Jin-E Shin et al.

Patent Trials and Appeals Board

Jan 2, 2020

15394949 - (D) (P.T.A.B. Jan. 2, 2020)

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.
15/394,949 12/30/2016 Jin-E SHIN 2189-292718 3779
23644 7590 01/02/2020
Barnes & Thornburg LLP (CH)
P.O. Box 2786
Chicago, IL 60690-2786
EXAMINER
GEORGE, PATRICIA ANN
ART UNIT PAPER NUMBER
1793
NOTIFICATION DATE DELIVERY MODE
01/02/2020 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):
Patent-ch@btlaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________
Ex parte JIN-E SHIN,
TEODORO RIVERA, RACHEL L. JORDAN,
BRYAN W. HITCHCOCK, WILLIAM B. SMALL II,
JEFFREY D. MATHEWS, SUNDAR BALA, and MONGJAN HSIEH
_______________
Appeal 2019–003412
Application 15/394,949
Technology Center 1700
_______________
Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and
DEBRA L. DENNETT, Administrative Patent Judges.
DENNETT, Administrative Patent Judge.
DECISION ON APPEAL1
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1–22 of Application 15/394,949. See
Final Act. 1; Appeal Br. 4. We have jurisdiction under 35 U.S.C. § 6.

1 In our Decision, we refer to the Specification filed December 30, 2016
(“Spec.”) of Application 15/394,949 (“the ’949 Application”); the Final
Office Action dated June 26, 2018 (“Final Act.”); the Appeal Brief filed
November 26, 2018 (“Appeal Br.”); the Examiner’s Answer dated February
21, 2019 (“Ans.”); and the Reply Brief filed March 28, 2019 (“Reply Br.”).
2 We use the word “Appellant” to refer to “Applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies Tropicana Products, Inc. as the real party
in interest. Appeal Br. 2.
Appeal 2019–003412
Application 15/394,949
2
For the reasons set forth below, we AFFIRM.
BACKGROUND
The ’949 Application relates to a beverage comprising a liquid and a
co-product from pomace resulting from juice extraction. Spec. ¶ 6. The
’949 Application describes that juice extraction excludes portions of a whole
fruit or vegetable that would be consumed if the fruit or vegetable were to be
eaten in its whole form. Id. at ¶ 3. Fruit and vegetable juices are said to lack
nutrients, such as fiber, phytonutrients, and vitamins, which are contained in
these excluded portions. Id. The ’949 Application describes that use of co-
products obtained from fruit or vegetable juice extraction enhances the
beverage’s viscosity and fermentability, thereby improving metabolic and
gut health. Id. at ¶¶ 2, 5.
Claim 1 is representative of the ’949 Application’s claims and is
reproduced below from the Claims Appendix of the Appeal Brief with key
limitations emphasized.
1. A beverage comprising:
a liquid;
a co-product formed from a pomace resulting from juice
extraction, wherein the co-product further comprises:
phytonutrients from the pomace;
a number average particle size between 0.1 and
2000 microns;
a peel and seed content between 0.01[]% and 80%
by weight; and
dietary fiber; and
Appeal 2019–003412
Application 15/394,949
3
wherein the beverage comprises a viscosity between 1 –
100,000 cps at 25°C.
Appeal Br. 14 (Claims Appendix).
REFERENCES
The Examiner relies on the following prior art in rejecting the claims
on appeal:
Name Reference Date
Gyllang et al.
(“Gyllang”)
US 4,649,051 Mar. 10, 1987
Cagley et al.
(“Cagley”)
US 5,137,744 Aug. 11, 1992
Paeschke et al.
(“Paeschke”)
US 2012/0135109 A1 May 31, 2012
M.J. Fallourd et al., “1—Ingredient selection for stabilisation
and texture optimisation of functional beverages and the
inclusion of dietary fibre,” in Functional and Speciality
Beverage Technology, Woodhead Publishing Series in Food
Science, Technology and Nutrition, edited by P. Paquin
(Woodhead Publishing, 2009), p. 24 (hereinafter “Paquin”).
REJECTIONS
The Examiner maintains3 the following rejections:4 (1) claims 1–3
and 7–16 under 35 U.S.C. § 103 as unpatentable over Paeschke in view of

3 The Examiner has withdrawn the rejections of: (i) claims 17–22 under 35
U.S.C. § 112(a) as failing to comply with the written description
requirement; and (ii) claims 1–22 under 35 U.S.C. § 112(b) as indefinite.
Ans. 4–7.
4 Because this application is a continuation in part of an application filed
after the March 16, 2013, effective date of the America Invents Act, we refer
to the AIA version of the statute.
Appeal 2019–003412
Application 15/394,949
4
Paquin and (2) claims 4–6 and 17–22 under 35 U.S.C. § 103 as unpatentable
over Paeschke, in view of Gyllang, and further in view of Cagley. Final Act.
6–17.
DISCUSSION
Ground 1: Rejection of claims 1–3 and 7–16 as obvious over
Paeschke in view of Paquin
The Examiner determines that claims 1–3 and 7–16 would have been
rendered obvious over Paeschke in view of Paquin. Final Act. 6–15.
Appellant argues the claims as a group. Appeal Br. 10–12. We select claim
1 as representative. Claims 2, 3, and 7–16 stand or fall with claim 1. See 37
C.F.R. § 41.37(c)(1)(iv).
Appellant argues that “the Examiner has not asserted a prima facie
obviousness rejection of claim 1 because the Examiner has not considered”
two limitations recited therein: (i) a co-product comprising “a number
average particle size between 0.1 and 2000 microns” and (ii) “a beverage
comprises a viscosity between 1 – 100,000 cps at 25°C.” Appeal Br. 10–12,
14 (Claims App).
Appellant does not contest the Examiner’s findings with respect to the
obviousness of the remaining limitations recited in claim 1. See id. at 10–
12; Final Act. 7, 9–10. Accordingly, our discussion regarding Ground 1
focuses on whether Paeschke in view of Paquin would have rendered the
disputed limitations obvious.
A. The claimed co-product comprising “a number average
particle size between 0.1 and 2000 microns”
Appellant argues, “the Examiner’s interpretation of Appellant’s claim
fails to consider the presence of any co-product, or that the co-product is
Appeal 2019–003412
Application 15/394,949
5
formed from particles having a number average particle size between 0.1
and 2000 microns.” Appeal Br. 12.
The Examiner, however, makes reasoned findings that Paeschke’s
process for providing a beverage from juice extraction byproducts discloses
or suggests forming the disputed co-product from particles having a number
average particle size between 0.1 and 2000 microns. In particular, the
Examiner finds “Paeschke teaches []a variety of particle sizes in the
composition, including: between 1 micron and 50 cm (1 to 500,000 microns)
. . . , which encompasses the claim[ed] particles having a number average of
between 0.1 and 2000 microns.” Final Act. 7 (citing Paeschke ¶ 49). The
Examiner concludes that
it would have been obvious to one with skill in the art at the
time of the invention to determine the optimal value for the
particle size used in the process of Paeschke, through routine
experimentation with physical reduction (i.e. cutting, shredding,
slicing, grinding, shearing, extruding, homogenizing,
pulverizing, comminuting, subjecting to cavitation (e.g., via
ultrasonic frequency), pressurizing, and combinations thereof)
and varied byproduct compositions, to impart the beverage with
the desired particle sizes associated with the bi-product [sic].
Final Act. 9 (citing Paeschke ¶¶ 48, 49).
According to Appellant, the Examiner finds that Paeschke merely
teaches “that at least one dimension of a particle could fall within the
asserted range.” Reply Br. 2. Therefore, Appellant argues, Paeschke’s
disclosure “is not dispositive on the number average particle size.” Id.; see
Paeschke ¶ 49.
We are not persuaded by this argument because it ignores the
Examiner’s findings and conclusions that it would have been obvious to one
of ordinary skill in the art at the time of the invention to modify Paeschke’s
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Application 15/394,949
6
method to attain the desired byproduct particle size by: (i) varying the types
of byproduct components and (ii) selecting an appropriate particle size
reduction method. Final Act. 9. As the Examiner explains, one of ordinary
skill in the art would have had a reasonable expectation of success because
Paeschke teaches that the byproduct’s particle size will vary depending on:
(i) the particular byproduct type and (ii) methods to reduce the particle size
by physical force. Id. at 7–9.
Paeschke teaches passing fruit and vegetable extraction byproduct
through a 20 mesh filter and adding the filtered byproduct liquid to a
beverage. Paeschke ¶¶ 62, 93. The disclosed use of a 20 mesh filter would
have provided particles with a size of 841 microns or less. See Mesh to
Micron Conversion Chart, accessed December 19, 2019,
https://www.skylighter.com/blogs/fireworks-information/mesh-to-micron-
conversion-chart. In other words, Paeschke’s filtration method further
suggests forming the claimed particles having a number average size of
between 0.1 and 2000 microns.
We are not persuaded that the Examiner fails to consider the first of
two disputed limitations recited in claim 1. We, furthermore, find that
Appellant’s assertion fails to identify reversible error in the Examiner’s
findings.
B. The claimed “beverage comprises a viscosity between 1 –
100,000 cps at 25°C”
The Examiner finds that Paeschke describes that the viscosity of the
juice extraction byproduct is between 500 and 9,000 cp, thereby overlapping
Appeal 2019–003412
Application 15/394,949
7
the claimed viscosity of between 1 and 100,000 cps.5 Final Act. 10 (citing
Paeschke Fig. 5). The Examiner finds that Paeschke further describes the
fiber’s viscosity as a result effective variable, which can be altered by the
fiber’s molecular weight. Final Act. 12 (citing Paeschke ¶ 19).
Although Paeschke is silent with respect to modifying the fluid’s
viscosity, the Examiner finds “Paeschke opens the door” to such
modifications “by teaching that the beverages disclosed may have any of
numerous different specific formulations or constitutions, including
formulations that vary the mouthfeel.” Final Act. 11 (citing Paeschke
¶¶ 67, 68).
The Examiner finds Paquin teaches that “some types of hydrocolloids
produce a shear thickening effect which results in a higher viscosity (e.g.
coated mouth feel), while other produce a shear thinning effect which results
in a lower viscosity (e.g. non-coated mouth feel).” Final Act. 11. According
to the Examiner, Paquin teaches that “shear thickening of a juice beverage is
result effective based on the type of hydrocolloid selected.” Id. The
Examiner concludes:
it would have been obvious to one with skill in the art at the
time of the invention to determine the optimal value for the
viscosity (i.e. shear thickening) and type of hydrocolloid used
in the process of Paeschke in view of Paquin, through routine
experimentation, to impart the material with the desired
viscosity properties, as claimed, associated with juice beverage

5 Appellant appears to be using “cps” as an abbreviation for “centipoises,”
i.e. the plural of “centipoise.” See Appeal Br. 14–16 (Claims App.). This
interpretation is supported by the fact that “centipoises” is spelled out in
claims 10 and 17–22, which depend from claim 1. “Centipoises” is
commonly abbreviated as “cP” or “cp,” which is the abbreviation used by
the Examiner. See Final Act. 10.
Appeal 2019–003412
Application 15/394,949
8
because the selection of something based on its known
suitability for its intended use has been held to support a prima
facie case of obviousness.
Id. The Examiner finds that it would have been reasonable for one of
ordinary skill in the art to expect that a beverage produced from the use of
shear force to adjust beverage viscosity would have resulted in a viscosity of
between 1 and 100,000 cps. Id. at 12.
Appellant argues the Examiner’s interpretation of claim 1 “fails to
consider Appellant’s claimed viscosity limitation.” Appeal Br. 12.
This argument of Appellant is not persuasive of reversible error.
More substantive arguments are required in an appeal brief to overcome a
rejection. In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (holding that
the Board reasonably interpreted 37 C.F.R. § 41.37 (c)(1)(vii) as requiring
“more substantive arguments in an appeal brief than a mere recitation of the
claim elements and a naked assertion that the corresponding elements were
not found in the prior art”). Furthermore, we find that the Examiner has
considered Appellant’s claimed viscosity limitation. Final Act. 10–12; Ans.
20–21.
Appellant argues the Examiner’s finding “that Paeschke opens the
door to modify the viscosity of the final product is untrue to the extent that it
is . . . used to justify increasing the viscosity of a beverage” via Paquin’s
teachings because “Paeschke specifically states that its low molecular weight
fiber should not result in a concomitant significant increase in viscosity.”
Reply Br. 2 (citing Paeschke ¶ 62). Appellant asserts that the Examiner’s
proposed modification would have impermissibly changed Paeschke’s
principle of modulating viscosity through varying the molecular weight of
Appeal 2019–003412
Application 15/394,949
9
fibers with Paquin’s method of modulating viscosity by varying
hydrocolloid content. Reply Br. 2.
However, the teachings of Paeschke alone are sufficient to have
rendered the disputed beverage’s viscosity between 1 – 100,000 cps obvious.
Appellant does not contest the Examiner’s finding that Paeschke’s viscosity
of the juice extraction byproduct is between 500 and 9,000 cp, which is
encompassed by the broadly claimed viscosity range of between 1 and
100,000 cps. See Final Act. 10 (citing Paeschke Fig. 5). Moreover, each
sample in Paeschke’s Tables 1 and 2 provides viscosity readings within the
claimed viscosity range. Paeschke ¶¶ 91–97. Furthermore, Paquin teaches
that hydrocolloids provide a viscosity value of only 30 cps, which is also
within the broadly claimed range. Paquin 24 (hydrocolloids provide “higher
viscosities (i.e. 30 mPa s).”). For purposes of § 103, a reference is prior art
for all that it discloses. Symbol Techs., Inc. v. Opticon, Inc., 935 F.2d 1569,
1578 (Fed. Cir. 1991). A reference stands for all of the specific teachings
thereof as well as the inferences one of ordinary skill in the art would have
reasonably been expected to draw therefrom. In re Fritch, 972 F.2d 1260,
1264–65 (Fed. Cir. 1992).
On the record before us, Appellant’s contention that the Examiner’s
proposed modification impermissibly changes Paeschke’s principle of
operation is not persuasive of reversible error by the Examiner in view of
Paquin’s relatively modest viscosity modulation. See Reply Br. 2.
We sustain the rejection of claim 1 as obvious over Paeschke in view
of Paquin. For the same reasons, we sustain the rejection of claims 2, 3, and
7–16 as obvious over the same combination of references.
Appeal 2019–003412
Application 15/394,949
10
Ground 2: Rejection of claims 4–6 and 17–22 as obvious over
Paeschke in view of Gyllang, and further in view of Cagley
The Examiner finds that claims 4–6 and 17–22 are unpatentable over
Paeschke in view of Gyllang, and further in view of Cagley. Final Act. 15–
17.
Appellant merely argues that the Examiner’s assertions do not cure
the deficiencies in Ground 1 (obviousness over Paeschke and Paquin).
Appeal Br. 12.
Having found no deficiencies in Paeschke and Paquin in Ground 1,
supra, we sustain the rejection of claims 4–6 and 17–22 as obvious over
Paeschke in view of Gyllang, and further in view of Cagley.
CONCLUSION
In summary:
Claims
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
1–3, 7–16 103 Paeschke, Paquin 1–3, 7–16
4–6, 17–22 103 Paeschke, Gyllang,
Cagley
4–6, 17–22
Claims
Rejected
1–22
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)(iv).
AFFIRMED

Notice of References Cited
Application/Control No.

15/394,949
Applicant(s)/Patent Under Patent
Appeal No.
2019–003412
Examiner

Art Unit

1793

Page 1 of 1
U.S. PATENT DOCUMENTS
* Document Number Country Code-Number-Kind Code Date MM-YYYY Name Classification
A US-
B US-
C US-
D US-
E US-
F US-
G US-
H US-
I US-
J US-
K US-
L US-
M US-
FOREIGN PATENT DOCUMENTS
* Document Number Country Code-Number-Kind Code Date MM-YYYY Country Name Classification
N
O
P
Q
R
S
T
NON-PATENT DOCUMENTS
* Include as applicable: Author, Title Date, Publisher, Edition or Volume, Pertinent Pages)

U Mesh to Micron Conversion Chart, accessed December 19, 2019.

V

W

X

*A copy of this reference is not being furnished with this Office action. (See MPEP § 707.05(a).)
Dates in MM-YYYY format are publication dates. Classifications may be US or foreign.
U.S. Patent and Trademark Office
PTO-892 (Rev. 01-2001) Notice of References Cited Part of Paper No.


 







  
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