Ex Parte Zheng et al

Patent Trial and Appeal BoardSep 22, 2015

11615457 (P.T.A.B. Sep. 22, 2015)

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. 11/615,457 12/22/2006 Zuoxing Zheng 1410-77480-US 1917 48940 7590 09/23/2015 FITCH EVEN TABIN & FLANNERY, LLP 120 SOUTH LASALLE STREET SUITE 1600 CHICAGO, IL 60603-3406 EXAMINER BADR, HAMID R ART UNIT PAPER NUMBER 1791 MAIL DATE DELIVERY MODE 09/23/2015 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 ________________ Ex parte ZUOXING ZHENG, JULIA L. DESROCHERS, and URAIWAN TANGPRASERTCHAI ________________ Appeal 2013-010162 Application 11/615,457 Technology Center 1700 ________________ Before TERRY J. OWENS, KAREN M. HASTINGS, and GEORGE C. BEST, Administrative Patent Judges. OWENS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 7–10, 12–17, 24–26, 28–37, 39, and 40. We have jurisdiction under 35 U.S.C. § 6(b). The Invention The Appellants claim a raw dough product and a method for making it. Claim 7 is illustrative: 7. A raw dough product having enhanced microbiological safety, the raw dough product comprising: flour, water, and an antimicrobial broth composition, wherein the antimicrobial broth composition comprises a fermentation product of an aqueous blend of live bacteriocin-producing lactic Appeal 2013-010162 Application 11/615,457 2 acid bacteria capable of metabolizing a medium comprising glucose and a nitrogen source, the live bacteriocin-producing lactic acid bacteria, glucose, a nitrogen source, and a lactic acid-neutralizer, wherein the antimicrobial broth composition is in an amount effective for in situ production of bacteriocin in the raw dough at refrigerated temperatures for about 8 weeks and which amount is effective for inhibiting the growth of Listeria monocytogenes in the raw dough for at least 8 weeks at the refrigerated temperatures and which dough after the 8 weeks has a pH of not less than about 80% of the pH of the dough when it was combined with the antimicrobial broth composition, and wherein the raw dough product can be cooked to form a baked product. The References Matz US 3,295,989 Jan. 3, 1967 Nauth US 5,716,811 Feb. 10, 1998 Ando US 6,827,952 B2 Dec. 7, 2004 Chan Li et al., Optimization of a cultural medium for bacteriocin production by Lactococcus lactis using response surface methodology, 93 J. BIOTECH. 27–34 (2002) (hereinafter Li). The Rejections Claims 7–10, 12–17, 24–26, 28–37, 39, and 40 stand rejected under 35 U.S.C. § 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the Appellants regard as the invention, under 35 U.S.C. § 112, first paragraph, as failing to comply with the enablement requirement, and under 35 U.S.C. § 103 over Matz in view of Ando, Li, and Nauth. OPINION We reverse the rejections under 35 U.S.C. § 112, first and second paragraphs and affirm the rejection under 35 U.S.C. § 103. Appeal 2013-010162 Application 11/615,457 3 Rejection under 35 U.S.C. § 112, second paragraph “[T]he indefiniteness inquiry asks whether the claims ‘circumscribe a particular area with a reasonable degree of precision and particularity.’” Marley Mouldings Ltd. v. Mikron Indus. Inc., 417 F.3d 1356, 1359 (Fed. Cir. 2005) (quoting In re Moore, 439 F.2d 1232, 1235 (CCPA 1971)). The Examiner argues that the Appellants’ claims are unclear as to what the fermentation product is because it can be bacteriocin, lactic acid or cell mass (Ans. 5). The Appellants’ recited fermentation product is any fermentation product of an aqueous blend of glucose, a nitrogen source, a lactic acid neutralizer, and live bacteriocin-producing lactic acid bacteria capable of metabolizing a medium comprising glucose and a nitrogen source. The claim term “fermentation product” is not indefinite merely because it is broad. See In re Gardner, 427 F.2d 786, 788 (CCPA 1970) (“Breadth is not indefiniteness.”); In re Borkowski, 422 F.2d 904, 909 (CCPA 1970). The Examiner argues that the Appellants’ claims are unclear because they require the presence of lactic acid neutralizer in the dough, whereas the Examiner expects the lactic acid neutralizer to be exhausted in neutralizing acids prior to the antimicrobial composition addition to the dough (Ans. 5), and because the fermentation used to make the fermentation product exhausts the fermentation culture medium such that in situ production of bacteriocin in the raw dough is impossible (Ans. 18). The Appellants’ Specification indicates that the culture medium is not exhausted prior to the antimicrobial composition being added to the dough but, rather, is present in the dough (Spec. ¶ 19). Appeal 2013-010162 Application 11/615,457 4 Accordingly, we reverse the rejection under 35 U.S.C. § 112, second paragraph. Rejection under 35 U.S.C. § 112, first paragraph A specification complies with the 35 U.S.C. § 112, first paragraph, enablement requirement if it allows those of ordinary skill in the art to make and use the claimed invention without undue experimentation. See In re Wright, 999 F.2d 1557, 1561 (Fed. Cir. 1993); Atlas Powder Co. v. E.I. du Pont De Nemours & Co., 750 F.2d 1569, 1576 (Fed. Cir. 1984). Factors to be considered in determining whether a disclosure would require undue experimentation “include (1) the quantity of experimentation necessary, (2) the amount of direction or guidance presented, (3) the presence or absence of working examples, (4) the nature of the invention, (5) the state of the prior art, (6) the relative skill of those in the art, (7) the predictability or unpredictability of the art, and (8) the breadth of the claims.” In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988). The Examiner argues that the Appellants’ Specification is nonenabling because it does not provide evidence that in Examples 3–5 wherein the antimicrobial composition inhibited bacteria growth, in situ production of bacteriocin occurred or glucose was metabolized in dough by bacteriocin-producing lactic acid bacteria (Ans. 3–4, 18–20). The Appellants’ Specification states that “[t]he antimicrobial activity in the dough was resulted [sic] from a combination effect of pre- and in-situ generated bacteriocins and other antimicrobial metabolites such as organic acids and hydrogen peroxide and the competitive exclusion by the live cultures in the dough” (Spec. ¶ 39). The Examiner provides no evidence to Appeal 2013-010162 Application 11/615,457 5 the contrary. The Examiner’s mere pointing out that the Appellants’ Specification does not report data showing bacteriocin produced in situ or glucose metabolized in dough by lactic acid bacteria does not indicate failure of the Specification to enable one of ordinary skill in the art to carry out the Appellants’ claimed invention without undue experimentation. Thus, we reverse the rejection under 35 U.S.C. § 112, first paragraph, enablement requirement. Rejection under 35 U.S.C. § 103 The Appellants argue the claims as a group (App. Br. 20–26). Although the Appellants address some of the claims under separate headings and point out the antimicrobial broth composition limitation in claim 36 (Ans. 23–26), the Appellants do not provide a substantive argument as to the separate patentability of those claims. We therefore limit our discussion to one claim, i.e., claim 7. Claims 8–10, 12–17, 24–26, 28–37, 39, and 40 stand or fall with that claim. See 37 C.F.R. § 41.37(c)(1)(iv) (2011). Matz discloses “packaged preleavened unbaked bakery products containing a small but effective amount of an antibiotic peptide to inhibit microbial growth and spoilage” (col. 1, ll. 52–55). The antibiotic peptide preferably is nisin and preferably is added to dry ingredients just prior to addition of water and thorough mixing which distributes the antibiotic peptide uniformly throughout the product (col. 2, ll. 7–11, 40–44). In examples, cans of nisin-containing dough remained intact after 8 weeks of storage (col. 3, ll. 16–17, 43–44). Ando discloses a fermented seasoning liquid containing live Lactobacillus cells which, when added to a food product, ferment therein to Appeal 2013-010162 Application 11/615,457 6 produce antibacterial agents and pH-reducing organic acids (col. 4, l. 63 – col. 5, l. 2). When the food product is bread, the seasoning liquid preferably is added during dough mixing to obtain the maximum antibacterial effect (col. 5, ll. 36–40). Li optimizes bacteriocin (nisin) production by Lactococcus lactis based upon six culture medium factors, four of which are sucrose, soybean peptone, yeast extract and KH2PO4 (Abstract; p. 28). Nauth discloses that during storage of skim milk, the activity of nisin therein may decrease by more than 30% (col. 1, ll. 53–54). Nauth preserves the nisin activity by adding a small amount of a carbon dioxide-producing chemical such as calcium carbonate, sodium carbonate or sodium bicarbonate to pasteurized skim milk prior to fermentation (Abstract; col. 2, ll. 44–56). The Appellants argue that one of ordinary skill in the art would not have included live bacteriocin-producing bacteria in Matz’s canned dough because gases produced during growth of the bacteria would increase the pressure inside the can sufficiently to cause it to rupture (App. Br. 21–22).1 “A person of ordinary skill is also a person of ordinary creativity, not an automaton.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). In making an obviousness determination one “can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR, 550 U.S. at 418. 1 Matz teaches that “[s]ide reactions brought about by [contaminant microflora] microbial growth release gases, thereby leading to increased internal can pressure with subsequent exudation and can ruptures” (col. 1, ll. 43–46). Appeal 2013-010162 Application 11/615,457 7 Matz’s disclosure that the “invention relates to packaged preleavened unbaked bakery products” (col. 1, ll. 11–12) would have indicated to one of ordinary skill in the art that the invention is not limited to canned dough and, therefore, would have led such a person, through no more than ordinary creativity, to include nisin in other doughs to obtain the disclosed desirable benefit of microbial growth inhibition for at least 8 weeks (which is the duration of the Listeria monocytogenes inhibition required by the Appellants’ claims) (col. 1, ll. 52–55; col. 2, ll. 7–11, 39–43; col. 3, ll. 16– 17, 43–44). The Appellants argue that “Ando is directed to specific strains of lactic acid bacteria that inhibit yeast growth and would therefore not be combined in a raw dough which includes yeast for leavening” (App. Br. 21). Ando adds the lactic acid bacteria to yeast-containing dough (col. 5, ll. 36–40; col. 7, l. 26 – col. 8, l. 34). Moreover, Ando’s disclosure that the lactic acid bacteria ferments in the dough to produce antibacterial agents (col. 4, l. 63 – col. 5, l. 2) would have led one of ordinary skill in the art, through no more than ordinary creativity, to include the lactic acid bacteria in Matz’s dough to provide additional antibacterial agents as the lactic acid bacteria fermentation proceeds, thereby tending to lengthen the duration of microbial growth inhibition. The Appellants argue that “Ando includes a fermented seasoning liquid which is specifically taught to be destroyed after 14–16 hours of baking” (App. Br. 21). Appeal 2013-010162 Application 11/615,457 8 That argument is irrelevant to the Appellants’ recited raw dough and to Ando’s disclosure regarding microbial growth inhibition in raw dough (col. 7, l. 26 – col.8, l. 34). The Appellants argue that one of ordinary skill in the art would not have added a lactic acid neutralizer to Ando’s dough in view of Ando’s disclosure that pH reduction provides enhanced antibacterial activities such as mold-proofing activity (col. 5, ll. 1–2) (App. Br. 21–22). That argument is deficient in that the Appellants are attacking Ando individually when the rejection is based on a combination of references. See In re Keller, 642 F.2d 413, 426 (CCPA 1981); In re Young, 403 F.2d 754, 757–58 (CCPA 1968). Nauth discloses that calcium carbonate, which is the Appellants’ preferred lactic acid neutralizer (Spec. ¶ 19), increases nisin activity over a period of time (Abstract; col. 2, ll. 46–53). Although the substrate to which Nauth adds antimicrobial bacteria is pasteurized skim milk instead of dough, the proposed mechanism through which the calcium carbonate maintains the antimicrobial activity, i.e., producing carbon dioxide which aids in releasing nisin from the interior of cells through the cell wall (col. 2, ll. 51–56), appears to be independent of the substrate. Thus, Nauth would have led one of ordinary skill in the art, through no more than ordinary creativity, to add calcium carbonate to Matz’s dough to maintain nisin activity. Nauth discloses that the calcium carbonate stabilizes pH (Example 2). The disclosed time period of that stabilization is only overnight (Table 1). However, because the calcium carbonate is the same material as that used by the Appellants, it apparently would have the same effect as the Appellants’ calcium carbonate on stabilizing pH during the Appeal 2013-010162 Application 11/615,457 9 fermentation of Matz’s dough. See In re Papesch, 315 F.2d 381, 391 (CCPA 1963) (“From the standpoint of patent law, a compound and all of its properties are inseparable; they are one and the same thing”).2 For the above reasons we are not persuaded of reversible error in the rejection under 35 U.S.C. § 103.3 DECISION/ORDER The rejections of claims 7–10, 12–17, 24–26, 28–37, 39, and 40 under 35 U.S.C. § 112, second paragraph and first paragraph, enablement requirement are reversed. The rejection of claims 7–10, 12–17, 24–26, 28– 37, 39, and 40 under 35 U.S.C. § 103 over Matz in view of Ando, Li, and Nauth is affirmed. It is ordered that the Examiner’s decision is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED bar 2 The Appellants’ argument that “none of the references suggest controlling the pH of such a raw dough (to keep it within about 80% of the original pH) so as to avoid an undesirable acidic flavor and to preserve the viability of yeast, which are desirable for leavening” (App. Br. 21) is not well taken because to establish a prima facie case of obviousness, references need not be combined for the purpose of solving the problem solved by the Appellants. See In re Kemps, 97 F.3d 1427, 1430 (Fed. Cir. 1996); In re Beattie, 974 F.2d 1309, 1312 (Fed. Cir. 1992); In re Dillon, 919 F.2d 688, 693 (Fed. Cir. 1990) (en banc); In re Lintner, 458 F.2d 1013, 1016 (CCPA 1972). 3 The Appellants, in their arguments regarding the combination of references, do not rely upon the Zheng declarations (App. Br. 20–26).