Wisconsin Alumni Research Foundation

Patent Trials and Appeals Board

Mar 31, 2020

15343367 - (D) (P.T.A.B. Mar. 31, 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.
15/343,367 11/04/2016 Mark RICHARDS WARF.P0048US.C1 1057
108197 7590 03/31/2020
Parker Highlander PLLC
1120 South Capital of Texas Highway
Bldg. 1, Suite 200
Austin, TX 78746
EXAMINER
MUKHOPADHYAY, BHASKAR
ART UNIT PAPER NUMBER
1792
NOTIFICATION DATE DELIVERY MODE
03/31/2020 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):
docket@phiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MARK RICHARDS and ERIC GRUNWALD
__________

Appeal 2019-004114
Application 15/343,367
Technology Center 1700
____________

Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and
DEBRA L. DENNETT, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) the final rejections of
claims 1, 2, 11, 19–25, and 40–48. We have jurisdiction over the appeal
pursuant to 35 U.S.C. § 6(b).
We AFFIRM.
Appellant’s invention is directed to methods for preserving meat
products such as fish, fowl, and red meat (Spec. 2:8–9). In particular, the
Specification describes the use of phospholipase A2 (“PLA2”) enzymes at

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 The
Wisconsin Alumni Research Foundation. (Appeal Br. 4).
Appeal 2019-004114
Application 15/343,367

2
low concentrations to reduce spoilage and preserve stored meat products (id.
at 2:9–10).
Claim 1 is illustrative (emphasis added):
1. A method of reducing lipid oxidation in intact muscle
tissue comprising contacting said tissue with no more than
about 1 mg active phospholipase A2 (PLA2) enzyme per 1 kg of
muscle tissue.
Appellant appeals the following rejections:
1. Claims 1, 2, 11, 19, 20, 23, 24, and 46–48 are rejected under 35
U.S.C. § 103(a) as unpatentable over Nielsen (US 2009/0011086 A1,
published Jan. 8, 2009) in view of A.B. Bacha et al., “Purification and
biochemical characterization of phospholipase A2 from dromedary
pancreas,” Biochimica et Biophysica Acta 1760:1202–09 (2006)
(“Bacha”).
2. Claims 21, 22, and 25 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Nielsen in view of Bacha, and further in view of S.
Govindarajan et al., “Myoglobin oxidation in ground beef:
Mechanistic studies,” J. of Food Sci., 42:571–77 (1977)
(“Govindarajan”).
3. Claims 40, 42, 44, and 45 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Nielsen in view of Bacha, and further in view of
Alam (US 2008/0075804 A1, published Mar. 27, 2008).
4. Claim 41 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Nielsen in view of Bacha, Alam, and further in view of Griffith (US
2,054,626, issued Sept. 15, 1936).
5. Claim 43 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Nielsen in view of Bacha, Alam, and further in view of Govindarajan.
Appeal 2019-004114
Application 15/343,367

3
As a preliminary matter, Appellant does not specifically contest the
Examiner’s rejection of claims 46–48 under 35 U.S.C. § 112(b) as indefinite
(Appeal Br. 5–16; Reply Br. 4–10; Final Act. 2–3). Therefore, we
summarily affirm the Examiner’s uncontested 35 U.S.C. § 112(b) rejection.
With respect to the rejections that Appellant specifically contests,
Appellant does not argue any of the claims separately from the other (see
generally Appeal Br. 5–16). Accordingly, we select independent claim 1 as
representative of the subject matter before us on appeal. 37 C.F.R.
§ 41.37(c)(1)(iv).
FINDINGS OF FACT & ANALYSIS
After review of the respective positions provided by Appellant and the
Examiner, we affirm the Examiner’s prior art rejections under 35 U.S.C.
§ 103(a) for the reasons presented by the Examiner and add the following for
emphasis.
A. Rejection of claims 1, 2, 11, 19, 20, 23, 24, and 46–48 as unpatentable
over the combination of Nielsen and Bacha.
With respect to claim 1, the Examiner’s findings and conclusions
regarding Nielsen and Bacha are located on pages 4–6 of the Final Office
Action.
The Examiner finds, inter alia, Nielsen’s discussion of the prior art
discloses that “phospholipase A2 treatment provides improved ‘oxidative
stability’ which provides storage stability” (Final Act. 4 (citing Nielsen
¶ 4)). The Examiner’s relied upon passage in Nielsen teaches that two
references in the prior art “have shown that phospholipase treatment
increases the oxidative stability of raw meat” (Nielsen ¶ 4) (emphasis
Appeal 2019-004114
Application 15/343,367

4
added). The Examiner finds that Nielsen “also discloses the treatment is by
contacting []animal muscle with a phospholipase A2” (Final Act. 4 (citing
Nielsen ¶¶ 5, 10; claim 18)).
Appellant argues that the Examiner has reversibly erred because, inter
alia, “Nielsen fails to teach or suggest the use of phospholipase A2 (PLA2)
to improve ‘oxidative stability’ in meat products” (Appeal Br. 6). In
particular, Appellant contends “that this paragraph deals exclusively with
phospholipase D (PLD), which is a completely different enzyme” (id. at 6–
7). Appellant argues that the Examiner has not established that Nielsen’s
relied upon paragraph inherently relates to the claimed activity of the
claimed PLA2 enzyme (id. at 6–11).
We are not persuaded by these arguments.
Nielsen’s paragraph 4 summarizes the results of two references, but
only the Dacaranhe et al. reference mentions “phospholipase D treatment”
(Nielsen ¶ 4). With respect to the other reference, Appellant has not
presented evidence other than attorney argument that Chung-Wang et al.
deals exclusively with phospholipase D. We, therefore, agree with the
Examiner that Nielsen establishes that it was known that “phospholipase”
generally, including phospholipases A, A2, D, etc., possess the property of
“oxidation stability” (Nielsen ¶ 4; see Ans. 14). See also In re Burckel, 592
F.2d 1175, 1179 (CCPA 1979) (“[A] reference must be considered not only
for what it expressly teaches, but also for what it fairly suggests.”); In re
Preda, 401 F.2d 825, 826 (CCPA 1968) (“[I]n considering the disclosure of
a reference, it is proper to take into account not only specific teachings of the
reference but also the inferences which one skilled in the art would
reasonably be expected to draw therefrom.”).
Appeal 2019-004114
Application 15/343,367

5
There is no dispute that Bacha discloses or suggests an HPLC-purified
PLA2 enzyme in a 600 U/mg concentration (Bacha Table 2) that, if used in
two of Neilsen’s embodiments for treating meat, the concentrations thereof
would have provided an amount of “no more than about 1 mg active . . .
(PLA2) enzyme per 1 kg of muscle tissue,” as recited in claim 1 (Final Act.
5 (“about 1 mg enzyme protein” or 0.833 mg PLA2 per 1 kg of meat); Ans.
16 (“[t]o deliver 18 U, one would use less than 1mg of [Bacha’s]
600[]U/mg” PLA2 “in 1 kg [of] meat”); Appeal Br. 11 (Bacha’s PLA2
“would provide a mg/kg value well below [A]ppellant[’s] upper threshold of
1 mg/kg”)).
Appellant argues, however, that the Examiner has not established that
one of ordinary skill in the art would have been motivated to use Bacha’s
HPLC purified enzyme as Bacha uses an eight step purification process,
including four different chromatographic steps, such as HPLC, which would
have been cost prohibitive (Appeal Br. 11–12). Appellant contends that “the
only motivation offered by the [E]xaminer is the need to arrive at
[A]ppellant[’s] claimed l mg/kg or less feature” (Reply Br. 6).
We are not persuaded by these arguments.
As the Examiner determined, one of ordinary skill in the art at the
time of the invention would have been motivated to use Bacha’s PLA2
enzyme to attain improved results, concomitant with using an enzyme
prepared to have a higher catalytic activity with less contamination (Final
Act. 5).
Likewise, we are similarly not persuaded that the alleged high costs
associated with Bacha’s particular PLA2 enzyme preparation teach away
from use of Bacha’s PLA2 (see Appeal Br. 11–12). “A reference may be
Appeal 2019-004114
Application 15/343,367

6
said to teach away when a person of ordinary skill, upon reading the
reference, would be discouraged from following the path set out in the
reference, or would be led in a direction divergent from the path that was
taken by the applicant.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). In
the present case, one of ordinary skill in the art would have taken into
consideration the tradeoff of allegedly higher enzyme preparation costs with
the PLA2 enzyme’s higher activity in determining the suitability of using
Bacha’s enzyme. See Orthopedic Equipment Co. v. United States, 702 F.2d
1005, 1013 (Fed. Cir. 1983) (“the fact that the two disclosed apparatus
would not be combined by businessmen for economic reasons is not the
same as saying that it could not be done because skilled persons in the art
felt that there was some technological incompatibility that prevented their
combination. Only the latter fact is telling on the issue of
nonobviousness.”); see also In re Farrenkopf, 713 F.2d 714, 718 (Fed. Cir.
1983) (“additional expense associated with the addition of inhibitors would
not discourage one of ordinary skill in the art”). Appellant, furthermore, has
not presented evidence other than attorney argument that Bacha’s “eight-step
HPLC method for purifying an enzyme is . . . highly expensive as compared
to commercial PLA2 preparations” (Reply Br. 7).
Appellant argues that Nielsen’s “counterpart European application,
. . . from the same inventor/assignee,” would have provided “a lowest
possible value of 1.8 mg PLA2 per kg of muscle tissue, which is nearly
double the upper limit” recited in claim 1 (Appeal Br. 13 (citing Nielsen,
WO 2002/000908, published Jan. 3, 2002)). Although the Examiner’s
rejection does not rely upon WO 2002/000908, Appellant argues “that all
Appeal 2019-004114
Application 15/343,367

7
evidence must be considered when properly made of record” (Appeal Br.
13).
We are not persuaded that WO 2002/000908 teaches away from the
Examiner’s proposed combination of Nielsen’s method for reducing lipid
oxidation in meat and Bacha’s 600 U/mg PLA2 enzyme. Teaching away
requires that a reference “criticize, discredit, or otherwise discourage the
solution claimed” by Appellant. In re Fulton, 391 F.3d 1195, 1201 (Fed.
Cir. 2004). Here, we find that WO 2002/000908 does not teach away from
the claimed subject matter because Appellant has not identified any
disclosure that disparages other PLA2 enzyme preparations, but merely
describes what is “typical” in a “commercial” phospholipase product.2
Rather, the combined teachings in Nielsen and Bacha would have suggested
the claimed method of reducing lipid oxidation in intact muscle tissue by
contacting the tissue with no more than about 1 mg active PLA2 enzyme per
1 kg of muscle tissue (see Final Act. 4–6).
Thus, based on a preponderance of evidence in this record, we sustain
this rejection as to claims 1, 2, 11, 19, 20, 23, 24, and 46–48.
B. Rejection of claims 21, 22, and 25 as unpatentable over the
combination of Nielsen, Bacha, and Govindarajan.
Appellant essentially argues that the rejection of claims 21, 22, and 25
as unpatentable over the combination of Nielsen, Bacha, and Govindarajan
should be reversed because the Examiner has not established a prima facie
case of obviousness with respect to independent claim 1 (Appeal Br. 14 (The
Examiner’s “continued and improper reliance on Nielsen and Bacha for low

2 See Nielsen, US 2003/0185939 A1, pub. Oct 2, 2003 at ¶ 44, which is the
U.S. counterpart of WO 2002/000908.
Appeal 2019-004114
Application 15/343,367

8
PLA2 levels [is] completely refuted.”)). As discussed above, we have
affirmed the rejection of claim 1. We, therefore, also affirm the rejection of
claims 21, 22, and 25.
C. Rejection of claims 40, 42, 44, and 45 as unpatentable over the
combination of Nielsen, Bacha, and Alam.
Appellant argues that the rejection of claims 40, 42, 44, and 45 as
unpatentable over the combination of Nielsen, Bacha, and Alam should be
reversed because the Examiner has not established a prima facie case of
obviousness with respect to independent claim 1 (id. at 15 (Alam “does not
address the issue of the low amount of PLA2 as presently claimed” and,
thus, “cannot correct the defects outlined” with respect to Nielsen and
Bacha.)). As discussed above, we have affirmed the rejection of claim 1.
We, therefore, also affirm the rejection of claims 40, 42, 44, and 45.
D. Rejection of claim 41 as unpatentable over the combination of
Nielsen, Bacha, Alam, and Griffith.
Appellant argues that the rejection of claim 41 as unpatentable over
the combination of Nielsen, Bacha, Alam, and Griffith should be reversed
because the Examiner has not established a prima facie case of obviousness
with respect to independent claim 1 (id. (Griffith “does not address the issue
of the low amount of PLA2 as presently claimed” and, thus, “cannot correct
the defects outlined” with respect to Nielsen and Bacha.”)). As discussed
above, we have affirmed the rejection of claim 1. We, therefore, also affirm
the rejection of claim 41.
Appeal 2019-004114
Application 15/343,367

9
E. Rejection of claim 43 as unpatentable over the combination of
Nielsen, Bacha, Alam, and Govindarajan.
Appellant argues that the rejection of claim 43 as unpatentable over
the combination of Nielsen, Bacha, Alam, and Govindarajan should be
reversed because the Examiner has not established a prima facie case of
obviousness with respect to independent claim 1 (id. at 15–16 (Govindarajan
“does not address the issue of the low amount of PLA2 as presently
claimed” and, thus, “cannot correct the defects outlined” with respect to
Nielsen and Bacha.)). As discussed above, we have affirmed the rejection of
claim 1. We, therefore, also affirm the rejection of claim 43.
CONCLUSION
In summary:
Claims
Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
46–48 112(b) Indefiniteness 46–48
1, 2, 11,
19, 20, 23,
24, 46–48
103(a) Nielsen, Bacha,
1, 2, 11, 19,
20, 23, 24,
46–48

21, 22, 25 103(a) Nielsen, Bacha, Govindarajan 21, 22, 25
40, 42, 44,
45 103(a)
Nielsen, Bacha,
Alam
40, 42, 44,
45
41 103(a) Nielsen, Bacha, Alam, Griffith 41
43 103(a)
Nielsen, Bacha,
Alam,
Govindarajan
43
Overall
Outcome
1, 2, 11, 19–
25, 40–48
Appeal 2019-004114
Application 15/343,367

10

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED