Appeal No. 2006-0449
Application 10/232,644
We are not convinced otherwise by appellant’s arguments in the brief and reply brief.
We considered appellant’s arguments with respect to claim interpretation above, noting that
appellant admits that the sake containing solution applied by Katayama is a marinade for the fish
to which it is applied. We find no argument advanced by appellant which establishes that the
amount of time from combining such marinade with the fish for five minutes and then cutting the
fish into pieces and vacuum packaging the same falls outside of the limitation “any substantial
time for marination” with respect to claims 1 and 13, and the further amount of time to freezing
subsequent to vacuum sealing the package falls outside of the limitation “any substantial time for
marination” for the additional step specified in claims 3 and 15, as we have interpreted these
claims above, and the criticality of these claimed time ranges vis-à-vis the teachings of
Katayama. In re Woodruff, 919 F.2d 1575, 1577-78, 16 USPQ2d 1934, 1936-37 (Fed. Cir. 1990)
(“The law is replete with cases in which the difference between the claimed invention and the
prior art is some range or other variable within the claims. [Citations omitted.] These cases have
consistently held that in such a situation, the applicant must show that the particular range is
critical, generally by showing that the claimed range achieves unexpected results relative to the
prior art range. [Citations omitted.]”); In re Aller, 220 F.2d 454, 456-58, 105 USPQ 233, 235-37
(CCPA 1955). (“[W]here 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.”).
Furthermore, we are of the view that the teachings in the Liberman references would have led
one of ordinary skill in the culinary arts to use the cruciferous oil containing brines as the
freezing step in the method of Katayama even if there may be little additional advantage to do
so, in view of such advantages and the reorganization of the use of the brines in the fisheries
industry, as well as the fact that one of ordinary skill in the culinary arts would routinely
substitute one known method for freezing fish for another known method for freezing fish.
Accordingly, based on our consideration of the totality of the record before us, we have
weighed the evidence of obviousness found in the combined teachings of Katayama and
Liberman ‘352 and ‘034 with appellant’s countervailing evidence of and argument for
nonobviousness and conclude that the claimed invention encompassed by appealed claims 1,
issued on the same date as the ‘034 patent.
- 11 -
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 Next
Last modified: November 3, 2007