Ex Parte Tew

Board of Patent Appeals and Interferences

Sep 26, 2007

09996707 (B.P.A.I. Sep. 26, 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is not binding precedent of the Board.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 WILLIAM H. TEW, III
____________

Appeal 2007-1596
Application 09/996,707
Technology Center 1700
____________

Decided: September 26, 2007
____________

Before CHARLES F. WARREN, 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 1-19 and 22-26, which are the
only claims pending in this application. We have jurisdiction pursuant to
35 U.S.C. § 6(b).
According to Appellant, the invention is directed to a vegetative
produce handling machine which includes at least one stationary vegetative
produce contacting surface that is covered with foam padding to reduce the
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bruising of the vegetative produce, where the foam padding is formed with
an anti-microbial agent to retard the growth of microbes within the padding
(Br. 5).1 Independent claim 15 is illustrative of the invention and a copy of
this claim is reproduced below:
15. A vegetative produce handling machine, comprising:

at least one stationary vegetative produce-contacting surface; and

a foam padding covering at least a portion of said stationary
vegetative produce-contacting surface of the machine, wherein said foam
padding is intended to reduce bruising of the vegetative produce contacting
the stationary surface and where said foam padding is formed with an anti-
microbial agent to retard the growth of microbes on the padding.

The Examiner has relied upon the following prior art references as
evidence of obviousness:
Bowman US 2,012,655 Aug. 27, 1935
Moore US 2,195,371 Mar. 26, 1940
Newhall US 2,534,205 Dec. 12, 1950
Smith US 2,635,267 Apr. 21, 1953
Schnider US 2,880,432 Apr. 07, 1959
Kurtz US 3,242,008 Mar. 22, 1966
Butterworth US 3,449,779 Jun. 17, 1969
Ross US 3,651,922 Mar. 28, 1972
Eguchi (JP ‘841), JP 6-246841 Sep. 06, 1994
(as translated)
Zabron US 5,906,269 May 25, 1999
Boyle US 6,309,741 B1 Oct. 30, 2001

ISSUES ON APPEAL
Claim 7 stands rejected under 35 U.S.C. § 112, first paragraph, for
failing to comply with the written description requirement (Answer 3).

1 We refer to and cite from the “Supplemental Appeal Brief” dated May 27,
2005.
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The following rejections under 35 U.S.C. § 103(a) have also been
presented for our review in this appeal:
(1) claims 15 and 19 over Smith in view of either Zabron or JP ‘841
(Answer 4);
(2) claims 15 and 19 over Schnider in view of either Zabron or JP
‘841 (Answer 5);
(3) claims 15-19 over Ross in view of either Zabron or JP ‘841 (id.);
(4) claims 15-19 over Boyle in view of JP ‘841 (Answer 6);
(5) claims 1, 6-11, 22, 24, and 26 over Moore in view of Ross and
either Zabron or JP ‘841 (Answer 7);
(6) claim 12 over Moore in view of Ross and either Zabron or JP
‘841, further in view of Kurtz (Answer 9);
(7) claim 13 over Moore in view of Ross and either Zabron or JP
‘841, further in view of Bowman (id.);
(8) claim 14 over Moore in view of Ross and either Zabron or JP
‘841, further in view of Butterworth (Answer 10); and
(9) claims 2-5, 23, and 25 over Moore in view of Ross and either
Zabron or JP ‘841, further in view of Newhall (id.).
Appellant contends that a prima facie case of lack of written
description has not been established by the Examiner, since the relationship
between abrasion resistance of the foam and water absorption/retention was
within the possession of Appellant (Br. 11, citing the Specification 1:15-27
and 9:20-23; Reply Br. 5-6).
Appellant admits that many of the primary references (specifically
Smith, Schnider, and Boyle) disclose the use of foam padding on certain
surfaces of a produce machine to reduce or eliminate bruising of the
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vegetables/fruits, but contends that none of these references teach or suggest
the need to prevent the growth of bacteria (Br. 14, 16, and 20-21). Appellant
further contends that Moore lacks any teaching or suggestion to use padding
to prevent bruising of the produce (Br. 22).
Appellant contends that Zabron does suggest the use of an anti-
microbial agent with a conveyor belt, but lacks any teaching or suggestion to
use such a belt as padding to mitigate the bruising of fruits and vegetables
(Br. 14). Appellant further contends that it is improper to expand the
teachings of Zabron to materials other than belts (Br. 14-15; Reply Br. 6-7).
Appellant contends that JP ‘841 does not suggest use of treated foam
in contact with food articles (Br. 15).
The Examiner contends that Zabron shows that surfaces that come
into contact with food may desirably contain an anti-microbial agent, and
that one of ordinary skill in this art would have recognized the benefit of
incorporating an anti-microbial agent into food-contacting surfaces (Answer
12).
The Examiner contends that JP ‘841 discloses foam padding with an
anti-microbial agent incorporated therein to inhibit the growth of bacteria on
surfaces recognized as being at risk (Answer 12).
Accordingly, we determine the following issues presented from the
record in this appeal: (1) Has the Examiner established that Appellant was
not in possession of the concept of including a flexible outer layer of vinyl to
reduce the absorption of moisture by the foam padding?; (2) Has the
Examiner established that foam padding on surfaces of a produce handling
machine to mitigate bruising of the produce was known from the prior art?;
(3) Has the Examiner established that adding an anti-microbial agent to a
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foam padding to inhibit the growth of bacteria was known in the prior art?;
and (4) Has the Examiner identified proper reasons for combining these
known elements in the manner claimed?
We determine that the Examiner has not established a prima facie case
of lack of written description essentially for the reasons stated in the Brief,
Reply Brief, and for those reasons set forth below. Therefore, we
REVERSE the rejection of claim 7 under the first paragraph of § 112.
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 Appellant’s arguments. Therefore, we
AFFIRM all grounds of rejection based on § 103(a) essentially for the
reasons stated in the Answer, as well as those reasons set forth below.
The decision of the Examiner is thus AFFIRMED.
OPINION
A. The Rejection under § 112, ¶1
The Examiner finds that the Specification discloses that the purpose of
the vinyl layer (810) is to provide abrasion resistance and thus there does not
appear to be support for the recitation in claim 7 that the vinyl layer reduces
the absorption of moisture by the foam padding (Answer 3, citing the
Specification 9:17-27).
An ipsis verbis disclosure is not necessary to satisfy the written
description requirement of section 112. Instead, the disclosure need only
reasonably convey to persons skilled in the art that the applicant had
possession of the subject matter in question as of the filing date of the
application. See In re Edwards, 568 F.2d 1349, 1351-52, 196 USPQ 465,
467 (CCPA 1978); Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563, 19
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USPQ2d 1111, 1117 (Fed. Cir. 1991). We agree with Appellant that the
disclosure in the Specification (9:20-27) that the foam padding layer further
includes a flexible outer vinyl layer to provide abrasion resistance would
have reasonably conveyed to one of ordinary skill in the art that this outer
vinyl layer must necessarily reduce, to some extent, the absorption of
moisture by the inner foam padding layer. We determine that the Examiner
has not established that the originally filed disclosure would not have
reasonably conveyed to one of ordinary skill in the art that Appellant had
possession of the now claimed subject matter. See Ex parte Parks, 30
USPQ2d 1234, 1236 (BPAI 1993). Therefore, we cannot sustain the
rejection of claim 7 for lack of written description under the first paragraph
of § 112.
B. The Rejections based on § 103(a)
We determine the following factual findings from the record in this
appeal:
(1) Smith discloses a produce (egg) handling machine
comprising a stationary produce-contacting surface (the
feeder drum) on which is attached foam (sponge rubber)
padding to protect the produce (eggs) (Answer 4; Smith,
col. 1, ll. 3-5; col. 2, ll. 30-36, 40-44, and 54; and col. 3, ll.
32, 47-48, and 57);
(2) Schnider discloses a produce (egg) handling machine
including a stationary produce-contacting surface (tray 62)
including a foam (sponge rubber) padding to reduce
breakage (Answer 5; Schnider, col. 2, ll. 40-44);
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(3) Ross discloses a produce (fruit) handling machine including
numerous food-contacting surfaces and stationary surfaces
which include foam rubber or other suitable foamed plastic
to reduce bruising of the produce (Answer 5-6; Ross, col. 1,
ll. 21-23 and 45-49; col. 3, ll. 4-12; col. 4, ll. 43-45; col. 6,
ll. 2-6 and 39-46; and col. 7, ll. 19-21);
(4) Boyle discloses a produce handling machine including a
stationary produce-contacting surface including a foam
padding to reduce bruising of the produce (Answer 6;
Boyle, Abstract; col. 1, ll. 13-17 and 44-65; and col. 2, ll.
54-56);
(5) Moore discloses a produce handling machine comprising a
receiver, a produce washer, a dryer unit of the absorbing
type, with numerous fixed and moving produce-contacting
surfaces (Answer 7; Moore, 1:1-4; and Figs. 1 and 1);
(6) Kurtz discloses the well known provision of a drape at the
exit of a produce (egg) washer (Answer 9; Kurtz, col. 1, ll.
13-14; and col. 2, ll. 33-36);
(7) Bowman discloses a produce washer including rubber
scrubbing members (Answer 9; Bowman, page 1, left col.,
ll. 4-7; page 1, right col., l. 48-page 2, left col., l. 5; and
page 2, left col., ll. 38-40);
(8) Butterworth discloses a produce washer with nylon bristles
(Answer 10; Butterworth, col. 3, ll. 21-23);
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(9) Newhall discloses a produce dryer including an open cell
foam roller as well as wringers (Answer 10; Newhall, col. 1,
ll. 1-6 and 36-47; and col. 2, ll. 17-28);
(10) Zabron discloses that, if a belting is intended to be used to
convey food grade products, preferably an antibacterial
agent is incorporated into the elastomeric material of the
belt to inhibit bacterial growth and promote asepsis on the
food-contacting surface (Answer 4; Zabron, Abstract; col. 1,
ll. 26-29; col. 6, ll. 44-60; and col. 7, ll. 5-10);
(11) Zabron teaches that other textile layers associated with the
belting can also have an antimicrobial agent incorporated
therein (col. 1, ll. 29-31 and 41-44); and
(12) JP ‘841 discloses a method of conferring bacterial/fungal
resistance to polyurethane foam by immersing the foam in
an aqueous solution of an antibacterial agent (Answer 4; JP
‘841, page 2, ¶¶ (54) and (57)); and
(13) JP ‘841 teaches the well known necessity of conferring
bacterial resistance to many types of products; JP ‘841
further teaches that polyurethane foams particularly are
useful in many diverse fields “by virtue of their light
weights and excellent cushion potentials” (3: ¶¶ [0002] and
[0003]).
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.
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John Deere of Kansas City, 383 U.S. 1, 17-18, 148 USPQ 459, 467 (1966).
“[A]nalysis [of whether the subject matter of a claim is obvious] need not
seek out precise teachings directed to the specific subject matter of the
challenged claim, for a court can take account of the inferences and creative
steps that a person of ordinary skill in the art would employ.” KSR Int’l Co.
v. Teleflex, Inc., 127 S. Ct. 1727, 1740-41, 82 USPQ2d 1385, 1396 (2007),
quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336-37 (Fed.
Cir. 2006). As held by the Supreme Court in KSR, 127 S. Ct. at 1739, 82
USPQ2d at 1395:
Neither the enactment of § 103 nor the analysis in Graham
disturbed this Court’s earlier instructions concerning the need for
caution in granting a patent based on the combination of elements
found in the prior art. For over a half century, the Court has held that
a “patent for a combination which only unites old elements with no
change in their respective functions … obviously withdraws what is
already known into the field of its monopoly and diminishes the
resources available to skillful men.” Great Atlantic & Pacific Tea Co.
v. Supermarket Equipment Corp., [340 U.S. 147, 152 (1950)]. This is
a principal reason for declining to allow patents for what is obvious.
The combination of familiar elements according to known methods is
likely to be obvious when it does no more than yield predictable
results.

Furthermore, the Court reiterated its holding in KSR by stating that “if a
technique has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar devices in the
same way, using the technique is obvious unless its actual application is
beyond his or her skill.” KSR, 127 S. Ct. at 1739-40, 82 USPQ2d at 1396.
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 in view of the reference evidence, which
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prima facie case has not been adequately rebutted by Appellant’s arguments.
First, we note that Appellant admits that use of foam padding to reduce
bruising of produce in produce handling machines was known in the prior
art (Specification 1:5-24; see also Answer 16). As shown by factual
findings (1) through (4) listed above, we determine that the applied prior art
establishes that the use of foam padding on at least one stationary produce-
contacting surface to reduce damage to the produce was well known in this
art. Second, we note that Appellant admits that the inclusion of antibacterial
agents in various materials to inhibit the growth of bacteria was well known
(Specification 1:28-2:21; see also the commercial products listed at
Specification 7:19-23 and the disclosure at 7:31-8:4). As shown by factual
findings (10) and (12) listed above, we determine that the applied prior art
establishes that the incorporation of antibacterial agents with foam padding
to inhibit or retard the growth of bacteria on a food-contacting surface was
well known in the art. Furthermore, we determine that Zabron teaches that
the incorporation of an antibacterial agent can be expanded into other
materials (see factual finding (11) listed above).
Thus, we determine that it would have been within the ordinary skill
in this art to have employed the foam padding with an antimicrobial agent,
as taught by Zabron, with any food-contacting member in a produce
handling machine for the benefit taught by Zabron (see the Answer 12). We
also determine that JP ‘841 teaches that polyurethane foam has many diverse
uses but is beneficial for its light weight and cushioning effect (see factual
finding (13) listed above). Therefore, we determine that one of ordinary
skill in this art would have used the polyurethane foam with an antibacterial
agent, as taught by JP ‘841, for its light weight and cushioning effect in the
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produce handling machines of the primary references to reduce damage to
the produce. We determine that the claimed subject matter merely combines
familiar elements according to known methods and does no more than yield
predictable results. See KSR Int’l Co. v. Teleflex, Inc., 127 S. Ct. at 1739, 82
USPQ2d at 1395.
With regard to Appellant’s separate arguments for claims 16 and 18
(Br. 20), we adopt the response of the Examiner (Answer 14). With regard
to the separate arguments against Boyle (Br. 20-21), we adopt the
Examiner’s response (Answer 14-15). In response to Appellant’s argument
against Moore (Br. 22), we note again that the use of foam padding to reduce
damage to the produce was admittedly well known. With regard to the
argument against claims 22 and 24, we note that Appellant admits that these
antibacterial agents were known in the art (Specification 7:24-8:6). With
regard to Appellant’s other arguments concerning specific dependent claims,
we refer to and adopt the Examiner’s response (Answer 15-19).
For the foregoing reasons and those stated in the Answer, we affirm
every ground of rejection based on § 103(a) presented for review in this
appeal.
The decision of the Examiner is affirmed.
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

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