Ex Parte Kennison et al

Patent Trial and Appeal Board

Apr 24, 2017

12980790 (P.T.A.B. Apr. 24, 2017)

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.
1507-19 5341
EXAMINER
PARAD, DENNIS J
ART UNIT PAPER NUMBER
1612
MAIL DATE DELIVERY MODE
12/980,790 12/29/2010
28249 7590 04/24/2017
DILWORTH & BARRESE, LLP
Dilworth & Barrese, LLP
1000 WOODBURY ROAD
SUITE 405
WOODBURY, NY 11797
Deborah Kennison
04/24/2017 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 DEBORAH KENNISON and MARTIN GURNEY
Appeal 2016-004075
Application 12/980,7901
Technology Center 1600
Before ERIC B. GRIMES, RACHEL H. TOWNSEND, and DEVON
ZASTROW NEWMAN, Administrative Patent Judges.
TOWNSEND, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35U.S.C. § 134 involving claims to an aroma
composition for reducing or suppressing an unpleasant taste impression in
the oral cavity, which have been rejected as obvious. We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm.
STATEMENT OF THE CASE
Steviolglycosides are known “very good sweeteners” “that occur
naturally in Stevia ssp. and Rubus ssp.” (Spec. 2.) However, “in the
concentrations necessary for an adequate sweetening effect. . . [they] exhibit
a marked liquorice-like and unpleasant bitter and/or astringent taste
1 Appellants identify the Real Party in Interest as SYMRISE AG. (Br. 3.)
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Application 12/980,790
impression[],” as well as “a long-lasting aftertaste.” (Id. ) “[T]his unpleasant
secondary taste impression[] and/or aftertaste often lowers the sensory
acceptance and therefore require[s] masking.” (Id. ) Appellants’ invention is
directed at a sweetener composition that has a reduced unpleasant
impression in the oral cavity. (Id. at 3.)
Claims 1—10, 22, and 23 are on appeal.2 Claim 1 is representative and
reads as follows:
1. An aroma composition for reducing or suppressing an
unpleasant (taste) impression in the oral cavity, comprising:
(i) one or more sweeteners or a physiologically tolerated
salt thereof, selected from the group consisting of magap,
sodium cyclamate, acesulfame K, neohesperidin
dihydrochalcone, saccharin, saccharin sodium salt, aspartame,
superaspartame, neotame, alitame, sucralose, lugduname,
carrelame, sucrononate, sucrooctate, and/or
the group of naturally occurring sweeteners selected from
the group consisting of miraculin, curculin, monellin, mabinlin,
thaumatin, curculin, brazzein, pentadin, D-phenylalanine, D-
tryptophane, or extracts or fractions derived from natural
sources containing these amino acids and/or proteins,
neohesperidin dihydrochalcone, steviolgylcoside, stevioside,
steviolbioside, rebaudiosides, suavioside A, suavioside B,
suavioside G, suavioside H, suavioside I, suavioside J,
baiyunoside 1, baiyunoside 2, phlomisoside 1, phlomisoside 2,
phlomisoside 3, phlomisoside 4, abrusoside A, abrusoside B,
abrusoside C; abrusoside D, cyclocaryoside A and
cyclocaryoside I, oslandin, polypodoside A, strogin 1, strogin 2,
strogin 4, selligueanin A, dihydroquercetin-3-acetate,
perillartine, telosmoside Ai5, periandrin I-V, pterocaryoside,
cyclocaryoside, mukurozioside, trans-anethol, trans-
cinnamaldehyde, bryoside, bryonoside, bryonodulcoside,
camosifloside, scandenoside, gypenoside, trilobatin, phloridzin,
2 Claims 11—14 are also pending but stand withdrawn from consideration.
(Final Action 1.)
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Appeal 2016-004075
Application 12/980,790
dihydroflavanol, hematoxylin, cyanin, chlorogenic acid,
albiziasaponin, telosmoside, gaudichaudioside, mogroside,
hemandulcine, monatin, glycyrrhetin acid and derivatives
thereof or their potassium, sodium, calcium or ammonium salts,
and phyllodulcin,
(ii) ortho-coumaric acid,
and,
(iii) one or more bitter-masking aroma substances,
flavourings, or a physiologically tolerated salt thereof, selected
from the group consisting of hydroxyflavanones, or a
physiologically tolerated salt thereof, hydroxybenzoic acid
amides, hydroxydeoxybenzoines, hydroxyphenylalkandiones,
diacetyl trimers, gamma-aminobutyric acids, and divanillins,
and optionally,
(iv) one or more additional aroma substances, or a
physiologically tolerated salt thereof wherein at least one of the
additional aroma substances is a sweetness intensifying aroma
substance, selected from the group consisting of hesperetin, 4-
hydroxydihydrochalcone, and propenylphenylglycosides,
and optionally,
(v) one or more inactive substances or carriers.
(Br. 10-11.)
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Application 12/980,790
The following ground of rejection by the Examiner is before us on
review:
Claims 1—10, 22, and 23 under 35 U.S.C. § 103 as unpatentable over
Howard,3 Prakash,4 Owen,5 and Krammer6 as evidenced by Ley7 and
Riemer.8
The Examiner required a species election for the sweetener, the bitter­
masking aroma substance, and the additional aroma substance, among other
things, (Office Action dated Jan. 31, 2012, 3—6), and Appellants elected to
pursue prosecution with rebaudioside A as the sweetener, homoeriodictyol
sodium salt as the bitter-masking aroma substance, and hesperetin as the
additional aroma substance (Response dated July 2, 2012, 1). Accordingly,
as to the appealed obviousness rejection, we limit our analysis to the
patentability of the various elected species and the extent to which the
rejected claims read on them. See Ex parte Ohsaka, 2 USPQ2d 1460, 1461
(BPAI 1987).
DISCUSSION
The Examiner finds that Howard teaches a dry powder composition
that includes polyphenols extracted from red wine and red grape juice, as
3 Howard et al., US 6,642,277, issued Nov. 4, 2003.
4 Prakash et al., US 2007/0116838 Al, published May 24, 2007.
5 R. W. Owen et al., Phenolic compounds and squalene in olive oils: the
concentration and antioxidant potential of total phenols, simple phenols,
secoiridoids, lignans and squalene, 38 Food and Chemical Toxicology 647—
59 (2000).
6 Krammer et al., WO 2007/107596 Al, published Sept. 27, 2007.
7 Ley et al., US 2002/0188019 Al, published Dec. 12, 2002.
8 Joel A. Riemer, US 5,336,513, issued Aug. 9, 1994.
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Application 12/980,790
well as including sweeteners like aspartame. (Final Action 3—\\ Ans. 11
(noting that the composition is ‘“sweetened to taste’”).) The Examiner notes
that ortho-coumaric acid is one of the polyphenols of the composition.
(Final Action 3.) The Examiner finds that Howard teaches the composition
is therapeutically useful to, for example, prevent or treat coronary heart
disease or inhibit oxidation of plasma LDL, “as a result of the antioxidant
properties from the absorption of polyphenols.” (Id.) The Examiner further
finds that Owen teaches ortho-coumaric acid is a potent antioxidant. (Id. at
5.)
The Examiner explains that Howard does not specify rebaudioside A
as the sweetener, nor does Howard include the bitter-masking substance
homoeriodictyol sodium salt. (Final Action 4.) The Examiner finds that the
inclusion of these substances would have been obvious in light of the
teachings of Prakash, Krammer, Ley, and Riemer. (Id. at 4—6.)
The Examiner notes that Prakash discloses a therapeutically useful
composition that includes an antioxidant—which is advantageous for
reducing, inhibiting, suppressing, or reducing oxidative damage to cells or
biomolecules by stabilizing free radicals before they can cause harmful
reactions—and a sweetener. (Id. at 4.) Prakash teaches that rebaudioside A
is a high-potency sweetener that has a “sweetness potency greater than
sucrose, fructose, or glucose, yet has less calories” and exemplifies beverage
compositions including this sweetener. (Id.)
The Examiner finds that Krammer teaches oral preparations that
include antioxidants as an auxiliary agent, and also include one or more
sweet substances, including for example, rebaudioside. (Id. at 5.) The
Examiner also notes that Krammer further teaches that the composition can
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Application 12/980,790
include taste correctors to mask bitter taste, such as hydroxyflavanones,
which are well known for such use, as evidenced by Ley. (Id. at 5—6.)
Krammer discloses that homoeriodictyol or its sodium salt is a
hydroxyflavanone taste masking compound. (Id. at 6.)
The Examiner also finds that Riemer “evidences that cinnamic acid
derivatives such as coumaric acid are useful for inhibiting the unpleasant
bitter taste of artificial sweeteners.” (Id. at 5.)
The Examiner indicates that Prakash provides a reason to use the high
potency sweetener rebaudioside A in the ortho-coumaric acid composition
taught by Howard because both references are directed to compositions that
include antioxidants and sweeteners for the treatment of disease. (Id. at 6.)
Furthermore, the Examiner concludes that it would be obvious to one of
ordinary skill in the art to add homoeriodictyol sodium salt to the
composition in light of Krammer’s teaching that inclusion of such an
ingredient in compositions that include an antioxidant—which Owen teaches
ortho-coumaric acid is—, and a sweetener, such as rebaudioside A, would
benefit from taste masking compounds to mask bitter taste of the
composition. (Id.)
We agree with the Examiner’s factual findings and conclusion that it
would have been obvious to use rebaudioside A as the sweetener in Howard
and include the bitter taste-masking substance homoeriodictyol.9 In
particular, as the Examiner noted, Howard is concerned about the sweet
mouth feel of the composition as indicated by its teaching that the
9 We need not address the obviousness of adding a sweetening enhancer as
this is an “optional” component of the composition of claim 1.
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composition is “sweetened to taste” (Howard 10:18—19) and noting that
sweeteners may be used (Howard 9:34-42). Krammer teaches “it has long
been an objective to reduce the sugar content of foods ... to the amount that
is absolutely necessary, or even less” because high sugar content “can be
readily metabolised[,] can greatly increase the blood sugar level, lead to the
formation of fatty deposits and can ultimately lead to health problems such
as overweight, obesity, insulin-resistance, maturity onset diabetes and the
consequential illnesses resulting therefrom,” as well as “impair dental
health.” (Krammer 1—2.) Krammer further teaches that “highly intense
sweeteners are extremely suitable for introducing into foodstuffs, [as an
alternative to high sugar content such as from glucose] due to their low input
concentration, [but] they often exhibit taste-related problems due to a time-
intensity profile . . . [or] a bitter and/or astringent aftertaste” (Krammer 1—2).
Prakash teaches rebaudioside A is a high potency sweetener that can be used
with compositions that include an antioxidant, including polyphenols
(Prakash || 10, 22, 38), and Prakash further teaches that such functional
sweetener compositions that include rebaudioside A would benefit from
inclusion of a “sweet taste improving” additive, noting that such an
ingredient includes those that are a “Flavor Mask.” (See, e.g., Prakash || 92
and 833—840.) And Ley teaches that homoeriodictyol is a flavor mask that
masks the bitter taste of substances that have a bitter after taste, including
sweeteners, for use in “consumable preparations” (Ley ^fl[ 1, 17, and 35).
Appellants’ arguments that Howard “has nothing to do with the
reduction or suppression of unpleasant taste impressions left by sweeteners
in the oral cavity” and Appellants’ invention “has nothing to do with
antioxidants or antioxidant properties” of ortho-coumaric acid (Br. 7) are
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unavailing. Whether or not Howard is directed at reducing unpleasant taste
impressions is not decisive because Howard is concerned with a composition
that is “sweetened to taste” (Howard 10:18—19), and thus is concerned with a
pleasant impression in the oral cavity. It is also of no moment that ortho-
coumaric acid is not included in the claimed composition for its antioxidant
properties. “[A] compound and all of its properties are inseparable; they are
one and the same thing.” In re Papesch, 315 F.2d 381, 391 (CCPA 1963).
Claim 1 is directed to a composition that includes, among other things,
ortho-coumaric acid, which is a component that Howard teaches is present in
its composition (Howard 12 (Table 1)), as well as a sweetener, which
Howard teaches is a component that can be included in the composition
(Howard 9:34^42 and 18 (Ex. 7 and Ex. 8)).
The Examiner’s rejection is based on obviousness and 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 GPAC Inc., 57 F.3d
1573, 1581 (Fed. Cir. 1995) (internal quotations omitted). The Examiner
relied on evidence in the prior art, Prakash, for the selection of the known
highly potent sweetener, rebaudioside A, for use in a composition that also
includes an antioxidant, which Owen teaches ortho-coumaric acid is. This
teaching establishes that one of ordinary skill in the art would have had a
reasonable expectation of success in including rebaudioside A as a
sweetener in the Howard composition such that sweetness would be
imparted.
Appellants argue that the Examiner improperly relied on hindsight to
“utilize o-coumaric acid” because (a) Howard teaches this as “one of 25
polyphenols listed in Table 1” of Howard and (b) “[t]he secondary
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Application 12/980,790
references, i.e., Prakash et al., Krammer et al. and Ley et al., do not disclose
the use of ortho-coumaric acid at all.” (Br. 8.) This argument is not
persuasive. “When a claim uses an ‘open’ transition phrase, its scope may
cover devices that employ additional, unrecited elements. . . .” AFG
Industries, Inc. v. CardinalIG Co., Inc., 239 F.3d 1239, 1245 (Fed. Cir.
2001). Appellants’ claim 1 uses the open transition phrase “comprising;” in
particular, reciting that the composition is one “comprising” the sweetener
rebaudioside A, in addition to ortho-coumaric acid, and a hydroxyflavanone
salt that is a bitter-masking flavouring. (Br. 11 (claim l)10.) That the dried
powder of Howard includes additional polyphenols other than ortho-
coumaric acid does not derogate from the fact that ortho-coumaric acid is
undisputedly a part of the Howard composition. The Examiner has not
relied on hindsight for this “selection;” rather, the Examiner simply pointed
out that the Howard composition is one “comprising” ortho-coumaric acid,
as Appellants’ claim 1 requires and that it would be obvious to modify that
composition. (Final Action 6 (“it would have been prima facie obvious to
one of ordinary skill in the art at the time the invention was made to modify
the liquid foodstuff preparation taught by Howard et al by specifically using
ortho-coumaric containing polyphenol composition as the food additive as
taught by Howard et al with 400 ppm of rebaudioside A as the sweetener as
taught by Prakash ....”) (emphasis added).) Owen is relied upon merely to
establish that the ortho-coumaric acid that is included in the Howard
composition has the advantage of being an antioxidant (Ans. 10), and
10 Although the claim also lists the possibility of two additional ingredients,
those are “optionally” included.
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Application 12/980,790
because it is an antioxidant (whether or not it has less antioxidant capacity
than other disclosed compounds in Owen (Br. 8)), as noted above, Prakash
provides a reasonable expectation of success for using rebaudioside A as the
sweetener in the Howard composition.
Appellants appear to contend that the use of ortho-coumaric acid in
the claimed composition yields unexpected results for reducing or
suppressing unpleasant taste impressions of sweeteners in light of “the
comparative experimental data of record.” (Br. 7.) To the extent that is
Appellants’ reason for pointing to the experimental data of record, we do not
find the argument persuasive. That is because, “[t]o be particularly
probative, evidence of unexpected results must establish that there is a
difference between the results obtained and those of the closest prior art, and
that the difference would not have been expected by one of ordinary skill in
the art at the time of the invention.” Bristol-Myers Squibb Co. v. Teva
Pharms. USA, Inc., 752 F.3d 967, 977 (Fed. Cir. 2014). As the Examiner
noted, Riemer teaches that coumaric acid generally has the “ability to inhibit
the taste of bitter compounds.” (Riemer 1:63—68.) Although it is true that
Riemer does not specifically mention ortho-coumaric acid out of the three
isomers of coumaric acid (Br. 8—9), such is not evidence that one of ordinary
skill in the art in possession of Riemer would not have understood ortho-
coumaric acid to have the ability to inhibit the bitter taste of compounds.
We find the Examiner’s assumption that one of ordinary skill in the art
would have ascribed this property to all isoforms, in the absence of
identifying the property as only belonging to certain isoforms, to be a
reasonable interpretation.
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Furthermore, Howard teaches that the composition includes ortho-
coumaric acid, and thus, because “a compound and all of its properties are
inseparable,” Papesch, 315 F.2d at 391, one of ordinary skill in the art would
have expected that the Howard composition substituted with rebaudioside A
as the sweetener would have at least a somewhat reduced unpleasant taste
from any bitter substances.
Moreover, it is well settled that unexpected results must be established
by factual evidence comparing the claimed invention to the closest prior art.
In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). Although the
Specification indicates that compositions that include ortho-coumaric acid
and rebaudioside A, i.e., compositions TB and TC, “were judged to be
clearly superior in comparison to” compositions that did not include ortho-
coumaric acid, i.e., composition TA, that evidence does not establish the
results are unexpected in light of Howard’s teaching of a coumaric acid
containing composition that is sweetened with aspartame.
For the reasons discussed above, we are not persuaded that the
Examiner erred in rejecting claim 1 for obviousness over Howard, Prakash,
Owen, and Krammer as evidenced by Ley and Riemer.
Claims 2—10, 22, and 23 have not been argued separately and
therefore fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
SUMMARY
We affirm the rejection of claims 1—10, 22, and 23 under 35 U.S.C.
§ 103 as unpatentable over Howard, Prakash, Owen, and Krammer as
evidenced by Ley and Riemer.
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TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
12