TYSON FOODS, INC.

Patent Trials and Appeals Board

Oct 26, 2020

2020000773 (P.T.A.B. Oct. 26, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/357,944 05/13/2014 Yongcheng Liu 38410.01618 8895
24919 7590 10/26/2020
MCAFEE & TAFT
TENTH FLOOR, TWO LEADERSHIP SQUARE
211 NORTH ROBINSON
OKLAHOMA CITY, OK 73102
EXAMINER
REDDY, KARUNA P
ART UNIT PAPER NUMBER
1764
NOTIFICATION DATE DELIVERY MODE
10/26/2020 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):
ipdocket@mcafeetaft.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YONGCHENG LIU, KE-WEI WANG,
MICHAEL BLANCHARD, CLIVE LI, and GARY METZGER
Appeal 2020-000773
Application 14/357,944
Technology Center 1700
Before LINDA M. GAUDETTE, N. WHITNEY WILSON, and
BRIAN D. RANGE, Administrative Patent Judges.

WILSON, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s February 25, 2019 decision to reject claims 1–3, 5, 10–12, 14–17,
19, 26, 28, and 88–104 (“Non-Final Act.”). We have jurisdiction under
35 U.S.C. § 6(b).
We reverse.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as Tyson
Foods, Inc. (Appeal Br. 1).
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Application 14/357,944

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CLAIMED SUBJECT MATTER
Appellant’s disclosure is directed to, inter alia, a composition
comprising an eggshell component and a polymer (Abstract). According to
one of the inventors, the claims are based on a discovery that a better
polymer composite can be obtained by using an eggshell component that
possesses its original lipid-protein structure and which is substantially free
of the inner membrane material of the original eggshell (Rule 132
Declaration of Yongcheng Liu, ¶ 9). The inventor also stated that by
retaining the original lipid-protein structure, the eggshell powder remains
hydrophobic and is able to better disperse into the polymer component than
an eggshell powder which has been denatured and has hydrophilic properties
(id.). Claim 1, reproduced below from the Claims Appendix, is illustrative of
the claimed subject matter:
1. A polymer composite composition comprising:
an eggshell component, wherein the eggshell component
possesses a lipid-protein structure substantially similar to that
of the eggshell from which the eggshell component is derived,
and wherein the eggshell component is substantially free of
eggshell inner membrane material; and
a polymer component.

REFERENCES
The prior art references relied upon by the Examiner are:
Name Reference Date
Arias Bautista, et al. US 2006/0068185 A1 March 30, 2006
Minagoshi US 2006/0292356 A1 December 28, 2006
Morimoto, et al. US 2009/0124756 A1 May 14, 2009
Minatelli, et al. US 2011/0117207 A1 May 19, 2011
New US 2011/0272502 A1 November 10, 2011

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Application 14/357,944

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REJECTIONS
1. Claims 1, 2, 11, 12, 14–16, 88, 89, 93, 94, 97, 98, and 100–104
are rejected under 35 U.S.C. § 103(a) as unpatentable over New in view of
Minagoshi.
2. Claims 1, 2, 10–12, 14–16, 19, 88, 89, and 91–104 are rejected
under 35 U.S.C. § 103(a) as unpatentable over New in view of Arias
Bautista.
3. Claims 1–3, 5, 10, 11, 14–17, 19, 88–92, 95, 96, and 99–104
are rejected under 35 U.S.C. § 103(a) as unpatentable over New in view of
Morimoto.
4. Claims 1, 2, 10–12, 14–16, 88, 89, 93, 94, 97, 98, and 100–104
under 35 U.S.C. § 103(a) as unpatentable over Minagoshi, in view of New,
and Minatelli.
5. Claims 1, 2, 5, 10–12, 14–16, 19, 26, 28, 88, 89, and 91–104
under 35 U.S.C. §103(a) as unpatentable over Arias Bautista, in view of
New and Minatelli.
6. Claims 1–3, 5, 10, 11, 14–17, 19, 28, 88–92, 95, 96, and 99–
104 under 35 U.S.C. § 103(a) as unpatentable over Morimoto, in view of
New and Minatelli.
OPINION
Because we decide this appeal based on arguments which are
applicable to each of the rejections on appeal, we focus our discussion on the
rejection of claim 1 over New in view of Minagoshi. However, our rationale
is equally applicable to each of the rejections.
The Examiner finds that New discloses feeding eggshells with
attached membrane into a hopper, and separating the pulverized eggshell
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Application 14/357,944

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from the membrane (Non-Final Act. 3). The Examiner further finds that
“[g]iven that the eggshell membrane is separated from the eggshell using
airflow without harsh chemicals or high temperatures, it is the [O]ffice’s
position that eggshell powder of New inherently retains the lipid-protein
layer” and “reads on eggshell component possesses a lipid-protein structure
substantially similar to that of the eggshell from which the eggshell
component is derived” in claim 1 (Non-Final Act. 3, relying on New ¶¶ 9–
11). The Examiner also finds that New is silent as to the moisture content of
its eggshell powder, but because New’s process uses a standing shockwave
to disintegrate, pulverize, and extract moisture, “one skilled in [the] art
would have a reasonable basis to expect the moisture content in the eggshell
powder to be low” (Non-Final Act. 3–4, relying on New ¶ 10).
The Examiner further relies on Minagoshi as teaching that it was
known to combine eggshell powders in polymeric compositions comprising
natural rubbers to make tires, which provides a number of advantages (Non-
Final Act. 4, citing Minagoshi ¶ 22). Therefore, according to the Examiner,
it would have been obvious to incorporate New’s eggshell powder into
Minagoshi’s polymer composition to obtain the stated advantages (id.).
Appellant argues that the Examiner’s finding that New’s eggshell
powder inherently retains its lipid- protein layer and thus possesses a lipid-
protein structure substantially similar to that of the eggshell from which the
eggshell component is derived, as set forth in claim 1, is not supported by
the evidence of record (Appeal Br. 9–10). To support this finding, the
Examiner finds that in New’s process “eggshell membrane is separated from
the eggshell using airflow without harsh chemicals or high temperatures,”
the resulting eggshell powder would “inherently” retain the original lipid-
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protein layer (Non-Final Act. 3; Ans. 14). The Examiner further finds that
because New is silent with respect to the temperature at which its process
operates, a person of skill in the art would have “read the process of New as
being conducted at room temperature.” (Id.).
Appellant’s argument is persuasive of reversible error. It is well
established that “[i]nherency . . . may not be established by probabilities or
possibilities. The mere fact that a certain thing may result from a given set
of circumstances is not sufficient.” In re Robertson, 169 F.3d 743, 745 (Fed.
Cir. 1999) (citations omitted). In this instance, it is undisputed that the
eggshells must be processed at a temperature of 41°C or lower in order to
ensure that the eggshell component retains its lipid-protein layer and
possesses a lipid-protein structure substantially similar to that of the eggshell
from which the eggshell component is derived (Liu Decl. ¶ 9; Appeal Br. 10;
see also Ans. 16–17 (Examiner does not dispute that temperatures above
41°C would denature the eggshell material)). Similarly, it is not disputed
that New does not discuss the temperatures at which its process takes place
(Ans. 16; Appeal Br. 10).
Both the Examiner and Appellant make arguments and point to
evidence that suggest that either (1) New’s process is conducted at a
temperature below 41°C (and, therefore, the resulting product would meet
the limitations of claim 1), or (2) New’s process is conducted at a
temperature in excess of 41°C (and, therefore, the resulting product would
not meet the limitations of claim 1). In particular, the Examiner finds that
because New is silent as to temperature, a person of skill in the art would
have understood that the process was conducted at room temperature (i.e.
below 41°C) (Ans. 16). However, Appellant argues that the use of high-
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speed airflow in New’s process would mean a high (i.e. higher than 41°C)
temperature,2 and that the drying steps described by New could also be
conducted an elevated temperature (Appeal Br. 10–11).
On balance, it is uncertain what temperature New’s process suggests.
The preponderance of the evidence of record, therefore, does not support a
finding that New’s process inherently takes place at a temperature of less
than 41°C. The evidence, therefore, also does not support a finding that
New’s process necessarily results in an eggshell composition which
possesses a lipid-protein structure substantially similar to that of the eggshell
from which the eggshell component is derived. Nor has the Examiner made
adequately supported findings which would have made it obvious for a
person of skill in the art to conduct the New process in such a manner as to
ensure that the eggshell material does not become denatured.
The Examiner has the initial burden of establishing a prima facie case
of obviousness based on an inherent or explicit disclosure of the claimed
subject matter under 35 U.S.C. § 103. In re Oetiker, 977 F.2d 1443, 1445
(Fed. Cir. 1992) (“[T]he examiner bears the initial burden, on review of the
prior art or on any other ground, of presenting a prima facie case of
unpatentability.”). To establish a prima facie case of obviousness, the
Examiner must show that each and every limitation of the claim is described
or suggested by the prior art or would have been obvious based on the
knowledge of those of ordinary skill in the art. In re Fine, 837 F.2d 1071,

2 The Examiner provides evidence that high-speed airflow can result in
lower temperatures (Ans. 17), while Appellant provides evidence to the
contrary (Reply Br. 4). Thus, the evidence of record does not definitively
establish that the airflow speed does, or does not, result in a temperature
lower than 41°C.
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1074 (Fed. Cir. 1988). In this instance, the Examiner has not met the burden
of showing that the use of an eggshell component which possesses a lipid-
protein structure substantially similar to that of the eggshell from which the
eggshell component is derived would have been obvious in view of the cited
art. Accordingly, we cannot sustain the rejection of claim 1 over New and
Minagoshi. Moreover, because each of the rejections relies on the same
erroneous finding based on New (that New discloses an eggshell component
which possesses a lipid-protein structure substantially similar to that of the
eggshell from which it is derived), we also reverse those rejections.

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CONCLUSION
In summary:
Claims
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
1, 2, 11, 12,
14–16, 88, 89,
93, 94, 97, 98,
100–104
103(a) New, Minagoshi 1, 2, 11, 12, 14–
16, 88, 89, 93,
94, 97, 98, 100–
104
1, 2, 10–12,
14–16, 19, 88,
89, 91–104
103(a) New, Arias
Bautista
1, 2, 10–12, 14–
16, 19, 88, 89,
91–104
1–3, 5, 10, 11,
14–17, 19,
88–92, 95, 96,
99–104
103(a) New, Morimoto 1–3, 5, 10, 11,
14–17, 19, 88–
92, 95, 96, 99–
104
1, 2, 10–12,
14–16, 88, 89,
93, 94, 97, 98,
100–104
103(a) Minagoshi, New,
Minatelli
1, 2, 10–12, 14–
16, 88, 89, 93,
94, 97, 98, 100–
104
1, 2, 5, 10–12,
14–16, 19, 26,
28, 88, 89, and
91–104
103(a) Arias Bautista,
New, Minatelli
1, 2, 5, 10–12,
14–16, 19, 26,
28, 88, 89, 91–
104
1–3, 5, 10, 11,
14–17, 19, 28,
88–92, 95, 96,
99–104
103(a) Morimoto, New,
Minatelli
1–3, 5, 10, 11,
14–17, 19, 28,
88–92, 95, 96,
99–104
Overall
Outcome
1–3, 5, 10–12,
14–17, 19, 26,
28, 88–104

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
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REVERSED