,
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Application 12/806,317
Appellants have not shown that the claimed composition has greater efficacy
against Salmonella than lactic acid alone throughout the full range of the
claim. Thus, the prima facie case of obviousness of claim 1 is not rebutted.
Appellants additionally seek review of the rejection of certain claims
depending from claim 1 but do not separately argue such claims. See
Appeal Br. 15 (“claims 2-15 will not be separately argued, and will stand or
fall with claim 1”).
Claim 16 is a method claim which is substantively similar to claim 1.
Appellants present similar arguments regarding claim 16 as with regard to
claim 1. See Appeal Br. 15—16 (repeating certain arguments from pages 11
and 14). Appellants further rely on such arguments with regard to claims
17—35. Id. at 16—17 (“claims 17—35 will not be separately argued, and will
stand or fall with claim 16.”).
Claim 38 is to an antimicrobial solution similar to the solution of
claim 1. Appellants present similar arguments regarding claim 38 as with
regard to claim 1. Id. at 17—19. Appellants further rely on such arguments
with regard to claim 39. Id. at 19.
Thus, all of the remaining claims subject to Rejection 1 rely upon the
same arguments as put forth with regard to claim 1. As these arguments
have not been found to be persuasive of reversible error, such claims (claims
1—30, 38, and 39) are affirmed.
Rejection 2. The Examiner rejected claims 31—35 as obvious over
Desmond, Smulders, and Van Der Marel. Final Act. 9-12. As previously
noted, Appellants allege error in the rejection of claims 31—35 on the basis
of their arguments presented in regard to claim 16. Appeal Br. 16—17. As
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Application 12/806,317
these arguments have not been found to be persuasive of reversible error,
claims 31—35 are affirmed.
CONCLUSION
The rejection of claims 1—30, 38, and 39 over Desmond and Smulders
is affirmed. The rejection of claims 31—35 over Desmond, Smulders, and
Van Der Marel 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).
AFFIRMED
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