Ex Parte Schuh et al

Patent Trial and Appeal Board

Dec 27, 2018

14208994 (P.T.A.B. Dec. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/208,994 03/13/2014
145992 7590 12/31/2018
ALCS Law Dept. - Product and IP c/o
BUCHANAN, INGERSOLL & ROONEY PC
POST OFFICE BOX 1404
ALEXANDRIA, VA 22313-1404
FIRST NAMED INVENTOR
Christian Schuh
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.
1021238-001691 5117
EXAMINER
WONG, LESLIE A
ART UNIT PAPER NUMBER
1793
NOTIFICATION DATE DELIVERY MODE
12/31/2018 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):
ADIPDOC 1@BIPC.com
j ane.fallgren@bipc.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTIAN SCHUH,
JASON FLORA, GERD KOBAL,
and GEORGIOS D. KARLES
Appeal 2018-003 846
Application 14/208,994
Technology Center 1700
Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and
N. WHITNEY WILSON, Administrative Patent Judges.
COLAIANNI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134 the final rejection of claims
23-27, 30-35, and 71-80. We have jurisdiction over the appeal pursuant to
35 U.S.C. § 6(b).
We REVERSE.
Appellants' invention is directed to a method of making a beverage
having the flavor of whiskey, without the need for fermentation, brewing,
1 Appellants identify the real party in interest as Altria Client Services LLC
(Appeal Br. 3).
Appeal2018-003846
Application 14/208,994
and/or other costly and time consuming measures associated with whiskey
production (Spec. ,r,r 7, 21 ).
Claim 23 is illustrative (italics added):
23. A method of making a beverage having the flavor of distilled
whiskey, the method comprising:
adding at least one compound selected from a first group of
compounds to a quantity of water, the first group of compounds
consisting of3-methylbutanol, 2-methylbutanol, 2,3-butanedione,
vanilline, 2-methylpropanol, 3-methylbutanal, 2,3-pentanedione, 2-
methylpropanal, 2-methylbutanal, furaneol, and ethylfuraneol,
wherein the amount of the at least one compound selected from the
first group of compounds is about 100,000 µg/1 to about 5,000,000
µg/1 of 3-methylbutanol, about 100,000 µg/1 to about 5,000,000 µg/1 of
2-methylbutanol, about 5 µg/1 to about 200 µg/1 of 2,3-butanedione,
about 500 µg/1 to about 25,000 µg/1 ofvanilline, about 100,000 µg/1 to
about 5,000,000 µg/1 of 2-methylpropanol, about 20 µg/1 to about
2,000 µg/1 of 3-methylbutanal, about 1 µg/1 to about 50,000 µg/1 of
2,3-pentanedione, about 20 µg/1 to about 1,000 µg/1 of 2-
methylpropanal, about 100 µg/1 to about 8,000 µg/1 of 2-
methylbutanal, about 10 µg/1 to about 1,000 µg/1 of furaneol, or about
0.5 µg/1 to about 50 µg/1 of ethylfuraneol;
adding at least one compound selected from a second group of
compounds to the quantity of water, the second group of compounds
consisting of acetaldehyde, ethyl butyrate, ethyl-2-methylpropanoate,
ethyl octanoate, ethyl hexanoate, ethyl-3-methylbutyrate, ethyl-2-
methylbutyrate, (E)-b-damascenone, 3- methylbutyl acetate, 1, 1-
diethoxyethane, and trans-ethyl cinnamate, wherein the amount of the
at least one compound selected from the second group of compounds
is about 3,000 µg/1 to about 300,000 µg/1 of acetaldehyde, about 100
µg/1 to about 5,000 µg/1 of ethyl butyrate, about 50 µg/1 to about 2,500
µg/1 of ethyl-2-methylpropanoate, about 500 µg/1 to about 25,000 µg/1
of ethyl octanoate, about 100 µg/1 to about 10,000 µg/1 of ethyl
hexanoate, about 10 µg/1 to about 500 µg/1 of ethyl-3-methylbutyrate,
about 10 µg/1 to about 500 µg/1 of ethyl-2-methylbutyrate, about 1 µg/1
to about 100 µg/1 of (E)-b-damascenone, about 500 µg/1 to about
25,000 µg/1 of 3-methylbutyl acetate, about 2,000 µg/1 to about
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Application 14/208,994
100,000 µg/1 of 1, 1-diethoxyethane, or about 1 µg/1 to about 100 µg/1
of trans-ethyl cinnamate;
adding at least one compound selected from a third group of
compounds to the quantity of water, the third group of compounds
consisting of whiskey lactone, 2-methoxyphenol, 4-allyl-2-
methoxyphenol, 5-pentyldihydrofuran-2(3H)-one, 4-ethyl-2-
methoxyphenol, 4-methyl-2-methoxyphenol, 4-propyl-2-
methoxyphenol, and 5-hexyldihydrofuran-2(3H)-one, wherein the
amount of the at least one compound selected from the third group of
compounds is about 1,000 µg/1 to about 50,000 µg/1 of whiskey
lactone, about 20 µg/1 to about 10,000 µg/1 of 2-methoxyphenol, about
20 µg/1 to about 1,000 µg/1 of 4-allyl-2-methoxyphenol, about 10 µg/1
to about 500 µg/1 of 5-pentyldihydrofuran-2(3H)-one, about 20 µg/1 to
about 5,000 µg/1 of 4-ethyl-2-methoxyphenol, about 10 µg/1 to about
10,000 µg/1 of 4- methyl-2-methoxyphenol, about 2 µg/1 to about 500
µg/1 of 4-propyl-2-methoxyphenol, or about 1 µg/1 to about 70 µg/1 of
5-hexyldihydrofuran-2(3H)-one;
adding at least one compound selected from a fourth group of
compounds to the quantity of water, the fourth group of compounds
consisting of tannic acid, oak extract, and trans aconitic acid, wherein
the amount of the at least one compound selected from the fourth
group of compounds is about 30,000 µg/1 to about 150,000 µg/1 of
tannic acid, about 1,000,000 µg/1 to about 5,000,000 µg/1 of oak
extract, or about 500 µg/1 to about 2,500 µg/1 of trans aconitic acid;
adding at least one compound selected from a fifth group of
compounds to the quantity of water, the fifth group of compounds
consisting of 4-ethylphenol, 4-methylphenol, 3-methylphenol, 2-
methylphenol, and phenol, wherein the amount of the at least one
compound selected from the fifth group of compounds is about 50 µg/1
to about 10,000 µg/1 of 4-ethylphenol, about 1 µg/1 to about 10,000
µg/1 of 4-methylphenol, about 1 µg/1 to about 8,000 µg/1 of 3-
methylphenol, about 1 µg/1 to about 20,000 µg/1 of 2-methylphenol, or
about 50 µg/1 to about 20,000 µg/1 of phenol;
adding at least one compound selected from a sixth group of
compounds to the quantity of water, the sixth group of compounds
consisting of 2-phenylethanol, 2-phenylacetic acid, 2-phenylethyl
acetate, and linalool, wherein the amount of the at least one compound
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Appeal2018-003846
Application 14/208,994
selected from the sixth group of compounds is about 5,000 µg/1 to
about 200,000 µg/1 of 2-phenylethanol, about 10 µg/1 to about 1,000
µg/1 of 2- phenylacetic acid, about 100 µg/1 to about 10,000 µg/1 of 2-
phenylethyl acetate, or about 0.5 µg/1 to about 500 µg/1 of linalool;
and
adding at least one compound selected from a seventh group of
compounds to the quantity of water, the seventh group of compounds
consisting o/3-hydroxy-4,5-dimethyl-2(5H)-furanone, 3-(methylthio )-
1-propanol, 3-(methylthio )-1-propanal, (E)-2-nonenal, (E,E)-2,4-
decadienal, and (E,E)-2,4-nonadienal, wherein the amount of the at
least one compound selected from the seventh group of compounds is
about 0.1 µg/1 to about 5 µg/1 of 3-hydroxy-4,5-dimethyl-2(5H)-
furanone, about 250 µg/1 to about 10,000 µg/1 of 3-(methylthio )-1-
propanol, about 0.1 µg/1 to about 10 µg/1 of 3-(methylthio )-1-
propanal, about 1 µg/1 to about 100 µg/1 of (E)-2-nonenal, about 1 µg/1
to about 100 µg/1 of (E,E)-2,4-decadienal, or about 0.1 µg/1 to about
10 µg/1 of (E,E)-2, 4-nonadienal;
wherein the added compounds are included in an amount
effective to form a beverage having the flavor of distilled whiskey.
Appellants appeal the following rejection: 2
1. Claims 23-27, 30-35, and 71-80 are rejected under 35 U.S.C. § 112,
first paragraph, as failing to comply with the enablement requirement.
2 The Examiner provisionally rejected claims 23-27, 30-35, and 71-80 for
nonstatutory double patenting over claims 34--37 of copending Application
No. 14/208,551. Final Act. 3. Appellants argue that this rejection is moot
because they filed a terminal disclaimer which has been entered. See Appeal
Br. 19. The Patent Office's application database shows a terminal
disclaimer filed and approved in this application on October 16, 2017. In
view of Appellants' argument, we decline to review the merits of the
provisional OTDP rejection. See Ex parte Jerg, No. 2011-000044, slip op.
at 6 (BPAI April 17, 2012) (Informative Decision) (available at
httg://1.usa._g_ov/29hxQLc) (holding that the Board has discretion as to
whether or not to reach provisional double patenting rejections).
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Application 14/208,994
Appellants rely on arguments made regarding independent claim 23
rather than provide separate arguments for any of the dependent claims
(Appeal Br. 18-27; Reply Br. 1-6).
We select claim 23 as representative of each of the appealed claims.
FINDINGS OF FACT & ANALYSIS
Rejection (1 ): 35 U.S.C. § 112, ,r 1, Enablement
A specification complies with the 35 U.S.C. § 112, first paragraph,
enablement requirement if it allows those of ordinary skill in the art to make
and use the claimed invention without undue experimentation. See In re
Wright, 999 F.2d 1557, 1561 (Fed. Cir. 1993); Atlas Powder Co. v. E.I. du
Pont De Nemours & Co., 750 F.2d 1569, 1576 (Fed. Cir. 1984). Factors,
which are illustrative, not mandatory, see Amgen, Inc. v. Chugai Pharm. Co.,
927 F.2d 1200, 1213 (Fed. Cir. 1991), to be considered in determining
whether a disclosure would require undue experimentation
include (1) the quantity of experimentation necessary, (2) the
amount of direction or guidance presented, (3) the presence or
absence of working examples, (4) the nature of the invention,
(5) the state of the prior art, (6) the relative skill of those in the
art, (7) the predictability or unpredictability of the art, and (8)
the breadth of the claims.
In re Wands, 858 F.2d 731,737 (Fed. Cir. 1988). Enablement is a question
of law. In re Swartz, 232 F.3d 862, 863 (Fed. Cir. 2000). See also MPEP
§ 2164.08 ("All questions of enablement are evaluated against the claimed
subject matter. The focus of the examination inquiry is whether the
substantial scope of the claim is enabled.").
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Application 14/208,994
In this instance, the Examiner considered Wands factor (8) set forth
above to find that
[ c ]laim 23 has seven groups. Group one has 11 possible
components, Group two has 11 components, Group three has 8
components, Group four has three components, Group five has
five components, Group six has four components, and Group
seven has six components. This results in no less than an
exorbitant amount of possibilities (i.e.[,] 348,480) which is only
amplified by the range amounts for each component. Certainly,
it is reasoned, that over 300,000 possibilities would require
undue experimentation.
(Ans. 3). The Examiner further considered the remaining Wands factors:
[]Nature of the invention - The claims are directed to a non-traditional
whiskey production.
[]State of the prior art - Whiskey is generally made by a traditional
process [see ,r 20]. The term "whiskey" describes a beverage made
from fermented grain such as rye or barley, which can be aged or
blended ....
[]Level of one of ordinary skill/Level of predictability in the art - One
of ordinary skill would understand the traditional production of
whiskey. In [i1i1 14--15], the [S]pecification considers sensomics in
flavor development but does not provide any support for the use of
sensomics. Flavors are unpredictable where some provide
enhancement and/ or synergy ....
[]Amount of direction provided by the inventor/Existence of working
examples/Quantity of experimentation needed to make or use the
invention based on the content of the disclosure - The [S]pecification
provides only one example (Example 2) directed to whiskey wherein
there is no analysis/comments for the obtained product. The single
whiskey example does not bear a reasonable correlation to the entire
scope of the claims.
(Id. at 3--4). The Examiner concludes that, in view of an alleged lack of
direction provided by the Specification, "[i]t appears that undue
experimentation would be required to determine the combinations of Groups
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Application 14/208,994
I, II, III, IV, V, VI, and VII compounds that would provide a whiskey
flavor." (Id. at 2).
The Examiner, however, does not provide persuasive analysis to
support this determination.
Claim 23 is directed to forming a beverage having a distilled whiskey
flavor. In our view, those of ordinary skill in the art of whiskey production
would know when the addition of the various claimed compounds formed a
beverage having the flavor of distilled whiskey. Our finding is supported by
Appellants disclosure that "sensomics" is used to identify and quantify
flavor-relevant compounds out of hundreds in a natural product (Spec. ,r 14).
Sensomics are state of the art separation, isolation, and chemical analysis
techniques that identify and quantify the flavor-relevant compounds out of
the many hundreds in a natural product (Spec. ,r 14). The Specification
describes combining chemical entities that mimic the natural product.
Appellants' Specification discloses that "[ t ]he flavor compounds in each
group are generally interchangeable with other compounds in the same
group." (Spec. ,r 29; see also 37 C.F.R. § 1.132 Declaration of co-inventor
Dr. Christian Schuh ,r,r 19, 24--37). The Specification describes combining
chemical entities that mimic natural products is called a "recombinant."
(Spec. ,r 15). The Specification describes that "through omissions or
additions of certain compounds in the "recombinants" described in this
application, important interplays between aroma, flavor and mouthfeel
impressions are used to create nature craft identical compositions" (Spec.
,r 15). Paragraph 15 of the Specification describes that "this approach is
primarily based on chemical identification, receptor molecular biology and
psychophysics and differs from traditional trial and error artisan creations."
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Application 14/208,994
(Spec. ,r 15). This disclosure supports that one ordinary skill in the art
would have been able to mix the various interchangeable compounds within
each group according to the claim to arrive at a whiskey flavored product.
Thus, we are not persuaded that it is material to whether the instant claim is
enabled that Example 2 fails to provide any "analysis/comments for the
obtained product." (Id. at 4). In other words, the skill level of the ordinary
artisan would be able to determine when a whiskey flavored product is
achieved based on the disclosure in the Specification.
Contrary to the Examiner's finding that claim 23 requires "over
300,000 possibilities [that] would require undue experimentation" (Ans. 3),
Appellants correctly point out (Reply Br. 4) that the Specification's
disclosure that the flavor compounds with each group are generally
interchangeable (Spec. ,r 29; see also 37 C.F.R. § 1.132 Declaration of co-
inventor Dr. Christian Schuh ,r,r 19, 24--37). Thus, one of ordinary skill in
the art of whiskey production would be faced with a substantially reduced
number of possible compounds to select and include in an amount effective
to form a beverage having the flavor of distilled whiskey. Therefore, we
agree with Appellants that a consideration of the breadth of claim 23, the
Specification's direction and guidance, and the exemplification therein "may
be readily utilized by a person of ordinary skill in the art to make a beverage
having the flavor of distilled whiskey with routine experimentation."
(Appeal Br. 27). The fact that experimentation may be complex does not
necessarily make it undue, if the art typically engages in such
experimentation. In re Certain Limited-Charge Cell Culture Microcarriers,
221 USPQ 1165, 1174 (Int'l Trade Comm'n 1983), aff'd. sub nom. Mass.
Institute of Tech. v. A.B. Portia, 774 F.2d 1104 (Fed. Cir. 1985). In the
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present case, the Specification describes the skill level of the artisan and
teaches to use chemical identification, receptor molecular biology and
psychophysics to tailor the flavor selection to arrive at the claimed
invention.
Thus, while the Examiner makes factual findings applicable to the
Wands factors such as the breadth of the claims; the amount of direction or
guidance presented; and the presence or absence of working examples, the
Examiner's factual findings are insufficient to show that the claimed
inventions would require undue experimentation to make or use them. We
reverse the Examiner's rejection of claim 23 and its dependent claims 24--
27, 30-35, and 71-80 under 35 U.S.C. § 112, first paragraph.
DECISION
The Examiner's decision is reversed.
ORDER
REVERSED
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