Ex Parte Han et alDownload PDFPatent Trial and Appeal BoardDec 27, 201813249289 (P.T.A.B. Dec. 27, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/249,289 09/30/2011 110933 7590 Carstens & Cahoon, LLP PO Box 802334 Dallas, TX 75380 12/28/2018 FIRST NAMED INVENTOR Jung H. Han 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. CTROP.3623 7204 EXAMINER SMITH, PRESTON ART UNIT PAPER NUMBER 1792 MAIL DATE DELIVERY MODE 12/28/2018 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 JUNG H. HAN, SOLA LAMIKANRA, TEODORO RIVERA, JUN YANG, THOMAS A.TREZZA, and LAIXIN WANG Appeal2018-002247 Application 13/249,289 Technology Center 1700 Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and N. WHITNEY WILSON, Administrative Patent Judges. COLAIANNI, Administrative Patent Judge. DECISION ON APPEAL Appellants 1 appeal under 35 U.S.C. § 134 the final rejection of claims 29-42. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). We REVERSE. Appellants' invention is directed to methods for processing pomace, which is the pulpy edible by-product remaining after fruit and vegetable juice, paste, puree, and canning processes. (Spec. ,r,r 2, 4). Pomace is 1 Appellants identify the real party in interest as Tropicana Products, Inc. (Appeal Br. 2). Appeal2018-002247 Application 13/249,289 generally considered a waste by-product, but the claimed method is said to provide a useful food ingredient from pomace, thereby avoiding food waste. Id. at ,r,r 7-13. Claim 29 is illustrative ( emphasis added): 29. A method of processing pomace comprising obtaining a pomace press cake by extracting juice from a fruit, vegetable, or combinations thereof; hydrating the pomace press cake; acidifying the pomace press cake with an organic acid; micro-grinding the hydrated, acidified pomace press cake to reduce the particle size of the pomace to less than 250 microns. 1. Claims 29-32, 34--36, and 38--422 are rejected under 35 U.S.C. § I03(a) as unpatentable over Gordon Paley et al. (WO 2008/104779 A2, published Sept. 4, 2008, "Gordon") in view of Rooks et al. (US 2004/0265451 Al, published Dec. 30, 2004, "Rooks"), Bosch (US 5,927,187, published July 27, 1999), and Powrie et al. (US 4,895,729, issued Jan. 23, 1990, "Powrie"). 2. Claims 33 and 37 are rejected under 35 U.S.C. § I03(a) as unpatentable over Gordon in view of Rooks, Bosch, Powrie, and 2 Appellants added claims 41 and 42 by Amendment, filed October 14, 2016. These claims depend directly and indirectly, respectively, on previously canceled claim 1. See Appeal Br. 13, 14--15. Although the Examiner included grounds for rejecting claims 41 and 42, the Examiner did not object to the dependency of these claims on a claim that is not pending. See Final Act. 3. Our disposition of the present appeal assumes that Appellants intended these additional claims to depend from pending independent claim 29 and that the Examiner understood Appellants' intentions as such. In the event of further prosecution, this claim dependency problem should be fixed. 2 Appeal2018-002247 Application 13/249,289 further in view of Myllymaki et al. (US 5,312,636, issued May 17, 1994, "Myllymaki"). 3. Claim 40 is rejected under 35 U.S.C. § 103(a) as unpatentable over Gordon in view of Rooks, Bosch, Powrie, and further in view of Thacker et al. (US 5,106,634, issued Apr. 21, 1992, "Thacker"). FINDINGS OF FACT & ANALYSIS Re} ections (1), (2), and (3) The Examiner's findings and conclusions regarding Gordon, Bosch, Rooks, and Powrie, either with or without Myllymaki or Thacker, are located on pages 2---6 of the Final Office Action and pages 2-6 of the Answer. It is well understood that "[ 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)). The fact that a reference may be modified to reflect features of the claimed invention does not make the modification, and hence the claimed invention, obvious unless the prior art, knowledge of a person having ordinary skill in the art, or the nature of the problem to be solved suggested the desirability of such modification. In re Mills, 916 F.2d 680, 682 (Fed. Cir. 1990). In this case, the Examiner finds that Gordon's pulp extraction from fruit and addition of excess fruit juice to the extracted pulp teaches the steps of obtaining and hydrating pomace recited in claim 29. (Ans. 3 (citing Gordon Figs. 1, 2)). Although the Examiner acknowledges that Gordon is 3 Appeal2018-002247 Application 13/249,289 silent regarding the requisite "pomace press cake," the Examiner finds Bosch teaches that producing a pomace press cake by pressing and filtering fruit in a juice press "promotes high quality juice." (Ans. 7 (citing Bosch 3:60-62)). The Examiner thus determined that "[i]t would have been obvious to further press with the filtering of Gordon and produce a press cake in order to help better extract the desired po mace product ( thus resulting in a 'press cake') for further treatment in Gordon." (Ans. 3). According to the Examiner, "[t]he press cake proposed in the modification ... would [have] involve[d] creating the cake in [Gordon's] pulping and sieving stage." (Final Act. 6 ( citing Gordon Fig. 1) ). Appellants argue that the Examiner's proposed "modification would be pointless" because, inter alia, this would have been "an extraneous step to remove more juice so that more juice can be added back" to Gordon's extracted pulp. (Appeal Br. 6, 9). Appellants further argue that Bosch's teachings regarding use of a juice press to promote "high quality juice" are taken out of context. See Reply Br. 2. In particular, Appellants assert that "Bosch's method and apparatus purports to produce a higher quality juice by preventing the crumbling of the pomace cake, which reduces sediment in the juice." Id. (citing Bosch 3:60-62, 3:57-62). Therefore, "the Examiner's rationale lacks articulated reasoning with any rational underpinning to support the legal conclusion of obviousness." (Reply Br. 2). Appellants' arguments are persuasive. We agree with Appellants that Bosch attributes higher quality juice to a method and apparatus directed to preventing pomace particulates from entering the final juice product. Appellants' characterization of Bosch's teachings is persuasive. See Bosch 8:54--58 (correlating the large drainage 4 Appeal2018-002247 Application 13/249,289 area "of the juice press 1, ... as a consequence of the slotted feed plate 4," with "high juice quality with a particularly low sediment content."). Thus, Bosch's method for treating pomace as a waste by-product is distinguished from Gordon's incorporation of pulp, i.e., pomace, into the food product. In view of this distinction, the Examiner has not provided any argument or reasoning supported by adequate facts to explain why a person of ordinary skill in the art would have found that Bosch's teachings disclose or suggest the disputed limitations. In particular, the Examiner has not adequately explained why the ordinary skilled artisan would have incorporated Bosch's solution for preventing pomace cake sediment from entering fruit juice into Gordon's method for making pomace-based food products. Therefore, the Examiner has not established a prima facie case of obviousness based upon articulated reasoning with rationale underpinnings. Thus, the facts and reasons relied on by the Examiner are insufficient to establish a prima facie case of obviousness as to independent claim 29 in rejection (1 ). Accordingly, we reverse the obviousness rejections (1) of claims 29--32, 34--36, and 38--42, (2) of claims 33 and 37, and (3) of claim 40 for the reasons set forth above. 37 C.F.R. § 4I.37(c)(l)(iv). DECISION The Examiner's decision is reversed. ORDER REVERSED 5 Copy with citationCopy as parenthetical citation