Jakob Ley et al.

Patent Trials and Appeals Board

Aug 30, 2019

12141982 - (D) (P.T.A.B. Aug. 30, 2019)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/141,982 06/19/2008 Jakob Ley 1507-63 6426
28249 7590 08/30/2019
DILWORTH & BARRESE, LLP
Dilworth & Barrese, LLP
1000 WOODBURY ROAD
SUITE 405
WOODBURY, NY 11797
EXAMINER
DEES, NIKKI H
ART UNIT PAPER NUMBER
1791
MAIL DATE DELIVERY MODE
08/30/2019 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JAKOB LEY, KATHRIN LANGER,
GERHARD KRAMMER, GERALD REINDERS,
GUNTER KINDEL, and CHRISTIAN NOLTE
____________

Appeal 2019-000126
Application 12/141,9821
Technology Center 1700
____________

Before ADRIENE LEPIANE HANLON, CATHERINE Q. TIMM, and
JAMES C. HOUSEL, Administrative Patent Judges.

HOUSEL, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellants appeal from the
Examiner’s decision finally rejecting claims 29–49 and 51–54. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.2

1 According to Appellants, the real party in interest is Symrise AG. Appeal
Br. 1.
2 Our Decision refers to Appellants’ original Specification (Spec.) filed June
19, 2008, Appellants’ Appeal Brief (“Appeal Br.”) filed December 11, 2017,
the Examiner’s Answer (“Ans.”) mailed August 6, 2018, and Appellants’
Reply Brief (“Reply Br.”) filed October 2, 2018.
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STATEMENT OF THE CASE
The invention relates to an aroma composition for reducing or
suppressing an undesired bitter and astringent impression in the oral cavity,
the composition including (i) one or more salivatory (salivation inducing)
aroma substances and/or flavorings, and (ii) one or more specific bitterness-
masking aroma substances and/or flavorings. Spec. 1:29–32. Appellants
further disclose that the composition may optionally include one or more
further aroma substances and one or more auxiliary substances or carriers.
Id. at 1:33–34. In addition, Appellants disclose that one, several, or all of
the salivatory aroma substances and/or flavorings are trigeminally active,
i.e., are capable of imparting a warming, spicy hot, pungent, cooling, and/or
tingling impression in the oral cavity. Id. at 5:17–19; 9:26–28. The
invention further relates to a preparation comprising the aroma composition
and a method of reducing or suppressing the bitter, astringent effect of a
compound using the aroma composition. Id. at 1:34–2:4.
Claim 29, reproduced below from the Claims Appendix to
Appellants’ Brief, is illustrative of the subject matter on appeal:
29. An oral preparation comprising an aroma composition for
reducing or suppressing both a bitter and an astringent taste
impression of a compound in the oral cavity, comprising
(i) one or more trigeminally active salivatory aroma
substances or flavorings selected from the group consisting
of:
2E,4E-decadienoic acid N-isobutylamide (trans-
pellitorine),
2E,4Z-decadienoic acid N-isobutylamide (cis-
pellitorine),
2Z,4Z-decadienoic acid N-isobutylamide; 2Z,4E-
decadienoic acid N-isobutylamide,
2E,4E-decadienoic acid N-([2S]-2-
methylbutyl)amide,
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2E,4E-decadienoic acid N-([2S]-2-
methylbutyl)amide,3
2E,4E-decadienoic acid N-([2R]-2-
methylbutylamide),
2E,4Z-decadienoic acid N-(2-methylbutyl)amide,
2E,4E-decadienoic acid N-piperide (achilleamide),
2E,4E-decadienoic acid N-piperide (sarmentine),
2E-decenoic acid N-isobutylamide,
3E-decenoic acid N-isobutylamide,
3E-nonenoic acid N-isobutylamide,
2E,6Z,8E-decatrienoic acid N-isobutylamide
(spilanthol),
2E,6Z,8E-decatrienoic acid N-([2S]-2-
methylbutyl)amide (homospilanthol),
2E,6Z,8E-decatrienoic acid N-([2R]-2-
methylbutyl)amide; 2E-decen-4-ynoic acid
N-isobutylamide,
2Z-decen-4-ynoic acid N-isobutylamide,
2E,6Z,8E,10E-dodecatetraenoic acid N-(2-
methylpropyl)amide (α-sanshool),
2E,6Z,8E,10E-dodecatetraenoic acid N-(2-hydroxy-2-
methylpropyl)amide (α-hydroxysanshool),
2E,6E,8E,10E-dodecatetraenoic acid N-(2-hydroxy-2-
methylpropyl)amide (γ-hydroxysanshool),
2E,4E,8Z,10E,12E-tetradecapentaenoic acid N-(2-
hydroxy-2-methylpropyl)amide (γ-hydroxysanshool),
2E,4E,8E,10E,12E-tetradecapentaenoic acid N-(2-
hydroxy-2-methylpropyl)amide (γ-hydroxyisosanshool),
2E,4E,8Z,10E,12E-tetradecapentaenoic acid N-(2-
methyl-2-propenyl)amide (γ-dehydrosanshool),
2E,4E,8Z,10E,12E-tetradecapentaenoic acid N-(2-
methylpropyl)amide (γ-sanshool),
2E,4E,8Z,11Z-tetradecatetraenoic acid N-(2-hydroxy-
2-methylpropyl)amide (bungeanool),
2E,4E,8Z,11E-tetradecatetraenoic acid N-(2-hydroxy-
2-methylpropyl)amide (isobungeanool),

3 We note that claim 29 twice recites the same compound, 2E,4E-
decadienoic acid N-([2S]-2-methylbutyl)amide.
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2E,4E,8Z-tetradecatrienoic acid N-(2-hydroxy-2-
methylpropyl)amide (dihydrobungeanool), and
2E,4E -tetradecadienoic acid N-(2-hydroxy-2-
methylpropyl)amide (tetrahydrobungeanool); and
(ii) one or more bitterness-masking aroma substances or
flavorings selected from the group consisting of:
eriodictyol, homoeriodictyol or a sodium salt thereof,
2,4-dihydroxybenzoic acid vanillylamide,
2,4,6-trihydroxybenzoic acid N-(4-hydroxy-3-
methoxybenzyl)amide,
2,4-dihydroxybenzoic acid N-(4-hydroxy-3-
methoxybenzyl)amide monosodium salt,
gingerdione-[2],
gingerdione- [3],
gingerdione-[4],
dehydrogingerdione-[2],
dehydrogingerdione- [3],
dehydrogingerdione-[4], diacetyl trimers,
γ-aminobutyric acid,
divanillin,
phloretin, and
davidigenin;
and optionally,
(iii) one or more further aroma substances;
and optionally,
(iv) one or more auxiliary substances or carriers;
provided that the amount of the (i) one or more
trigeminally active salivatory aroma substances and the (ii)
one or more bitterness-masking aroma substances or
flavorings is sufficient to reduce or suppress both a bitter
and an astringent taste impression in the oral cavity;
and provided that the preparation does not comprise
menthol or a menthol derivative.

REJECTIONS
The Examiner maintains, and Appellants request our review of, the
following grounds of rejection under 35 U.S.C. § 103(a):
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1. Claims 29–34, 36–43, 45–49, and 51–54 as unpatentable over
Gatfield4 in view of Ley1;5
2. Claims 35 and 44 as unpatentable over Gatfield in view of Ley1
and Ley2;6 and
3. Claim 54 as unpatentable over Shimada7 in view of Ley1.

ANALYSIS
Appellants argue claims 29, 35, 38, 39, 40, 42, 44, 47, 48, 52, and 54
separately. However, Appellants’ arguments directed to claims 42, 47, and
48, are substantially the same as those directed to claims 29, 39, and 40,
respectively. We, therefore, address Appellants’ separate arguments as to
claims 29, 35, 38, 39, 40, 42, 44, 47, 48, 52, and 54 below. The remaining
claims stand or fall with their respective independent claim.
After review of the Examiner’s and Appellants’ opposing positions,
the applied prior art, and Appellants’ claims and Specification disclosures,
we determine that Appellants’ arguments are insufficient to identify
reversible error in Rejections 1 and 2 above, but are sufficient to identify
reversible error in Rejection 3. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir.
2011). Accordingly, we affirm Rejections 1 and 2 for substantially the fact
findings and the reasons set forth by the Examiner in the Examiner’s Answer
and the Final Office Action, but reverse Rejection 3 for the reasons set forth
in the Appeal Brief and below. We offer the following for emphasis only.

4 Gatfield et al., US 2004/0241312 A1, published December 2, 2004
(“Gatfield”).
5 Ley et al., US 2002/0188019 A1, published December 12, 2002 (“Ley1”).
6 Ley et al., WO 2007/014879 A1, published February 8, 2007 (“Ley2”).
7 Shimada et al., US 5,626,837, issued May 6, 1997 (“Shimada”).
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Rejection 1
Claim 29
The Examiner finds that Gatfield teaches oral compositions
comprising trigeminally active salivatory aroma substances such as 2E,4E-
decadienoic acid-N-isobutyl amide (trans-pellitorine) in combination with a
bitterness-masking substance and/or flavoring. Ans. 3. However, the
Examiner finds that Gatfield does not recite the use of one of the bitterness-
masking compounds recited in claim 1 as the bitterness-masking substance
and/or flavoring. Id. Instead, the Examiner finds that Ley1 teaches
eriodictyol, homoeriodictyol, and the sodium salt of homoeriodictyol are
effective bitterness-masking compounds at 100 ppm and identifies
aspartame, cyclamate, neotame, saccharin, and sucralose as substances
having a bitter aftertaste. Id. at 3–4. The Examiner concludes that it would
have been obvious to combine Ley1’s bitterness-masking compounds, e.g.,
eriodictyol, homoeriodictyol, and sodium salts thereof, with Gatfield’s
compositions, including that of Example 3—which include high-intensity
sweeteners known to have a bitter aftertaste—for their known bitterness
masking function with a reasonable expectation of success. Id. at 4.
Appellants present five primary arguments that the Examiner has
failed to present a prima facie case of obviousness: 1) that Gatfield and Ley1
are directed to non-analogous prior art; 2) that there is no need or reason to
modify Gatfield’s compositions because Gatfield uses a high level of sugar
and sorbitol and only a small amount of saccharin and would not have any
bitterness to be reduced; 3) Gatfield desires a neutral taste profile such that
one skilled in the art would not add further components that could affect this
profile; 4) neither Gatfield nor Ley1 describes the reduction or suppression
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of both a bitter and an astringent taste impression; and 5) that the Examiner
engaged in improper hindsight in selecting eriodictyol, homoeriodictyol, and
the sodium salt of homoeriodictyol from Ley1 for combination with
Gatfield’s composition of Example 3 in view of Ley1’s disclosure of at least
2700 different compounds and combinations. Appeal Br. 15–20.
These arguments fail to persuade us of reversible error in the
Examiner’s obviousness rejection. “The combination of familiar elements
according to known methods is likely to be obvious when it does no more
than yield predictable results.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
416 (2007).
With respect to argument (1) above, our reviewing court has stated
that “[t]wo separate tests define the scope of analogous prior art: (1) whether
the art is from the same field of endeavor, regardless of the problem
addressed and, (2) if the reference is not within the field of the inventor's
endeavor, whether the reference still is reasonably pertinent to the particular
problem with which the inventor is involved.” In re Bigio, 381 F.3d 1320,
1325 (Fed. Cir. 2004) (citations and internal quotes omitted). In this case,
both Gatfield and Ley1 are directed to the same field of endeavor because
both are directed to formulations for improving the taste impressions of
foodstuffs and oral hygiene preparations. Gatfield ¶ 2; Ley1 ¶ 1. Moreover,
even if Gatfield and Ley1 were not from the same field of endeavor, these
references are reasonably pertinent to the particular problem—improving the
taste impression of foodstuffs and other oral preparations by reducing
undesired bitter and astringent impressions—with which the inventors were
involved.
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With regard to Appellants’ argument (2) above, as the Examiner
responds (Ans. 9), the reason to combine is based on the reasonable
expectation that Ley1’s compounds would have been expected to reduce the
bitter taste of Gatfield’s high intensity sweeteners. KSR, 550 U.S. at 416.
Although Gatfield teaches compositions including sugar and sorbitol,
Appellants neither provide persuasive technical reasoning nor direct our
attention to any disclosure in Gatfield that adding Ley1’s compounds to
Gatfield’s compositions would not supplement or improve the taste
properties of those compositions.8 Nor do Appellants direct our attention to
any disclosure in Gatfield that limits Gatfield’s taste or flavor compounds to
the specific ones disclosed therein, or that teaches away from any others
known in the art. Indeed, Gatfield provides some indication that other
salivation inducing compounds could be used. See Gatfield ¶ 14.
As to argument (3) above, as the Examiner responds (Ans. 11),
Appellants fail to present either persuasive technical reasoning or
evidentiary showing that the addition of Ley1’s bitter-masking compounds
would alter Gatfield’s neutral taste profile. Gatfield teaches that the use of
low amounts of trans-pelletorin provides the desired salivation inducing
effect without providing additional detectable sensory impressions. Gatfield
¶ 9. We note that Ley1 likewise teaches that very low levels of eriodictyol
or homoeriodictyol are effective for reducing bitterness. Ley1, Fig. 1. Thus,
contrary to Appellants’ argument, the ordinary artisan would not expect that

8 We note that Ley2 actually teaches that compounds such as those taught in
Ley1 can be used with a nearly identical toothpaste preparation to Gatfield’s
having high amounts of sugar and sorbitol for improving the taste and
sweetness of the preparation. Compare Gatfield P68, Ex. 3, with Ley2, p.
25, Ex. 7.
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the addition of effective amounts of Ley1’s bitter-masking compounds to
Gatfield’s preparation would add detectable sensory impressions.
Turning next to Appellants’ fourth argument above, we note that the
Examiner’s rejection relies on a combination of Gatfield and Ley1. Thus,
pointing out that neither reference discloses reduction of both a bitter and
astringent taste impression is not helpful in identifying reversible error by
the Examiner when the Examiner is not relying on the reference for teaching
that claim element. One cannot show nonobviousness by attacking
references individually when the rejection is based on a combination of
references. In re Keller, 642 F.2d 413, 425 (CCPA 1981). Each reference
cited by the Examiner must be read, not in isolation, but for what it fairly
teaches in combination with the prior art as a whole. See In re Merck & Co.,
Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Moreover, although Ley1 describes the function of eriodictyol and
homoeriodictyol as masking or reducing the bitter or metallic taste
impression, these compounds necessarily would possess the astringent
property which Appellants ascribe to them. In re Papesch, 315 F.2d 381,
391 (CCPA 1963) (“From the standpoint of patent law, a compound and all
of its properties are inseparable; they are one and the same thing.”) Further,
although the motivation to add Ley1’s compounds to Gatfield ostensibly is
to mask bitter taste impressions, the motivation for the combination need not
be the same as Appellants’ purpose for these same compounds. KSR, 550
U.S. at 419–20 (2007) (“In determining whether the subject matter of a . . .
claim is obvious, neither the particular motivation nor the avowed purpose
of the patentee controls.”)
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Finally, as to argument (5) above, as the Examiner responds (Ans.
12), Ley1 discloses eriodictyol and homoeriodictyol as only two of five
known bitterness masking compounds. See Ley1 ¶ 33. That these
compounds may be combined or used as enantiomers or as salts thereof does
not negate the obviousness of using either of these compounds. Merck &
Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (“That the
ʼ813 patent discloses a multitude of effective combinations does not render
any particular formulation less obvious. This is especially true because the
claimed composition is used for the identical purpose.”); see also, In re Susi,
440 F.2d 442, 445 (CCPA 1971) (obviousness rejection affirmed where the
disclosure of the prior art was “huge, but it undeniably include[d] at least
some of the compounds recited in appellant's generic claims and [was] of a
class of chemicals to be used for the same purpose as appellant's additives”);
In re Kubin, 561 F.3d 1351, 1359 (Fed. Cir. 2009) (“Where a skilled artisan
merely pursues ‘known options’ from a ‘finite number of identified,
predictable solutions,’ obviousness under § 103 arises.” (quoting KSR, 550
U.S. at 421). As the knowledge for the Examiner’s proposed combination of
Gatfield and Ley1 comes from the prior art, and not from Appellants’
disclosure, we discern no improper hindsight in its formulation. In re
McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971).
Accordingly, we sustain the Examiner’s obviousness rejection of
claim 29, and claims 30–34, 36, 37, 42, 43, 45–49, 51, and 53.
Claim 38
Claim 38 depends from claim 29, and further requires a compound
having both a bitter and astringent taste impression.
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The Examiner finds that Gatfield’s compositions comprise
pharmaceutically active ingredients which meet the requirement for a
compound having both bitter and astringent taste impression. Ans. 5, citing
Gatfield, Ex. 3. The Examiner also notes that Gatfield’s compositions
include saccharin which Appellants describe as a compound having bitter
and astringent taste impression. Ans. 13.
Appellants argue that nowhere do either Gatfield or Ley1 describe
saccharin as having both a bitter and astringent taste. Appeal Br. 21.
Appellants also contend that the Examiner must provide a reference to show
that saccharin would inherently be astringent. Id. We disagree. Appellants
disclose that saccharin is a compound that is both bitter and astringent. The
Examiner need not demonstrate this fact independently because a compound
and all of its properties are inseparable. Papesch, 315 F.2d at 391.
Claims 39, 40, 47, and 48
Claims 39 and 47 depend from claims 38 and 42, respectively, and
further require that the compound is selected from a list of compounds
including a pharmaceutically active ingredient.
Claims 40 and 48 depend from claims 38 and 42, respectively, and
further require that the compound is selected from another list of compounds
also including pharmaceutically active ingredients.
As set forth above, the Examiner finds that Gatfield’s compositions
comprise pharmaceutically active ingredients which meet the requirement
for a compound having both bitter and astringent taste impression. Ans. 5,
citing Gatfield, Ex. 3. The Examiner also finds that “pharmaceutically
active ingredient” as recited in claims 39, 40, 47, and 48 “is so broad as to be
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considered to be met by a number of compounds in the toothpaste of
Gatfield, such as the Solbrol®.” Ans. 13, citing Gatfield ¶ 68.
Appellants argue that the Examiner fails to identify the asserted
pharmaceutically active ingredient. Appeal Br. 22–25. However,
Appellants fail to dispute or otherwise respond to the Examiner’s finding
that Solbrol® is a pharmaceutically active ingredient within the scope of
claims 39, 40, 47, and 48. Accordingly, Appellants have not identified
reversible error in the Examiner’s obviousness rejection of these claims.
Claim 52
Claim 52 depends from claim 29, and further requires that that the
concentration of at least one component of group (i) lies in the range of
0.005–5ppm, and the total of all components of group (ii) lies in the range of
0.5–500 ppm.
The Examiner finds that Gatfield teaches the concentration of trans-
pellitorin (group (i) of claim 29) in a preparation preferably lies in the range
from 0.1–15 ppm, and Ley1 teaches that the effective concentration of bitter-
masking compounds (group (ii) of claim 29) can be about 100 ppm. Ans. 6.
The Examiner determines that these values render obvious the concentration
ranges recited in claim 52. Id.
Appellants argue that Gatfield’s Example 3 recites a trans-pellitorin
concentration of 10 ppm which is outside the range recited in claim 52.
Appeal Br. 25. Appellants acknowledge that Gatfield teaches other
concentrations, but urges that these concentrations are not recited in
Example 3. Id.
This argument is not persuasive of reversible error because Gatfield’s
teaching is not limited to Example 3 only. See In re Fracalossi, 681 F.2d
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792, 794 n.1 (CCPA 1982); In re Mills, 470 F.2d 649, 651 (CCPA 1972).
Instead, all disclosures therein must be evaluated for what they would have
fairly suggested to one of ordinary skill in the art. See In re Boe, 355 F.2d
961, 965 (CCPA 1966). There is no dispute that Gatfield teaches that the
concentration of trans-pellitorin preferably lies in the range from 0.1–15
ppm. Because this range overlaps the range recited in claim 52, a prima
facie case of obviousness exists. See E.I. DuPont de Nemours & Co. v.
Synvina C.V., 904 F.3d 996 (Fed. Cir. 2018) (“[A] prima facie case of
obviousness typically exists when the ranges of a claimed composition
overlap the ranges disclosed in the prior art.” (quoting In re Peterson, 315
F.3d 1325, 1329 (Fed. Cir. 2003))).
Claim 54
Claim 54 recites a method of reducing or suppressing both a bitter and
an astringent taste impression of a compound, comprising mixing the aroma
composition of claim 29 and a compound having both a bitter and an
astringent taste impression in a ratio such that the bitter and astringent taste
impression is reduced or suppressed.
Appellants repeat their argument raised against claim 38 that nowhere
do either Gatfield or Ley1 describe saccharin as having both a bitter and
astringent taste and that the Examiner must provide a reference to show that
saccharin would inherently be astringent. Appeal Br. 26. For the same
reasons given above with regard to claim 38, this argument is not persuasive
of reversible error.
Appellants further argue that nowhere do either Gatfield or Ley1
disclose that the composition including compounds from groups (i) and (ii)
of claim 29 be mixed with a bitter and astringent compound in a ratio that
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reduces or suppresses the bitter and astringent taste impression. Appeal Br.
26. However, as the Examiner responds (Ans. 16), the combination of
Gatfield and Ley1 provides a preparation having concentrations of
compounds from groups (i) and (ii) of claim 29, along with a compound,
saccharin, known to have both a bitter and an astringent taste impression.
The Examiner, therefore, reasonably concluded that Gatfield’s preparation,
modified to include a bitter-masking compound from Ley1, would
necessarily result in a reduction in saccharin’s bitter and astringent taste
impression. Accordingly, Appellants’ argument is not persuasive of
reversible error.
Rejection 2
Claims 35 and 44
Claim 35 depends from claim 29 via claim 34, and further requires the
addition of one of hesperetin, propenylphenyl glycosides, chavicol
glycosides, and umami compounds.
Claim 44 depends from claim 42 via claim 43, and further requires the
addition of hesperetin as the compound having both a bitter and an
astringent taste impression.
The Examiner finds that Ley2 teaches the use of herperitin for
enhancing the sweet taste of sweeteners such as saccharin, aspartame, and
acesulfame. Ans. 7. Because Gatfield’s preparations, as modified in view
of Ley1, comprise sweeteners including saccharin, aspartame, and
acesulfame, the Examiner concludes that it would have been obvious to
include hesperetin in Gatfield’s preparations to enhance the sweetness of
these sweeteners. Id.
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Appellants argue that Gatfield’s preparations would already be over-
abundantly sweet and would not require any enhancement of the sweet taste,
especially considering the small amount of saccharin used in Example 3. Id.
This argument is not persuasive of reversible error because Appellants fail to
provide persuasive technical reasoning or an evidentiary showing
establishing that Gatfield’s preparations would not have been expected to
benefit from the addition of hesperetin to enhance the sweetness of the
sweeteners therein. ‘Mere argument or conclusory statements in the
specification does not suffice.’” See In re Geisler, 116 F.3d 1465, 1470
(Fed. Cir. 1997) (quoting In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir.
1994)); see also In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974)
(“Attorney’s argument in a brief cannot take the place of evidence.”).9
Appellants also argue that nowhere do either Gatfield or Ley1
describe hesperetin as having both a bitter and astringent taste. Appeal Br.
27. Appellants also contend that the Examiner must provide a reference to
show that hesperetin would inherently be astringent. Id. at 27–28. We
disagree. Appellants disclose that hesperetin is a compound that is both
bitter and astringent. Spec. 13:6–11. The Examiner need not demonstrate
this fact independently because a compound and all of its properties are
inseparable. Papesch, 315 F.2d at 391.
Rejection 3
The Examiner rejects claim 54 as unpatentable over the combination
of Shimada and Ley1. The Examiner finds that Shimada teaches a method

9 In addition, though not relied on by the Examiner in the rejection, we note
that Ley2 teaches that the use of hesperetin permits the reduction in the
amount of sweeteners in a composition. See Ley2, 3:28–4:2, 7:1–10.
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for reducing the strong bitterness of a cationic bactericide having a bitter
taste by blending with components from group (i) of claim 29. Ans. 8. The
Examiner finds that Ley1 teaches adding a component of group (ii) of claim
29 as a bitter-masking compound. Id. The Examiner concludes that it
would have been obvious to have mixed the compounds provided in steps
(a) and (b) of claim 54 in a ratio such that the bitter and astringent taste
impression is reduced or suppressed. Id. The Examiner explains that claim
54 does not exclude the compound of step (a) in combination with menthol.
Id. at 17. Therefore, the Examiner determines that Shimada’s composition
comprising spilanthol, modified to include the bitterness-masking
compounds of Ley1, renders obvious claim 54, “regardless of the presence
of menthol in Shimada’s preparation. Id.
As Appellant argues (Appeal Br. 28–29), step (b) of claim 54 cannot
contain menthol. Moreover, the compound having both a bitter and an
astringent taste impression provided in step (a) cannot be menthol.
Although the Examiner correctly interprets claim 54 as permitting the
inclusion of menthol in another unrecited step of the method—the method
uses the transitional phrase “comprising”—, the problem with this rejection
is that the Examiner has not established that the menthol is not a part of, or is
added separate from, Shimada’s flavor (aroma) composition. In other
words, the rejection requires that Shimada’s menthol is not a part of, and is
added separately from, the flavor composition comprising both spilanthol
and eriodictyol or homoeriodictyol. However, the Examiner fails to
establish the manner of preparing any of Shimada’s preparations, such that
menthol would not be included with the flavor composition comprising
spilanthol and eriodictyol or homoeriodictyol, but would be included either
Appeal 2019-000126
Application 12/141,982

17
with the compound having both a bitter and an astringent taste impression or
would be added separately while or after this compound is mixed with the
flavor composition. The Examiner does not direct our attention to any
disclosure in either Shimada or Ley1 supporting the inclusion of menthol in
the preparations separate from the flavor composition. Accordingly, we
cannot sustain the Examiner’s rejection of claim 54 over the combination of
Shimada and Ley1.

DECISION
Upon consideration of the record, and for the reasons given above and
in the Answer, the decision of the Examiner rejecting claims 29–49 and 51–
54 under 35 U.S.C. § 103(a) as unpatentable over Gatfield in view of Ley1,
alone or further in view of Ley2, is affirmed.
However, the decision of the Examiner rejecting claim 54 under 35
U.S.C. § 103(a) as unpatentable over Shimad in view of Ley1 is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1).

AFFIRMED