DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114 was filed in this application after a decision by the Patent Trial and Appeal Board, but before the filing of a Notice of Appeal to the Court of Appeals for the Federal Circuit or the commencement of a civil action. Since this application is eligible for continued examination under 37 CFR 1.114 and the fee set forth in 37 CFR 1.17(e) has been timely paid, the appeal has been withdrawn pursuant to 37 CFR 1.114 and prosecution in this application has been reopened pursuant to 37 CFR 1.114. Applicant’s submission filed on August 11, 2026 has been entered.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 5, 9-10 and 25-26 rejected under 35 U.S.C. 103 as being unpatentable over Cozzini et al (US 4,960,599 A) in view of Hall (GB 2170392 A).
Independent claim 5 has been amended as follows:
Claim 5. An injectable brine formulated for treating a whole poultry, the brine consisting essentially of:
water;
salt, wherein the salt in the brine is about 2.5% by weight of the total weight of the brine;
seasoning;
emulsified poultry meat sufficiently emulsified to be injectable into the whole poultry using injection needles, the emulsified poultry meat comprising poultry white meat, poultry dark meat, and poultry skin and fat, each in proportion to the pre-injection weight of the poultry white meat, poultry dark meat and poultry skin and fat, determined to be occurring in the whole poultry being treated;
wherein the poultry white meat in the brine is about 8.1% by weight of the total weight of the brine,
wherein the poultry dark meat in the brine is about 4.7% by weight of the total weight of the brine; and
wherein the poultry skin and fat in the brine is about 2.9% by weight of the total weight of the brine.
Claim 5 is directed to the composition comprising water and emulsified poultry meat comprising poultry white and dark meat. The presence of one or more components selected from the group consisting of salt, salt water, flavorings, and ice is optional. The limitation in preamble of a “injectable brine formulated for treating a whole poultry” and the limitations of “injectable into the whole poultry using injection needles” in lines 7-8 of claim 5 are directed to the intended use of the composition. It is noted that the instant claims are not directed to the method of use of such composition or to the method of poultry treatment. Independent claim 5 is directed to the composition comprising water and emulsified poultry meat comprising poultry white and dark meat.
In regard to claim 5, Cozzini et al discloses a process for injecting a particle suspension consisting of trim from like meat and a brine solution into raw meat muscle (Abstract).
Cozzini et al discloses first removing the trim consisting of fat and lean meat from like meat (Col. 1 lines 17-18).
Cozzini et al discloses processing the obtained trim by freezing, grinding, blending/mixing with a brine solution, milling and forming a suspension from the mixture of brine and trim (Col. 1 lines 20-25).
Cozzini et al discloses that this suspension is injected into the meat muscle (Col. 1 lines 25-26).
In regard to the type of meat, Cozzini et al discloses all types of meat, including poultry (Col. 1 lines 30-31).
In regard to the meat product to be injected, Cozzini et al discloses “[t]he meat muscle to be treated by the process of the present invention is first prepared in the industry's standard manner, that is, it is deboned and has the trim removed” (Col. 1 lines 33-34).
In regard to the composition of the trim, Cozzini et al discloses “[t]rim for purposes of the present invention includes fat and some muscle tissue” (Col. 1 lines 36-37). Cozzini et al discloses that “[t]rim values generally vary from between 50% lean and 50% fat to 90% lean and 10% fat”.
In regard to the recitation of salt as a part of brine composition, Cozzini et al discloses that seasonings, nitrates, phosphates, binders, etc., may be added to the brine to act as flavor enhancers and meat preservatives (Col. 1 lines 52-54). It is noted that nitrates, phosphates are salts. Hence, Cozzini et al meets the limitation of salt presence.
Claim 5 includes the limitation of “the emulsified poultry meat is composed of poultry white meat and poultry dark meat in proportion to the pre-injection weight of the poultry white meat and poultry dark meat naturally occurring in the poultry substrate”. Claims 5 recites proportions of poultry white and dark meat in the brine. Cozzini et al discloses a process for injecting a particle suspension consisting of trim from like meat. Cozzini et al does not specifically disclose the presence of the dark or white meat. Cozzini et al does not discourage from the presence of the “dark” or “white” meat. Cozzini et al discloses “[t]rim for purposes of the present invention includes fat and some muscle tissue” (Col. 1 lines 36-37). One of ordinary skill in the art would have been motivated to include any type of meat (i.e. “muscle tissue” based on the availability and a personal preference of the consumer.
In regard to the recitations of fat and skin in claim 5, Cozzini et al discloses “[t]he trim consists of fat and lean meat (Col. 1 lines 18-19). In regard to the proportion of fat and protein, Cozzini et al discloses that “[t]rim values generally vary from between 50% lean and 50% fat to 90% lean and 10% fat” (Col. 1 lines 40-41). Cozzini et al discloses that trim includes fat.
In regard to the recitations of fat and skin in claim 5, Cozzini et al does not disclose that the trim contains skin. It is not clear if the trim as disclosed by Cozzini et al contains skin or not. Hall teaches using emulsified poultry skin in the meat brine composition. Hall teaches brine composition comprising emulsified chicken skin, solution of an edible metallic salt, such as sodium chloride, and/or any other desired additives and flavourings (page 2 lines 107-128). Hall teaches several advantages of emulsified chicken skin added to brine composition:
The skin coats the surface of the pieces of meat with an emulsion of protein and fat and serves three main purposes; it helps to bind the meat pieces together, flavours the product and helps to lubricate the meat pieces during the forming process outlined as step 6 below (page 2 lines 120-128).
One of ordinary skill in the art would have been motivated to modify Cozzini et al in view of Hall and to include emulsified chicken skin in the brine/marinade composition for the reasons as taught by Hall, i.e. for binding, flavoring and protein and fat addition.
Further in regard to the concentration/proportion of salt, white meat, dark meat, fat and protein, it is noted that:
Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (MPEP 2144.05, II A).
In regard to the recitation of concentrations of emulsified poultry meat in brine, Cozzini et al discloses:
(e) blending said ground frozen trim and said brine solution together at a ratio wherein the amount of brine is at least double the amount of trim by weight (Claim 1).
This reads on the proportion of emulsified poultry meat and fat of less than 33% of the total weight of the injectable brine.
One of ordinary skill in the art would have been motivated to vary the brine composition based on the desired flavor profile.
In regard to claim 9, Cozzini et al discloses injecting cold suspension having a temperature of 28°F-32°F (Col. 2 lines 11-12).
In regard to claim 10, Cozzini et al discloses “[t]he ground trim and the brine and pickle solution are blended together in a first hopper at a predetermined ratio, generally 2, 3 or 4 parts of brine by weight to one part of trim” (Col. 1 lines 61-64).
In regard to the recitation of the liquid water and ice water in claim 10, it is noted that Cozzini et al discloses:
Claim 1. A process for injecting suspended trim into a mass of meat muscle, the steps of the process including:
(a) removing trim from meat of the same type as the meat to be injected, said trim consisting of fat and lean meat;
(b) freezing said trim;
(c) grinding said frozen trim in a grinding apparatus;
(d) cooling a brine solution to between approximately 16°F and 20° F;
(e) blending said ground frozen trim and said brine solution together at a ratio wherein the amount of brine is at least double the amount of trim by weight and maintaining the temperature of said blend at between approximately 16°F and 24°F;
(f) mixing said trim and brine solution until a saturated solution is achieved;
(g) milling said saturated solution until a complete suspension is achieved, having a temperature of 32.degree. F. or less; and
(h) injecting said relatively lower temperature suspension into said relatively higher temperature meat muscle, said meat muscle having a temperature of between approximately 38.degree. F. and 48.degree. F., whereby said injection process increases the weight of said meat with no flavor loss.
It is noted that cooling the brine solution to between approximately 16°F and 20° F will result in the formation of ice. Therefore, Cozzini et al meets the limitation of ice water.
In regard to claims 25 and 26, Cozzini et al discloses processing the obtained trim by freezing, grinding, blending/mixing with a brine solution, milling and forming a suspension from the mixture of brine and trim prior to injection into the raw meat (Col. 1 lines 20-25). Further in regard to the recitations of viscosity in claims 25 and 26, it is noted that although the reference does not specifically disclose every possible quantification or characteristic of its product, these characteristics would have been expected to be as claimed absent any clear and convincing evidence and/or arguments to the contrary. The reference discloses the same starting materials and methods as instantly (both broadly and more specifically) claimed, and thus one of ordinary skill in the art would recognize that the viscosity among many other characteristics of the product obtained by referenced method, would have been an inherent result of the process disclosed therein. The Patent Office does not possess the facilities to make and test the referenced method and product obtain by such method, and as reasonable reading of the teachings of the reference has been applied to establish the case of obviousness, the burden thus shifts to applicant to demonstrate otherwise.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Cozzini et al (US 4,960,599 A) in view of Hall (GB 2170392 A) as applied to claim 5 above and further in view of Teyssier (FR 2803487 A1).
In regard to claim 12, Cozzini et al discloses that seasonings, nitrates, phosphates, binders, etc., may be added to the brine to act as flavor enhancers and meat preservatives (Col. 1 lines 52-54). Hence, Cozzini et al discloses that seasonings may be added to the brine to act as flavor enhancers. Cozzini et al is silent as to the specific seasonings added. Teyssier discloses a brine solution for meat (title). Teyssier discloses the following brine composition:
The brine comprises (per kg of meat), 1 liter of Corbiere-type red wine rich in tannin and alcohol (12 degrees), 500 g salt, 300 g sugar, 10 g pepper, one clove, a sprig of thyme and a bay leaf (Equivalent Abstract).
One of ordinary skill in the art would have been motivated to modify Cozzini et al in view of Teyssier and to include sugar, pepper, clove, thyme and bay leaf into the brine composition in order to enhance the flavor of the brine. One of ordinary skill in the art would have been motivated to include any desired seasoning into the brome composition based on the personal preference of a consumer.
Claims 30-35 are rejected under 35 U.S.C. 103 as being unpatentable over Cozzini et al (US 4,960,599 A).
New claim 30 recites the following limitations:
An injectable brine formulated for treating a whole poultry, the brine consisting essentially of:
water;
salt, wherein the salt in the brine is about 5.5% by weight of the total weight of the brine;
emulsified poultry meat sufficiently emulsified to be injectable into the whole poultry using injection needles, the emulsified poultry meat comprising poultry white meat and poultry dark meat, each in proportion to the pre-injection weight of the poultry white meat and poultry dark meat determined to be occurring in the whole poultry being treated;
wherein the poultry white meat in the brine is about 11.6% by weight of the total weight of the brine; and
wherein the poultry dark meat in the brine is about 6.8% by weight of the total weight of the brine.
Claim 30 is directed to the composition comprising water and emulsified poultry meat comprising poultry white and dark meat. The limitation in preamble of a “injectable brine formulated for treating a whole poultry” and the limitations of “injectable into the whole poultry using injection needles” in lines 5-6 of claim 30 are directed to the intended use of the composition. It is noted that the instant claims are not directed to the method of use of such composition or to the method of poultry treatment. Independent claim 30 is directed to the composition comprising water and emulsified poultry meat comprising poultry white and dark meat.
In regard to claim 30, Cozzini et al discloses a process for injecting a particle suspension consisting of trim from like meat and a brine solution into raw meat muscle (Abstract).
Cozzini et al discloses first removing the trim consisting of fat and lean meat from like meat (Col. 1 lines 17-18).
Cozzini et al discloses processing the obtained trim by freezing, grinding, blending/mixing with a brine solution, milling and forming a suspension from the mixture of brine and trim (Col. 1 lines 20-25).
Cozzini et al discloses that this suspension is injected into the meat muscle (Col. 1 lines 25-26).
In regard to the type of meat, Cozzini et al discloses all types of meat, including poultry (Col. 1 lines 30-31).
In regard to the meat product to be injected, Cozzini et al discloses “[t]he meat muscle to be treated by the process of the present invention is first prepared in the industry's standard manner, that is, it is deboned and has the trim removed” (Col. 1 lines 33-34).
In regard to the composition of the trim, Cozzini et al discloses “[t]rim for purposes of the present invention includes fat and some muscle tissue” (Col. 1 lines 36-37). Cozzini et al discloses that “[t]rim values generally vary from between 50% lean and 50% fat to 90% lean and 10% fat”.
In regard to the recitation of salt as a part of brine composition, Cozzini et al discloses that seasonings, nitrates, phosphates, binders, etc., may be added to the brine to act as flavor enhancers and meat preservatives (Col. 1 lines 52-54). It is noted that nitrates, phosphates are salts. Hence, Cozzini et al meets the limitation of salt presence.
Claim 30 includes the limitation of “the emulsified poultry meat is composed of poultry white meat and poultry dark meat in proportion to the pre-injection weight of the poultry white meat and poultry dark meat naturally occurring in the poultry substrate”. Claims 5 recites proportions of poultry white and dark meat in the brine. Cozzini et al discloses a process for injecting a particle suspension consisting of trim from like meat. Cozzini et al does not specifically disclose the presence of the dark or white meat. Cozzini et al does not discourage from the presence of the “dark” or “white” meat. Cozzini et al discloses “[t]rim for purposes of the present invention includes fat and some muscle tissue” (Col. 1 lines 36-37). One of ordinary skill in the art would have been motivated to include any type of meat in any proportions (i.e. “muscle tissue”) based on the availability and a personal preference of the consumer.
Further in regard to the concentrations of salts, white meat and dark meat, it is noted that:
Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (MPEP 2144.05, II A).
In regard to the recitation of concentrations of emulsified poultry meat in brine, Cozzini et al discloses:
(e) blending said ground frozen trim and said brine solution together at a ratio wherein the amount of brine is at least double the amount of trim by weight (Claim 1).
This reads on the proportion of emulsified poultry meat and fat of less than 33% of the total weight of the injectable brine.
In regard to claim 31, Cozzini et al discloses Injecting cold suspension having a temperature of 28°F-32°F (Col. 2 lines 11-12).
In regard to claim 32, Cozzini et al discloses “[t]he ground trim and the brine and pickle solution are blended together in a first hopper at a predetermined ratio, generally 2, 3 or 4 parts of brine by weight to one part of trim” (Col. 1 lines 61-64).
In regard to the recitation of the liquid water and ice water in claim 33, it is noted that Cozzini et al discloses:
Claim 1. A process for injecting suspended trim into a mass of meat muscle, the steps of the process including:
(a) removing trim from meat of the same type as the meat to be injected, said trim consisting of fat and lean meat;
(b) freezing said trim;
(c) grinding said frozen trim in a grinding apparatus;
(d) cooling a brine solution to between approximately 16°F and 20° F;
(e) blending said ground frozen trim and said brine solution together at a ratio wherein the amount of brine is at least double the amount of trim by weight and maintaining the temperature of said blend at between approximately 16°F and 24°F;
(f) mixing said trim and brine solution until a saturated solution is achieved;
(g) milling said saturated solution until a complete suspension is achieved, having a temperature of 32.degree. F. or less; and
(h) injecting said relatively lower temperature suspension into said relatively higher temperature meat muscle, said meat muscle having a temperature of between approximately 38.degree. F. and 48.degree. F., whereby said injection process increases the weight of said meat with no flavor loss.
It is noted that cooling the brine solution to between approximately 16°F and 20° F will result in the formation of ice. Therefore, Cozzini et al meets the limitation of ice water.
In regard to claims 34 and 35, Cozzini et al discloses processing the obtained trim by freezing, grinding, blending/mixing with a brine solution, milling and forming a suspension from the mixture of brine and trim prior to injection into the raw meat (Col. 1 lines 20-25). Further in regard to the recitations of viscosity in claims 25 and 26, it is noted that although the reference does not specifically disclose every possible quantification or characteristic of its product, these characteristics would have been expected to be as claimed absent any clear and convincing evidence and/or arguments to the contrary. The reference discloses the same starting materials and methods as instantly (both broadly and more specifically) claimed, and thus one of ordinary skill in the art would recognize that the viscosity among many other characteristics of the product obtained by referenced method, would have been an inherent result of the process disclosed therein. The Patent Office does not possess the facilities to make and test the referenced method and product obtain by such method, and as reasonable reading of the teachings of the reference has been applied to establish the case of obviousness, the burden thus shifts to applicant to demonstrate otherwise.
Response to Arguments
Applicant's arguments filed 08/11/2026 have been fully considered but they are not persuasive.
In the Reply filed 08/11/2026, Applicant states that the criticality of the claimed brine composition was demonstrated in the Declaration of Dale Hunt (“Hunt Declaration”) filed September 9, 2024. In response to the Applicant’s arguments regarding the Hunt Declaration, it is noted that Declaration compares results of injecting poultry with four brine samples. The first brine sample does not include emulsified meat. The second brine sample includes 15.76% of meat (white and dark meat trim). The third sample is a salted brine that includes 15.76% of meat, skin and fat. The fourth sample is unsalted brine that includes 15.76% of meat, skin and fat. There is no comparison between the brine containing about 19% of meat to a brine containing about 20% of meat.
Brine 1 (“Clear brine Solution”) is a mixture of: -- 80.83% of water;
-- 3.83% salt;
-- 15.33% of seasoning.
Brine 2 (“HVB brine”) is a mixture of:
-- 64.64% of Brine 1 as described above (i.e. 80.83% of water, 3.83% salt and 5.33% of seasoning);
-- 19.61% ice;
-- 9.95% white meat trim;
-- 5.81% dark meat trim.
Brine 3 (“HVB brine”) is a mixture of:
-- 64.64% of Brine 1 as described above (i.e. 80.83% of water, 3.83% salt and 5.33% of seasoning);
-- 19.61% ice;
-- 8.14% white meat trim;
-- 4.73% dark meat trim;
-- 2.89% skin and fat.
Brine 4 (“HVB solution”) is a mixture of:
--42.12% of water;
-- 21.06% unsalted brine;
-- 21.06% ice;
-- 8.14% white meat trim;
-- 4.75% dark meat trim;
-- 2.87% skin and fat.
On page 6 of the Declaration. Declarant presents cook yield to green weight ratio after cooking injected poultry to a temperature of 185° F:
PNG
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282
612
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Greyscale
Declarant gives the following interpretation to the data of Table H:
Table H below shows the results after cooking the poultry bird to a temperature of 185°F. In Table H, the column entitled "cook yield" shows that the yield from the weight of the poultry using brine #1 was 65.24%. The yields from the brine #s 2, 3, and 4 were higher at 66.67%, 68.95%, and 67.01%. The difference in yield from the original weight (green) showed more variation. In this regard, the far right column of Table H indicates the yields for the four listed brines were 74.32%, 79.99%, 83.77%, and 78.12%. The brines that utilized substrate from the poultry birds, whether meat alone as shown in brine #2, or with the addition of skin and fat as in brine #s 3 and 4, resulted in a clear increase in yield from the green weight of the poultry bird, relative to use of clear brine (#1) which did not include any substrate content.
First of all, it is noted that the presented evidence does not commensurate in scope with claims. None of the claims recite the process for the injection of poultry with brine. None of the clams recite a brine composition consisting of 64.64% “clear brine” (i.e. 80.83% of water, 3.83% salt and 5.33% of seasoning); 19.61% ice, and 2.89% skin and fat.
Further in this regard, the presented evidence showed that Brine 3 demonstrated better results in comparison to the brine composition number 1 consisting of 80.83% of water, 3.83% salt and 5.33% of seasoning. Evidence of unexpected properties was not presented in the form of direct or indirect comparison of the claimed invention with the closest prior art which commensurate in scope with claims. In this case there is no representation of the claimed invention and the closest prior art. The presented evidence also does not commensurate in scope with claims.
Applicant’s attention is further directed to the following passages in the MPEP:
Any differences between the claimed invention and the prior art may be expected to result in some differences in properties. The issue is whether the properties differ to such an extent that the difference is really unexpected. In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986) (differences in sedative and anticholinergic effects between prior art and claimed antidepressants were not unexpected). In In re Waymouth, 499 F.2d 1273, 1276, 182 USPQ 290, 293 (CCPA 1974), the court held that unexpected results for a claimed range as compared with the range disclosed in the prior art had been shown by a demonstration of "a marked improvement, over the results achieved under other ratios, as to be classified as a difference in kind, rather than one of degree." Compare In re Wagner, 371 F.2d 877, 884, 152 USPQ 552, 560 (CCPA 1967) (differences in properties cannot be disregarded on the ground they are differences in degree rather than in kind); Ex parte Gelles, 22 USPQ2d 1318, 1319 (Bd. Pat. App. & Inter. 1992) ("we generally consider a discussion of results in terms of ‘differences in degree’ as compared to ‘differences in kind’ . . . to have very little meaning in a relevant legal sense").
The evidence relied upon should establish "that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance." Ex parte Gelles, 22 USPQ2d 1318, 1319 (Bd. Pat. App. & Inter. 1992) (Mere conclusions in appellants’ brief that the claimed polymer had an unexpectedly increased impact strength "are not entitled to the weight of conclusions accompanying the evidence, either in the specification or in a declaration."); Ex parte C, 27 USPQ2d 1492 (Bd. Pat. App. & Inter. 1992) (Applicant alleged unexpected results with regard to the claimed soybean plant, however there was no basis for judging the practical significance of data with regard to maturity date, flowering date, flower color, or height of the plant.). See also In re Nolan, 553 F.2d 1261, 1267, 193 USPQ 641, 645 (CCPA 1977) and In re Eli Lilly, 902 F.2d 943, 14 USPQ2d 1741 (Fed. Cir. 1990) as discussed in MPEP § 716.02(c).
Evidence of unexpected properties may be in the form of a direct or indirect comparison of the claimed invention with the closest prior art which is commensurate in scope with the claims. See In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980) and MPEP § 716.02(d) - § 716.02(e). See In re Blondel, 499 F.2d 1311, 1317, 182 USPQ 294, 298 (CCPA 1974) and In re Fouche, 439 F.2d 1237, 1241-42, 169 USPQ 429, 433 (CCPA 1971) for examples of cases where indirect comparative testing was found sufficient to rebut a prima facie case of obviousness.
Evidence of unexpected results must be weighed against evidence supporting prima facie obviousness in making a final determination of the obviousness of the claimed invention. In re May, 574 F.2d 1082, 197 USPQ 601 (CCPA 1978).
Where the unexpected properties of a claimed invention are not shown to have a significance equal to or greater than the expected properties, the evidence of unexpected properties may not be sufficient to rebut the evidence of obviousness. In re Nolan, 553 F.2d 1261, 1267, 193 USPQ 641, 645 (CCPA 1977).
Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980).
An affidavit or declaration under 37 CFR 1.132 must compare the claimed subject matter with the closest prior art to be effective to rebut a prima facie case of obviousness. In re Burckel, 592 F.2d 1175, 201 USPQ 67 (CCPA 1979). "A comparison of the claimed invention with the disclosure of each cited reference to determine the number of claim limitations in common with each reference, bearing in mind the relative importance of particular limitations, will usually yield the closest single prior art reference." In re Merchant, 575 F.2d 865, 868, 197 USPQ 785, 787 (CCPA 1978) (emphasis in original). Where the comparison is not identical with the reference disclosure, deviations therefrom should be explained, In re Finley, 174 F.2d 130, 81 USPQ 383 (CCPA 1949), and if not explained should be noted and evaluated, and if significant, explanation should be required. In re Armstrong, 280 F.2d 132, 126 USPQ 281 (CCPA 1960) (deviations from example were inconsequential).
The totality of the record must be considered when determining whether a claimed invention would have been obvious to one of ordinary skill in the art at the time the invention was made. Therefore, evidence and arguments directed to advantages not disclosed in the specification cannot be disregarded. In re Chu, 66 F.3d 292, 298-99, 36 USPQ2d 1089, 1094-95 (Fed. Cir. 1995) (Although the purported advantage of placement of a selective catalytic reduction catalyst in the bag retainer of an apparatus for controlling emissions was not disclosed in the specification, evidence and arguments rebutting the conclusion that such placement was a matter of "design choice" should have been considered as part of the totality of the record. "We have found no cases supporting the position that a patent applicant’s evidence or arguments traversing a § 103 rejection must be contained within the specification. There is no logical support for such a proposition as well, given that obviousness is determined by the totality of the record including, in some instances most significantly, the evidence and arguments proffered during the give-and-take of ex parte patent prosecution." 66 F.3d at 299, 36 USPQ2d at 1095.). See also In re Zenitz, 333 F.2d 924, 928, 142 USPQ 158, 161 (CCPA 1964) (evidence that claimed compound minimized side effects of hypotensive activity must be considered because this undisclosed property would inherently flow from disclosed use as tranquilizer); Ex parte Sasajima, 212 USPQ 103, 104 - 05 (Bd. App. 1981) (evidence relating to initially undisclosed relative toxicity of claimed pharmaceutical compound must be considered).
Applicant states that Cozzini et al does not teach the use of dark meat and white meat in natural proportions. It is further noted that Cozzini et al discloses a process for injecting a particle suspension consisting of trim from like meat. It is inferred that trim from like meat (i.e. from poultry) would inherently include white meat, dark meat and fat. It is also inferred that poultry is injected with poultry trim, beef is injected with beef trim and pork is injected with pork trim. Further in regard to applicant’s arguments regarding the notion of “like meat”, it is noted that:
A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments. Merck & Co. v.Biocraft Labs., Inc. 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989). See also Upsher-Smith Labs. v. Pamlab, LLC, 412 F.3d 1319, 1323, 75 USPQ2d 1213, 1215 (Fed. Cir. 2005) (reference disclosing optional inclusion of a particular component teaches compositions that both do and do not contain that component); Celeritas Technologies Ltd. v. Rockwell International Corp., 150 F.3d 1354, 1361, 47 USPQ2d 1516, 1522-23 (Fed. Cir. 1998) (The court held that the prior art anticipated the claims even though it taught away from the claimed invention. “The fact that a modem with a single carrier data signal is shown to be less than optimal does not vitiate the fact that it is disclosed.”).
In response to Applicant’s arguments against the references individually (page 16 of the appeal brief), one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Hall is not relied upon as a teaching of the amount of total trim to be used in the brine. Hall is relied upon as a teaching of using emulsified poultry skin in the meat brine composition.
In response to Applicant’s arguments on pages 14 of the reply, it is noted that no evidence of statistical or practical significance has been provided.
On page 16 of the Reply, appellant states that claims 30-35 should be allowable. This is not found persuasive for the reasons as stated above.
Applicant’s attention is further directed to the Patent Board Decision mailed 06/11/2026:
Appellant also argues that Cozzini does not disclose the use of white meat and dark meat in natural proportions. Specifically, Appellant asserts that a person of ordinary skill in the art would not read Cozzini's disclosure of "trim from like meat" to inherently include white meat, dark meat, and fat as the Examiner finds because "like meat" is a term of art meaning meat that comes from a "like" area of the animal, which, in the poultry context, means chicken breast trim (white meat) and thigh trim (dark meat). Appeal Br. 14- 15 (citing Hunt Declaration T 5). Appellant's argument is not persuasive of error because the record supports the Examiner's finding that Cozzini reasonably suggests that poultry trim is used to inject poultry, pork trim is used to inject pork, beef trim is used to inject beef. Ans. 16. Contrary to Appellant's position, Cozzini is not limited to trim from the same meat to be treated because Cozzini explicitly discloses "[i]f trim is unavailable from the meat to be treated, trim from a like meat may be used." Cozzini 1:34-36. Thus, if a whole poultry product is to be treated, it would have been reasonably understood to include white meat, dark meat, and fat, i.e. the whole poultry product, as the Examiner finds (page 6 of the Decision).
Appellant argues obviousness is rebutted by demonstrated "unexpectedly superior results, and that these results are commensurate in scope with amended Claim 5." Appeal Br. 16. Appellant provides Table A1 below as support for unexpected results (page 7 of the Decision).
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Appeal Br. 17-18 ("HVB" refers to high viscosity brine. Spec. 9:21-22.). Table A1 above is a chart comparing percent retention of examples HVB1, HVB2, HVB3, and HVB4 to two clear brine examples which do not contain white meat trim, dark meat trim, or skin and fat. Id. The retention values reported in Table A1 for the clear brine examples are lower than the retention values for HVB1, HVB2, HVB3, and HVB4 (page 7 of the Decision).
Appellant's interpretation of the results shown in Table A1 is that "HVB 2 and HVB 3 demonstrate superior results are possible where ... the emulsified meat further includes fat and skin from the poultry, but HVB 1 and HVB 4 [which do not include skin and fat] demonstrate that the content of these components can also be zero, thus optional. HVB 3 demonstrates that salt may be an optional ingredient. HVB 4 demonstrates that ice may be an optional ingredient. HVB 3 and HVB 4 demonstrate that flavorings/seasoning may be an optional ingredient." Appeal Br. 18. According to Appellant, "Table A1 demonstrates that various HVB compositions consistent with amended Claim 5 demonstrate a 16.58% to 21.49% increase over green weight after injection with the brine, whereas the Clear Brines demonstrated an 11.56% to 13.92% increase over green weight." Id. at 20. Appellant concludes, "it is unexpected that such high retention would arise with a lower trim content at least because a lower trim content means a relative higher proportion of water that could be readily purged post-injection." Id. Appellant also asserts that "HBV 4 represents a brine with a trim content at the upper end of the claimed range of total trim" and also "[a]s the brine closest to the range described by Cozzini." Id. at 21. According to Appellant, "HBV4 is also an effective comparison point for percentage of total trim with the lowest end of the range described in Cozzini." Id (page 8 of the Decision).
Appellant's limited data is not persuasive of unexpected results for multiple reasons. First, it compares the results to a clear brine instead of the closest prior art. The improvement over the clear brine would have been expected based on the prior art teaching. Thus, Appellant has not shown that the difference would have been unexpected. Second, the limited data does not show criticality at the ends of any of the claimed ranges. Third, HVB 1 and HVB 4, which are not encompassed by claim 5 because they do not include skin and fat, exhibits a higher retention than HVB 3, which Appellant relies on for unexpectedly superior results. Fourth, no comparison is made to the closest prior art, specifically Cozzini's brine containing 20% trim embodiment, in order to assess any significance to the reported results for HVB 2 and HVB 3. Even if Appellant demonstrates a difference compared to the closest prior art, it is not enough that the results demonstrated are different, because they also must be shown to be unexpected. See In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972) ("[I]t is not enough to show that results are obtained which differ from those obtained in the prior art: that difference must be shown to be an unexpected difference.") (emphasis omitted). Thus, if less trim content in the brine would be expected to result in a lower retention, such results would be expected rather than unexpected.
Appellant also provides Table A2 below to support unexpectedly superior results attributed to the proportion of white meat in the brine being 58% to 68% compared to the use of either white meat or dark meat alone with regard to "cook yields in white meat." Appeal Br. 22 (page 9 of the Decision).
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According to Appellant, Table A2 shows Dark HVB provides a better cook yield in white meat halves and White HVB provides a better cook yield in dark meat, while HVB 4 (natural proportion HVB) provides "superior cook yields to White HVB in white meat halves." Appeal Br. 22-23. Appellant asserts that HVB 4 outperforms both White HVB and Dark HVB in white meat, "thus demonstrating a greater than additive effect." Id. at 23. Appellant asserts that the results "are of statistical and practical significance" because they "come from a range of substrates including white meat halves, dark meat halves, and whole poultry birds. White meat and dark [meat] halves were tested with between 10 to 14 pounds of poultry halves." Id. Appellant quotes from the Hunt Declaration as support for the "results are of immense practical significance." Id. ("providing the dark meat and white meat in proportion to that naturally found in the poultry produced an optimum flavor, as well as improved brine retention within the poultry, both before cooking as well as after cooking."). Appellant's arguments are not persuasive of error because objective evidence of non-obviousness must be unexpected and not merely different and must compare the claimed subject matter to the closest prior art or explain where the comparison deviates from the closest prior art. Ans. 12- 15. Appellant's limited data may show a difference between brine compositions, but not necessarily an unexpected or significant difference, and it also fails to show criticality at the ends of the claimed range. Appellant's assertions of criticality, as well as the Declarant's, are conclusory and not adequately corroborated with data. A reasonable showing that the unexpected result occurs throughout the claimed range and that the range is critical for obtaining the claimed unexpected result is important because it establishes a nexus between the evidence and the merits of the claimed invention. A nexus is a "fundamental requirement that must be met before secondary considerations can carry the day." In re Huai-Hung Kao, 639 F.3d 1057, 1068 (Fed. Cir. 2011) (page 10 of the Decision).
The record supports the Examiner's finding that no evidence of statistical or practical significance has been provided. Ans. 17. Cozzini discloses a process for injecting a particle suspension consisting of trim from like meat. Cozzini 1:30-37. The record supports the Examiner's finding that a person having ordinary skill in the art would infer from Cozzini's disclosure that whole poultry would be injected with poultry trim and that the trim from like meat, i.e., from poultry, would inherently include white meat, dark meat and fat. Ans. 16; Cozzini 1:34-35 ("If trim is unavailable from the meat to be treated, trim from a like meat may be used."). Thus, Cozzini explicitly does not limit "like meat" to be the same cut of meat to be treated, e.g., white meat trim for white meat and dark meat trim for dark meat as Appellant asserts. Moreover, the USDA Regulation that Appellant and the Hunt Declaration reference does not support Appellant's position that a skilled artisan would understand Cozzini's use of the term "like meat" to mean the same cut of meat. The regulation relates to labeling of products (title) and states "[t]hese trimmings may be from a different process, however, they must be derived from like cuts or parts" rather than "like meats." Hunt Decl. 1 5 (quoting "USDA Food Standards and Labeling Policy Book, at page 83"). Cozzini's reference to like meat in the context of listing "beef, pork, poultry, lamb and fish" supports the Examiner's finding that the natural proportion of the trimmings from poultry is disclosed or suggested by Cozzini. In addition, the Hunt Declaration relies only on the USDA labeling policy quoted therein, which the Declaration acknowledges allows for the injection of meat trimmings back into meat without the need for specific labeling if the injected meat trimmings come from a 'like' area." Hunt Decl. ¶ 5 (page 11 of the Decision).
Even if labeling requirements are relevant to understanding Cozzini's disclosure, Appellant's evidence is insufficient to show either non- obviousness or unexpected results that are not just different, but unexpected and significant. A party asserting unexpected results as evidence of nonobviousness has the burden of proving that the results are unexpected. In re Geisler, 116 F.3d 1465, 1469-70 (Fed. Cir. 1997). "[I]t is not enough to show that results are obtained which differ from those obtained in the prior art: that difference must be shown to be an unexpected difference." In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972) (citation omitted). Accordingly, the preponderance of the evidence in this Appeal record supports the Examiner's rejection of independent claim 5 under 35 U.S.C. § 103 for the reasons expressed in the Final Action and the Examiner's Answer (page 12 of the Decision).
Conclusion
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/VERA STULII/Primary Examiner, Art Unit 1791
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