Ex Parte Domazakis

Patent Trial and Appeal Board

Oct 17, 2018

10577659 (P.T.A.B. Oct. 17, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
10/577,659 05/01/2006 Emmanouil Domazakis
22850 7590 10/19/2018
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
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.
454671 US59PCT 8474
EXAMINER
STIJLII, VERA
ART UNIT PAPER NUMBER
1791
NOTIFICATION DATE DELIVERY MODE
10/19/2018 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):
patentdocket@oblon.com
OBLONPAT@OBLON.COM
iahmadi@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EMMANOUIL DOMAZAKIS
Appeal2017-002687 1
Application 10/577 ,659
Technology Center 1700
Before CATHERINE Q. TIMM, KAREN M. HASTINGS, and
AVEL YN ROSS, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
Appellant requests review under 35 U.S.C. § 134 from the Examiner's
final rejection of claims 7, 12, 14, and 21-29 under 35 U.S.C. § 103(a) as
unpatentable over the combined prior art of Domazakis (US 2003/0049364
Al, published March 13, 2003), Shapiro (US 4,377,597, issued March 22,
1983), and Brandt (Marinades 'Meat' Challenges, www.preparedfoods.com,
(December 9, 2003)). 2 We have jurisdiction pursuant to 35 U.S.C. § 6.
We AFFIRM.
1 The real party in interest is identified as "CRET AF ARM SOCIETE
ANONYME INDUSTRIAL AND COMMERCIAL TRADING AS CRETA
FARMS.A." (Appeal Br. 1).
2 The Examiner rejects all of the claims on appeal under the same set of
references, but alternately relies upon Domazakis or Shapiro as the primary
reference (Final Action 3-9; Ans. 2-9).
Appeal2017-002687
Application 10/577,659
BACKGROUND
Claim 7 is illustrative of the claimed subject matter and is reproduced
below from the Claims Appendix to the Appeal Brief:
7. A method for the production of heat treated meat-based
products from items of meat of entire muscular tissue by the
incorporation of olive oil, comprising:
(a) injecting the meat items of entire muscular tissue, of
low temperature, with a brine comprising water and salt;
(b) inserting the injected meat items of entire muscular
tissue into a tumbling machine and subjecting the injected
muscular tissue to tumbling under a vacuum until extraction of
meat proteins has been achieved and until the extracted proteins
form a substance on the surface of the meat items of entire
muscular tissue that is capable of forming a stable emulsion
with olive oil;
( c) suspending the tumbling after completion of b) and
then adding olive oil into the tumbling machine;
( d) creating a stable emulsion on the surface of the meat
items of muscular tissue between the added olive oil, the water
and the extracted meat proteins by resuming the tumbling until
incorporation of the added olive oil is completed; and
( e) heat treating the items of meat from d) to cause
binding between the meat items of entire muscular tissue and
form the heat treated meat-based product and to stably
incorporate olive oil into the meat product, wherein the
temperature of the meat items of entire muscular tissue during
(b ), ( c) and ( d) is maintained below about 4 °C.
App. Br. 43 (Claims Appendix).
Appellant mainly focuses on claim 7 in their arguments. Accordingly,
we focus mainly on independent claim 7, and also address the Appellant's
separate arguments on dependent claims 21, 23 (Appeal Br. 36-39) and
claims 25, 26, and 28 (Appeal Br. 39-41).
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Application 10/577,659
ANALYSIS
We have reviewed each of Appellant's arguments and evidence for
patentability. However, we are in agreement with the Examiner that the
claimed subject matter of representative claim 20 would have been obvious
to one of ordinary skill in the art within the meaning of§ 103 in view of the
applied prior art. We determine that, after consideration of all of the
evidence in this appeal, including the various Declarations 3, that the
evidence tending to establish the obviousness of the claimed subject matter
outweighs any evidence of record that may tend to indicate the non-
obviousness thereof.
Accordingly, we sustain the Examiner's rejections of the claims for
essentially those reasons expressed in the Answer, including the Examiner's
Response to Argument section, and we add the following primarily for
emphasis.
It has been established that "the [obviousness] analysis need not seek
out precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ." KSR Int 'l Co. v. Teleflex
Inc., 550 U.S. 398,418 (2007). Likewise, it is also well settled that a
reference stands for all of the specific teachings thereof as well as the
inferences one of ordinary skill in the art would have reasonably been
3 Declaration of George Stephanopoulos ( dated June 17, 2011 ); Declaration
ofVasileios Voumvourakis (dated August 9, 2012 and September 2, 2015);
Declaration of Professor Spyros Georgakis ( dated August 10, 2012,
December 20, 2012, September 2, 2015), listed in the Evidence Appendix
section of the Appeal Brief (Appeal Br. 45).
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expected to draw therefrom. See In re Fritch, 972 F.2d 1260, 1264---65 (Fed.
Cir. 1992).
Appellant's arguments focus on their belief that the Examiner used
impermissible hindsight in combining the teachings of the applied
references, in part because neither Domazakis or Shapiro explicitly discuss
injecting "meat items of entire muscular tissue" with the brine solution
(generally Appeal Br.; Reply Br.). These arguments are unpersuasive, since,
as aptly pointed out by the Examiner, the use of larger meat items would
have been within the level of skill in the art and injecting a brine solution
into such larger meat items would have been no more than the predictable
use of a known alternative prior art element/step for its function to marinate
meat as exemplified in Brandt (Ans. generally). See also, Merck & Co. v.
Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (holding that the
prior art's disclosure of over 1200 possible combinations rendered all
possible formulations obvious). See also, cf Winner Int 'l Royalty Corp. v.
Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000) ("The fact that the
motivating benefit comes at the expense of another benefit, however, should
not nullify its use as a basis to modify the disclosure of one reference with
the teachings of another. Instead, the benefits, both lost and gained, should
be weighed against one another").
Indeed, Appellant admits that the "Examiner's proposed modifications
to the processes taught by Domazakis and Shapiro would have been within
the skill of the ordinary artisan" (Appeal Br. 16), but argue that the
Examiner has relied upon an impermissible "obvious to try" approach
(Appeal Br. 17). This is unpersuasive. As pointed out by the Examiner,
Domazakis teaches the advantages of using brine, then an olive oil addition,
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while maintaining the meat temperature below 4 °C as claimed. One of
ordinary skill, using no more than ordinary creativity, would have
predictably used such a process on larger items of meat ( of entire muscular
tissue as exemplified in Shapiro) and expect that larger meat items would
predictably benefit from an injection of the brine solution as exemplified in
Brandt (Ans. 10-13).
Appellant also argues that the applied prior art only mixes but does
not teach tumbling the meat (Reply Br. 8). This is not persuasive since
Brandt discusses tumblers (Brandt p. 1). Moreover, Appellant's
Specification teaches that tumbling the meat is a known method (Spec. 7
("the tumbling is carried out according to known methods for the production
of ham")). An applicant cannot defeat an obviousness rejection by asserting
that the cited references fail to teach or suggest elements which the applicant
has acknowledged are taught by the prior art. Constant v. Advanced Micro-
Devices, Inc., 848 F. 2d 1560, 1570 (Fed. Cir. 1988) ("A statement in a
patent that something is in the prior art is binding on the applicant and
patentee for determinations of anticipation and obviousness.") and In re
Nomiya, 509 F.2d 566, 571n.5 (CCPA 1975) (A statement by an applicant
that certain matter is prior art is an admission that the matter is prior art for
all purposes).
Appellant's argument that the Declarations evinces that the present
invention is non-obvious is not persuasive. The Stephanopolus Declaration
is relied upon to address that Brandt teaches away from its combination with
Domazakis ( e.g., Appeal Br. 18). The Georgakis Declarations are relied
upon to address that effects on comminuted meat as in Domazakis cannot be
predicted onto whole muscular tissue (e.g., Appeal Br. 21). The
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V omnvourakis Declarations detail experiments that are stated to show that
use of the claimed method sequence of steps is critical and produces good
adhesion of the meat pieces and better texture (e.g., Appeal Br. 28, 30, 31
33). Appellant states that the evidence shows "unexpected results" (e.g.,
Appeal Br. 40).
From our perspective, this nonobviousness evidence is deficient in a
number of respects.
First of all, it is questionable whether the results shown by these
declarations are actually unexpected. Pfizer, Inc. v. Apotex, Inc., 480 F.3d
1348, 1371 (Fed. Cir. 2007) ("[A]ny superior property must be unexpected
to be considered as evidence of non-obviousness").
It is questionable whether the results shown by the Voumvourakis
Declarations are properly characterizable as unexpected (Appeal Br. 33,
explaining that Georgakis Declaration states texture is significantly better
when using claimed steps versus meats prepared with alternative steps in the
Voumvourakis Declarations). We here emphasize that nowhere in his
specification does the Appellant characterize the process as producing a
meat product with an unexpected texture. It is only the Appellant's attorney
in the brief who describes these results as unexpected. Under these
circumstances, we view the data as merely representing the optimization of
such parameters as brine injection versus surface treatment and known
tumbling techniques which would have been within the skill of and thus
obvious to the artisan as previously discussed.
Appellant's reliance on the various Declarations is also unpersuasive
for reasons adequately explained by the Examiner (e.g., Ans. 13-15 (note,
Ans. 15 explaining that the extraction of meat proteins by vacuum treatment
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with brine in order to bring the proteins on the meat surface for their
adhesive effect to form restructured meat products was known as evidenced
in Shapiro (e.g., Shapiro col. 3, 11. 15-22; col. 4, 11. 1-5))). We discern no
reversible error in the Examiner's assessment of the weight to be given to
the submitted evidence. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359,
1368 (Fed. Cir. 2004) ("[T]he Board is entitled to weigh the declarations and
conclude that the lack of factual corroboration warrants discounting the
opinions expressed in the declarations."). See also Velander v. Garner, 348
F.3d 1359, 1371 (Fed. Cir. 2003) ("In giving more weight to prior
publications than to subsequent conclusory statements by experts, the Board
acted well within [its] discretion."); Yorkey v. Diab, 601 F.3d 1279, 1284
(Fed. Cir. 2010) (The Board has discretion to give more weight to one item
of evidence over another "unless no reasonable trier of fact could have done
so").
The Georgakis Declaration filed August 10, 2012 concludes that "the
claimed process solves a long felt need" (3). Establishing long-felt need
requires objective evidence that an art-recognized problem existed in the art
for a long period of time without solution. In particular, the evidence must
show that the need was a persistent one that was recognized by those of
ordinary skill in the art. In re Gershon, 372 F.2d 535,538 (CCPA 1967).
The relevance of long-felt need and the failure of others to the issue of
obviousness depend on several factors. First, the need must have been a
persistent one that was recognized by those of ordinary skill in the art.
Orthopedic Equip. Co. v. All Orthopedic Appliances, Inc., 707 F.2d 1376,
1383 (Fed. Cir. 1983); see also In re Gershon, 372 F.2d at 538. Second, the
long-felt need must not have been satisfied by another before the invention
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by applicant. Newell Cos. v. Kenney Mfg. Co., 864 F.2d 757, 768 (Fed. Cir.
1988) ("[O]nce another supplied the key element, there was no long-felt
need or, indeed, a problem to be solved."). Third, the invention must in fact
satisfy the long-felt need. In re Cavanagh, 436 F.2d 491,496 (CCPA 1971).
"[L Jong-felt need is analyzed as of the date of an articulated identified
problem and evidence of efforts to solve that problem." Texas Instruments,
Inc. v. Int'! Trade Comm'n, 988 F.2d 1165, 1178 (Fed. Cir. 1993).
Based on the above, Appellant's evidence, which is partly in the form
of conclusory statements, from the various Declarations cannot be accorded
great weight. Balancing all the evidence anew, it is our conclusion that the
evidence for obviousness outweighs the evidence against obviousness.
In addition, we emphasize that, although secondary considerations
such as unexpected results must be taken into account, they do not
necessarily control the obviousness conclusion. Sud-Chemie, Inc. v.
Multisorb Techs., Inc., 554 F.3d 1001, 1009 (Fed. Cir. 2009) ("evidence of
unexpected results and other secondary considerations will not necessarily
overcome a strong prima facie showing of obviousness"); Agrizap, Inc. v.
Woodstream Corp., 520 F.3d 1337, 1344 (Fed. Cir. 2008) (Secondary
considerations "including substantial evidence of commercial success,
praise, and long-felt need, were inadequate to overcome a strong showing of
primary considerations that rendered the claims at issue invalid."); Pfizer,
Inc. v. Apotex, Inc., 480 F.3d 1348, 1372 (Fed. Cir. 2007) ("[T]his secondary
consideration does not overcome the strong showing of obviousness in this
case. Although secondary considerations must be taken into account, they do
not necessarily control the obviousness conclusion").
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Here, the case of obviousness is so strong that Appellant's alleged
unpredictability of its claimed method to produce a meat product containing
olive oil is ultimately insufficient, since the applied prior art evinces the
known use of olive oil in making a restructured meat product as in the
method of claim 20, as well as the obviousness of the injection of brine into
meat and mixing via tumbling (see generally Ans.).
With respect to dependent claims 21 and 23 which respectively
exclude milk and vegetable proteins from the method, Appellant's argument
is not persuasive (Appeal Br. 36-38). A preponderance of the evidence
supports the Examiner's determination of obviousness, since Brandt
exemplifies the use of a simple marinade of salt, phosphates and water (Ans.
16).
With respect to dependent claims 25, 26, and 28, which respectively
treat pork, chicken and turkey, Appellant's argument is not persuasive
(Appeal Br. 38--41). A preponderance of the evidence supports the
Examiner's obviousness determination, as Shapiro discloses all these
alternatives for making a restructured meat product (Ans. 16).
Accordingly, the § 103 rejections advanced by the Examiner in this
appeal are sustained.
ORDER
The Examiner's decision 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).
AFFIRMED
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