Ex Parte Reber et al

Patent Trial and Appeal Board

Dec 15, 2016

12039634 (P.T.A.B. Dec. 15, 2016)

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.
12/039,634 02/28/2008 JUSTIN REBER 27051-8231USU1 7880
128128 7590 12/19/2016
Durham Jones & Pinegar, P.C.
Intellectual Property Law Group
3301 North Thanksgiving Way, Suite 400
Lehi, UT 84043
EXAMINER
SALVOZA, M FRANCO G
ART UNIT PAPER NUMBER
1648
NOTIFICATION DATE DELIVERY MODE
12/19/2016 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):
ipmail@djplaw.com
jbroadbent@djplaw.com
ckoy@djplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JUSTIN REBER and LEE E. JACKSON
Appeal 2015-004570
Application 12/039,634
Technology Center 1600
Before DONALD E. ADAMS, JEFFREY N. FREDMAN, and
JOHN E. SCHNEIDER, Administrative Patent Judges.
ADAMS, Administrative Patent Judge.
DECISION ON APPEAL
This appeal under 35 U.S.C. § 134(a) involves claims 1—22 (Final
Act. I).1 Examiner entered rejections under 35 U.S.C. § 103(a). We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify the real party in interest as “OmniLytics, Incorporated”
(App. Br. 2).
Appeal 2015-004570
Application 12/039,634
STATEMENT OF THE CASE
Appellants disclose “methods for sanitizing external layers of animals
and, more specifically, to the use of viruses, such as bacteriophage, to
control populations of microorganisms, such as bacteria, on external layers
of animals” (Spec. |2). Appellants’ independent claims 1 and 19 are
reproduced below:
1. A method for sanitizing animal products, comprising:
slaughtering an animal;
removing at least a portion of the coverings or at least a portion
of the external layer after slaughtering the animal; and
applying phage targeted for at least one microorganism to
coverings on an exterior of an external layer of a body of an
animal and to the external layer:
just prior to slaughtering the animal and
before removing at least the portion of the coverings or at
least the portion of the external layer; or
after slaughtering the animal and
before removing at least the portion of the coverings or at
least the portion of the external layer;
while removing at least the portion of the coverings or at
least the portion of the external layer; or
after removing at least the portion of the coverings or at least
the portion of the external layer.
(App. Br., Claims App. 1.)
19. A method for sanitizing animal products, comprising:
slaughtering an animal;
applying phage targeted for at least one microorganism to an
external layer of a body of an animal and to coverings on an
exterior surface of the external layer just prior to
slaughtering the animal or after slaughtering the animal;
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Application 12/039,634
removing at least a portion of the external layer from a
remainder of the body of the animal; and preserving at least part
of at least the portion of the external layer.
(App. Br., Claims App. 4.)
The claims stand rejected as follows:
Claims 1—17 and 19—22 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Sulakvelidze.2
Claim 18 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Sulakvelidze and Yoong.3
ISSUE
Does the preponderance of evidence relied upon by Examiner support
a conclusion of obviousness?
FACTUAL FINDINGS (FF)
FF 1. Sulakvelidze relates to “the field of bacteriophages. Specifically, it
is directed to a method and device for sanitation using a bacteriophage”
(Sulakvelidze 1: 27—29; see also Ans. 4).
FF 2. Sulakvelidze’s process “may be used in many industrial applications,
including the animal husbandry industry. This includes, but is not limited
to, the breeding, raising, storing, and slaughter of livestock or other animals”
(Sulakvelidze 24: 64—67).
FF 3. Examiner finds that Sulakvelidze discloses the “application of phage
to any patient at risk [of bacterial colonization] including [] farm animals,
including poultry (possessing feathers) and cattle (possessing hair)” (Ans. 5,
(citing Sulakvelidze 15: 57 and 19: 47)).
2 Sulakvelidze et al., US 6,699,701 Bl, issued Mar. 2, 2004.
3 Yoong et al., US 7,582,291 B2, issued Sept. 1, 2009.
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Application 12/039,634
FF 4. Sulakvelidze discloses that a “common source of Salmonella is the
skin of the animal itself, with the feather follicles serving as a sanctuary for
bacteria. In contrast to beef, chickens are slaughtered ‘skin on,’ so that
antemortem contamination of feathers becomes an important element in
determining whether Salmonella can be isolated from the carcass”
(Sulakvelidze 9: 3—8; see also Ans. 5).
FF 5. Sulakvelidze’s Figure 1 is reproduced below:
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Sulakvelidze’s “FIG. 1 is a schematic of a poultry processing scheme
according to one embodiment of [Sulakvelidze’s] invention” (Sulakvelidze
12: 23—24; see also Ans. 4). Sulakvelidze discloses that “FIG. 1[, provides,]
an example of how to use bacteriophage in a poultry processing plant. ... It
should be recognized that phages may be applied at any stage; the preferred
locations for the phage application are identified in [FIG. 1.]” (Sulakvelidze
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Appeal 2015-004570
Application 12/039,634
25: 1-5 ; see Ans. 4 and 5, (citing Sulakvelidze 25—26), (Sulakvelidze
“points to sanitation and [the] possibility of contamination at many steps,
including fertilization of eggs, before transferring to house or farm, after
hatching, in medium, onto carcasses, before processing, and other points at
which they can be exposed to salmonella.”)); see also Ans. 5 (citing
Sulakvelidze 22: 45), (Sulakvelidze discloses the “inclusion of phage in
support media further downstream with packaging.”); see also Ans. 7).
FF 6. Sulakvelidze discloses, with reference to Sulakvelidze’s FIG. 1, that:
During raising in the chicken house or farm, the birds may be
provided with phages in their drinking water, food, or both (C).
Once mature, the birds are transferred to the slaughter area,
where they are slaughtered, and then transferred to a washing
area, where they are processed and washed. Phages may be
sprayed onto the chicken carcasses after the chlorine wash in
chiller tanks, before post-chill processing (D). Salmonella
contamination at this point should be minimized, and
application of phages may provide a “final product clean-up.”
In addition, only a small amount of phage preparation will be
needed (approximately 5-10 ml per chicken) instead of several
hundred liters required to decontaminate a chicken house.
(Sulakvelidze 25: 38—50; see also Ans. 4—5.)
FF 7. Sulakvelidze discloses that “[t]he optimal numbers and timing of
applications of phage compositions remains to be determined and would be
predicted by the exact usage of such products” (Sulakvelidze 19: 27—30; see
also Ans. 7).
FF 8. Examiner finds that Sulakvelidze “does not explicitly teach applying
lysogenic phage” and relies on Yoong to disclose the “us[e] [of] lysogenic
phage lysins for reduction of bacterial populations” (Ans. 8, (citing Yoong,
Abstract, Figs. 4A-4B and col. 5)).
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Appeal 2015-004570
Application 12/039,634
ANALYSIS
The rejection over Sulakvelidze:
Based on Sulakvelidze, Examiner concludes that, at the time
Appellants’ invention was made, it would have been prima facie obvious “to
apply phage to coverings [] prior to and after slaughtering [and animal] in
order to minimize the likelihood of [microbial] contamination” (Ans. 8; see
also generally, id. at 6—8).
Claim T.
Appellants recognize that “Sulakvelidze discloses that phage may be
applied to the feathers of baby chicks” and that “phage may be applied ‘to
the environment of farm animals such as chickens or cattle.’” (App. Br. 6).
In this regard, Sulakvelidze discloses the application of phage to farm
animals and areas where farm animals are maintained and slaughtered (see
FF 1—6). Sulakvelidze discloses preferred locations for phage application,
and “recognize[s] that phages may be applied at any stage” in the raising,
slaughter, and packaging of processed farm animals (FF 5). Thus, while
Sulakvelidze does not expressly disclose the application of phage “to the
external layers or coverings (e.g., hair, feathers, etc.) of farm animals just
prior to slaughtering the farm animals or after farm animals have been
slaughtered, as required by[] independent claim 1,” Sulakvelidze makes
obvious the application to phage “at any stage” in the maintenance,
slaughter, processing, and packaging a farm animal, carcass, and related
coverings (see App. Br. 6—7; see also FF 1—6). In re Lamberti, 545 F.2d
747, 750 (CCPA 1976) (A reference disclosure is not limited only to its
preferred embodiments, but is available for all that it discloses and suggests
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Application 12/039,634
to one of ordinary skill in the art). Therefore, we are not persuaded by
Appellants’ contention to the contrary. For the same reasons we are not
persuaded by Appellants’ unsupported contentions that: “one of ordinary
skill in the art wouldn’t have predicted the usefulness of applying phage in
the manner recited by independent claim 1,” “[t]he teachings of Sulakvelidze
are limited to application of phage to new chicks and to carcasses from
which feathers have been removed, as opposed to the method[] of
independent claim[] 1,” “Sulakvelidze teaches away from the subject matter
recited by independent claim 1” (App. Br. 8—9; see also Reply Br. 2 (“the
teachings of Sulakvelidze are not specific enough to render each and every
use of bacteriophage (at least for purposes of disinfecting poultry, beef, pork
and other meats) obvious under 35 U.S.C. § 103”); Reply Br. 2—3). See KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (“The combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results.”
Sulakvelidze discloses that the amount of phage necessary for
difference applications, e.g., for application of a “chicken house” as opposed
to a chicken carcass, may vary (see FF 6). In this regard, Sulakvelidze
discloses that a person of ordinary skill in this art would recognize that the
amount of phage required for a particular application can be optimized
through routine experimentation (see FF 7). Therefore, we are not
persuaded by Appellants’ contention that:
it wouldn’t have been obvious to one of ordinary skill in the art
to apply [Sulakvelidze’s disclosure of applying phage to
external layers and coverings of farm animals,] in connection
with slaughtering the farm animals, as doing so would be
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Appeal 2015-004570
Application 12/039,634
contrary to Sulakvelidze’s teaching that phage should be used
sparingly during slaughter.
(App. Br. 7—8, (citing Sulakvelidze 25: 41—43 and HYFOMA);4 cf. FF 6
(“Phages may be sprayed onto the chicken carcasses after the chlorine wash
in chiller tanks, before post-chill processing. . . . [OJnly a small amount of
phage preparation will be needed (approximately 5-10 ml per chicken) [, at
this stage,] instead of several hundred liters required to decontaminate a
chicken house).”). In re Geisler, 116 F.3d 1465, 1470, (Fed. Cir. 1997),
quoting In reAller, 220 F.2d 454, 456 (CCPA 1955), (“[I]t is not inventive
to discover the optimum or workable ranges by routine experimentation.”).
Claim 7:
Appellants’ claim 7 depends from and further limits Appellants’ claim
1 to require that the phage is applied “to the external layer and the coverings
while removing at least the portion of the external layer and at least the
portion of the coverings from the remainder of the body of the animal”
(App. Br., Claims App. 2).
As discussed above, Sulakvelidze makes obvious the application to
phage “at any stage” in the maintenance, slaughter, processing, and
packaging a farm animal, carcass, and related coverings (FF 1—6). In re
Lamberti, 545 F.2d at 750. Therefore, we are not persuaded by Appellants’
contention that Sulakvelidze fails to make obvious a method, within the
scope of Appellants’ claimed invention, wherein “phage is applied while
4 HYFOMA, www.hyfoma.com/en/content/processing-technology/food-
grade-lubrication/in-food-preparation/poultry-
meat/flowsheet.html?flowsheet=lubricants-poultry-meat-production (see
App. Br. Evidence App.).
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Application 12/039,634
removing at least a portion of an external layer from a remainder of the
carcass of an animal that has been slaughtered” (App. Br. 9).
Claim 8:
Appellants’ claim 8 depends from and further limits Appellants’ claim
7 to require that the phage is applied “to exterior and interior surfaces of the
external layer” (App. Br., Claims App. 2). For the foregoing reasons, we are
not persuaded by Appellants’ contention that Sulakvelidze fails to make
obvious the subject matter of Appellants’ claim 8 (see App. Br. 10).
Claim 10:
Appellants’ claim 10 depends from and further limits Appellants’
claim 10 to require that the phage is applied “to the external layer and the
coverings after at least the portion of the external layer and at least the
portion of the coverings have been removed from the remainder of the body
of the animal” (App. Br., Claims App. 2). For the foregoing reasons, we are
not persuaded by Appellants’ contention that Sulakvelidze fails to make
obvious the subject matter of Appellants’ claim 10 (see App. Br. 10).
Claim 12:
Appellants’ claim 12 depends ultimately from and further limits
Appellants’ claim 1 to comprise “washing or sanitizing the external layer
and the coverings,” “wherein washing or sanitizing and applying are effected
concurrently” (App. Br., Claims App. 3). For the foregoing reasons, we are
not persuaded by Appellants’ contention that Sulakvelidze fails to make
obvious the subject matter of Appellants’ claim 12 (see App. Br. 10).
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Application 12/039,634
Claim 15:
Appellants’ claim 15 depends from and further limits Appellants’
claim 1 to require that the application of page “is effected as part of a
process for preserving at least part of at least the portion of the external
layer” (App. Br., Claims App. 3). For the foregoing reasons, we are not
persuaded by Appellants’ contention that Sulakvelidze fails to make obvious
the subject matter of Appellants’ claim 15 (see App. Br. 10; see generally FF
5 (Sulakvelidze discloses the application of phage to samples preserved “for
the final USD A microbial contamination test.”).
Claim 16:
Appellants’ claim 16 depends from and further limits Appellants’
claim 1 to comprise “applying phage selected to withstand at least one
condition of the process for preserving at least part of at least the portion of
the external layer” (App. Br., Claims App. 3). As discussed above,
Sulakvelidze makes obvious the application to phage “at any stage” in the
maintenance, slaughter, processing, and packaging a farm animal, carcass,
and related coverings, including the application of phage to samples
preserved “for the final USDA microbial contamination test” (see FF 1—6).
Appellants’ fail to provide persuasive evidence or argument to support a
conclusion that phage, within the scope of Sulakvelidze’s disclosed method
would not, necessarily, “withstand at least one condition of process for
preserving at least part of at least a portion of an external layer”, when
“applied to at least that portion of the external layer” (see App. Br. 10; cf. FF
1-6). See In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (“Where, as here,
the claimed and prior art products are identical or substantially identical, or
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Application 12/039,634
are produced by identical or substantially identical processes, the PTO can
require an applicant to prove that the prior art products do not necessarily or
inherently possess the characteristics of his claimed product.”).
Claim 20:
Appellants’ claim 20 depends from and further limits Appellants’
claim 19 to require that the application of phage “is effected just prior to
slaughtering the animal” (App. Br., Claims App. 4). Claim 19 is not
separately argued and falls with claim 1. Therefore, we are not persuaded by
Appellants’ contention that “Claim 20 is allowable, among other reasons, for
depending from independent claim 19, which is allowable” (App. Br. 11).
The rejection over the combination of Sulakvelidze and Yoong:
Based on the combination of Sulakvelidze and Yoong, Examiner
concludes that, at the time Appellants’ invention was made, it would have
been prima facie obvious “to use a lysogenic phage as taught by Yoong in
the method taught by Sulakvelide” (Ans. 8).
Appellants’ Brief does not address the rejection over the combination
of Sulakvelidze and Yoong, therefore, we are compelled to summarily
affirm this rejection.
CONCLUSION OF LAW
The preponderance of evidence relied upon by Examiner supports a
conclusion of obviousness.
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Application 12/039,634
The rejection of claims 1, 7, 8, 10, 12, 15, 16, and 20 under 35 U.S.C.
§ 103(a) as unpatentable over Sulakvelidze is affirmed. Claims 2—6, 9, 11,
13, 14, 17, 19, 21, and 22 are not separately argued and fall with claim 1.
The rejection of claim 18 under 35 U.S.C. § 103(a) as unpatentable
over the combination of Sulakvelidze and Yoong is affirmed.
TIME PERIOD FOR RESPONSE
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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