Ex Parte Voisin

Board of Patent Appeals and Interferences

Feb 24, 2006

09949704 (B.P.A.I. Feb. 24, 2006)

The opinion in support of the decision being entered
today was not written for publication and is not binding
precedent of the Board

UNITED STATES PATENT AND TRADEMARK OFFICE

_______________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES

_______________

Ex parte ERNEST A. VOISIN

______________

Appeal No. 2005-1558
Application 09/949,704
________
_______________

HEARD: January 26, 2006

_______________

Before OWENS, WALTZ, and FRANKLIN, Administrative Patent Judges.

WALTZ, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal from the primary examiner’s final rejection of
claims 5 and 27 through 38, which are all of the claims pending in this application. We
have jurisdiction pursuant to 35 U.S.C. § 134.
According to appellant, the invention is directed to a post-pressurized bacteria-
free raw shellfish (e.g., oysters) that has been subjected to high pressure in the range of
20,000 to 50,000 p.s.i. to render the product substantially free from pathogenic
Appeal No. 2005-1558
Application No. 09/949,704

2

naturally-occurring marine bacteria while the sensory characteristics of raw shellfish are
retained (Brief, unnumbered page 2).1 Appellants states that every claim is believed to
be “separately patentable” (Brief, unnumbered pages 3-4). However, appellant merely
recites the limitations of each claim and states that the “cited prior art fails to disclose”
these limitations. Without more specificity, we determine that appellant has not
complied with 37 CFR § 1.192(c)(7)(2003)(“[m]erely pointing out differences in what the
claims cover is not an argument as to why the claims are separately patentable”), and
thus the claims stand or fall together. Accordingly, we select claim 5 from the grouping
of claims and decide the ground of rejection in this appeal on the basis of this claim
alone. See In re McDaniel, 293 F.3d 1379, 1382-83, 63 USPQ2d 1462, 1464 (Fed. Cir.
2002). Representative independent claim 5 is reproduced below:
A post-pressurized raw shellfish that is pressure-shucked and free from
pathogenic naturally-occurring marine bacteria and which has undergone
treatment by exposing said raw shellfish to pressure of about between 20,000
p.s.i. and 50,000 p.s.i, said raw shellfish retaining sensory characteristic of raw
product.

1We refer to and cite from the Substitute Brief dated June 13, 2003.

Appeal No. 2005-1558
Application No. 09/949,704

3
The examiner has relied on Tesvich et al. (Tesvich ‘064), U.S. Patent No.
5,773,064, issued on June 30, 1998, as the sole evidence of unpatentability. Appellant
has relied on Tesvich et al. (Tesvich ‘601), U.S. Patent No. 5,976,601, issued on Nov. 2,
1999, as evidence for patentability (Brief, page 10; Exhibit 5). Claims 5 and 27-38 stand
rejected under 35 U.S.C. § 102(e) as anticipated by Tesvich ‘064 (Answer, page 3).
Based on the totality of the record, we affirm the examiner’s rejection on appeal
essentially for the reasons stated in the Answer, as well as those reasons set forth
below.
OPINION
The examiner finds that Tesvich discloses a raw shellfish product free of
pathogenic bacteria, including Vibrio vulnificus bacteria, where the shellfish is an oyster
with a flexible band closing its shell kept at a refrigerated temperature, and is presented
to the consumer in its shucked state (Answer, page 4). The examiner notes that the
claims are recited in product-by-process format and that patentability is determined
based on the product itself, not the method of producing the product (id.). Therefore the
examiner finds reasonable belief that the product of Tesvich ‘064 is the same as the
claimed product (id.).
Appellant agrees with the examiner that the claims on appeal are written in the
product-by-process format (Brief, unnumbered page 6; Answer, page 4). Appellant also
agrees that, with such a claimed format, it is the patentability of the product which must
be determined, not the process of making the product (id.; see In re Hirao, 535 F.2d 67,
Appeal No. 2005-1558
Application No. 09/949,704

4
69, 190 USPQ 15, 17 (CCPA 1976); and In re Wertheim, 541 F.2d 257, 271, 191
USPQ 90, 103 (CCPA 1976)). As held by a predecessor of our reviewing court:
... the lack of physical description in a product-by-process claim makes
determination of the patentability of the claim more difficult, since in spite
of the fact that the claim may recite only process limitations, it is the
patentability of the product claimed and not of the recited process steps
which must be established. We are therefore of the opinion that when the
prior art discloses a product which reasonably appears to be either
identical with or only slightly different than a product claimed in a product-
by-process claim, a rejection based alternatively on either section 102 or
section 103 of the statute is eminently fair and acceptable. As a practical
matter, the Patent Office is not equipped to manufacture products by the
myriad of processes put before it and then obtain prior art products and
make physical comparisons therewith. In re Brown, 459 F.2d 531, 535,
173 USPQ 685, 688 (CCPA 1972), emphasis in original.

In Brown, the court was in effect saying that the Patent Office bears a lesser burden of
proof making out a case of prima facie unpatentability for product-by-process claims
because of their peculiar nature than would be the case when a product is claimed in
the more conventional fashion. See In re Fessmann, 489 F.2d 742, 744, 180 USPQ
324, 326 (CCPA 1974).
We agree with the examiner that the product of Tesvich ‘064 reasonably appears
to be identical to the product recited in claim 5 on appeal. The raw shellfish of claim 5
on appeal is (1) post-pressurized and pressure shucked; (2) free from pathogenic
naturally-occurring marine bacteria; and (3) retains the sensory characteristics of raw
product (see claim 5 on appeal as reproduced above). Tesvich ‘064 discloses raw
shellfish which has been (1) shucked (col. 3, ll. 5-7 and 61-65); (2) is free of harmful
pathogenic bacteria (reduced to undetectable levels; col. 2, l. 65-col. 3, l. 1; col. 3, ll. 45-
Appeal No. 2005-1558
Application No. 09/949,704

5
49; and col. 6, ll. 19-24); and (3) retains its natural fluids or liquor, thus retaining its
natural flavor and raw texture (col. 3, ll. 1-4; col. 5, ll. 52-55; and col. 6, ll. 15-18). Thus
the only difference between the claimed raw shellfish and the product of Tesvich ‘064 is
that the claimed product has been post-pressurized and pressure-shucked while the
product of Tesvich ‘064 has been shucked conventionally, i.e., mechanically or manually
shucked. For reasons discussed below, we find no probative evidence that the
manually or mechanically shucked product of Tesvich ‘064 differs from the pressure-
shucked claimed product.
Appellant argues that the cited reference does not disclose a bacteria-free
product, as evidenced by later admissions of the same inventors (Tesvich ‘601)(Brief,
unnumbered page 6). Appellant argues that Tesvich ‘601 (Exhibit 5) acknowledges that
the heating of oysters in their shells to temperatures above 53 °C. (127.4 °F.) causes
edges of the meat to curl and shrink due to protein degradation, thus “cooking” the
oyster (Brief, unnumbered page 10). Appellants also argue that Tesvich ‘601 teaches
that the water bath temperature must be between 49 and 55 °C. to kill Vibrio vulnificus
bacteria (id.). Thus appellants assert that Tesvich ‘064 does not disclose a “practical”
method of eliminating bacteria, the product of the ‘064 patent is “cooked,” and undue
experimentation is required to follow the ‘064 patent to achieve the claimed result (Brief,
unnumbered pages 10-11).
Appeal No. 2005-1558
Application No. 09/949,704

6
These arguments are not persuasive. Tesvich ‘064 repeatedly teaches that the
shellfish product should be in a “raw, uncooked state” (e.g., col. 3, ll. 61-65) and that the
parameters of the process should be chosen so “as to not cook the mollusk ... the
mollusk remains in a raw state” (col. 5, ll. 50-52) while the pathogenic bacteria are
reduced to an undetectable level (col. 2, ll. 44-46; col. 2, l. 66-col. 3, l. 4). We determine
that it would be only routine experimentation for one of ordinary skill in this art to
optimize the immersion time and water bath temperature, depending on the grade size
of the oyster, to produce the desired uncooked bacteria-free raw oyster product of
Tesvich ‘064 (see col. 5, ll. 37-56; col. 6, ll. 19-31). See In re Hafner, 410 F.2d 1403,
1405, 161 USPQ 783, 785 (CCPA 1969)(different standards for enablement under
section 112 for an application and a prior art reference); PPG Indus., Inc. v. Guardian
Indus. Corp., 75 F.3d 1558, 1564, 37 USPQ2d 1618, 1623 (Fed. Cir. 1996)(“The fact
that some experimentation is necessary does not preclude enablement; what is required
is that the amount of experimentation ‘must not be unduly extensive’ [Citation omitted]”).
We note that Tesvich ‘064 specifically teaches that the prior art uses heating and
cooling to destroy unwelcome bacteria but the temperatures and duration employed are
sufficient to cook the meat, while Tesvich desires to produce a product in the raw state
that is bacteria-free (col. 2, ll. 8-23). Finally, we note that Tesvich ‘601 merely
confirms the above discussed optimization, teaching that different temperatures and
time durations have been found to give excellent results, depending on the size of the
oysters and the internal temperature of the oyster meat (col. 1, ll. 51-62; col. 2, ll. 25-42;
Appeal No. 2005-1558
Application No. 09/949,704

7
col. 4, ll. 26-39). If the temperature of the water bath and duration of the heat treatment
were sufficient to “cook” the oyster meat of selected oysters (Tesvich ‘601, col. 4, ll.
26-39), one of ordinary skill in this art would not have employed these conditions in view
of the teachings of Tesvich ‘064 discussed above.
Appellant argues that the claimed terms “post-pressurized” and “pressure-
shucked” are terms describing physical characteristics of the product (Brief,
unnumbered page 11; Reply Brief, page 4). Appellants further argue that evidence has
been submitted that shows the end product of the claims differs from the end product of
the reference (Brief, unnumbered page 6). This evidence comprises Exhibits 1 through
4 and Exhibit A, including the statement of Dr. Kilgen, the letter from Drs. Bell and
Bankston, the studies by Dr. Xu, and the Declarations under 37 CFR § 1.132 by Mr.
Nelson and Mr. Sunseri (Brief, unnumbered pages 7-10; Reply Brief, pages 4-8
including Exhibit A). We do not find this evidence persuasive for the following reasons.
The Kilgen letter (Exhibit 1) is not probative evidence since the letter only refers
to the processes of “thermal or heat processing” and “high pressure processing (HPP)”
in general, with no specific statement regarding the specific process as now claimed on
appeal versus the specific heat treatment of Tesvich ‘064 (see the Answer, page 6).
The conclusions set forth in the Kilgen letter specifically depend “on the level of heat,”
indicating that new permanent covalent bonds may be formed (third full paragraph, last
sentence, emphasis added). Accordingly, there is no conclusive evidence in this letter
that the oysters as claimed in claim 5 on appeal differ from those produced by the
Appeal No. 2005-1558
Application No. 09/949,704

8
process of Tesvich ‘064.
The letter from Drs. Bell and Bankston (Exhibit 2) has the same deficiency as
discussed above, namely it only refers generically to oysters produced by “Motivatit’s
high pressure process (HPP)” and “Ameripure,” but does not specifically identify the
processes used to produce these oysters. Similarly, the letter from Dr. Bell and the
accompanying study by Dr. Xu (Exhibit A) do not specify the exact conditions under
which the oysters were produced. Finally, we note that the Bell-Bankston letter (Exhibit
2) admits that the final product oyster from Motivatit and Ameripure are both “vibrio free”
and only differ in physical condition “depending on the application of the shucking knife”
(Exhibit 2, third paragraph; see the Answer, page 6).
The Nelson Declaration is not convincing since this Declaration again does not
identify the specific process conditions used to produce the oysters tested (Declaration,
page 3). The Declarant further states that the oyster meat’s outer membrane is
“usually” cut with the Tesvich oyster but does not specify if this was the product actually
tasted (Declaration, page 3). Declarant also states that the Tesvich process is “very
difficult” to control and results in “over cooking” the less dense oysters with attendant
curling and shrinkage of the meat (Declaration, page 2). However, as correctly noted by
the examiner (Answer, page 7) and discussed above, the Tesvich ‘064 process results
in control of temperature and duration of immersion, depending on oyster size, to not
cook the oyster meat. Declarant specifically states that the Tesvich process involves
Appeal No. 2005-1558
Application No. 09/949,704

9
batches of oysters “containing oysters of varying sizes and densities” (Declaration, page
2). This statement goes directly against the teachings of Tesvich ‘064, who teaches
that “[d]uring separation step 14 the product is also separated into grades according to
size” (col. 5, ll. 11-13). Tesvich ‘064 also teaches that the conditions used in his “mild
heat treatment process” that are necessary to eliminate bacteria and allow the oyster to
remain uncooked depends on the time, temperature and “grade size” of the oyster (col.
5, ll. 44-47). Accordingly, there is no convincing evidence that the final oyster product
tasted by Nelson is the final oyster product of Tesvich ‘064.
The Sunseri Declaration is essentially the same as the Nelson Declaration and
we find the same deficiencies in this Declaration. Accordingly, we adopt our comments
from above.
For the foregoing reasons and those stated in the Answer, we determine that the
examiner has established a prima facie case of anticipation based on the reference
evidence. Based on the totality of the record, including due consideration of appellant’s
arguments and evidence, we determine that the prima facie case of anticipation has not
been adequately rebutted. See In re Brown, supra. Therefore we affirm the examiner’s
rejection of claim 5, and claims 27 through 38 which stand or fall with claim 5, under 35
U.S.C. § 102(e) as anticipated by Tesvich ‘064.
OTHER ISSUES
In the event of further prosecution of this application or continuing applications
before the examiner, the examiner and appellant should consider the patentability of the
Appeal No. 2005-1558
Application No. 09/949,704

10
claimed subject matter now on appeal in view of Yasushi et al. (Yasushi), Japanese
unexamined patent application No. H4-356156, published December 9, 1992. This prior
art reference was cited and applied in related application no. 09/121,725, and a
rejection of the process claims in 09/121,725 was affirmed by the Board of Patent
Appeals & Interferences in a decision mailed March 10, 2003 (see the Brief,
unnumbered page 1; Appl. No. 09/121,725 is now on appeal as Appeal No. 2005-1101).
Since the issue in Appl. No. 09/121,725 is anticipation of the process of making the
oyster product now claimed in this application, the Yasushi reference would appear
relevant to the product claims.
SUMMARY
The decision of the examiner is affirmed.
Appeal No. 2005-1558
Application No. 09/949,704

11
No time period for taking any subsequent action in connection with this appeal
may be extended under 37 CFR § 1.136(a)(1)(iv)(2004).
AFFIRMED

TERRY J. OWENS ) Administrative
Patent Judge )
)
)
)
THOMAS A. WALTZ ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
) )
BEVERLY A. FRANKLIN )
Administrative Patent Judge )

TAW/tf

Appeal No. 2005-1558
Application No. 09/949,704

12
KEATY PROFESSIONAL LAW CORPORATION
THOMAS S. KEATY
2533 AMERICAN WAY
PORT ALLEN, LA 70767