11500557 (B.P.A.I. Aug. 29, 2012)

Ex Parte Voisin

Board of Patent Appeals and InterferencesAug 29, 2012

11500557 (B.P.A.I. Aug. 29, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 11/500,557 08/08/2006 Ernest A. Voisin 10400A-000085/US/CPD 5643 30593 7590 08/29/2012 HARNESS, DICKEY & PIERCE, P.L.C. P.O. BOX 8910 RESTON, VA 20195 EXAMINER BECKER, DREW E ART UNIT PAPER NUMBER 1782 MAIL DATE DELIVERY MODE 08/29/2012 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ________________ Ex parte ERNEST A. VOISIN ________________ Appeal 2011-005035 Application 11/500,557 Technology Center 1700 ________________ Before BRADLEY R. GARRIS, TERRY J. OWENS, and BEVERLY A. FRANKLIN, Administrative Patent Judges. OWENS, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-005035 Application 11/500,557 2 STATEMENT OF THE CASE The Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1-14, 23 and 24, which are all of the pending claims. We have jurisdiction under 35 U.S.C. § 6(b). The Invention The Appellant claims a method for detaching shellfish shells from shellfish meat. Claims 1 and 23 are illustrative: 1. A method of causing detachment of shells from meat of shellfish, comprising: exposing the shellfish to a predetermined hydrostatic pressure and a temperature of about 75 degrees Fahrenheit for a predetermined period of time sufficient to cause detachment of the shells from meat of the shellfish. 23. A method of causing detachment of shells from meat of shellfish, comprising: exposing the shellfish to a predetermined hydrostatic pressure and a temperature of about 75 degrees Fahrenheit for a predetermined period of time sufficient to cause detachment of the shells from meat of the shellfish, wherein a minimal period of time sufficient for causing detachment of the shells from the meat of the shellfish decreases by about one minute per 10,000 psi increase in hydrostatic pressure. The References References relied upon by the Examiner Wilson US 6,086,936 Jul. 11, 2000 Voisin (Voisin ‘435) US 6,217,435 B1 Apr. 17, 2001 Voisin (Voisin ‘103) US 6,426,103 B2 Jul. 30, 2002 Voisin (Voisin ‘601) US 6,537,601 B1 Mar. 25, 2003 Jabbour US 2007/0254569 A1 Nov. 1, 2007 (PCT filed Dec. 8, 2004) Appeal 2011-005035 Application 11/500,557 3 Miura (JP ‘156, as translated) JP 4-356156 A Dec. 9, 1992 Murogoshi JP 2000157157 A Jun. 13, 2000 (JP ‘157, as translated) Reference relied upon by the Appellant Voisin (Voisin ‘917) US 2003/0161917 A1 Aug. 28, 2003 The Rejections The claims stand rejected as follows: 1) claims 1-14, 23 and 24 on the ground of nonstatutory obviousness-type double patenting over a) claims 1-5 of Voisin ‘435 in view of JP ‘157, b) claims 1-14 of Voisin ‘103, and c) claims 1-23 of Voisin ‘601, 2) claims 2-8 under 35 U.S.C. § 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the Appellant regards as the invention, 3) claims 1-3 and 5-14 under 35 U.S.C. § 103 over JP ‘615 in view of Wilson and JP ‘157, and 4) claims 4, 23 and 24 under 35 U.S.C. § 103 over JP ‘156 in view of Wilson, JP ‘157 and Jabbour. OPINION We reverse the rejection under 35 U.S.C. § 112, second paragraph and affirm the obviousness-type double patenting rejections and the rejections under 35 U.S.C. § 103. Rejection under 35 U.S.C. §112, second paragraph The Examiner argues that “refrigerated” in claim 2 is indefinite because it is not clear what temperature range that term encompasses (Ans. 7, 13-14). The relevant inquiry under 35 U.S.C. § 112, second paragraph, is whether the claim language, as it would have been interpreted by one of ordinary skill in the art in light of the Appellant’s Specification, sets out and Appeal 2011-005035 Application 11/500,557 4 circumscribes a particular area with a reasonable degree of precision and particularity. See In re Moore, 439 F.2d 1232, 1235 (CCPA 1971). The ordinary meaning of “refrigerate” is “to make or keep cold or cool: specif: to freeze or chill (as food) for preservation”.1 The Appellant’s Specification states, with respect to “crustaceans, or other shellfish”, that “[t]he ambient temperature in this case is about 40 degrees, or the temperature of refrigerated crustaceans shipped to a processing plant. It is the temperature at which the crustaceans are typically processed at a processing plant” (Spec. ¶ 0018). Thus, the Appellant’s Specification indicates that the Appellant’s claim term “refrigerated” includes any temperature within the ordinary meaning of that term at which shellfish can be shipped or processed. Hence, we reverse the rejection under 35 U.S.C. § 112, second paragraph. Obviousness-type double patenting rejections The Appellant does not challenge the obviousness-type double patenting rejections (Br. 9). Consequently, we summarily affirm those rejections. Rejections under 35 U.S.C. §103 The Appellant argues that JP ‘157 and Jabbour are not prior art because they are predated by the Appellant’s Voisin ‘917 priority application filed July 24, 1998 (Br. 19, 24-25). For an applicant to comply with the 35 U.S.C. § 112, first paragraph, written description requirement, the applicant’s specification must “convey 1 WEBSTER’S NEW COLLEGIATE DICTIONARY 972 (G. & C. Merriam 1973). Appeal 2011-005035 Application 11/500,557 5 with reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was in possession of the invention.” Carnegie Mellon University v. Hoffmann-La Roche Inc., 541 F.3d 1115, 1122 (Fed. Cir. 2008), quoting Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991). Voisin ‘917 does not show possession of the Appellant’s recited temperature requirements. Hence, the Appellant is not entitled to priority as of Voisin ‘917’s July 24, 1998 filing date sought by the Appellant. The Appellant argues that “although JP 157 discloses a broad range that encompasses the claimed temperature, JP fails to disclose the claimed 75º temperature with sufficient specificity to render the claims obvious” (Br. 20). JP ‘157 husks oysters at temperature/pressure combinations of 20 ºC (64 ºF)/3,000 kgf/cm2 (42,670 psi) and 30 ºC (86 ºF)/800 kgf/cm2 (11,379 psi) (¶ 0028, Table 1). JP ‘157 would have led one of ordinary skill in the art, through no more than ordinary creativity, to husk oysters at intermediate temperatures, such as 75 ºF, and the corresponding intermediate pressure. See KSR Int’l. Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (In making an obviousness determination one “can take account of the inferences and creative steps that a person of ordinary skill in the art would employ”). The Appellant argues that “the result of causing the detachment of the shells from the meat of the shellfish as claimed is a result that was not contemplated in the applied art and is therefore an unexpected result of the present application” (Br. 20). Appeal 2011-005035 Application 11/500,557 6 That argument is not well taken because the Appellant has not provided a side-by-side comparison of the claimed invention with the closest prior art which is commensurate in scope with the claims, and explained why the results would have been unexpected by one of ordinary skill in the art. See In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984); In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983); In re Clemens, 622 F.2d 1029, 1035 (CCPA 1980); In re Freeman, 474 F.2d 1318, 1324 (CCPA 1973); In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). The Appellant has provided mere attorney argument, and arguments of counsel cannot take the place of evidence. See De Blauwe, 736 F.2d at 705; In re Payne, 606 F.2d 303, 315 (CCPA 1979); In re Greenfield, 571 F.2d 1185, 1189 (CCPA 1978); In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974). Moreover, JP ‘157’s disclosure (¶ 0028) of husking oysters at temperatures and pressures used by the Appellants (Spec. ¶ 0011) indicates that the Appellant’s detachment of shells from meat would have been expected by one of ordinary skill in the art. The Appellant argues regarding claim 23 that “in the method of Jabbour there is no correlation between changes in pressure and time at a specific temperature as recited in the claims” (Br. 25-26). Jabbour detaches shells from meat of lobsters, crabs and shrimp, which are among the Appellant’s shellfish (Spec. ¶ 0038), at temperatures which include ambient temperatures of about 10 ºC (32 ºF) to about 30 ºC (86 ºF), typically about 20 ºC (64 ºF) (Spec. ¶ 0027), and pressures within a range (25,000 psi to 100,000 psi (¶ 0025)) which encompasses the Appellant’s range (about 30,000 to about 60,000 psi (Spec. ¶ 0011)). Jabbour would have led one of ordinary skill in the art, through no more than Appeal 2011-005035 Application 11/500,557 7 ordinary creativity, to use ambient temperatures within the disclosed range, such as 75 ºF. See KSR, 550 U.S. at 418. Because, at a 75 ºF temperature, Jabbour separates shells from meat of the same types of shellfish as the Appellant at the corresponding pressure within the Appellant’s pressure range required to effect the separation, it appears that the relation between pressure and minimum shell detachment time recited in the Appellant’s claim 23 is a characteristic not only of the Appellant’s method, but also Jabbour’s method. For the above reasons we are not persuaded of reversible error in the Examiner’s rejections. DECISION/ORDER The rejections of claims 1-14, 23 and 24 on the ground of nonstatutory obviousness-type double patenting over claims 1-5 of Voisin ‘435 in view of JP ‘157, claims 1-14 of Voisin ‘103, and claims 1-23 of Voisin ‘601, and the rejections under 35 U.S.C. § 103 of claims 1-3 and 5-14 over JP ‘615 in view of Wilson and JP ‘157 and claims 4, 23 and 24 over JP ‘156 in view of Wilson, JP ‘157 and Jabbour are affirmed. The rejection of claims 2-8 under 35 U.S.C. § 112, second paragraph, is reversed. It is ordered that 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 kmm UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ________________ Ex parte ERNEST A. VOISIN ________________ Appeal 2011-005035 Application 11/500,557 Technology Center 1700 ________________ Before BRADLEY R. GARRIS, TERRY J. OWENS, and BEVERLY A. FRANKLIN, Administrative Patent Judges. OWENS, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-005035 Application 11/500,557 2 STATEMENT OF THE CASE The Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1-14, 23 and 24, which are all of the pending claims. We have jurisdiction under 35 U.S.C. § 6(b). The Invention The Appellant claims a method for detaching shellfish shells from shellfish meat. Claims 1 and 23 are illustrative: 1. A method of causing detachment of shells from meat of shellfish, comprising: exposing the shellfish to a predetermined hydrostatic pressure and a temperature of about 75 degrees Fahrenheit for a predetermined period of time sufficient to cause detachment of the shells from meat of the shellfish. 23. A method of causing detachment of shells from meat of shellfish, comprising: exposing the shellfish to a predetermined hydrostatic pressure and a temperature of about 75 degrees Fahrenheit for a predetermined period of time sufficient to cause detachment of the shells from meat of the shellfish, wherein a minimal period of time sufficient for causing detachment of the shells from the meat of the shellfish decreases by about one minute per 10,000 psi increase in hydrostatic pressure. The References References relied upon by the Examiner Wilson US 6,086,936 Jul. 11, 2000 Voisin (Voisin ‘435) US 6,217,435 B1 Apr. 17, 2001 Voisin (Voisin ‘103) US 6,426,103 B2 Jul. 30, 2002 Voisin (Voisin ‘601) US 6,537,601 B1 Mar. 25, 2003 Jabbour US 2007/0254569 A1 Nov. 1, 2007 (PCT filed Dec. 8, 2004) Appeal 2011-005035 Application 11/500,557 3 Miura (JP ‘156, as translated) JP 4-356156 A Dec. 9, 1992 Murogoshi JP 2000157157 A Jun. 13, 2000 (JP ‘157, as translated) Reference relied upon by the Appellant Voisin (Voisin ‘917) US 2003/0161917 A1 Aug. 28, 2003 The Rejections The claims stand rejected as follows: 1) claims 1-14, 23 and 24 on the ground of nonstatutory obviousness-type double patenting over a) claims 1-5 of Voisin ‘435 in view of JP ‘157, b) claims 1-14 of Voisin ‘103, and c) claims 1-23 of Voisin ‘601, 2) claims 2-8 under 35 U.S.C. § 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the Appellant regards as the invention, 3) claims 1-3 and 5-14 under 35 U.S.C. § 103 over JP ‘615 in view of Wilson and JP ‘157, and 4) claims 4, 23 and 24 under 35 U.S.C. § 103 over JP ‘156 in view of Wilson, JP ‘157 and Jabbour. OPINION We reverse the rejection under 35 U.S.C. § 112, second paragraph and affirm the obviousness-type double patenting rejections and the rejections under 35 U.S.C. § 103. Rejection under 35 U.S.C. §112, second paragraph The Examiner argues that “refrigerated” in claim 2 is indefinite because it is not clear what temperature range that term encompasses (Ans. 7, 13-14). The relevant inquiry under 35 U.S.C. § 112, second paragraph, is whether the claim language, as it would have been interpreted by one of ordinary skill in the art in light of the Appellant’s Specification, sets out and Appeal 2011-005035 Application 11/500,557 4 circumscribes a particular area with a reasonable degree of precision and particularity. See In re Moore, 439 F.2d 1232, 1235 (CCPA 1971). The ordinary meaning of “refrigerate” is “to make or keep cold or cool: specif: to freeze or chill (as food) for preservation”.1 The Appellant’s Specification states, with respect to “crustaceans, or other shellfish”, that “[t]he ambient temperature in this case is about 40 degrees, or the temperature of refrigerated crustaceans shipped to a processing plant. It is the temperature at which the crustaceans are typically processed at a processing plant” (Spec. ¶ 0018). Thus, the Appellant’s Specification indicates that the Appellant’s claim term “refrigerated” includes any temperature within the ordinary meaning of that term at which shellfish can be shipped or processed. Hence, we reverse the rejection under 35 U.S.C. § 112, second paragraph. Obviousness-type double patenting rejections The Appellant does not challenge the obviousness-type double patenting rejections (Br. 9). Consequently, we summarily affirm those rejections. Rejections under 35 U.S.C. §103 The Appellant argues that JP ‘157 and Jabbour are not prior art because they are predated by the Appellant’s Voisin ‘917 priority application filed July 24, 1998 (Br. 19, 24-25). For an applicant to comply with the 35 U.S.C. § 112, first paragraph, written description requirement, the applicant’s specification must “convey 1 WEBSTER’S NEW COLLEGIATE DICTIONARY 972 (G. & C. Merriam 1973). Appeal 2011-005035 Application 11/500,557 5 with reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was in possession of the invention.” Carnegie Mellon University v. Hoffmann-La Roche Inc., 541 F.3d 1115, 1122 (Fed. Cir. 2008), quoting Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991). Voisin ‘917 does not show possession of the Appellant’s recited temperature requirements. Hence, the Appellant is not entitled to priority as of Voisin ‘917’s July 24, 1998 filing date sought by the Appellant. The Appellant argues that “although JP 157 discloses a broad range that encompasses the claimed temperature, JP fails to disclose the claimed 75º temperature with sufficient specificity to render the claims obvious” (Br. 20). JP ‘157 husks oysters at temperature/pressure combinations of 20 ºC (64 ºF)/3,000 kgf/cm2 (42,670 psi) and 30 ºC (86 ºF)/800 kgf/cm2 (11,379 psi) (¶ 0028, Table 1). JP ‘157 would have led one of ordinary skill in the art, through no more than ordinary creativity, to husk oysters at intermediate temperatures, such as 75 ºF, and the corresponding intermediate pressure. See KSR Int’l. Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (In making an obviousness determination one “can take account of the inferences and creative steps that a person of ordinary skill in the art would employ”). The Appellant argues that “the result of causing the detachment of the shells from the meat of the shellfish as claimed is a result that was not contemplated in the applied art and is therefore an unexpected result of the present application” (Br. 20). Appeal 2011-005035 Application 11/500,557 6 That argument is not well taken because the Appellant has not provided a side-by-side comparison of the claimed invention with the closest prior art which is commensurate in scope with the claims, and explained why the results would have been unexpected by one of ordinary skill in the art. See In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984); In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983); In re Clemens, 622 F.2d 1029, 1035 (CCPA 1980); In re Freeman, 474 F.2d 1318, 1324 (CCPA 1973); In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). The Appellant has provided mere attorney argument, and arguments of counsel cannot take the place of evidence. See De Blauwe, 736 F.2d at 705; In re Payne, 606 F.2d 303, 315 (CCPA 1979); In re Greenfield, 571 F.2d 1185, 1189 (CCPA 1978); In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974). Moreover, JP ‘157’s disclosure (¶ 0028) of husking oysters at temperatures and pressures used by the Appellants (Spec. ¶ 0011) indicates that the Appellant’s detachment of shells from meat would have been expected by one of ordinary skill in the art. The Appellant argues regarding claim 23 that “in the method of Jabbour there is no correlation between changes in pressure and time at a specific temperature as recited in the claims” (Br. 25-26). Jabbour detaches shells from meat of lobsters, crabs and shrimp, which are among the Appellant’s shellfish (Spec. ¶ 0038), at temperatures which include ambient temperatures of about 10 ºC (32 ºF) to about 30 ºC (86 ºF), typically about 20 ºC (64 ºF) (Spec. ¶ 0027), and pressures within a range (25,000 psi to 100,000 psi (¶ 0025)) which encompasses the Appellant’s range (about 30,000 to about 60,000 psi (Spec. ¶ 0011)). Jabbour would have led one of ordinary skill in the art, through no more than Appeal 2011-005035 Application 11/500,557 7 ordinary creativity, to use ambient temperatures within the disclosed range, such as 75 ºF. See KSR, 550 U.S. at 418. Because, at a 75 ºF temperature, Jabbour separates shells from meat of the same types of shellfish as the Appellant at the corresponding pressure within the Appellant’s pressure range required to effect the separation, it appears that the relation between pressure and minimum shell detachment time recited in the Appellant’s claim 23 is a characteristic not only of the Appellant’s method, but also Jabbour’s method. For the above reasons we are not persuaded of reversible error in the Examiner’s rejections. DECISION/ORDER The rejections of claims 1-14, 23 and 24 on the ground of nonstatutory obviousness-type double patenting over claims 1-5 of Voisin ‘435 in view of JP ‘157, claims 1-14 of Voisin ‘103, and claims 1-23 of Voisin ‘601, and the rejections under 35 U.S.C. § 103 of claims 1-3 and 5-14 over JP ‘615 in view of Wilson and JP ‘157 and claims 4, 23 and 24 over JP ‘156 in view of Wilson, JP ‘157 and Jabbour are affirmed. The rejection of claims 2-8 under 35 U.S.C. § 112, second paragraph, is reversed. It is ordered that 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 kmm