Ex Parte Roth

Board of Patent Appeals and Interferences

Nov 20, 2008

10951076 (B.P.A.I. Nov. 20, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte ELDON ROTH

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Appeal 2008-1998
Application 10/951,076
Technology Center 1700
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Decided: November 20, 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 REQUEST FOR REHEARING
Appellant, pursuant to 37 C.F.R. § 41.52, has submitted a timely
Request for Rehearing dated June 27, 2008 (hereafter the “Request”),
requesting rehearing from, and modification of, the original Decision in this
appeal dated April 28, 2008 (hereafter “Dec.”) where this merits panel
affirmed the Examiner's rejection of claims 1-4, 6-10, 12, and 14-22 under
Appeal 2008-1998
Application 10/951,076

35 U.S.C. § 103(a) as unpatentable over Roth in view of Townsend or
Langen (Dec. 9-10).
Appellant contends that it appears that we made a “different” rationale
for combining the references than the Examiner made in his Final Rejection,
and further, that this “different” rationale is defective under the analysis
required by KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727 (2007). (Request
1-3). We disagree.
First, although Appellant did not ask us to redesignate our decision as
a new ground of rejection, it is well established that there is no new ground
of rejection when “[t]he basic thrust of the rejection” remains the same such
that an appellant has been given a fair opportunity to react to the rejection.
In re Kronig, 539 F.2d 1300, 1302-03 (CCPA 1976). Further, where the
statutory basis for the rejection remains the same, and the evidence relied
upon in support of the rejection remains the same, a change in the discussion
of, or rationale in support of, the rejection does not necessarily constitute a
new ground of rejection. Kronig, 539 F.2d at 1303 (reliance upon fewer
references in affirming a rejection under 35 U.S.C. § 103 does not constitute
a new ground of rejection).
The Decision explained in detail our rationale for agreeing with the
Examiner that the combination of references established a prima facie case
of obviousness. In particular, Roth describes it is desirable for the pH
increasing fluid (e.g., gas) to be absorbed into the meat product. (See Dec.
6). As noted in the Decision, one way of ensuring the gaseous fluid to be
absorbed into the meat product would have been to deliver the fluid into the
interior of a meat product (Id.). Thus, the use of prior art injection needles
known for forcing fluids into a meat product, as exemplified in each of
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Appeal 2008-1998
Application 10/951,076

Townsend and Langen, to reach the interior surfaces of the meat product of
Roth would have been prima facie obvious (Dec. 7).
Appellant contends that the Decision “relies upon an incomplete and
inaccurate description” of the Townsend and Langen patents, since neither
reference teaches using injection needles for ground meat. (Request 4-5).
We have carefully reviewed our Decision and we do not agree that we relied
upon “incomplete and inaccurate” descriptions as alleged by Appellant.
(See, e.g., Dec. 5, first paragraph.)
Appellant contends that the use of injection needles to inject fluid into
ground meat “seems to defy common sense” (Request 5). We disagree.
Appellant’s contention that one would pour sauce into a bowl with the
ground meat and then rearrange (mix) the ground meat pieces is not on point
(Id.). The claimed invention deals with “forcing… pH modifying material
into the interior” of a meat product via an injection conduit. Both Townsend
and Langen exemplify the use of injection needles to add treatment material
into the interior of meat products (Dec. 5). One of ordinary skill in the art
would readily appreciate that “meat products” include ground meat products.
Appellant contends that we relied upon an “unsupported combination
of components” because there is no evidence that a needle injection device
as shown in Townsend or Langen is a known alternative to the injection port
and pump arrangement of Roth (Request 6-7). We disagree. As the
Supreme Court recently articulated, 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. Also, the Court
held “that when a patent ‘simply arranges old elements with each performing
the same function it had been known to perform’ and yields no more than
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Application 10/951,076

one would expect from such an arrangement, the combination is obvious.”
KSR, 127 S. Ct. at 1740, quoting from Sakraida v. AG Pro, Inc., 425 U.S.
273, 282 (1976). It is undisputed that the injection needles of Townsend and
Langen force treatment fluids into meat products. It is also undisputed that
the injection port and pump arrangement of Roth force a treatment fluid into
a meat product. Thus, the evidence of record establishes that these were
known alternative mechanisms for applying fluids to a meat product.
Appellant’s contention that there was no apparent reason to combine
the applied prior art is not persuasive (Request 7-8). Reasons to combine the
applied prior art were set forth by the Examiner as well as in our Decision
(Dec. 7, 8).
Finally, Appellant’s contention that we have overlooked evidence of
long-felt need is not persuasive for the reasons discussed in our Decision
(Dec. 8-9).
Appellant further states that the Examiner’s failure to address the
objective evidence of “long-felt need” is an error that “warrants reversal of
the rejections and remand” (Request 10-11). We do not agree.
It is well established that Appellant must establish that the art tried
and failed to solve the problem. Appellant simply did not meet their burden
of proof in this regard (Dec. 9).
The Board has broad discretion as to the weight to be accorded to
evidence. Velander v. Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003) (stating
that it is “within the discretion of the trier of fact to give each item of
evidence such weight as it feels appropriate”). See also, In re Geisler, 116
F.3d 1465, 1470 (Fed. Cir. 1997) (“attorney argument [is] not the kind of
factual evidence that is required to rebut a prima facie case of obviousness”).
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Application 10/951,076

Therefore, Appellant’s general statements that the Board
“overlooked” evidence of “long-felt need” fails to persuade us of error on
our part in concluding that a preponderance of the evidence favored the
Examiner's obviousness determination (Decision 9). See Pfizer, Inc. v.
Apotex, Inc., 480 F.3d 1348, 1364 (Fed. Cir. 2007) (explaining that as long
as the Examiner establishes “a reasonable probability of success,”
“obviousness cannot be avoided simply by a showing of some degree of
unpredictability in the art”).
CONCLUSION
In conclusion, based on the foregoing, we have granted Appellant's
request to the extent that we have reconsidered our decision, but we deny
Appellant's request to make any change therein.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

REHEARING DENIED

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