Ex Parte Letourneau et al

Board of Patent Appeals and Interferences

Feb 19, 2009

10330911 (B.P.A.I. Feb. 19, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte STEPHEN A. LETOURNEAU
and RICHARD N. MCARDLE
____________

Appeal 2008-5936
Application 10/330,911
Technology Center 1700
____________

Decided:1 February 19, 2009
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Before EDWARD C. KIMLIN, TERRY J. OWENS, and
PETER F. KRATZ, Administrative Patent Judges.

OWENS, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-4, 7, 8, 10-27, 30-32, and 34-41, which are all of the
pending claims. We have jurisdiction under 35 U.S.C. § 6(b).

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2008-5936
Application 10/330,911
The Invention
The Appellants claim not-from-concentrate orange juice products and
processes for making them. Claim 1 is illustrative:
1. A process for preparing not from concentrate (NFC) orange juice
from components of differing orange fruit, comprising:

extracting orange juice from orange fruit during the harvest season for
such fruit to provide a whole orange juice;

separating said whole orange juice into a serum phase and a sinking
solids phase;

storing said sinking solids phase under conditions that retard its
deterioration during long term storage; and

combining said stored solids phase with a recently extracted whole
orange juice of a different cultivar than said whole orange juice, whereby the
cost of said NFC orange juice is reduced while the overall sensory quality of
said recently extracted juice is at least maintained.

The References
Powers 4,889,739 Dec. 26, 1989
Downton 5,260,086 Nov. 9, 1993

“United States Standards for Grades of Orange Juice” (USDA Standards),
United States Department of Agriculture, Agricultural Marketing Service,
Fruit and Vegetable Division, Processed Products Branch, Effective Date
January 10, 1983, pp. 1-15.

James Binkley et al. (Binkley), “Consolidated Markets, Brand Competition,
and Orange Juice Prices”, Current Issues in Economics of Food Markets,
Agricultural Information Bulletin No. 747-06, Economic Research Service,
United States Department of Agriculture, pp. 1-11.

Appeal 2008-5936
Application 10/330,911
The Rejections
Claims 1-4, 7, 8, 10-27, 30-32, and 34-41 stand rejected under
35 U.S.C. § 103 over Powers in view of Downton, Binkley, and USDA
Standards.
OPINION
We reverse the Examiner’s rejection.
Issue
Have the Appellants shown reversible error in the Examiner’s
determination that the applied references would have rendered prima facie
obvious, to one of ordinary skill in the art, storing a sinking solids phase or a
serum phase of one orange cultivar and combining it with a recently
extracted orange juice of a different orange cultivar?
Findings of Fact
Powers discloses a method for obtaining commercial juices having
textural, aroma and flavor properties like hand-squeezed orange juice,
comprising removing sensible pulp2 and at least some of the sinking pulp3
from orange juice (col. 4, ll. 48-68). Powers teaches that “[g]enerally, as the
level of sinking pulp increases, the viscosity of the feed juice likewise
increases” (col. 6, ll. 62-64), and that “[t]he level of sinking pulp is desirably
minimized in feed juices of the present invention” (col. 7, ll. 3-4).

2 Powers states that “‘sensible pulp’ refers to insoluble pulp particles which
have a size greater than about 0.5 mm” (col. 12, ll. 41-42).
3 Powers states that “‘sinking pulp’ refers to insoluble materials present in
the juice which have a particle size less than about 0.5 mm” (col. 6, ll. 57-
59).
Appeal 2008-5936
Application 10/330,911
Downton discloses a process for obtaining a citrus juice by separating
sensible pulp/juice slurry4 from a citrus juice, sterilizing the slurry to
produce an aseptic pulp slurry, storing the aseptic pulp slurry, and then
adding the aseptic pulp slurry to a low viscosity citrus juice from which
sinking pulp has been removed (col. 3, l. 28; col. 4, ll. 34-46; col. 8, ll. 9-18,
51-54). The low viscosity citrus juice with which the aseptic sensible pulp
slurry is combined can be from a source other than the juice from which the
sensible pulp was removed (col. 8, ll. 37-42).
Binkley discloses blending juice concentrates from different sources
and with different quality attributes to match consumer specifications (p. 6).
USDA Standards is relied upon by the Examiner (Ans. 5) for a
disclosure that orange juices are broken down into quality grades (p. 5) and
for a definition of juice defects (p. 4).
Analysis
The Appellants argue that Powers removes both sensible pulp and
sinking pulp (col. 4, ll. 60-68), and that Downton’s sensible pulp, which is
stored and subsequently added to low viscosity juice from which sinking
pulp has been removed (col. 8, ll. 14-15; 37-42), is not sinking pulp (Br. 7-9;
Reply Br. 2-3).
The Examiner argues that in view of Downton’s disclosure of storing
sensible pulp to be added to low viscosity citrus juice, one of ordinary skill
in the art would have pooled Powers’ sinking solids and preserved them for
use in other juice products that require added pulp to optimize their viscosity
(Ans. 5-6). The Examiner relies upon Powers’ disclosures that “orange juice

4 The juice includes juice serum, sinking pulp and any other juice
components that are not sensible pulp (col. 5, ll. 45-47).
Appeal 2008-5936
Application 10/330,911
products prepared from feed juices having too low a viscosity will be
characterized as ‘watery’ or ‘thin’ in texture” (col. 6, ll. 15-17), and that
“[g]enerally, as the level of sinking pulp increases, the viscosity of the feed
juice likewise increases” (col. 6, ll. 62-64) (Ans. 6).
The Examiner has not established that one of ordinary skill in the art
would have considered Downton’s disclosure regarding sensible pulp to be
applicable to sinking pulp. Moreover, Powers lowers and desirably
minimizes the sinking pulp level to lower the viscosity for efficient
evaporative concentration of the juice (col. 6, ll. 26-31; col. 7, ll. 3-4;
col. 13, ll. 20-26). Powers does not appear to disclose juices which contain
all of their original sinking pulp yet have viscosities too low for use in
Powers’ method. Thus, the Examiner’s argument that Powers and Downton
would have led one of ordinary skill in the art to add sinking pulp from one
orange cultivar to the juice of another orange cultivar to raise the juice’s
viscosity does not appear to be supported by those references. Instead, it
appears to be based upon impermissible hindsight in view of the Appellants’
disclosure. See W.L. Gore & Associates v. Garlock, Inc., 721 F.2d 1540,
1553 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984); In re Rothermel,
276 F.2d 393, 396 (CCPA 1960).
The Examiner argues that “it would have been obvious to fortify non-
Valencia orange juice with the extra sinking pulp from Valencia orange juice
in order to optimize the taste and texture of both juices” (Ans. 7).
The Examiner, however, has not established that the relied-upon prior
art would have led one of ordinary skill in the art to use sinking solids in that
Appeal 2008-5936
Application 10/330,911
manner. Again, the Examiner’s argument appears to be based upon
impermissible hindsight in light of the Appellants’ disclosure.
The Examiner argues (Ans. 6):
It is appreciated that each and every type and amount of orange juice
fraction is not disclosed for use in the reference, but to adjust the
overall content of the orange juice components to optimize the quality
of the product at the least cost would have been a well known way of
maintaining a business profit, while providing a tasty juice. Further
consumers expect a food manufacturer to provide a consistent orange
juice product, in spite [of] a change in the seasons.

As stated in KSR Int’l. Co. v. Teleflex Inc., 127 S. Ct. 1727 (2007),
“‘rejections on obviousness grounds cannot be sustained by mere conclusory
statements; instead, there must be some articulated reasoning with some
rational underpinning to support the legal conclusion of obviousness’.” KSR,
127 S. Ct. at 1741, quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).
The Examiner provides mere conclusory statements without the required
articulated reasoning and rational underpinning, such as explanation of
relevant supporting evidence. Hence, the Examiner’s argument is not
effective for establishing a prima facie case of obviousness of the
Appellants’ claimed invention.
Conclusion of Law
The Appellants have shown reversible error in the Examiner’s
determination that the applied references would have rendered prima facie
obvious, to one of ordinary skill in the art, storing a sinking solids phase or a
serum phase of one orange cultivar and combining it with a recently
extracted orange juice of a different orange cultivar.

Appeal 2008-5936
Application 10/330,911

DECISION/ORDER
The rejection of claims 1-4, 7, 8, 10-27, 30-32, and 34-41 under
35 U.S.C. § 103 over Powers in view of Downton, Binkley, and USDA
Standards is reversed.
It is ordered that the Examiner’s decision is reversed.
REVERSED

PL Initial:
sld

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