Ex Parte Joly et al

Board of Patent Appeals and Interferences

Jun 25, 2009

10291888 (B.P.A.I. Jun. 25, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte GHISLAINE JOLY, JAMES J. KASICA,
ROBERT O’MARA, and ROXANA SHARIFF
____________

Appeal 2009-003482
Application 10/291,888
Technology Center 1700
____________

Decided:1 June 25, 2009
____________

Before TERRY J. OWENS, PETER F. KRATZ, and
JEFFREY B. ROBERTSON, Administrative Patent Judges.

KRATZ, Administrative Patent Judge.
DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the Decided Date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

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This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 37, 40, 42, and 44-48. We have
jurisdiction pursuant to 35 U.S.C. § 6. Oral arguments were presented on
June 11, 2009.
Appellants’ claimed invention is directed to a food product including
a casing material comprising collagen and a specified starch. Claim 37, the
sole independent claim on appeal, is illustrative and reproduced below:
37. A food product encased with a casing material comprising
collagen, and gel forming, amylose-containing or amylopectin or
blend thereof of dispersed starch,
wherein the amount of starch to collagen is from 0.05:1 to 10:1 parts
by weight based on the dry weight of starch and collagen, wherein the food
product is encased by co-extruding the casing material with the food product
and then dehydrated by passing through an alkaline salt bath.

The Examiner relies on the following prior art references as evidence
in rejecting the appealed claims:
Fagan 3,373,046 Mar. 12, 1968

F. Gerrard, “Sausage and Small Goods Production”, Leonard Hill Books,
Limited, London, pp. 94-105, 1960

James Jay, “Modern Food Microbiology”, 6th edition, Aspen Publishers,
Inc., pp. 87-97, 2000

Appellants supply the following evidence in rebuttal:
Thomas and Atwell, “Starches”, Eagan Press Handbook Series, pp. 27-28

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The Examiner maintains the following grounds of rejection:
Claims 37, 40, 42, and 44-48 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Fagan in view of Gerrard, and Jay.
We affirm the stated rejection. Our reasoning follows.
At the outset, we note that Appellants argue rejected claims 37, 40,
42, 44, and 46-48 together as a group. Accordingly, we select claim 37 as
the representative claim on which we shall primarily focus for the commonly
argued and rejected claims. We consider claim 45 separately to the extent
dependent claim 45 has been separately argued.

PRINCIPAL ISSUES
Have Appellants identified reversible error in the Examiner’s
obviousness rejection based on: (1) the argument and evidence asserting that
the casing in accordance with Example XIII of Fagan includes encapsulated
starch particles that are not gel–forming and/or (2) the argument that Fagan’s
encased food product was not prepared by co-extrusion and passage through
an alkaline salt bath?
Have Appellants otherwise identified reversible error in the
Examiner’s obviousness rejection of dependent claim 45 based on the G’ of
600 Pa2 or greater starch property required by claim 45 and the asserted
distinction between the gelled starch required by such a G’ value and the
granular starch that Fagan is alleged to teach?

2 G’ is a gel elastic modulus measurement reported in Pascal (Pa) units
(Spec. ¶ 0015).
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PRINCIPLES OF LAW
A claimed invention is not patentable if the subject matter of the
claimed invention would have been obvious to a person having ordinary skill
in the art. 35 U.S.C. § 103(a); KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398
(2007); Graham v. John Deere Co. of Kansas City, 383 U.S. 1 (1966).
The Examiner bears the initial burden of presenting a prima facie case
of obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
However, Appellants have the burden on appeal to the Board to demonstrate
reversible error in the Examiner’s position. See In re Kahn, 441 F.3d 977,
985-86 (Fed. Cir. 2006) (“On appeal to the Board, an applicant can
overcome a rejection [under § 103] by showing insufficient evidence of
prima facie obviousness or by rebutting the prima facie case with evidence
of secondary indicia of nonobviousness.”) (quoting In re Rouffet, 149 F.3d
1350, 1355 (Fed. Cir. 1998)).
When Appellants’ product and that of the prior art appear to be
identical or substantially identical, the burden of production shifts to
Appellants to provide evidence that the prior art product does not necessarily
or inherently possess the relied upon characteristics of Appellants’ claimed
product. See In re Fitzgerald, 619 F.2d 67, 70 (CCPA 1980); In re Best, 562
F.2d 1252, 1255 (CCPA 1977) (“Where, as here, the claimed and prior art
products are identical or substantially identical….the PTO can require an
applicant to prove that the prior art products do not necessarily or inherently
possess the characteristics of his claimed product…its fairness is evidenced
by the PTO’s inability to manufacture products or to obtain and compare
prior art products.”). This burden shifting is especially appropriate when the
appealed claims are in a product-by-process format and the prior art product
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appears to be either identical with or only slightly different than the claimed
product. See In re Brown, 459 F.2d 531, 535, (CCPA 1972).
In this regard, it has long been held that “‘[i]f the product in a
product-by-process claim is the same as or obvious from a product of the
prior art, the claim is unpatentable even though the prior product was made
by a different process.’” SmithKline Beecham Corp. v. Apotex Corp., 439
F.3d 1312, 1317 (Fed. Cir. 2006) (quoting In re Thorpe, 777 F.2d 695, [697]
(Fed. Cir. 1985)).
Arguments not made in the Briefs are considered to be waived. See
37 C.F.R. § 41.37(c)(vii) (2007).

FINDINGS OF FACT
The Examiner has determined that Example XIII of Fagan teaches a
sausage casing made from starch and collagen (Ans. 4).
The Examiner has determined that Fagan discloses a starch to
collagen ratio that falls within Appellants’ claimed ratio (Ans. 4; Fagan, col.
14, ll. 56-60). Appellants do not specifically dispute this determination of
the Examiner (see generally Appeal Brief and Reply Brief).
Fagan discloses the casing is made using starch granules and collagen
obtained from Ficin treated limed hide solids (Fagan Example XIII, col. 14,
ll. 29-36).
Fagan discloses that the exemplified casing includes starch particles
encapsulated in the casing wall, after hardening the casing with salt solutions
(Fagan Example XIII, col. 14, ll. 50-51).
Fagan discloses that the washed and plasticized casing is heated and
dried during preparation (col. 14, ll. 39-54).
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Fagan further discloses that:
In a series of experiments using cornstarch as a non-
collagenous filler, the amount of starch is varied from 10 % to
25 % by weight of the collagen solids. There is no alteration of
the extrusion properties of the collagen mass and alteration of
the starch content within this range did not adversely affect the
properties of the final product.
Casing made by the method described above are of
uniform diameter and wall thickness. The casing wall is a
smooth continuous film containing cowhide collagen fibrils that
lie generally parallel to the surface of the casing. The stuffing
and linking properties of the casing so obtained are satisfactory.
Sausages manufactured with this casing do not rupture, split or
melt on cooking.
(col. 14, ll. 57-69).

Gerrard discloses the use of salt solutions (brine) in preserving meat,
including sausage (see generally Gerrard).
Jay discloses treating meats with curing agents, including salts in
solution (brine), to form a processed product, such as sausage (see generally
Jay).
Appellants acknowledge that “[c]ollagen, a protein material derived
from animals, has been used as a casing material for sausage and [animals]”
and that it has been disclosed that collagen can be co-extruded with other
meat products and treated with a salt solution to harden the casing (film set
via dehydration) (Spec. ¶ 0010).
Thomas and Atwell discloses that starch gelatinization of granular
starch occurs in the presence of water and heat to from gelatinized (cooked)
granules (Chap. 3, p. 26-27).

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ANALYSIS
Appellants argue that a “gel forming” starch, as required by
representative claim 37 patentably distinguishes the claimed food product
over the food products suggested by Fagan because the starch of Fagan is
granular, which granular starch will not form a gel as allegedly evidenced by
the Thomas and Atwell citation furnished by Appellants (App. Br. 3).
However, the referenced book, Starches, by Thomas and Atwell discloses
that granular starches do gel when heated in the presence of water although
not all starches swell to the same degree or at the same rate (Chap. 3, p. 26).
Thus, Appellants have not established that the starch employed by Fagan in
the Example XIII casing will not gel by referring to the granularity thereof.
Also, as we noted above, Fagan discloses that the washed casing can be
heated and dried (col. 14, ll. 39-54). Consequently, Appellants’ argument
concerning the representative claim 37 “gel forming” requirement of the
starch component is not persuasive of reversible error in the Examiner’s
obviousness determination.
As for Appellants’ concise reference to dependent claim 45 requiring
the starch to be characterized by a G’ value greater than 600 Pa, we note that
claim 45 only requires such a G’ value when (and if) the starch is “prepared
at a solid concentration of 10 wt. %.” (cl. 45). However, dependent claim 45
does not specify that a solid concentration of 10 weight percent must be used
in preparing the starch. Moreover, even if we could agree with Appellants
that representative claim 37 and/or dependent claim 45 required that the
starch was in a gelled state, not just gel forming, Appellants have failed to
demonstrate that none of the heated starch of Fagan would be present in a
gelled state. This is especially so given the teachings of the Thomas and
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Atwell excerpt suggesting gel formation from granular starch, which
evidence was furnished by Appellants (App. Br., App. B; Thomas and
Atwell, pp. 26-27).
As for Appellants’ arguments concerning the product-by-process co-
extrusion and dehydration steps recited in representative product claim 37,
the issue before us is whether or not the argued and recited method steps
would have resulted in a non-obviously different product than that formed
by Fagan. Here, Appellants do not articulate, much less prove, how the
broadly recited method of preparation which involves co-extrusion and
alkaline salt bath dehydration necessarily results in a food product that is
patentably distinct from any food products made obvious by the teachings of
Fagan with respect to stuffing already dehydrated casings and subsequently
cooking the encased food product. In this regard, Fagan teaches setting
(drying) the casing using salt (col. 14, ll. 39-54). Appellants argue as if
method claims were involved in this appeal, which, of course, is not the
case. Moreover, Appellants’ argued method distinctions are undercut by
their acknowledgement that it is known that collagen can be co-extruded
with other meat products and treated with a salt solution to harden the casing
(set film via dehydration) (Spec. ¶ 0010).3
Thus, while the additional teachings of Gerard and Jay are
unnecessary to establishing a prima facie case of obvious, they nonetheless

3 See In re Nomiya, 509 F.2d 566, 570-71 (CCPA 1975) (The admitted prior
art in the Applicants’ Specification may be used in determining the
patentability of a claimed invention.). Also, see In re Fout, 675 F.2d 297,
301 (CCPA 1982), “[i]t is not unfair or contrary to the policy of the patent
system that appellants’ invention be judged on obviousness against their
actual contribution to the art” (footnote omitted).

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further evince the obviousness of drying (salting) meat that is used in an
encased food product, such as that generally made in accordance with the
teachings of Fagan.
Appellants’ reference to Example 1 of the Specification and
paragraphs 0046 and 0047 in the Reply Brief is noted (Reply Br. 1).
However, Appellants have not explained how this reference to a
Specification Example in the Reply Brief is timely. Nor have Appellants
shouldered the burden to explain how the referenced composites of Example
1 establish non-obvious results for the claimed subject matter over the
disclosure of Fagan, particularly Example XIII of Fagan. After all, the
burden is on Appellants to ferret out the facts to show any unexpected cause-
and-effect relationship which Appellants desire to show for the here-claimed
subject matter. Appellants do not accomplish this on the record before us in
this appeal. See In re Heyna, 360 F.2d 222, 228 (CCPA 1966); In re Dunn,
349 F.2d 433, 439 (CCPA 1965).
Consequently, we remain of the opinion that the claimed subject
matter would have been obvious to one of ordinary skill in the art within the
meaning of § 103(a) in view of the prior art relied upon by the Examiner and
considered in light of Appellants’ timely submitted and argued evidence.

CONCLUSION
Appellants have not identified reversible error in the Examiner’s
obviousness rejection based on: (1) the argument and referenced evidence
asserting that the casing in accordance with Example XIII of Fagan includes
encapsulated starch particles that are not gel–forming and/or (2) the
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argument that Fagan’s encased food product was not prepared by co-
extrusion and passage through an alkaline salt bath.
Appellants have not otherwise identified reversible error in the
Examiner’s obviousness rejection of dependent claim 45 based on the G’ of
600 Pa or greater starch property required by claim 45 and the asserted
distinction between the gelled starch required by such a G’ value and the
granular starch of Fagan.

ORDER
The decision of the Examiner to reject claims 37, 40, 42, and 44-48
under 35 U.S.C. § 103(a) as being unpatentable over Fagan in view of
Gerrard, and Jay 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

PL Initial:
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