Ex Parte Vein

Board of Patent Appeals and Interferences

May 24, 2010

10943489 (B.P.A.I. May. 24, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte JON VEIN
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Appeal1 2009-010253
Application 10/943,489
Technology Center 1600
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Decided: May 24, 2010
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Before CAROL A. SPIEGEL, DEMETRA J. MILLS, and STEPHEN
WALSH, Administrative Patent Judges.

WALSH, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to a
method of producing a meat product by cell culture. The Patent Examiner
rejected the claims on the ground of obviousness. We have jurisdiction
under 35 U.S.C. § 6(b). We affirm.

1 Oral hearing held May 11, 2010.
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Application 10/943,489

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STATEMENT OF THE CASE
The invention relates to producing and harvesting meat products, i.e.,
tissue engineered meat, for consumption. (Spec. 1:10-12.) Claims 14-20
and 23-30, which are all the pending claims, are on appeal. Claim 14 is
representative and reads as follows:
14. A method of producing a non-human meat product for consumption
comprising
co-culturing non-human muscle cells and one or more non-human
cells selected from the group consisting of fat, cartilage, or bone cells
ex vivo,
seeding the co-cultured cells onto a support structure, and
growing the seeded cells to produce a non-human meat product,
wherein said method results in a non-human meat product for
consumption.

The Examiner rejected the claims as follows:
• claims 14, 15, 17-20, 24, 25 and 27-30 under 35 U.S.C. § 103(a) in
view of Van Eelen,2 Skaar3 and Naughton;4
• claim 16 under 35 U.S.C. § 103(a) in view of Van Eelen, Skaar,
Naughton and Holy;5
• claim 23 under 35 U.S.C. § 103(a) in view of Van Eelen, Skaar,
Naughton and Bowlin;6

2 Willem Frederick Van Eelen et al., WO 99/31223, published June 24,
1999.
3 Gary R. Skaar et al., US 5,746,649, issued May 5, 1998.
4 Gail K. Naughton, US 5,863,531, issued Jan. 26, 1999.
5 Chantal E. Holy, US 6,379,962 B1, filed Nov. 13, 1998, issued Apr. 30,
2002.
6 Gary L. Bowlin, US 6,592,623 B1, filed Aug. 31, 1999, issued Jul. 15,
2003.
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• claim 26 under 35 U.S.C. § 103(a) in view of Van Eelen, Skaar,
Naughton and Enerback.7
Claims 15-20 and 23-30 have not been argued separately. To address
the rejections of claims 16, 23, and 26, Appellant relies on the arguments
presented for claim 14. (App. Br. 16-17.) We select claim 14 as
representative. 37 C.F.R. § 41.37(c)(1)(vii).

OBVIOUSNESS
The Issue
The Examiner found that Van Eelen and Naughton suggested the
claimed method but for the step of co-culturing muscle cells with fat,
cartilage or bone cells. (Ans. 4-7.) The Examiner found, however, that
natural meat products were known to contain fat and sinew (id. at 5, citing
Skaar), and found that a low fat product more closely resembling natural
meat than Van Eelen’s product would have been desirable (id. at 6-8).
According to the Examiner, “[i]t is well known that how much fat one
desires in meat and other food is a matter of individual preference, and
providing fat in the meat product of Van Eelen et al is not unobvious.” (Id.
at 7.)
The Examiner similarly found that the advantages of obtaining a meat
product “more closely resembling natural meat from an animal” and
“provid[ing] cartilage connective tissue to hold the muscle tissue together as
in natural animal meat” suggested co-culturing muscle cells with
chondrocytes to form cartilage. (Id. at 6-8.)

7 Sven Enerbäck, US 6,709,860 B1, filed Jun. 6, 2000, issued Mar. 23,
2004.
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Appellants contend that “Van Eelen repeatedly emphasize that one of
the primary advantages of their in vitro meat product is the absence of non-
muscle cells” (App. Br. 7-9), “and in doing so plainly teaches away from the
inclusion of non-muscle cells in an in vitro meat product” (id. at 10).
According to Appellant, the Examiner erred in explicitly ignoring those
teachings. (Id. at 10-11.) Appellants also contend that the rejection is based
on hindsight, in view of the Examiner’s statements that “if” one “ignores”
problems associated with fat, bone and gristle, it would have been obvious to
add fat, bone or sinew to Van Eelen’s product. (Id. at 12-13.) Further, the
rejection fails to include an explicit or implicit indication of the level of skill
in the art (id. at 14), and “the references provide no rational underpinning
whatsoever for the Examiner’s legal conclusion of obviousness” (id. at 15).
The issues on appeal are:
did Van Eelen teach away from co-culturing muscle cells with fat
cells or with chondrocytes, compelling a conclusion of nonobviousness;
did the Examiner support the rejection with more than hindsight; and
did the rejection support the conclusion of obviousness with a rational
underpinning of facts.

Findings of Fact
1. We adopt the Examiner’s findings concerning the specific teachings
in the references.
2. The Examiner found that it would have been desirable “to obtain a
meat product more closely resembling natural meat from an animal in
view of Skaar et al disclosing that muscle tissue of animal meat
contains fat and connective tissue.” (Ans. 6.)
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3. The Examiner found it “well known that how much fat one desires in
meat and other food is a matter of individual preference.” (Id. at 7.)
4. The Examiner found that it would have been desirable “to provide
cartilage connective tissue to hold the muscle tissue together as in
natural animal meat.” (Id. at 7-8.)

Principles of Law
A rejection for obviousness must include “articulated reasoning with
some rational underpinning to support the legal conclusion.” KSR Int’l Co.
v. Teleflex Inc., 550 U.S. 398, 418 (2007), quoting In re Kahn, 441 F.3d 977,
988 (Fed. Cir. 2006). The proper question to ask is whether a person of
ordinary skill in the art, facing the wide range of needs created by
developments in the field of endeavor, would have seen a benefit to
combining the prior art teachings. KSR, 550 U.S. at 424; see also In re
Fulton, 391 F.3d 1195, 1200 (Fed. Cir. 2004) (the desirability of the
combination may arise from nature of the problem, teachings of references,
or the ordinary knowledge of those skilled in the art).

A reference may be said to teach away [from an Applicant’s
invention] when a person of ordinary skill, upon reading the
reference, would be discouraged from following the path set out
in the reference, or would be led in a direction divergent from
the path that was taken by the applicant. . . . in general, a
reference will teach away if 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.
. . .
Although a reference that teaches away is a significant factor to
be considered in determining unobviousness, the nature of the
teaching is highly relevant, and must be weighed in substance.
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A known or obvious composition does not become patentable
simply because it has been described as somewhat inferior to
some other product for the same use.

In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).
[O]bviousness must be determined in light of all the facts, and
there is no rule that a single reference that teaches away will
mandate a finding of nonobviousness. Likewise, a given course
of action often has simultaneous advantages and disadvantages,
and this does not necessarily obviate motivation to combine.
See Winner [Int'l Royalty Corp. v. Wang, 202 F.3d 1340,] 1349
n. 8 [(Fed. Cir. 2000)] (“The fact that the motivating benefit
comes at the expense of another benefit, however, should not
nullify its use as a basis to modify the disclosure of one
reference with the teachings of another. Instead, the benefits,
both lost and gained, should be weighed against one another.”).

Medichem, S.A. v. Rolabo, S.A., 437 F.3d 1157, 1165 (Fed. Cir. 2006).

Analysis
We first address Appellant’s contention that Van Eelen taught away
from co-culturing muscle cells with fat, cartilage, or bone cells, a question of
fact. We agree that Van Eelen taught that a tissue engineered product
containing only muscle cells had a number of advantages over natural meat.
Although Van Eelen stressed the advantages of making a cultured meat
product without fat, cartilage and bone cells, Van Eelen did not teach that a
co-cultured meat product could not or should not be made. Nor did Van
Eelen teach that efforts to make a co-cultured meat product would fail. To
the extent that Van Eelen can be understood to mean that meat with fat or
cartilage is inferior, a method of tissue engineering meat with fat or cartilage
does not become patentable merely because Van Eelen described the product
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as somewhat inferior to Van Eelen’s own product. See Gurley, 27 F.3d at
553.
As the Examiner found, it was “well known that how much fat one
desires in meat and other food is a matter of individual preference.” (FF 3.)
Appellant has not disputed that fact, and we weigh it in the analysis. First,
general knowledge may be weighed as a source of a suggestion to modify
prior art. See, e.g., Fulton, 391 F.3d at 1200. Second, Van Eelen’s method
provided meat for consumption, but Van Eelen did not take into account the
market for meat with some fat in it, i.e., individuals who prefer meat with
some fat content. The obviousness analysis may take known market
pressure into account. See KSR, 550 U.S. at 417 (“market forces can prompt
variations . . . . If a person of ordinary skill can implement a predictable
variation, § 103 likely bars its patentability”); KSR, 550 U.S. at 418 (“Often,
it will be necessary for a court to look to interrelated teachings of multiple
patents; the effects of demands . . . present in the marketplace; and the
background knowledge possessed by a person having ordinary skill in the
art, all in order to determine whether there was an apparent reason to
combine the known elements in the fashion claimed by the patent at issue”).
Appellant argues we should apply the reasoning of Ex parte Chang,
Appeal No. 2008-003915 (BPAI Nov. 20, 2008) to find Van Eelen’s
disclosure “sufficient to teach away from the use of non-muscle cells in an in
vitro meat product.” (Reply 8.) We acknowledge that “[a]n inference of
nonobviousness is especially strong where the prior art's teachings
undermine the very reason being proffered as to why a person of ordinary
skill would have combined the known elements.” See DePuy Spine, Inc. v.
Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1326 (Fed.Cir.2009). In
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this case, however, we think the Examiner has identified an undisputed
advantage to modifying Van Eelen’s method and that it is permissible to
weigh the gains and losses of the modification. See Medichem, 437 F.3d at
1165. While we agree that Van Eelen taught the advantage of the texture of
its meat product having no fat, cartilage or bone, we find that insufficient to
outweigh the advantage that a more natural product would have in satisfying
taste for those consumers with a preference for some fat.
Appellant argues that producing a more natural meat product would
“completely undermine the stated purpose of Van Eelen’s invention.”
(Reply 6.) Appellant exaggerates. The co-culturing method suggested as
obvious by the Examiner would retain many of the advantages of meat tissue
engineering that Van Eelen’s method addressed. See, e.g., the background
problems Van Eelen discussed at 1, none of which required mono-culture of
muscle cells for solution, and all of which would still have been addressed
by the suggested co-culture method.
In sum, while we agree with Appellant that Van Eelen taught that
mono-culturing the muscle cells would produce a product having textural
advantages over meat with fat, cartilage or bone, we do not agree that Van
Eelen taught away from co-culturing to the extent that a conclusion of
nonobviousness is compelled.
We next address Appellant’s argument that the rejection is based on
hindsight. (App. Br. 12.) We disagree. The Examiner found that it was a
fact that the amount of fat in meat is a matter of taste for consumers.
Appellant did not challenge the correctness of that fact, nor that it was
within the general knowledge in the art at the time of the invention.

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Appellant finds evidence of impermissible hindsight reasoning in the
Examiner’s explanation that “[i]f one ignores the calorie content of fat, it
would have been obvious to produce a meat containing fat” and “[i]f one
ignores the problems of bone and gristle, it would have been obvious to
produce meat containing bone and/or gristle.” (App. Br. 10 and 12.) The
Examiner based this reasoning on the findings that it was generally known
that some individuals would have wanted meat with fat in it, and would have
wanted a product resembling natural meat, i.e., having cartilage. Put another
way, consumers with those preferences would have “ignored” the calorie
content of fat because that was their taste. We don’t agree that the cited
sentences mean the reasoning was based only on Appellant’s disclosure.
Instead, we find that those passages were weighing the advantage of Van
Eelen’s non-fat meat against the fat containing product that some consumers
would have wanted. As discussed above, weighing the gains and losses of
modifying the prior art methods is permissible. We do not agree that the
Examiner used impermissible hindsight.

CONCLUSION
We find that Van Eelen did not teach away from co-culturing muscle
cells sufficiently to compel a conclusion of nonobviousness.
The Examiner supported the rejection with the undisputed finding that
the amount of fat in meat for consumption is a matter of preference, and
thereby supported the rejection with more than hindsight.
The rejection supported the conclusion of obviousness with a rational
underpinning of facts.

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SUMMARY
We affirm the rejection of claims 14, 15, 17-20, 24, 25 and 27-30
under 35 U.S.C. § 103(a) over Van Eelen, Skaar and Naughton.
We affirm the rejection of claim 16 under 35 U.S.C. § 103(a) over
Van Eelen, Skaar, Naughton and Holy.
We affirm the rejection of claim 23 under 35 U.S.C. § 103(a) over
Van Eelen, Skaar, Naughton and Bowlin.
We affirm the rejection of claim 26 under 35 U.S.C. § 103(a) over
Van Eelen, Skaar, Naughton and Enerback.

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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