Ex Parte McNaughton et al

Patent Trial and Appeal Board

Nov 21, 2016

11722641 (P.T.A.B. Nov. 21, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111722,641 06/22/2007 James L. McNaughton
65895 7590 11/23/2016
ALBEMARLE CORPORATION
451 FLORIDA STREET
BATON ROUGE, LA 70801-1765
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.
SU-7273-B US 1830
EXAMINER
ARNOLD, ERNST V
ART UNIT PAPER NUMBER
1613
NOTIFICATION DATE DELIVERY MODE
11/23/2016 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):
Albemarle.IPDocket@albemarle.com
docket-ip@mcglinchey.com
tina.matz@albemarle.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES L. MCNAUGHTON and ERIC W. LIIMATTA1
Appeal2015-005572
Application 11/722,641
Technology Center 1600
Before MELANIE L. MCCOLLUM, TA WEN CHANG, and
DAVID COTTA, Administrative Patent Judges.
COTT A, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a method
of processing a four-legged slaughter animal. The Examiner rejected the
claims on appeal as obvious under 35 U.S.C. § 103(a).
We affirm.
1 Appellants identify the real party in interest as Albemarle Corporation.
Br. 1.
Appeal2015-005572
Application 11/722,641
STATEMENT OF THE CASE
Claims 1,3,5, 16,29,30,36,37,40,41,45,46,53,56,65,68, 73,
75-80, 84, 89, and 90 are on appeal. Claim 1 is illustrative and reads as
follows:
1. A method of processing a four-legged slaughter animal
selected from cattle, swine, horses, sheep, bison, rabbit, camel,
kangaroo, alligator, crocodile, buffalo, goats, llamas, deer,
antelope, elk, squirrel, opossum, raccoon, and nutria for
consumption as meat and/or meat product(s), said method
compnsmg:
contacting a carcass of said animal, after exsanguination,
with a microbiocidal solution, and/or
contacting at least one raw meat product and/or at least
one processed meat product derived from said carcass at least
once with a microbiocidal solution wherein each said
microbiocidal solution, independently, consists of:
water having a bromine residual derived from (i) at
least one alkali metal bromide, and/ or at least one
alkaline earth metal bromide, and (ii) at least one alkali
metal hypohalite and/ or at least one alkaline earth metal
hypo halite;
the bromine residual in each microbiocidal solution being
sufficient to provide microbiocidal activity.
The Examiner rejected claims 1, 3, 5, 16, 29, 30, 36, 37, 40, 41, 45,
46, 53, 56, 65, 68, 73, 75-80, 84, 89, and 90 as unpatentable under
35 U.S.C. § 103(a) over the combination of Howarth,2 Hei, 3 Gil,4 Shuman,5
2 Howarth, US Patent No. 6,908,636 B2, issued June 21, 2005 ("Howarth").
3 Hei et al., US Patent No. 6,534,075 Bl, issued Mar. 18, 2003 ("Hei").
4 Gil, THE MICROBIOLOGY OF MEAT AND POULTRY 118-57 (Andrew
Davies et al. eds. 1998) ("Gil").
5 Shuman et al., US Patent Pub. No. 2004/0052702 Al, pub. Mar. 18, 2004
("Shuman").
2
Appeal2015-005572
Application 11/722,641
Austin,6 McFarland,7 Brent,8 lngemanson,9 and Mason. 10
ANALYSIS
Appellants argue claims 1, 3, 5, 16, 29, 30, 36, 37, 40, 41, 45, 46, 53,
56, 65, 68, 73, 75-80, 84, 89, and 90 together as a group. We designate
claim 1 as representative of the group.
The Examiner found that Howarth taught a methods of slaughtering
and processing poultry using a combination of an alkali metal bromide
(sodium bromide) and an alkali metal hypo halite (sodium hypochlorite - i.e.
bleach) to reduce bacterial contamination. Final Act. 4--5. Howarth,
however, does not expressly discloses processing four-legged slaughter
animals as recited in claim 1. Id. at 10. The Examiner found that this
element was disclosed in Hei, which discloses a method of reducing the
microbial or viral count on four-legged slaughter animals such as beef. Id. at
7. The Examiner also found that Gil disclosed "guidelines for the processing
of cattle with critical control points and the obvious steps of
decontamination, bleeding, head and shank removal, skinning, washing,
bacterial rinse, final wash, etc .... " Id. at 8.
Based on the combined teachings of Howarth, Hei and Gil the
Examiner concluded:
It would have been obvious to one of ordinary skill in the art at
the time the claimed invention was made to perform the method
6 Austin, US Patent No. 5,707,594, issued Jan. 13, 1998 ("Austin").
7 McFarland, US Patent No. 5,603,972, issued Feb. 18, 1997 ("McFarland").
8 Brent, US Patent No. 5,124,125, issued June 23, 1992 ("Brent").
9 Ingemanson, US Patent No. 6,863,864 Bl, issued Mar. 8, 2005
("Ingemanson").
10 Mason et al., The Uses of Ultrasound in Food Technology, 3
ULTRASONICS SONOCHEMISTRY S253-60 (1996) ("Mason").
3
Appeal2015-005572
Application 11/722,641
of Howarth in processing the carcasses/meat products of the
four-legged slaughter animals instantly claimed, as suggested
by Hei et al. and Gil . . . . One of ordinary skill in the art would
have been motivated to do this because both Hei et al. and
Howarth are directed to decontamination of carcasses for
consumption as meat and/ or meat products and it does not
require any inventive skill to apply the composition used in the
methods of Howarth to decontaminate microorganisms on at
least the beef carcasses of Hei ... [I]t will act as an
antimicrobial whether it is applied to a bull, cow, steer, nutria,
deer, hog, boar, pig or any other four-legged slaughter animal.
Id. at 10-11.
Appellants argue that Howarth discloses a composition - 1,3-
dibromo-5,5-dimethylhydantoin (DBDMH) - that is more effective than
the combination of sodium bromide and bleach. App. Br. 8-9. More
specifically, Appellants argue that DBDMH has an effectiveness of 99 .999%
while sodium bromide/bleach mixtures ranged from 0.408% to 85%. Id. at
9. Thus, Appellants contend: "The results in Howarth would have taught a
person of ordinary skill in the art that DBDMH was consistently a more
effective biocide than sodium bromide/bleach mixtures." Id. at 10. We are
not persuaded.
That Howarth discloses DBDMH to be more effective than mixtures
of sodium bromide/bleach does not change the fact that sodium
bromide/bleach was disclosed as an effective microbiocide for use on animal
carcasses. See In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994) (finding the
use of epoxy obvious even though the art taught "deficiencies of epoxy-
impregnated material," noting "[a] known or obvious composition does not
become patentable simply because it has been described as somewhat
inferior to some other product for the same use'}
4
Appeal2015-005572
Application 11/722,641
Appellants argue that the inventive composition in Hei requires three
species: a quaternary amrnonium cmnpound, a metal halide and an oxidant
Relying on the September 17, 2013 Declaration of the inventor~ Eric
Liimatta ("First Declaration"); and three references cited in an Information
Disclosure Statement, i\.ppellants argue that quaten1ary armnonium is not
compatible with hypochlorites. App. Br. 10----11. We are not persuaded.
As an initial matter, Appellants are attacking the references
individually, ignoring Howarth's teaching that the combination of sodium
brmnide and bleach can be used as a microbiocide to treat meat One cannot
show nonobviousness by attacking references individually when the
rejection is based on a combination of references. In re Keller, 642 F.2d
413, 426(CCPA1981). In addition, given that the Examiner relied upon
Howaiih' s disclosure of the claimed microbiocide, the importance of Hei
lies in its disclosure of treating four-legged slaughter animals with a
microbiocide. See Hei, col. 21, 11. 33-34. This teaching is not negated by
Hei's disclosure of a composition that is incmnpatible with bleach.
Appellants argue that Shuman, Austin, McFarland, Brent, Ingemanson
and Mason - all of which disclose methods of reducing microbial
contamination through non-chemical means (e.g. using radiation) - teach
away from the claimed invention by discouraging the use of chemical
biocides. App. Br. 11-14. For example, Appellants argue that the purpose
of Shuman' s invention was to sterilize "without the use of foodstuff altering
chemicals" and that Shuman teaches that "the chemicals used [for
sterilization] are costly and may leave a residue." Id. at 11-12. We are not
persuaded.
5
Appeal2015-005572
Application 11/722,641
The use of chemical disinfectants in connection with food processing
was well know. See, e.g., Spec. i-f 1 (describing the use of chemicals like
acids and chlorine-based biocidal agents in animal processing as
"typical[]"). Prior art statements regarding the advantages of non-chemical
treatments or the disadvantages of chemical treatments are insufficient to
teach away from the use of chemical microbiocides to disinfect food. See
Gurley, 27 F.3d at 553. That non-chemical disinfecting means exist does not
make Appellants' chemical disinfectant any less obvious.
Finally, Appellants argue that unexpected results support the
patentability of their composition. Appellants rely upon testing in the
Specification comparing the beef discoloring effects of bleach, diluted
bleach, lactic acid, and Stabrom® 909 as support for their unexpected results
argument. App. Br. 15. This testing cannot support a finding of unexpected
results because none of the four compositions tested falls within the scope of
the claim 1, which precludes microbiocidal components in addition to the
two recited in the claim. Id. at fn. 1.
Appellants also cite to the May 21, 2014 Declaration of the inventor,
Eric Liimatta ("Second Declaration"), as support for its unexpected results
argument. App. Br. 15. The Second Declaration provides test results
showing no change in coloration for steak treated with a composition falling
within the scope of the claims. Second Declaration i-fi-1 15, 21. The Second
Declaration, however, does not provide any comparative testing. Moreover,
the testing described in the Second Declaration cannot be fairly be compared
to the results of testing bleach, diluted bleach, and lactic acid described in
the Specification because the tests were different. The Second Declaration
describes two discoloration tests. In the first test, pieces of steak were
6
Appeal2015-005572
Application 11/722,641
sprayed with the claimed composition for 10 seconds and allowed to drain
for one minute. Id. i-f 11. In the second test, the claimed composition was
"applied in the carcass wash" at a commercial beef processing plant. Id. i-fi-1
16, 18. In contrast, the Specification describes discoloration tests where
beef samples were soaked in the test compositions for 5 minutes.
Specification i-f 84. The differences in test conditions make the comparison
of discoloration results unhelpful. We have no way of knowing whether the
compositions tested in the Specification would result in discoloration if they
were used in a 10 second spray or a "carcass wash" of unspecified duration.
Similarly, we have no way of knowing whether the claimed composition
would produce discoloration if beef were soaked in it for 5 minutes.
Accordingly, we affirm the Examiner's rejection of claim 1 as
obvious under 35 U.S.C. § 103(a) over the combination of Howarth, Hei,
Gil, Shuman, Austin, McFarland, Brent, Ingemanson, and Mason. Because
they were not argued separately, we also affirm the Examiner's rejection of
claims 3, 5, 16, 29, 30, 36, 37, 40, 41, 45, 46, 53, 56, 65, 68, 73, 75-80, 84,
89, and 90.
SUMMARY
For these reasons and those set forth in the Examiner's Answer, the
Examiner's final decision to reject claims 1, 3, 5, 16, 29, 30, 36, 37, 40, 41,
45, 46, 53, 56, 65, 68, 73, 75-80, 84, 89, and 90 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) (1).
AFFIRMED
7