Ex Parte Bontjer et al

Patent Trial and Appeal Board

Aug 25, 2013

11721638 (P.T.A.B. Aug. 25, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT AND TRIAL APPEAL BOARD
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Ex parte MARCUS BERNHARD HUBERT BONTJER,
MARTINUS WILHELMUS KUIJPERS, and
KASPER WILLEM VAN DEN BERG
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Appeal 2012-004012
Application 11/721,638
Technology Center 1700
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Before PETER F. KRATZ, HUBERT C. LORIN, and JEFFREY T. SMITH,
Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-004012
Application 11/721,638

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STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from the final rejection of
claims 1, 3 through 6, and 8 through 22. We have jurisdiction under
35 U.S.C. § 6.
Appellants’ invention is directed to “a method for preparing food
products by co-extrusion.” App. Br. 2. Claim 1 is illustrative of the subject
matter on appeal and is reproduced below:
1. Method for preparing food products by co-extrusion,
comprising of producing the food product from a filler mass
and a casing mass which is liquid prior to the co-extrusion,
wherein the casing mass comprises at least water, collagen and
an alginate, wherein the casing mass comprises a greater weight
content of collagen than of alginate, wherein the weight content
of collagen in the casing mass is more than 1.2 times greater
than the alginate content and the casing mass has a pH between
4 and 5.

The Examiner relied on the following references in rejecting the
appealed subject matter:
Paul US 3,366,495 Jan 30, 1968
Henderson US 3,782,977 Jan. 1, 1974
Kobussen US 6,331,104 B1 Dec. 18, 2001
Goorhuis US 2004/0037922 A1 Feb. 26, 2004

Appellants, App. Br. 2-3, request review of the following
rejections from the Examiner’s final Office action mailed February 2,
2011:
Appeal 2012-004012
Application 11/721,638

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I. Claims 1, 3-6, 8, 10, 14-17, and 22 stand rejected under 35
U.S.C. § 103(a) as obvious over Goorhuis.
II. Claims 20 and 21 stand rejected under 35 U.S.C. § 103(a) as
obvious over Goorhuis.
III. Claims 1 and 9 stand rejected under 35 U.S.C. § 103(a) as
obvious over Goorhuis and Henderson.
IV. Claims 1 and 11-13 stand ejected under 35 U.S.C. § 103(a) as
obvious over Goorhuis and Kobussen.
V. Claims 1 and 17-19 stand ejected under 35 U.S.C. § 103(a) as
obvious Goorhuis and Paul.

OPINION
Rejections I and II
The dispositive issue for Rejections I and II is: Did the Examiner err
in determining that Goorhuis would have led one skilled in the art to a
method for preparing food products by co-extrusion comprising a filler mass
and a casing mass wherein the casing mass has a pH between 4 and 5 as
required by the subject matter of independent claim 1?1
After thorough review of the respective positions provided by
Appellants and the Examiner, we answer the question in the affirmative and
REVERSE for the reasons presented by Appellants and add the following.

1 We will limit our discussion to independent claim 1. Appellants have not
argued the dependent claims separately. Accordingly, claims not argued
separately will stand or fall together with independent claim 1.
Appeal 2012-004012
Application 11/721,638

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During examination, the Examiner bears the initial burden of
establishing a prima facie case of obviousness. In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992). The Examiner’s mere conclusory statements
are not sufficient to support the prima facie case of obviousness.
“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007)
(quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
We refer to the Examiner’s Answer for a statement of the Examiner’s
rejection (Ans. 5).
As a preliminary matter, we find it necessary to clarify Goorhuis’
disclosure. As noted by Appellants, Goorhuis discloses two embodiments
for coating food products with a casing. App. Br. 4. One embodiment
provides a casing comprising alginate, but no collagen, requiring a pH
between 2.0 and 9.0 [sic., 9.5]. Id. at 4; Goorhuis ¶ [0014]. Goorhuis’s
second embodiment is directed to coating food products with a casing of
alginate and collagen having a pH preferably between 6.5 and 8.5. App. Br.
4-5; Goorhuis ¶ [0034]. Goorhuis further discloses that casings comprising
collagen and alginate with pH outside this pH range have lesser the binding
properties necessary for the desired product. App. Br. 5; Goorhuis ¶ [0034].
The subject matter of independent claim 1 is directed to a method of
coating food products with a casing of collagen and alginate having a pH
between 4 and 5. Claim 1. The Examiner found that Goorhuis teaches a
Appeal 2012-004012
Application 11/721,638

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method of coating food products with a casing having a pH between 4.0 and
9.5. Ans. 5.
Appellants argue that Goorhuis also lacks any teaching whatsoever of
a casing mass of collagen and alginate having a pH of between 4 and 5, as
required by Appellants’ independent claim 1. App. Br. 5. We agree.
As noted above, the only disclosure involving pH less than 6.5
concern casings comprising alginate with no collagen. Goorhuis ¶ [0014].
The Examiner has not adequately explained how this disclosure is relevant
to casings comprising both alginate and collagen. Moreover, the Examiner
tacitly acknowledges that the broader pH range is related to casings of
alginate without collagen in rejecting the claims. Ans. 5. While the
Examiner reasons that the prior art is not limited to the preferred
embodiments (Ans. 10), the Examiner has not directed us to any section of
Goorhuis that would guide one skilled in the art to provide a casing of
collagen and alginate with a pH of between 4 and 5 as required by the
subject matter of independent claim 1. In this regard, the Examiner’s prima
facie obviousness position is undermined by the fact that the acceptable
casing of collagen and alginate is disclosed by Goorhuis as requiring a pH
range far outside the claimed range. See In re Sebek, 465 F.2d 904, 907
(CCPA 1972) (rejection based on optimization was reversed because the
claimed values were outside the prior art range).
For the reasons stated above and those presented by Appellants, we
reverse the Examiner’s rejections of claims 1, 3-6, 8, 10, 14-17, and 20-22
under 35 U.S.C. § 103(a) (Rejections I and II).

Appeal 2012-004012
Application 11/721,638

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Rejections III-V
Rejections III-V all rely on Goorhuis as the primary reference. We
agree with Appellants that the references relied upon by the Examiner for
these rejections do not overcome the above noted deficiency of Goorhuis.
See App.Br. 11-17, generally.
Accordingly, we also reverse Rejections III-V for the reasons given
above and presented by Appellants.

ORDER
The decision of the Examiner rejecting claims 1, 3-6, and 8-22 under
35 U.S.C. § 103(a) (Rejections I-V) is reversed.

REVERSED

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