Ex Parte 6,481,468 et al

Patent Trials and Appeals BoardJan 2, 2019

95000686 - (D) (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. Appeal 2017-010674 Reexamination Control 95/000,686 Patent US 6,481,468 B1 2 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 Appeal 2017-010674 Reexamination Control 95/000,686 Patent US 6,481,468 B1 3 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. Appeal 2017-010674 Reexamination Control 95/000,686 Patent US 6,481,468 B1 4 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. Appeal 2017-010674 Reexamination Control 95/000,686 Patent US 6,481,468 B1 5 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. Appeal 2017-010674 Reexamination Control 95/000,686 Patent US 6,481,468 B1 6 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 Appeal 2017-010674 Reexamination Control 95/000,686 Patent US 6,481,468 B1 7 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 Appeal 2017-010674 Reexamination Control 95/000,686 Patent US 6,481,468 B1 8 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. Appeal 2017-010674 Reexamination Control 95/000,686 Patent US 6,481,468 B1 9 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. Appeal 2017-010674 Reexamination Control 95/000,686 Patent US 6,481,468 B1 10 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. Appeal 2017-010674 Reexamination Control 95/000,686 Patent US 6,481,468 B1 11 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. Appeal 2017-010674 Reexamination Control 95/000,686 Patent US 6,481,468 B1 12 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