Appeal No. 2005-1558
Application No. 09/949,704
These arguments are not persuasive. Tesvich ‘064 repeatedly teaches that the
shellfish product should be in a “raw, uncooked state” (e.g., col. 3, ll. 61-65) and that the
parameters of the process should be chosen so “as to not cook the mollusk ... the
mollusk remains in a raw state” (col. 5, ll. 50-52) while the pathogenic bacteria are
reduced to an undetectable level (col. 2, ll. 44-46; col. 2, l. 66-col. 3, l. 4). We determine
that it would be only routine experimentation for one of ordinary skill in this art to
optimize the immersion time and water bath temperature, depending on the grade size
of the oyster, to produce the desired uncooked bacteria-free raw oyster product of
Tesvich ‘064 (see col. 5, ll. 37-56; col. 6, ll. 19-31). See In re Hafner, 410 F.2d 1403,
1405, 161 USPQ 783, 785 (CCPA 1969)(different standards for enablement under
section 112 for an application and a prior art reference); PPG Indus., Inc. v. Guardian
Indus. Corp., 75 F.3d 1558, 1564, 37 USPQ2d 1618, 1623 (Fed. Cir. 1996)(“The fact
that some experimentation is necessary does not preclude enablement; what is required
is that the amount of experimentation ‘must not be unduly extensive’ [Citation omitted]”).
We note that Tesvich ‘064 specifically teaches that the prior art uses heating and
cooling to destroy unwelcome bacteria but the temperatures and duration employed are
sufficient to cook the meat, while Tesvich desires to produce a product in the raw state
that is bacteria-free (col. 2, ll. 8-23). Finally, we note that Tesvich ‘601 merely
confirms the above discussed optimization, teaching that different temperatures and
time durations have been found to give excellent results, depending on the size of the
oysters and the internal temperature of the oyster meat (col. 1, ll. 51-62; col. 2, ll. 25-42;
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