12065189 (P.T.A.B. Jun. 12, 2014)

Ex Parte Kaouas et al

Patent Trial and Appeal BoardJun 12, 2014

12065189 (P.T.A.B. Jun. 12, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 12/065,189 02/28/2008 Abdelmajid Kaouas GIV.P9620 (0551-0005) 7168 23575 7590 06/12/2014 CURATOLO SIDOTI CO., LPA 24500 CENTER RIDGE ROAD, SUITE 280 CLEVELAND, OH 44145 EXAMINER DEES, NIKKI H ART UNIT PAPER NUMBER 1791 MAIL DATE DELIVERY MODE 06/12/2014 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte ABDELMAJID KAOUAS, HARRY RENES, and CHRIS WINKEL ____________ Appeal 2013-000558 Application 12/065,189 Technology Center 1700 ____________ Before EDWARD C. KIMLIN, KAREN M. HASTINGS, and N. WHITNEY WILSON, Administrative Patent Judges. KIMLIN, Administrative Patent Judge. DECISION ON APPEAL This is an appeal from the final rejection of claims 1-20. We have jurisdiction under 35 U.S.C. Â§ 6(b). A copy of illustrative claim 1 is appended to this decision. The Examiner relies upon the following reference as evidence of obviousness: Dubois et al. (Dubois) WO 92/06601 A1 Apr. 30, 1992 Appellants' claimed invention is directed to a flavour composition comprising one or more flavouring substances, such as a sweetener, and a flavour modulating substance defined by the recited formulae. The appealed claims contain the proviso that if the composition comprises N-(2-hydroxy- propyl]-gluconamide, or N-[2-hydroxypropyl]-glucoheptonamide, the ratio Appeal 2013-000558 Application 12/065,189 2 between these flavour modulating substances and the flavouring substance is less than 50:1. Appealed claims 1-20 stand rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Dubois. Appellants do not present separate, substantive arguments for any particular claim on appeal. Accordingly, all the appealed claims stand or fall together with claim 1. We have thoroughly reviewed each of Appellants' arguments for patentability. However, we are in complete agreement with the Examiner that the claimed subject matter would have been obvious to one of ordinary skill in the art within the meaning of Â§ 103 in view of the applied prior art. Accordingly, we will sustain the Examiner's rejection for essentially those reasons expressed in the Answer, and we add the following primarily for emphasis. There is no dispute that Dubois, like Appellants, discloses a flavour composition comprising a flavoring substance, such as a sweetener, and compounds within the claimed Formula (1), namely, N-(2,hydroxypropyl]- gluconamide (Compound 6), and N-(2-hydroxypropyl]-glucohepton-amide (Compound 14), as well as a chemical homolog, N-[2-hydroxyethyl]- gluconamide (Compound 5). A principal argument of Appellants is that Dubois teaches that the disclosed compounds have properties similar to those of sucrose, but the reference provides no teaching that the disclosed compounds are flavour modulating substances, as presently claimed. In response to the Examiner's position that the compounds of Dubois are inherently flavour modulating substances inasmuch as they are sugar Appeal 2013-000558 Application 12/065,189 3 substitutes, Appellants point out that Dubois teaches that the disclosed compounds can range from tasteless to substantially sweet. We are not persuaded by Appellants' arguments. We agree with the Examiner that although Dubois does not characterize the disclosed compounds as flavour modulating, the fact that Dubois teaches that the compounds are added for either their sweetening or bulking properties, or both, qualifies them as flavour modulating. Significantly, Appellants' disclosure states that the flavour of foodstuffs consists of two parts: the aroma and the taste, and that the taste refers to the sensory impact that is perceived by the mouth, especially the tongue. Accordingly, we agree with the Examiner that even the tasteless compounds of Dubois, which possess bulking properties, provide a sensory impact that is perceived by the mouth, especially the tongue, and therefore, necessarily affect the taste of the food, thereby meeting Appellants' definition of a flavouring modulating substance. Furthermore, since Appellants have not refuted the Examiner's factual finding that Compounds (6) and (14) of Dubois are embraced by recited Formula (1), we find no error in the Examiner's reasoning that these disclosed compounds of Dubois necessarily exhibit flavour modulating properties. As for the recited ratio of flavour modulating substances to flavour and substances less than 50:1, the Examiner accurately points out that Dubois expressly teaches that the disclosed compounds, the sugar substitutes, "may be combined with various high potency sweetening agents in any desired proportion" (page 14, lines 6-8). Also, we concur with the Examiner that it would have been obvious for one of ordinary skill in the art Appeal 2013-000558 Application 12/065,189 4 to combine any amount of Dubois' compounds with a sweetener in order to arrive at the suitable, desired flavour for the composition. It is well settled that where patentability is predicated upon a change in a condition of a prior art composition, such as a change in concentration or the like, the burden is on the applicant to establish with objective evidence that the change is critical, i.e., it leads to a new, unexpected result. In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990); In re Aller, 220 F.2d 454, 456 (CCPA 1955). In the present case, Appellants have proffered no such evidence of unexpected results. In conclusion, based on the foregoing and the reasons well stated by the Examiner, the Examiner's decision rejecting the appealed claims is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(1)(iv). AFFIRMED cam Appeal 2013-000558 Application 12/065,189 5 APPENDIX