Ex Parte Roth

Board of Patent Appeals and Interferences

Nov 30, 2006

10780255 (B.P.A.I. Nov. 30, 2006)

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for publication and is not binding precedent of the Board.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
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Ex parte ELDON ROTH
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Appeal 2006-3262
Application 10/780,255
Technology Center 1700
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Decided: November 30, 2006
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Before GARRIS, WARREN, and KRATZ, Administrative Patent Judges.
KRATZ, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal from the Examiner’s final rejection of claims 17-21,
23-26, and 28-32, the only claims that remain pending in this application.
We have jurisdiction pursuant to 35 U.S.C. § 134.

Appeal 2006-3262
Application 10/780,255

Claims 17, 23 and 28 are illustrative of the subject matter on appeal
and are reproduced below:
17. A method including:

(a) adding an ammonium hydroxide solution to an initial comminuted
meat product to produce an intermediate meat product; and

(b) applying mechanical action to the intermediate meat product.

23. A method including:

(a) adding an ammonium hydroxide solution to a comminuted meat
product; and

(b) forcing the comminuted meat product through a conduit after
adding the ammonium hydroxide solution to the comminuted meat product.

28. A method including:

(a) adding an ammonium hydroxide solution to a ground meat; and

(b) applying mechanical action to the ground meat after adding the
ammonium hydroxide solution.

The Examiner relies on the following prior art references as evidence
in rejecting the appealed claims:
Hines US 3,023,109 Feb. 27, 1962
Roth US 5,433,142 Jul. 18, 1995

Claims 17-21, 23-26, and 28-32 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Roth in view of Hines.

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Appeal 2006-3262
Application 10/780,255

OPINION
Upon review of the opposing arguments and evidence advanced by
the Examiner in the Answer and Appellant in the Briefs in support of their
respective positions, we conclude that the Examiner has not established a
prima facie case of obviousness for the claimed subject matter.
Accordingly, we will not sustain the Examiner's § 103 rejection for reasons
set forth in Appellant's Briefs, as further discussed below.
Under 35 U.S.C. § 103(a), the Examiner carries the initial burden of
establishing a prima facie case of obviousness. In re Piasecki, 745 F.2d
1468, 1471-72, 223 USPQ 785, 787-88 (Fed. Cir. 1984). As part of meeting
this initial burden, the Examiner must determine whether the differences
between the subject matter of the claims 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” (emphasis added).
35 U.S.C. § 103(a)(1999); Graham v. John Deere Co., 383 U.S. 1, 14,
148 USPQ 459, 465 (1966). The applied prior art references as a whole
must be viewed from the perspective of one of ordinary skill in the art to
determine whether “some suggestion” is present to arrive at the claimed
subject matter. Cf. In re Mills, 470 F.2d 649, 651, 176 USPQ 196, 198
(CCPA 1972).
The Examiner relies on Roth for teaching: (1) contacting ground meat
with a working gas under pressure using a reciprocating pump; (2) releasing
the pressure; and then (3) transporting the meat to reduce the microbial
content and to maintain the color of the meat. The Examiner correctly
observes that the reciprocation pump action and subsequent meat transport
of Roth results in mechanical action being applied to the meat of Roth (Non-
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Appeal 2006-3262
Application 10/780,255

Final Office Action mailed April 22, 2005 at 2).1 The Examiner does not
rely on Roth for disclosing the addition of an ammonia hydroxide solution to
a comminuted meat product, as required by all of the appealed claims.
According to the Examiner, however, “[i]t would have been obvious to use
ammonia gas or aqueous ammonia as the working gas in Roth since it is old
to contact meat with ammonia or ammonium hydroxide to produce a bright
red color in the meat, as evidenced by Hines (Exs. 1 and 2 and claim 1).” Id.
The difficulty we have with the Examiner’s obviousness position is
twofold.
Firstly, the Examiner has not fairly established that Hines teaches or
suggests adding an ammonium hydroxide solution to comminuted meat, as
here claimed. As pointed out by Appellants in the Briefs, Hines teaches that
fresh red meat should be exposed to an atmosphere containing ammonia to
aid in retention of the red meat color (Br. 4 and Reply Br. 1). Hines teaches
that aqua ammonia or liquid ammonia hydroxide may be the source of the
ammonia used in forming the atmosphere that the meat is contacted with
(Hines, col. 1, ll. 55-59, Example 2, and claim 1). The Examiner has not
established that Hines discloses or suggests contacting the meat with aqua
ammonia or adding an ammonium hydroxide solution to the meat. Indeed,
Hines discloses contacting the meat with an atmosphere formed by the liquid
ammonium hydroxide (Example 2).

1 The Examiner refers to this Non-Final Office Action for the statement of
the rejection (Answer 3). As an aside, we note that the practice of
incorporating a statement of rejection in the Answer by referring to another
paper without fully restating the Examiner’s rejection in the Answer is not in
accord with current examination practice. See MPEP § 1207.02, Eighth Ed.,
Rev. 3 (Aug., 2005).
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Appeal 2006-3262
Application 10/780,255

Secondly, even if the Examiner had established that Hines would
have led one of ordinary skill in the art to contact meat with an aqueous
ammonium hydroxide solution as an equivalent process to the ammonia
containing atmosphere - meat contact disclosed in Hines, the Examiner has
not reasonably explained how Hines together with Roth would have led one
of ordinary skill in the art to modify Roth’s pressurized gas contact and
pressure letdown method to include an aqueous ammonium hydroxide -
meat contacting step. The Examiner simply has not explained how an
aqueous ammonium hydroxide solution would be employed as a working
gas in Roth. After all, the Examiner’s expressed position in the Answer is
that Hines furnishes motivation to employ ammonia gas in Roth as the
working gas thereof (Answer 3). However, the latter proposed modification
of Roth would not result in a process corresponding to the claimed process.
This is because the claimed process requires a comminuted meat – ammonia
hydroxide solution contacting step followed by a mechanical action step, not
an ammonia gas-meat contacting step followed by a mechanical action step.
The Examiner’s commentary in response to arguments set forth in the Brief
make this deficiency in the Examiner’s stated obviousness position plain
(Answer 3-4).
It follows that we do not sustain the Examiner’s obviousness rejection
on this record.

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Appeal 2006-3262
Application 10/780,255

CONCLUSION
The decision of the Examiner to reject claims 17-21, 23-26, and 28-32
under 35 U.S.C. § 103(a) as being unpatentable over Roth in view of Hines
is reversed.
REVERSED

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