Ex Parte McKenna et al

Patent Trial and Appeal Board

Aug 30, 2017

13504392 (P.T.A.B. Aug. 30, 2017)

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.
13/504,392 07/16/2012 David R. McKenna N00040US01 9797
38550 7590 09/01/2017
CARGILL, INCORPORATED
P.O. Box 5624
MINNEAPOLIS, MN 55440-5624
EXAMINER
PARSLEY, DAVID J
ART UNIT PAPER NUMBER
3643
NOTIFICATION DATE DELIVERY MODE
09/01/2017 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):
patent_docketing @ cargill. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID R. MCKENNA, KYLE PFEIFFER, and DEREK J. VOTE
Appeal 2016-007455
Application 13/504,392
Technology Center 3600
Before JILL D. HILL, LISA M. GUIJT, and GORDON D. KINDER,
Administrative Patent Judges.
GUIJT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants1 seek our review under 35 U.S.C. § 134 of the Examiner’s
decision2 rejecting claims 11—14 under 35 U.S.C. § 103(a) as unpatentable
over Calkins (US 2002/0054941 Al; published May 9, 2002) and Gardner
(US 2007/0254579 Al; published Nov. 1, 2007). We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify the real party in interest as Cargill, Incorporated.
Appeal Br. 3.
2 Appeal is taken from the Final Office Action dated Sept. 8, 2015 (“Final
Act.”).
Appeal 2016-007455
Application 13/504,392
CLAIMED SUBJECT MATTER
Claim 11 is the sole independent claim on appeal. Claim 11,
reproduced below, is illustrative of the subject matter on appeal.
11. A method of detaching a tri-tip muscle from a beef cattle
carcass, the method comprising the steps of:
suspending the beef cattle carcass;
locating the tri-tip muscle, wherein the tri-tip muscle
comprises at least one attachment point to the beef cattle carcass;
detaching at least one attachment point of the tri-tip
muscle form the beef cattle carcass prior to the onset of rigor
mortis; and
allowing the detached tri-tip to form a substantially
symmetrical and cylindrical shape.
ANALYSIS
Appellants argue the claims subject to the outstanding obviousness
rejection as a group. Appeal Br. 9-14; Reply Br. 2—\. We select claim 11
as representative. See 37 C.F.R. § 41.37(c)(l)(iv). Claims 12-14 stand or
fall with claim 11.
Regarding independent claim 11, the Examiner finds, inter alia, that
locating a muscle for detachment from a beef cattle carcass is inherently
required when detaching the muscle, and that Calkins discloses excising
muscles from the carcass. Final Act. 2—3 (citing Calkins | 66). The
Examiner also finds that Calkins discloses detaching at least one attachment
point of the muscle from the carcass (i.e., the whole muscle is removed)
prior to the onset of rigor mortis (i.e., pre-rigor excision). Id. at 3 (citing
Calkins || 20, 66). The Examiner determines that although Calkins fails to
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Application 13/504,392
specifically teach that this method is useful explicitly for detaching a tri-tip
muscle, Calkins teaches that the method “is usable for muscle [s] of any
kind.” Id. (citing Calkins 125). The Examiner reasons that it would have
been obvious “to have excised every type of muscle, including the tri-tip
muscle, from a carcass, pre-rigor, to have provided a more tender beef
product.” Id. The Examiner further determines that although Calkins does
not teach allowing the detached tri-tip muscle to form a substantially
symmetrical and cylindrical shape, Calkins teaches detaching any whole
muscle, pre-rigor, in the same manner as the claimed method, and the
Examiner concludes that applying Calkin’s method to a tri-tip muscle would
inherently result in forming a substantially symmetrical and cylindrical
shape. Final Act. 3. The Examiner relies on Gardner for disclosing
suspending the carcass. Id. (citing Gardner 128).
First, Appellants argue that
the skilled artisan would have had no reason to select the tri-tip
muscle for detachment from the beef cattle carcass prior to the
onset of rigor mortis, and allowing the detached tri-tip to form a
substantially symmetrical and cylindrical shape as required in the
present claims because there is no teaching or suggestion in
Calkins that the tri-tip muscle would form a desired substantially
symmetrical and cylindrical shape if detached prior to the onset
of rigor mortis.
Appeal Br. 11. The Examiner responds that although Calkins does not
discuss the tri-tip muscle specifically, Calkin’s processing techniques, i.e.,
detaching an entire muscle prior to the onset of rigor mortis, can be used on
any muscle type. Ans. 2. Appellants reply that one skilled in the art would
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recognize that “the cuts actually identified in Calkins do not behave the
same way as the tri-tip.” Reply Br. 2.
We determine that the Examiner’s reasoning is supported by factual
underpinnings. See Calkins 120 (“the present invention relates to the
treatment of whole pre-rigor skeletal muscle, either while on the carcass or
after excision”); id. 125 (“The present invention will be described with
reference to a variety of beef muscle types[,] . . . [hjowever, it is understood
that this description is merely illustrative and the invention is applicable to . .
. skeletal muscles of any mixture of muscle fiber types.”). In other words,
regardless of the motivation for detaching the tri-tip muscle from a carcass
prior to the onset of rigor mortis, Calkins discloses, to one skilled in the art,
that detaching the tri-tip muscle from a carcass prior to the onset of rigor
mortis is a known concept.
Regarding the claim limitation of “allowing the detached tri-tip
muscle to form a substantially symmetrical and cylindrical shape,”
Appellants’ Specification acknowledges that such shape is an inevitable
result of detaching the tri-tip muscle from the carcass prior to the onset of
rigor mortis, for example, when a carcass is suspended during processing.
Spec. | 8 (“By severing an attachment point... of the muscle to the
remainder of the carcass before the onset of rigor mortis, as in the invention,
the tri-tip is not artificially stretched and does not persist in that stretched
state. The result may be generally symmetrical, cylindrically-shaped
muscle.”). In other words, the step of allowing the detached tri-tip muscle to
form a substantially symmetrical and cylindrical shape is a natural result of
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Application 13/504,392
detaching the tri-tip muscle pre-rigor from a suspended carcass. Thus,
suspending the carcass, as taught by Gardner, and then detaching the tri-tip
muscle prior to the onset of rigor mortis, an obvious process step in view of
the teachings of Calkins, inherently or necessarily results in the claimed
invention.
Further, the claim limitation of “allowing the detached tri-tip to form a
substantially symmetrical and cylindrical shape” merely recites the result of
obvious method steps: detaching a tri-tip muscle pre-rigor after suspension,
but does nothing to patentably distinguish the claimed process from the
Calkin’s process as modified by Gardner. The resulting shape “cannot
become nonobvious simply by . . . claiming the [result] .... To hold
otherwise would allow any formulation—no matter how obvious—to become
patentable merely by testing and claiming an inherent property.” Santarus,
Inc. v. Par Pharm., Inc., 694 F.3d 1344, 1354 (Fed. Cir. 2012).
Second, Appellants argue that “the skilled artisan could not have
predicted that the tri-tip muscle would exhibit about the same tenderness
value as tri-tip muscles that have been detached post-rigor from the Calkins
disclosure.” AppealBr.il. However, Calkins specifically teaches
removing the muscle pre-rigor to enhance tenderness by not allowing the
muscle to shorten when entering the rigor state. See Calkins 110 (“Changes
in another attribute of muscle, sarcomere length (SL), have been reported to
be related to tenderness,” wherein “[ljonger sarcomeres have been
associated with greater tenderness;” and “[mjuscles shorten when they enter
the rigor state.”). Thus, regardless of whether the resulting tenderness is the
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same as a muscle removed post-rigor, Calkins suggests to a skilled artisan
that one should expect a muscle that is removed pre-rigor to exhibit greater
tenderness3. Moreover, the claims do not recite any limitations related to
tenderness.
Third, Appellants argue that “Calkins does not recognize teach or
suggest the unique properties of the tri-tip muscle as compared to other meat
portions of beef.” Appeal Br. 11; see also Reply Br. (“The skilled artisan
would have recognized . . . [that t]he cuts actually identified in Calkins do
not behave the same way as the tri-tip.”). However, Appellants do not
specify which unique properties would cause one skilled in the art to believe
that the tri-tip muscle would not predictably result in a different shape pre-
vs. post-rigor removal, or result in enhanced tenderness, as recognized by
Calkins supra.
Fourth, Appellants argue that “the skilled artisan would have expected
from the Calkins teaching that a desired level of tenderness would not have
been achieved by a detachment technique, and that therefore a further step of
applying a tenderizing composition is required for all meat portions to
achieve the desired tenderness.” Appeal Br. 12. We disagree. Although
Calkins teaches further steps to enhance tenderness, Appellants’ argument
does not detract from Calkins teaching that any muscle may be removed pre­
rigor, and also that because muscles shorten when they enter the rigor state,
removing the muscle pre-rigor enhances tenderness, as set forth supra.
3 For this reason, we do not agree with Appellants’ that Calkins teaches
away from the claimed invention. See Reply Br. 2.
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Fifth, Appellants argue that “the necessary element required to
establish inherency is not present in the [Examiner’s] rejection, because
when one carries out the method described in Calkins, the step of allowing
the meat cut to form a substantially symmetrical and cylindrical shape does
not necessarily occur.” Appeal Br. 12. However, to the extent suspending
the carcass to stretch the tri-tip muscle and detaching the tri-tip muscle pre­
rigor results in the claimed shape, Appellants’ argument does not address the
Examiner’s proposed modification, which is to suspend the carcass, as
taught by Gardner, and detach the tri-tip muscle pre-rigor, as detaching any
muscle pre-rigor is taught in Calkins. Notably, the Examiner’s rejection
does not involve applying Calkin’s further processing steps (after
detachment). Thus, we are not apprised of error in the Examiner’s finding
that the Examiner’s modified Calkin’s process inherently results in the
claimed shape.
Finally, Appellants argue that “Gardner describes a method where
meat is tenderized by applying electrical stimulation to [] muscles on a
suspended carcass,” and that “[i]f one were to follow the teaching of
[Gardner] of application of electrical stimulation and chilling, one could not
follow the “hot boning” step of [Calkins].” Appeal Br. 13. However, as set
forth supra, the Examiner’s rejection only relies on Gardner for disclosing
suspending the carcass, and not for applying electrical stimulation to the
muscles.
Accordingly, we sustain the Examiner’s rejection of independent
claim 11, and claims 12—14 fall with claim 11.
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DECISION
The Examiner’s rejection of claims 11—14 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). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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