Ex Parte Coleman et al

Patent Trial and Appeal Board

Aug 6, 2018

12191751 (P.T.A.B. Aug. 6, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/191,751 08/14/2008
26158 7590 08/08/2018
WOMBLE BOND DICKINSON (US) LLP
ATTN: IP DOCKETING
P.O. BOX 7037
ATLANTA, GA 30357-0037
FIRST NAMED INVENTOR
William Monroe Coleman III
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
R60999 1260.1 (0046.4) 1435
EXAMINER
FELTON, MICHAEL J
ART UNIT PAPER NUMBER
1747
NOTIFICATION DATE DELIVERY MODE
08/08/2018 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):
IPDocketing@wbd-us.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL
AND APPEAL BOARD
Ex parte WILLIAM MONROE COLEMAN III and
ANTHONY RICHARD GERARDI
Appeal2017-008042
Application 12/191,751 1
Technology Center 1700
Before MARK NAGUMO, KAREN M. HASTINGS, and
N. WHITNEY WILSON, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1, 3, 6-19, 21, and 43--46 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Gaisch (US 4,537,204, issued Aug. 27,
1985), and Coleman III (US 6,499,489 Bl, issued Dec. 31, 2002). 2
1 The Real Party in Interest is R. J. Reynolds Tobacco Company (Br. 1 ).
2 The Examiner rejects all the claims as unpatentable over Gaisch in view of
Coleman III and then again as unpatentable over Coleman III in view of
Gaisch (Ans. 2-9; Final Action 4--10). Our analysis is directed to both
rejections collectively throughout this Decision. In an earlier related appeal
2013-005016, in a Decision mailed June 17, 2015, this panel affirmed the
Examiner's rejection of similar, albeit broader, claimed subject matter over
the same prior art (e.g., see Br. 13; Ans. 10).
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Application 12/191,751
We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b ).
WE AFFIRM.
Independent claim 1 is illustrative of the claimed subject matter
( emphasis added to highlight key limitations in dispute):
1. A method of purifying a pyrazine-containing aqueous
solution, comprising:
providing an unfermented aqueous solution produced
through a Maillard reaction, the unfermented aqueous solution
comprising a plurality of pyrazines and a first
4-methylimidazole concentration of at least 800 ppm;
distilling the unfermented aqueous solution to produce an
aqueous distillate comprising a plurality of pyrazines and a
second 4-methylimidazole concentration lower than the first
4-methylimidazole concentration, the distilling step comprising
heating the unfermented aqueous solution to boiling
temperature at atmospheric pressure or below; and
collecting the aqueous distillate, wherein the aqueous
distillate comprises about 20% to about 70% of the volume of
the unfermented aqueous solution subjected to distillation and
wherein the 4-methylimidazole concentration of the aqueous
distillate is less than about 20 ppm and the aqueous distillate
has a total pyrazine content of at least about 10 mg/mL, and
wherein pyrazines having a total number of carbon atoms as
part of alkyl side chains of at least 4 represent at least about
5% of the total pyrazine weight in the aqueous distillate.
Appellants' arguments focus mainly on independent claim 1 (Br. 5-
16). Appellants present additional remarks with respect to claims 43--45 and
claim 46 3 (Br. 16, 17).
3 Appellants' reference to claim 26 (Br. 17) appears to be intended for claim
46, as there is no claim 26 currently pending.
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Application 12/191,751
ANALYSIS
Upon consideration of the evidence on this record and each of
Appellants' contentions, we find that on this record the preponderance of
evidence supports the Examiner's conclusion that the subject matter of
Appellants' claims is unpatentable over the applied prior art. Appellants
have failed to show that the Examiner erred reversibly. Thus, we sustain the
Examiner's§ 103 rejections.
We add the following for emphasis.
Gaisch describes that the aqueous solution of products of a Maillard
reaction may be used to flavor tobacco (Gaisch, e.g., col. 1, 11. 28-40). As
found by the Examiner, Gaisch teaches that the Maillard reaction products
may be unfermented (Ans. 4, 5), and that the flavors may be isolated from
the aqueous product solution by the use of fractional distillation ( Gaisch, col.
3, 11. 53-55; Ans. 4). The Examiner further found that it is well known that
the flavors of the products of a Maillard reaction include pyrazine
compounds, as evidenced by Coleman III (Ans. 5). Appellants also admit in
their Specification that it was known that the products of a Maillard reaction
produce flavorful pyrazines (Spec. 2:19-31). The Examiner further found
that it was inherent that 4-methylimadazole ( 4-MeI) is a product of a
Maillard reaction, because regulatory limits have been suggested on the
4-MeI present in caramel color which is also produced by a Maillard
reaction (Ans. 5). Notably, Appellants have not challenged the Examiner's
finding regarding regulatory limits on the 4-MeI present in caramel color
which is also produced by a Maillard reaction (Br. generally).
The Examiner reasoned that it would have been expected, or that it
naturally follows, that the fractional distillation suggested by Gaisch would
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Application 12/191,751
have resulted in the reduction of the known undesirable 4-MeI compound.
The Examiner pointed out that Appellants do not claim or describe any
specific distillation conditions as necessary for the reduction of 4-MeI (Ans.
11).
Appellants' main argument is that there is no reason to modify either
of Gaisch or Coleman III since they both focus on using the entire Maillard
reaction product on the tobacco, and since there is only a single reference in
Gaisch for treating amino acids that are not isolated ( e.g., Br. 6; see also Br.
generally). They further argue that none of the references explicitly teach
the amounts of 4-MeI and pyrazines recited in the claims (e.g., Br. 7, 10,
11 ). These arguments are not persuasive.
Appellants are in effect arguing that the references teach away from
combining their teachings. Whether the prior art teaches away from the
claimed invention is a question of fact. DyStar Textilfarben GmbH & Co. v.
CH Patrick Co., 464 F.3d 1356, 1360 (Fed. Cir. 2006); In re Harris, 409
F.3d 1339, 1341 (Fed. Cir. 2005) (holding that a reference teaches away
from following a path when a skilled artisan, upon reading the reference,
would be discouraged from that path); cf Para-Ordnance Mfg. v. SGS
Importers Int'!, Inc., 73 F.3d 1085, 1090 (Fed. Cir. 1995) (to teach away, a
reference must state that a feature "should not" or "cannot" be used in
combination with other features in the prior art). 4
4 Our reviewing court has also determined that a reference can distinguish
prior art in order to show the novelty of an invention without teaching away
from combining the prior art with the invention disclosed in the reference.
See Ricoh Co., Ltd. v. Quanta Computer Inc., 550 F.3d 1325, 1332 (Fed.
Cir. 2008).
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As pointed out by the Examiner, since Gaisch expressly teaches that
fractional distillation may be used to isolate the desirable flavors, one of
ordinary skill in the art would have appreciated that fractional "distillation of
the Maillard reaction products [ of Coleman III] by the method of Gaisch et
al. would have produced the same amounts of 4-methylimidazole and other
pyrazines as the instant claimed invention because the reaction and
distillation conditions are the same" (Ans. 5).
Appellants have not provided any credible evidence or persuasive
technical reasoning to refute the Examiner's position that the result of
reduced 4-MeI while retaining desirable pyrazines would have reasonably
resulted from using the fractional distillation suggested in Gaisch on the
products of a Maillard reaction of Coleman III. Notably, Appellants' claims
specify no distillation conditions, and the Specification describes wide
ranges of times and temperatures that may be useful for the Maillard heating
step (e.g., Spec. 4:24-26; Spec. 10:21 to Spec. 11:30). The Specification
does not disclose any unique specific conditions for the distillation step ( e.g.,
Spec. 12: 12-20).
Thus, Appellants have not shown reversible error in the Examiner's
position.
It is proper in evaluating references to take into account not only the
specific teachings of the references but also the inferences which one skilled
in the art would reasonably be expected to draw therefrom. In re Preda, 401
F.2d 825, 826 (CCPA 1968). See also In re Keller, 642 F.2d 413, 425-26
( CCP A 1981) ("The test for obviousness ... is what the combined teachings
of the references would have suggested to those of ordinary skill in the
art."); In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) ("Non-
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obviousness cannot be established by attacking references individually
where the rejection is based upon the teachings of a combination of
references.")
"[O]bviousness does not require absolute predictability of success ...
all that is required is a reasonable expectation of success." In re Kubin, 561
F.3d 1351, 1360 (Fed. Cir. 2009) (emphasis omitted) ( citing In re O 'Farrell,
853 F.2d 894, 903-04 (Fed. Cir. 1988)). As the Supreme Court has noted,
"[t]he combination of familiar elements according to known methods is
likely to be obvious when it does no more than yield predictable results."
KSR Int 'l v. Teleflex Inc., 550 U.S. 398, 416 (2007).
Appellants have not persuaded us that the Examiner erred in
concluding that their claimed combination of familiar elements of fractional
distillation on the aqueous solution of a Maillard reaction known to include
the recited components is such a case of obviousness. Appellants have not
sufficiently refuted the Examiner's position that
fractional distillation is a notoriously well-known technique
involving heating a liquid to produce vapor and recovering
portions ( fractions of the whole) that either boil or condense at
different temperatures. One of ordinary skill would expect that
a reasonable amount of experimentation would be involved in
separating different fractions and testing their flavor or
composition to determine which fractions are useful for
flavoring products. The separation parameters would also likely
vary on the end use of the flavor (i.e. the flavor already present
in the cigarette or oral tobacco product) as well as consumer
desires and regulatory issues (such as limits on 4-Mel).
(Ans. 11).
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Appellants' reliance on the Gerardi Declaration 5 and the unexpected
result of retaining "a substantial majority of desirable pyrazines" while
reducing the undesirable 4-MeI (Br. 13; Spec. 13) (emphasis omitted) is not
persuasive for reasons pointed out by the Examiner (Ans. 11, 12). The
burden of showing unexpected results rests on the person who asserts them,
who must, for example, establish that the difference between the claimed
invention and the closest prior art results in an unexpected difference. See In
re Baxter Travenol Labs., 952 F.2d 388,392 (Fed. Cir. 1991). Because the
unexpected results must be established by factual evidence, mere attorney
statements are insufficient to establish unexpected results. See In re Geisler,
116 F.3d 1465, 1470-71 (Fed. Cir. 1997). Further, a showing of unexpected
result supported by factual evidence must be reasonably commensurate in
scope with the degree of protection sought by the claims on appeal. In re
Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983); In re Clemens, 622 F.2d
1029, 1035 (CCPA 1980).
Claim 1 requires that only 5% of the total pyrazine weight in the
distillate have a total number of carbon atoms of at least 4 carbon atoms as
part of alkyl side chains (presumably desirable pyrazines ). Contrary to
Appellants' alleged unexpected result of retaining "a substantial majority of
desirable pyrazines" (Br. 13) (emphasis omitted), the claims do not appear to
recite that a substantial majority of desirable pyrazines are obtained. It is
well established that limitations not appearing in the claims cannot be relied
5 The Gerardi (inventor) Declaration, filed January 12, 2016, mainly repeats
what is in the Specification, that is, that it was unexpected that when
fractional distillation was used on a Maillard reaction product, a distillate
with reduced 4-MeI while still containing a substantial majority of desirable
pyrazines was obtained (Spec. 13:1-28).
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upon for patentability. In re Self, 671 F.2d 1344, 1348 (CCPA 1982).
Indeed, the Specification describes that the aqueous solution of the invention
can be that generated via any Maillard reaction (Spec. 5:24--30), and
encompasses solutions that include "simple low molecular weight
pyrazines" (Spec. 5:30). Appellants have not presented any persuasive
technical reasoning or credible evidence to refute the Examiner's position
that one of ordinary skill would have indeed expected, using no more than
ordinary creativity in separating different fractions, that processing the same
starting materials (i.e. the Maillard reaction products of Coleman, III) with
the same process (fractional distillation, Gaisch et al.), would produce the
same resulting product with the same compounds and similar relative
amounts (Ans. 5, 8, 11 ).
In addition, we emphasize that, although secondary considerations
such as unexpected results must be taken into account, they do not
necessarily control the obviousness conclusion. Intercontinental Great
Brands (Kraft) v. Kellogg, 869 F.3d 1336, 1345--46 (Fed. Cir. 2017) (there
are some prima facie obviousness cases so strong that they are impossible to
overcome even with the best possible secondary indicia of nonobviousness );
see also Sud-Chemie, Inc. v. Multisorb Technologies, Inc., 554 F.3d 1001,
1009 (Fed. Cir. 2009) ("[E]vidence of unexpected results and other
secondary considerations will not necessarily overcome a strong prima facie
showing of obviousness").
Here, the case of obviousness established by the Examiner is so strong
that when the teachings of the references are weighed against Appellants'
alleged unexpected results, the preponderance of the evidence of record still
weighs in favor of a finding of obviousness.
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Application 12/191,751
To the extent Appellants present additional remarks/arguments with
respect to various other claims, a preponderance of the evidence supports the
Examiner's obviousness determination of the subject matter claimed therein.
Accordingly, we affirm the Examiner's§ 103 rejections based on the
combination of Gaisch and Coleman III.
ORDER
The § 103 rejections on appeal are affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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