In my last post (here) I discussed Ex parte Osborne and said I didn't understand the opinion the first time I read it. In this post, I'll discuss the reasoning behind the Board's decision. This reasoning wasn't apparent to me at first, but apparently quite a few readers did figure it out, and they've posted comments to explain. So if you've read the comment thread on the last post, you know the answer already.
As discussed in my previous post, the main issue in the Brief and the Answer was whether water acted as an antimicrobial agent at the temperatures disclosed in the reference. The Board seemed to ignore that issue and instead affirmed based on a finding that the "[Applicant's] Specification expressly defines an antimicrobial agent as encompassing the washing steps disclosed by Norrie, even at temperatures that would not kill the microorganism." I wondered why the Board felt it could ignore the temperature issue. After all, that's the point the parties argued on appeal.
As a reminder, here's the claim on appeal, with the limitation at issue emphasized.
35. A meat processing system comprising a series of stations in order:The key to understanding the opinion is the first two words emphasized in one of the Board's Findings of Fact.
A first station for stunning an animal;
A second station for exsanguinating the animal;
A third station that is a wash station where at least one antimicrobial agent is applied to a hide of a hide-on animal carcass; and
A fourth station that is a hide removal area configured to at least partially remove at least a portion of the hide from the hide-on animal carcass,
wherein a conveyor system transports the hide-on animal carcass through at least the third and fourth stations.
The Specification provides that "the antimicrobial agent may be any chemical or substance capable of killing, neutralizing, or removing microorganisms. In one embodiment, the antimicrobial agent is water or some combination of water and at least one other antimicrobial agent.The Board found that the Applicant had defined the claim term "antimicrobial agent" in this first sentence. And after carefully re-reading the opinion, I realized that the Board ignored water temperature because they weren't relying on the first ("killing") prong of the definition. Instead, the Board apparently relied on the "removing" prong of the definition. The physical action of water applied to the hide removes microorganisms, regardless of the water temperature. Well, maybe not in all scenarios, but certainly when the Norrie reference specifically disclosed that "carcass is also subject to deluge flow of water for washing." (Finding of Fact 4.)
(Finding of Fact 1, emphasis in PTAB opinion.)
So yeah, I agree that Norrie teaches "at least one microbial agent is applied to the hide," because it's clear that a flood of water will remove microorganisms, regardless of water temperature.
I'm still annoyed that the Board's opinion wasn't written in a way that makes this more clear. After discussing the temperature issue argued by the parties, the Board should have said something like "The temperature of the water is irrelevant because Applicant's explicit definition covers 'removing microorganisms' which can be achieved by the physical action of a 'deluge flow' of water coming into contact with the hide." Instead, the Board made the cryptic statement "[Applicant's] Specification expressly defines an antimicrobial agent as encompassing the washing steps disclosed by Norrie, even at temperatures that would not kill the microorganism." Without explaining why temperature was irrelevant.
Had the Board written that, I probably still would have written about the decision. But my post would have been about the dangers of getting stuck on one issue and not realizing there are other issues you need to address. Basically, the Applicant went down the wrong track, got stuck on it, and lost at the Board as a result. Perhaps the Applicant would have realized the error had the Examiner steered the Applicant back to the "removing microorganisms" aspect of the definition. It's not 100% clear to me that the Examiner relied on the removal aspect at any point in prosecution, though there are a few hints here and there that he did.
Is this a new ground of rejection? The Board relied on the very same sections of the Norrie reference that the Examiner did. I'm no expert on "new grounds" law, but perhaps it isn't a new ground for this very reason. If not a new ground, that seems a bit unfair. Basically, the Board decided the case on an issue that wasn't even briefed by the parties. Yes, the case law allows the Board to do this, but a new ground would remove some of the sting for the Applicant by saving him an RCE fee if he wanted to narrow his claims after appeal. On the other hand, the real sting of appeal -- win or lose -- is pendency before the Board.