Ex Parte 6,481,468 et al

Patent Trial and Appeal Board

Jan 2, 2019

95000686 (P.T.A.B. Jan. 2, 2019)

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.
95/000,686 09/12/2012 6,481,468 415553US 110 RX 3930
22850 7590 01/02/2019
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
EXAMINER
ENGLE, PATRICIA LYNN
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
01/02/2019 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

SHIBUYA KOGYO CO., LTD.
v.
STEUBEN FOODS, INC.
____________________

Appeal 2017-010674
Reexamination Control 95/000,686
Patent US 6,481,468 B11
Technology Center 3900
____________________

Before JAMES T. MOORE, PHILLIP J. KAUFFMAN and
BRETT C. MARTIN, Administrative Patent Judges.

MARTIN, Administrative Patent Judge.

DECISION ON APPEAL

1 Issued to Taggart on November 19, 2002.
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STATEMENT OF CASE
Patent Owner appeals from the Examiner’s rejection of claims 1, 2, 4–
7, 9–13, 16, 17, 20–27 and 36–55. Claims 14 and 28–31 were cancelled and
claims 3, 8, 15, 18, 19, and 32–35 are not subject to reexamination. PO
App. Br. 5. We have jurisdiction under 35 U.S.C. §§ 134 and 315.
We AFFIRM.

THE INVENTION
Patent Owner’s claims are directed “to an apparatus and method for
providing container product filling in an aseptic processing apparatus.”
Spec. col. 1, ll. 1 –18. Claim 1, reproduced below, is illustrative of the
claimed subject matter:
1. A method comprising: controlling the flow of an aseptic
product using a valve; surrounding a region where the [asepetic]
aseptic product exits the valve with a sterile region wherein the
sterile region is a sterile tunnel; and controlling the opening or
closing of the valve with a sealed actuator, wherein the sealed
actuator is surrounded with the sterile region.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Inada
Andersson
Takei
Araki
Kaga
Sugitomo
Shigemetsu
Nishino
US 4,446,674
US 4,984,601
JP H4-154501
JP H01-182226
EP 0 436 214 A1
JP H06-48418
JP 63294392
JP H09-110094
May 8, 1984
Jan. 15, 1991
May 27, 1992
July 20, 1989
July 10, 1991
Feb. 22, 1994
Dec. 1, 1988
Apr. 28, 1997
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Satomi, Hiroharu, “Food Preservation Technology and Its Related
Technologies (2) Aseptic Filling and Packaging” (1994).

David, Jairus, R.D., et al., “Aseptic Processing and Packaging of Food: A
Food Industry Perspective” (1996).

Buchner, N., “Aseptic Filling of Glass and Plastic Containers,” Special Print
of ZFL Magazine (1989).

Nelson, Philip E., et al., “Principles of Aseptic Processing and Packaging,”
The Food Processors Institute (1993).

Miyazaki, Kazuo, “Development of PET Bottle In-line Formation Aseptic
Filling Line,” Packing Technology (1998).

REJECTIONS
The Examiner made the following rejections:
Claims 36 and 41 stand rejected under 35 U.S.C. § 112 first paragraph
as failing to comply with the written description requirement. RAN 6.
Claims 36, 41, and 52 stand rejected under 35 U.S.C. § 112 second
paragraph as being indefinite. RAN 7.
Claims 1, 2, 5, and 7 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Takei. RAN 8.
Claim 7 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Takei. RAN 9.
Claim 42 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Takei and Buchner. Id.
Claims 1, 2, 5, 7, 9, 10, 13, 20–22, 24–26, 36, 40, 42, 44, and 45 stand
rejected under 35 U.S.C. § 103(a) as being unpatentable over Takei and
Araki. RAN 10.
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Claims 11–13, 21–23, 25–27, 36, 40, and 46–50 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Takei, Araki, and David.
RAN 17.
Claims 36, 40, 43, 46–48, and 50 stand rejected under 35 U.S.C. §
103(a) as being unpatentable over Takei, Araki, and Miyazaki. RAN 24.
Claims 37–39 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Takei, Araki, David, and Satomi. RAN 28.
Claims 37–39 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Takei, Araki, Miyazaki, and Satomi. RAN 29.
Claims 41, 43, 44, and 46–50 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Takai, Araki, and Nelson. RAN 30.
Claims 42 and 43 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Takai, Araki, and Buchner. RAN 33.
Claims 1, 2, 5, 7, 9–13, 20–27, and 42–47 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Takei and Satomi. RAN 34.
Claims 11, 12, 23, and 27 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Takei, Satomi, and Miyazaki. RAN 42.
Claim 42 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Takei, Satomi, and Buchner. Id.
Claims 41 and 44 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Takei, Satomi, and Nelso. Id.
Claims 48–50 stand rejected under 35 U.S.C §103(a) as being
unpatentable over Takei, Satomi, and Araki. RAN 43.
Claims 1, 4–7, and 9 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Inada. RAN 45.
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Claims 9–13, 20–27, and 45 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Inada and Satomi. RAN 46.
Claims 9, 14, and 28–31 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Inada and David. RAN 50.
Claims 16 and 17 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Inada and Andersson. RAN 52.
Claims 46 and 47 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Inada, Andersson, and David. RAN 53.
Claim 48–50 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Inada, Andersson, David, and Araki. RAN 54.
Claim 46–50 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Inada, Andersson, Nelson, and Araki. RAN 56.
Claim 1 stands rejected under 35 U.S.C. § 102(b) as being anticipated
by Kaga. RAN 58.
Claims 1, 5, and 7 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Nishina and Sugitomo. RAN 59.
Claims 16 and 17 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Nishino and Andersson. RAN 60.
Claims 16 and 17 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Nishino, Andersson, and Satomi. RAN 61.
Claim 52–55 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Takei, Satomi, and Shigemetsu. RAN 62.
Claim 52–55 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Takei, Satomi, Shigemetsu, and David. RAN 63.
Claim 52–55 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Takei, Araki, and David. RAN 65.
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Claim 52–55 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Takei, Araki, Shigemetsu, and Nelson. RAN 67.
Claim 52–55 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Takai, Araki, Shigemetsu, and Miyazaki. RAN 68.
Claim 52–55 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Inada, Andersson, Shigemetsu, and Satomi. RAN 69.
Claim 52–55 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Inada, Andersson, Shigemetsu, and Nelson. RAN 71.
Claim 52–55 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Inada, Andersson, Shigemetsu, and David. RAN 72.
Claim 52–55 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Inada, Andersson, Shigemetsu, and Miyazaki. RAN 73.

ANALYSIS
Patent Owner’s Evidence
As Requester states, Patent Owner relies “on material that was
expunged from the record, which reliance is for precisely the same purpose
to which it was originally found objectionable and therefore expunged.”
Resp. Br. 4; see also RAN 3. The Examiner concluded that the evidence
was untimely and therefore expunged it from the record. Id. The evidence
in question is from a different, though related proceeding (IPR2014-00054),
to which Requester was not a party and was not able “to depose the
Declarants or respond with Declarations or evidence of its own.” Resp. Br.
2. Patent Owner relies on the fact that the Examiner initialed an IDS
containing the evidence as proof that it was made of record, but as Requester
points out, “just 2 months after the registration of the IDS on which PO now
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relies, the Examiner, citing MPEP 2672(III), determined that the submission
was improper” and expunged it from the record. Id. Given the fact that the
Examiner is both correct that the evidence was untimely and that such
evidence was expunged after submission of the IDS, we agree that the
evidence in question is not properly before us and cannot be relied upon.
Claim Construction
As with our prior Decision (Dec.) in a related case, the construction of
the term “aseptic” is at issue in this reexamination. For the same reasons as
stated in our prior Decision, we decline to interpret aseptic in the narrow
manner set forth by Patent Owner and agree with Requester and the
Examiner that “the claims should not be limited to any specific sterilant, nor
its attendant regulatory restrictions.” Resp. Br. 8, see also Dec. 19–22.
As to the regulatory restrictions, we note that the term aseptic refers to
the reduction in microorganisms and so a “level” of aseptic would only deal
with an amount of such reduction. Patent Owner attempts to read into this
term a limitation relating to residual sterilant, but residual sterilant has
nothing to do with a level of aseptic and as noted above only applies when
certain sterilants are used. Even if we were to agree with Patent Owner that
aseptic is bound by FDA standards, the level, as noted by the Examiner, is
merely “commercially sterile.” RAN 76. Although the FDA regulations
may refer to an amount of residual sterilant in some cases, the residual
sterilant requirement is not part of the level of aseptic required by the
regulations/standards. In other words, even if residual sterilant is above an
allowed amount such does not render the item unsterile, it just means that,
while sterile, too much sterilant is left in the container to meet other FDA
guidelines. Furthermore, some claims specifically require the .5 ppm
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residual sterilant and so reading this limitation into the claims would violate
the doctrine of claim differentiation.
Patent Owner argues that this construction would run afoul of prior
decisions by the Board in related cases because the Board found that “[i]f
hydrogen peroxide is used as the sterilant, claim 20 requires compliance
with the FDA standard level of residual hydrogen peroxide.” Dec. in
IPR2015-000249 at 28). First, we note that Patent Owner has not stated
whether any dependent claims in the related cases specifically added the
residual sterilant limitation so as to invoke the doctrine of claim
differentiation. In fact, in reviewing the patent at issue in the prior IPR,
there were no claims specifically reciting the residual sterilant requirements
depending from claim 20 and as such, this alone distinguishes the present
case from the Board’s prior construction. Because the Board did not have
before it the issue of whether the level of aseptic should be considered
separately from the residual sterilant, they only looked at the FDA standards
as a whole. Although there may be an FDA requirement on residual
sterilant, such is not part of the level of aseptic separately required by the
FDA standards once these two concepts are separated from one another as
required by the claim drafting in the present case.
Additionally, we reject Patent Owner’s attempt to limit “aseptic
product” to low-acid products. As Requester correctly notes, “‘low acid’
products are just one example of aseptic products disclosed” in the
Specification. Resp. Br. 10; see also RAN 75–76. Accordingly, we do not
limit “aseptic product” only to low-acid products as proposed by Patent
Owner.
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Rejections to Be Addressed
Although there are a total of 77 claims rejected by the Examiner, we
agree with Requester that “PO only identifies the rejections of five claims –
Claims 9, 20, 23, 46, and 52 – as issues to be addressed on appeal.” Resp.
Br. 12–13. Patent Owner argues that the other claims were, in fact, argued,
but, as admitted by Patent Owner, the arguments against those claims rely on
Patent Owner’s faulty claim constructions, which as noted above, we do not
adopt. Rebuttal Br. 13. Accordingly, Patent Owner’s arguments, while
made, fail as to all rejections other than those listed by Requester. As such,
we affirm the Examiner’s rejection of all claims other than 9, 20, 23, 46, and
52 based on the claim construction arguments.
Claim 23 and 46
As Requester correctly notes, Patent Owner’s arguments as to these
rejections refer to limitations not found in claims 23 and 46. See Resp. Br.
13–14. Patent Owner also argues that the Examiner’s rejections are
improper because “the Examiner did not even attempt to explain how
Miyazaki’s bottling speed could be incorporated into either Takei or Inada.”
Rebuttal Br. 13. Regardless, the Examiner relies upon David for teaching
the claimed bottle speed, finding that “David teaches line speeds for aseptic
packaging of up to 500 containers per minute.” RAN 20. Patent Owner’s
rebuttal to David is that the speeds recited therein cannot meet the .5 ppm
sterilant threshold (App. Br. 34), but as noted above, we do not construe
aseptic to require the sterilant threshold. As such, Patent Owner’s argument
is inapposite. The remainder of Patent Owner’s arguments regarding these
claims relies on Patent Owner’s faulty claim constructions. Accordingly, we
sustain the Examiner’s rejections of claims 23 and 46.
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Claim 9
Patent Owner argues that the Examiner’s rejection is improper
because no cited prior art achieved a 6 log reduction in spore organisms.
Rebuttal Br. 9. Patent Owner specifically addresses Inada, David, and Takei
as failing to teach this limitation, but does not mention Araki, which is also
used to reject these claims.2 According to the Examiner, Araki meets this
level of spore reduction because it “indicates that there is a desire to kill all
bacteria.” RAN 15. The Examiner further concludes that “it would have
been obvious to one of ordinary skill in the art from the teaching of Takei
and JP ’226 [Araki] of the art combination to have sterilized the containers
of Take to the extent where the product is virtually devoid of bacteria,
including to an extent having at least about a 6 log reduction in spores.”3
RAN 16. Patent Owner does not rebut these findings and conclusions
relating to Araki. Patent Owner also argues that the Examiner relies on
inherency to teach the 6 log reduction, but as noted above, the Examiner
specifically concluded that it would have been obvious to achieve that level
of reduction, not that it was inherent.
Regardless of the teachings of Inada, David, and Takei, we see no
persuasive basis for overturning the Examiner’s findings and conclusions
regarding Araki based on the arguments before us. As such, we sustain the
Examiner’s rejections of claims 9, 21, and 25 over combinations that include
Araki.

2 The Examiner likewise specifically finds that Satomi’s teaching of being
virtually devoid of bacteria would include the 6 log reduction. RAN 19.
3 We note that this is in direct contradiction to Patent Owner’s assertion that
“[t]he Examiner fails to even mention the claimed 6 log reduction.” App.
Br. 42.
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Claim 52
As with other rejections, Patent Owner relies primarily upon its
arguments with respect to their construction of “aseptic” which we have
already addressed above. Patent Owner also argues that the rejections of
claim 52 are deficient for failing to explain why the prior art “could be
successfully modified to achieve FDA-compliant bottling rates of greater
than 100 bottles per minute as recited in claims 23, 46, and 52.” App. Br.
18. As noted by Requester, however, neither claim 46 nor claim 52 includes
nor depends from a claim with the bottle per minute recitation. Resp. Br. 17.
We also agree with Requester that Shigemetsu (JP ’392), upon which
the Examiner bases the rejections of claim 52 is never discussed by Patent
Owner. Resp. Br. 16. Likewise, Patent Owner does not address Araki or
Andersson, both of which are present in many of the claim 52 rejections.
Accordingly, we sustain the Examiner’s rejections of claim 52.
As to indefiniteness, we agree with the Patent Owner that claim 52 is
definite. The only basis upon which the Examiner rejects claim 52 is a lack
of antecedent basis for the term “the pressurized tank.” Patent Owner admits
that claim 52 lacks antecedent basis, but also points out that “the
surrounding claim language as well as the specification provide ample
context to clearly define the metes and bounds of the claimed invention”
such that one of ordinary skill in the art would understand the recitation to
mean “a pressurized tank.” App. Br. 41. In this instance, we conclude that
one of ordinary skill in the art would reasonably ascertain the proper
meaning of the claim. Accordingly, we do not sustain the indefiniteness
rejection of claim 52.
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Claim 20
As pointed out by Requester, “PO presents no argument whatsoever
with respect to claim 20.” Id. As such, we agree with Requester that these
rejections should be summarily affirmed.

DECISION
For the above reasons, we AFFIRM the Examiner’s decision to reject
claims 1, 2, 4–7, 9–13, 16, 17, 20–27 and 36–55.
Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. §§ 1.956 and 41.77(g).
In the event neither party files a request for rehearing within the time
provided in 37 C.F.R. § 41.79, and this decision becomes final and
appealable under 37 C.F.R. § 41.81, a party seeking judicial review must
timely serve notice on the Director of the United States Patent and
Trademark Office. See 37 C.F.R. §§ 90.1 and 1.983.

AFFIRMED