Ex Parte Johnson et al

Board of Patent Appeals and Interferences

Jul 9, 2012

10705481 (B.P.A.I. Jul. 9, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte SONYA S. JOHNSON, GLORIA SHELDON,
and MICHAEL J. GREENBERG
__________

Appeal 2011-008529
Application 10/705,481
Technology Center 1600
__________

Before MELANIE L. McCOLLUM, STEPHEN WALSH, and
ULRIKE W. JENKS, Administrative Patent Judges.

JENKS, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner‟s rejection of claims 1, 4, 7-11, 14, 18-20, and 27-33 as obvious
under 35 U.S.C. §103. We have jurisdiction under 35 U.S.C. § 6(b). We
affirm.
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STATEMENT OF THE CASE
Claims 1, 4, 7-11, 14, 18-20, and 27-33 are on appeal, and can be
found in the Appendix of the Appeal Brief (App. Br. 20-22). Claim 1 is
representative of the claims on appeal, and reads as follows:
1. A consumable oral product comprising Erospicata oil, menthol, a
cooling agent and a heating agent, wherein the Erospicata oil comprises
about 0.01 % to about 5% by weight of the total consumable oral product,
and wherein the heating agent is chosen from the group consisting of
capsicum oleoresin, capsaicin, piperine, gingerol, shoagol, cinnamic
aldehyde, ginger oleoresin, cinnamon oleoresin, and cassia oleoresin, black
pepper oleoresin, pepper oleoresin and combinations thereof.

The following ground of rejection is before us for review:
The Examiner has rejected claims 1, 4, 7-11, 14, 18-20, and 27-33
under 35 U.S.C. § 103(a) as obvious over Cherukuri,
1
Oppenheimer,
2
and
Sturtz.
3

ISSUE
Does the evidence of record support the Examiner‟s conclusion that
the combination of references Cherukuri, Oppenheimer, and Sturtz render
obvious the composition and methods of claims 1, 4, 7-11, 14, 18-20, and
27-33?
FINDINGS OF FACT
FF1. The Examiner‟s statement of rejection may be found at pages 4-6 of
the Answer.

1
Cherukuri et al., US 5,009,893, issued Apr. 23, 1991.
2
Oppenheimer et al., US 4,980,169, issued Dec. 25, 1990.
3
Sturtz, US Plant 8,645, issued Mar. 15, 1994.
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FF2. Sturtz described Erospicata, a Mentha spicata mint plant, that
produces an oil containing “sufficient amounts of menthone that it has the
organoleptic properties of peppermint oil” (Sturtz, col. 2, ll. 21-22). Sturtz
described obtaining the essential oils by steam distillation. (Id. at col. 5, ll.
1-25.)
FF3. Erospicata oil has less than 1 % menthol content while regular
peppermint oil contains 35-45% menthol by weight (Sturtz, col. 7, Table 6).
FF4. Erospicata oil is low in carvone and piperitone content. “The
substantial absence of carvone and piperitone is important because these
substances provide a taste that is organoleptically undesirable in
[conventional] peppermint oil. Carvone provides a spearmint taste, while
piperitone imparts a bitter taste” (Sturtz, col. 2, l. 35 to col. 3, l. 4).
FF5. Erospicata oil‟s “menthone content provides a „hot‟ peppermint taste
and odor” (Sturtz, col. 2, ll. 21-23).
FF6. Erospicata oil contains three times the amount of l-menthone, which
provides the peppermint flavor, compared to conventional peppermint oil
(Sturtz, col. 7, table 6).
FF7. “The low menthol content of the essential oil is important because
menthol is an alcohol that irritates nasal, oral and gastrointestinal epithelium.
Hence only very small amounts of conventional peppermint oil can be added
to ingestible products such as candy.” (Sturtz col. 2, ll. 24-35.)
FF8. Cherukuri disclosed edible compositions capable of providing long-
lasting, breath freshening perception without bitterness that contained a
cooling agent made using a combination of menthol and an N-substituted-p-
menthane carboxamide compound (Cherukuri, Abstract).
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FF9. Cherukuri disclosed an exemplary formulation of chewing gum
comprising: Gum Base 21%, Corn Syrup 44· BE 16.5, Sugar 6x 60.6%,
Lecithin 0.2%, Peppermint Flavor Oil Blend 1.1438 %, Glycerin 0.45%,
Menthol 0.02655 %, N-ethyl-p-menthane-3-carboxamide 0.0531 %
(Cherukuri, col. 10, table 1).
FF10. According to Cherukuri, “menthol, when used alone, has an initial
high flavor impact, but its impact drops sharply within a few minutes after
use. In addition, it tends to distort flavor notes and render the product bitter
when not used in precise amounts.” (Cherukuri, col. 4, ll. 8-13.)
FF11. Confectionery products, that contain menthol or other flavorants
derived from essential oils, such peppermint, were known to produce
bitterness while residing in the oral cavity. (Oppenheimer, col. 2, ll. 5-10.)
FF12. Oppenheimer disclosed that including a volatile oil modifying agent
in the confectionary product containing a volatile oil such as peppermint
could ameliorate the perceived bitter taste. (Oppenheimer, col. 3, ll. 2-4.)
FF13. Oppenheimer disclosed that the amount of volatile oil, such as
peppermint oil, should be varied depending on the desired flavor and aroma
profile of the confectionary product (Oppenheimer, col. 3, ll. 18-32).
FF14. According to Oppenheimer, L-menthol, isolated from Mentha
arvensis, has a distinct peppermint flavor that imparts a cooling impression
on the mouth and skin (Oppenheimer, col. 8, ll. 4-11).
FF15. According to Oppenheimer, menthol provides a soothing sensation
for the mouth and throat areas and is often combined with eucalyptus oil
which imparts a decongestant activity. The combination of menthol and
eucalyptus oil is often used therapeutically to relieve coughing. By adding
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the volatile oil modifying agent capsicum to the confectionary formulation
comprising menthol and/or eucalyptus oil the unpleasant bitter taste
associated with the volatile oil is masked (Oppenheimer col. 8, ll. 12-25).
FF16. Volatile oil can be added to the confectionary product at a
concentration of 0.05 to 0.5 percent weight of the total product
(Oppenheimer, col. 8, ll. 12-25).

PRINCIPLES OF LAW
A prior art reference is said to teach away from an Applicant‟s
invention “when a person of ordinary skill, upon reading the reference,
would be discouraged from following the path set out in the reference, or
would be led in a direction divergent from the path that was taken by the
applicant.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).
What a reference teaches and whether it teaches toward or away from
the claimed invention are questions of fact. Winner [Intern. Royalty
Corp. v. Wang, 202 F.3d 1340, 1349 (Fed. Cir. 2000)] (internal
quotations omitted). However, obviousness must be determined in
light of all the facts, and there is no rule that a single reference that
teaches away will mandate a finding of nonobviousness. Likewise, a
given course of action often has simultaneous advantages and
disadvantages, and this does not necessarily obviate motivation to
combine. See id. at 1349 n. 8 (“The fact that the motivating benefit
comes at the expense of another benefit, however, should not nullify
its use as a basis to modify the disclosure of one reference with the
teachings of another. Instead, the benefits, both lost and gained,
should be weighed against one another.”). Where the prior art
contains “apparently conflicting” teachings (i.e., where some
references teach the combination and others teach away from it) each
reference must be considered “for its power to suggest solutions to an
artisan of ordinary skill.... consider[ing] the degree to which one
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reference might accurately discredit another.” In re Young, 927 F.2d
588, 591 (Fed. Cir. 1991).

Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006).

ANALYSIS
As Appellants do not argue the claims separately, we focus our
analysis on claim 1, and claims 4, 7-11, 14, 18-20, and 27-33 stand or fall
with claim 1. 37 C.F.R. § 41.37 (c)(1)(vii). Based on the evidence cited in
the rejection, we conclude that the Examiner established a prima facie case
of obviousness (Ans. 4-7). The Examiner responded specifically and
persuasively to most of Appellants‟ arguments, showing that when all the
evidence is considered, it weighs in favor of obviousness (id. at 7-14). We
provide the following additional comments.

In making an obviousness rejection the Examiner must first identify
the scope and content of the prior art. Graham v John Deere Co. 383 U.S. 1,
17 (1966). Thus, we first turn to the prior art.
Sturtz described producing an essential oil from a newly discovered
mint plant (FF2). Specifically, this oil has the distinct property of providing
peppermint flavor without having negative properties such as large amounts
of menthol (FF3) and having undertones of spearmint flavor or the bitter
flavor that is associated with conventional peppermint oil (FF4). Sturtz
disclosed why the essential oil from Erospicata was better than conventional
peppermint oil (FF2-6).
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Cherukuri disclosed edible products comprising menthol, N-
substituted-p-menthane carboxamides and peppermint flavor oil (FF8-9).
Cherukuri disclosed that the amount of menthol needs to be precisely
controlled in order to avoid a confectionary product with distorted and bitter
flavor notes (FF10).
Oppenheimer disclosed adding capsicum to confectionary products
containing menthol in order to mask the unpleasant organoleptic properties
of menthol (FF11-14).

Once the scope and content of the prior art have been determined, the
next step is to identify the difference between the prior art and the claimed
invention. Graham, 383 U.S. at 17.
Sturtz disclosed the production of an essential oil from the newly
discovered mint plant, and implicitly suggested its use in candy (FF2-7).
Cherukuri disclosed the production of an edible product containing
menthol and a cooling agent, specifically N-substituted-p-menthane
carboxamides (FF8). In addition, Cherukuri disclosed using conventional
peppermint oil at a concentration of 1.1438 % weight volume as a flavorant
(FF9). As recognized by the Examiner, Cherukuri did not disclose using
Erospicata oil (Ans. 4).
Oppenheimer disclosed a confection containing volatile oils, such as
menthol and peppermint oil, and formulating them with capsicum, a heating
agent, in order to mask any bitter taste (FF13 and 15). As recognized by the
Examiner, Oppenheimer did not disclose using Erospicata oil (Ans. 5).

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Once the differences between the prior art and the claimed invention
have been identified, the next step is to identify motivation or a reason why
persons of ordinary skill in the art would have been prompted to combine the
prior art to have made the claimed invention. KSR Int’l Co. v. Teleflex Inc.
550 U.S 398, 418 (2007).
Although Sturtz did not expressly state that the Erospicata oil can be
substituted for conventional peppermint oil, this can be inferred from the
document. “[I]n considering the disclosure of a reference, it is proper to take
into account not only specific teachings of the reference 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); KSR, 550 U.S. at
418. The ordinary artisan reading Sturtz would have recognized that
Erospicata oil could be used as a peppermint flavorant in ingestible products
such as candy precisely because it has a high l-menthone component, the
component providing the peppermint flavor in conventional peppermint oil
(FF6). The ordinary artisan, would also have recognized that formulating an
ingestible product with purified individual components would have been
desirable so that each component could be better controlled (Ans. 10). In
addition, the ordinary artisan would have recognized that Erospicata oil
could be added to ingestible products in greater quantity than conventional
peppermint oil because the Erospicata oil does not contain as much of the
undesirable flavor components, such as menthol, carvone and piperitone
found in conventional peppermint oil (FF4; Ans. 6-7).
Cherukuri disclosed masking the unpleasant organoleptic properties
associated with menthol by adding N-substituted-p-menthane carboxamides
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in a confectionary product. Oppenheimer disclosed masking the unpleasant
organoleptic properties associated with menthol by adding capsicum to the
confectionary product.
It is prima facie obvious to combine two compositions
each of which is taught by the prior art to be useful for the same
purpose, in order to form a third composition which is to be
used for the very same purpose.... [T]he idea of combining
them flows logically from their having been individually taught
in the prior art.

In re Kerkhoven, 626 F.2d 846, 850 (CCPA 1980) (citations omitted).
Oppenheimer and Cherukuri both recognized that the bitter side effect
associated with a volatile oil can be minimized by masking them, for
example with a heating agent, such as capsicum (FF15) and/or a cooling
agent, such as N-substituted-p-menthane carboxamides (FF8).
One would also recognize that it is beneficial to use erospicata
oil in place of peppermint oil in order to better control the
amount of menthol used in a composition by not having to
account for the menthol provided by the peppermint oil, and
further to be able to use as much flavor oil needed for the
desired taste.

(Ans. 10).
Appellants assert that the references teach away from the claimed
invention because Sturtz allegedly teaches away from the use of additional
menthol in ingestible products (Reply Br. 5). According to Appellants,
Sturtz teaches that menthol is undesirable in ingestible products “„because
menthol is an alcohol that irritates nasal, oral and gastrointestinal
epithelium.‟” (App. Br. 14-17.) Appellants contend that Sturtz teaches
away from the use of any menthol in ingestible products, “regardless of
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whether the menthol is used to give the composition the taste of
peppermint.” (Id. at 15.) Additionally, Appellants assert that Oppenheimer‟s
use of menthol for its medicinal effect is antithetical to the proposition from
Sturtz “which specifically teaches that menthol is undesirable in ingestible
products „because menthol is an alcohol that irritates nasal, oral and
gastrointestinal epithelium‟” (id.).
We are not persuaded by this argument. The argument hinges on a
single line from the Sturtz patent that states menthol in conventional oil
preparations irritates nasal, oral and gastrointestinal epithelium. By taking
this isolated fact out of context Appellants fail to consider the document as a
whole. Sturtz was making the point that Erospicata oil is better than
conventional peppermint oil precisely because it contains less menthol
(FF3). Where the prior art contains “apparently conflicting” teachings (i.e.,
where some references teach the combination and others teach away from it)
each reference must be considered “for its power to suggest solutions to an
artisan of ordinary skill.... consider[ing] the degree to which one reference
might accurately discredit another.” In re Young, 927 F.2d at 591;
Medichem, S.A. v. Rolabo, S.L., 437 F.3d at 1165.
Sturtz described Erospicata oil as having three times the l-menthone
content as compared to conventional oil (FF6), while at the same time
having low menthol content (FF3). L-menthone imparts the peppermint
flavor to the volatile oil (FF6). In addition, Erospicata oil also contains low
amounts of piperitone which imparts the bitter taste in conventional
peppermint oil (FF4). Sturtz recognized that the disadvantage of
conventional peppermint oil is that it contained high menthol concentrations,
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and because of the high menthol concentration only small amounts of the
conventional oil could be added to ingestible products such as candy (FF7).
Sturtz disclosed that Erospicata oil did not have the disadvantages associated
with the conventional peppermint oil (FF4). We find that Sturtz did not
teach away from using menthol in a consumable product.
Oppenheimer taught menthol in a confectionary product. Menthol in
this product is used as adjunct therapy for colds and coughs. In order to
mask any bitter taste associated with the menthol oil used in the preparation,
the reference adds capsicum to the confectionary product (FF15). Here, the
menthol is supplied in a controlled quantity for its medicinal effect (FF15).
We find no inconsistency between Sturtz and Oppenheimer, as both
references acknowledged that menthol has side effects and as such must be
used in controlled quantities. There is no teaching in the combined
references that indicates menthol should not be used in a consumable
product. Thus, we find the references do not teach away from each other or
from the presently claimed invention.
Appellants assert that the references fail to disclose each and every
element of the claim (App. Br. 13). Specifically, Appellants assert that
neither Sturtz, Cherukuri or Oppenheimer disclose any amounts of
Erospicata oil
4
in any confectionary product at any place of the disclosures.
Thus, Appellants assert that there is no reason to combine the references.

4
Cherukuri and Oppenheimer issued as patents before Sturtz filed its
application for patent. Thus, it is not surprising that neither Cherukuri nor
Oppenheimer mention Erospicata oil as a peppermint flavorant.
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We are not persuaded. Sturtz characterized Erospicata oil and
compared it to peppermint oil. Sturtz disclosed the advantages of the
Erospicata oil as compared to conventional peppermint oil (FF3, FF4).
Sturtz also disclosed disadvantages associated with conventional peppermint
oil. Specifically, it recognized that only small amounts of conventional
peppermint oil can be added to ingestible products such as candy because of
the high menthol content associated with conventional peppermint oil (FF7).
Sturtz thereby implied that the Erospicata oil is better than conventional
peppermint oil precisely because it is essentially free of menthol, carvone
and piperitone compounds associated with unpleasant side effects.
Appellants assert that the references cannot be combined if the
intended purpose is destroyed (Reply Br. 3). Appellants assert that
Cherukuri requires a composition comprising both menthol and N-
substituted-p-menthane, while the instant claims do not use the N-
substituted-p-menthane (id.). Appellants assert that a modification removing
this component from Cherukuri would destroy the intended purpose of
providing a “cooling [effect] without bitterness” (id.).
We are not persuaded. First, Appellants‟ claim 1 is directed to a
composition “comprising Erospicata oil, menthol, a cooling agent and a
heating agent.” The “comprising” term opens the claim to additional
elements such as N-substituted-p-menthane. Second, claim 1 specifically
requires a cooling agent, which includes an N-ethyl-p-menthane-3-
carboxamide as set out in the list of cooling agents in the specification
(Spec. 3, l. 22).

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CONCLUSION OF LAW
We conclude that the preponderance of the evidence of record
supports the Examiner‟s conclusion that the combination of Cherukuri,
Oppenheimer and Sturtz rendered obvious the consumable oral product of
claim 1. We thus affirm the rejection of claim 1 under 35 U.S.C. § 103(a) as
obvious; as claims 4, 7-11, 14, 18-20, and 27-33 stand or fall with claim 1,
we affirm the rejection as to those claims as well.

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connections with
this appeal may be extended under 37 C.F.R. §1.136(a).

AFFIRMED

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