Board says claim term, as defined in the specification, reads on the reference

Takeaway: The Applicant appealed claims to a meat processing system. The claim included the limitation "a wash station where at least one antimicrobial agent is applied to a hide." The Examiner relied on a reference that disclosed water applied to a carcass, and the Applicant presented evidence that a POSITA would not consider water to be an antimicrobial at the temperature disclosed in the reference. The Examiner noted that the claim did not recite a temperature, and that the Applicant's specification disclosed lower water temperatures and was thus was inconsistent with the evidence. The Board affirmed the rejection, finding that "[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." (Ex parte Osborne, PTAB 2012.)

Details: Ex parte Osborne
Appeal 2011011685; Appl. No. 11/084,785; Tech. Center 3600
Decided  Aug. 28, 2012

A representative claim on appeal read:

35. A meat processing system comprising a series of stations in order:
     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 dispositive issue for the independent claims on appeal was the meaning of the term "antimicrobial agent."

The Examiner rejected system claim 35 as obvious over Lawler, Norrie, and Simon, relying on Norrie for teaching the "antimicrobial agent is applied ..." limitation. During prosecution, the Applicant argued that Norrie disclosed the application of high temperature water to soften the hair of the carcass. The Examiner explained in an Advisory Action that Norrie's high temperature water was considered antimicrobial because Applicant's specification taught "the use of water by itself as an antimicrobial agent and therefore the high temperature water of Norrie can be construed as an antimicrobial agent."

The Applicant appealed, and in the Appeal Brief introduced evidence to show that Norrie's high temperature water was not an antimicrobial agent:

Norrie's water temperature is not sufficient to act as antimicrobial in the context of the present invention. Norrie provides that the [applied water] may be in temperature zones of 45-60, 55-65 and 50-60 degrees C. This temperature is not high enough to provide antimicrobial action. See, for example, the Williams reference [Appendix XI], which provides evidence that when water is used as an antimicrobial intervention, the temperature of the water is 165 degrees F, 73 degrees C.

The Examiner replied to this argument in the Answer by noting that "Appellant's arguments are not consistent with the antimicrobial agents detailed in Appellant's specification," since the specification listed "water by itself." The Answer then commented on the Williams reference offered as evidence by the Applicant

[T]his Williams et al. evidence does not state the temperature of the water is critical in view of other water temperatures and as seen in para. 0054 of Applicant's specification, the water temperature detailed by Applicant is between 100-190 degree F and therefore the Williams evidence is not consistent with Applicant's disclosure and it is noted that the temperature of the water is not found on any of the claims on appeal.

The Board affirmed the rejection. The Board first looked to the following sentences in Applicant's Specification:

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.
(Finding of Fact 1, emphasis in PTAB opinion.)

Based on this finding, the Board went on to find that "antimicrobial agent" encompassed water at the temperatures taught in Norrie. The Board explained its claim construction as follows:

The Specification defines an antimicrobial agent to be any “chemical or substance capable of killing, neutralizing or removing microorganisms.” (FF1.) The Specification further discloses that water is an antimicrobial agent. (FF1.) Thus, the limitation of ‘at least one antimicrobial agent” is interpreted to include water. The limitation of “a wash station where at least one antimicrobial agent is applied to the hide of a hide on animal,” as recited in claim 35, is interpreted to encompass applying water to the hide of an animal. ... As noted by the Examiner, Norrie uses water in the washing steps, and water is encompassed by the definition of an antimicrobial agent as provided in the Specification. (FFs 1, 2, 4.)

The Board explained that this definition trumped the evidence offered by the Applicant to that show water did not in fact act as an antimicrobial at the temperatures used in Norrie:

[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. See Serrano v. Telular Corp., 111 F.3d 1578, 1582 (Fed. Cir. 1997)(“The inventors’ definition and explanation of the meaning of the word … as evidenced by the specification, controls the interpretation of that claim term).

My two cents: I had a lot of trouble understanding the Board's opinion. It's clear to me that the Board relied on a definition of antimicrobial agent in the Applicant's spec. ("[Applicant] expressly defines an antimicrobial agent as encompassing the washing steps disclosed by Norrie, even at temperatures that would not kill the microorganism.") But how does the Board get from antimicrobial-means-killing-neutralizing-or-removing to water-is-an-antimicrobial-even-at-temperatures-that-don't-kill?

I do read the Specification statement "antimicrobial agent may be any chemical or substance capable of ..." as a definition of microbial agent. As such, the Applicant is bound by this definition, even it's different than what a POSITA would understand. But the Board went further, saying that the Applicant had defined antimicrobial in such a way that temperature was irrelevant. How so?

Surely the question of what chemicals or substances meet the kills-neutralizes-or-removing definition, is one of fact. Does water kill microorganisms at any temperature? This is not my area of expertise, but I think I know enough about science to say No.

In the Answer, the Examiner noted that "the temperature of the water is not found on any of the claims on appeal." This is a red herring, because the claim didn't say "water is applied to the hide". If it did, then sure, any teaching of applying water would anticipate the element, regardless of temperature. But since the claim instead said "antimicrobial agent is applied to the hide", we have to ask what a POSITA knows about water as an antimicrobial.

The Williams reference submitted by the Applicant said No, that "when water is used as an antimicrobial intervention, the temperature is 165° F." Whereas Norrie disclosed applying water at temperatures of 113-149° F.

The Examiner countered this argument by pointing to additional statements in the Spec:

[0054] The heater 108 may heat the wash solution to a temperature ranging from about 100 to about 190 degrees Fahrenheit. In a further embodiment, the heater 108 may heat the wash solution to a temperature ranging from about 140 to about 150 degrees Fahrenheit. Alternatively, the heater 108 heats the wash solution to another temperature known to kill microbes.

According to the Examiner, these statements showed that "the Williams evidence is not consistent with Applicant's disclosure." Wrong. Let's assume for the sake of argument that if the Applicant misstates a technical fact, he's bound by it. So if the Spec really did say that water has an antimicrobial effect at 100° F, then the reference anticipates.

But wait ... the Spec didn't say that. The Spec disclosed various embodiments that heat water to different temperatures. Not an admission that water is antimicrobial at these temperatures. In fact, you could argue that the last sentence ("Alternatively ... to another temperature known to kill microbes") means that water does not kill microbes at the other listed temperatures.

So I say the Examiner is wrong, and the rejection is in error.

However, I suspect that the Board affirmed the rejection based on entirely different reasoning -- and did a terrible job of explaining this. I'll discuss this in my next post.