Ex Parte Coleman et al

Patent Trial and Appeal Board

May 24, 2017

12913513 (P.T.A.B. May. 24, 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.
12/913,513 10/27/2010 Edward C. Coleman 9610-97909-US 4017
109813 7590 05/24/2017
Fitch, Even, Tabin & Flannery, LLP
120 South LaSalle Street
Suite 1600
Chicago, IL 60603-3406
EXAMINER
STULII, VERA
ART UNIT PAPER NUMBER
1791
MAIL DATE DELIVERY MODE
05/24/2017 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 PATENT TRIAL AND APPEAL BOARD
Ex parte EDWARD C. COLEMAN and
PRIYANK TULSIYAN
Appeal 2016-004491
Application 12/913,5131
Technology Center 1700
Before ROMULO H. DELMENDO, DONNA M. PRAISS, and
DEBRA L. DENNETT, Administrative Patent Judges.
DENNETT, Administrative Patent Judge.
DECISION ON APPEAL2
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1—11, 13—17, 19—23, and 25—41. We have jurisdiction under 35 U.S.C.
§ 6(b).
We REVERSE.
1 Appellants identify Intercontinental Great Brands LLC as the real party in
interest. Appeal Br. 3.
2 In this Opinion we refer to the Final Action mailed on January 22, 2015
(“Final Act.”); the Appeal Brief filed on September 22, 2015 (“Appeal Br.”);
the Examiner’s Answer mailed on January 29, 2016 (“Ans.”); and the Reply
Brief filed March 29, 2016 (“Reply Br.”).
Appeal 2016-004491
Application 12/913,513
The claims are directed to shelf-stable savory fillings and food
products, methods for preparing same, and methods for retarding the
oxidative rancidity of meat in shelf-stable food products. Claims 1, 13, 19,
26, and 31 (Claims App’x). Claim 1, reproduced below, is illustrative of the
claimed subject matter:
1. A shelf-stable savory filling comprising:
a mixture of a fat component and antioxidant; and
particulate meat component having a water activity of
about 0.4 to about 0.55 and including a plurality of individual
meat particles each having a surface area,
wherein the individual meat particles are dispersed in the
mixture of the fat component and antioxidant such that the
mixture of the fat component and the antioxidant covers at least
50 percent of the surface area of the individual meat particles,
and
wherein the antioxidant is provided in the mixture of the
fat component and the antioxidant in an amount effective to
retard oxidative rancidity of the particulate meat component in
the shelf-stable filling at ambient temperature for at least about
four months.
Appeal Br. 33 (Claims App’x).
REFERENCES
The Examiner relies on the following prior art in rejecting the claims
on appeal:
Trout et al., US 2002/0071898 A1 June 13, 2002
(hereinafter “Trout”)
Yeasha M. Olson and W.J. Stadelman, Antioxidant Control of
Rancidity Development in Ground Turkey Meat, 59 Poultry Sci. 2733
(1980) (hereinafter “Olson”)
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Appeal 2016-004491
Application 12/913,513
REJECTIONS
Claims 1—11, 13—17, 19-23, and 25—41 are rejected under 35 U.S.C.
§ 103(a) over Trout in view of Olson. Final Act. 2.
OPINION
Appellants argue the claims as a group. We select claim 1 as
representative of the group because our reasoning for this claim applies to all
other claims on appeal.
The Examiner finds, with respect to claim 1, that Trout teaches a
lipid-based filling with a low moisture content such that the filling is shelf-
stable. Final Act. 4. The lipid-based filling may contain meat pieces
homogeneously mixed in the lipid-based filling. Id. (citing Trout H 61, 82).
The Examiner determines that, although Trout does not disclose the water
activity of the meat component, one of ordinary skill in the art at the time of
the invention would have been motivated to select ingredients of the filling
having corresponding water activity in order to maintain the desired shelf
stability. Final Act. 3. The filling may be fortified with vitamins and/or
minerals. Trout | 68. The Examiner finds that some of the vitamins may
function as antioxidants, although Trout is silent as to whether such
antioxidants are capable of retarding oxidative rancidity, as required by the
claims. Final Act. 3.
The Examiner finds that Olson discloses addition of butylated
hydroxyanisole (BHA) and butylated hydroxytoluene (BHT) to ground
turkey meat in order to delay oxidative rancidity and increase shelf life of
the meat. Id. at 4.
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Appeal 2016-004491
Application 12/913,513
According to the Examiner, it would have been obvious to one of
ordinary skill in the art at the time of the invention to modify Trout to add
BHA and BHT antioxidants taught by Olson in order to further increase
shelf stability and retard oxidative rancidity and increase shelf life. Id. The
Examiner determines that shelf stability in the claimed range would have
been an inherent result of the process disclosed by the combined
references—absent any clear and convincing evidence and/or arguments to
the contrary—because the combination of Trout and Olson discloses the
same starting materials and methods as claimed. Id. at 4—5. In like manner,
the Examiner concludes that the percentage of surface area of meat pieces
covered with fat would have been expected to be in the claimed range as an
inherent result of the disclosed process. Id. at 5—6.
Appellants argue that the proposed combination of Trout and Olson
lacks a rationale sufficient to support the conclusion of obviousness. Appeal
Br. 19. Instead, Appellants contend, the Examiner relies on merely
conclusory statements. Id.
Appellants contend that Trout provides no motivation to use vitamins
as an antioxidant in combination with meat in a filling or in an amount
effective to retard oxidative rancidity in meat, but rather discloses the
possibility of adding vitamins to fortify the filling for nutritional purposes.
Id. at 15—16; see also Reply Br. 3. Appellants argue that Trout discloses
improving shelf stability of the filling by lowering moisture content of the
filling, but does not mention antioxidants or a need to protect meat
components from oxidative rancidity. Appeal Br. 20; see also Reply Br. 6.
According to Appellants, Olson describes inclusion of antioxidants in
a trivial amount of oil (3 grams) for treating 75 grams of ground turkey to
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Appeal 2016-004491
Application 12/913,513
increase shelf life to about eight days under refrigeration conditions. Appeal
Br. 17.
Appellants argue that Trout’s fortification of fillings with vitamins
would not teach or suggest or motivate one of ordinary skill in the art at the
time of the invention to add to Trout antioxidants as described by Olson in
order to retard oxidative rancidity. Id. at 22. Appellants contend that the
rationale given by the Examiner for such modification (to further increase
shelf stability by including antioxidants that retard oxidative rancidity in
meat) is inapplicable at least because Trout is not concerned with oxidative
rancidity. Id.
Appellants’ arguments are persuasive of reversible error by the
Examiner in concluding that claim 1 would have been obvious over the cited
prior art. Trout’s disclosure of adding vitamins for nutritional purposes is
unrelated to Trout’s disclosure of shelf stability. Trout || 48, 68. Trout
discloses an antioxidant-independent solution to shelf stability at ambient
temperature as a result of low moisture content. Id. 148. Olson, on the
other hand, teaches use of antioxidants to treat exposed meat surfaces to
retard oxidative rancidity for eight days at refrigeration temperatures.
Olson, Abst. The Examiner has not provided a rational reason supported by
evidence for combining Trout with Olson with a reasonable expectation that
the resulting combination would provide shelf stability at ambient
temperature for at least about four months. See In re Kahn, 441 F.3d 977,
988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds cannot be
sustained by mere conclusory statements; instead, there must be some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness.”). As argued by Appellants, Appeal Br. 20—21,
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Appeal 2016-004491
Application 12/913,513
the Examiner has not presented a sufficient basis to believe that Trout’s
composition would necessarily possess Appellants’ claimed ambient
temperature shelf stability of at least about four months. Nor has the
Examiner provided a reasonable basis to believe that Olson’s antioxidants,
which are disclosed as providing shelf stability at refrigeration temperatures
for approximately eight days, would necessarily provide Appellants’ claimed
ambient temperature shelf stability of at least about four months when they
are added in amounts suggested by Olson.
The Examiner has not made a prima facie case of obviousness. See In
re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) (“[T]he Examiner bears the
initial burden, on review of the prior art or on any other ground, of
presenting a prima facie case of unpatentability.”). As a result, contrary to
the Examiner’s determination, the burden of producing additional evidence
has not shifted to Appellants. See Final Act. 14—15; Ans. 14—15. Indeed,
the Examiner’s attempt to shift the burden to show that the combination of
the references would not inherently possess the claimed shelf stability, Ans.
15, amounts to an improper requirement for Appellants to provide a
comparison against their own invention. In re Tiffin, 443 F.2d 394, 399
(CCPA 1971) (“The examiner’s composite process is appellants’ process,
and thus cannot be compared with it.”); In re Chapman, 357 F.2d 418, 422
(CCPA 1966) (Board erred in holding that “appellants’ compositions are
unpatentable because such a process ‘would inherently yield’ a product
substantially the same as that claimed, since that position implies that any
and all products of obvious processes are unpatentable by reason of their
being the ‘inherent’ results of those processes.”).
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Appeal 2016-004491
Application 12/913,513
For the reasons above, we do not sustain the Examiner’s rejection of
claim 1 as obvious. For the same reasons, we do not sustain the Examiner’s
rejection of claims 2—11, 13—17, 19-23, and 25—41.
DECISION
The Examiner’s rejection of claims 1—11, 13—17, 19—23, and 25—41 is
reversed.
REVERSED
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