Ex Parte Anagnostou et al

Patent Trial and Appeal Board

Jun 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. § 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. § 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. § 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. § 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.
§ 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. § 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. § 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. § 1.136(a)(l).
AFFIRMED
14