2020000029 (P.T.A.B. Oct. 2, 2020)

Julio Pimentel et al.

Patent Trials and Appeals BoardOct 2, 2020

2020000029 (P.T.A.B. Oct. 2, 2020)

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. 14/126,699 12/16/2013 Julio Pimentel 60288-148012 1038 21888 7590 10/02/2020 THOMPSON COBURN LLP ONE US BANK PLAZA SUITE 3500 ST LOUIS, MO 63101 EXAMINER ZILBERING, ASSAF ART UNIT PAPER NUMBER 1792 NOTIFICATION DATE DELIVERY MODE 10/02/2020 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): IPDOCKET@THOMPSONCOBURN.COM PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JULIO PIMENTEL, KURT RICHARDSON, and DON WILSON Appeal 2020-000029 Application 14/126,699 Technology Center 1700 BEFORE BEVERLY A. FRANKLIN, MERRELL C. CASHION, JR., and JANE E. INGLESE, Administrative Patent Judges. FRANKLIN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 14–16 and 23–28. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Anitox Corporation. Appeal Br. 3. Appeal 2020-000029 Application 14/126,699 2 CLAIMED SUBJECT MATTER Claim 14 is illustrative of Appellant’s subject matter on appeal and is set forth below: 14. A process for making pelleted animal feed or pet food, said process comprising: i) diluting a stock solution with 10 to 200 parts water to make a heat-treating composition, said stock solution containing: a) 10-30 wt%. of acetic acid; b) 15 - 30 wt.% of a polysorbate-80 surfactant, an ethoxylated castor oil surfactant having an HLB from 4 to 18 and a molar ratio of 1 molecule of castor oil to 40 - 60 molecules of ethylene oxide, or a mixture thereof; c) 5 - 20 wt.% of propylene glycol; and d) 0 - 50 wt.% of water; ii) applying about 1 to 10 wt. % of the heat-treating composition to an animal feed or pet food, wherein the applied heat-treating composition does not impart anti-fungal activity to the animal feed or pet food; and iii) either pelletizing the mixture of the animal feed or pet food and the heat-treating composition with sufficient heat to make pelleted animal feed or pet food, or extruding and then pelletizing the treated animal feed or pet food with sufficient heat to make pelleted animal feed or pet food. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Samuelsson US 6,379,723 B1 Apr. 30, 2002 Pimentel US 2005/0170052 A1 Aug. 4, 2005 M N Hudha et al., Effect of Acetic Acid on Growth and Meat Yield in Broilers, 1 Int’l J. BioRes. 4, 31–35 (2010) (“Hudha”). Thomas S. Winowiski, Pellet Quality in Animal Feeds, American Soybean Association (2001) (“Winowiski”). Appeal 2020-000029 Application 14/126,699 3 THE REJECTION Claims 14–16 and 23–28 are rejected under 35 U.S.C. 103(a) as unpatentable over Pimentel in view of Hudha, Samuelsson, and Winowiski. OPINION We review the appealed rejections for error based upon the issues Appellant identifies, and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections.”)). After considering the argued claims and each of Appellant’s arguments, and the Examiner’s position in the record, we are persuaded of reversible error in the appealed rejection for the reasons provided in the record by Appellant, with the following emphasis. We refer to the Examiner’s Final Office Action for a complete statement of the rejection. Final Act. 3–7. The dispositive issue in this case is whether the Examiner’s proposed modifications to the primary reference of Pimentel renders Pimentel unsatisfactory for its intended purpose? Pimentel is directed to “a method for making a terpene-containing composition effective as a preservative comprising mixing a composition comprising a terpene, surfactant and water at a solution-forming shear until an oil/water emulsion is formed.” Pimentel ¶ [0017]. Appellant argues that the Examiner’s proposal to remove terpenes from the process in Pimentel renders Pimentel unsatisfactory for its intended purpose. Appeal Br. 9. Appellant explains that terpenes are the effective ingredient required in Appeal 2020-000029 Application 14/126,699 4 Pimentel. Appeal Br. 9; see, e.g., Pimentel, ¶¶ [0008], [0009], [0011]– [0018]. We agree that Appellant has identified reversible error in the Examiner’s determination of obviousness. The Examiner does not explain persuasively why one skilled in the art would remove a critical ingredient, such as terpene, from Pimentel’s composition to arrive at the claimed invention. The Examiner’s reasoning that “it would have been obvious to a skilled artisan to have modified Pimentel and to have eliminated terpenes and their antifungal function, if the antifungal function was not desired” (Ans. 10) is contrary to Pimentel’s express teachings. Thus, while the Specification discloses that fungicides for poultry and swine integrators may not be needed because the feed is consumed quicker than the time it takes for mold and fungus to develop (Spec. 2–3; Ans. 10), the Examiner has not provided “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), quoted with approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Furthermore, the Examiner offers no explanation as to how Pimentel’s composition, modified as proposed by the Examiner, would be suitable for Pimentel’s purpose of a composition “effective against various infective agents including bacteria, viruses, mycoplasmas, and/or fungi present in drinking water, feed and major feed ingredients.” Pimentel ¶ [0015]. “If the proposed modification would render the prior art invention being modified unsatisfactory for its intended purpose, then there is no suggestion or motivation to make the proposed modification.” In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984). “If the proposed modification or combination of Appeal 2020-000029 Application 14/126,699 5 the prior art would change the principle of operation of the prior art invention being modified, then the teachings of the references are not sufficient to render the claims prima facie obvious.” In re Ratti, 270 F.2d 810, 813 (CCPA 1959). In view of the above, we reverse the rejection. CONCLUSION We reverse the Examiner’s decision. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Reversed Affirmed 14–16, 23– 28 103(a) 14–16, 23– 28 REVERSED