Ex Parte TALEBI et alDownload PDFPatent Trials and Appeals BoardJun 18, 201915200229 - (D) (P.T.A.B. Jun. 18, 2019) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 15/200,229 07/01/2016 134769 7590 06/20/2019 Sterne, Kessler, Goldstein & Fox P.L.L.C. 1100 New York Avenue, N.W. Washington, DC 20005 FIRST NAMED INVENTOR Fari TALEBI 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. 3711.2200002 3363 EXAMINER GWARTNEY, ELIZABETH A ART UNIT PAPER NUMBER 1791 NOTIFICATION DATE DELIVERY MODE 06/20/2019 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): e-office@sternekessler.com tdurkin @sternekessler.com ajgardel@sternekessler.com> PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte F ARI TALEBI, MANUEL ANTONIO ARCE GARCIA, THOMAS LEE, PEI K. CHANG, HANG CHEN, and TODD A. ZANIEWSKI Appeal2018-006877 Application 15/200,229 Technology Center 1700 Before ROMULO H. DELMENDO, GEORGE C. BEST, and MONTE T. SQUIRE, Administrative Patent Judges. DELMENDO, Administrative Patent Judge. DECISION ON APPEAL The Applicant 1 ("Appellant") appeals under 35 U.S.C. § 134(a) from the Primary Examiner's final decision to reject claims 25--45. 2 We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 The Applicant is "The Concentrate Manufacturing Company of Ireland" (Application Data Sheet filed July 1, 2016, 6), which is also identified as the real party in interest and as "an indirect wholly-owned subsidiary of PepsiCo, Inc." (Appeal Brief filed February 12, 2018 ("Appeal Br."), 3). 2 Appeal Br. 6-10; Reply Brief filed June 19, 2018 ("Reply Br."), 2-5; Final Office Action entered June 12, 2017 ("Final Act."), 4--9; Advisory Action Appeal2018-006877 Application 15/200,229 I. BACKGROUND The subject application is a continuation of Application 13/217 ,845 (now abandoned), in which we affirmed the Examiner's decision to reject claims directed to similar subject matter. See Ex parte Talebi, Appeal No. 2014-009785, slip op. (PTAB May 2, 2016)(available at https://e- foia.uspto.gov/Foia/RetrievePdf?system=BPAI&flNm=fd2014009785-04- 28-201_6-1). The current subject matter on appeal, as in the parent application, relates to a beverage product (Specification filed July 1, 2016 ("Spec."), ,r 2). Representative claim 25 is reproduced from the Claims Appendix to the Appeal Brief, as follows: 25. A beverage product comprising: rebaudioside A; about 0.01 % to about 1 % by weight of an acidulant comprising at least two of citric acid, tartaric acid, and lactic acid; wherein the beverage product has a pH of from about 2.0 to about 5.0; and a titratable acidity ranging from about 15 to about 25. (Appeal Br. 11 (emphasis added)). entered November 1, 2017 ("Adv. Act."), 2; Examiner's Answer entered April 20, 2018 ("Ans."), 3-11. 2 Appeal2018-006877 Application 15/200,229 II. REJECTION ON APPEAL Claims 25--45 stand rejected under pre-AIA 35 U.S.C. § I03(a) as unpatentable over Prakash et al. (US 2008/0108710 Al, iss. May 8, 2008; "Prakash"). 3 III. DISCUSSION The Appellant argues claims 25--45 together (Appeal Br. 6-10). Therefore, we confine our discussion to claim 25, which we select as representative, and that discussion will control the outcome for all claims on appeal. See 37 C.F.R. § 4I.37(c)(l)(iv). The Examiner finds that Prakash discloses a beverage product that may be formulated to contain a sweetener composition comprising the same sweetener (rebaudioside A) and the same organic acids ("at least two of citric acid, tartaric acid, and lactic acid") recited in claim 25 (Ans. 3--4). The Examiner finds further that Prakash teaches the combination sweetener and the organic acids at any pH range that does not materially or adversely affect the taste of the sweetened composition (e.g. a pH range from about 2 to about 5) (id. at 4). The Examiner acknowledges that Prakash's disclosure differs from claim 25's subject matter in that it does not teach (i) the amounts for the organic acids (acidulant) and (ii) the titratable acidity range from about 15 to about 25 (id.). The Examiner finds, however, that "[i]t is well known that acidulants contribute to the sour taste of beverages" and, "[ t ]herefore, the precise amount of acidulant and titratable acidity would 3 A final rejection under 35 U.S.C. § 112, ,r 2, of claim 45 was withdrawn in the Advisory Action (Adv. Act. 2). 3 Appeal2018-006877 Application 15/200,229 have been considered ... result effective variables by one of ordinary skill in the art" (id.). Based on these findings, the Examiner concludes that (Id.). it would have been obvious and well within the skill of one of ordinary skill in the art to have adjusted the amount of acidulant in combination with titratable acidity in [the] sweetened beverage of Prakash ... to obtain the desired balance between sour and sweet flavor while maintaining a pH in the range of about 2 to about 5. The Appellant does not dispute the Examiner's findings regarding Prakash's scope and content (Appeal Br. 6-10). Rather, the Appellant's principal argument is that two publications-namely, CoSeteng4 and Neta5----demonstrate the unpredictability in the relationship between titratable acidity and sourness taste in beverages and, therefore, the Examiner failed to establish a reasonable expectation of success in modifying Prakash's beverage in the fashion claimed by the Inventors (id.). According to the Appellant, "[m]erely declaring that [the CoSeteng and Neta] references do not form part of a prima facie case does not permit the Office to rely on cherry-picked disclosure from within the cited references while ignoring the references' broader disclosures" (Reply Br. 4 ( emphasis removed)). 4 CoSeteng et al., "Influence of Titratable Acidity and pH on Intensity of Sourness of Citric, Malic, Tartaric, Lactic and Acetic Acid Solutions and on the Overall Acceptability of Imitation Apple Juice," 22 Can. Inst. Food Sci. Tech. J. 46-51 (1989) (partially illegible). 5 Neta et al., "The Chemistry and Physiology of Sour Taste-A Review," 72 J. Food Sci. R33-R37 (2007). 4 Appeal2018-006877 Application 15/200,229 The Appellant's arguments are insufficient to identify reversible error in the Examiner's rejection. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011). Prakash teaches that "[i]t is well known to those skilled in the art of food/beverage formulation that changing the sweetener in a composition requires re-balancing of the flavor and other taste components ( e.g., acidulants)" (Prakash ,r 4; claims 44 and 84). Consistent with this and other objectives, Prakash describes a sweetener composition for a beverage product comprising at least one preservative, at least one high potency sweetener, and at least one sweet taste improving composition (id. ,r 5). Prakash identifies rebaudioside A as one example of a natural high-potency sweetener that may be used (id. ,r 31 ). In addition, Prakash discloses that the at least one sweet taste improving composition includes various organic acids ( acidulants) such as lactic acid, tartaric acid, and citric acid ( id. ,r,r 81, 777). According to Prakash, the combination of the high-potency sweetener and the at least one sweet tasting improving composition may be carried out at any pH range that does not materially affect the sweetener composition's taste ( e.g., a pH range of from about 2 to about 8 or about 2 to about 5) (id. i1856). Regarding suitable sweet taste improving composition ( acidulant) amounts, Prakash teaches that it "is present in an amount such that no one sweet taste improving additive imparts a substantial off taste to the sweetener composition" and that for organic acids, it is present in the sweetener composition in an amount from about 10 to about 5,000 ppm (id. ,r,r 765, 777). Therefore, consistent with the Examiner's position (Ans. 4), a person having ordinary skill in the art would have drawn a reasonable 5 Appeal2018-006877 Application 15/200,229 inference that the acidulant amounts in the sweetener composition ( and thus the final beverage product) would be a result-effective variable that would balance sweet taste improvement against "off taste." See In re Preda, 401 F.2d 825, 826 (CCPA 1968) ("[I]n considering the disclosure of a reference, it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom."); In re Applied Materials, Inc., 692 F.3d 1289, 1296 (Fed. Cir. 2012) ("The Board also found that a person of ordinary skill in the art would have recognized that changing the groove width would affect the polishing rate and uniformity. This is a reasonable conclusion because the number of grooves per area ... is related to the groove width."). Given the general guidance as to amounts for the acidulants in the sweetener composition, we conclude that performing routine experimentation to discover optimum or workable acidulant amounts in the sweetener ( and in the beverage product) to achieve a balance in terms of sweet taste improvement and "off taste" (i.e., acid or sour taste) would have been obvious as being within the level of ordinary skill in the art. In re Aller, 220 F.2d 454, 456 (CCPA 1955) ("[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation."). Although Prakash does not appear to discuss titratable acidity, optimizing the acidulant amounts would also optimize pH and titratable acidity as necessary consequences. Here, the Appellant does not direct us to persuasive evidence that the acidulant amounts, pH range, and the titratable acidity range recited in claim 25 impart any results that would have been considered unexpected by a person having ordinary skill in the art. In re 6 Appeal2018-006877 Application 15/200,229 Kubin, 561 F.3d 1351, 1357 (Fed. Cir. 2009) ("Even ifno prior art of record explicitly discusses the [limitation], [applicant's] application itself instructs that [the limitation] is not an additional requirement imposed by the claims on the [claimed invention], but rather a property necessarily present in [the claimed invention]."); In re Wiseman, 596 F.2d 1019, 1023 (CCPA 1979) (rejecting the appellants' argument that "a structure suggested by the prior art, and, hence, potentially in the possession of the public, is patentable to them because it also possesses an [i]nherent but hitherto unknown, function which they claim to have discovered"); Ex parte Obiaya, 227 USPQ 58, 60 (BP AI 1985) ("The fact that appellant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious."). We agree with the Appellant that summarily dismissing documentary evidence offered to show nonobviousness on the basis that such evidence was not applied in the rejection is inappropriate, as an obviousness analysis requires an examiner to consider all evidence (Reply Br. 4). But, here, the Examiner did analyze all evidence, including CoSeteng and Neta, and found that the evidence in these two references did not outweigh the evidence supporting obviousness (Ans. 8-10). We discern no reversible error in the Examiner's assessment for reasons stated below. Specifically, Neta does say that "[a]lthough it is generally accepted that pH and organic acids are responsible for sour taste, it is not currently possible to accurately predict and modify sour taste intensity in foods" (Neta R33 ( emphasis added)). But optimization of a result-effective variable by routine experimentation does not require accurate prediction. Consistent 7 Appeal2018-006877 Application 15/200,229 with the Examiner's position, Prakash provides general guidance on acidulant amounts and effects, and based on this guidance, the empirical determination by routine experimentation to identify optimum acidulant amounts would not involve any work beyond the ordinary skill in the art. Moreover, as the Examiner observes, Neta provides additional guidance (id. at R34 (Table 1)) and concludes that "sour taste intensity is directly related to the molar concentration of all organic species that have one or more protonated carboxyl groups plus the concentration of free hydrogen ions" (id. at R37). Thus, Neta, which the Appellant cites to show nonobviousness, actually further supports the Examiner's obviousness conclusion. Cf In re Hedges, 783 F.2d 1038, 1039-40 (Fed. Cir. 1986). Regarding CoSeteng, the Examiner finds that "while CoSeteng ... teaches the impact of different food acid types on pH and sensory qualities of acidity may vary, each is known to contribute to pH and perceived sourness" (Ans. 10). We find no error in that finding. Although CoSeteng teaches that sourness perception was affected by interaction of titratable acidity and pH for imitation apple juice (CoSeteng Title, 47, 50), that does not negate the Examiner's determination that a person having ordinary skill would have determined-through nothing more than routine experimentation and Prakash's general guidance-what acidulant levels provide the best overall result in terms of sweetness enhancement and acceptable sourness for a particular beverage that does not have imitation apple juice's peculiar characteristics. If anything, CoSeteng would have provided additional guidance when the beverage is imitation apple juice. Lastly, the Appellant argues that the Inventors "discovered that increasing titratable acidity to between about 15 and about 25 with a pH 8 Appeal2018-006877 Application 15/200,229 between about 2.0 and about 5.0 resulted in a beverage having an improved taste profile as determined by a panel of cola taste experts" (Appeal Br. 10 ( citing Specification ,r,r 40-41 (Tables 2-3))). Consistent with the Examiner's conclusion ( Ans. 10-11 ), the Appellant fails to establish these results would have been considered unexpected-i.e., improved results beyond those obtained by routine optimization. In re Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005) ("The 32--43% increase in stress-rupture life, however, does not represent a 'difference in kind' that is required to show unexpected results." (quoting In re Huang, 100 F.3d 135, 139 (Fed. Cir. 1996))); compare In re Soni, 54 F.3d 746, 748, 751 (Fed. Cir. 1995) ("[W]hen an applicant demonstrates substantially improved results ... and states [in the specification] that the results were unexpected, this should suffice to establish unexpected results in the absence of evidence to the contrary."). For these reasons and those given by the Examiner, we uphold the Examiner's rejection as maintained against claim 25. IV. SUMMARY The Examiner's rejection under 35 U.S.C. § 103(a) of claims 25--45 as unpatentable over Prakash is sustained. Therefore, the Examiner's final decision to reject claims 25--45 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 9 Copy with citationCopy as parenthetical citation