Ex Parte Husgen et al

Patent Trial and Appeal Board

Jan 26, 2017

12119990 (P.T.A.B. Jan. 26, 2017)

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.
12/119,990 05/13/2008 Ann HUSGEN Q228130 4082
23373 7590 01/30/2017
SUGHRUE MION, PLLC
2100 PENNSYLVANIA AVENUE, N.W.
SUITE 800
WASHINGTON, DC 20037
EXAMINER
TURNER, FELICIA C
ART UNIT PAPER NUMBER
1793
NOTIFICATION DATE DELIVERY MODE
01/30/2017 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):
PPROCESSING@SUGHRUE.COM
sughrue@sughrue.com
USPTO@sughrue.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANN HUSGEN, KEN BAUMAN, LACEY MCKLEM,
PETRI PAPINAHO, and BETH JONES
Appeal 2015-006567
Application 12/119,990
Technology Center 1700
Before BEVERLY A. FRANKLIN, MICHAEL P. COLAIANNI, and
JENNIFER R. GUPTA, Administrative Patent Judges.
COLAIANNI, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2015-006567
Application 12/119,990
Appellants appeal under 35 U.S.C. § 134 the final rejection of
claims 8—22, 38, 40-42, and 44—75. We have jurisdiction over the appeal
pursuant to 35 U.S.C. § 6(b).
We AFFIRM.
Appellants’ invention is directed to a process of preparing a curing
agent for meat that involves preparing the curing agent outside of the curing
process so as to eliminate the need to introduce bacteria or other organisms
that convert nitrate to nitrite along with the nitrate-containing substance into
the environment sought to be maintained during curing (Spec. 12).
Claim 8 is illustrative:
A process for preparing a curing agent comprising:
(i) selecting a plant material comprising at least about 50 ppm nitrate,
the selected plant material having an initial microbial load,
(ii) reducing the microbial load of the selected plant material relative
to the initial microbial load,
(iii) contacting said plant material with an organism capable of
converting said nitrate to nitrite after the microbial load is reduced, and
(iv) allowing the organism to convert said nitrate to nitrite to form a
curing agent comprising a predetermined amount of nitrite, the
predetermined amount being at least 10 ppm nitrite, and wherein the
conversion occurs outside a meat curing process, and
(v) inactivating the organism after the curing agent comprises the
predetermined amount of nitrite.
Appellants appeal the following rejections:
1. Claims 8-13, 16-19, 21, 22, 40, 41, 42, 46, 47, 55, 56, 58, and 61-64
are rejected under 35 U.S.C. § 103(a) as unpatentable over Fast et al.
(EP 0 805 205 Al, published Nov. 5, 1997) (“Fast”) in view of
Yamamoto et al. (JP 2001-352935, published Dec. 25, 2001)
(“Yamamoto”), Kurihara JP-A-A48-082054 as cited in the Notice of
Reasons for Refusal (JP 48-082054 A, published Nov. 2, 1973)
2
Appeal 2015-006567
Application 12/119,990
(“Kurihara”) and Walker (.Naturally Occuring Nitrate/Nitrite in
Foods, 26 J. Sci. Fd Agric. 1735-1742 (1975)).
2. Claims 14, 15, and 48 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Fast in view of Yamamoto, Kurihara, Walker, and
Hsu et al. (US 4,490,396, issued Dec. 25, 1984) (“Hsu”).
3. Claims 20, 44, 45, 59, 60, 67, and 68 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Fast in view of Yamamoto, Kurihara,
Walker, and Metz (US 5,981,260, issued Nov. 9, 1999).
4. Claim 38 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Fast in view of Yamamoto, Kurihara, Walker, Rosypal et al. (The
Classification of Micrococci and Staphylococci Based on their DNA
Base Composition and Adansonian Analysis, 44 J. Gen. Microbiol.
281-292 (1966)) (“Rosypal”) and Metz.
5. Claims 49 and 50 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Fast in view of Yamamoto, Kurihara, Walker, and
Dong et al. (US 5,980,890, issued Nov. 9, 1999) (“Dong”).
6. Claims 51—54 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Fast in view of Yamamoto, Kurihara, Walker, Rosypal, Metz,
and Gibson (GB 1 353 008, published May 15, 1974).
7. Claims 65 and 66 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Fast in view of Yamamoto, Kurihara, Walker, and
Janda et al. (US 5,731,018, issued Mar. 24, 1998) (“Janda”).
8. Claims 69 and 70 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Fast in view of Yamamoto, Kurihara, Walker,
Metz, and Janda.
3
Appeal 2015-006567
Application 12/119,990
9. Claims 71, 72, and 73 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Fast in view of Yamamoto, Kurihara, Walker,
Metz, and Hsu.
10. Claims 74 and 75 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Fast in view of Yamamoto, Kurihara, Walker,
Metz, Hsu, and Janda.
Regarding rejection (1), Appellants’ arguments focus on independent
claim 8 and dependent claims 58, and 61 (App. Br. 4—12). Regarding
rejections (2)- (7), Appellants rely on arguments made regarding claim 8
rather than provide separate arguments (App. Br. 13—15). Regarding
rejections (8), (9), and (10), Appellants argue claims 69 and 70 as a group,
claims 71—73 as a group, and claim 75, respectively (App. Br. 13, 15—16).
We select claims 69 and 73 as representative of the argued claim grouping
for rejections (8) and (9).
FINDINGS OF FACT & ANALYSIS
REJECTIONS (1) TO (7)
Claim 8
The Examiner’s findings and conclusions regarding the combined
teachings of Fast, Yamamoto, Kurihara, and Walker are located on pages 2
to 5 of the Supplemental Examiner’s Answer dated April 28, 2015.
Appellants argue that the combined teachings of Fast, Yamamoto,
Kurihara, and Walker fail to teach steps (iv) and (v) of claim 8 (App. Br. 6—
8). Step (iv) of claim 8 requires that “allowing the organism to convert said
4
Appeal 2015-006567
Application 12/119,990
nitrate to nitrite to form a curing agent comprising a predetermined amount
of nitrite, the predetermined amount being at least 10 ppm nitrite, and
wherein the conversion occurs outside a meat curing process.” Step (v) of
claim 8 recites “inactivating the organism after the curing agent comprises
the predetermined amount of nitrite.” Appellants contend that Fast and
Yamamoto do not teach forming a curing agent with a “predetermined
amount of nitrite” and inactivating the organism that converts the nitrate to
nitrite when the “predetermined amount of nitrite” is reached (App. Br. 6—7).
Appellants argue that Fast does not inactivate the organism after
fermentation is carried out, but rather lets the S. Carnosus convert
completely the nitrate to nitrite in Example (B) (App. Br. 6; Reply Br. 2).
Appellants argue that Fast’s use of L. Plantarum is used to convert
completely the nitrite that is formed to nitrogen or nitrous oxide (App. Br.
6) . Appellants argue that Yamamoto teaches fermenting vegetables with an
organism to control its smell (App. Br. 7). Appellants contend that one of
ordinary skill would not have considered Yamamoto’s teaching pertinent to
Fast’s process because Fast concerns reducing nitrates to nitrous oxide and
Yamamoto is concerned with controlling smell (App. Br. 7). Appellants
contend that Kurihara fails to teach using an organism to reduce nitrate to
nitrite, but instead uses the nitrate reductase in the vegetable itself (App. Br.
7) . Appellants argue that Kurihara’s use of an enzyme cannot teach
inactivating the organism to stop nitrate reduction to nitrite. Id. Appellants
contend that Kurihara fails to teach converting nitrate to a predetermined
amount of nitrite (App. Br. 8).
Contrary to Appellants’ arguments, the Examiner finds that the
combined teachings of Fast, Yamamoto, Kurihara, and Walker would have
5
Appeal 2015-006567
Application 12/119,990
suggested using S. Carnosus to reduce the nitrate to nitrite in vegetables and
stopping the reaction when a predetermined concentration of nitrite, such as
at least 100 ppm, is formed (Supp. Ans. 2—5). Fast teaches that a
microorganism (i.e., S. Carnosus) is used to treat a vegetable so as to
enhance the conversion of nitrate to nitrite or nitrous oxide (Fast 12:45—47).
Yamamoto teaches fermenting a vegetable and inactivating the
microorganism after fermentation in order to reduce the scent of vegetables
(Yamamoto 17). Although, Yamamoto does not teach converting nitrates to
nitrites, the teachings of the references as a whole would have suggested that
once a desired attribute (e.g., scent or nitrate level) is achieved by using a
microorganism, a process may be stopped by inactivating the microorganism
that caused the change in the attribute. In other words, Yamamoto would
have suggested that when the nitrite concentration of Fast’s reduction of
nitrate using S. Carnosus is met, it would have been obvious to inactivate the
S. Carnosus to stop nitrate reduction. Indeed, Fast discloses that it is known
to sample nitrate reduction and stop nitrate reduction by “vortexing” (Fast
6:56—58). Fast further discloses that the S. Carnosus culture is incubated for
up to 15 hours and then the culture is centrifuged where the nitrite
concentration of the culture supernatant is determined (Fast 6:40-44). Fast,
like Appellants, discloses that centrifuging or vortexing stops nitrate
reduction (Fast 6:56—58; Spec. 118). The Examiner relies on Kurihara and
Walker to teach that a nitrate concentration of at least 100 ppm is an
acceptable nitrite concentration for curing meats and thus would have been
an acceptable level to stop the nitrate reduction (Supp. Ans. 4—5).
Appellants’ arguments fail to show reversible error in the Examiner’s
rejection.
6
Appeal 2015-006567
Application 12/119,990
Fast is not limited to complete reduction of nitrate to nitrite as argued
by Appellants. Rather, Fast teaches that complete reduction of nitrate in the
vegetable is a preferred embodiment (Fast 5:37—38). Indeed, Fast teaches
sampling and stopping nitrate reduction by vortexing or centrifuging
(Fast 6:40-44; 56—58). Accordingly, combining Yamamoto’s teaching to
inactivate a microorganism once a particular scent of a vegetable is achieved
with Fast’s process to stop nitrate reduction once a desired nitrite
concentration is met would not have changed the principle of operation as
argued by Appellants (App. Br. 8; Reply Br. 2). As found by the Examiner,
it would have been obvious to substitute Yamamoto’s inactivation step for
Fast’s step of removing the immobilized cells since each step seeks to end a
reaction and since both methods would have been useful in stopping the
reaction in the plant material (Supp. Ans. 21). Appellants do not specifically
contest the substitution of stopping the reaction with Yamamoto’s
inactivation step, but rather argue unpersuasively that it is the timing of the
stopping (i.e., once a predetermined nitrite value is achieved) that is
important (Reply Br. 5). Appellants argue that Fast teaches away from
stopping the reduction of nitrate. Id. Although Fast teaches a preference for
the complete reduction of nitrate, Fast does not teach away from sampling
and stopping the reaction as we find supra.
Contrary to Appellants’ argument that there is no reason to combine
Fast and Yamamoto because each is directed to processes that differ
biologically and chemically (App. Br. 8), Fast and Yamamoto are related in
that each involves treating vegetables with a microorganism. Fast may be
reducing nitrates while Yamamoto may be changing the scent of the
vegetables, but that does not undermine the general teaching relied upon by
7
Appeal 2015-006567
Application 12/119,990
the Examiner to inactivate or stop the reduction of an attribute (e.g., scent or
nitrate level) when the desired attribute (scent or nitrate level) is reached.
As noted supra, Fast teaches to stop nitrate reduction after sampling
(Fast 6:56—58). Regarding Appellants’ argument that Kurihara does not
teach steps (iv) and (v), we note that the Examiner does not rely on Kurihara
to teach such steps. The Examiner finds that Kurihara teaches that a suitable
nitrite concentration for curing meats is at least 100 ppm (Supp. Ans. 4).
Appellants argue secondary considerations of commercial success and
long-felt need (App. Br. 9—11). Appellants rely on the declarations of
Dr. Beth Jones, dated Sept. 4, 2012, Dr. Andrew Milkowski, dated Sept. 4,
2013, and Dr. Kathleen Glass, dated Aug. 27, 2013 (hereinafter “Jones
Deck,” “Milkowski Deck” and “Glass Deck,” respectively) as showing
commercial success and long-felt need (App. Br. 9—11). The Jones
Declaration states that the Accel™ 2000 (powdered) and Access™ liquid are
produced by the method of the claims using celery juice (Jones Deck 3—
5). Appellants contend that the products were well received in the
marketplace and the Access1 Powder from 2009 to 2011 had a gross sales of
$211,581; $1,203,299; and $2,929,168 (Jones Deck 116). Appellants
estimated that the gross sales for Access Powder for 2012 to be $2,553,026
with total gross sales by the end of 2012 of more than $20,000,000 (id.; App.
Br. 10). Appellants’ gross sales figures do not show commercial success
absent a showing of their market share for nitrites for meat curing. Cable
1 Appellants use both “Access” and “Accel” as names for the products. It is
unclear which name is the correct name, the ambiguity in the name does not
affect our decision as to the probative value of the evidence with regard to
the commercial success and long-felt need.
8
Appeal 2015-006567
Application 12/119,990
Electric Products, Inc. v. Genmark, Inc., 770 F.2d 1015, 1026—27 (Fed. Cir.
1985).
Appellants’ evidence of commercial success is also not commensurate
in scope with the claim in that the Accel products are made from celery
juice, whereas the claim generically includes “plant material.” See In re
Tiffin, 448 F.2d 791, 792 (CCPA 1971) (Commercial success shown with
‘“cups’” was not commensurate in scope and insufficient to establish
commercial success of claimed ‘“containers’”).
Appellants argue that the evidence in the Jones Declaration
establishes long-felt need (App. Br. 9). Appellants contend that the Jones
Declaration shows that there was need to prepare curing agent outside of the
meat curing process to address the long process times involved with adding
bacteria to the meat and allowing the mixture to form the nitrite required to
cure the meat in situ (App. Br. 10). Appellants argue that the Jones
Declaration establishes that a long-felt need existed and the commercial
product embodying the present invention has satisfied that need. Id.
Appellants argue that the Glass and Milkowski Declarations detail the state
of meat curing prior the invention and the benefit of the claimed invention in
providing the exact amount of nitrite for the subsequent meat curing process
which permits the meat manufacturer to use lesser amounts of nitrites (App.
Br. 11).
Appellants argue that the long-felt need addressed by the claimed
process is to provide a consistent level of nitrite formed from nitrate
conversion to the meat so as to decrease meat curing process times (Jones
Deck H 8—9; App. Br. 10). To be probative of non-obviousness, the long-
felt need stated by Appellants must not have been solved prior to
9
Appeal 2015-006567
Application 12/119,990
Appellants’ claimed invention. Newell Co. v. Kenney Mfg. Co., 864 F.2d
757, 768 (Fed. Cir. 1988). Kurihara, however, teaches a method of forming
at least 100 ppm of nitrite from vegetables that is then used to process meat.
Kurihara teaches a method of forming nitrites from nitrate containing
vegetables and using the nitrite for meat processing. In other words,
Appellants’ long-felt need appears to have been solved by Kurihara.
Appellants’ arguments that Kurihara uses a different process than required
by the claim does not change that nitrite was acquired from a plant material
in a concentration covered by the claim and used to process meat; the same
long-felt need argued by Appellants (App. Br. 7).
The Glass and Milkowski Declarations outline the declarant’s opinion
that using the claimed process that forms the nitrite separate from the curing
process permits better control over the amount of nitrite used in the curing
process as compared to the conventional “‘z« situ’” process (Milkowski
Deck 19; Glass Deck 17). The opinion evidence in these declarations do
not persuade us that the Examiner’s obviousness rejection is erroneous. As
the Examiner finds, like Kurihara’s disclosure, the Glass and Milkowski
Declarations state that separately forming and adding nitrite to cure meat is
known (Supp. Ans. 26).
Claims 58 and 61
Claim 58 depends from claim 9 and recites “wherein the microbial
load of the selected plant material is reduced by heat-treating the selected
plant material to 121°C for 15 or 20 minutes.”
Claim 61 depends from claim 8 and recites “wherein the
predetermined amount is at least 500 ppm nitrite, and the process
10
Appeal 2015-006567
Application 12/119,990
additionally comprises drying the curing agent after the microorganism is
inactivated.”
With regard to claim 58, Appellants argue that Fast and Yamamoto
teach away from sterilizing conditions with a temperature as high as 121°C
for 15 to 20 minutes (App. Br. 12). With regard to claim 61, Appellants
argue that Yamamoto teaches drying the vegetable after inactivating the
microorganism when a desired smell is achieved, not when a desired nitrite
level is achieved (App. Br. 12). Appellants contend that Fast teaches the
complete reduction of nitrate into nitrogen or nitrous oxide, not nitrite such
that the combined teachings would not have suggested the subject matter of
claim 61. Id. Appellants argue that the Examiner engaged in impermissible
hindsight. Id.
Regarding claim 58, the Examiner finds that while Yamamoto and
Fast use particular temperatures and times for their examples, neither
reference discourages, criticizes or discredits the use of the time and
temperature of the sterilizing conditions recited in claim 58 (Supp. Ans. 27).
The Examiner finds that it would have been obvious to modify and optimize
the time and temperature to heat treatment in order to provide the desired
level of sterilization (Supp. Ans. 27). Regarding claim 61, the Examiner
finds that Yamamoto teaches to dry the vegetables after fermentation (Supp.
Ans. 28). The Examiner finds that it would have been obvious to dry the
vegetable after inactivating the microorganism in order to provide the
vegetable material in a form that is easily stored and easily added to foods
(Supp. Ans. 28). Appellants do not respond to these findings of the
Examiner (Reply Br. generally).
11
Appeal 2015-006567
Application 12/119,990
We agree with the Examiner that Yamamoto and Fast do not
discourage or otherwise teach that using a temperature and time within the
claimed range should be avoided. The Examiner does not rely on
impermissible hindsight in rejecting the claims, but rather the teachings of
the references. As we discussed supra Fast teaches that it is known to stop a
nitrate to nitrite conversion reaction using nitrate reductase enzyme by
vortexing (Fast 6:56—58). Fast is not limited to its preferred embodiment
where all nitrate is reduced to nitrogen or nitrous oxide. Yamamoto adds
that a reaction involving microorganisms may be stopped by inactivating the
microorganism. Accordingly, it would have been obvious to inactivate
Fast’s nitrate conversion process that uses S. Carnosus in order once a
desired level of nitrite is achieved such as 500 ppm as taught by Yamamoto.
On this record, we affirm the Examiner’s § 103 rejections (1)—(7).
REJECTIONS (8), (9) AND (10)
Claims 69, 73, and 75
Regarding claim 75, Appellants argue that Metz, Hsu, and Janda are
not concerned with the formation of nitrite and only Janda discloses celery
juice concentrate for a different purpose (App. Br. 13). Appellants contend
that no one would have any reason to look to any of the references for
guidance with respect to any process parameter relevant to forming nitrite in
celery juice. Id. Regarding claims 69, 73 and 75, Appellants contend that
Metz is concerned with cultivating bacteria which is a distinct process from
Fast’s biochemical reduction of nitrate such that there would have been no
reason to combine the teachings of Metz and Fast (App. Br. 15—16).
12
Appeal 2015-006567
Application 12/119,990
The Examiner finds that Metz’s teachings are directed to the optimum
pH for cultivating S. Camosus, the same bacteria used by Fast (Supp. Ans.
17, 28). Because Fast uses the same bacteria and teaches adjusting the pH
during its use between 5.5 and 10, it would have been obvious to look to
Metz for a desirable pH ensuring survival of S. Camosus. Appellants do not
address the fact that Metz teaches cultivating S. Carnosus in addition to
M. Variens. See, e.g., App. Br. 15.
The Examiner finds that Fast generally teaches the nitrate reduction
process using a microorganism (S. Carnosus) in carrot juice and carrots
(Supp. Ans. 3). Indeed, Fast teaches that it is known that vegetables may be
used as a source of nitrate (Fast 2:9—11). The Examiner relies upon Janda to
teach the use of juice concentrate was known (Supp. Ans. 15). Fast teaches
that carrot juice may be used as the source of nitrate to be reduced.
Accordingly, it would have been obvious to use a juice concentrate as the
source of nitrates. Appellants do not proffer any evidence of unexpected
results from using this well-known form of juice.
On this record, we affirm the Examiner’s § 103 rejections (8), (9) and
(10).
DECISION
We affirm the Examiner’s rejections (1) to (10) under 35 U.S.C.
§103.
The Examiner’s decision is affirmed.
13
Appeal 2015-006567
Application 12/119,990
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1).
ORDER
AFFIRMED
14