SYMRISE AG

Patent Trials and Appeals Board

Mar 8, 2022

2022000582 (P.T.A.B. Mar. 8, 2022)

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. 15/780,346 09/27/2018 Torsten GEISSLER 085158-597002 5288 30678 7590 03/08/2022 POLSINELLI PC (DC OFFICE) PO Box 140310 Kansas City, MO 64114-0310 EXAMINER MORNHINWEG, JEFFREY P ART UNIT PAPER NUMBER 1793 NOTIFICATION DATE DELIVERY MODE 03/08/2022 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): patentdocketing@polsinelli.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte TORSTEN GEISSLER, JAKOB LEY, and EGON GROSS Appeal 2022-000582 Application 15/780,346 Technology Center 1700 ____________ Before JEFFREY B. ROBERTSON, DONNA M. PRAISS, and JEFFREY R. SNAY, Administrative Patent Judges. PRAISS, Administrative Patent Judge. DECISION ON APPEAL1 Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the Examiner’s decision to reject claims 32, 36, and 39-43. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 In this Decision, we refer to the Specification filed June 29, 2018 (“Spec.”), the Final Office Action dated Mar. 10, 2021 (“Final Act.”), the Appeal Brief filed Mar. 24, 2021 (“Appeal Br.”), the Examiner’s Answer dated July 12, 2021 (“Ans.”), and the Declaration of Jakob Ley Pursuant to 37 C.F.R. § 1.132 filed Mar. 24, 2021 (“Decl.”). 2 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies SYMRISE AG as the real party in interest. Appeal Br. 2. Appeal 2022-000582 Application 15/780,346 2 STATEMENT OF THE CASE The invention relates to foodstuffs containing a reduced sugar content in order to achieve a calorie reduction. Spec. ¶ 2. According to the Specification, such foodstuffs often contain phloretin for its sweet- optimizing properties to compensate for the missing sweet taste, but sidenotes such as unwanted bitterness, astringency, and/or lack of mouthfulness arise. Id. ¶¶ 2, 7. The Specification states that mixtures consisting of phloretin and other flavonoids such as naringenin are used to mask the bitter aftertaste of other sweeteners rather than phloretin. Id. ¶ 5. The Specification states it was surprisingly found that, with the combination of naringenin and phloretin, the bitter to pungent aftertaste of sweet substances is masked at the same time the instant sweetness and sweet intensity are increased. Id. ¶ 12. Independent claim 32, reproduced below, is illustrative of the subject matter on appeal. 32. A substance mixture consisting of: (a) 1 to 25 % by weight phloretin, (b) 1 to 25 % by weight naringenin, and (c) 1 to 50 % by weight of sucrose, and (d) optionally, at least one flavouring, wherein ((a)+(b)) and (c) are present in a weight ratio of 20:80 to 80:20 (((a)+(b)):(c)). Appeal Br. 17 (Claims Appendix). Claim 36, the other independent claim pending in this Appeal, is similar to claim 32, but recites “oral preparation comprising” instead of “substance mixture consisting of,” expresses phloretin, naringenin, and sucrose ranges in ppm instead of weight percent, and does not recite a ratio. Id. Appeal 2022-000582 Application 15/780,346 3 ANALYSIS We review the appealed rejections for error based upon the issues Appellant identifies, and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections.”). After thoroughly considering Appellant’s arguments and evidence, including Appellant’s objective evidence of nonobviousness, we are not persuaded of reversible error in the Examiner’s rejection under 35 U.S.C. § 103 of the claims pending in this Appeal. The Examiner maintains the following rejections: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis 32, 36, 39-43 102(a)(1) Riess3 32, 36, 39-43 103 Riess Anticipation Rejection The Examiner finds Riess discloses a substance mixture consisting of phloretin, naringenin, and a sweet substance in overlapping ranges with the amounts required by independent claims 32 and 36. Final Act. 2-3, 6. The Examiner finds that Riess’ mixture encompasses claim 32’s recited ratios because Riess discloses overlapping ranges with the amounts of phloretin, naringenin, and a sweet substance, thus the calculated ranges for the ratios 3 US 2010/0151055 A1, pub. June 17, 2010. Appeal 2022-000582 Application 15/780,346 4 largely overlap. Id. at 2-3; Ans. 13. Regarding claims 32 and 36 explicitly reciting sucrose, the Examiner finds Riess’ paragraph 12 discloses “one or more sweeteners” that are merely preferred. Final Act. 3, 6. The Examiner interprets Riess’ disclosure in paragraph 117 that the composition may comprise sucrose as disclosing the sweet substance is sucrose. Id. In the Answer, the Examiner acknowledges that Riess does not include sucrose as one of the listed sweeteners, but finds sucrose “would be ‘at once envisaged’ for use when a reference teaches the inclusion of a sweetener due to the extremely widespread prevalence of sucrose (i.e., sugar) in food products.” Ans. 11 (quoting MPEP 2131.01 III). According to Appellant, the Examiner erred in rejecting the claims as anticipated by Riess because picking and choosing certain components, specifically naringenin and sucrose, from Riess’ various lists and generic teachings is not appropriate in an anticipation analysis. Appeal Br. 5-6. Appellant’s position is that Riess discloses sucrose “as one of many different types of optional, ‘conventional basic material’” and does not identify sucrose as a required component. Id. at 6. Appellant acknowledges that Riess discloses naringenin as an option for Riess’ required component (ii), and points out that Riess discloses naringenin “as one of many different ‘bitter-masking aroma substances.’” Id. Appellant also contends the ratios set forth by Riess do not correspond to the claimed ratios, which the Examiner manipulates. Id. at 7-8. Appellant asserts Riess does not disclose the claimed compositions because Riess’ examples only overlap with respect to the phoretin contents and not the naringenin or sucrose content. Id. at 9. We agree with Appellant that Riess explicitly discloses sucrose as an optional component rather than a required sweetener component to be Appeal 2022-000582 Application 15/780,346 5 combined with phloretin and naringenin. Compare Riess ¶ 117, with Riess ¶ 12. “[T]he examiner bears the initial burden, on review of the prior art or on any other ground, of presenting a prima facie case of unpatentability.” In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). “[A]nticipation of a claim under § 102 can be found only if the prior art reference discloses every element of the claim . . . .” In re King, 801 F.2d 1324, 1326 (Fed. Cir. 1986) (citing Lindemann Maschinenfabrik GMBH v. Am. Hoist & Derrick Co., 730 F.2d 1452, 1457 (Fed. Cir. 1984)). “[A]bsence from the reference of any claimed element negates anticipation.” Kloster Speedsteel AB v. Crucible Inc., 793 F.2d 1565, 1571 (Fed. Cir. 1986). The preponderance of the evidence does not support the Examiner’s finding that Reiss discloses a composition consisting of or comprising sucrose together with phloretin and naringenin. For a reference to be said to anticipate a claim, it must clearly and unequivocally disclose the claimed [product] or direct those skilled in the art to the [product] without any need for picking, choosing, and combining various disclosures not directly related to each other by the teachings of the cited reference. Such picking and choosing may be entirely proper in the making of a 103, obviousness rejection, where the applicant must be afforded an opportunity to rebut with objective evidence any inference of obviousness which may arise from the similarity of the subject matter which he claims to the prior art, but it has no place in the making of a 102, anticipation rejection. In re Arkley, 455 F.2d 586, 587-88 (CCPA 1972) (cited with approval in NetMoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed Cir. 2008)). Riess’ product optionally includes sucrose as a conventional basic material, inactive substance, or additive. Riess ¶ 117. As such, Riess does not unequivocally disclose sucrose as a sweetener to be combined with phloretin Appeal 2022-000582 Application 15/780,346 6 and naringenin as required by each of the claims. While sucrose may be an obvious choice as a sweetener, the selection of sucrose from Riess’ disclosure for that purpose is not appropriate for an anticipation rejection. Accordingly, we reverse the Examiner’s anticipation rejection of claims 32, 36, and 39-43 under 35 U.S.C. § 102(a)(1) for the above reasons. Obviousness over Riess The Examiner rejects claims 32, 36, and 39-43 under 35 U.S.C. § 103 over Reiss. Regarding independent claims 32 and 36, the Examiner finds Riess discloses a mixture having overlapping ranges for phloretin, naringenin, and a “sweet substance” as discussed above in connection with the anticipation rejection. Final Act. 4-7. The Examiner finds Riess’ disclosure of one or more sweeteners combined with Riess’ disclosure of preferred sweeteners suggests sucrose, which is known to be a sweetener, as the sweetener in Riess’ mixture. Id. at 5, 6. Appellant contends the Examiner has not set forth a prima facie case of obviousness for the same reasons that anticipation has not been shown. Appeal Br. 10. We do not agree. Appellant does not dispute that Riess discloses a composition for reducing or suppressing unpleasant taste impressions that require three components (i) a sweetener, (ii) a bitter- masking substance, and (iii) a sweetness intensifying substance. Appeal Br. generally; Riess ¶¶ 12, 16, 25. Appellant does not dispute that sucrose is a known sweetener. Appeal Br. generally; Ans. 6. Nor does Appellant dispute that Riess’ list of sweeteners for required component (i) are explicitly characterized as preferred sweeteners. Id.; see Riess ¶ 12 (“ii) one or more sweeteners . . . preferably selected from the group comprising . . . .”). Thus, Appeal 2022-000582 Application 15/780,346 7 Riess discloses each of the components required by independent claims 32 and 36 by their specific function and their chemical identity as the Examiner finds, rendering the selection of sucrose, naringenin, and phloretin for Riess’ composition prima facie obvious. Riess also discloses amounts of these three components in the mixture, which amounts overlap the ranges recited in independent claims 32 and 36. Final Act. 3-6; Ans. 3-7. “In cases involving overlapping ranges, . . . even a slight overlap in range establishes a prima facie case of obviousness.” In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003). Regarding the ratios between the components recited in claim 32, Appellant does not respond to the Examiner’s determination that the claimed ratios depend on the actual concentrations of the three components in the composition. Ans. 12. Thus, the Examiner’s determination that claim 32’s recited ratios overlap with Riess’ disclosed ratios in terms of the relative component concentrations is supported by the preponderance of the evidence in the cited Appeal record. Having identified the pertinent disclosures, the Examiner has established a prima facie case of obviousness of the rejected claims over Riess. Once a prima facie case of unpatentability has been established as the Examiner has done on the cited record in this Appeal, Appellant may introduce evidence and arguments to counter the prima facie case. Obviousness is then determined on the basis of the evidence as a whole and the relative persuasiveness of the arguments. Oetiker, 977 F.2d at 1445. Appellant asserts unexpected results have been established by the Declaration of Jakob Ley, one of the named inventors. Appeal Br. 10. Whether an invention has produced unexpected results is a question of fact. Appeal 2022-000582 Application 15/780,346 8 In re Mayne, 104 F.3d 1339, 1343 (Fed. Cir. 1997). “[T]here is no hard-and- fast rule for determining whether evidence of unexpected results is sufficient to rebut a prima facie case of obviousness.” Kao Corp. v. Unilever U.S., Inc., 441 F.3d 963, 970 (Fed. Cir. 2006); see also In re Dillon, 919 F.2d 688, 692- 93 (Fed. Cir. 1990) (“[e]ach situation must be considered on its own facts.”). However, a party asserting unexpected results as evidence of nonobviousness has the burden of proving that the results are unexpected. In re Geisler, 116 F.3d 1465, 1469-70 (Fed. Cir. 1997). “[I]t is not enough to show that results are obtained which differ from those obtained in the prior art: that difference must be shown to be an unexpected difference.” In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). Moreover, “when an inventor tries to distinguish his claims from the prior art by introducing evidence of unexpected ‘synergistic’ properties, the evidence should at least demonstrate ‘an effect greater than the sum of the several effects taken separately.’” Merck & Co., Inc. v. Biocraft Lab., Inc., 874 F.2d 804, 808 (Fed. Cir. 1989). According to Appellant, the Ley Declaration shows the combination of phloretin and naringenin improves sweetness “by a significant amount.” Appeal Br. 10 (citing Ley Decl. ¶ 9; Spec. ¶ 12). Appellant’s underlying data and conclusion are based on “nine experienced testers [who] evaluated the [below] compositions on a scale from (1) low to (6) high.” Appeal Br. 11. Appeal 2022-000582 Application 15/780,346 9 The above Table is reproduced from paragraph 10 of the Ley Declaration and shows results of various compositions. According to Appellant, only the bolded values marked with an asterisk in the table above “show a statistically significant difference compared to the control base.” Id. at 12. Appellant’s control base (composition C) is described as “a simple 5% sugar (sucrose) solution.” Id. Appellant states the difference in sweetness between composition C, on the one hand, and comparative compositions V1 and V2 which also contain phloretin, on the other, shows that phloretin increases both sweetness onset and intensity. Id. (citing Ley Decl. ¶ 11). The table above highlights in bold and with asterisks that the addition of 30 ppm phloretin increased bitterness and astringency as rated by the testers. Id. According to Appellant, the “significant and surprising” findings illustrated by the table is with respect to inventive composition 2 compared to composition V2 because both bitterness and astringency were reduced with the addition of 30 ppm naringenin. Id. As the Examiner notes, however, this conclusion is based on a single data point because composition 1 increased bitterness and astringency compared to composition V1, which does not include naringenin. Ans. 16-17. This contradicts Appellant’s assertion that Appeal 2022-000582 Application 15/780,346 10 “[r]egardless of the amounts of phloretin and naringenin used, the data show an improvement in sweetness and a reduction in bitterness and astringency.” Appeal Br. 13; Ans. 17. This single data point also does not address the breadth of the claims including the ends of ranges and unequal proportions of phloretin and naringenin. Ans. 15-16. Appellant submits the following table from paragraph 12 of the Ley Declaration quantifying sweetness enhancement by 100 ppm naringenin alone on a 5% sucrose solution as measured by a “group of expert tasters” using a scale of 0 (not sweet) to 10 (extremely sweet). Appeal Br. 12. The above Table is reproduced from paragraph 12 of the Ley Declaration and shows results of sucrose solutions with and without naringenin. Appellant’s measured enhancement of sweetness of 7.5% with the addition of naringenin alone is asserted to be “slight and not statistically significant.” Id. at 12 (citing Ley Decl. ¶ 13). Appellant does not indicate any effect of naringenin alone on bitterness or astringency. Nor does Appellant explain how the combination of phloretin and naringenin affects the sweetness, bitterness, or astringency characteristics of the 5% sucrose solution relative to the sum of the several effects taken separately. The Ley Declaration concludes that the improvement in sweetness and reduction in bitterness and astringency “are not unique to the specific amounts of phloretin, naringenin, and sweetener (such as sucrose) used to generate the data.” Lay Decl. ¶ 14. As noted above, however, the data presented shows an Appeal 2022-000582 Application 15/780,346 11 improvement in the reduction in bitterness and astringency only with the 30 ppm naringenin composition 2 and not the 15 ppm naringenin composition 1. The burden of establishing that unexpected results support a conclusion of nonobviousness rests with Appellant. In re Huang, 100 F.3d 135, 139 (Fed. Cir. 1996). “[W]hen unexpected results are used as evidence of nonobviousness, the results must be shown to be unexpected compared with the closest prior art.” In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991). “[I]t is not enough to show that results are obtained which differ from those obtained in the prior art: that difference must be shown to be an unexpected difference.” In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). Additionally, the relied-upon results must be commensurate in scope with the claims. See In re Peterson, 315 F.3d 1325, 1329-31 (Fed. Cir. 2003). “Establishing that one (or a small number of) species gives unexpected results is inadequate proof, for ‘it is the view of [the CCPA] that objective evidence of non-obviousness must be commensurate in scope with the claims which the evidence is offered to support.’” See In re Greenfield, 571 F.2d 1185, 1189 (CCPA 1978) (quoting In re Tiffin, 448 F.2d 791, 792 (CCPA 1971)). Appellant’s objective evidence is insufficient to establish an unexpected result because it fails to explain what would have been expected from the prior art composition containing phloretin and naringenin in combination with a sweetener such as sucrose. As the Examiner points out, the effects of naringenin and phloretin cannot be said to be surprising in view of Riess’ disclosures that naringenin is a bitter-masking aroma substance and phloretin is an aroma composition that may be a sweetness Appeal 2022-000582 Application 15/780,346 12 intensifying aroma substance. Ans. 15; Riess ¶¶ 16, 25, 27, 32, 39. Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1371 (Fed. Cir. 2007) (“[A]ny superior property must be unexpected to be considered as evidence of non- obviousness.” (emphasis in original)). Appellant’s objective evidence also is insufficient to establish unexpected results because the data does not support the asserted benefits of the combination irrespective of amounts. Neither the Lay Declaration nor the Appeal Brief address the comparative performance of composition 2 containing 30 ppm phloretin and 30 ppm R/S-naringenin, which performs better than composition 1 containing 15 ppm phloretin and 15 ppm R/S- naringenin and contradicts the conclusion that the unexpected result is not dependent on the specific amounts of phloretin, naringenin, and sweetener. Appellant’s objective evidence also is insufficient to establish an unexpected result because it fails to explain how the limited data supports a trend let alone the full scope of independent claims 32 and 36. Appellant does not respond to the Examiner’s observation that a 5% sweetener solution presumably includes water which is not permitted by claim 32’s “consisting of” transitional phrase. Ans. 16. Thus, the data is outside of the scope of claim 32. Appellant also does not respond to the Examiner’s observation that Appellant’s evidence excludes flavoring in the compositions, yet the claimed compositions permit up to 97% (claim 32) and up to 99.998% (claim 36) flavoring content which would be expected to overwhelm any taste attributes from phloretin and/or naringenin. Ans. 15-16. The Lay Declaration likewise does not address what would have been expected from the combination of phloretin, naringenin, and sweetener both with and without the flavoring content encompassed by independent claims 32 and 36. Appeal 2022-000582 Application 15/780,346 13 Accordingly, we do not accord significant weight to the conclusion in the Lay Declaration because it lacks adequate support. See In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) (“[T]he Board is entitled to weigh the declarations and conclude that the lack of factual corroboration warrants discounting the opinions expressed in the declarations.”); Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985) (“Lack of factual support for expert opinion going to factual determinations . . . may render the testimony of little probative value in a validity determination.”); In re Brandstadter, 484 F.2d 1395, 1406 (CCPA 1973) (affidavits reciting conclusions and few facts to buttress said conclusions fail in their purpose). Appellant’s assertion that dependent claims 39-43 are not argued together with independent claims 32 and 36 is not persuasive of error because Appellant merely paraphrases the limitations of the claims. Appeal Br. 14. This is insufficient to state an issue for appeal. See 37 C.F.R. § 41.37(c)(iv) (requiring, for each argument, “the basis therefor, with citations of the statutes, regulations, authorities, and parts of the record relied on” and further requiring that the “arguments shall explain why the examiner erred as to each ground of rejection”); see also In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011). Accordingly, after considering all of Appellant’s arguments and evidence including Appellant’s objective evidence, we affirm the rejection of claims 32, 36, and 39-43 under 35 U.S.C. § 103 over Riess for the reasons discussed above and those provided in the Final Action and Answer. Appeal 2022-000582 Application 15/780,346 14 Summary In summary, we reverse the Examiner rejection of claims 32, 36, and 39-43 under 35 U.S.C. § 102(a)(1) and affirm the Examiner’s rejection of claims 32, 36, and 39-43 under 35 U.S.C. § 103 for the above reasons. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 32, 36, 39-43 102(a)(1) Riess 32, 36, 39-43 32, 36, 39-43 103 Riess 32, 36, 39-43 Overall Outcome 32, 36, 39-43 TIME PERIOD FOR RESPONSE 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