Pierre ADAM et al.Download PDFPatent Trials and Appeals BoardOct 29, 202012734356 - (D) (P.T.A.B. Oct. 29, 2020) 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. 12/734,356 05/23/2011 Pierre Marie Fernand ADAM ABI182US (ABI-066) 2137 83942 7590 10/29/2020 Levy & Grandinetti P.O. Box 18385 Washington, DC 20036 EXAMINER STULII, VERA ART UNIT PAPER NUMBER 1791 MAIL DATE DELIVERY MODE 10/29/2020 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 PIERRE MARIE FERNAND ADAM, and BART MARCEL PETER VANDERHAEGEN Appeal 2019-006465 Application 12/734,356 Technology Center 1700 ____________ Before ADRIENE LEPIANE HANLON, JEFFREY T. SMITH, and JEFFREY R. SNAY, Administrative Patent Judges. SMITH, Administrative Patent Judge. DECISION ON APPEAL1 Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the Examiner’s Final decision to reject claims 7–11, 17, and 18. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies Anheuser-Busch InBev S.A. as the real party in interest. (Appeal Br. 2.) Appeal 2019-006465 Application 12/734,356 2 STATEMENT OF THE CASE Appellant’s invention relates generally to a process for preparing a fermented beverage comprising the steps of producing a mash; filtering the mash and recovering the wort; boiling the wort; and fermenting the wort to produce a fermented beverage, wherein a liquid composition comprising iso- α-acids is added to the wort. (Spec 5.) Claim 7 illustrates the subject matter on appeal and is reproduced below: 7. A process for preparing a fermented beverage comprising the following steps: (a) producing a mash; (b) filtering said mash and recovering the wort; (c) boiling said wort; and (d) fermenting said wort to produce a fermented beverage, preparing in situ, prior to its addition to the wort or fermented beverage, a liquid composition having a minimum concentration of 20.10-6 kg/L of iso-α-acids by mixing in at least one metal oxide with a natural, non-extracted, source of α -acids for a period of between 5 and 60 minutes, and adding said liquid composition comprising iso- α -acids to said wort or to said fermented beverage. Appeal Br. 15, Claims Appendix. OPINION The rejection of claims 7–11, 17, and 18 under 35 U.S.C. § 103(a) as unpatentable over Grant (Grant et al., US 4,123,561; iss. Oct. 31, 1978, “Grant”) in view of Briggs (Briggs et al., An outline of Brewing, Malting and Appeal 2019-006465 Application 12/734,356 3 Brewing Science, Brewing Science and Practice, 1–6) is presented for our review.2 After review of the respective positions Appellant and the Examiner provide, we determine that Appellant has demonstrated reversible error in the Examiner’s rejections under 35 U.S.C. § 103(a). We limit our discussion to independent claim 7. The dispositive issue for this rejection is: Did the Examiner reversibly err in determining that Grant in combination with Briggs teaches or suggests a process for preparing a fermented beverage comprising preparing in situ, prior to its addition to the wort or fermented beverage, a liquid composition having a minimum concentration of 20.10-6 kg/L of iso-α-acids by mixing in at least one metal oxide with a natural, non-extracted, source of α -acids for a period of between 5 and 60 minutes as required by independent claim 7? The Examiner finds Grant discloses a composition that is intended to be added to the kettle during wort boiling. The composition is prepared by treatment of a natural, non-extracted, source of α-acids such as pellets or powdered hops with calcium oxide, magnesium oxide or a mixture thereof. (Final Act. 4.) The Examiner finds Grant discloses a method of processing hops for brewing wherein the α-acids in the hops are stabilized against deterioration by forming a mixture of the hops or hop extracts with one or more oxides of a divalent metal and maintaining the mixture at an elevated temperature, e.g., 40°–l00°C. (Final Act. 2.) The Examiner finds Grant 2 The complete statement of the rejections on appeal appears in the Final Office Action mailed July 13, 2018 (hereinafter “Final Act.”). (Final Act. 2–10.) Appeal 2019-006465 Application 12/734,356 4 discloses the hops contain typically from about 6 to about 15% by weight of water and that a lower alkanol can be added to the hops in an amount of 5 to about 15 wt.% of alkanol based on the weight of the hops. (Final Act. 4; Grant col. 4 ll. 29–53.) The Examiner finds Grant is silent as to the method steps involved in the preparation of beer. (Final Act. 5.) The Examiner finds Briggs describes conventional method steps in beer manufacture that include producing a mash, filtering said mash and recovering the wort, boiling the wort; and fermenting the wort to produce a fermented beverage. (Final Act. 5.) Appellant argues claim 7 requires an excess amount of water in order to mix the metal oxide and the source of α -acids in water. (Appeal Br. 10.) Appellant argues Grant’s process does not include a liquid composition of hops, and water in Grant’s mixture is contained in the hops powder and concerns only the water bound to the hops. (Appeal Br. 10–11; Grant col. 4 ll. 40–43.) The Examiner asserts that the composition of Grant “is intended to be further added to another liquid composition. Hence, the amount of liquids in both composition could be adjusted based on the desired amount of liquid in the final composition and the desired concentration of hops in the composition to be further added to wort.” (Final Act. 7.) The Examiner in the Answer further states: It is further noted that amount of water in the isomerized hop composition would depend on the immediate intended use of such composition. If such composition is intended to be immediately added to the wort, then any desired amount of water could be added to such composition depending on the desired concentration of iso- alpha-acids in such composition. In case, when iso-alpha-acids composition is intended for immediate storage and/or transportation, Appeal 2019-006465 Application 12/734,356 5 the amount of water in such composition would be restricted due to additional costs associated with storage and transportation of water in composition. (Ans. 12.) As is apparent from the Examiner’s response to Appellant’s argument, the Examiner has not provided adequate rationale to account for all the limitations of the claimed invention. Claim 7 is directed to a process for preparing a fermented beverage comprising preparing in situ, prior to its addition to the wort or fermented beverage, a liquid composition having a minimum concentration of 20.10-6 kg/L of iso-α-acids by mixing in at least one metal oxide with a natural, non-extracted, source of a-acids for a period of between 5 and 60 minutes. Grant is directed to methods for stabilizing hops for storage by pelletizing. Grant specifically states “[t]he present invention is especially suitable for use in the pelletizing of hops in preparation for brewing and it can be integrated readily into pelletizing operations, using conventional equipment.” (Grant col. 4 ll. 25–28.) During examination, the Examiner bears the initial burden of establishing a prima facie case of obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). “Rejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” KSR Int’l v. Teleflex, Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)); see also Ball Aerosol and Specialty Container, Inc. v. Ltd. Brands, Inc., 555 F.3d 984, 993 (Fed. Cir. 2009) (“[T]he analysis that ‘should be made explicit’ Appeal 2019-006465 Application 12/734,356 6 refers not to the teachings in the prior art of a motivation to combine, but to the court’s analysis.”). Appellant has argued persuasively that the Examiner’s proposed motivation for arriving at a liquid composition having a minimum concentration of 20.10-6 kg/L of iso-α-acids as required by independent claim 7 is not supported by the evidence of record. Rather, the Examiner appears to have relied on impermissible hindsight reasoning in determining it would have been obvious to perform a process for preparing a fermented beverage comprising preparing in situ, prior to its addition to the wort or fermented beverage, a liquid composition having a minimum concentration of 20.10-6 kg/L of iso-α-acids by mixing in at least one metal oxide with a natural, non-extracted, source of α -acids for a period of between 5 and 60 minutes as required by independent claim 7. Accordingly, we do not sustain the Examiner’s 35 U.S.C. § 103(a) rejection of all the claims on appeal. CONCLUSION In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 7–11, 17, and 18 103(a) Grant, Briggs 7–11, 17, and 18 REVERSED Copy with citationCopy as parenthetical citation