ABBOTT LABORATORIES

Patent Trials and Appeals Board

Dec 31, 2020

2020000480 (P.T.A.B. Dec. 31, 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.
14/979,717 12/28/2015 TIMOTHY CHAPMAN 12462USO1 (206856) 2322
139559 7590 12/31/2020
Porter Wright Morris & Arthur LLP
41 South High Street
Columbus, OH 45215
EXAMINER
GEORGE, PATRICIA ANN
ART UNIT PAPER NUMBER
1793
NOTIFICATION DATE DELIVERY MODE
12/31/2020 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):
AN_Patent_Docketing@abbott.com
ipdocket@porterwright.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TIMOTHY CHAPMAN, KELLEY LOWE, and
NORMANELLA DEWILLE
Appeal 2020-000480
Application 14/979,717
Technology Center 1700
Before JAMES C. HOUSEL, N. WHITNEY WILSON, and
DEBRA L. DENNETT, Administrative Patent Judges.
HOUSEL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–15, 17–22, 24–29, and 31–39.2 We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies Abbott Laboratories as the real party
in interest. Appeal Brief (“Appeal Br.”) filed July 10, 2019, 1.
2 Although the Final Office Action, page 1, indicates that claims 37 and 38
have been withdrawn from consideration, this Office Action includes two
separate rejections of these claims, one of which is before us on appeal. See
Final Act. 2, 13–15.
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Application 14/979,717

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CLAIMED SUBJECT MATTER
The invention relates to substantially clear nutritional liquids having
improved sensory characteristics, particularly to acidic nutritional
compositions. Specification (“Spec.”) filed December 28, 2015, Title and ¶
2.3 Appellant discloses that individuals prefer clear nutritional supplements
because they provide a thin, good-tasting, and refreshing means of
supplementing energy, protein, vitamins, and minerals. Id. ¶ 3. However,
Appellant notes that conventional clear supplements often have undesirable
sensory characteristics, including off-notes in aroma and flavor, e.g.,
metallic aftertaste, due to the combination of vitamins and minerals, and
sour taste, mouth irritation, and throat catch due to acidulants. Id. ¶ 4.
Appellant discloses a clear acidic liquid supplement that exhibits improved
sensory characteristics, wherein the supplement includes malic acid, but is
substantially free of vitamin C. Id. ¶ 6.
Claim 1, reproduced below from the Claims Appendix to the Appeal
Brief, is illustrative of the claimed subject matter:
1. A liquid nutritional composition comprising:
at least one source of protein;
at least one vitamin;
at least one mineral;
malic acid; and
folic acid;
wherein a total protein content is 1 wt% to 10 wt%, by
weight of said liquid nutritional composition;
wherein said liquid nutritional composition:
is substantially free of fat,
is free of vitamin C,
has a pH of less than or equal to 4.6, and

3 This Decision also cites to the Examiner’s Answer (“Ans.”) dated August
22, 2019, and the Reply Brief (“Reply Br.”) filed October 22, 2019.
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is substantially clear; and
wherein a concentration of the malic acid exceeds a
concentration of the folic acid in the liquid nutritional
composition.
Claim 29, the remaining independent claim, recites a similar liquid
nutritional composition as claim 1, and further including a hydrocolloid.
REFERENCES
The Examiner relies on the following prior art:
Name Reference Date
Liebrecht et al.
(“Liebrecht”)
US 5,641,531 June 24, 1997
Yang US 2003/0099753 A1 May 29, 2003
Parente et al.
(“Parente”)
US 2005/0123650 A1 June 9, 2005
Taormina et al.
(“Taormina”)
US 2007/0264401 A1 Nov. 15, 2007
Mellema et al.
(“Mellema”)
US 2008/0268102 A1 Oct. 30, 2008
Ragnarsson et al.
(“Ragnarsson”)
US 2012/0114819 A1 May 10, 2012
(“FAO”) Chapter 4. Folate and Folic Acid,
Human Vitamin and Mineral
Requirements: Report of a Joint
FAO/WHO Consultation, Bangkok,
Thailand,
https://web.archive.org/web/20031126
110224/http://www.fao.org/docrep/00
4/Y2809E/y2809e0a.htm.
Nov. 26, 2003

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REJECTIONS
The Examiner maintains, and Appellant requests our review of, the
following rejections under 35 U.S.C. § 103:4
1. Claims 1–6, 8–15, 17–21, 24, 25, 27–29, 31, and 33–36 as
unpatentable over Yang as evidenced by FAO;
2. Claims 7, 26, and 32 as unpatentable over Yang as
evidenced by FAO, and further in view of Taormina;
3. Claims 22 and 39 as unpatentable over Yang as evidenced
by FAO, and further in view of Taormina and Liebrecht; and
4. Claims 37 and 38 as unpatentable over Yang as evidenced
by FAO, and further in view of Mellema, Parente, and
Ragnarsson.
OPINION
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 considering the
argued claims and each of Appellant’s arguments, we are not persuaded of
reversible error in the Examiner’s obviousness rejections. Therefore, we
affirm the stated rejections for substantially the fact findings, reasoning, and
conclusion of obviousness set forth in the Examiner’s Answer, which we
adopt as our own. We offer the following for emphasis only.

4 The Examiner has withdrawn a rejection of claims 37 and 38 under
35 U.S.C. § 112(b). Ans. 3. As such, this rejection is not before us on appeal.
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For purposes of this appeal, to the extent that the claims on appeal are
separately argued, we will address them separately consistent with
37 C.F.R. § 41.37(c)(1)(iv) (2018).
Rejection 1: Obviousness of claims 1–6, 8–15, 17–21, 24, 25, 27–29, 31, and
33–36
Claims 1–6, 8–15, 17–21, 24, 25, 27, 29, and 33–36
Appellant argues claims 1 and 29 together. We, therefore, select claim
1 as representative; claims 2–6, 8–15, 17–21, 24, 25, 27, 29, and 33–36
stand or fall with claim 1.
The Examiner finds that Yang teaches a clear liquid nutritional
composition as recited in claim 1 having a pH less than 4.0 and including up
to 10 wt% protein, at least one vitamin, at least one mineral, and malic acid.
Ans. 4–5. The Examiner finds that Yang lists folic acid as one of the
vitamins that may be included in the composition and teaches an amount of
80 mg, as an example. Id. at 5–6. In addition, the Examiner finds that Yang
provides that the amount of edible acids is from about 0.10–3 wt%, of which
up to 50 wt% may be malic acid. Id. at 6. Therefore, the Examiner finds that
the concentration of malic acid exceeds that of folic acid in the composition.
Id. Because Yang does not teach the use of fats or lipids in the composition,
and does not include such in any of the example compositions, the Examiner
finds that Yang’s composition is fat-free. Id. Further, the Examiner finds that
Yang teaches that the use of vitamin C is optional and, therefore, concludes
that it would have been obvious to omit vitamin C from Yang’s
composition. Id.
Appellant argues that Yang fails to teach liquid nutritional
compositions that contain malic and folic acids, but does not contain vitamin
C. Appeal Br. 9. Appellant asserts that because Yang teaches use of vitamin
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premixes containing both vitamin C and folic acid, Yang fails to teach or
suggest specifically omitting vitamin C in a composition with malic and
folic acids. Id. Appellant also asserts that Yang teaches that malic acid can
lead to undesirable viscosity in the composition. Id. Therefore, Appellant
contends that, in the absence of hindsight, an ordinary artisan would have no
apparent reason to modify Yang to arrive at the liquid nutritional
composition of claim 1, containing malic and folic acids, but lacking vitamin
C. Id. at 11.
Appellant’s arguments are not persuasive of reversible error because
they fail to account for the entirety of Yang’s teaching which, as the
Examiner finds, encompasses the claimed invention. In re Shuman, 361 F.2d
1008, 1012 (1966) (references must be evaluated by ascertaining the facts
fairly disclosed therein as a whole). Prior art references are available for all
they fairly teach or suggest. In re Merck & Co., 800 F.2d 1091, 1097 (Fed.
Cir. 1986); accord Nat’l Steel Car, Ltd. v. Canadian Pac. Ry., Ltd., 357 F.3d
1319, 1336-37 (Fed. Cir. 2004). In addition, although Appellant focuses on
Yang’s use of vitamin premixes in the examples, Yang is not limited to its
examples. See Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed.
Cir. 1989) (“[A]ll disclosures of the prior art, including unpreferred
embodiments, must be considered.” (quoting In re Lamberti, 545 F.2d 747,
750 (CCPA 1976))); In re Fracalossi, 681 F.2d 792, 794 n.1 (CCPA 1982)
(explaining that a prior art reference’s disclosure is not limited to its
examples). As the Examiner correctly finds, Yang teaches that the liquid
nutritional composition may include, among other things, one or more
vitamins. Yang ¶ 13.
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Given Yang’s teaching, the Examiner’s conclusion that it would have
been obvious to one of ordinary skill in the art to include one vitamin, or any
combination of vitamins in the composition, such as folic acid and another
vitamin other than vitamin C, is supported and reasonable, absent a
persuasive showing of unexpected results. Upsher-Smith Labs., Inc. v.
Pamlab, LLC, 412 F.3d 1319 (Fed. Cir. 2005) (optional inclusion of a
component includes compositions that do and do not contain the
component). Moreover, notwithstanding Yang’s teaching that amounts of
malic acid greater than 50 wt% of the edible acids may be undesirable (Yang
¶¶ 30, 80), the Examiner finds, without dispute, that Yang teaches
compositions including concentrations of malic acid greater than that of folic
acid.
Appellant further contends that compositions of claim 1 “surprisingly
have better sensory characteristics than those that contain malic acid, folic
acid, and vitamin C.” Appeal Br. 9, 11. Appellant directs attention to
Specification Examples 2–7 and paragraphs 69 and 70 in this regard. Id. at
11–12.
To the extent that Appellant is asserting unexpected results, this
argument is unpersuasive. In order for a showing of unexpected results to be
probative evidence of non-obviousness, it falls upon Appellant to at least
establish: (1) that there actually is a difference between the results obtained
through the claimed invention and those of the prior art, In re Klosak, 455
F.2d 1077, 1080 (CCPA 1972) (noting that the burden of analyzing and
explaining data to support nonobviousness rests with the appellants); and (2)
that the difference actually obtained would not have been expected by one
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skilled in the art at the time of invention, id.; In re D’Ancicco, 439 F.2d 1244
(CCPA 1971). See also In re Freeman, 474 F.2d 1319, 1324 (CCPA 1973).
Other than directing attention to Examples 2–7 and two paragraphs
from the Specification, Appellant fails to analyze and explain how or why
this information supports nonobviousness. Further, although Appellant
discloses that the removal of only vitamin C from a clear liquid beverage
surprisingly had a significant impact on reduction or elimination of metallic
off-notes in the beverage (Spec. ¶ 69), Appellant previously disclosed that it
was known that the combination of vitamins and minerals may contribute to
such off-notes (id. ¶ 4). Also, only Examples 4 and 6 indicate any reduction
of metallic off-notes (id. at Tables 2A and 2B), and then only “slightly less
metallic.” Such evidence is inconsistent with the statement that removal of
only vitamin C had a significant impact on reduction or elimination of such
metallic off-notes. Finally, we note that claim 1 is very broad in scope,
encompassing compositions with 1–10 wt% protein, at least one vitamin and
mineral, and any amount of malic and folic acids (as long as malic > folic).
Appellant’s disclosed sensory data compares five substantially similar
compositions lacking vitamin C to a single similar composition including
vitamin C. Such data does not permit an assessment as to whether omitting
vitamin C in other compositions within the scope of claim 1, such as
including a single vitamin and mineral, or a significant amount of malic
acid, would likewise produce a “slightly less metallic” result.
Accordingly, we sustain the Examiner’s obviousness rejection of
claims 1–6, 8–15, 17–21, 24, 25, 27, 29, and 33–36.
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Claims 28 and 31
Claim 28 depends from claim 1, and further requires that the
concentration of the malic acid exceeds the concentration of the other
acidulants in the composition. Claim 31, depending from claim 29, recites
the same requirement.
The Examiner finds that Yang provides for the use of multiple edible
acids, including malic acid, citrus acid, and phosphoric acid, wherein the
amount of malic acid is up to 50 wt% of the combination of acids, Yang
encompasses compositions whose concentration of malic acid exceeds that
of the other acids. Ans. 9.
Appellant argues that Yang teaches that when a combination of malic
acid or citrus acid is used with phosphoric acid, the concentration of malic
acid should not exceed 50 % of the combination. Appeal Br. 13. Appellant
urges that the claimed invention shows the surprising benefits of malic acid
exceeding the concentration of all other acidulants in the composition. Id.
This argument is not persuasive of reversible error because Appellant
fails to address the Examiner’s finding, which is based on a combination of
three acids, i.e., malic, citrus, and phosphoric acids, in which the
concentration is up to 50 wt% of the combination of these three acids. In
addition, Appellant fails to direct our attention to any evidentiary support or
persuasive technical reasoning showing any benefits, much less surprising
benefits, of the malic acid concentration exceeding that of all other
acidulants.
Accordingly, we sustain the Examiner’s obviousness rejection of
claims 28 and 31.
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Rejection 2: Obviousness of claims 7, 26, and 32
Claim 7 depends from claim 1, and further requires that the at least
one source of protein comprises casein. Claim 26 (depending from claim 1)
and claim 32 (depending from claim 29) each further requires acetic acid,
fumaric acid, lactic acid, or tartaric acid.
The Examiner acknowledges that Yang fails to teach that the protein
includes casein and that the composition includes one of the recited acids in
claims 26 and 32. Ans. 11. The Examiner finds that Taormina teaches
protein fortified nutritional beverages wherein the composition includes
casein and lactic acid. Id. The Examiner concludes that it would have been
obvious to have included casein and lactic acid in Yang’s composition
because Taormina teaches casein is a suitable source of protein for
nutritional compositions. Id.
Appellant argues Taormina fails to teach or suggest a liquid
nutritional composition containing malic and folic acids, but omitting
vitamin C, and which also contains acetic acid, fumaric acid, lactic acid, or
tartaric acid. Appeal Br. 14. In addition, Appellant argues that Taormina
only mentions casein in a list of many possible proteins and fails to teach or
suggest its use in a liquid nutritional composition containing malic and folic
acids, but omitting vitamin C. Id.
Appellant’s arguments are not persuasive of reversible error because
the rejection does not rely on Taormina to teach or suggest the omission of
vitamin C from a liquid nutritional composition containing malic and folic
acids. Instead, the Examiner finds, without dispute, that Taormina teaches
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11
the use of casein as one known source of protein and the use of lactic acid5
as one of the acidulants in a liquid nutritional composition. Thus, absent
evidence of unexpected (or unpredictable) results, a preponderance of the
evidence supports the Examiner’s conclusion that it would have been
obvious to have included casein and lactic acid in Yang’s liquid nutritional
composition.
Accordingly, we sustain the Examiner’s obviousness rejection of
claims 7, 26, and 32.
Rejection 3: Obviousness of claims 22 and 39
Claim 22 depends from claim 1, and claim 39 depends from claim 29,
and each further requires at least one high intensity sweetener selected from
sucralose, stevia, monk fruit, and acesulfame potassium, and the
composition comprises a caloric density from about 178 kcal to about 346
kcal per 8 ounce serving.
The Examiner acknowledges that Yang fails to teach use of a high
intensity sweetener or the caloric density of 178–346 kcal/8 ounces. Ans. 12.
The Examiner finds that Taormina teaches that a high intensity sweetener,
such as stevia, may be used for a liquid nutritional composition. Id. The
Examiner concludes that it would have been obvious to have included a high
intensity sweetener, such as stevia, in Yang’s liquid nutritional composition
because Taormina suggests its use for similar purposes in liquid nutritional
compositions. Id. The Examiner further finds, without dispute, that Liebrecht
teaches clear liquid nutritional compositions including protein with malic,

5 Indeed, Taormina teaches that any combination of listed acidulants may be
used including malic acid, acetic acid, fumaric acid, lactic acid, and tartaric
acid. Taormina ¶ 59.
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citric, and phosphoric acids, wherein the caloric density is at least 1 kcal/ml
(about 240 kcal/8 ounces). Id. at 13. Thus, the Examiner concludes, without
dispute, that it would have been obvious to provide that Yang’s liquid
nutritional composition has a caloric density of at least about 240 kcal/8
ounces because Liebrecht teaches that it was known to have provided such a
caloric density for similar compositions for a similar purpose. Id.
Appellant argues that an ordinary artisan would not look to Taormina
to modify Yang because Yang is directed to beverage compositions without
additives, stabilizers, or specially processed ingredients. Appeal Br. 16.
Appellant also contends that Yang only teaches “sweetness” in relation to
carbohydrates, and that carbohydrates with a high sweetness factor can lead
to undesirable product characteristics. Id.
These arguments are not persuasive of reversible error. Initially, we
note that the Examiner finds that although Yang teaches additives,
stabilizers, or specially processed ingredients are not desired, Yang is not
clear what these ingredients cover. Ans. 22. The Examiner notes that Yang
includes an antifoam emulsion agent which functions as a stabilizer, as well
as other components as additives. Id. Appellant does not dispute or
otherwise address these findings. Further, Taormina teaches the same
sweeteners as Yang, e.g., sucrose, fructose, and corn syrup, but also
discloses that a liquid nutritional composition may also include non-nutritive
sweeteners including sucralose, stevia, and acesulfame potassium. Taormina
¶ 88. Yang’s discussion regarding undesirable product characteristics is
focused on nutritive sweeteners, rather than non-nutritive sweeteners.
Therefore, a preponderance of the evidence supports the Examiner’s
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conclusion that it would have been obvious to have included one or more
non-nutritive sweeteners in Yang’s liquid nutritional composition.
Accordingly, we sustain the Examiner’s obviousness rejection of
claims 22 and 39.
Rejection 4: Obviousness of claims 37 and 38
Claims 37 and 38, which respectively depend from claim 1 and claim
29, each further requires that the composition includes a combination of
malic, citric, and phosphoric acids, wherein the concentration of malic acid
exceeds that of both citric and phosphoric acids, and the composition has a
viscosity less than 25 cps.
The Examiner finds that Yang teaches that the liquid nutritional
composition may include a combination of malic, citric, and phosphoric
acids, wherein the amount of malic acid may be up to 50 wt% of the
combination. Ans. 9. As such, the Examiner finds that Yang encompasses
compositions whose concentration of malic acid exceeds that of the other
acids. Id.6 The Examiner further finds that Yang teaches that the
composition may have a viscosity less than 40 cps and Ragnarsson teaches a
liquid nutritional composition may have a viscosity from about 1–25 cps,
both of which encompass viscosities less than 25 cps. Id. at 16.
Appellant argues that one skilled in the art would not modify Yang to
have a malic acid concentration greater than that of citric and phosphoric

6 The Examiner relies on Mellema and Parente in support of these prior
findings. See Ans. 14–16. However, as discussed above with regard to
claims 28 and 31, because we find no error in the Examiner’s findings
regarding Yang’s teaching of a combination of malic, citric, and phosphoric
acids, the rejection need not rely on Mellema and Parente. We, therefore,
need not further address Mellema and Parente.
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acids because Yang teaches excessive amounts of malic acid can lead to
undesirable viscosity. Appeal Br. 17. This argument is unpersuasive for the
same reasons given above with regard to the substantially same argument
raised against the rejection of claims 28 and 31.
Appellant further argues that Ragnarsson teaches a composition can
have a viscosity from 1–20,000 cps, and does not suggest modifying Yang to
have a viscosity less than 25 cps. Appeal Br. 18. This argument is
unpersuasive. Yang teaches liquid nutritional compositions having
viscosities less than 40 cps, preferably less than 20 cps, and specifically
teaches example compositions having viscosities less than 25 cps. Yang,
Abstract and ¶¶ 14, 22, 83, 84. Thus, Yang alone supports the Examiner’s
rejection as to the viscosity as recited in claims 37 and 38. Moreover,
Ragnarsson not only discloses that the composition may have a viscosity
from 1–20,000 cps, Ragnarsson further discloses that the viscosity may be a
narrower range of 1–25 cps, consistent with the Examiner’s finding. See
Ragnarsson ¶ 10. Appellant fails to address this teaching of the narrower
range.
Accordingly, we sustain the Examiner’s obviousness rejection of
claims 37 and 38.
CONCLUSION
Upon consideration of the record and for the reasons set forth above
and in the Examiner’s Answer, the Examiner’s decision to reject claims 1–
15, 17–22, 24–29, and 31–39 under 35 U.S.C. § 103 is affirmed.
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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–6, 8–15,
17–21, 24,
25, 27–29,
31, 33–36
103 Yang, FAO 1–6, 8–15,
17–21, 24,
25, 27–29,
31, 33–36

7, 26, 32 103 Yang, FAO,
Taormina
7, 26, 32
22, 39 103 Yang, FAO,
Taormina,
Liebrecht
22, 39
37, 38 103 Yang, FAO,
Mellema, Parente,
Ragnarsson
37, 38
Overall
Outcome
1–15, 17–
22, 24–29,
31–39

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). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED