Ex Parte Nir et al

Patent Trial and Appeal Board

Jun 25, 2018

12735880 (P.T.A.B. Jun. 25, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121735,880 11/08/2010
23117 7590 06/27/2018
NIXON & V ANDERHYE, PC
901 NORTH GLEBE ROAD, 11 TH FLOOR
ARLINGTON, VA 22203
FIRST NAMED INVENTOR
ZoharNir
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
GPK-6278-3 7641
EXAMINER
GEORGE, PATRICIA ANN
ART UNIT PAPER NUMBER
1793
NOTIFICATION DATE DELIVERY MODE
06/27/2018 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
PTOMAIL@nixonvan.com
pair_nixon@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE
THE PATENT TRIAL AND APPEAL BOARD
Ex parte ZOHAR NIR, 1
Dov Hartal, and Ehud Zach
Appeal2017-009695
Application 12/735,880
Technology Center 1700
Before JEFFREY T. SMITH, LINDA M. GAUDETTE, and
MARK NAGUMO, Administrative Patent Judges.
NAGUMO, Administrative Patent Judge.
DECISION ON APPEAL
Zohar Nir, Dov Hartal, and Ehud Zach ("Nir") timely appeal
under 35 U.S.C. § 134(a) from the Final Rejection2 of claims 1, 3-9, 26,
and 27. 3 We have jurisdiction. 35 U.S.C. § 6. We affirm.
1 The real party in interest is identified as Lycored Ltd. (Appeal Brief,
filed 1 March 2017 ("Br."), 3.)
2 Office Action mailed 2 March 2016 ("Final Rejection"; cited as "FR").
3 Remaining copending claims 10-25 have been withdrawn from
consideration by the Examiner (FR 1, § 5a), and are not before us.
Appeal2017-009695
Application 12/735,880
A. Introduction4
OPINION
The subject matter on appeal relates to a method comprising adding
soluble tomato solids ("STS") to food products and reducing the amount of
added salt without affecting the perceived saltiness of the food products,
"and without adding any significant tomato-derived flavors." (Spec. 3, last
para.) According to the '880 Specification, "[t]he term STS is used ... to
refer to the soluble solids that are directly obtainable from tomato serum,
which in tum is one of two fractions (along with pulp) that are obtained by
means of separating crushed, heat-treated tomatoes." (Id. at 3, 2d para.)
The Specification reveals that these goals are accomplished by
providing an STS having a titratable acidity (measured as an equivalent of
citric acid) of 3--4%, referred to STS at a concentration of 60°Bx, and a
formol number of at least 400, again as measured in an STS at a
concentration of 60°Bx. (Id. at 4--5.) The Specification explains that
"Degrees Brix (0 Bx) is a measurement of dissolved solid content in a
solution" that is "measured with a refractometer and refers to the refractive
index of sucrose." (Id. at 5, 1st full para.) The Specification defines
titratable acidity as being determined by titration with sodium hydroxide
to pH 8.1. (Id. at 15, 1st full paragraph.) The Specification explains that
"formol number" is a measure of the number of amino acid groups that is
4 Application 12/735,880, Use of soluble tomato solids for reducing the salt
content of food products, filed 8 November 2010, as the national stage under
35 U.S.C. § 371 of PCT/IL2009/000207, filed 02/24/2009, claiming the
benefit of 61/030,967, filed 24 February 2008. We refer to the
"'880 Specification," which we cite as "Spec."
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Appeal2017-009695
Application 12/735,880
determined by neutralizing the titratable acid groups at an end point titration
of pH 8.1, 5 then adding excess formol (HCHO, formaldehyde), which
"locks" the amino groups, and conducting a second endpoint titration to
pH 8.2 to determine total amino acid content. (Id. at 15-16.)
In the words of the Specification, "[t]he titratable acidity and the
formol number of the STS may be influenced by means of selecting tomato
strains having fruit that yield sera having these factors within the desired
range." (Id. at 16, 11. 16-19.) Growing conditions, "including climate, soil
type, etc." are said to be well known to those skilled in the art to be
additional factors that can be used "to obtain tomatoes that yield serum
having the desired acidity." (Id. at 1 7, 11. 1--4.)
Sole independent claim 1 is representative and reads:
A method for preparing a food product, the method comprising:
adding a salt substitute comprising soluble tomato solids
(STS) to said food product, wherein
said S TS is prepared from separated tomato serum, wherein
said STS is not subjected to any treatment that removes
color or flavor therefrom, and wherein
the STS has
a titratable acidity level
within a range of about 3% to about 4% and
aformol number greater than 400.
(Claims App., Br. 23; some indentation, paragraphing, and emphasis added.)
5 Although the Specification reports "% acidity (expressed as % Citric
Acid) in STS" (Spec. 14, Table), the Specification describes determining
titratable acidity in units of mmoles H+ per liter and converting to equivalent
grams of citric acid per liter (id. at 15, 11. 9-14).
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Application 12/735,880
The Examiner maintains the following grounds of rejection6' 7, 8 :
A. Claims 1, 3-9, 26, and 27 stand rejected under
35 U.S.C. § 103(a) in view of the combined teachings of
admitted prior art, 9 Geifman, 10 and Katzir. 11
A'. Claims 1, 3-9, 26, and 27 stand rejected under
35 U.S.C. § 103(a) in view of the combined teachings of
Geifman, and Katzir.
B. Discussion
The Board's findings of fact throughout this Opinion are supported by
a preponderance of the evidence of record.
Nir raises arguments for patentability solely on the basis of limitations
recited in claim 1. Accordingly, all claims stand or fall with claim 1.
The Examiner finds that Geifman, which is cited and incorporated
into the '880 Specification by reference (Spec. 12, 1st full para.), describes
6 Examiner's Answer mailed 9 May 2017 ("Ans.").
7 Because this application was filed before the 16 March 2013, effective
date of the America Invents Act, we refer to the pre-AIA version of the
statute.
8 A rejection of claims 3, 26, and 27 under 35 U.S.C. § 112(2) has been
withdrawn by the Examiner. (Ans. 7 .)
9 Admitted prior art: method of making soluble solids from tomato serum,
described by Geifman. (Spec. 12, 11. 4--6.)
10 Arturo Geifman and Dov Hartal, Clear tomato concentrate as a taste
enhancer, U.S. Patent No. 6,890,574 Bl (2005).
11 Yuval Katzir and Eli Budman, Natural salt substitute,
PCT/IL2007/001522; EP 2117352 A2 (2009) (text from
W02008078315 A2), used by the Examiner without objection as a
translation. (U.S. Patent Application Publication 2009/0004332 Al (2009)
is an equivalent.)
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Appeal2017-009695
Application 12/735,880
an S TS made by the same process used by the present inventors, and
describes adding it to food products, but "does not discuss partially reducing
the total amount of salt added to a food product, by its use." (FR 3, 11. 16-
17.) The Examiner finds that Katzir, like Geifman, teaches adding soluble
solids from tomatoes to food products, and that Katzir teaches that the
soluble solids function as a salt substitute. (Id. at 4, 11. 1-2.) The Examiner
concludes that it would have been obvious to add Geifman's STS products
to food as a salt substitute. (Id. at 11. 3-7.) Given that the process steps used
for preparing STS for the claimed methods are the same as those disclosed
by Geifman, the Examiner concludes that "it would follow logically that for
the same products made by the same methods, the same properties would be
inherent, including titratable acidity, ... formol content, ... and browning
evaluation index." (Id. at 11. 7-9.)
Nir urges the Examiner erred reversibly by turning the permissive
enabling disclosure of the Specification into a tacit argument that
"Geifman's methods must-i.e., inherently and necessarily-generate the
claimed STS." (Br. 14, 11. 18-20.) Geifman, Nir argues, is concerned with
flavor enhancement, which relates to the taste of umami, or savoriness,
which in tum is distinct from the taste of saltiness. (Id. at 11. 21-27.)
"[T]here is nothing to believe," Nir continues, "that Geifman's taste
enhancer would necessarily or inherently have the characteristics necessarily
to provide a perceived saltiness." (Id. at 15, 11. 5-7.) Moreover, Nir argues,
the Specification discloses that "certain 'properties of the STS [are] within
defined ranges in order to achieve optimal salty-taste enhancing
characteristics."' (Id. at 11. 10-12, quoting Spec. 13, 11. 20-22.) Nir
emphasizes the importance of a particular formol number range for
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Application 12/735,880
imparting the desired salty flavor. (Id. at 11. 18-16, 1. 3, citing Spec. 16-17;
Br. 17-18, 1. 3, quoting Spec. 16, 1. 16-17, 1. 10, on selecting tomato
varieties and growth conditions as controllable variables.)
Nir argues further that Katzir is concerned with using "de-flavored
discolored tomato serum (DDTS}-and not STS," to reduce the salt content
of food. (Br. 16, 11. 4--5.) In Nir's view, "[a] person having ordinary skill in
the art would not have considered DDTS to be equivalent to STS."
(Id. at 11. 7-9.)
Nir essentially reiterates these arguments in the Reply. 12
As the Examiner points out (Ans. 8, 11. 10-11 ), "there is no claim of
reducing the amount of salt in a food product." The process according to
claim 1 involves adding a salt substitute, but there is no requirement that less
salt be added to the food product. The epithet "salt substitute" does require,
in light of the disclosure, that the STS be capable of functioning as a salt
substitute. That function is, on the present record, satisfied by the required
titratable acidity and formol number value. The Examiner has come forward
with a reference, Geifman, that produces STS by the same process disclosed
for making the S TS used in appealed claim 1. The Examiner has also come
forward with a second reference, Katzir, that teaches that a similar STS, that
differs in that the STS is decolorized and de-flavored to avoid, especially,
residues of color and typical tomato taste. (Katzir 4, 11. 9-10.) Nir asserts
that the DDTS described by Katzir would not have been considered an
equivalent to STS (Br. 16, 11. 7-9), but has not explained why the removal of
12 Reply Brief filed 6 July 201 7 ("Reply").
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Application 12/735,880
the color or the tomato flavors would have been expected to affect the
amount or characteristics of the amino acids in the remaining soluble tomato
solids. Thus, Nir has not shown why the inference that the color or the
"tomato flavor" would not affect those properties in the STS described by
Geifman is, more likely than not, unsound. Moreover, we find no evidence
that the formol number range is critical to enhancement of the perception of
saltiness. Indeed, the Table at page 14 of the '880 Specification indicates
that the values of formol number in 60°Bx is the same, "2: 400,
preferably 2: 500" for both STS as a "salty-taste and flavour enhancer" and
as a "flavor enhancer only." (Spec. 14.)
In summary, Nir has not shown that the STS described by Geifman
differs from the STS recited in claim 1. Especially given that Dov Hartal
appears to be a common inventor with Geifman and with Nir, Nir appears to
be in the best position to explain the relation of the STS products described
by Geifman to those described and used in the present disclosure. We
conclude that Nir has not shown that Katzir would not have provided a
reasonable expectation that STS materials, such as those taught by Geifman,
would function as salt substitutes, with a caution that a tomato flavor might
have to be unobjectionable in practice, although the claim does not impose
such a limitation.
Accordingly, we are not persuaded by Nir's arguments of harmful
error in the appealed rejections. We therefore affirm.
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Application 12/735,880
C. Order
It is ORDERED that the rejection of claims 1, 3-9, 26, and 27 is
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
8