Altria Client Services Inc.

Patent Trials and Appeals Board

Aug 20, 2020

2019002829 (P.T.A.B. Aug. 20, 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.
14/207,104 03/12/2014 Pauline Marcq 1021238-001805 3009
145992 7590 08/20/2020
ALCS Law Dept. - Product and IP c/o
BUCHANAN, INGERSOLL & ROONEY PC
POST OFFICE BOX 1404
ALEXANDRIA, VA 22313-1404
EXAMINER
GEORGE, PATRICIA ANN
ART UNIT PAPER NUMBER
1793
NOTIFICATION DATE DELIVERY MODE
08/20/2020 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):
ADIPDOC1@BIPC.com
jane.fallgren@bipc.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
_________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte PAULINE MARCQ,
GERD KOBAL, and MARIA GOGOVA
__________

Appeal 2019-002829
Application 14/207,104
Technology Center 1700
___________

Before ADRIENE LEPIANE HANLON, LINDA M. GAUDETTE, and
JAMES C. HOUSEL, Administrative Patent Judges.

HANLON, Administrative Patent Judge.

DECISION ON APPEAL

A. STATEMENT OF THE CASE
The Appellant1 filed an appeal under 35 U.S.C. § 134(a) from an Examiner’s
decision finally rejecting claims 1, 3–20, and 22. 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 the real party in interest as Altria Client Services LLC.
Appeal Brief dated August 30, 2018 (“App. Br.”), at 2.
Appeal 2019-002829
Application 14/207,104

2

The claims on appeal are directed to a composition for human consumption,
such as a food or beverage, which does not include carboxamide cooling agents.
The Appellant discloses sensory technologies that are said to mask
undesirable flavors, such as the bitter taste of caffeine, and create superior flavor
profiles in beverages and food products. Spec. ¶ 7–8. More specifically, the
Appellant discloses “sensory technologies that reduce, modify, or eliminate the
bitter flavor or off-note flavors associated with functional ingredients through the
presence of trigeminal sensation eliciting compounds/ingredients, referred to . . . as
sensates.” Spec. ¶ 8. “The best-characterized examples of chemically-induced
trigeminal sensation . . . are the pungency, warming, or burning sensations
produced by chili pepper or ethanol; the cooling produced by menthol; and the
tingling and prickling sensations produced by carbonation.” Spec. ¶ 9.
Representative claim 1 is reproduced below from the Claims Appendix to
the Appeal Brief. The limitation at issue is italicized.
1. A composition for human consumption comprising:
a predetermined quantity of a base composition;
caffeine in an amount of about 20mg to about 200 mg;
and
one or more sensates,
wherein the one or more sensates comprise about 0.1 to about
5% by weight based on the weight of the composition, and are
effective in reducing the bitterness of the caffeine,
wherein the one or more sensates is selected from the list
consisting of menthol and its stereoisomers, menthone glycerol ketal,
(-)-menthyl lactate, 3-(1-menthoxy)propane-1,2-diol, and peppermint,
and
wherein said composition does not include carboxamide
cooling agents.
App. Br. 12.
Appeal 2019-002829
Application 14/207,104

3

The Examiner maintains the following grounds of rejection on appeal:
(1) claims 1, 3–14, 16, 18–20, and 22 under 35 U.S.C. § 103(a) as
unpatentable over Luo et al.2 in view of CSPI;3
(2) claim 15 under 35 U.S.C. § 103(a) as unpatentable over Luo in view
of CSPI, further in view of Gudas et al.;4 and
(3) claim 17 under 35 U.S.C. § 103(a) as unpatentable over Luo in view
of CSPI, further in view of TFG.5
B. DISCUSSION
The Examiner finds Luo teaches a food composition as claimed wherein
carboxamide cooling agents are optional.6 Final Act. 4 (citing Luo ¶ 20); id. 7
(finding that paragraph 20 of Luo discloses non-carboxamide cooling agents). For
support, the Examiner relies on Luo’s Abstract which is said to state that “[e]dible
compositions, including chewing gums, confectioneries, and beverages, include
particular cooling agents that may be used alone, in combination with each other,
or in combination with other cooling agents.” Pre-Appeal Brief Review 2;8 Ans.
13.9 The Examiner finds that “[t]his is an explicit teaching that the cooling agents

2 US 2011/0159141 A1, published June 30, 2011 (“Luo”).
3 Caffeine Content of Foods and Drugs,
http://web.archive.org/web/19980124040618/http://www.cspinet.org/new/cafchart.
htm (last visited May 27, 2015) (“CPSI”).
4 US 6,165,516, issued December 26, 2000 (“Gudas”).
5 Energy Shots: Are they healthy?,
http://foodguru802.blogspot.com/2012/02/energy-shots-are-they-healthy.html
(“TFG”).
6 The Examiner relies on CSPI to show that the claimed amount of caffeine would
have been obvious to one of ordinary skill in the art. Final Act. 3.
7 Final Office Action dated March 15, 2018.
8 Notice of Panel Decision from Pre-Appeal Brief Review dated July 30, 2018.
9 Examiner’s Answer dated December 21, 2018.
Appeal 2019-002829
Application 14/207,104

4

in this reference may be used alone, which means that when the non-carboxamide
cooling agents taught [are] selected for use, alone, the composition does not
include carboxamide cooling agents.” Pre-Appeal Brief Review 2; Ans. 14.
The Appellant, on the other hand, argues that the use of carboxamide
cooling agents in Luo is not optional. App. Br. 8. More specifically, the Appellant
argues that each confectionery or beverage disclosed in Luo requires a
carboxamide compound represented by the following chemical structure. App. Br.
7 (citing Luo ¶ 5); see also App. Br. 8 (citing Luo ¶¶ 7, 21, 69, 112, 114).

The depicted chemical structure is
a carboxamide compound.
The Appellant’s argument is supported by the record. Luo discloses that
many confectionery products, especially breath freshening confectionery products,
are mint-flavored and contain moderate to high levels of menthol. Luo ¶ 1.
According to Luo, “there are disadvantages associated with using menthol,
including its strong minty odor and the harsh notes it imparts to some
compositions.” Luo ¶ 1. Luo discloses that a need exists for non-menthol cooling
compositions that can be used in confectionery and beverage compositions, either
with a reduced menthol amount or no menthol at all. Luo ¶ 4.
Luo discloses that “[t]he present inventor has found that particular cooling
agents are effective to partially or fully replace menthol in confectioneries and
beverages.” Luo ¶ 14 (emphasis added). Luo discloses that the chemical structure
Appeal 2019-002829
Application 14/207,104

5

of those particular cooling agents is identified below (Luo ¶¶ 14, 17; see also Luo
¶¶ 69, 112).

The depicted chemical structure is
a carboxamide compound.
Luo discloses that in some embodiments, a second cooling agent may be
used. Luo ¶ 20. In contrast to the first, carboxamide cooling agent, the second
cooling agent includes both carboxamide cooling agents and non-carboxamide
cooling agents, such as menthol.10 Luo ¶¶ 20, 71, 115; see also App. Br. 9
(contending that paragraph 20 of Luo “is directed to the use of an optional second
cooling agent, which include[s] both carboxamide cooling agents and non-
carboxamide cooling agents” (original emphasis omitted)).
Based on the Luo disclosure as a whole, we find that the “particular cooling
agents that may be used alone” (Abstract; see also Luo ¶ 14) are the carboxamide
cooling agents represented by the chemical structure reproduced above and the
“other cooling agents” that may be used in combination with the “particular
cooling agents” (Abstract) are the optional, second cooling agents which include
non-carboxamide cooling agents. See Reply Br. 6–7.11

10 Describing menthol as an optional, second cooling agent is consistent with Luo’s
objective of eliminating or reducing the amount of menthol in confectionery and
beverage compositions. See Luo ¶¶ 4, 14.
11 Reply Brief dated February 21, 2019.
Appeal 2019-002829
Application 14/207,104

6

The Examiner states that Chemist Changqing Li from the Scientific and
Technical Information Center (STIC) research department at the United States
Patent and Trademark Office provided a second opinion regarding the
interpretation of Luo. Final Act. 12. According to the Examiner, “Chemist Li
stated that the Luo reference clearly provides that the optional cooling agents to be
used include several non-carboxamides [0020].” Final Act. 12 (emphasis added).
Chemist Li’s statement is not inconsistent with our findings identified above.
“Even assuming the comments by Chemist Li are accurate,” the Appellant
correctly explains that “they do not address the matter at hand, which is whether
the compositions of Luo require a carboxamide cooling agent.” App. Br. 9. In that
regard, Chemist Li’s statement only relates to Luo’s optional, second cooling
agent, not Luo’s first, carboxamide cooling agent. Luo ¶¶ 14, 20.
Based on the foregoing, a preponderance of the evidence of record does not
support the Examiner’s finding that carboxamide cooling agents are optional in the
confectionery and beverage compositions described in Luo.12 Therefore, the
obviousness rejections on appeal are not sustained.
C. CONCLUSION
The Examiner’s decision is reversed.
In summary:

12 The Examiner relies on Gudas to show that the encapsulated caffeine complex
recited in claim 15 would have been obvious to one of ordinary skill in the art.
Final Act. 8. The Examiner relies on TFG to show that the volume of the energy
shot recited in claim 17 would have been obvious to one of ordinary skill in the art.
Final Act. 9.
Appeal 2019-002829
Application 14/207,104

7

Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 3–14, 16,
18–20, 22
103(a) Luo, CSPI 1, 3–14, 16,
18–20, 22
15 103(a) Luo, CSPI, Gudas 15
17 103(a) Luo, CSPI, TFG 17
Overall
Outcome
1, 3–20, 22

REVERSED