Ex Parte Hogan

Board of Patent Appeals and Interferences

Apr 21, 2010

10667680 (B.P.A.I. Apr. 21, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte KAREN HOGAN
____________

Appeal 2009-005707
Application 10/667,680
Technology Center 3600
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Decided: April 21, 2010
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Before: JENNIFER D. BAHR, STEVEN D.A. McCARTHY, and KEN B.
BARRETT, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
Karen Hogan (Appellant) appeals under 35 U.S.C. § 134 (2002) from
the Examiner’s decision rejecting claims 1-29 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement;
claims 1-4, 6, and 9-11 under 35 U.S.C. § 102(b) as being anticipated by
Taunton (US 2,778,173, issued Jan. 22, 1957); claims 14-18, 20, 21, and 24-
26 under 35 U.S.C. § 103(a) as being unpatentable over Taunton; and claims
5, 7, 8, 19, 21-23, and 27-30 under 35 U.S.C. § 103(a) as being unpatentable
over Taunton and Logan (US 6,212,716 B1, issued Apr. 10, 2001). We have
jurisdiction over this appeal under 35 U.S.C. § 6 (2002).

The Invention
Appellant’s claimed invention is directed to “an apparatus and method
for selectively or contemporaneously tenderizing and marinating meats or
other selected food items.” Spec. 2:6-9.
Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. An apparatus and method for selectively or
contemporaneously tenderizing and marinating meats or other
selected food items, said apparatus comprising:
a bag comprising a mechanical tenderizing surface
disposed therewithin,
wherein said mechanical tenderizing surface comprises a
plurality of protuberances, and
wherein said protuberances are sufficiently rigid to at
least one of deform and penetrate an external surface of the
meat or other selected food item disposed within said bag, and
to thereby tenderize same.

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SUMMARY OF DECISION
We AFFIRM-IN-PART.

OPINION
The Written Description Rejection
The Issue
The issue presented is whether Appellant’s Specification provides
written description support for the claim limitation that the “protuberances
are sufficiently rigid to at least one of deform and penetrate an external
surface of the meat or other selected food item.” See Ans. 3.
Discussion
The language cited by the Examiner as lacking written description
support is contained in independent claims 1 and 15, but is not contained in
independent claim 25 and claims 26-29 depending from claim 25. Thus, we
reverse the rejection as to claims 25-29.
Appellant’s Specification, as submitted on the filing date of the
application, discloses that “[t]enderizing teeth 40 are preferably substantially
‘blunted’ pyramidal-shaped, as is known with the art, yet possess a sufficient
angular dimension to effectively pierce the meat M or other food item
placed within bag 20.” Spec. 16:16-19. Appellant’s Specification, as
submitted on the filing date of the application, also discloses that the sealed
bag 20 is repeatedly struck “to forcefully drive the plurality of tenderizing
teeth 40 into meat M, and thus tenderize same.” Spec. 17:18-22. These
disclosures clearly convey that the teeth (protuberances) of Appellant’s
invention must have the requisite characteristics, including the requisite
rigidity and shape, to pierce, or penetrate, thus also deforming, in the sense
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of disturbing or marring1, an external surface of the meat when the bag is
repeatedly struck. These disclosures therefore satisfy the written description
requirement of 35 U.S.C. § 112, first paragraph. See Ariad Pharm., Inc. v.
Eli Lilly and Co., --- F.3d ----, 2010 WL 1007369, at *12 (Fed. Cir. 2010)
(“[T]he test for sufficiency [in complying with the written description
requirement] is whether the disclosure of the application relied upon
reasonably conveys to those skilled in the art that the inventor had
possession of the claimed subject matter as of the filing date.”). The written
description requirement does not demand that “the specification recite the
claimed invention in haec verba.” Ariad, 2010 WL 1007369 at *13. We
reverse the rejection as to claims 1-24.
The Anticipation Rejection
The Issue
Appellant argues that Taunton’s projections 12, on which the
Examiner reads the “protuberances” of Appellant’s claim 1, are nothing
more than corrugations or depressions in the flexible film that are “incapable
of performing the claimed food tenderizing function,” and thus cannot
reasonably be considered to anticipate the claimed protuberances of
Appellant’s claim 1. App. Br. 6. Appellant does not present any separate
arguments for claims 2-4, 6, and 9-11 apart from those asserted against the
rejection of claim 1. Thus, claims 2-4, 6, and 9-11 stand or fall with claim 1.
37 C.F.R. § 41.37(c)(1)(vii) (2007).

1 The ordinary and customary usage of “deform” as “impl[ying] a marring of
form, appearance, or character, as if by pressure or stress” (Webster's New
World Dictionary 371 (David B. Guralnik ed., 2nd Coll. Ed., Simon &
Schuster, Inc. 1984)) is consistent with the description of the impact of the
protrusions on the meat or other food item in Appellant’s Specification.
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Accordingly, the issue presented is whether Taunton’s projections 12
are capable of either deforming or penetrating an external surface of a meat
or other selected food item disposed within the bag to thereby tenderize the
meat or other selected food item.
Discussion
We find that Taunton describes a package formed from an airtight,
flexible film material folded over on itself and sealed on three sides,
provided with an exhausting hole 9 and projections 12. Col. 3, ll. 32-60.
The projections are designed to prevent the inner faces of the film material
from adhering to each other during the process of evacuation through
exhausting hole 9, especially in the vicinity of the exhausting hole. Col. 1,
ll. 65-71. Taunton’s projections 12 are provided on the inner surface of the
film, or in a strip inserted between the two layers of film, in at least the
vicinity of the exhausting hole 9, but may extend over the entire area of the
film. Col. 3, ll. 51-60, col. 4, ll. 3-21. Taunton’s projections 12 serve to
maintain spacing between the upper and lower layers of the film package
during evacuation, thereby providing passages between the projections for
air being exhausted from the package. Col. 2, l. 61 to col. 3, l. 6. Thus,
Taunton’s projections 12 have sufficient structural integrity to withstand the
vacuum forces drawing the layers of the package together. Taunton’s
projections may be in the form of “pyramidal protuberances.” Col. 2, ll. 49-
50; col. 4, ll. 28-29; figs. 9-10.
Taunton’s disclosure is directed to producing an airtight package by
evacuating the air from within the package. Col. 1, ll. 16-18. Taunton does
not describe marinating or tenderizing food products within the airtight
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package, or explicitly characterize the projections 12 as forming a
tenderizing surface.
“A patent applicant is free to recite features of an apparatus either
structurally or functionally . . . . Yet, choosing to define an element
functionally, i.e., by what it does, carries with it a risk.” In re Schreiber, 128
F.3d 1473, 1478 (Fed. Cir. 1997). When the PTO has reason to believe that
a functional limitation asserted to be critical may in fact be an inherent
characteristic of the prior art, it possesses the authority to shift the burden of
proof to the applicant or patent owner to prove otherwise. Id.; see also In re
Spada, 911 F.2d 705, 708 (Fed. Cir. 1990); In re Best, 562 F.2d 1252, 1255
(CCPA 1977). Whether the rejection is based on inherency under 35 U.S.C.
§ 102 or on obviousness under 35 U.S.C. § 103, jointly or alternatively, “the
burden of proof is the same, and its fairness is evidenced by the PTO’s
inability to manufacture products or to obtain and compare prior art
products.” Best, 562 F.2d at 1255.
The Examiner found that “Taunton clearly shows a plurality of
protuberances, whose shape(s) are similar to the shapes as disclosed by
Applicant.” Ans. 6. Appellant has not contested that finding. Indeed, as
noted in our findings above, both Appellant (Spec. 16:17) and Taunton (col.
2, ll. 49-50; col. 4, ll. 28-29; figs. 9-10) disclose pyramidal protuberances.
Moreover, as additionally noted in our findings above, Taunton’s projections
12 have sufficient structural integrity to withstand the vacuum forces
drawing the layers of the package together. Accordingly, we are satisfied
that the Examiner has presented sufficient evidence to give the PTO reason
to believe that Taunton’s projections 12 are capable of either deforming or
penetrating an external surface of a meat or other unspecified selected food
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item disposed within the bag to thereby tenderize the meat or other
unspecified selected food item, thereby shifting the burden of proof to
Appellant to prove otherwise. Appellant has proffered no evidence or
convincing argument to satisfy that burden.
For the above reasons, we sustain the rejection of claim 1 and claims
2-4, 6, and 9-11, which fall with claim 1, as being anticipated by Taunton.
The Obviousness Rejections
Claims 5, 7, and 8
In contesting the rejection of claims 5, 7, and 8 as being unpatentable
over Taunton and Logan, Appellant simply relies on the argument asserted
against the rejection of claim 1. App. Br. 6. For the same reasons set forth
in our discussion of the anticipation rejection above, this argument is
unconvincing with respect to the rejections of claims 5, 7, and 8.
Accordingly, we also sustain the rejection of claims 5, 7, and 8 as being
anticipated by Taunton and Logan.
Claims 15-18, 20, and 21
In contesting the rejection of claims 15-18, 20, and 21 as being
unpatentable over Taunton, Appellant groups all the claims together. Thus,
claims 16-18, 20, and 21 stand or fall with claim 15. 37 C.F.R. §
41.37(c)(1)(vii). We note that claim 15, which recites “[a]n apparatus and
method for …,” contains no method steps and is limited to an apparatus.
Appellant argues that the Examiner has not established which
elements of the claimed invention are taught by Taunton, which elements are
not taught by Taunton, and how one of ordinary skill in the art would modify
Taunton to arrive at the claimed invention. App. Br. 8. While we agree with
Appellant that the Examiner’s articulation of the rejection of these claims is
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not the model of clarity2, the Examiner has made findings as to structure in
Taunton that satisfies each and every element recited in claims 15-18, 20,
and 21.3 See Ans. 3-4 and 5. Aside from the argument that Taunton does
not teach the claimed tenderizing surfaces having rigid protuberances as
called for in claim 15 (App. Br. 7), Appellant has not contested any of the
Examiner’s findings with respect to the limitations of these claims.
Appellant’s argument that Taunton does not teach the claimed tenderizing
surfaces having rigid protuberances as called for in claim 15 is unconvincing
for the reasons set forth above in our discussion of the anticipation rejection.
Specifically, for the reasons discussed above, we are satisfied that the
Examiner has presented sufficient evidence to give the PTO reason to
believe that Taunton’s projections 12 have sufficient rigidity to either
deform or penetrate an external surface of a meat or other unspecified
selected food item disposed within the bag to thereby tenderize the meat or
other unspecified selected food item, thereby shifting the burden of proof to
Appellant to prove otherwise. Appellant has proffered no evidence or
convincing argument to satisfy that burden.
Accordingly, we sustain the Examiner’s rejection of claims 15-18, 20,
and 21 as being unpatentable over Taunton.

2 The Examiner inadvertently refers to claims 2, 3, and 9-11, rather than to
claims 16-8, 20, and 21. Ans. 5.
3 A disclosure that anticipates under 35 U.S.C. § 102 also renders the claim
unpatentable under 35 U.S.C. § 103(a), as “anticipation is the epitome of
obviousness.” In re McDaniel, 293 F3d. 1379, 1385 (Fed. Cir. 2002)
(quoting Connell v. Sears Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir.
1983)); In re Fracalossi, 681 F.2d 792, 794 (CCPA 1982).
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Claims 19 and 21-23
In contesting the rejection of claims 19 and 21-23 as being
unpatentable over Taunton and Logan, Appellant merely relies on the
argument asserted with respect to claim 15 (App. Br. 7), which, for the
reasons discussed above, is unconvincing. The argument is likewise
unconvincing with respect to claims 19 and 21-23. Accordingly, we also
sustain the rejection of claims 19 and 21-23 as being unpatentable over
Taunton and Logan.
Claims 14 and 24
Claims 14 and 24 require a stoppered drainage spout carried by the
bag. In rejecting these claims as being unpatentable over Taunton, the
Examiner found that “Taunton does not discuss the use of a drain spout
attached to the bag.” Ans. 5. The Examiner concluded, however, that “it
would have been obvious to a person of ordinary skill in the art at the time
the invention was made to provide the bag of Taunton with a drainage
spout” to allow “a user to remove unwanted liquids from the interior of the
bag without opening the bag completely.” Id.
Appellant argues that the Examiner has failed to establish that the
claimed stoppered drainage spout is taught in the prior art, and thus has
relied on Appellant’s teaching of a stoppered drainage spout in reaching a
conclusion of obviousness. App. Br. 8. Thus, according to Appellant, the
Examiner has relied on impermissible hindsight reconstruction in rejecting
the claims. Id.
“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead there must be “some articulated reasoning
with some rational underpinning.” In re Kahn, 441, F.3d 977, 988 (Fed. Cir.
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2006), cited with approval in KSR Int’l. Co. v. Teleflex Inc., 550 U.S. 398,
418 (2007). In rejecting claims under 35 U.S.C. § 103(a), the examiner
bears the initial burden of establishing a prima facie case of obviousness. In
re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). See also In re Piasecki,
745 F.2d 1468, 1472 (Fed. Cir. 1984). It is incumbent upon the examiner to
establish a factual basis to support the legal conclusion of obviousness. See
In re Fine, 837 F.2d, 1071, 1073 (Fed. Cir. 1988).
The Examiner’s rejection of claims 14 and 24 is deficient in two
respects. First, as pointed out by Appellant, the Examiner has made no
explicit finding that the use of stoppered drainage spouts was known in the
art at the time of Appellant’s invention. Second, even accepting that the use
of stoppered drainage spouts was known in the art at the time of Appellant’s
invention, the Examiner has failed to establish that the proposed reason for
modifying Taunton to provide one has rational underpinning. Specifically,
the Examiner has not cogently explained why a person of ordinary skill in
the art would have been prompted to provide a stoppered drainage spout to
remove unwanted liquids from Taunton’s airtight package. Any unwanted
liquids seemingly could be removed from the package through the exhaust
hole 9.
For the above reasons, we reverse the rejection of claims 14 and 24 as
being unpatentable over Taunton.
Claims 25-30
Appellant argues that the Examiner has not made any findings with
respect to which elements of claim 25 are satisfied by Taunton, and which
claim elements are missing, or explained how one of ordinary skill in the art
would have modified Taunton’s package to arrive at the subject matter of
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claim 25. App. Br. 8. We agree. The Examiner has not specifically
addressed the limitations of claim 25. The Examiner has made a finding, in
addressing claim 15, that “it is notoriously well-known in the art to place
food items in a marinade bag and to tenderize the food items by hitting the
bag to one of ordinary skill in the art at the time the invention was made.”
Ans. 5. To the extent that this finding is intended to address step c of claim
25, it is still insufficient to establish that the subject matter of claim 25
would have been obvious. First, even accepting that the Examiner’s finding
is correct, the Examiner has not articulated any reason why it would have
been obvious to a person of ordinary skill in the art to apply this tenderizing
technique to the airtight package of Taunton, which is not described as being
a marinade bag, or as containing marinade. See KSR, 550 U.S. at 418 (a
conclusion of obviousness must be supported by explicit findings and
analysis establishing an apparent reason to combine the known elements in
the manner required in the claim at issue). Moreover, Appellant has
explicitly contested the Examiner’s finding, argued that Appellant is not
aware of any such prior methodology, and requested that the Examiner
produce evidence to support this finding. App. Br. 7. The Examiner has not
responded to that challenge. Rejections based on 35 U.S.C. § 103 must rest
on a factual basis. In making such a rejection, the examiner has the initial
duty of supplying the requisite factual basis and may not, because of doubts
that the invention is patentable, resort to speculation, unfounded
assumptions, or hindsight reconstruction to supply deficiencies in the factual
basis. In re Warner, 379 F.2d 1011, 1017 (CCPA 1967).
For the above reasons, the Examiner has fallen short in establishing
that Taunton renders obvious the subject matter of claim 25 and claim 26,
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which depends from claim 25. Thus, we reverse the rejection of claims 25
and 26 as being unpatentable over Taunton.
The Examiner has not relied on Logan for any teaching that might
have provided a person of ordinary skill in the art with a reason to modify
Taunton’s process of producing an airtight package by performing a step of
deforming or penetrating an external surface of the food item placed in the
package to tenderize the food item, as called for in claim 25, from which
claims 27-30 depend. Therefore, the Examiner has also failed to establish
that Taunton and Logan render obvious the subject matter of these claims.
We reverse the rejection of claims 27-30 as being unpatentable over Taunton
and Logan.

DECISION
The Examiner’s decision is affirmed as to claims 1-11 and 15-23, and
reversed as to claims 12-14 and 24-30.
AFFIRMED-IN-PART

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