Robert Musser

Patent Trials and Appeals Board

Aug 24, 2020

13046162 - (D) (P.T.A.B. Aug. 24, 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.
13/046,162 03/11/2011 Robert C. Musser P222225.US.03 4342
25763 7590 08/24/2020
DORSEY & WHITNEY LLP - Minneapolis
INTELLECTUAL PROPERTY DEPARTMENT
50 South Sixth Street
Suite 1500
Minneapolis, MN 55402-1498
EXAMINER
PRAKASH, SUBBALAKSHMI
ART UNIT PAPER NUMBER
1793
NOTIFICATION DATE DELIVERY MODE
08/24/2020 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):
ip.docket@dorsey.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT C. MUSSER

Appeal 2019-005801
Application 13/046,162
Technology Center 1700
Before JOSEPH L. DIXON, DONNA M. PRAISS, and
BRIAN D. RANGE, Administrative Patent Judges.
RANGE, 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 77–87. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Purina Animal
Nutrition LLC. Appeal Br. 3.
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CLAIMED SUBJECT MATTER2
Appellant describes the invention as relating to “use of an enhanced
lactoperoxidase system for treatment of milk products.” Spec. ¶ 2. In
particular, the Specification describes treating waste milk so that farmers can
feed calves with the milk. Id. ¶¶ 2–6. Claim 77 is the only independent claim
on appeal and is illustrative:
77. A method of inactivating Mycobacterium avium subsp.
Paratuberculosis (MAP) in waste-milk, the method comprising:
admixing lactoperoxidase (“LP”) system components
with waste-milk, the added LP system components comprising
glucose, glucose oxidase, and an oxidizable agent consisting of
iodide, wherein admixing comprises first adding a balancer
product to the waste-milk, the balancer product containing the
iodide and glucose, and then adding the glucose oxidase to the
waste-milk to sequentially activate the lactoperoxidase therein;
and
subjecting the admixture to pasteurization temperatures
of at least about 56.5 °C for at least about 30 minutes,
wherein the admixture is free of added thiocyanate,
wherein the waste-milk includes at least one of transition
milk, mastitic milk, antibiotic treated milk, high somatic cell
count milk or milk to be fed to animals that is not suitable for
human consumption,
wherein the iodide constitutes about 0.1 to about 10 ppm
of the admixture, and
wherein the balancer product comprises a powdered
supplement that includes a combination of protein, fat, vitamins
and minerals.

2 In this Decision, we refer to the Final Office Action dated June 29, 2018
(“Final Act.”), the Appeal Brief filed December 21, 2018 (“Appeal Br.”), the
Examiner’s Answer dated May 29, 2019 (“Ans.”), and the Reply Brief filed
July 29, 2019 (“Reply Br.”).
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REFERENCES
The Examiner relies upon the prior art below in rejecting the claims
on appeal:
Name Reference Date
Zhou et al.
(“Zhou”)
US 2006/0289354 A1 Dec. 28, 2006
Fennessy et al.
(“Fennessy”)
WO 00/69267 Nov. 23, 2000
“Benefits and Potential Risks of the Lactoperoxidase System of Raw Milk
Pasteurization,” Report of FAO/WHO technical meeting, Rome, Italy, Nov.
to Dec. 2005 (“FAO”).
Godden, S., “A review of issues surrounding the feeding of waste milk and
pasteurization of waste milk and colostrum,” Col. of Veterinary Med.,
Univ. of Minnesota, Sept. 24–26, 2005 (“Godden”).

REJECTIONS
The Examiner maintains the following rejections on appeal:
A. Claims 77 and 81–87 under 35 U.S.C. § 103 as obvious over Godden,
FAO, and Zhou. Ans. 3.
B. Claims 78–80 under 35 U.S.C. § 103 as obvious over Godden, FAO,
Zhou, and Fennessy. Id. at 7.

OPINION
We review the appealed rejections for error based upon the issues
identified by Appellant 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
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alleged error in the examiner’s rejections.”). After considering the evidence
presented in this Appeal and each of Appellant’s arguments, we are not
persuaded that Appellant identifies reversible error. Thus, we affirm the
Examiner’s rejections for the reasons expressed in the Final Office Action
and the Answer. We add the following primarily for emphasis.
The Appellant does not argue any claim separately and does not
present distinct arguments for Rejection B. Appeal Br. 3–4, 8. We therefore
limit our discussion to claim 77. All other claims stand or fall with that
claim. 37 C.F.R. § 41.37(c)(1)(iv) (2018).
The Examiner finds that Godden teaches treating waste milk by
pasteurization and teaches that it is not definitively known whether
pasteurization completely destroys Mycobacterium avium subsp.
Paratuberculosis (“MAP”) which causes Johne’s disease. Ans. 3 (citing
Godden). The Examiner also finds that FAO suggests “that lactoperoxidase
treatment prior to pasteurization has complementary or potentially
synergistic effects on microbial inhibition.” Id. at 4 (citing FAO). The
Examiner determines that a person of skill in the art would have been
motivated to apply a lactoperoxidase system in conjunction with Godden’s
heat treatment to inactivate MAP in waste milk with a reasonable
expectation of success. Id.
The Examiner finds that FAO does not specifically teach added
iodide. Id. The Examiner finds, however, that FAO teaches adding 10 ppm
thiocyanate in raw milk as part of the lactoperoxidase system. Id. (citing
FAO). The Examiner also finds that Zhou teaches that thiocyanate and
iodide are interchangeable in a thiocyanate system. Id. at 4–5 (citing Zhou).
The Examiner determines that it would have been obvious to add sufficient
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iodide to the waste milk as a substitute for added thiocyanate of modified
Godden to enable MAP inactivation. Id. at 5, 12.
Appellant first argues that the references do not teach inactivating
MAP in waste-milk by admixing lactoperoxidase components. Appeal Br.
4–5. Appellant emphasizes that Godden teaches pasteurization of waste milk
while FAO only discusses raw milk. Id. This argument is unpersuasive
because it addresses the references individually. In re Keller, 642 F.2d 413,
426 (CCPA 1981).
The Examiner’s rejection, based on the combined teaching of the
references, is well founded. In particular, FAO teaches that its
lactoperoxidase system combined with pasteurization inactivates bacteria
more effectively than pasteurization alone. Ans. 4; FAO 22 (“application of
the LP-s prior to heating provides a complementary, possibly synergistic,
combination”). Although FAO does not explicitly reference raw milk, a
person of skill in the art would have understood that this teaching could
apply to waste milk as well as to raw milk. Ans. 4; KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 419 (2007) (“The obviousness analysis cannot be
confined by a formalistic conception of the words teaching, suggestion, and
motivation, or by overemphasis on the importance of published articles and
the explicit content of issued patents.”). A person of skill in the art would
have recognized that the FAO technique could improve waste milk
processing in the same way it improves raw milk processing (i.e., by
inactivating bacteria). KSR Int’l, 550 U.S. at 417.
In the Reply Brief, Appellant emphasizes that FAO teaches that its
lactoperoxidase system merely maintains initial quality of milk before
processing or pasteurization. Reply Br. 2–4. This characteristic of the
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lactoperoxidase system, however, would be advantageous to waste milk as
well as to raw milk. Even if waste milk is not safe to drink prior to
pasteurization, it would be advantageous to prevent the waste milk from
becoming even worse (i.e., more bacterial growth) prior to the pasteurization
process just as FAO teaches with respect to raw milk. See also KSR Int’l
Co., 550 U.S. at 417 (“if a technique has been used to improve one device,
and a person of ordinary skill in the art would recognize that it would
improve similar devices in the same way, using the technique is obvious
unless tits actual application is beyond that person’s skill”).
Appellant also argues that FAO indicates that the lactoperoxidase
system is not applicable to all bacteria found in milk. Reply Br. 4. The fact
that the system would help mitigate at least some bacteria, however,
provides reason why a person of skill in the art would have reason to use the
system in combination with pasteurization. Ans. 4. An improvement does
not have to be expected to perfectly address every problem to nonetheless be
obvious. See In re O’Farrell, 853 F.2d 894, 903–04 (Fed. Cir. 1988)
(“Obviousness does not require absolute predictability of success . . . all that
is required is a reasonable expectation of success.”) (citations omitted).
Appellant also argues that the references do not teach sequentially
adding glucose, iodide, and glucose oxidase to treat waste milk. Appeal Br.
5–7. Because Appellant again argues the references separately, the argument
is unpersuasive. In re Keller, 642 F.2d at 426. The Examiner relies on
Zhou’s teaching that iodide and thiocyanate are interchangeable in a
lactoperoxidase system. Ans. 4–5; see also Zhao ¶ 17. The Examiner,
therefore, provides adequate support as to why a person of skill in the art
would have included iodide in the FAO lactoperoxidase system when that
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system is applied to Godden’s waste milk before pasteurization. Ans. 4–5.
Moreover, the Examiner finds that Zhou teaches a sequence for adding
components to a lactoperoxidase system (Ans. 10), and Appellant does not
persuasively dispute this finding.
To the extent Appellant attempts to distinguish the prior art based on
the order of steps performed in method claim 77 (Appeal Br. 6–7), a method
claim is prima facie obvious where the art teaches or suggest the method’s
recited steps even if the order of the steps is different absent evidence of
criticality of step order. Ex parte Rubin, 128 USPQ 440 (Bd. App. 1959)
(prior art reference disclosing process of making laminated sheet wherein a
base sheet is first coated with a metallic film and thereafter impregnated
with thermosetting material was held to render prima facie obvious claims
directed to process of making a laminated sheet by reversing order of prior
art process steps.); see also In re Burhans, 154 F.2d 690, 692 (CCPA 1946)
(selection of any order of performing process steps is prima facie obvious in
the absence of new or unexpected results).
Here, Appellant does not present evidence that the ordering is critical
or provides unexpected results. Ans. 10–11. “[A]rguments of counsel cannot
take the place of evidence lacking in the record.” Estee Lauder Inc. v.
L’Oreal, S.A., 129 F.3d 588, 595 (Fed. Cir. 1997) (internal quotes and
citation omitted). Absent such evidence, any reordering of prior art steps
here is merely “predictable use of prior art elements according to their
established functions.” KSR Int’l Co., 550 U.S. at 417.
Appellant also argues that the references do not teach a process free of
added thiocyanate and emphasizes that FAO discourages a thiocyanate-free
mixture. Appeal Br. 7–8. The Examiner, however, finds that Zhou teaches
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thiocyanate and iodide are interchangeable. Ans. 12–13. A person of skill in
the art, therefore, would have had reason to substitute added thiocyanate for
iodide such that the process would be free of added thiocyanate. Id.
Because Appellant’s arguments do not identify harmful error, we
sustain the Examiner’s rejections.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
77, 81–87 103 Godden, FAO, Zhou 77, 81–87
78–80 103 Godden, FAO, Zhou,
Fennessy
78–80
Overall
Outcome
77–87

TIME PERIOD FOR RESPONSE
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)(1)(iv).

AFFIRMED