Ex Parte Sandra et al

Patent Trial and Appeal Board

Dec 4, 2017

14595298 (P.T.A.B. Dec. 4, 2017)

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.
14/595,298 01/13/2015 Sandra Sandra GPI00002 6314
3705 7590 12/06/2017
ECKERT SEAMANS CHERIN & MELLOTT, LLC
600 GRANT STREET
44TH FLOOR
PITTSBURGH, PA 15219
EXAMINER
MORNHINWEG, JEFFREY P
ART UNIT PAPER NUMBER
1793
NOTIFICATION DATE DELIVERY MODE
12/06/2017 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 @ eckertseamans. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SANDRA SANDRA and HENRY LIU
Appeal 2017-001239
Application 14/595,298
Technology Center 1700
Before TERRY J. OWENS, JAMES C. HOUSEL, and
JANE E. INGLESE, Administrative Patent Judges.
INGLESE, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 requests our review under 35 U.S.C. § 134(a) of a final
rejection of claims 1 and 3—62. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellant is the Applicant, GUM PRODUCTS INTERNATIONAL INC.,
which, according to the Appeal Brief, is the real party in interest. Appeal
Brief filed March 3, 2016 (“App. Br.”), 2.
2 Appellant cancelled claim 2 in an amendment filed December 28, 2015,
and the Examiner confirmed entry of the amendment in an Advisory Action
entered February 5, 2016.
Appeal 2017-001239
Application 14/595,298
STATEMENT OF THE CASE
Appellant claims a composition and method for treating raw poultry to
increase shelf life and reduce pathogen and bacteria counts, and a food
product comprising raw poultry treated with the composition. App. Br. 4.
Claim 1 illustrates the subject matter on appeal and is reproduced below:
1. A composition for treating, reducing pathogen and
bacteria counts and improving shelf life and safety of raw
poultry comprising buffered vinegar (BV) and lauramide
arginine ethyl ester (LAE).
App. Br. 10 (Claims Appendix).
The Examiner sets forth the rejection of claims 1 and 3—6 under
35 U.S.C. § 103(a) as unpatentable over Beltran (US 2004/0265443 Al;
publ. Dec. 30, 2004) in view of Hull (US 2013/0267603 Al; publ. Oct. 10,
2013) in the Final Office Action entered July 17, 2015 (“Final Act.”), and
maintains the rejection in the Examiner’s Answer entered August 28, 2016
(“Ans.”).
DISCUSSION
Upon consideration of the evidence relied upon in this appeal and
each of Appellant’s contentions, we affirm the Examiner’s rejection of
claims 1 and 3—6 under 35 U.S.C. § 103(a) based on the findings of fact,
conclusions of law, and rebuttals to arguments expressed by the Examiner in
the Final Office Action and the Answer. We add following comments for
emphasis.
Appellant argues the claims as a group. App. Br. 4—9. Therefore, we
select claim 1 as representative, and decide the appeal based on claim 1
alone. 37 C.F.R. § 41.37(c)(l)(iv).
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Application 14/595,298
In the Final Office Action and the Answer, the Examiner provides—in
commendable detail—reasoning with rational underpinning to support the
conclusion of obviousness. In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006),
cited with approval m.KSRInt’1 Co. v. Teleflex Inc., 550 U.S. 398, 417—18
(2007) (there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness). In so doing,
the Examiner establishes that the composition of claim 1 defines a
combination of prior art features whose improvement is no more than the
predictable use of the prior art features according to their established
functions. KSR, 550 U.S. at 417 (In assessing the obviousness of claims to a
combination of prior art elements, the question to be asked is “whether the
improvement is more than the predictable use of prior art elements according
to their established functions.”).
Appellant argues that one of ordinary skill in the art would not have
combined buffered vinegar (BV) with lauramide arginine ethyl ester (LAE)
because Hull does not teach combining BV with other antimicrobials, and
explicitly discloses use of BV in combination with substances that do not
include LEA. App. Br. 5. Similarly, Appellant argues that Beltran does not
disclose or suggest combining LAE with other antimicrobials, and expressly
teaches combining LAE with substances that do not include BV. Id.
However, it is well-established that “[i]t is prima facie obvious to
combine two compositions each of which is taught by the prior art to be
useful for the same purpose, in order to form a third composition which is to
be used for the very same purpose.” In re Kerkhoven, 626 F.2d 846, 850
(CCPA 1980). In addition, as the Examiner correctly finds, Hull explicitly
discloses that buffered vinegar can supplement available microbial agents
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Application 14/595,298
—which include LAE as disclosed in Beltran—for control of pathogens.
Ans. 6 (citing Hull 130 (published over nine years after publication of
Beltran)). Furthermore, as the Examiner also correctly finds, Beltran
discloses dissolving LAE in a food-grade solvent before adding the
compound to food, such as poultry products, and explicitly indicates that use
of a buffer solution—encompassing buffered vinegar—is recommended to
obtain optimal pH. Ans. 8; Beltran || 18—20, 22. Therefore, Appellant’s
arguments are unpersuasive of reversible error in the Examiner’s articulated
reasoning for combining the relied-upon disclosures in Beltran and Hull.
Appellant further argues that Hull teaches away from combining BV
with other antimicrobials by disclosing use of BV in combination with
materials other than antimicrobials, which are selected from essential oils,
malic acid, levulinic acid, and caprylic acid. App. Br. 5. Similarly,
Appellant argues that one of ordinary skill in the art would have been led to
exclude use of auxiliary components and excipients with LAE that are not
explicitly disclosed in Beltran, “thus excluding the possibility of combining
LAE with BV.” Id.
However, “mere disclosure of alternative designs does not teach
away.” In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Rather,
teaching away requires “clear discouragement” from implementing a
technical feature. In re Ethicon, Inc., 844 F.3d 1344, 1351 (Fed. Cir. 2017).
“A reference teaches away when it suggests that the line of development
flowing from the reference’s disclosure is unlikely to be productive of the
result sought by the applicant.” Santarus, Inc. v. Par Pharm., Inc., 694 F.3d
1344, 1354 (Fed. Cir. 2012) (quoting Medichem, S.A. v. Rolabo, S.L., 437
F.3d 1157, 1165 (Fed. Cir. 2006) (quotations omitted)).
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Application 14/595,298
Therefore, contrary to Appellant’s arguments, Hull’s failure to
explicitly disclose combining BV with other antimicrobials, and disclosure
of combining BV with substances other than LAE, and Beltran’s failure to
explicitly disclose combining LEA with other antimicrobials, and disclosure
of combining LEA with substances other than BV, would not have
discouraged one of ordinary skill in the art from combining the two known
antimicrobials to form an antimicrobial composition. In view of Beltran’s
disclosures of the effectiveness of LAE as an antimicrobial agent and Hull’s
disclosures of the effectiveness of B V as an antimicrobial agent, one of
ordinary skill in the art reasonably would have expected that LAE could be
successfully combined with BV to form an antimicrobial composition.
Appellant also argues that the “evidence in the specification and both
Sandra Declarations demonstrate that the objectives of the invention are
achieved and that the results are clearly better than what would have been
expected, thus demonstrating objective evidence of non-obviousness.” App.
Br. 8.
However, the burden of analyzing and explaining evidence to support
an assertion of non-obviousness rests with the Appellant. In re Klosak, 455
F.2d 1077, 1080 (CCPA 1972). In the present case, Appellant discusses
only the second Sandra Declaration with particularity, and provides no
explanation of his basis for relying on the Specification and the first Sandra
Declaration to demonstrate nonobviousness. App. Br. 7—9. It is
well-established that an Appellant’s mere arguments and conclusory
statements cannot take the place of objective evidence. See, e.g., In re
Geisler, 116 F.3d 1465, 1471 (Fed. Cir. 1997); In re De Blauwe, 736 F.2d
699, 705 (Fed. Cir. 1984); In re Lindner, 457 F.2d 506, 508 (CCPA 1972).
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Application 14/595,298
With respect to the second Sandra Declaration, Appellant does not
explain why the limited data provided in the Declaration are sufficient to
show that the full scope of the compositions covered by claim 1 impart
unexpected results relative to the compositions of the closest prior art
—Beltran. App. Br. 7—9. In re Harris, 409 F.3d 1339, 1344 (Fed. Cir.
2005) (“Even assuming that the results were unexpected, Harris needed to
show results covering the scope of the claimed range. Alternatively Harris
needed to narrow the claims.”); In re Greenfield, 571 F.2d 1185, 1189
(CCPA 1978) (“Establishing that one (or a small number of) species gives
unexpected results is inadequate proof, for ‘it is the view of this court that
objective evidence of non-obviousness must be commensurate in scope with
the claims which the evidence is offered to support.’”) (quoting In re Tiffin,
448 F.2d 791, 792 (CCPA 1971)); In re Baxter Travenol Labs., 952 F.2d
388, 392 (Fed. Cir. 1991) (“[W]hen unexpected results are used as evidence
of nonobviousness, the results must be shown to be unexpected compared
with the closest prior art.”).
In addition, the Examiner provides a thorough, reasoned explanation
supported by objective evidence at pages 11—12, and 16 of the Answer as to
why the results presented in the second Sandra Declaration would have been
expected by one of ordinary skill in the art at the time of the invention, and
Appellant fails to demonstrate otherwise. App. Br. 7—9.
Accordingly, Appellant does not show that the Examiner erred in
evaluating the merits of Appellant’s evidence or in weighing such evidence
against the teachings of the prior art and level of ordinary skill in art.
Therefore, the preponderance of the evidence relied upon in this appeal
supports the Examiner’s conclusion of obviousness, and we accordingly
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Application 14/595,298
sustain the Examiner’s rejection of claims 1 and 3—6 under 35 U.S.C.
§ 103(a).
DECISION
We affirm the Examiner’s rejection of claims 1 and 3—6 under
35 U.S.C. § 103(a).
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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