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 .
Declaration under 37 C.F.R. §1.132
The Declaration under 37 CFR 1.132 filed 4/17/26 is insufficient to overcome the rejections of record as set forth in the last Office action because the burden rests with applicant to establish testing that the comparisons are to the disclosure of the closest prior art, and supplied evidentiary showing is commensurate in scope with the claimed subject matter. See In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972).
With respect to applicants “Definition of operation conditions”, importantly the operating conditions are not 1:1. Specifically the Declaration experimental results are directed to a different thickness of frozen food, i.e. “optimized for a thinner block”. In addition the results are not commensurate with the scope of Independent claim 1 which is limited by box weight, i.e. 22-66 lbs as opposed to the urged thickness. In addition to the experimental results are dependent on a different box capacity, i.e. 25 kg as opposed to 10kg. As noted, Independent claim 1 encompasses a range of box weight which Sairem teaches at pg. 2 par. 1 (20-25kg) and thus the experimental results are not commensurate in scope with the claimed weight since the results are directed to the lower limit of the range encompassed, i.e. the minimum, where the results are directed to the opposite extreme of the range as taught by Sairem.
In addition, to difference in product size and weight which directly affect experimental results, the experimental results are directed to different applied power. Applicants urgings are directed to an applied power of 38-40kw, when compared to an applied power of 60kW as taught by Sairem leading one to expect different results due to different operating conditions.
In addition the experimental results are not commensurate with the scope of the claims as Independent claim 1 encompasses a power of between 35-70 kW, which encompasses the power applied by Sairem, i.e. 60kW.
In addition, the experimental results rely on different initial temperatures and “significantly higher transports speed” where the experimental results assume a transport speed of Sairem. This is not relevant to the issue of nonobviousness of the claimed subject matter and provides no objective evidence thereof. See MPEP § 716.
With respect to applicants urging of “drastic reduction in tempering time”. Tempering time is an effective variable to achieve a same final temperature as taught by Sairem and as claimed.
Thus as opposed to comparisons to the disclosure of the closest prior art, commensurate in scope with the claimed subject matter, and supplied evidentiary evidence. The declaration include(s) statements which amount to an affirmation that the claimed subject matter functions as it was intended to function. This is not relevant to the issue of nonobviousness of the claimed subject matter and provides no objective evidence thereof. See MPEP § 716.
In view of the foregoing, when all of the evidence is considered, the totality of the rebuttal evidence of nonobviousness fails to outweigh the evidence of obviousness.
Disagreement as to the Examiner’s factual findings and reasoning for combining the references, without more, is insufficient to establish reversible error. Cf. SmithKline Beecham Corp. v. Apotex Corp., 439 F.3d 1312, 1320 (Fed. Cir. 2006) (“[M]ere statements of disagreement. . . as to the existence of factual disputes do not amount to a developed argument.”).
The burden rests with applicant to establish testing that the comparisons are to the disclosure of the closest prior art, and supplied evidentiary showing is commensurate in scope with the claimed subject matter. See In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972).
The Declaration does not amount to persuasive evidence because applicant has not provided reliable data or experimental results sufficient to support those contentions.
The testing as provide is not commensurate with the scope of the claims. Although applicant contends one of ordinary skill in the art would not expect Sairem to be capable of this improvement, applicant does not provide an adequate explanation or direct us to reliable data or experimental results sufficient to support those contentions given the difference in experimental testing.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 1 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement due to the phrase “said boxes weigh between 22 and 66 lbs (10 and 30 kg)”. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention. Though the specification teaches at par. 0049 “a box weighing between 22 and 66 lbs. (10 and 30 kg)”, importantly the claimed weight is specific to “a box”, singular. Thus the claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention namely a combination of boxes where “said boxes weigh between 22 and 66 lbs (10 and 30 kg)” in combination.
Claim 1 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement due to the phrase “whereby the thawed salmon fillets exhibit: (i) dynamic drip-loss of less than or equal to 1.70% at 48 hours and less than or equal to 2.50% at 96 hours.”. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention. Importantly the claimed weight of the salmon fillets processed is between 22 and 66 pounds, however applicants test results of “fillets” is merely 4-5 pounds. Thus the specification lacks written support for “dynamic drip-loss of less than or equal to 1.70% at 48 hours and less than or equal to 2.50% at 96 hours” with respect to 22 to 66 pounds of fillet under the claimed processing conditions.
Claim 1 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement due to the phrase “whereby the thawed salmon fillets exhibit: aerobic mesophilic counts at Day 0 of less than or equal to 1.3 x 10 to the third power CFU/g that remain below the corresponding counts of fresh salmon that has not been previously frozen over Days 5 through 23”. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention. Importantly the claimed weight of the salmon fillets processed is between 22 and 66 pounds, however applicants test results of “fillets” is merely 4-5 pounds. Thus the specification lacks written support for “aerobic mesophilic counts at Day 0 of less than or equal to 1.3 x 10 to the third power CFU/g that remain below the corresponding counts of fresh salmon that has not been previously frozen over Days 5 through 23” with respect to 22 to 66 pounds of fillet under the claimed processing conditions.
Claim 1 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement due to the phrase “salmon fillets”. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention. Though applicants specification at par. 0049 teaches the claimed “initial temperature”, “22 -66 lbs”, a power of between 35-70 kw for “1.7 to 2.4 minutes”. Par. 0049 is silent to the salmon being the claimed fillets and merely states “salmon”. More specifically par. 0049 is silent to “said boxes containing the salmon fillets” and par. 0060 describing a thawing process by microwaves is limited to “whole” salmon.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1 and 11 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 is rejected due to the phrase “placing said boxes containing the salmon fillets, into the tunnel, wherein said boxes weigh between 22 and 66 lbs (10 and 30 kg)” since it is unclear if the said boxes weight is with respect to each individual box weighing 22-66 lbs., with respect to a combination of boxes weight between 22-66 lbs., with respect to boxes which individual weight is insignificant as long as an unclaimed multiple number of boxes add up to 22-66 lbs. or with respect to something different altogether.
The phrase “do not show significant differences” in claim 11 is rejected, as it is a relative term, which renders the claim indefinite. The term “significant” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is unclear as to what is encompassed by the phrase “significant difference”; it is unclear as to what degree of difference is encompassed by this phrase, if not significant but different.
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 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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 1 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over https://www.sairem.com/wp-content/uploads/2020/11/SAIREM-TMW75-MK115-EN.pdf. (upload date 11/2020) in view of Petrie et al. (WO2019068102).
Sairem teaches a continuous process to thaw fish (pg. 2 par. 2 line 2), by means of microwaves (pg. 1 par. 2; title),
Where the process is carried out in a thawing tunnel that has an entrance and an exit (pg. 1 par. 2), between which a conveyor belt is located (pg. 4 second to last line; placed on belt; fig. 1 pg. 1), on which are deposited boxes containing the fish (pg. 1 par. 3 benefit 7; packed, cardboard; fig. 1, fig. 2), the process comprising
Placing said boxes containing the fish into the tunnel, where the boxes weigh between 22 and 66lbs. (10 and 30kg; pg. 2 par. 1 20-25kg)
advancing the boxes through the tunnel at a displacement speed to achieve the final desired temperature (pg. 2 par. 1)
irradiating the boxes containing the fish at least one microwave emitter (pg. 2 par. 3 line 1) at a power of 35 to 70 Kilowatts (pg. 2 par. 3 line 1; 60kw) until the temperature in 95% of the thawed product reaches -3C to -1C; pg. 2 par. 1 lines 1-2 -2C).
Though silent to thawing to a temperature of a “thermal center” as claimed. Sairem teaches the same claimed microwave thawing to achieve a same claimed temperature with respect to a taught 95% of the thawed product reaches -3C to -1C; (pg. 2 par. 1 lines 1-2 -2C).
It would have been obvious to one of ordinary skill in the art before the effective filing of the claimed invention filed to teach the same claimed temperature with respect to a thermal center relative the teachings of Sairem for its art recognized and applicants intended purpose of thawing to achieve the constant, i.e. the finally desired temperature of -3C to -1C as taught including a thermal center.
Sairem teaches processing of foods in a conveying tunnel for the purpose of thawing and thus one of ordinary skill in the art would have been motivated to look to the art of thawing frozen foods comprising a transport mechanism as taught by Petrie.
More specifically Petrie teaches rf processing of foods where the material of interest, including salmon (pg. 9 line 20), may undergo a same pre-treatment as taught by Sairem comprising microwave processing (pg. 17 lines 25-27).
Though silent to salmon fillets, Sairem does teach the processing of foods is not limited and more specifically includes fish (pg. 1 par. 1). Thus it would have been obvious to one of ordinary skill in the art before the effective filing of the claimed invention filed to teach a specific type of fish such as salmon as taught by Petrie, including fillets, for the same purpose of thawing as taught by both thus providing a same tempering of fish and more specifically salmon as taught by Petrie (pg. 9 line 20).
Sairem teaches an initial temperature, i.e. frozen temperature which is less than between 3.2 to 12.20 (-16C and -11°C), such as an example around -20C to -18C (pg. 2 par. 3). Thus since Sairem teaches a same thawing, since the initial temperature is merely a freezing temperature and since the frozen fish of Sairem would pass through this temperature as the frozen product is thawed. It would have been obvious to one of ordinary skill in the art before the effective filing of the claimed invention filed to teach an initial temperature of the product at -16C and -11°C as taught by Petrie (pg. 6 lines 13-15) since the claimed temperatures encompass a same frozen state as taught by Sairem and since the intent is thawing where the initial temperature as taught by Petrie is variable to achieve the constant, i.e. the finally desired temperature of -3C to -1C as taught by both.
With respect to the speed of the tunnel conveyor, since the speed is variable relative size, capacity, and weight of the food object relative applied power. Since the constant to be attained is a same temperature of -3C to -1C as taught by Sairem and since Sairem teaches a same microwave as that claimed. It would have been obvious to one of ordinary skill in the art before the effective filing of the claimed invention filed to teach a range of speeds relative such as and including a displacement speed of 1,800 to 2,500 mm/min. thus providing the desired thawing time due to displacement speed as taught by Sairem and since the speed of the conveyor is variable as taught by both to achieve the constant, the thawing temperature.
Though silent to a time of the same claimed microwave power relative fish, Sairem teaches a same power as claimed, i.e. 60kW relative 35-70kW (pg. 2 par. 3) to achieve the required temperature of the product after thawing (par. 2 par. 2). It would have been obvious to one of ordinary skill in the art before the effective filing of the claimed invention filed to teach a time of 1.7 to 2.4 minutes relative a same power of 60kW as taught since the time is relative an applied power to achieve a final temperature and thus it would have been obvious to optimize the time relative the other variables as taught by both through routine experimentation since the time duration is variable to achieve the final temperature as taught by both.
In addition with respect to the processing variables which achieve a desired final temperature as taught and more specifically with respect to a same claimed power of the microwaves for tempering. "The obviousness analysis cannot be confined by a formalistic conception of the words teaching, suggestion, and motivation, or by overemphasis on the importance of... the explicit content of issued patents." KSR Int'l. Co. v. Teleflex lnc., 550 U.S. 398, 419. "The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results." KSR, 550 U.S. at 416., The question to be asked is "whether the improvement is more than the predictable use of prior art elements according to their established functions." KSR, 550 U.S. at 417.
In addition, a conclusion of obviousness can be made from common knowledge and common sense of the person of ordinary skill in the art without any specific hint or suggestion in a particular reference. See In re Bozek, 416 F.2d 1385, 1390 (CCPA 1969). Such as in the instant case since the rate effective variables are chosen and are variable and depend on the final required temperature and on the product as taught by Sairem.
Though silent to dynamic drip loss of less than or equal to 1.70% relative a time of 48 hours and less than or equal to 2.50% at 96 hours, importantly Sairem specifically teaches a key benefit of the same process being “avoiding drip losses” (pg. 1). Thus it would have been obvious to one of ordinary skill in the art before the effective filing of the claimed invention to teach drip loss of less than or equal to 1.70% relative a time of 48 hours and less than or equal to 2.50% at 96 hours since Sairem teaches a same thawing by microwave, at a same claimed temperature and a same claimed quantity, as opposed to room, water bath and controlled environment chamber thawing techniques. Burden shift to applicant to provide evidence the same processing as taught by Sairem would not achieve the claimed effects compared to room, water bath and controlled environment chamber thawing techniques relative a time of 48-96h.
Applicant has described the product with parameters which cannot be measured by the office for prior art comparison, because the office is not equipped to manufacture prior art products and compare them for patentability purposes. As the claimed and prior art products are identical or substantially identical in structure, i.e. microwave thawing and fish, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ430, 433 (CCPA 1977).
Sairem teaches a same thawing by microwave heating, at a same claimed temperature and a same claimed quantity, as opposed to room, water bath and controlled environment chamber thawing techniques. In addition, Sairem teaches a same thawing by microwave heating, at a same claimed temperature and a same claimed quantity. Burden shift to applicant to provide evidence the same processing as taught by Sairem would not achieve the claimed effects.
Since Sairem teaches a same thawing by microwave, at a same claimed temperature and a same claimed quantity, as opposed to room, water bath and controlled environment chamber thawing techniques. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to teach process specific condition as taught by Sairem which achieve aerobic mesophilic counts at Day 0 of less than or equal to 1.3 X 10 to the third power CFU/g that remain below the corresponding counts of fresh salmon that has not been previously frozen over Days 5 through 23 since "The obviousness analysis cannot be confined by a formalistic conception of the words teaching, suggestion, and motivation, or by overemphasis on the importance of... the explicit content of issued patents." KSR Int'l. Co. v. Teleflex lnc., 550 U.S. 398, 419. "The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results." KSR, 550 U.S. at 416., The question to be asked is "whether the improvement is more than the predictable use of prior art elements according to their established functions." KSR, 550 U.S. at 417.
In addition, a conclusion of obviousness can be made from common knowledge and common sense of the person of ordinary skill in the art without any specific hint or suggestion in a particular reference. See In re Bozek, 416 F.2d 1385, 1390 (CCPA 1969). Such as in the instant case since the rate effective variables such as in the instant case aerobic mesophilic counts at Day 0 of less than or equal to 1.3 X 10 to the third power CFU/g that remain below the corresponding counts of fresh salmon that has not been previously frozen over Days 5 through 23.
Applicant has described the product with parameters which cannot be measured by the office for prior art comparison, because the office is not equipped to manufacture prior art products and compare them for patentability purposes. As the claimed and prior art products are identical or substantially identical in structure, i.e. microwave thawing and fish, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ430, 433 (CCPA 1977).
Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results. In addition to “Obvious to try”, i.e. choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success and known work in one field of endeavor which may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations would have been predictable to one of ordinary skill in the art, i.e. an outcome dependent on a same process of the prior art.
Sairem teaches a same microwave thawing to achieve a same claimed final temperature. Though silent to applicants claimed attributes relative room, water bath and controlled environment chamber thawing techniques. Sairem teaches microwave thawing as claimed, as opposed to room, water bath and controlled environment chamber thawing techniques.
Therefore, since the prior art teaches the identical thawing process, the properties applicant discloses and/or claims are necessarily present minus any clear and convincing arguments to the contrary.
If there is any difference between the fish of Sairem, the salmon of Petrie relative the microwave thawing of Sairem and that of the instant claims, the difference would have been minor and obvious insofar as because “Products of identical chemical composition cannot have mutually exclusive properties." A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP 2112.01(1), In re Best, 562 F2d at 1255, 195 USPQ at 433, Titanium Metals Corp v Banner, 778 F2d 775, 227 USPQ 773 (Fed Cir 1985), In re Ludtke, 441 F2d 660, 169 USPQ 563 (CCPA 1971) and Northam Warren Corp v D F Newfield Co, 1 F Supp 773, 22 USPQ 313 (EDNY 1934).
Where applicant claims result in terms of a function, property or characteristic and the teachings of the prior art is the same as that of the claim but the function is not explicitly disclosed by the reference, the examiner may make a rejection under both 35 USC 102 and 103. “There is nothing inconsistent in concurrent rejections for obviousness under 35 USC 103 and for anticipation under 35 USC 102.” See MPEP 2112(111) and In re Best, 562 F2d at 1255, 195 USPQ at 433.
With respect to claim 11, though silent to comparing the thawed salmon with previously unfrozen salmon, pplicant has described the product with parameters which cannot be measured by the office for prior art comparison, because the office is not equipped to manufacture prior art products and compare them for patentability purposes. As the claimed and prior art products are identical or substantially identical in structure, i.e. microwave thawing and fish, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ430, 433 (CCPA 1977).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to teach the thawed salmon fillets do not show significant differences in lipid content, as compared with salmon in a fresh state that has not been previously frozen, and do not show significant differences in DHA, EPA, and DPA content since Sairem teaches a same thawing by microwave heating, at a same claimed temperature and a same claimed quantity, as opposed to room, water bath and controlled environment chamber thawing techniques.
Response to Arguments
With respect to applicants urgings D2), and applicants urgings directed to the claimed weight range encompassing multiple boxes. Initially it is noted par. 0049 of applicants specification teaches such with respect to “a box”, specifically singular.
It is further noted with respect to applicants urgings directed to the claimed weight range encompassing multiple boxes would further broaden the claimed microwave treatment to include any individual weight of each box as long as an unclaimed multiple number of boxes add up to 22-66 lbs. For instance, applicants urgings would encompass achieving a same comparative analysis and results relative treating 5 boxes of 4 lbs fillets (30 lbs) or 13 boxes of 5 lbs fillets which is not supported by the specification.
Though urged there is no inconsistency between the claimed box-weight range and the experimental data in the specification relating to fillets of 4-5 lb caliber. Those are different parameters: one is the weight of the industrial box used in the process, and the other is the biological size of individual fillets within that box. Importantly and as noted “one is the weight of the industrial box used in the process” which does not encompass the combination of boxes used in the process.
It is further noted the provided Declaration processing conditions of the invention was directed to box capacity of 10 kg. The Declaration is silent to multiple boxes and more specifically processing of 1-3 boxes at 10 kg to achieve the claimed “boxes weigh between 22 and 66 lbs”. Given the urging directed to the claimed “boxes”, the Declaration is not commensurate with the scope of the claim and/or would not provide a 1:1 experimental testing since applicants claims would encompass the same results relative 3 boxes at 10 kg and different test results of Sairem due to a singular 25 kg box.
With respect to applicants urging Sairem is silent to a temperature at a thermal center. Sairem teaches the same claimed microwave thawing to achieve a same claimed temperature with respect to a taught 95% of the thawed product reaches -3C to -1C; (pg. 2 par. 1 lines 1-2 -2C). As noted by applicant though Sairem is silent “where the remaining 5% of the block lies”, importantly Sairem teaches the same claimed microwave thawing to achieve a same claimed temperature with respect to a taught 95% of the thawed product reaches -3C to -1C; (pg. 2 par. 1 lines 1-2 -2C)
It would have been obvious to one of ordinary skill in the art before the effective filing of the claimed invention filed to teach the same claimed temperature with respect to a thermal center relative the teachings of Sairem for its art recognized and applicants intended purpose of thawing to achieve the constant, i.e. the finally desired temperature of -3C to -1C as taught including a thermal center.
With respect to the claim defines a coordinated, product-specific operating window tied to a different endpoint criterion and a different product geometry than Sairem's disclosure. Sairem teaches a same endpoint criterion, i.e. the finally desired temperature of -3C to -1C. With respect to applicants urging of different geometry, the product geometry specific to weight is taught by Sairem. Though silent to fillets as taught by Petrie.
It is further noted Sairem specifically teaches applicants urged advantage over the prior art thawing processes using microwaves as opposed to room, water bath and controlled environment chamber thawing techniques. Sairem teaches microwave thawing as claimed, as opposed to room, water bath and controlled environment chamber thawing techniques.
With respect to applicants urging Sairem is limited by a time of 5 minutes. In addition to teaching recipe power vs time chosen according to the comprise between capacity and homogeneity of heating, Sairem teaches the result effective variable are product dependent. The same taught temperature endpoint is “the optimum temperature for processing” as further taught.
With respect to applicants urgings of “salmon fillets”. Though urged the specification specifically teaches such, the office recognizes the specification teaches such. However the tables of the specification specific to results of fillets are silent to the claimed weight, speed, emitter power. The tables and applicants specification further teaches the same advantages of fillets with respect to “whole” salmon (par. 0060). The office thus recognizes the invention is not limited to a generic fish block, however applicants claim limitations are not defined and/or limited by “fillets” but as taught by par. 0047 “the salmon is packed in boxes”. Applicants specification is not directed to differences in microwave thawing relative fillets w/skin vs fillets w/out skin vs. whole but applicants specification urged advantage over the prior art thawing processes using microwaves as opposed to room, water bath and controlled environment chamber thawing techniques.
With respect to applicants urging directed to Petrie. It is initially noted, Petrie is relied upon with respect to the broadly taught fish of Sairem, i.e. salmon. Though silent to salmon fillets, Sairem does teach the processing of foods is not limited and more specifically includes fish (pg. 1 par. 1). Thus it would have been obvious to one of ordinary skill in the art before the effective filing of the claimed invention filed to teach a specific type of fish such as salmon as taught by Petrie, including fillets, for the same purpose of thawing as taught by both thus providing a same tempering of fish and more specifically salmon as taught by Petrie (pg. 9 line 20).
With respect to the urged “technical report”. It is noted that “the arguments of counsel cannot take the place of evidence in the record”, In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965). It is the examiner’s position that the arguments provided by the applicant regarding the urged technical report must be supported by a declaration or affidavit. As set forth in MPEP 716.02(g), “the reason for requiring evidence in a declaration or affidavit form is to obtain the assurances that any statements or representations made are correct, as provided by 35 U.S.C. 24 and 18 U.S.C. 1001”.
It is further noted as no IDS was filed it is unclear if the urged report is part of the application file or not.
However it is further noted the urged report does not provide the same conditions for comparison, such as and including temperature, weight, power which directly impact the results obtained and thus applicants urging of unexpected results, are not commensurate with the scope of the claims.
Importantly and though applicant urges non-obviousness the claimed limitations which applicant relies in the Declaration are not supported by the specification. Though applicant relies on a comparison of test results”, importantly the operating conditions are not 1:1. Specifically the Declaration experimental results are directed to a different thickness of frozen food, i.e. “optimized for a thinner block”. In addition the results are not commensurate with the scope of Independent claim 1 which is limited by box weight, i.e. 22-66 lbs as opposed to the urged thickness. In addition to the experimental results are dependent on a different box capacity, i.e. 25 kg as opposed to 10kg. As noted, Independent claim 1 encompasses a range of box weight which Sairem teaches at pg. 2 par. 1 (20-25kg) and thus the experimental results are not commensurate in scope with the claimed weight since the results are directed to the lower limit of the range encompassed, i.e. the minimum, where the results are directed to the opposite extreme of the range as taught by Sairem.
In addition, to difference in product size and weight which directly affect experimental results, the experimental results are directed to different applied power. Applicants urgings are directed to an applied power of 38-40kw, when compared to an applied power of 60kW as taught by Sairem leading one to expect different results due to different operating conditions.
In addition the experimental results are not commensurate with the scope of the claims as Independent claim 1 encompasses a power of between 35-70 kW, which encompasses the power applied by Sairem, i.e. 60kW.
In addition, the experimental results rely on different initial temperatures and “significantly higher transports speed” where the experimental results assume a transport speed of Sairem. This is not relevant to the issue of nonobviousness of the claimed subject matter and provides no objective evidence thereof. See MPEP § 716.
With respect to applicants urging of “drastic reduction in tempering time”. Tempering time is an effective variable to achieve a same final temperature as taught by Sairem and as claimed.
Thus as opposed to comparisons to the disclosure of the closest prior art, commensurate in scope with the claimed subject matter, and supplied evidentiary evidence. The declaration include(s) statements which amount to an affirmation that the claimed subject matter functions as it was intended to function. This is not relevant to the issue of nonobviousness of the claimed subject matter and provides no objective evidence thereof. See MPEP § 716.
Sairem teaches a same microwave thawing to achieve a same claimed final temperature. Though silent to applicants claimed attributes relative room, water bath and controlled environment chamber thawing techniques. Sairem teaches microwave thawing as claimed, as opposed to room, water bath and controlled environment chamber thawing techniques.
Therefore, since the prior art teaches the identical thawing process, the properties applicant discloses and/or claims are necessarily present minus any clear and convincing arguments to the contrary.
If there is any difference between the fish of Sairem, the salmon of Petrie relative the microwave thawing of Sairem and that of the instant claims, the difference would have been minor and obvious insofar as because “Products of identical chemical composition cannot have mutually exclusive properties." A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP 2112.01(1), In re Best, 562 F2d at 1255, 195 USPQ at 433, Titanium Metals Corp v Banner, 778 F2d 775, 227 USPQ 773 (Fed Cir 1985), In re Ludtke, 441 F2d 660, 169 USPQ 563 (CCPA 1971) and Northam Warren Corp v D F Newfield Co, 1 F Supp 773, 22 USPQ 313 (EDNY 1934).
Where applicant claims result in terms of a function, property or characteristic and the teachings of the prior art is the same as that of the claim but the function is not explicitly disclosed by the reference, the examiner may make a rejection under both 35 USC 102 and 103. “There is nothing inconsistent in concurrent rejections for obviousness under 35 USC 103 and for anticipation under 35 USC 102.” See MPEP 2112(111) and In re Best, 562 F2d at 1255, 195 USPQ at 433.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEVEN N LEFF whose telephone number is (571)272-6527. The examiner can normally be reached on M-F 8:30-5:00.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Erik Kashnikow can be reached at (571)270-34753475. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/STEVEN N LEFF/ Primary Examiner, Art Unit 1792
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