NESTEC S.A.Download PDFPatent Trials and Appeals BoardMay 17, 20212020004047 (P.T.A.B. May. 17, 2021) Copy Citation 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. 14/758,031 06/26/2015 Valerie Martine Jeanine Leloup 3712036-02457 1357 29157 7590 05/17/2021 K&L Gates LLP-Nestec S.A. P.O. Box 1135 Chicago, IL 60690 EXAMINER MCCLAIN-COLEMAN, TYNESHA L. ART UNIT PAPER NUMBER 1793 NOTIFICATION DATE DELIVERY MODE 05/17/2021 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): USpatentmail@klgates.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte VALERIE MARTINE JEANINE LELOUP, FEDERICO MORA, ERIC DOSSIN, and PHILIPPE MONTAVON Appeal 2020-004047 Application 14/758,031 Technology Center 1700 Before JEFFREY B. ROBERTSON, N. WHITNEY WILSON, and JANE E. INGLESE, Administrative Patent Judges. ROBERTSON, Administrative Patent Judge. DECISION ON APPEAL1 STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the Examiner’s decision to reject claims 1–2, 4–11, 14, and 15, which constitute 1 This Decision includes citations to the following documents: Specification filed June 26, 2015 (“Spec.”); Final Office Action mailed September 18, 2019 (“Final Act.”); Appeal Brief filed November 11, 2019 (“Appeal Br.”); Examiner’s Answer mailed March 19, 2020 (“Ans.”), and Reply Brief filed May 11, 2020 (“Reply Br.”). 2 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as SOCIETE DES PRODUITS NESTLE S.A. Appeal Br. 2. Appeal 2020-004047 Application 14/758,031 2 all the claims pending in this application. See Appeal Br. 6–18. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. CLAIMED SUBJECT MATTER Appellant states the invention relates to a process of preparing a foaming aid from a coffee extract and uses thereof. Spec. 1, ll. 4–9. Claim 1, reproduced below, is illustrative of the claimed subject matter (Appeal Br., Claims Appendix 20): 1. A process of making a foaming aid, the process comprising: (i) providing a coffee extract by extraction of roast and ground coffee beans at a temperature of 150 to 180 °C; and (ii) isolating a surface active fraction of the coffee extract by centrifugation of the coffee extract to obtain the foaming aid, the surface active fraction is thermal sediments generated by the extraction and comprises polyphenolic compounds obtainable by Maillard and autoxidative polymerization of at least two 4- vinylcatechol monomers obtained from free caffeic acid or a caffeic acid moiety of a chlorogenic acid. Claims 9 and 11 are also independent and recite similar methods. Appeal Br., Claims Appendix 21–22. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Panesar US 5,882,717 Mar. 16, 1999 Bartnick US 2006/0088627 A1 Apr. 27, 2006 Gaonkar US 2007/0259084 A1 Nov. 8, 2007 Zehentbauer US 2011/0212240 A1 Sept. 1, 2011 Appeal 2020-004047 Application 14/758,031 3 REJECTIONS 1. Claims 1, 2, and 4–10 are rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Gaonkar in view of Zehentbauer. Final Act. 3–6. 2. Claims 1, 2, 4–6, and 8–10 are rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Zehentbauer in view of Bartnick. Final Act. 6–8. 3. Claims 11, 14, and 15 are rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Zehentbauer, Bartnick, and Panesar. Final Act. 8–11. OPINION Rejection 1 We limit our discussion to independent claim 1, which is sufficient for disposition of this rejection. The Examiner’s Rejection In rejecting claim 1 as unpatentable over Gaonkar and Zehentbauer, the Examiner found Gaonkar discloses a process of preparing a foaming aid as recited in claim 1, but Gaonkar does not disclose isolating a surface active fraction by centrifugation. Final Act. 3–5. The Examiner found Zehentbauer discloses a process of providing a coffee extract by extraction of roast and ground coffee beans, and obtaining an isolate of the coffee extract by centrifugation of the coffee extract, where the isolate is thermal sediments generated by the extraction. Id. 5. The Examiner determined that because Gaonkar and Zehentbauer disclose preparing extracts of roast and Appeal 2020-004047 Application 14/758,031 4 ground coffee comprising thermal sediments and Gaonkar discloses the surface active fraction can be isolated using conventional techniques, it would have been obvious to have used centrifugation in the method of Gaonkar with the expectation of successfully isolating the surface active fraction of the coffee extract. Id. Appellant’s Arguments Appellant argues, inter alia, that Gaonkar does not disclose a process for making a foaming aid. Appeal Br. 7. Appellant contends Gaonkar’s process requires reacting a sugar and coffee material in a solvent in the presence of an alkaline transesterification catalyst, which differs substantially from the claimed process. Id. Appellant argues that Zehentbauer’s method to isolate the bitter compounds requires either contacting the coffee extract with an adsorbent or extraction with a solvent, which is not identical or substantially identical to the claimed process. Id. 8. Appellant contends the additional steps in Gaonkar and Zehentbauer do not support the Examiner’s position that Gaonkar and Zehentbauer disclose identical or substantially identical processes as recited in claim 1. Id. 7–8. In addition, Appellant contends that in view of the different processes disclosed in Zehentbauer and Gaonkar, one of ordinary skill in the art would not have been able to pick and choose certain steps and further modify them to arrive at the claimed process absent hindsight. Id. 8. Appeal 2020-004047 Application 14/758,031 5 Issue Did the Examiner err in determining that it would have been obvious to have combined Gaonkar and Zehentbauer to arrive at the process of making a foaming aid recited in claim 1? Discussion We are persuaded by Appellant’s arguments. Gaonkar discloses coffee-derived surfactants prepared by transesterification reaction of sugars and coffee oil. Gaonkar ¶ 1. Although it is true, as the Examiner found, that the coffee oil used in Gaonkar’s process may be coffee bean extract, and the sugar may be obtained from coffee materials (Ans. 15–16, Gaonkar ¶¶ 14, 15), we agree with Appellant that presence of the alkaline transesterification catalyst in Gaonkar is not consistent with the Examiner’s position that the processes are substantially similar. In this regard, the Examiner’s position that the transitional phrase “comprising” in claim 1 includes other steps, such as transesterification reactions (Ans. 15–16), is misplaced. Although claim 1 may be open to other steps and other products produced, Gaonkar must still provide sufficient disclosure that the surface active fraction contains thermal sediments that include “polyphenolic compounds obtainable by Maillard and autoxidative polymerization of at least two 4-vinylcatechol monomers obtained from free caffeic acid or a caffeic acid moiety of chlorogenic acid” as recited in claim 1. We are of the view that the presence of the transesterification catalyst during the reaction in Gaonkar, which is intended to produce sugar monoesters, a different product than recited in claim 1 (Gaonkar ¶¶ 9, 17), Appeal 2020-004047 Application 14/758,031 6 does not support the Examiner’s position that the surface active fraction would necessarily be produced. In this regard, the Examiner’s position that claim 7 allows for treating the surface active fraction with alkali (Ans. 15) does not take into account that the surface active fraction of claim 1 must still be produced as a result of the method. As just discussed, it is unclear whether there would be any surface active fraction produced in the method of Gaonkar due to the different reaction conditions. Zehentbauer is relied on solely for isolation techniques including centrifugation (see Ans. 17–18) and does not remedy the deficiencies of Gaonkar discussed above. Therefore, we reverse the Examiner’s decision to reject claim 1 as obvious over Gaonkar and Zehentbauer. Because independent claim 9 contains similar recitations as discussed above with respect to claim 1, we reverse the Examiner’s rejection of claim 9 as well. Rejections 2 and 3 We limit our discussion to independent claims 1 and 11, which is sufficient for disposition of these rejections. The Examiner’s Rejections In rejecting claims 1 and 11 as unpatentable over Zehentbauer and Bartnick, the Examiner found Zehentbauer discloses a process of obtaining an isolate of a coffee extract as recited in claim 1 with the exception of the extraction temperature. Final Act. 6–7, 9–10. The Examiner found Bartnick discloses providing a coffee extract by extracting roast and ground coffee beans at temperatures overlapping those recited in claims 1 and 11. Id. 7, 10. The Examiner found that Zehentbauer and Bartnick similarly teach Appeal 2020-004047 Application 14/758,031 7 preparing extracts of roast and ground coffee comprising thermal sediments. Id. The Examiner found Bartnick discloses temperatures used during extraction result in extracts having a more concentrated flavor, superior taste profile, and less time for the extraction and Zehentbauer discloses extraction may be carried out at any temperature. Id., citing Bartnick, ¶¶ 3, 4, 17; Zehentbauer ¶¶ 35, 42. As a result, the Examiner determined it would have been obvious to select temperatures including the claimed temperature ranges. Id. 7–8, 10. Appellant’s Arguments Appellant argues, inter alia, that Zehentbauer does not disclose the extraction temperatures, and does not disclose the isolation of thermal sediments. Appeal Br. 13, 17. Appellant contends that Bartnick requires reaction of food solid substrates with a reacting agent during extraction, such that upon reading the different processes in Bartnick and Zehentbauer, one of ordinary skill in the art would not have selected certain steps from each reference and arrive at the claimed process absent improper hindsight. Id. at 13–14. Issue Did the Examiner err in determining that it would have been obvious to have combined Zehentbauer and Bartnick to arrive at the process of making a foaming aid recited in claims 1 and 11? Appeal 2020-004047 Application 14/758,031 8 Discussion We are persuaded by Appellant’s arguments. Zehentbauer discloses isolating bitter compounds from coffee beans and coffee brew through adsorption or extraction of the bitter compounds. Zehentbauer ¶¶ 34, 35, 38. Zehentbauer discloses “[c]offee extract may be obtained from coffee through a variety of extraction methods from, including, but not limited to, direct extraction via the use of solvents, such as mixtures of ethanol and water, or by batch extraction, column extraction or continuous extraction . . . .” Id. ¶ 35. Bartnick discloses a reactive extraction process, whereby food solids such as coffee beans are reacted with various reactive agents to produce new flavoring compounds. Bartnick ¶¶ 3, 19. Bartnick discloses the reactive extraction process produces flavoring compounds that would not be produced in the absence of the reactive agents. Id. ¶ 7. Bartnick discloses the reactive extraction “may advantageously be carried out at elevated temperatures.” Id. 27. Thus, Bartnick discloses that the temperatures may be elevated to aid in the reactive extraction process. As a result, we agree with Appellant that the Examiner has not provided sufficient rationale as to why one of ordinary skill in the art would have turned to Bartnick’s disclosure to elevate the temperature of the extraction process disclosed in Zehentbauer, where Bartnick specifically discloses such an elevated temperature is used to facilitate reactive extraction to obtain new flavoring compounds, and where Zehentbauer simply discloses the isolation of bitter compounds from the extract. KSR Int’l. Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)(“‘[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational Appeal 2020-004047 Application 14/758,031 9 underpinning to support the legal conclusion of obviousness.’” quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). Accordingly, we reverse the Examiner’s rejection of claim 1. Because independent claim 9 contains similar recitations as discussed above with respect to claim 1, we reverse the Examiner’s rejection of claim 9 as well. As to claim 11, the Examiner’s additional citation to Panesar does not remedy the deficiencies with respect to Zehentbauer and Bartnick discussed above. See Final Act. 11. Accordingly we reverse the Examiner’s rejection of claim 11 as well. DECISION SUMMARY Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 2, 4–10 103(a) Gaonkar, Gaonkar, Zehentbauer 1, 2, 4–10 1, 2, 4–6, 8– 10 103(a) Zehentbauer, Bartnick 1, 2, 4–6, 8– 10 11, 14, 15 103(a) Zehentbauer, Bartnick, Panesar 11, 14, 15 Overall Outcome 1, 2, 4–11, 14, 15 REVERSED Copy with citationCopy as parenthetical citation