Case: 19-1698    Document: 51    Page: 1   Filed: 03/26/2020




        NOTE: This disposition is nonprecedential.


   United States Court of Appeals
       for the Federal Circuit
                  ______________________

        IN RE: RAYMOND CLARKE, LANDEC
                  CORPORATION,
                      Appellants
                ______________________

                        2019-1698
                  ______________________

     Appeal from the United States Patent and Trademark
 Office, Patent Trial and Appeal Board in No. 14/480,625.
                   ______________________

                 Decided: March 26, 2020
                 ______________________

     JAMES S. MCDONALD, Walnut Creek, CA, for appel-
 lants.

    FRANCES LYNCH, Office of the Solicitor, United States
 Patent and Trademark Office, Alexandria, VA, for appellee
 Andrei Iancu. Also represented by THOMAS W. KRAUSE,
 WILLIAM LAMARCA, MEREDITH HOPE SCHOENFELD.
                 ______________________

  Before O’MALLEY, MAYER, and WALLACH, Circuit Judges.
 PER CURIAM.
     Raymond Clarke and Landec Corporation (hereinafter
 “Clarke”) appeal a decision of the Patent Trial and Appeal
 Board (“Board”) affirming, in relevant part, the
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 2                                               IN RE: CLARKE




 unpatentability of proposed claims 1–8 and 10–15 in U.S.
 Patent Application No. 14/480,625 (“’625 application”). See
 Ex parte Clarke, 2018 Pat. App. LEXIS 8711 (P.T.A.B. Oct.
 29, 2018). For the reasons discussed below, we affirm the
 Board’s decision.
                       I. BACKGROUND
                   A. The ’625 Application
     The ’625 application, filed on September 8, 2014, is di-
 rected to packaging for respiring biological material. The
 application explains that fruits—which are respiring bio-
 logical material—consume oxygen and produce carbon di-
 oxide at rates that depend on the age of the fruits. Many
 fruits are picked before they are ripe, transported under
 conditions that deter ripening, and then exposed to eth-
 ylene, a gaseous plant hormone, to promote rapid ripening
 of the fruit at a final destination. Packages designed to
 transport such fruits must, therefore, account for respira-
 tion, which impacts oxygen and ethylene levels inside a
 container, to ensure a desired atmosphere within the pack-
 age.
      The invention disclosed in the ’625 application is useful
 for storing and ripening fruits that ripen “when exposed to
 ethylene or another [ethylene ripening agent].” J.A. 163.
 Such fruits include bananas, tomatoes, avocados, Bartlett
 pears, kiwis, melons, peppers, and mangos. These fruits
 are often picked when unripe and commercially ripened
 near a final point of sale via exposure to ethylene in a rip-
 ening room. The commercial ripening process can pose a
 problem, however, because produce is shipped in sealed
 bags that must be opened to allow ethylene exposure and
 because ripening can occur rapidly once fruits are exposed
 to ethylene.
     The ’625 application discloses a fruit ripening con-
 tainer that “mitigate[s] or overcome[s]” these problems by
 “provid[ing] a pathway for oxygen, carbon dioxide and
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 IN RE: CLARKE                                               3



 ethylene to enter or leave the container.” J.A. 147. Specif-
 ically, it discloses containers that:
     include at least one atmosphere control member
     which provides a pathway for O2 and CO2, and
     which preferably comprises a gas-permeable mem-
     brane comprising
         (1) a microporous polymeric film, and
         (2) a polymeric coating on the microporous film.
 J.A. 161. The atmosphere control member (“ACM”) is
 “preferably a control member as described in one or more
 of U.S. Patent Nos. 6,013,293 [De Moor] and 6,376,032 and
 International Publication No. W000/04787 . . . . ” Id. The
 specification discloses two types of control members, Type
 S and Type A, with differing oxygen permeabilities. The
 ACM is secured to a portion of the container, usually a bag,
 in which one or more round holes has been cut. J.A. 168.
 It may be secured on the interior or exterior of the bag. J.A.
 169.
     The ’625 application’s proposed claims are directed to a
 “sealed container,” a “method of ripening fruit” in a sealed
 container, and a “method of storing and/or ripening a re-
 spiring biological material” in a sealed package. J.A. 277–
 80. Amended claim 1 is illustrative of the claims at issue
 on appeal:
     A sealed container which comprises
         (a) at least 4 kg of a respiring biological ma-
         terial, and
         (b) a packaging atmosphere around the re-
         spiring biological material, and
         (c) an atmosphere control member which
             (i) provides a pathway for oxygen,
             carbon dioxide and ethylene to
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 4                                              IN RE: CLARKE




             enter or leave the packaging atmos-
             phere, and
             (ii) consists of a membrane which
             comprises a microporous film and a
             polymeric coating on the mi-
             croporous film, and which has an
             [oxygen permeability], at all tem-
             peratures between 20º and 25ºC, of
             at      least     50,000    ml/100
             inch2.atm.24hrs;
     the sealed container having (i) an oxygen permea-
     bility at 13°C per kilogram of the respiring biologi-
     cal material in the container (OP13/kg) of at least
     700, and (ii) an ethylene permeability at 13°C per
     kilogram of the respiring biological material in the
     container (EtP13/kg) which is at least 2 times the
     OP13/kg, and
     the respiring biological material being a fruit se-
     lected from the group consisting of apples, apricots,
     avocados, blackberries, blueberries, cherimoyas,
     dates, figs, mangos, melons, peaches, papayas,
     pears, pineapples, peppers, persimmons, plums,
     cherries, grapes, lemons, oranges, tomatoes, rasp-
     berries, strawberries, nectarines, kiwis and toma-
     toes.
 J.A. 277. Amended independent claim 12, a method claim,
 mirrors claim 1 and adds the additional limitation of “plac-
 ing the sealed container in an atmosphere containing eth-
 ylene.” J.A. 278–79.
                         B. Prior Art
     The Board relied on six prior art references in the por-
 tions of its analysis that Clarke challenges on appeal. We
 describe each in turn.
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 IN RE: CLARKE                                            5



     De Moor. U.S. Patent No. 6,013,293 (“De Moor”), titled
 “Packing Respiring Biological Materials with Atmosphere
 Control Member,” issued on January 11, 2000. J.A. 95. De
 Moor explains that respiring biological materials consume
 oxygen and produce carbon dioxide such that they should
 be stored in a container that is sufficiently permeable to
 those gases. J.A. 99. According to De Moor, prior art pack-
 aging was inadequate because polymeric films alone do not
 have adequate oxygen and carbon dioxide transmission
 rates. Id.
    De Moor teaches a container made up of a relatively
 oxygen and carbon dioxide impermeable barrier and an
 ACM that is relatively permeable. Id. One example of the
 De Moor invention is depicted in Figure 2:




 J.A. 97. De Moor’s ACM 12 “comprises a gas-permeable
 membrane 121 and an apertured cover member 122” that
 covers an aperture 123 cut into the bag. J.A. 102. De Moor
 discloses an oxygen permeability of the gas permeable
 member of at least 50,000 cc/100 inch2.atm.24hr at all tem-
 peratures between 20º and 25ºC. J.A. 101.
     Schreiber. U.S. Patent No. 5,332,088 (“Schreiber”), ti-
 tled “Fruit Display Box with Hand Holes,” issued July 26,
 1994. J.A. 84. Schreiber discloses a shipping container
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 6                                             IN RE: CLARKE




 packed with 40 pounds (about 18 kilograms) of bananas.
 J.A. 86.
      Curtis. U.S. Patent No. 6,085,930 (“Curtis”), titled
 “Controlled Atmosphere Package,” issued July 11, 2000.
 J.A. 105. Curtis teaches using a gas permeable membrane
 to control gas concentrations within fruit packaging.
 J.A. 113. Curtis further teaches, “the rate at which a spe-
 cific gas permeates through a membrane is proportional to
 the difference between the concentrations of that specific
 gas on both sides of the permeable membrane.” J.A. 112.
     Nakata. U.S. Patent No. 6,348,271 (“Nakata”), titled
 “Film Having Gas Permeability,” issued on February 19,
 2002. J.A. 119. Nakata, like Curtis, teaches permeable
 films with varying permeabilities to oxygen and ethylene.
 J.A. 127–28, tbl.1. Nakata Example 4 discloses an ethylene
 to oxygen permeability ratio of greater than 2:1. Id. The
 Example 4 film was ranked as keeping lettuce, spinach,
 and bean sprouts in “good” condition during tests of five to
 seven days. J.A. 128–29, tbls.2–4.
      Herdeman. U.S. Patent No. 5,460,841 (“Herdeman”),
 titled “Process for Ripening Bananas and Other Produce,”
 issued on October 24, 1995. J.A. 87. Herdeman discloses
 ripening produce, such as bananas, while the produce is
 stored in large containers that are also used for shipping.
 J.A. 90. Herdeman Figure 1 shows such a ripening con-
 tainer 20, packed with product filled boxes 17, that is
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 IN RE: CLARKE                                              7



 capable of receiving controlled atmosphere gas, including
 ethylene, through an input port 45:




 J.A. 88, 90–91.
     Sisler. U.S. Patent No. 5,518,988 (“Sisler”), titled
 “Method of Counteracting an Ethylene Response in
 Plants,” issued on May 21, 1996. J.A. 73. Sisler teaches
 that ethylene ripens fruits and vegetables. J.A. 79.
                   C. The Board’s Decisions
     Decision on Appeal. Before the Board, Clarke appealed
 six of the examiner’s grounds for rejection of the claims of
 the ’625 application:
     A. The rejection of claims 1–4, 6, and 8 as obvious
        over De Moor in view of Schreiber, Curtis, and
        Nakata;
     B. The rejection of claims 5, 10–12, and 14 as ob-
        vious over De Moor, Schreiber, Curtis, Herde-
        man, Nakata, and Sisler;
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 8                                             IN RE: CLARKE




     C. The rejection of claim 7 as obvious over De
        Moor, Schreiber, Curtis, Nakata, and Sisler;
     D. The rejection of claim 13 as obvious over De
        Moor, Schreiber, Curtis, Herdeman, Nakata,
        and Sisler;
     E. The rejection of claim 15 as obvious over De
        Moor, Schreiber, Curtis, Herdeman, Nakata,
        Reilly, and Sisler; and
     F. The rejection of claims 16 and 18–21 as obvious
        over De Moor, Schreiber, Curtis, Herdeman,
        Nakata, Sisler, and Orman.
 J.A. 4–5. The Board considered grounds A–E, related to
 claims 1–8 and 10–15, together, and separately considered
 ground F, related to claims 16 and 18–21. The Board re-
 versed the examiner as to ground F. J.A. 14. Accordingly,
 Clarke’s appeal does not address independent claim 16 and
 dependent claims 18–21. Clarke also does not separately
 appeal grounds C–E (concerning dependent claims 7, 13,
 and 15), relying instead on establishing the patentability
 of the independent claims to show the patentability of the
 dependent claims that the Board rejected under those com-
 binations.
     First, relevant to claims 1–8 and 10–15, the Board
 found that De Moor teaches an ACM within the scope of
 the claims. J.A. 6. Clarke argued to the Board that De
 Moor does not teach the claims’ ACM because De Moor’s
 ACM includes a “cover member.” Id. Clarke argued that
 the “consists of a membrane which comprises” language of
 the claims, describing the ACM, meant that the extra
 structure in De Moor put De Moor’s ACM outside the scope
 of the claims. Id. The Board found, however, that there is
 no real difference between the proposed claims and De
 Moor’s structure. The Board explained that De Moor’s
 cover member “can be an integral part of the barrier sec-
 tions surrounding the control member . . . . This structure
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 IN RE: CLARKE                                               9



 is no different than what Appellant describes in the Speci-
 fication as his invention, i.e., a gas permeable membrane
 control member secured over one or more holes in a bag.”
 Id. Thus, the Board found, “[a]ny difference resides merely
 in the language De Moor uses to describe the structure ra-
 ther than in the structure itself.” Id.
     Next, as to claim 1, the Board considered whether the
 examiner erred in finding that a skilled artisan would have
 selected a membrane with the oxygen and ethylene perme-
 abilities recited in claim 1 for use with De Moor’s container
 and whether De Moor discloses the 4 kg limitation. J.A. 7–
 9. The Board found no error in the examiner’s analysis. It
 explained that De Moor, Curtis, and Nakata are “concerned
 with packaging that will inhibit the spoilage of respiring
 fruits and vegetables during transport and storage” and
 “teach using gas permeable membranes to control the con-
 centrations of various gases within the package.” J.A. 7.
 De Moor expressly discloses a conventional-sized container
 for packaging fruits and discloses a gas permeable mem-
 brane with oxygen permeability that meets the claimed
 range. J.A. 8. The Board further found that Clarke and
 Nakata show that one of skill in the art would have been
 motivated to optimize De Moor’s membrane to achieve the
 claimed permeability values. J.A. 8–9. The Board also
 found that Schreiber teaches a conventional sized ship-
 ment container carrying 18 kg of fruit. J.A. 9. Thus, the
 Board found the examiner’s rejection was supported by a
 preponderance of the evidence. Id.
     As to claim 12, addressing ground B, the Board found
 that Herdeman discloses the use of ethylene to rapidly
 ripen fruits in a combination shipping and ripening con-
 tainer. J.A. 10. The Board further found that Herdeman
 discloses ripening the fruit while the fruit was in boxes. Id.
 The Board explained,
     [a]lthough Herdeman does not specify the struc-
     ture of the boxes in which the fruit is stored, a
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 10                                             IN RE: CLARKE




      preponderance of the evidence indicates that using
      sealed containers having gas permeable mem-
      branes was known in the art to store fruit and veg-
      etables after picking. This is clear from the
      teachings of both De Moor and Herdeman, which
      provide evidence of the conventional methods used
      in picking, storing, shipping, and ripening of re-
      spiring fruit. The fruit is often picked when green,
      cooled, and packaged in sealed polymeric contain-
      ers.
 J.A. 11.
     Decision on Rehearing. Clarke requested rehearing of
 the Board’s decision as to claims 1–8 and 10–15. J.A. 18.
 He challenged the Board’s rationale and conclusions as to
 De Moor’s ACM, the prior art’s disclosure that ethylene and
 oxygen permeabilities were known result-effective varia-
 bles in the art, and placing a sealed container in a Herde-
 man-type environment. J.A. 19. The Board denied the
 rehearing request. Id.
     First, the Board reiterated its view that there is no
 meaningful distinction between the claims and De Moor’s
 ACM. J.A. 20–21. It explained that claim 1, a comprising
 claim, does not exclude the presence of a bag in addition to
 the ACM. The “consists of” language of the ACM limitation
 does not, the Board explained, change that understanding.
 J.A. 20.
     Second, the Board rejected Clarke’s argument that its
 analysis focused on the permeability of the membrane
 alone to find overall container permeability limitations dis-
 closed. J.A. 22. Instead, the Board explained, its decision
 that the prior art teaches that a person of ordinary skill
 would find optimal permeabilities was based on teachings
 from multiple references that use permeable membranes to
 achieve certain concentration of various gases in the entire
 package. Id. The Board explained,
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 IN RE: CLARKE                                               11



     the references as a whole evince that the relation-
     ships between the gas concentrations and ripen-
     ing/spoilage rates were known in the art and that
     those of ordinary skill in the art understood how to
     control the gas concentrations in containers
     through the use of a membrane as well as by con-
     trolling the mix of gases in the environment outside
     the container to obtain a desired result, i.e., a de-
     sired rate of ripening or of spoilage prevention.
 J.A. 23–24. The Board cited In re Woodruff, 919 F.2d 1575,
 1578 (Fed. Cir. 1990), for the proposition that, once it is
 shown that the prior art provides guidance on optimal
 ranges, the burden shifts to the applicant to show that the
 claimed range achieved unexpected results. Thus, because
 “both oxygen permeability and ethylene permeability were
 known to have an effect,” the Board explained that the bur-
 den was on Clarke to establish that the result of the
 claimed invention was unexpected—a burden he failed to
 carry. J.A. 24.
     Third, the Board rejected Clarke’s argument that it
 had equated Herdeman’s shipping container to De Moor’s
 ripening container. J.A. 25. The Board explained that Her-
 deman’s shipping container is like a ripening room into
 which a container, such as the one described in De Moor,
 might be placed. Id.
    Clarke appeals. We have jurisdiction pursuant to 28
 U.S.C. § 1295(a)(4)(A).
                         II. ANALYSIS
     “Whether an invention would have been obvious to one
 of ordinary skill in the art is a legal determination based
 on underlying findings of fact.” In re Mouttet, 686 F.3d
 1322, 1330 (Fed. Cir. 2012). “The foundational facts for the
 prima facie case of obviousness are: (1) the scope and con-
 tent of the prior art; (2) the difference between the prior art
 and the claimed invention; and (3) the level of ordinary
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 12                                             IN RE: CLARKE




 skill in the art.” In re Mayne, 104 F.3d 1339, 1341 (Fed.
 Cir. 1997). Whether a person of ordinary skill in the art
 would have had a motivation to combine prior art refer-
 ences is a question of fact. In re Gartside, 203 F.3d 1305,
 1316 (Fed. Cir. 2000). The Patent Office bears the burden
 of establishing the prima facie facts of obviousness. Mayne,
 104 F.3d at 1341. If the Patent Office carries its burden, it
 falls to the applicant to rebut the Patent Office’s showing.
 Id.
     We review the Board’s factual findings for substantial
 evidence and its ultimate determination of obviousness
 without deference. Gartside, 203 F.3d at 1315–16. “Sub-
 stantial evidence is more than a mere scintilla. It means
 such relevant evidence as a reasonable mind might accept
 as adequate to support a conclusion.” Consol. Edison Co.
 v. NLRB, 305 U.S. 197, 229 (1938).
   A. Substantial Evidence Supports the Board’s Finding
         that De Moor Discloses the Claimed ACM
     Clarke argues that De Moor’s ACM falls outside the
 scope of claims 1 and 12 because of the claims’ “consists of”
 limitation. Appellant’s Br. 12–17. Specifically, he argues
 that De Moor describes its ACM as comprising “(1) a mem-
 brane comprising a microporous film and a polymeric coat-
 ing on the microporous film and (2) an apertured cover
 member.” Id. at 12. He contends that the apertured cover
 member is essential to De Moor’s ACM and that removing
 it would change the principles of De Moor’s operation. Id.
      The Board disagreed with Clarke’s characterization of
 De Moor. It is undisputed that De Moor discloses a gas
 permeable membrane, with the required oxygen permea-
 bility, that is secured over one or more holes in a bag. See
 J.A. 6. The only issue before the Board was the signifi-
 cance, if any, of the apertured cover member to the analy-
 sis. Id. The Board found the apertured cover member had
 no bearing on the analysis. It explained, “[a]ny difference
 [between De Moor and the claims] resides merely in the
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 IN RE: CLARKE                                             13



 language De Moor uses to describe the structure rather
 than in the structure itself.” Id.
     We find no error in the Board’s analysis. While prior
 art elements must be arranged in the same manner as the
 claim, “the reference need not satisfy an ipsissimis verbis
 test.” In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009).
 Here, although De Moor contains structures in addition to
 those found in the proposed claims, substantial evidence
 supports a finding that each element of each of the claims
 is present in the prior art.
     Accordingly, we see no error in the Board’s analysis of
 De Moor’s disclosure, and reject Clarke’s contention that
 the “consists of” language of the claim somehow excludes
 De Moor’s ACM as a matter of law.
   B. Prosecution History Estoppel Does Not Apply During
                         Prosecution
     Clarke argues that the Board’s analysis of De Moor is
 erroneous because he “disclaimed” De Moor’s ACM during
 prosecution. Appellant’s Br. 17–19; 26–27. He argues that
 the alleged “disclaimer” can be found in statements he
 made during prosecution to argue that his claims do not
 cover a De Moor-type ACM with an apertured cover mem-
 ber. Appellant’s Br. 17–18 (citing prosecution history
 statements found at J.A. 231, 282, 314, 375). Clarke’s ar-
 gument fails, however, because the doctrine of prosecution
 history estoppel is inapplicable during prosecution. In-
 stead, the doctrine is applicable only to issued patents and
 available only to patentees. See Omega Eng’g, Inc, v. Ray-
 tek Corp., 334 F.3d 1314, 1324 (Fed. Cir. 2003) (“[W]here
 the patentee has unequivocally disavowed a certain mean-
 ing to obtain his patent, the doctrine of prosecution dis-
 claimer attaches and narrows the ordinary meaning of the
 claim congruent with the scope of the surrender.” (empha-
 ses added)). To receive the benefit (or detriment) of a pros-
 ecution history disclaimer, an applicant must persuade an
 examiner that his claims are, as a matter of fact,
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 14                                            IN RE: CLARKE




 distinguishable from the prior art. Clarke has failed to do
 so in this case. We, therefore, find no legal error in the
 Board’s analysis of the scope of the proposed claims.
  C. The Prior Art Renders Obvious Placing a Sealed Con-
       tainer in an Atmosphere Containing Ethylene
     Clarke argues that the Board erred in concluding that
 Herdeman discloses placing produce in a sealed container
 and exposing the sealed container to an atmosphere con-
 taining ethylene. Appellant’s Br. 27–29. In support of this
 argument, he discusses Herdeman’s specific disclosure at
 length. Id. As the government points out, however,
 Clarke’s discussion ignores that the Board’s obviousness
 determination was based on a combination of six refer-
 ences: De Moor, Schreiber, Curtis, Nakata, Herdeman, and
 Sisler. J.A. 10–11; see also Appellee’s Br. 36–38. The
 Board relied on Herdeman only to establish that the prior
 art taught placing produce-filled containers in an atmos-
 phere containing ethylene to facilitate ripening. See
 J.A. 10–11. The Board then reasoned that Herdeman does
 not discuss the structure of the containers and that a per-
 son of ordinary skill in the art would have understood that
 a De Moor-type container could be used along with Herde-
 man. J.A. 11. Thus, although Clarke is correct that Har-
 deman does not expressly disclose exposing sealed
 containers containing produce to ethylene, that was not the
 Board’s rationale for finding obviousness. As such, Clarke
 has not identified any error in the Board’s analysis.
     We conclude that substantial evidence supports the
 Board’s factual findings, and we hold that the Board cor-
 rectly found claim 12 obvious in view of De Moor,
 Schreiber, Curtis, Nakata, Herdeman, and Sisler.
                      III. CONCLUSION
     We have considered Clarke’s additional arguments on
 the content of the prior art and motivation to combine, but
 find them unpersuasive. Substantial evidence supports
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 IN RE: CLARKE                                            15



 the Board’s factual findings and the Board did not commit
 legal error in its analysis of the obviousness of claims 1–8
 and 10–15 of the ’625 application. We agree with the Board
 that, given the underlying facts, the proposed claims are
 obvious. We therefore affirm.
                        AFFIRMED
                           COSTS
     No costs.
