Ex Parte Roth

Board of Patent Appeals and Interferences

Jul 25, 2005

09833866 (B.P.A.I. Jul. 25, 2005)

1
The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte ELDON ROTH
_____________
Appeal No. 2005-1672
Application No. 09/833,866
______________
ON BRIEF
_______________
Before PAK, WALTZ and JEFFREY T. SMITH, Administrative Patent
Judges.
PAK, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from
the examiner’s refusal to allow claims 1, 3 through 20 and 22.
Claims 21, 24 and 25, the only other claims pending in the above-
identified application, were allowed by the examiner.
APPEALED SUBJECT MATTER
The subject matter on appeal is directed to ammonia-treated
meat products and a process for treating meat-products with
Appeal No. 2005-1672
Application No. 09/833,866
1Pursuant to 37 CFR § 41.37(c)(1)(vii)(2004), we limit our
discussion to representative claims 1, 12, 13, 14 and 22. The
appellants have not separately argued the limitations of the other
remaining claims on appeal. See the Brief and the Reply Brief in
their entirety.
2
ammonia. See the specification, page 1. By modifying the pH of
the meat products with ammonia, the live microbe content in the
meat products are said to be significantly reduced. Id. Further
details of the appealed subject matter are recited in
representative claims 1, 12, 13, 14 and 221 which are reproduced
below:
1. A method for producing a pH enhanced comminuted
meat composition, the method including the steps
of:
(a) increasing the moisture content of a
comminuted meat composition and
distributing the moisture throughout the
comminuted meat composition to produce a
moisture enhanced meat composition, the
comminuted meat made up at least
partially of small comminuted meat
pieces; and
(b) producing an ammonium hydroxide solution
distributed throughout the comminuted
meat composition.
12. A method of producing a pH enhanced comminuted
meat composition, the method including the steps
of:
Appeal No. 2005-1672
Application No. 09/833,866
3
(a) adding water to a mass of comminuted
meat, the comminuted meat being made up
at least partially of small comminuted
meat pieces;

(b) placing ammonia gas in contact with the
meat composition; and

(c) applying mechanical action to the meat
composition after placing ammonia gas in
contact with the meat composition and
after adding water to the meat
composition to produce a moisture
enhanced meat composition having the
added water and an ammonium hydroxide
solution distributed throughout the
moisture enhanced composition.
13. A method of producing a pH enhanced comminuted
meat composition, the method including the steps
of:
(a) adding ammonium hydroxide solution to a
mass of comminuted meat, the comminuted
meat being made up at least partially of
small comminuted meat pieces; and
(b) applying mechanical action to the
comminuted meat after adding the
ammonium hydroxide solution to
distribute the ammonium hydroxide
solution throughout the mass of
comminuted meat.
14. A meat product produced by:
(a) increasing the moisture content of a
mass of comminuted meat composition to
produce a moisture enhanced meat
composition, the comminuted meat being
made up at least partially of small
comminuted meat pieces and the moisture
enhanced meat composition having the
Appeal No. 2005-1672
Application No. 09/833,866
4
increased moisture content being
distributed throughout the composition;
(b) producing an ammonium hydroxide solution
in the moisture enhanced comminuted meat
composition;
(c) applying mechanical action to the
moisture enhanced meat composition after
producing the ammonium hydroxide
solution therein; and then
(d) setting the moisture enhanced meat
composition in a desired form by
applying heat, or pressure, or both heat
and pressure to the moisture enhanced
meat composition.

22. A method for producing a pH enhanced comminuted
meat composition, the method including the steps
of:
(a) adding ammonia to a comminuted meat to
produce an ammoniated meat composition,
the comminuted meat made up at least
partially of small comminuted meat
pieces;
(b) adding water to the ammoniated meat
composition; and
(c) applying mechanical action to the
comminuted meat composition after adding
ammonia thereto and after adding water
thereto to distribute a resulting
ammonium hydroxide solution throughout
the comminuted meat.
Appeal No. 2005-1672
Application No. 09/833,866
2 See the Brief, page 3 and the Answer, pages 3-4.
5
THE PRIOR ART
The prior art references relied upon by the examiner in
support the Section 102 and 103 rejections before us are:
Roth 5,871,795 Feb. 16, 1999
Nakayama et al. (Nakayama) 64-39965 Feb. 10, 1989
(Published Japanese Kokai Patent Application)

THE REJECTIONS
The appealed claims stand rejected as follows2:
1) Claims 14 through 20 under 35 U.S.C. § 102(a) as anticipated
by, or in the alternative under 35 U.S.C. § 103(a) as
unpatentable over, the disclosure of Roth; and
2) Claims 1, 3 through 13 and 22 under 35 U.S.C. § 103(a) as
unpatentable over the combined disclosures of Roth and
Nakayama.
OPINION
We have carefully reviewed the claims, specification and
prior art, including all of the arguments advanced by both the
examiner and the appellant in support of their respective
positions. This review has led us to conclude that the
examiner’s Sections 102(a) and 103(a) rejections are well
Appeal No. 2005-1672
Application No. 09/833,866
6
founded. Accordingly, we affirm the examiner’s rejections for
essentially the reasons set forth in the Answer and below.
We turn first to the examiner’s rejection of claims
14 through 20 under 35 U.S.C. § 102(a) as anticipated by, or in
the alternative under 35 U.S.C. § 103(a) as unpatentable over,
the disclosure of Roth. We observe that representative claim 14
is written in a product-by-process format. Thus, it is a
product, not a method of its production, which must be analyzed
for patentability. In re Thorpe, 777 F.2d 695, 697, 227 USPQ
964, 966 (Fed. Cir. 1985)(“The patentability of a product does
not depend on its method of production . . . . If the product in
a product-by-process claim is the same as or obvious from a
product of the prior art, the claim is unpatentable even though
the prior art product was made by a different process”).
Here, Roth, like the appellant, discloses manipulating the
pH of a meat product (e.g., ground or chopped, mixed or blended
meat product) to kill microbes and improve the color during
storage. See, e.g., column 1, lines 9-27 and column 3, lines 56-
65. To obtain the desire pH, Roth requires that “[t]he pH
increasing gas [be] held at the operating pressure for an
operating period sufficient to allow the pH increasing gas to be
absorbed into the meat product and effect the desired increase in
Appeal No. 2005-1672
Application No. 09/833,866
7
pH [emphasis ours].” See column 2, lines 54-57. Roth goes onto
state (column 5, lines 38-53) that:
NH3 gas is the preferred pH increasing gas for use
in the first step of the invention shown in FIG. 1.
When in contact with the meat product being processed,
it is believed that the moisture in the meat product
absorbs the NH3 gas to form ammonium hydroxide NH4OH.
The free hydroxyl ions from the NH4OH in the meat
product produce the increased pH. The free NH3 gas
also provides the physical pressure effect desired in
the pressurization, hold, and release cycle according
to the invention. Alternatively to NH3 gas, a suitable
pH increasing liquid or solid may be atomized or
otherwise mixed with an approved inert food processing
carrier gas . . . . In this case the pH increasing
material performs the pH increasing function while the
carrier gas produces the desired physical pressure
effects of damaging microbes in the pressurization,
hold, release cycle. [Emphasis added.]
It can be inferred from this teaching in Roth that atomized
ammonia hydroxide solution would be just as useful as anhydrous
ammonia gas in increasing the pH of the meat product. This meat
product, according to column 7, lines 34-44, of Roth, is
subjected to
[t]he excess treatment gas removal step described with
reference to FIG. 1(block 8) [which] may be performed
by applying a vacuum to container 20 with vacuum pump
82 . . . . Also, the container 20 may have associated
with it a motor 86 for driving an agitator or blender
mechanism (not shown) within the container. Blending
or agitating the treated meat product in the container
helps expose the meat product to the vacuum to ensure
better removal of excess or free treatment gas.
Appeal No. 2005-1672
Application No. 09/833,866
3 This is especially true in this case since claim 14 does not
preclude unclaimed additional steps, such as excess ammonium hydroxide
or moisture removing steps.
8
Implicit in this teaching in Roth is that ammonium hydroxide is
absorbed throughout the meat product prior to the blending and
agitation. Moreover, this teaching supports the examiner’s
finding at page 3 of the Answer that “distribution of ammonium
hydroxide solution throughout a mass of ground or contaminated
meat” necessarily “occurs in Roth [at least] during the blending,
agitating . . . of the meat in the presence of [excess] ammonium
hydroxide.” Subsequent this treatment, the meat may be frozen
and/or chipped for packaging and shipment. See Roth, column 7,
line 65 to column 8, line 5. Thus, in our view, the examiner has
correctly found that Roth describes, or would have suggested, a
meat product identical or substantially identical to the claimed
meat product. We find that nothing in this record referred by
the appellant shows that the claimed moisture adding step causes
the claimed meat product to be patentably different from the meat
product described or suggested by Roth.3 As stated by our
predecessor reviewing court in In re Best, 562 F.2d 1252, 1255,
195 USPQ 430, 433-34 (CCPA 1977):
Appeal No. 2005-1672
Application No. 09/833,866
9
Where, as here, the claimed and prior art products
are identical or substantially identical, or 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. [Footnote omitted.] Whether the rejection is
based on “inherency” under 35 USC § 102, on “prima
facie obviousness” under 35 USC § 103, jointly or
alternatively, the burden of proof is the same, and its
fairness is evidenced by the PTO’s inability to
manufacture products or to obtain and compare prior art
products. See In re Brown, 459 F.2d 531, 59 CCPA 1036,
173 USPQ 685 (1972).
On this record, the appellant has not come forward with evidence
to rebut the examiner’s prima facie case of unpatentability based
on similarities of processes and product characteristics (reduced
microbes and improved color for storage) involved. Accordingly,
we affirm the examiner’s decision rejecting claims 14 through 20
under Sections 102 and 103.
We turn next to the examiner’s rejection of claims 1, 3
through 13 and 22 under 35 U.S.C. § 103(a) as unpatentable over
the combined disclosures of Roth and Nakayama. Claims 1, 12, 13
and 22 are directed to methods of treating ground (comminuted)
meats. Claim 1 requires a moisture adding step in which an
aqueous ammonium hydroxide can be added or water can be added to
form an aqueous ammonium hydroxide in situ (reacting added water
with ammonia gas to form an aqueous ammonium hydroxide). Claims
Appeal No. 2005-1672
Application No. 09/833,866
10
12 and 13 limit the moisture adding step as either the in situ
aqueous ammonium hydroxide formation steps or the aqueous
ammonium hydroxide introductions step mentioned above. Claims
12 and 13, unlike claim 1, also require a step for applying
mechanical action to the resulting mixture to further distribute
the aqueous ammonium solution to the meats. Claim 22 requires
adding solid ammonia followed by adding water to form an aqueous
ammonium hydroxide in situ.
The disclosure of Roth is discussed above. The appellant
does not dispute that Roth teaches “that ammonia gas may be added
to comminuted meat to raise the pH.” See the Brief, page 8.
Rather, the appellant only argues that Roth does not teach
increasing the moisture content in the comminuted meat and that
Nakayama does not suggest increasing the same in Roth as required
by claims 1, 12 and 13. Id. We disagree.
As indicated above, Roth teaches (column 5, lines 38-53)
that:
NH3 gas is the preferred pH increasing gas for use
in the first step of the invention shown in FIG. 1.
When in contact with the meat product being processed,
it is believed that the moisture in the meat product
absorbs the NH3 gas to form ammonium hydroxide NH4OH.
The free hydroxyl ions from the NH4OH in the meat
product produce the increased pH. The free NH3 gas
also provides the physical pressure effect desired in
Appeal No. 2005-1672
Application No. 09/833,866
11
the pressurization, hold, and release cycle according
to the invention. Alternatively to NH3 gas, a suitable
pH increasing liquid or solid may be atomized or
otherwise mixed with an approved inert food processing
carrier gas . . . . In this case the pH increasing
material performs the pH increasing function while the
carrier gas produces the desired physical pressure
effects of damaging microbes in the pressurization,
hold, release cycle. [Emphasis added.]
In other words, we determine that Roth as a whole would have
suggested using an aqueous ammonia hydroxide or ammonia gas to
treat the comminuted meat, thus meeting the claimed requirement
for increasing the moisture content in the comminuted meat as
required by claims 1 and 13. We determine that adding water to
obtain the desired moisture content in the meat as required by
claim 12 would have been well within the ambit of one of ordinary
skill in the art since Roth teaches that the purpose of adding
ammonia gas is to react it with moisture (water) to form a
sufficient amount of an aqueous ammonium hydroxide to obtain a
desired pH. See, e.g., In re Boesch, 617 F.2d 272, 276, 205 USPQ
215, 219 (CCPA 1980)(“[D]iscovery of an optimum value of a result
effective variable in a known process is ordinarily within the
skill of the art”).
In any event, as also indicated by the examiner (Answer,
page 3), Nakayama, like Roth, teaches treating various fowl
meats, including ground meat, with ammonia gas and/or an aqueous
Appeal No. 2005-1672
Application No. 09/833,866
12
ammonia solution to eliminate the meat odor associated therewith.
See also Nakayama, page 3. The fowl meats can be subjected to
the aqueous ammonia solution in the form of mist or spray or can
be immersed in the aqueous ammonia solution. Id. As is apparent
from column 1 of Roth, the fowl odor referred to in Nakayama is
also related to a meat exposed to microbes. Given these
teachings, we concur with the examiner that one of ordinary skill
in the art would have been led to employ ammonia gas and water
(moisture) to form an aqueous ammonia hydroxide solution in situ
or directly introduce an aqueous ammonia solution in the manner
taught by either Roth or Nakayama, with a reasonable expectation
of successfully reducing microbes and fowl odors in the
comminuted meat. See, e.g., In re Beattie, 974 F.2d 1309, 1312,
24 USPQ2d 1040, 1042 (Fed. Cir. 1992)(“As long as some motivation
or suggestion to combine the references is provided by the prior
art taken as a whole, the law does not require that the
references be combined for the reasons contemplated by the
inventor”).
With respect to claim 22, we find that the passage of Roth
referred to above implicitly teaches or suggests using solid
ammonia gas (ammonia) to form an aqueous ammonia hydroxide
Appeal No. 2005-1672
Application No. 09/833,866
4 We also take official notice, if necessary, that it was well
known at the time of the invention that an aqueous ammonia hydroxide
solution can be formed by combining ammonia and water.
13
solution in situ.4 Thus, using solid ammonia, together with
water, to form an aqueous ammonia hydroxide solution in situ for
the purpose of increasing the pH of the comminuted meat would
have been obvious to one of ordinary skill in the art. As
indicated supra, the amount of water added is dependent on the
moisture already present in the meat and the amount of ammonia
used to form an optimum amount of an aqueous ammonium hydroxide
solution. Boesch, supra.
Accordingly, we affirm the examiner’s rejection of claims 1,
3 through 13 and 22 under 35 U.S.C. § 103(a).
CONCLUSION
In view of the foregoing, the decision of the examiner is
affirmed.
Appeal No. 2005-1672
Application No. 09/833,866
14
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
CHUNG K. PAK )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
THOMAS A. WALTZ ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
JEFFREY T. SMITH )
Administrative Patent Judge )
CKP:hh
Appeal No. 2005-1672
Application No. 09/833,866
15
THE CULBERTSON GROUP, P.C.
1114 LOST CREEK BLVD.,
STE. 420
AUSTIN, TX 78746