Ex Parte Dorr et al

Patent Trial and Appeal Board

Jun 29, 2016

11666701 (P.T.A.B. Jun. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
11/666,701 06/12/2007
27572 7590 07/01/2016
HARNESS, DICKEY & PIERCE, PLC
P.O. BOX 828
BLOOMFIELD HILLS, MI 48303
FIRST NAMED INVENTOR
Tillmann Dorr
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.
2693-000042/US/NP 2552
EXAMINER
STIJLII, VERA
ART UNIT PAPER NUMBER
1791
NOTIFICATION DATE DELIVERY MODE
07/01/2016 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):
troymailroom@hdp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TILLMANN DORR, LUTZ GUDERJAHN,
STEPHAN HAUSMANNS, and JORG KOWALCZYK
Appeal2014-008979
Application 11/666,701
Technology Center 1700
Before ADRIENE LEPIANE HANLON, CATHERINE Q. TIMM, and
JAMES C. HOUSEL, Administrative Patent Judges.
PER CURIAM.
DECISION ON APPEAL 1
Appellants2 filed an appeal under 35 U.S.C. § 134(a) from the
Examiner's decision finally rejecting claims 30, 32-56, 58-69, and 71-76.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Our decision refers to Appellants' Specification (Spec.) filed March 4,
2010, Appellants' Appeal Brief (Appeal Br.) filed March 11, 2014, the
Examiner's Answer (Ans.) mailed June 17, 2014, and Appellants' Reply
Brief (Reply Br.) filed August 18, 2014.
2 Appellants identify the real party in interest as SUDZUCKER
AKTIENGESELLSCHAFT MANNHEIM/OCHSENFURT. Appeal Br. 3.
Appeal2014-008979
Application 11/666,701
STATEMENT OF THE CASE
The subject matter on appeal relates to dry aroma formulations and
methods of producing dry aroma formulations (see, e.g., claims 30, 56, and
59). Appellants disclose that granulated beverages, such as instant tea, often
include sucrose as a carrier. Spec. p. 1, 11. 7-8. However, sucrose leads to
dental damage. Spec. p. 1, 11. 9-11. Instant teas with sucrose substitutes are
known but create other issues, such as the uncontrolled intake of cariogenic
sugars or the continuous supply of isolated proteins. Spec. p. 1, 11. 18-27
and p. 2, 11. 1--4. In view of this, Appellants disclose a dry aroma
formulation that has a strong tooth-preserving effect, a high affinity for
aroma substances, is stable for storage, and has good flow properties and
dosing properties. Spec. p. 4, 11. 22-25 and p. 5, 11. 1-5.
Independent claim 30, reproduced below from the Claims Appendix
to Appellants' Appeal Brief, is illustrative of the subject matter on appeal.
The limitations at issue are italicized.
30. A dry aroma formulation, comprising:
at least one carrier-supported extract;
a tooth-preserving, non-laxative sugar carrier comprising
isomaltulose,
wherein the extract is physically associated with the
carrier by fluidized layer agglomeration, and wherein the dry
aroma formulation comprises 10 to 60 % by weight of the extract
and 40 to 85 % by weight of the isomaltulose, each based on the
dry substance of the dry aroma formulation.
Appeal Br. 18.
The claims on appeal stand rejected as follows:
(1) Claims 30, 32-56, 58-69, and 71-76 under 35 U.S.C. § 103(a)
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Application 11/666,701
as unpatentable over the combination of Dorr,3 Watanabe,4 and Camp;5
(2) claims 30, 32--41, 43--45, 47, 49-56, 58---62, 65, 66, 69, and 71-
75 under 35 U.S.C. § 103(a) as unpatentable over the combination of
Brouns,6 Watanabe, and Camp.
(3) claims 38, 39, 42, 63, and 64 under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Brouns, Watanabe, and Camp and
further in view of Shimizu; 7 and
(4) claims 46, 48, and 67 under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Brouns, Watanabe, and Camp and
further in view of Abraham. 8
ANALYSIS
Rejection under§ 103 over Dorr, Watanabe, and Camp
The Examiner finds Dorr discloses a dry aroma formulation
comprising an extract supported on a carrier, which can be isomaltulose.
Ans. 2. Isomaltulose is present in an amount of greater than or equal to 90
weight percent and the extract is present in an amount of 0.1 to 5 weight
percent. Ans. 3.
The Examiner concludes one of ordinary skill in the art would have
3 Dorr et al., WO 2004/008870 Al, published Jan. 29, 2004. The Examiner
identifies Dorr et al., US 2005/0202145 Al, published Sept. 15, 2005
("Dorr") as an English language equivalent to WO 2004/008870 Al. Ans. 2.
Further references to "Dorr" will be to US 2005/0202145 Al.
4 Watanabe et al., EP 1 023 842 A2, published Aug. 2, 2000 ("Watanabe").
5 Camp et al., US 4,980, 181, issued Dec. 25, 1990 ("Camp").
6 Eichhorn et al., US 4,596,736, issued June 24, 1986 ("Eichhorn").
7 Shimizu et al., EP 1 421 859 Al, published May 26, 2004 ("Shimizu").
8 Abraham et al., US 2005/0112260 Al, published May 26, 2005
("Abraham").
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Application 11/666,701
been motivated to vary the amounts of isomaltulose and extract in the
formulation of Dorr on the basis of desired sweetness and flavor profiles,
with the amounts of isomaltulose and extract being result effective variables
and a matter of choice. Id.
The Examiner finds Dorr does not disclose the physical association of
an extract with a carrier, particularly via agglomeration. Ans. 6. The
Examiner concludes the manner of physical association, i.e. "by fluidized
layer agglomeration," between the carrier and the extract in claim 30 is a
product-by-process limitation. Id. Nevertheless, the Examiner finds
Watanabe demonstrates physical association between an extract and carrier,
such as via a dried composition prepared by vacuum drying, spray drying, or
freeze drying. Ans. 6-7. The Examiner finds Camp discloses agglomerates
made via free-fall, spray drying, spray cooling, or a fluidized bed. Ans. 7.
The Examiner concludes one of ordinary skill in the art would have
modified Dorr in view of Watanabe and Camp to prepare an agglomeration
via either spray drying or a fluidized bed as a substitution of one alternative
conventional technique for another. Id.
Appellants traverse the§ 103(a) rejection of claim 30 by asserting it
would not have been obvious to modify Dorr to include the amount of
extract recited in claim 30 because one of ordinary skill in the art would
have understood such a high amount of extract would behave in an
unpredictable manner. Appeal Br. 8-9 and Reply Br. 2. However,
Appellants do not cite any evidence or provide any technical reasoning to
support this assertion. Therefore, a preponderance of the evidence supports
the Examiners obviousness determination in this regard.
Appellants further contend Dorr teaches away from using
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Application 11/666,701
isomaltulose in an amount of 40 to 85 weight percent, as recited in claim 30,
because Dorr teaches against the use of isomaltulose as a sole sweetener and
because Dorr discloses using isomaltulose in high amounts outside the range
recited in claim 30. Appeal Br. 10-11. Further, the amount of extract
disclosed by Dorr is lower than the amount recited in claim 30. Appeal Br.
11. In view of this, Appellants argue one of ordinary skill would have
lacked a motivation to reduce the amount of isomaltulose and increase the
amount of extract in the formulation of Dorr. Id.
"A reference does not teach away, ... if it merely expresses a general
preference for an alternative invention but does not criticize, discredit, or
otherwise discourage investigation into the invention claimed." Galderma
Labs., L.P. v. Tolmar, Inc., 737 F.3d 731, 738 (Fed. Cir. 2013), cert. denied,
134 S. Ct. 2740 (U.S. 2014). Here, Dorr discloses the use ofisomaltulose in
an amount of greater than or equal to 90 weight percent and extract in an
amount of 0.1 to 5 weight percent9 but does not criticize, discredit, or
otherwise discourage using isomaltulose and extract in the amounts recited
in claim 30. Moreover, Appellants' arguments do not address the
Examiner's determination that amounts of isomaltulose and extract are result
effective variables or address the Examiner's conclusion to modify the
amounts according to individual preference of flavor and sweetness profiles.
Ans. 3.
In addition, as the Examiner finds (Ans. 18), Appellants have not
established criticality or otherwise demonstrated unexpected results for the
amounts of extract and isomaltulose recited in claim 30. Further, with
regard to the argument that Dorr teaches away from the use of isomaltulose
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as a sole sweetener, as the Examiner finds (id.), claim 30 does not exclude
additional sweeteners. Therefore, Appellants' arguments are unpersuasive
of reversible error.
Appellants additionally argue Dorr does not disclose a physical
association between an extract and a carrier. Appeal Br. 1 O; Reply Br. 2.
However, as outlined above, the Examiner finds Watanabe and Camp
disclose a physical association between an extract and a carrier, and the
Examiner's obviousness rejection relies on Watanabe and Camp in this
regard. Ans. 6-7. Therefore, this argument does not address the Examiner's
rejection.
Appellants next assert that it would not have been obvious to modify
Dorr in view of Watanabe and Camp due to differences between these
references. Specifically, Appellants contend Watanabe and Camp do not
relate to a sweetener acting as a carrier for an extract. Appeal Br. 11 and 13.
Appellants further argue Watanabe and Camp use sweeteners that differ
from the isomaltulose of Dorr and that Camp relates to coated agglomerates,
not dry aroma formulations, so there would have been no suggestion or
motivation to modify Dorr in view of Watanabe and Camp. Appeal Br. 12-
13 and Reply Br. 2-3.
The Examiner sets forth a rationale in the rejection for modifying
Dorr in view of Watanabe and Camp. Ans. 7. However, Appellants'
arguments do not address the Examiner's rationale. Moreover, Appellants
list ways the sweeteners of Watanabe and Camp differ from the isomaltulose
of Dorr but do not relate these differences to the Examiner's rejection by
explaining why the differences would have dissuaded one of ordinary skill in
the art from modifying Dorr in view of Watanabe and Camp in the manner
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set forth in the Examiner's rejection.
For the reasons discussed above and for the reasons expressed in the
Answer, the Examiner's§ 103(a) rejection of claim 30 over the combination
of Dorr, Watanabe, and Camp is sustained. Appellants have not advanced
separate arguments for any of claims 32-56, 58---69, and 71-76. Therefore,
the§ 103(a) rejection of claims 30, 32-56, 58---69, and 71-76 is sustained.
Rejection under§ 103 over Brouns, Watanabe, and Camp
The Examiner finds Brouns discloses a dry aroma formulation
including a carrier-supported extract, wherein the carrier is isomaltulose.
Ans. 8. The Examiner determines the amounts of isomaltulose and extract
are result effective variables and concludes it would have been obvious to
modify the amounts of isomaltulose and extract according to desired flavor
and sweetness profiles or as a matter of choice. Ans. 9. The Examiner
further finds Brouns does not disclose a physical association between the
carrier and extract via agglomeration but finds Watanabe discloses physical
association between a carrier and an extract, with Camp disclosing
agglomeration via a fluidized bed. Ans. 10-11. The Examiner concludes it
would have been obvious to modify Brouns in view of Watanabe and Camp
to prepare an agglomeration via either spray drying or a fluidized bed as a
substitution of one alternative conventional technique for another. Ans. 11.
Appellants contend Brouns is silent with respect to specific amounts
of isomaltulose and extract and instead discloses an example in which cola
flavor is used in a liquid composition, not a dry aroma formulation. Appeal
Br. 14--15. These arguments do not persuade us of a reversible error in the
Examiner's rejection. The disclosure of a reference is not limited to working
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examples. Jn re Fracalossi, 681 F .2d 792 ( CCP A 19 82 ). Here, the
Examiner finds Brouns discloses a dry aroma formulation including a
mixture of isomaltulose and trehalose, as well as additional substances, such
as flavors, which meet Appellants' recitation of an extract. Ans. 8.
Moreover, the Examiner provides a rationale for modifying the amount of
isomaltulose and extract according to one's desires for flavor and sweetness.
Ans. 9. Appellants' arguments do not direct us to a reversible error in the
Examiner's conclusion to modify the amounts of isomaltulose and flavor in
the dry formulation disclosed by Brouns.
Appellants further argue Brouns does not disclose a dry aroma
formulation in which isomaltulose is used as a carrier physically associated
with an extract. Appeal Br. 14. This argument is not persuasive as it does
not address the Examiner's rejection because the Examiner finds Watanabe
and Camp disclose a physical association between an extract and a carrier.
Ans. 10-11. Therefore, Appellants' arguments are not persuasive of
reversible error.
For the reasons discussed above and for the reasons expressed in the
Answer, the Examiner's§ 103(a) rejection of claim 30 over the combination
of Brouns, Watanabe, and Camp is sustained. Appellants have not advanced
separate arguments for any of claims 32--41, 43--45, 47, 49-56, 58---62, 65,
66, 69, and 71-75. Therefore, the§ 103(a) rejection of claims 30, 32--41,
43--45, 47, 49-56, 58---62, 65, 66, 69, and 71-75 is sustained.
Rejections under§ 103 over Brouns, Watanabe, Camp, and Shimizu and
over Brouns, Watanabe, Camp, and Abraham
Appellants state claims 38, 39, 42, 46, 48, 63, 64, and 67 stand or fall
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with independent claims 30, 56, and 59. Appeal Br. 15-16. Therefore, the§
103(a) rejections of claims 38, 39, 42, 46, 48, 63, 64, and 67 are sustained.
DECISION
On the record before us and for the reasons in the Examiner's Answer
and above, the Examiner's rejections 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).
AFFIRMED
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