Ex Parte Auf Der Heide et al

Patent Trial and Appeal Board

Jun 29, 2016

10570930 (P.T.A.B. Jun. 29, 2016)

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.
10/570,930 03/08/2006 Dirk Auf Der Heide 03079K 3811
38263 7590 06/30/2016
ProPat, LLC
1794 Deer Park Lake Road
Spruce Pine, NC 28777
EXAMINER
BLACKWELL, GWENDOLYN
ART UNIT PAPER NUMBER
1782
MAIL DATE DELIVERY MODE
06/30/2016 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 DIRK AUF DER HEIDE,
CHRISTIAN AUF DER HEIDE, STEFANIE STALBERG,
and JUERG-HEINRICH KALLWEIT
____________

Appeal 2014-008081
Application 10/570,930
Technology Center 1700
____________
Before KAREN M. HASTINGS, GEORGE C. BEST, and
N. WHITNEY WILSON, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 1–8, 12–15, 18, 20, and 21 of
Application 10/570,930 under 35 U.S.C. § 103(a) as obvious. Final Act. 3, 9
(July 9, 2013). The Examiner further rejected claim 21 under 35 U.S.C.
§ 112, ¶ 2 as indefinite. Id. at 2. Appellants1 seek reversal of these
rejections pursuant to 35 U.S.C. § 134(a). We have jurisdiction under
35 U.S.C. § 6(b).
For the reasons set forth below, we AFFIRM.

1 Kalle GmbH is identified as the real party in interest. Appeal Br. 3.
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BACKGROUND
The ’930 Application describes a polyamide based casing for sausages
which is impregnated with liquid smoke. Spec. 3:17–25. The Specification
describes the casing as imparting a smoky flavor and dark coloration to
foodstuffs without the need for a browning agent. Id. at 3:1–15.
Claim 1 is representative of the ’930 Application’s claims and is
reproduced below from the Claims Appendix to the Appeal Brief:
1. A liquid-smoke-impregnated, tubular, single-layer or
multilayered food casing for smoked sausages that are not
separately smoked comprising a single-layer whose only
polymer is polyamide and/or copolyamide, or comprising an
inner layer whose only polymer is polyamide and/or
copolyamide, the casing exhibiting a water vapor permeability of
less than 30 g/m2 d, and the inside of the casing having a surface
energy of greater than 35 dyn/cm, wherein the casing is
impregnated on the inside with liquid smoke, but not with an
additional browning agent, said liquid smoke is absorbed by said
polyamide and/or copolyamide,
the food casing is either single-layered and the thickness
of the single-layered casing is 20 to 130 µm or
the food casing is multilayered and the thickness of the
polyamide inner layer of the multilayered casing is 15 to 70 µm,
the casing or the polyamide inner layer of the casing has a
swelling value of at least 10 % at 23 oC and
a time of action of the liquid smoke of at least 5 days is not
performed,
and said copolyamide does not comprise heterofunctional
polyamide.
Appeal Br. 29.
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3
REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claim 21 is rejected under 35 U.S.C. § 112, ¶ 2 as indefinite.
Final Act. 2; Ans. 2.
2. Claims 1–8, 12–14, 18, 20, and 21 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Erk2 and
Beckwith,3 with evidence provided by Stenger.4 Final Act. 3;
Ans. 3.
3. Claim 15 is rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Erk, Beckwith, with evidence provided
by Stenger, and Chiu.5 Final Act. 9; Ans. 9.
DISCUSSION
Appellants argue for the reversal of the obviousness rejection to
claims 1–8, 12–14, 18, 20, and 21 on the basis of limitations present in
independent claim 1. See Appeal Br. 12–24; Reply Br. 4–13, 17. We,
therefore, limit our analysis for this rejection to claim 1. Claims 2–8, 12–14,
18, 20, and 21 will stand or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(iv).
Appellants separately argue for the reversal of the obviousness rejection to
claim 15. See Appeal Br. 24–27; Reply Br. 13–15.
Rejection 1. The Examiner rejected claim 21 as indefinite for reciting
a liquid smoke impregnated food casing wherein “only as much liquid

2 US Patent No. 4,897,295, issued Jan. 30, 1990.
3 WO 97/36798, published Oct. 9, 1997.
4 US Patent No. 5,399,427, issued Mar. 21, 1995.
5 US Patent No. 4,377,187, issued Mar. 22, 1983.
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smoke is applied to the casing as said casing can absorb.” Final Act. 2; Ans.
2. Whether an application’s claims are indefinite is to be assessed through
the eyes of a skilled artisan and in view of the Specification. See In re
Skvorecz, 580 F.3d 1262, 1268 (Fed. Cir. 2009). In this case, the
Specification discloses that liquid smoke is impregnated on the casing’s
internal surface through a slug coating without the formation of droplets.
See Spec. 7:1–16. Accordingly, we conclude that the rejected claim meets
the necessary thresholds of clarity and precision when it is read through the
eyes of a skilled artisan and in view of this disclosure. We, therefore,
reverse Rejection 1.
Rejection 2. The Examiner rejected claims 1–8, 12–14, 18, 20, and
21 as obvious over the combination of Erk and Beckwith, with evidence
provided by Stenger. Final Act. 3; Ans. 3.
The Examiner found that Erk describes or suggests every limitation of
the food casing composition recited in claim 1 except the inclusion of liquid
smoke in the interior of a polyamide casing. Final Act. 4. As the Examiner
found, Beckwith describes the application of liquid smoke to the food
contact surface of a tube-shaped film. Id. at 5, citing Beckwith 2:13–19;
Final Act. 6, citing Beckwith 14:15–31. The Examiner further found
Beckwith teaches that the film is comprised of copolymer segments that are
insoluble in water along with other hygroscopic segments. Final Act. 5,
citing Beckwith 3:27–30. According to the Examiner, Beckwith teaches that
when the hygroscopic portions of the copolymer contact aqueous liquid
smoke solutions, they are able to retain some of the liquid smoke, which can
then be transferred to the food by contact with the film. Final Act. 5, citing
Beckwith 8:16–26. The Examiner determined that one of ordinary skill in
the art would have been motivated to combine Beckwith’s aqueous liquid
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smoke solution to prepare Erk’s polyamide casing “in order to impart smoke
color, flavor and/or odor to the food packaged in the casing of Erk.” Final
Act. 6.
Appellants argue that this rejection should be reversed because:
(1) Beckwith teaches away from the present invention because Beckwith’s
liquid smoke transfer requires segments of hygroscopic polymers, but does
not include polyamide as a suitable hygroscopic polymer, Reply Br. at 4–8,
(2) there would have been no reasonable expectation of success to combine
Beckwith’s liquid smoke with Erk’s polyamide casing for liquid smoke
transfer without Beckwith’s disclosed hygroscopic polymers, id. at 8–10,
and (3) Erk expressly states that the polyamide casing contains no additional
additives other than water. Id. at 13. We address these arguments below.
First, we are not persuaded by Appellants’ teaching away arguments.
Appellants correctly note that Beckwith does not include polyamides among
a finite list of hygroscopic polymers. Beckwith 10:10–27. Beckwith,
however, does not teach away from the present invention because it teaches
that preferred hygroscopic polymers have a water sorption capacity of
greater than 5%. Id. at 9:30–31; see also Final Act. 5. The Examiner found
that Erk teaches polyamide sausage casings, which can absorb at least 5% of
their own weight in water prior to saturation. Final Act. 3–4, citing Erk 1:4–
12, 3:5–10.
We find that, at the time of the invention, a person of ordinary skill in
the art would have understood that Beckwith teaches that food casings with
a preferred water sorption capacity of greater than 5% are suitable for
transferring liquid smoke to food surfaces. Beckwith 8:16–26; 9:30–31;
14:7–8. Thus, the ordinarily-skilled artisan would have considered the
whole of Beckwith’s disclosure and realized that Erk’s polyamide casing has
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Application 10/570,930
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a water sorption capacity suitable for transfer of Beckwith’s liquid smoke.
Erk 1:4–12, 3:5–10; claims 1, 2, and 7. In re Preda, 401 F.2d 825, 826
(CCPA 1968) (“[I]n considering the disclosure of a reference, it is proper to
take into account not only specific teachings of the reference but also the
inferences which one skilled in the art would reasonably be expected to draw
therefrom.”). As the Supreme Court has noted, such combinations as Erk’s
known polyamide casing with Beckwith’s known liquid smoke are likely to
be obvious. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (“The
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results.”). Appellants
have not persuaded us that the Examiner erred in concluding that their
claimed combination of familiar elements is such a case of obviousness.
Second, Appellants argue that the Examiner’s proposed modification
would not provide a reasonable expectation of success because: (i) Erk used
vapor smoke for his polyamide casings and (ii) Beckwith teaches that
conventional casings required “hygroscopic segments or moisture absorbing
polymers” to successfully transfer modifier to food during cook-in. Reply
Br. 9. Appellants’ argument is unpersuasive because it ignores Erk’s
teaching that polyamide casing exhibits the capacity to function as a
hygroscopic or moisture absorbing polymer as defined by Beckwith. “A
person of ordinary skill is also a person of ordinary creativity, not an
automaton.” KSR, 550 U.S. at 421.
Third, Appellants’ argument (3) correctly identifies error in the
Examiner’s findings because Erk refers to food stuff casings, not food, as
containing no other additives besides water. We, however, consider this
error harmless because this argument is not directed to the Examiner’s
rationale for modifying Erk to incorporate Beckwith’s liquid smoke. Rather,
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Appellants’ argument is directed to whether Erk teaches incorporation of
another additive, such as Beckwith’s liquid smoke.
The test for obviousness[, however,] is not whether the features
of a secondary reference may be bodily incorporated into the
structure of the primary reference; nor is it that the claimed
invention must be expressly suggested in any one or all of the
references. Rather, the test is what the combined teachings of
the references would have suggested to those of ordinary skill in
the art.
In re Keller, 642 F.2d 413, 425 (CCPA 1981).
In sum, Appellants have not pointed to persuasive evidence that
supports their contention that a person of ordinary skill in the art would have
been dissuaded from including the liquid smoke of Beckwith in Erk’s
composition. We, therefore, affirm Rejection 2.
Rejection 3. The Examiner rejected claim 15 as obvious over the
combination of Erk, Beckwith, with evidence provided by Stenger, and
Chiu. Final Act. 9; Ans. 9.
The Examiner found that Erk and Beckwith describes or suggests
every limitation of the food casing composition recited in claim 1 except the
inclusion of a liquid smoke solution containing carboxymethylcellulose in
the interior of a polyamide casing. Final Act. 10. As the Examiner found,
Chui teaches use of carboxymethylcellulose as a peelability enhancing agent
on the interior of sausage casings. Id., citing Chiu 3:2–33.
Appellants rely on arguments (2) and (3) above and further argue that
Chiu teaches the incorporation of liquid smoke within a cellulosic. Appeal
Br. 24–27; Reply Br. 13–15. Therefore, according to Appellants:
[t]he [Examiner’s proposed] combination would, at best, have . .
. formed either (i) liquid-smoke-impregnated casings based on
either fiber-reinforced cellulose (as taught by Chiu) or a polymer
including hygroscopic moieties in addition to polyamide and/or
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Application 10/570,930
8
copolyamide (as taught by Beckwith) or (ii) polyamide or
copolyamide casings that are smoked via smoke vapour in a
separate process step (as taught by Erk).

(emphasis in original) Appeal Br. 26; Reply Br. 14–15. This argument is not
directed to the Examiner’s rationale for modifying Erk to incorporate
Beckwith’s liquid smoke. For the reasons set forth above, we are not
persuaded by Appellants’ argument. Thus, we affirm Rejection 3.
CONCLUSION
For the reasons set forth above, we affirm the § 103 rejections of
claims 1–8, 12–15, 18, 20, and 21 of the ’930 Application. We reverse the
§ 112 rejection of claim 21
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED