Pierre ADAM et al.

Patent Trials and Appeals Board

Oct 29, 2020

12734356 - (D) (P.T.A.B. Oct. 29, 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.
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.)
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Application 12/734,356

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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
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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.)
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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,
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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’
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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