Ex Parte Goto et al

Patent Trial and Appeal Board

Aug 4, 2016

12681233 (P.T.A.B. Aug. 4, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/681,233 04/01/2010
127226 7590 08/08/2016
Birch, Stewart, Kolasch & Birch, LLP
P.O. Box 747
Falls Church, VA 22040-0747
FIRST NAMED INVENTOR
ReikaGoto
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.
1516-0146PUS1 2817
EXAMINER
MUKHOPADHYAY,BHASKAR
ART UNIT PAPER NUMBER
1793
NOTIFICATION DATE DELIVERY MODE
08/08/2016 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):
mailroom@bskb.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte REIKA GOTO, RYO TAKEI, KEN KITAMURA,
KEN-ICHIROU SUGIMURA, and MINORU KURIBAYASHI
Appeal2015-002614
Application 12/681,233
Technology Center 1700
Before MICHAEL P. COLAIANNI, WESLEY B. DERRICK, and
BRIAND. RANGE, Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
SUMMARY
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1, 14, 15, 17, 18-20, 27-30, 33, and 34. We have
jurisdiction. 35 U.S.C. § 6(b).
We AFFIRM.
1 According to the Appellants, the real party in interest is EN OTSUKA
PHARMACEUTICAL CO., LTD. Appeal Br. 2.
Appeal2015-002614
Application 12/681,233
STATEMENT OF THE CASE
Appellants describe the present invention as a food product suitable
for people who have difficulty chewing or swallowing and methods for
making such products. Appeal Br. 4. In particular, an animal food product
may be treated with protease to soften it. Id.
Claim 1, reproduced below with emphasis added, is illustrative of the
claimed subject matter:
1. An animal food product that is suitable for an elderly
person or a person who has difficulty in chewing or swallowing,
obtainable by impregnating and treating a food material with
protease, said animal food product having a smooth texture and
sufficient softness to be crushed by the gums or tongue in the
mouth, while maintaining the natural shape and tone of color of
the material,
wherein said animal food product has a compressive
strength of 5xl04 N/m2 or lower when measured at a
compression rate of 10 mm/sec by using a plunger with a
diameter of 3 mm and setting the clearance at 30% of the
thickness of the specimen,
wherein said animal food product is obtainable by a
method comprising:
removing water from an animal material
consisting of meat or seafood, by 15°/o or more based
on the fresh weight of the material, and
impregnating and treating the material with an
effective amount of protease to produce the compressive
strength,
thereby obtaining the animal food product with the
compressive strength of 5xl04 N/m2 or lower.
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Application 12/681,233
Appeal Br.2 11 (Claims Appendix).
REFERENCES
The Examiner relied upon the prior art below in rejecting the claims
on appeal:
Uchida et al.
(hereinafter "Uchida '602 ")
Uchida et al.
(hereinafter "Uchida '197")
Sakamoto et al.
(hereinafter "Sakamoto")
us 4,861,602 Aug. 29, 1989
US 2006/0134197 Al June 22, 2006
US 2008/0311174 Al Dec. 18, 2008
REJECTIONS
The Examiner maintains the following rejections on appeal:
Rejection 1. Claims 1, 14, 15, 17, 18, 20, and 27-30 under 35 U.S.C.
§ 103 as unpatentable over Sakamoto.
Rejection 2. Claims 33 and 34 under 35 U.S.C. § 103 as unpatentable
over Sakamoto in view of Uchida '602.
Rejection 3. Claim 19 under 35 U.S.C. § 103 as unpatentable over
Sakamoto in view of Uchida '197.
ANALYSIS
After having considered the evidence presented in this Appeal and
each of Appellants' contentions, we are not persuaded that Appellants
identify reversible error, and we affirm the Examiner's§ 103 rejections for
the reasons expressed in the Final Action and the Answer. We add the
following primarily for emphasis.
2 In this decision, we refer to the Final Office Action mailed March 13, 2014
("Final Act."), the Appeal Brief filed July 2, 2014 ("Appeal Br."), the
Examiner's Answer mailed October 27, 2014 ("Ans."), and the Reply Brief
filed December 19, 2014 ("Reply Br.").
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Application 12/681,233
Rejection 1. The Examiner rejects claims 1, 14, 15, 17, 18, 20, and
27-30 under 35 U.S.C. § 103 as obvious over Sakamoto. Appellants do not
separately argue claims 14, 15, 17, 18, or 20. We therefore limit our
discussion to claim 1. Claims 14, 15, 17, 18, and 20 stand or fall with claim
1. 37 C.F.R. § 41.37(c)(l)(iv) (2013).
Sakamoto is directed to softening food products. Final Act. 3--4;
Sakamoto i-fi-12, 13, 130. Sakamoto's food material can include any plant or
food material including, for example, beans, potato, mushrooms, fish,
seafood, chicken, pork, and beef. Final Act 3; Sakamoto i150. Sakamoto
teaches that reducing liquid content of the food allows softening enzymes to
be introduced between tissues of the food material and inside food cells.
Ans. 5---6; Sakamoto i172. Reducing liquid content "increase[s] the contact
efficiency" of the enzymes and permits "uniformly and efficiently"
including the enzyme in the food material while retaining the shape of the
food material. Sakamoto i172. Sakamoto teaches reducing the liquid
content of the food material from 3% to 60% by weight. Ans. 5---6.
Sakamoto i176.
Appellants argue that Sakamoto' s teachings would not have led a
person of skill in the art to evaporate the water of an animal-based food
product and would not have removed more than 15% of the water. Appeal
Br. 6. But as explained above, the evidence supports the Examiner's
position. Sakamoto refers to removing 3 % to 60% of the liquid content from
"food material" (Sakamoto i1 7 6), and Sakamoto defines "food material to be
used in the present invention" as including, for example, fish, seafood,
chicken, pork, and beef (Sakamoto i1 50).
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Application 12/681,233
In reply, Appellants argue that a person of skill would understand that
the range of 3---60% weight reduction in water content would not apply to all
food material because the upper limit as applied to meat or seafood would
result in explosion of the material. Reply Br. 2. Sakamoto, however, does
not require that the upper limit always be applied. Rather, Sakamoto
explains that excess dielectric heating could impair the food's properties and
should be avoided. Sakamoto i-f 7 6. Given the teachings of Sakamoto, a
preponderance of the evidence supports that a person of skill would
understand how to adjust the amount of heating to allow better enzyme
contact and efficiency while avoiding excess heating.
Appellants also argue that Sakamoto fails to teach an animal food
product having a compressive strength of 5xl04 N/m2 or lower. Appeal
Br. 6. Both Sakamoto and Appellants' Specification, however, establish that
the 5xl04 N/m2 compressive strength is a hardness standard for food for the
elderly set by the Ministry of Health and Welfare of Japan. Sakamoto i-f 125;
Spec. 17. Thus, we agree with the Examiner's finding that a person of
ordinary skill seeking to make soft food for the elderly would have followed
the teachings of Sakamoto to meet this standard. Ans. 4; see also Sakamoto
i-fi-1 49 (explaining that content of enzyme can be adjusted "depending on the
required softness of the food"), 72 (explaining that liquid may be removed
from the food material to more uniformly and efficiently include the
degradative enzyme), 130 (explaining that concentration can be increased to
meet standard). Doing so would have been no more than the predictable use
of the prior art according to its established function. KSR Intern. Co. v.
Teleflex Inc., 550 U.S. 398, 417 (2007).
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Application 12/681,233
Appellants present the June 25, 2013, declaration of co-inventor Mr.
Ryo Takei and argue that the declaration establishes unexpected properties.
Appeal Br. 7. The declaration describes and presents results from two
experiments (Exhibits 1 and 2). The first experiment replicates Example 4
of Sakamoto by using a solution with protease and 20% weight gelatin and
cubes of raw beef. June 25, 2013, Declaration of Ryo Takei Pursuant to 37
C.F.R. § 1.132 ("Takei Deel.") i-f 6. The experiment introduces different
enzyme concentrations but does not remove water from the meat. Id. With
2% enzyme concentration after two hours, the softness of the beef is
6.0 xl05 N/m2 (above claim 1 's recited hardness maximum) while the beef is
"almost past-like" and "extremely bitter and considered to be very difficult
to eat even after cooking." Id. Mr. Takei thus concludes that adjusting
enzyme amount and processing time is insufficient to obtain required
qualities. Id. at i-f 10.
The declaration's second experiment uses a protease solution with
gelatin and slices of pork leg meat. Id. at i-f 7. The second experiment shows
good hardness reduction when 17.5% of the water is removed from the pork.
Id. Mr. Takei declares that this increased softness by removing water could
not have been predicted from Sakamoto. Id. at i-f 14.
For two reasons, we agree with the Examiner that the record does not
establish unexpected results sufficient to rebut an obviousness conclusion.
First, the Examiner correctly explains that the two experiments are
inadequate because many different variables have been modified across the
two experiments. Ans. 4. The first experiment (at Exhibit 1) uses pork,
cube-shape, solution with gelatin, and no water removal. The second
experiment (at Exhibit 2) uses beef, sliced shape, solution without gelatin,
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Application 12/681,233
and water removal. Because many variables change, a preponderance of the
evidence does not support that the allegedly unexpected advantages are a
result of a distinction between the recited invention of claim 1 as compared
to the prior art.
Second, our reviewing court has explained that, "to be particularly
probative, evidence of unexpected results must establish that there is a
difference between the results obtained and those of the closest prior
art. ... " Bristol-Myers Squibb Co. v. Teva Pharm. USA, Inc., 752 F.3d 967,
977 (Fed. Cir. 2014) (emphasis added). The closest prior art is Sakamoto
employing water reduction to more uniformly and efficiently introduce the
protease enzyme into the food. Sakamoto i-f 72. Appellants' experiments do
not compare their recited food to food prepared based on this teaching.
We thus sustain the Examiner's rejection of claims 1, 14, 15, 17, 18,
and 20.
Appellants separately argue claims 27-30. Appeal Br. 8. Appellants
first raise the compressive strength and water reduction arguments addressed
above with regard to claim 1. Id. Those arguments fail to demonstrate
reversible Examiner error for the reasons explained above.
Appellants also state that "the method claims [i.e., claims 27-30]
specify the type of enzyme used (protease) and that an effective amount of
enzyme is used. Further, the method claims clearly integrate the type and
amount of enzyme as well as the amount of water reduction resulting in the
specified compressive strength." This statement repeats claim language
without identifying reversible Examiner error. Pursuant to 37 CPR
§ 41.37(c)(iv), "[a] statement which merely points out what a claim recites
will not be considered an argument for patentability of the claim."
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Moreover, the Examiner adequately identifies where Sakamoto teaches these
elements. Final Act. 3--4; Ans 6-7; see also Ex parte Belinne, No. 2009-
004693, 2009 WL 2477843 (BPAI 2009) (informative) (affirming rejection
where Appellants argument merely restates claim elements rather than
explaining why Examiner's fact finding is in error). We thus sustain the
Examiner's rejection of claims 27-30.
Rejection 2. The Examiner rejects claims 33 and 34 as obvious over
Sakamoto in view of Uchida '602. Appellants raise the same arguments
addressed above. Appeal Br. 9. The arguments do not identify reversible
error.
Appellants also argue that Uchida does not teach reducing water. We
need not address this issue because, as explained above, Sakamoto teaches
reducing water. The Examiner's rejection is based upon both Sakamoto and
Uchida. 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 (CCP A 1981 ).
We thus sustain the Examiner's rejection of claims 33 and 34.
Rejection 3. The Examiner rejects claim 19 as obvious over
Sakamoto in view of Uchida ' 197. Appellants raise the arguments addressed
above (Appeal Br. 9-10), and those arguments do not identify reversible
error. We thus sustain the Examiner's rejection of claim 19.
DECISION
For the above reasons, we affirm the Examiner's rejection of claims 1,
14, 15, 17, 18-20, 27-30, and 33-34.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
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Application 12/681,233
AFFIRMED
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