Ex Parte Roth

Board of Patent Appeals and Interferences

Apr 28, 2008

10951076 (B.P.A.I. Apr. 28, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ELDON ROTH

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Appeal 2008-1998
Application 10/951,076
Technology Center 1700
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Decided: April 28, 2008
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Before BRADLEY R. GARRIS, KAREN M. HASTINGS, and
MICHAEL P. COLAIANNI, 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 1-4, 6-10, 12, and 14-22. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

Appeal 2008-1998
Application 10/951,076

BACKGROUND
The invention relates to a method of enhancing the pH of meat
products by injecting pH modifying material into the interior of the meat
product (Spec. 1:18 to 2:2). Claim 1 is illustrative:
1. A method including:

(a) forcing an oxygen enhancing material into the
interior of a meat product through an injection
conduit positioned within the meat product; and
(b) forcing an ammonia-based pH modifying material
into the interior of the meat product through the
injection conduit or through an additional injection
conduit.

The Examiner relies upon the following prior art references in
the rejection of the appealed claims:
Townsend 4,220,669 Sep. 2, 1980
Langen 5,012,728 May 7, 1991
Roth1 5,871,795 Feb. 16, 1999

The Examiner rejected claims 1-4, 6-10, 12, and 14-22 under 35
U.S.C. § 103(a) as being unpatentable over Roth in view of Townsend or
Langen.
Appellant does not separately argue with any reasonable specificity
any of the individual dependent claims (App. Br. 4-12; Reply Br. 2-6).
Therefore, we select independent claim 1 to decide the issues on appeal.

1 Roth is also the inventor of the instant application.
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Application 10/951,076

ISSUES ON APPEAL
The issues on appeal arising from the contentions of Appellant and the
Examiner are whether the Appellant has shown that the Examiner reversibly
erred in rejecting the claims because:
(a) there is no apparent reason in the prior art to combine the
references as proposed by the Examiner; and
(b) the objective evidence indicates that the claimed invention would
not have been obvious.
PRINCIPLES OF LAW
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727,
1734 (2007). The legal question of obviousness is resolved on the basis of
underlying factual determinations including (1) the scope and content of the
prior art, (2) any differences between the claimed subject matter and the
prior art, (3) the level of skill in the art, and (4) secondary considerations, if
any. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See also KSR,
127 S. Ct. at 1734.
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR, 127 S. Ct. at 1739. The question to be asked is “whether the
improvement is more than the predictable use of prior art elements according
to their established functions.” KSR, 127 S. Ct. at 1740.
KSR states:
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Application 10/951,076

Often, it will be necessary for a court to look to interrelated
teachings of multiple patents; the effects of demands known to
the design community or present in the marketplace; and the
background knowledge possessed by a person having ordinary
skill in the art, all in order to determine whether there was an
apparent reason to combine the known elements in the fashion
claimed by the patent at issue.
KSR, 127 S. Ct. at 1740-41.
The Federal Circuit recently recognized that “[a]n obviousness
determination is not the result of a rigid formula disassociated from the
consideration of the facts of a case. Indeed, the common sense of those
skilled in the art demonstrates why some combinations would have been
obvious where others would not.” Leapfrog Ent., Inc. v. Fisher-Price, Inc.,
485 F.3d 1157, 1161 (Fed. Cir. 2007).

OPINION
We agree with the Examiner’s findings of facts and legal conclusions
of obviousness as set out in the Answer. We add the following primarily for
emphasis.
Roth describes treating the surfaces of meat products with a treatment
material of ammonia gas mixed with oxygen to increase the pH of the meat
and to reduce bacterial activity (Abstract; col. 5, ll. 45-50). The increased
pH also helps maintain the quality of the meat during storage (Roth,
Abstract). This treatment has been shown to improve the color of the meat
product substantially, both at the time of treatment and during storage (Roth,
col. 3, ll. 54-65). The pH increasing gas need not be an actual gas, it may be
a liquid (see e.g., Roth, col. 3, ll. 33-35).
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Application 10/951,076

Each of Townsend and Langen describe use of injection needles to
add treatment materials to the interior of a meat product (Townsend,
Abstract; Langen, Abstract).
We agree with the Examiner that a person having ordinary skill in the
art would have found it obvious to add the treatment materials of Roth via
the use of injection needles into the meat, in addition to Roth’s surface
treatment, in order to reduce bacterial activity therein, and thus arrive at
Appellant’s claimed method (Ans. 3-4).
Appellant contends that there is no apparent reason in the prior art to
combine Roth with Townsend or Langen as proposed by the Examiner (App.
Br. 4; Reply Br. 2-5). In particular, Appellant contends that Roth does not
disclose applying the pH increasing gas in any way other than to the surface
of the meat product. Appellant contends that the problems addressed in Roth
(to reduce microbe content and retard microbe growth) and the improvement
in color of the meat product all relate to the surface of a meat product, and
thus, there was no reason to apply the pH increasing gas to any part of a
meat product other than the surface. Appellant further contends that Roth
teaches limiting the contact time between the meat and treatment material,
and therefore it would have been inappropriate to inject the pH increasing
gas into the interior of a meat product. We do not find these arguments
persuasive of error in the Examiner’s rejection for the following reasons.
First, we note that Roth provides the following explicit definition of
“surface”:
As used in this disclosure and the following claims, the
"surface" of the meat product means generally any surface that
may be exposed to the pH increasing gas. For example, the
surface of ground meat may include the entire surface of each
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Application 10/951,076

piece of ground meat and not just the surface of the aggregate
made up of individual ground pieces.

(Roth, col. 2, ll. 16-22; emphasis provided).

In accordance with this explicit definition, we therefore find that
“surfaces” of a ground meat product would be located in the interior of a
ground meat product.
Second, Roth further describes that it is desirable for “the pH
increasing gas to be absorbed into the meat product and affect the desired
increase in pH.” (col. 2, ll. 54-57; emphasis provided). We determine that
one of ordinary skill would have realized that one way to ensure the pH
increasing material of Roth is absorbed into the meat product would be to
deliver the same into the interior of the meat product.
We further find that Roth describes at least two alternative methods
for exposing the meat to the pH increasing treatment material. One is a
continuous processing method using a compressor, with injection ports 70,
72 introducing the pH increasing treatment material to ground meat as it
travels through the inlet compressor valve; the other is a batch process using
a pressurized vessel (see, e.g., Fig. 2, 3; col. 3, ll. 4-18; col. 7, ll. 15-30; col.
8, l. 60 to col. 9, l. 8). Roth describes that in the continuous processing
method, the meat product may be held under the operating pressure for a
“relatively long operating period” (col. 6, ll. 47-50).
The Supreme Court noted in KSR that although the teaching,
suggestion, motivation test “captured a helpful insight,” an obviousness
analysis “need not seek out precise teachings directed to the specific subject
matter of the challenged claim, for a court can take account of the inferences
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Application 10/951,076

and creative steps that a person of ordinary skill in the art would employ.”
KSR, 127 S. Ct. at 1741. The knowledge that injecting treatment fluids into
meat products was a desirable way to expose interior surfaces of a meat
product to the fluid would have been within the skill in the art, as evidenced
by Townsend or Langen. Furthermore, one of ordinary skill in the art is also
a person of ordinary creativity, not an automaton. KSR, 127 S. Ct. at 1742.
Therefore, it would have been prima facie obvious at the time the
invention was made to have used the prior art injection needles to reach the
interior surfaces of the ground meat product of Roth. This would
predictably increase the absorption of the pH increasing gas into the meat
product, a result that Roth taught to be desirable. Further, this appears to be
no more than the predictable use of one known prior art element (i.e.,
injection needles) for another (e.g., the injection ports 70, 72 of the
compressor of Roth) in order to treat the “surfaces” of a ground meat
product. See KSR, 127 S. Ct. at 1739-40 (The question to be asked is
“whether the improvement is more than the predictable use of prior art
elements according to their established functions.”).
We again note, in accordance with Roth’s explicit definition of
“surface”, that many of those “surfaces” would be located within the interior
of an aggregate of ground meat. We determine that use of injection needles
as taught by Townsend or Langen (e.g., in the batch pressurized system of
Roth), versus Roth’s injection ports in the continuous compressor system,
would have been a predictable known alternative device to one of ordinary
skill in the art. The “improvement” herein appears to be no more than the
predictable use of a known injection method (e.g., the injection needles of
Townsend or Langen) for that of a known injection with compression
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Application 10/951,076

method (Roth), for the predictable result of improved absorption of the
treatment fluid into the meat product (e.g., when using the batch process
using a pressure vessel as taught in Roth on a ground meat product). Indeed,
Appellant’s Specification describes that the injection needles may be used in
a pressurized chamber with the meat products being massaged to help
distribute the pH modifying materials (Spec. 10:7-15).
Thus, in view of the reference evidence, we determine that modifying
the process of Roth to include injecting the pH modifying material (that is,
the pH increasing gas or liquid mixed with oxygen) into the interior of a
meat product through an injection conduit positioned within the meat
product as claimed would have been within the ordinary level of skill in the
art.
Appellant contends that objective evidence available in this case
strongly supports the conclusion that it would not have been obvious to
modify the surface treatments described in Roth. According to Appellant,
this objective evidence is the coexistence for many years of the knowledge
that meat surfaces treatments with ammonia, with the knowledge of meat
injection treatments, for over forty years, yet there is no evidence of anyone
combining these two processes until the present application and its parent
application (App. Br. 11-12; Reply Br. 5-6). Assuming arguendo that what
Appellant alleges is true, we do not agree that this establishes objective
evidence of nonobviousness.
It is well established that the mere age of references is not persuasive
of the unobviousness of the combination of their teachings, absent evidence
that, notwithstanding knowledge of these teachings, the art tried and failed to
solve the problem. See, In re Wright, 569 F.2d 1124, 1127 (CCPA 1977).
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Application 10/951,076

Establishing such long-felt need requires objective evidence that an art
recognized problem existed in the art for a long period of time without
solution. Appellant has proffered no such objective evidence here.
Furthermore, the references Appellant discusses as the “objective
evidence” of nonobviousness2 are much older than those relied upon in the
rejection of the claims. For example, Roth was published in 1999, and
recognizes the problem of microbe growth in meat. As discussed previously,
Roth solves that problem by using a pressurized surface treatment of the
meat with ammonia such that the gas is absorbed into the meat product.
Thus, there is no objective evidence that an art recognized problem existed
in the art for a long period of time without a solution. For at least these
reasons, the alleged objective evidence of nonobviousness is not persuasive.
We have considered Appellant’s other arguments in the Appeal Brief
and Reply Brief filed October 29, 2007, but do not find any of them
persuasive.
For the foregoing reasons and those stated in the Answer, we agree
with the Examiner’s findings and conclusions in support of obviousness for
claim 1 based on the combined teachings of Roth with Townsend or Langen.

CONCLUSION
Accordingly, based on our consideration of the totality of the record
before us, we have weighed the evidence of obviousness found in the
combined teachings the applied references, with Appellant’s countervailing
evidence and arguments for nonobviousness and conclude that the claimed

2 Appellant discusses Albrecht, US 1,192,596 (patented in 1916), and Hines,
US 3,023,109 (patented in 1962) (see App. Br. 11-12).
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Application 10/951,076

invention encompassed by appealed claims 1-4, 6-10, 12, and 14-22 would
have been obvious as a matter of law under 35 U.S.C. § 103(a).
The Primary Examiner’s decision is affirmed.
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

tc

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