Ex Parte Anagnostou et al

Patent Trial and Appeal BoardJun 15, 2018

13853127 (P.T.A.B. Jun. 15, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/853, 127 03/29/2013 24504 7590 06/19/2018 THOMAS I HORSTEMEYER, LLP 3200 WINDY HILL ROAD, SE SUITE 1600E ATLANTA, GA 30339 FIRST NAMED INVENTOR Angeliki Anagnostou 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 221402-1010 3579 EXAMINER TURNER, FELICIA C ART UNIT PAPER NUMBER 1793 NOTIFICATION DATE DELIVERY MODE 06/19/2018 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): uspatents@tkhr.com ozzie. liggins@tkhr.com docketing@thomashorstemeyer.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ANGELIKI ANAGNOSTOU, JUHANA AHOLA, DOMINICUS BRENDLER, PETER VAN KUIK, HENK JAN VAN LENT, JUKKA HIETALA, and JEROEN MARTENS Appeal2017-007256 Application 13/853, 127 Technology Center 1700 Before JAMES C. HOUSEL, CHRISTOPHER L. OGDEN, and SHELDON M. McGEE, Administrative Patent Judges. HOUSEL, Administrative Patent Judge. DECISION ON APPEAL 1 Pursuant to 35 U.S.C. Â§ 134(a), Appellant2 appeals from the Examiner's decision finally rejecting claims 1-28. We have jurisdiction over the appeal under 35 U.S.C. Â§ 6(b ). 1 Our Decision refers to the Specification (Spec.) filed March 29, 2013, the Examiner's Final Office Action dated June 16, 2016, Appellant's Appeal Brief (Appeal Br.) filed November 15, 2016, the Examiner's Answer (Ans.) dated February 9, 2017, and Appellant's Reply Brief (Reply Br.) filed April 10, 2017. 2 Appellant is the Applicant, Niacet B.V., which is identified as the real party in interest. Appeal Br. 3. Appeal2017-007256 Application 13/853, 127 We AFFIRM. STATEMENT OF THE CASE The invention relates to a foodstuff preservation composition comprised essentially of potassium acetate and alkali metal diacetate, methods of use of this composition to preserve foodstuff, and to a cooked meat product including this composition (Spec. 1:10-13). Claim 1, reproduced below from the Claims Appendix to the Appeal Brief, is illustrative of the subject matter on appeal. 1. A foodstuff preservation composition comprising potassium acetate and alkali metal diacetate, wherein the weight ratio of potassium acetate:alkali metal diacetate ranges from 1.5 to 9: 1. REJECTIONS The Examiner maintains, and Appellant requests our review of, the following grounds of rejection under 35 U.S.C. Â§ I03(a): 1. Claims 1--4, 8-18, and 23-25 as unpatentable over Campano 3 in view ofMing; 4 2. Claims 5-7 and 19-22 as unpatentable over Campano in view of Ming, and further in view of Albrecht; 5 and 3 WO 2011/014669 Al, published February 3, 2011 ("Campano"). The Examiner and Appellant refer to this reference by the name of the applicant company. However, following the standard convention of referring to a patent application publication by the last name of the first-named inventor, we refer to this reference as "Campano" in this Decision. 4 US 2003/0108648 Al, published June 12, 2003 ("Ming"). 5 US 3,118,771, issued January 21, 1964 ("Albrecht"). 2 Appeal2017-007256 Application 13/853, 127 3. Claims 26-28 as unpatentable over Hull. 6 ANALYSIS Rejection 1: Appellant argues claims 1, 4, and 26 separately. We, therefore, group claims 1-3, 8-18, 23 and 24 as group 1 with claim 1 as representative, claims 4--7, 19-22, and 25 as group 2 with claim 4 as representative, and claim26 as group 3. 37 C.F.R. Â§ 4I.37(c)(l)(iv) (2016). After review of the opposing positions articulated by Appellant and the Examiner, the applied prior art, and Appellant's claims and Specification disclosures, we determine that the Appellant's arguments are insufficient to identify reversible error in the Examiner's obviousness rejections. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011). Accordingly, we affirm the stated obviousness rejections for substantially the fact findings and the reasons set forth by the Examiner in the Examiner's Answer. We offer the following for emphasis only. Claim 1 The Examiner rejects claims 1--4, 8-18, and 23-25 under 35 U.S.C. Â§ I03(a) as unpatentable over Campano in view of Ming. The Examiner finds Campano discloses a food preservative composition containing potassium lactate and an alkali metal diacetate, and that this composition can more specifically contain potassium acetate and potassium diacetate (Ans. 6 WO 2005/034640 Al, published April 21, 2005 ("Hull"). The Examiner and Appellant refer to this reference by the applicant, WTI, Inc. However, as above, following the standard convention of referring to a patent application publication by the last name of the first-named inventor, we refer to this reference as "Hull" in this Decision. 3 Appeal2017-007256 Application 13/853, 127 2). Although the Examiner finds Campano discloses ratios of potassium lactate to alkali metal diacetate of 4:1 and 8:1, the Examiner acknowledges that Campano fails to teach the ratio of potassium acetate to alkali metal diacetate in the range recited in claim 1 (id.). However, the Examiner finds Ming discloses an antibacterial composition containing salts of organic acids, such as sodium acetate, sodium diacetate, potassium acetate, and potassium lactate, individually or mixtures thereof, and that such compositions can be used in foodstuff, such as meat (id. at 2-3). Therefore, the Examiner concludes that it would have been obvious to modify Campano' s composition by substituting potassium acetate for the potassium lactate because Ming and Campano disclose both organic acid salts as alternatives for use in preventing microbial growth in foodstuff (id. at 3 (citing In re Kerkhoven, 626 F.2d 846, 850 (CCPA 1980) (prima facie obvious to combine two or more compositions, each of which is taught to be useful for the same purpose, to form a third composition for the same purpose; In re Crockett, 279 F.2d 274 (CCPA 1960); and Ex parte Quadranti, 25 USPQ2d 1071 (BPAI 1992)). In doing so, the Examiner notes that the resulting ratio of potassium acetate to metal alkali diacetate would fall within the claimed range (id.). Appellant argues that Campano teaches away from the substitution of potassium lactate in a three component composition with potassium acetate because doing so would render Campano unsatisfactory for its intended purpose and/or change its principle of operation (Appeal Br. 13). In this regard, Appellant asserts that Campano requires, as part of its three component composition, three different specific types of acids, a lactic acid, propionic acid, and acetic acid (id. at 14). Because Campano's composition 4 Appeal2017-007256 Application 13/853, 127 always includes these three different acids, and does not describe them as alternatives of each other, this composition must include a lactic acid (id.). In addition, Appellant urges that Campano discloses test data demonstrating that the addition of potassium diacetate to the potassium lactate solution provides no improvement in antimicrobial activity (id. at 17, citing Campano Fig. IA; see also id. at 20). In other words, Appellant contends that Campano' s inventive composition relies on the particular combination of these three different acids (id. at 14). As such, the Examiner's rejection impermissibly substitutes Campano' s potassium lactate component with potassium acetate, thereby eliminating one of Campano 's required three components (id.). Notwithstanding the above arguments, Appellant contends the Examiner admits that Campano fails to disclose the claimed ratio of potassium acetate to alkali metal diacetate (Appeal Br.17). "Appellant[] submit[ s] that the weight ratio as recited in claim 1 is a result-effective variable that is not acknowledged as such by the cited art" (id.). 7 Appellant further argues that Ming fails to teach or suggest acetic acid or salts thereof could be substituted for Campano 's lactic acid component with a reasonable expectation of success (Appeal Br. 15). Appellant asserts that Ming merely lists a broad and general disclosure of many types of acids, without any particular characteristic any acid that would suggest substitution of acetate for Campano' s lactate (id. at 16 ( citing Leo Pharm. Products, Ltd. v. Rea, 726 F.3d 1346, 1356 (Fed. Cir. 2013)). Appellant contends that only 7 We note Appellant states, "the weight ratio of the potassium acetate to an alkali metal diacetate is a result-effective variable" (Appeal Br. 18), but we understand Appellant's argument to be that the prior art fails to recognize that this ratio is indeed a result-effective variable. 5 Appeal2017-007256 Application 13/853, 127 in the context of Ming's composition, which includes propionibacterial metabolite and lytic enzyme or !antibiotics, that the organic acids could be considered interchangeable (id. at 19). Moreover, Appellant asserts that Ming teaches the organic acid is an optional component, but fails to teach the amount that should be included or "give any consideration to the properties that the organic acid may be included as" (id.). As such, Appellant contends the organic acid in Ming would not be viewed as contributing to the bacteriostatic/bactericidal effect of Ming's composition (id.). Appellant's arguments are not persuasive of reversible error. When the prior art teaches away from a combination, that combination is more likely to be nonobvious, KSR Int 'l. Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007), but to teach away, a reference must discourage one of ordinary skill in the art from following the path set out in the reference, or lead that person in a direction divergent from the path that was taken by the applicant. In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). Various types of teachings may support a finding of "teaching away." These include known disadvantages in old devices that would naturally discourage the search for new inventions, teachings leaving the impression that the product would not have the property sought by the applicant, and reference combinations that would produce a seemingly inoperative device. Id. ( citations omitted). "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." Id. For instance, when there is nothing within the reference teaching that the claimed element should not, or cannot, be used, and further cited prior art teaches the propriety of employing the 6 Appeal2017-007256 Application 13/853, 127 missing element, the teachings of both reference must be weighed together. Para-Ordnance Mfg., Inc. v. SGS Importers Int'!, Inc., 73 F.3d 1085, 1090 (Fed. Cir. 1995). Teaching an alternative or equivalent method, however, does not teach away from the use of a claimed method. See In re Dunn, 349 F.2d 433, 438 (CCPA 1965). For example, "[a] reference does not teach away, however, if it merely expresses a general preference for an alternative invention but does not 'criticize, discredit, or otherwise discourage' investigation into the invention claimed." DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) (citing In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004)). In addition, a particular reference's mere silence about a particular feature does not tend to teach away from it, especially if it is disclosed elsewhere in the prior art. Syntex (US.A.) LLC v. Apotex, Inc., 407 F.3d 1371, 1380 (Fed. Cir. 2005). Rather, teaching away requires "clear discouragement" from implementing a technical feature. In re Ethicon, Inc., 844 F.3d 1344, 1351 (Fed. Cir. 2017). "A reference teaches away when 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." Santarus, Inc. v. Par Pharm., Inc., 694 F.3d 1344, 1354 (Fed. Cir. 2012) (quoting Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006) (quotations omitted)). Here, as the Examiner finds (Ans. 10-11), there is nothing in Campano that discourages the substitution of one organic acid or salt thereof with another different organic acid or salt. Thus, although Campano discloses a three component composition, Appellant fails to direct our attention to any disclosure in Campano that criticizes, discredits, or 7 Appeal2017-007256 Application 13/853, 127 otherwise discourages substitution of the lactic acid component with an acetic acid component. While it is true that Campano' s inventive composition includes lactic acid, this fact alone does not establish a teaching away of compositions that do not include lactic acid. Indeed, in discussing each of the three organic acids to be used in Campano 's composition, Campano teaches that the amount of the organic acid can, in conjunction with the other organic acids, be sufficient to inhibit the growth of pathogenic microbes (see Campano 10:17-19, 11:14--16, 12:12-14). Therefore, the ordinary artisan would have reasonably concluded that each of the three named organic acids in Campano' s composition possess pathogenic microbial growth inhibiting activity which Campano combines for optimal benefit. With regard to Appellant's argument that Campano's test data demonstrates that the addition of potassium diacetate to the potassium lactate solution provides no improvement in antimicrobial activity, the Examiner correctly notes that the underlying rejection does not substitute potassium diacetate for potassium lactate, but instead substitutes potassium acetate for potassium lactate (Ans. 13-14). Furthermore, Campano's composition A contains 60 wt% potassium lactate only, while composition D contains 48 wt% potassium lactate and 12 wt% potassium diacetate (Campano 17, Table 1). Further, samples IA and 3A used twice the amount of solution (and solids) as samples ID and 3D (id. at 18, Table 2). Thus, the fact that samples ID and 3D performed approximately the same ( only "slightly lower log growth of bacteria") as samples IA and 3A using half the amount of antimicrobial solution suggests the substitution of at least some of the potassium lactate with potassium diacetate provides some improvement 8 Appeal2017-007256 Application 13/853, 127 in antimicrobial performance (see Ans. 14). Thus, contrary to Appellant's argument, Campano' s test data does not discourage substitution of potassium diacetate for potassium lactate. Moreover, as the Examiner finds (Ans. 11 ), Campano further teaches that the acetic acid component may include both potassium acetate and potassium diacetate (see Campano 10:7-11). Again, based on this disclosure, the ordinary artisan would have reasonably considered both potassium acetate and potassium diacetate to possess pathogenic microbial growth inhibiting activity. However, in this teaching, Campano does not provide or disclose the relative amounts of the acetate and diacetate components, apparently leaving the relative amounts to one of ordinary skill in the art. However, because Campano teaches that each of the organic acids contributes to the antimicrobial function of the composition, and that the acetic acid component may include both acetate and diacetate, one of ordinary skill in the art would have treated the amounts of each of the components in the composition as result-effective variables, absent evidence of unexpected results. Appellant urges that the ratio of acetate to diacetate in the composition is a result-effective variable that was not recognized by the prior art (Appeal Br. 17). Appellant further asserts that because no determination of optimum or workable ranges have been identified, the ratio recited in claim 1 cannot be obtained by routine optimization (id.). However, here, as indicated above, Campano and Ming broadly teach various organic acids that can be used to prevent bacterial growth in foodstuff, without indicating that the amounts are critical. Determination of the amounts of each organic acid or salt used, therefore, as indicated above, 9 Appeal2017-007256 Application 13/853, 127 is within the ordinary skill in the art, absent evidence of unexpected results. We note Appellant neither argues nor directs our attention to any evidence of unexpected results, much less evidence of unexpected results for the ratio of acetate to diacetate in the claimed composition. The determination that the selection and amounts of organic acids or salts in the antibacterial composition are within the ordinary skill in the art subject to routine experimentation is consistent with Ming's teaching that each of the organic acids including acetic acid, lactic acid, and propionic acid are known organic acids acceptable in antibacterial compositions for use in food products (Ming ,r 52). Although Appellant argues that Ming's failure to identify acetate as preferable to lactate and failure to discuss the properties of the organic acids means that Ming fails to teach or suggest acetic acid or salts thereof could be substituted for Campano 's lactic acid component with a reasonable expectation of success, we disagree. To the contrary, Ming's disclosure complements Campano's disclosure that acetic acid, lactic acid, and propionic acid all have antibacterial functionality and, therefore, may be used individually or in combination to achieve an antibacterial composition for use in foodstuff (Ming ,r,r 13, 18, 19). Ming's disclosure suggests substitutions of any of the organic acids for each other, or any combination of organic acids, may be used with a reasonable expectation of success in preventing microbial growth in foodstuff. Such interchangeability is not limited solely to Ming's composition, because Campano also suggests interchangeability as discussed above. Further, although Appellant contends the organic acid in Ming would not be viewed as contributing to the bacteriostatic/bactericidal effect of Ming's composition (Appeal. Br. 19), we disagree. Ming teaches a 10 Appeal2017-007256 Application 13/853, 127 bacteriostatic and bactericidal composition for foodstuff including a propionibacterial metabolite in combination with at least two of a !antibiotic, a lytic enzyme, and an organic acid (Ming ,r 18). Ming teaches that the propionibacterial metabolite inhibits bacterial growth without resulting in an undesirable flavor, odor, or appearance (id. ,r 29). Ming further teaches !antibiotics are known bacteriocides with a narrow spectrum of action (id. ,r 37). Ming teaches lytic enzymes for use in the composition should be capable of degrading a broad spectrum of bacteria, particularly those that cause food spoilage or are pathogenic (id. ,r 46). Ming prefers to combine the propionibacterial metabolite with a variety of organic acids or their salts, and both a !antibiotic and a lytic enzyme, to control the growth of a broad range of bacteria in foodstuff (id. ,r 54). Accordingly, contrary to Appellant's contention, Ming's disclosure suggests that the organic acids contribute to the bacteriostatic and bactericidal activity of the composition. Claim 4 This claim depends from claim 1 and further requires that the composition be in a solid form. We note that claim 25 likewise requires a composition comprising potassium acetate and alkali metal diacetate in a weight ratio from 1.5-9: 1, wherein the composition is in a solid form. The Examiner finds Campano discloses that the composition can be in a dry mix form which is indicative of a solid form (Ans. 4). Appellant argues that one of ordinary skill in the art would recognize that it would be impossible to achieve a dry form of Campano' s composition (Appeal Br. 20). Appellant asserts that not all solids are dry and that claim 4 specifies that the mixture is dry (id. at 21 ). Appellant further asserts that Campano requires that the composition must include 10 wt% lactic acid, that it is well 11 Appeal2017-007256 Application 13/853, 127 known that lactates are highly hygroscopic, and thus that Campano' s composition would never exist as a dry solid (id.). Appellant's argument is not persuasive of reversible error. To begin, we note, contrary to Appellant's assertion, claim 4 does not require that the composition be dry. Instead, claim 4 merely requires that the composition be "in a solid form." Appellant does not argue nor demonstrate that the Specification limits the meaning of "in a solid form" to only those solids that are also dry. Further, Appellant concedes that not all solids are dry (Appeal Br. 21). Thus, even assuming that Campano's lactate is hygroscopic and necessarily absorbs water, this fact alone does not negate that Campano 's composition may be "in a solid form." Moreover, Appellant has not demonstrated that it is impossible for the ordinary artisan to produce Campano's composition as a dry mixture. To the contrary, production of dry compositions including highly hygroscopic materials is possible and well within the ordinary skill in the art by desiccation and packaging under controlled conditions. Claim 26 Independent claim 26 is reproduced below from the Claims Appendix to the Appeal Brief. 26. A foodstuff preservation composition comprising potassium acetate and alkali metal diacetate, wherein the weight percent of the potassium acetate is 80% of the foodstuff preservation composition and the weight percent of the alkali metal diacetate is 20% of the foodstuff preservation composition. The Examiner rejects claim 26 under 35 U.S.C. Â§ 103(a) as unpatentable over Hull. The Examiner finds Hull discloses a food preservation composition containing sodium or potassium acetate, or sodium or potassium diacetate, or combinations thereof (Ans. 9). While the 12 Appeal2017-007256 Application 13/853, 127 Examiner finds Hull fails to disclose that the composition comprises 80% potassium acetate and 20% metal alkali diacetate, the Examiner concludes that it would have been obvious to modify the relative amounts of potassium acetate and alkali metal diacetate because both components are taught to have an antibacterial effect and "it has been held that the provision of adjustability, where needed, involves only routine skill in the art" (id. at 9-- 10, citing In re Stevens, 212 F.2d 197 (CCPA 1954)). Appellant urges that claim 26 implicitly requires that 100% of the composition be composed of potassium acetate and metal alkali diacetate (Appeal Br. 24). Appellant contends that Hull's composition includes an aqueous solution comprising 50-95% sodium or potassium citrate and 5- 50% acetate, diacetate, or combination thereof, and that a preferred embodiment comprises a solution of about 7 5-80% buffered citrate and 20- 25% sodium acetate or diacetate (id.). Therefore, Appellant argues that routine optimization would not yield the claim 26 composition because Hull fails to teach excluding the citrate component and that doing so would impermissibly fundamentally change Hull's composition (id., citing In re Ratti, 270 F.2d 810 (CCPA 1959)). This argument is not persuasive of reversible error. Although Appellant contends that the Examiner did not provide a rebuttal to this argument (Reply Br. 10), this is not correct. In fact, the Examiner finds Hull discloses a combination of a diacetate and an acetate (Ans. 17). In addition, the Examiner finds Hull discloses this combination used in food products is greater than about 0.15% by weight, thereby suggesting that the amount should be optimized (id.). Thus, although the Examiner acknowledges Hull does not disclose that the potassium acetate and alkali metal diacetate 13 Appeal2017-007256 Application 13/853, 127 comprise 80% and 20%, respectively, of the preservative composition, the Examiner nonetheless concludes that it would have been obvious to modify the relative amounts of the acetate and diacetate in Hull's composition given that both are disclosed to be antibacterial (id.). Appellant has not responded to or otherwise addressed these findings and the conclusion based thereon. DECISION Upon consideration of the record, and for the reasons given above and in the Examiner's Answer, the decision of the Examiner rejecting claims 1- 28 under 35 U.S.C. Â§ 103(a) as unpatentable is affirmed. No time period for taking any subsequent action in connection with this appeal maybe extended under 37 C.F.R. Â§ 1.136(a)(l). AFFIRMED 14