Ex Parte Seman et al

Board of Patent Appeals and Interferences

Aug 15, 2007

10378330 (B.P.A.I. Aug. 15, 2007)

The opinion in support of the decision being entered today
is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte DENNIS L. SEMAN, JOHN ALFRED HIRSCHEY,
ANDREW L. MILKOWSKI, and MICHAEL BARNEY
________________

Appeal 2007-2598
Application 10/378,330
Technology Center 1700
________________

Decided: August 15, 2007
________________

Before CHUNG K. PAK, THOMAS A. WALTZ, and JEFFREY T. SMITH,
Administrative Patent Judges.

WALTZ, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Primary Examiner’s final rejection of claims 1 through 32, the only claims
pending in this application. We have jurisdiction pursuant to 35 U.S.C. § 6.
According to Appellants, the invention is directed to hop beta acid
compositions and methods of inhibiting microbial growth by use of these
Appeal 2007-2598
Application 10/378,330

compositions, where the composition contains hop beta acids, food grade
organic acids, a soluble source of potassium ions, and an optional
antioxidant in a carrier solvent (Br. 2). Independent claim 1 is illustrative of
the invention and a copy of this claim is reproduced below:
1. A hop beta acid composition comprising a hop beta acid, a first
food grade organic acid, a soluble potassium ion source, and an optional
antioxidant in a carrier solvent, wherein the carrier solvent comprises a food
grade alcohol, a food grade glycol, or mixtures thereof.
The Examiner has relied on the following prior art references as
evidence of obviousness:
King WO 01/06877 A1 Feb. 01, 2001

Robert S. Igoe and Y. H. Hui (hereafter “Igoe”), Dictionary of Food
Ingredients 13, 113, 114, 116 (4th ed., Aspen Publishers, Inc., 2001).

ISSUES ON APPEAL
Claims 1-32 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over King in view of Igoe (Answer 4).
Appellants contend that King does not disclose use of a soluble
potassium ion source, an amount of potassium ion source in the range of 0.1-
20%, nor an amount of hop beta acid in the range of 0.1-4% (Br. 4).
Appellants contend that no motivation has been established for
combining the references because Igoe simply defines various food
ingredients, namely a “laundry list” of 18 potassium sources, having no
relation to antimicrobials or King (Br. 8-9).
With regard to the dependent claims, Appellants contend that King
and Igoe fail to disclose or suggest the specific amounts of each ingredient
as required by the claims (Br. 11-13, separately arguing grouped claims 2,
2
Appeal 2007-2598
Application 10/378,330

14; claims 5, 17, and 27; claims 16, 29; and claims 2, 5, 14, and 27; Reply
Br. 2-4).
The Examiner admits that King is silent with regards to any potassium
ion source, but contends that King suggests the inclusion of “additional
materials” within the skill of the artisan, while Igoe is evidence that an
artisan having common knowledge in this art would have added potassium
ion compounds to the antimicrobial meat composition of King for the
flavoring, water control, and pH control benefits taught by Igoe (Answer 4-
5).
The Examiner contends that the optimal ranges or amounts of each
ingredient would have been a result-effective variable easily determined by
one of ordinary skill in this art (Answer 6, 10, and 11).
Accordingly, the issues presented from the record in this appeal are as
follows: (1) Has the Examiner identified a reason that one of ordinary skill
in this art would have combined the teachings of King and Igoe?; and (2)
Would the amounts of each ingredient in the compositions of the claims on
appeal have been within the ordinary skill in this art?
We determine that the Examiner has established a prima facie case of
obviousness in view of the reference evidence, which prima facie case has
not been adequately rebutted by Appellants’ arguments. Therefore, we
AFFIRM the sole ground of rejection on appeal essentially for the reasons
stated in the Answer, as well as those reasons set forth below.
OPINION
We determine the following factual findings from the record in this
appeal:
3
Appeal 2007-2598
Application 10/378,330

(1) King discloses an antimicrobial composition for retarding the
outgrowth of bacteria on food where the composition includes hop
beta acid, one or more food grade organic acids, and an
antioxidant (Abstract; 1:1-17; 3:15-24; 3:31-4:2; 5:10-14 and 19-
20; 8:6-15);
(2) King teaches that in fat containing products, such as cheeses,
meats, sauces, and dressings, bacterial growth is known to occur in
the aqueous portion of the emulsion (2:18-24);
(3) King discloses that “in practice” the hop acid is added to the food
product in amounts between about 0.1 to about 50 ppm (6:14-16);
however, King also teaches that “[a]t higher concentrations of
BHA [beta hop acid], the BHA” and surfactant combination
“virtually eliminates the bacteria levels,” where these higher
concentrations include amounts of 1000 ppm and 5000 ppm (10-
11: Example 1);
(4) King teaches that “[o]ther additives” can be present in the
composition, such as other antimicrobial agents, seasonings, oils,
flavors, dyes, etc. (8:16-24);
(5) Appellants admit that it was known that hop beta acids have
antibacterial activity and have been used in amounts from 0.01 to
about 10,000 ppm (Specification 1:9-26);
(6) Igoe teaches that antimicrobial agents are also classified as
“preservatives,” and that potassium sorbate is a “preservative” that
is typically used in amounts of 0.025 to 0.10% (13, 114); and
4
Appeal 2007-2598
Application 10/378,330

(7) Igoe teaches that potassium lactate is a flavor enhancer used in
meat and poultry products, with properties as a humectant and pH
control agent (113-14).
Under 35 U.S.C. § 103, the factual inquiry into obviousness requires a
determination of: (1) the scope and content of the prior art; (2) the
differences between the claimed subject matter and the prior art; (3) the level
of ordinary skill in the art; and (4) secondary considerations. See Graham v.
John Deere of Kansas City, 383 U.S. 1, 17-18, 148 USPQ 459, 467 (1966).
The analysis supporting obviousness should be made explicit and should
“identify a reason that would have prompted a person of ordinary skill in the
art to combine the elements” in the manner claimed. KSR Int’l Co. v.
Teleflex, Inc., 127 S. Ct. 1727, 1731, 82 USPQ2d 1385, 1389 (2007). “The
law is replete with cases in which the difference between the claimed
invention and the prior art is some range or other variable within the claims.
[Citations omitted]. These cases have consistently held that in such a
situation, the applicant must show that the particular range is critical,”
generally by showing unexpected results. In re Woodruff, 919 F.2d 1575,
1578, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990). Generally, if the prior art
discloses overlapping ranges with those claimed, at least a case of prima
facie obviousness is established. See In re Peterson, 315 F.3d 1325, 1329-
30, 65 USPQ2d 1379, 1382 (Fed. Cir. 2003). It is axiomatic that admitted
prior art in an applicant’s specification may be used in determining the
patentability of a claimed invention. See In re Nomiya, 509 F.2d 566, 570-
71, 184 USPQ 607, 611-12 (CCPA 1975). Consideration of the prior art
cited by the Examiner may include consideration of the admitted prior art
5
Appeal 2007-2598
Application 10/378,330

found in an applicant’s specification. See In re Davis, 305 F.2d 501, 503,
134 USPQ 256, 258 (CCPA 1962); cf., In re Hedges, 783 F.2d 1038, 1039-
40, 228 USPQ 685, 686 (Fed. Cir. 1986).
Applying the preceding legal principles to the factual findings in the
record of this appeal, we determine that the Examiner has established a
prima facie case of obviousness, which prima facie case has not been
adequately rebutted by Appellants’ arguments. As shown by factual finding
(1) listed above, and not disputed by Appellants, we determine that King
discloses every limitation of claim 1 on appeal with the exception of the
soluble potassium ion source (see Answer 4). As shown by factual finding
(4) listed above, we determine that King teaches that other additives may be
included in the antimicrobial composition, including other antimicrobial
agents and flavors. As shown by factual finding (6) listed above, we
determine that Igoe teaches that it was known in the food art to use
potassium sorbate as a preservative or antimicrobial agent in typical amounts
of 0.025 to 0.10%.1 As shown by factual finding (7) listed above, we
determine that Igoe also teaches that the use of potassium lactate as a
humectant, flavor enhancer, and pH control, was well known in the food art.
We determine that King provides sufficient reasoning to add potassium
sorbate as another antimicrobial agent, as taught by Igoe. We also
determine, for the claims requiring potassium lactate, that King provides
sufficient reasoning to add potassium lactate as a flavor enhancer, as taught
by Igoe. We further determine that the Examiner has identified other
reasons for adding potassium lactate to the antimicrobial composition

1 We note that only claims 4, 7, 16, 19, and 29 require that the soluble
potassium ion source is potassium lactate.
6
Appeal 2007-2598
Application 10/378,330

disclosed by King (Answer 5). As shown by factual finding (2) listed above,
we determine that the humectant properties taught by Igoe for potassium
lactate would also have been sufficient reason to add this compound to the
antimicrobial composition for use with meats as disclosed by King.
Contrary to Appellants’ arguments (Br. 11-13; Reply Br. 2-4), the
amounts of each ingredient in the antimicrobial compositions of the claims
on appeal are disclosed or suggested by the prior art. As shown by factual
finding (6) listed above, we determine that Igoe suggests typical amounts of
the potassium compound additive that overlap with the claimed range (at the
endpoint value of 0.1%; see, e.g., claim 2). We also agree with the
Examiner that amounts of potassium lactate would have been routinely
optimized by one of ordinary skill in the food art, for its use as a flavor
enhancer, humectant, or pH control (Answer 10). With regard to the amount
of hop beta acids required by the claims on appeal, we determine that King
suggests use of amounts within the scope of the claims, and Appellants
admit that the use of such amounts was known in the art (see factual findings
(3) and (5) listed above). We further note that Appellants have not argued or
shown any unexpected results achieved by the claimed ranges over the prior
art. See In re Peterson, supra; In re Woodruff, supra.
For the foregoing reasons and those stated in the Answer, we affirm
the rejection of claims 1-32 under § 103(a) over King in view of Igoe. The
decision of the Examiner is affirmed.
7
Appeal 2007-2598
Application 10/378,330

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).
AFFIRMED

clj

Fitch, Even, Tabin & Flannery
120 S. Lasalle Street
Suite 1600
Chicago, IL 60603-3406

8