Ex Parte Han et al

Patent Trial and Appeal Board

Dec 27, 2018

13249289 (P.T.A.B. Dec. 27, 2018)

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).
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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.
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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
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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
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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
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