Reissue – Non-Final Rejection
For reissue applications filed on or after September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the current provisions.
Status of Claims
Patent claims 1-33 and new claims 34-41 and 90-105 are canceled.
New claims 42-89 and 106-141 are pending.
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.
Claims 70-78 and 106-118 are 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.
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 applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claims 70-78 and 106-118 recite the peracetic-acid containing water is “substantially free from medium chain carboxylic acid.” Any negative limitation or exclusionary proviso must have basis in the original disclosure. The specification does not recite, nor would it be apparent to one of ordinary skill in the art, that the method of treating poultry would necessarily exclude a medium chain carboxylic acid. The specification does not teach that a medium chain carboxylic acid is unsuitable for use with peracetic acid and in fact, a person having ordinary skill in the art would have known that it was known in the art to treat poultry with compositions containing both a medium chain carboxylic acid and peracetic acid. See, for example, McSherry (col.36, lines 1-15 and col.6, lines 60-64).
Claims 109-116 require two different locations for introduction of combined solution (peroxyacetic acid and the alkalinity source) into the reservoir. However, the disclosure does not set forth or suggest two separate introduction locations.
Claim Rejections - 35 USC § 103
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.
Claim(s) 42-45, 48-60, 62, 63, 65-79, 82-89, 106-132, 135, 136, and 138-141 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 5,632,676 to Kurschner et al. (hereinafter Kurschner) in view of US 9,242,880 to Gupta et al. (hereinafter Gupta).
With respect to claims 42, 50-55, 58, 66-72, 79, 83, 86-89, 106-108, 114-116, 119-121, 128, 130, 139-141, Kurschner teaches a method of treating at least a portion of a poultry carcass with peracetic acid (Abstract) wherein a peracetic acid-containing water is held within a reservoir (a chilling bath; col.3, lines 28-31 and 60-62) and poultry is immersed therein. Kurschner discloses that prior to immersing the poultry, the pH of the dilute peracetic acid solution is adjusted to 7 by adding NaOH. See Example 6. The poultry is removed from the bath of diluted peracetic acid after treatment. See col.3, lines 32-47. The peracetic acid solution is free of a medium chain carboxylic acid. Because Kurschner discloses the pH of the solution is adjusted to 7, a step of determining or monitoring the pH is implied by Kurschner because the skilled artisan would only know that the pH had been adjusted to the desired level if it was measured/ monitored/determined in some manner. Kurschner does not teach the claimed pH range or adjusting the pH after the poultry has been placed in the reservoir.
Gupta teaches a method of on-site generation of peracetic acid solutions from a peroxygen source and an acyl donor. See col.2, lines 30-42. Gupta suggests maintaining a pH of between 4 and 11, and most preferably 5 and 8, by adding a pH adjusting agent in order to “both rapidly form peracetic acid and hinder its self-decomposition.” See col.4, lines 42-44. In fact, Gupta recognizes that the “solution pH impacts both the formation and self-decomposition of peracetic acid” wherein “Alkaline conditions favor rapid formation and self-decomposition” while “acidic conditions hinder formation and self-decomposition.” See col.4, lines 38-42. As peracetic acid is formed, the pH of the solution will lower, inhibiting further formation of peracetic acid (col.6, lines 23-25) and thus, requiring a pH adjusting agent to increase the pH to the desired range. Gupta achieves a balance by “maintaining of the pH at a level which stabilizes the generated peracetic acid” (col.6, lines 20-21) by adding the pH adjusting agent. Because the pH is maintained within a desired range by Gupta, the method would intrinsically include a step of determining the pH.
It would have been obvious to a person of ordinary skill in the art to “maintain the pH” of the peracetic acid solution of Kurschner throughout the use thereof to fall within the range disclosed by Gupta in order to stabilize the generated peracetic acid such that formation is optimized and self-decomposition during use is minimized. This would obviously include maintaining the pH within the optimum range during production and during use thereof, before and after contact with the poultry and whenever the pH falls outside the optimum range. As to the ranges of pH claimed, Gupta discloses two ranges (4 to 11 and 5 to 8) which either overlap or encompass the claimed ranges of 7.6 to 10, 7.6 to 9.3, 7.6 to 9, 8 to 9, and 9 to 10. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). It would have been further obvious to use a known alkaline source, such as the NaOH disclosed by Kurschner or other known alkalines such as KOH, as the pH adjusting agent since Kurschner already discloses the effectiveness thereof at raising the pH of a peracetic acid solution.
As to claims 43, 44, 59, 60, 131, and 132, Kurschner discloses that the peracetic acid-containing water may be formed by diluting a solution of peracetic acid. See col.4, lines 10-12. The produced peracetic acid-containing water is then used to submerge the poultry. See Example 1. Whether the peracetic acid is diluted prior to adding to the reservoir or diluted in the reservoir is not deemed inventive, as both methods of dilution would have been readily apparent to one of ordinary skill in the art as a means of mixing together two liquids.
With respect to claims 45, 57, 126, and 129, Kurschner teaches peracetic acid solutions having a concentration of 100 ppm. See Abstract. A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). The Court held that "The proportions are so close that prima facie one skilled in the art would have expected them to have the same properties."). See also Warner-Jenkinson Co., Inc. v. Hilton Davis Chemical Co., 520 U.S. 17, 41 USPQ2d 1865 (1997). In this case, one would have expected a 100 ppm peracetic acid solution to have the same properties as a 99 ppm peracetic acid solution.
As to claims 48, 49, 65, 73-75, 78, 82, 117, 118, 122-125, 127, and 138, the combination of Kurschner with Gupta teaches recycling of the used peracetic acid solution which may be reused with the addition of more peracetic acid solution. See col.3, lines 1-5. The additional peracetic acid is disclosed to be added in response to output measurements from monitors in a side branch line. It would have been obvious to continuously monitor the peracetic acid concentration and pH in order to maintain an amount of peracetic acid suitable for sanitizing poultry as taught by Kurschner and stabilize the peracetic acid during use thereof.
As to claims 56, 76, 77, 84, 85, and 112, Kurschner discloses the peracetic acid is present in an amount that “effectively reduces the bacterial level found on the fowl” (Abstract), such as a concentration of 100 ppm As set forth above, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close.
With respect to claims 62, 63, 135, and 136, Gupta teaches that a sample or “side branch” may be removed for testing the characteristics of the peracetic acid-containing water. See col.3, lines 1-17. Monitors for testing are connected to a feeding mechanism for adding process chemicals. It would have been obvious to test the pH at this point in the system in the combination with Kurschner, as Gupta clearly discloses the need to maintain the pH of the peracetic acid solution for stabilization thereof.
Additionally, with respect to claims 106 and 113 Gupta teaches the side branch of process water may be filtered and/or treated and returned(recirculated). This side branch return functions as an “inlet pipe” for the water and additional peracetic acid. See col.3, lines 1-17. Gupta additionally teaches monitors for testing the water are connected to a feeding mechanism for adding process chemicals. It would have been obvious to add the pH adjusting agent to the process water in the side branch in the combination with Kurschner, as Gupta clearly discloses the need to maintain the pH of the peracetic acid solution for stabilization thereof and the side branch is already being used to add process chemicals.
As to claims 109-111, it would have been obvious to add the peracetic acid-containing water of Kurschner to multiple locations within the reservoir, simultaneously or at different time points, in order to prevent unwanted concentration gradients of peracetic acid within the volume of the reservoir.
Claims 46, 47, 61, 64, 80, 81, 133, 134, and 137 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Kurschner and Gupta as applied to claims 42, 55, 79, and 128 above, and further in view of US 4,474,476 to Thomsen (hereinafter Thomsen).
While performing the method of maintaining the pH of the peracetic acid solution in Gupta requires determining the pH of the solution, Gupta does not disclose whether the pH is determined and adjusted continuously or intermittently. However, Thomsen discloses that it was known in the art of pH monitoring to monitor the pH either continuously or periodically and use the electrical signal representative of the pH to cause an acid and/or alkaline chemical to be added for pH adjustment. See col.2, lines 36-54. Since the combination of Kurschner with Gupta already teaches automatic monitoring of process water characteristics to control the addition of peracetic acid, it would have been obvious to complement with the pH monitoring and control of Thomsen, thereby assuring the pH maintenance required by Gupta.
Claim Objections
Claim 71 is objected to because of the following informalities: In line 2 of the claim, there is no space between “from” and “7.6”. Appropriate correction is required.
Response to Arguments
Applicant’s arguments with respect to the claims have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Patent Owner's arguments filed 15 April 2025, with respect to claims 109-116, have been fully considered but they are not persuasive.
On pages 22-24 of the Response, Patent Owner argues that because additional PAA-containing water is introduced into the chill tank during the process, “a secondary entry point for the addition of makeup water is advantageous to allow for variations in the components that need to be added…” While it may be advantageous, or even obvious, to provide a secondary entry point, Patent Owner has not pointed to a written description of a secondary entry point. An allegation by Patent Owner that providing a particular structure is “advantageous” is not a replacement for an actual teaching in the disclosure to provide said structure.
Conclusion
Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceeding in which Patent No. 10,912,321 is or was involved. These proceedings would include any trial before the Patent Trial and Appeal Board, interferences, reissues, reexaminations, supplemental examinations, and litigation.
Applicant is further reminded of the continuing obligation under 37 CFR 1.56, to timely apprise the Office of any information which is material to patentability of the claims under consideration in this reissue application.
These obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP §§ 1404, 1442.01 and 1442.04.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ELIZABETH L MCKANE whose telephone number is (571)272-1275. The examiner can normally be reached Mon-Thu 6:30a-4:30p EST.
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/ELIZABETH L MCKANE/Specialist, Art Unit 3991
Conferees:
/LEE E SANDERSON/Reexamination Specialist, Art Unit 3991
/Patricia L Engle/SPRS, Art Unit 3991
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