Ex Parte Lien et al

Patent Trial and Appeal Board

Dec 21, 2016

11574377 (P.T.A.B. Dec. 21, 2016)

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.
11/574,377 03/27/2007 Wen Sze Lien 3712036.00629 3919
29157 7590 12/23/2016
K&T Oates T T .P-Phiraan
EXAMINER
P.O. Box 1135
CHICAGO, IL 60690
TURNER, FELICIA C
ART UNIT PAPER NUMBER
1793
NOTIFICATION DATE DELIVERY MODE
12/23/2016 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):
USpatentmail@klgates.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WEN SZE LIEN, ZHU GAO, YONG FU WANG,
BEATRICE LADO, YAN XI JIN, FABIEN ROBERT,
AHMED BOUSBAINE, NADJI REKHIF, and
CHRISTOPHER BRIMELOW1
Appeal 2015-006768
Application 11/574,377
Technology Center 1700
Before BRADLEY R. GARRIS, KAREN M. HASTINGS, and
MONTE T. SQUIRE, Administrative Patent Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 1—6, 10, and 12—24. We have jurisdiction under
35 U.S.C. § 6.
We AFFIRM.
1 Nestec S.A. is identified as the real party in interest. App. Br. 2.
Appeal 2015-006768
Application 11/574,377
Appellants claim a shelf-stable concentrate cooking aid (independent
claim 1), a method of using such a cooking aid (independent claims 17, 21,
and 22) and a process for preparing such a cooking aid (independent claims
18 and 20). The cooking aid may comprise Xian characteristics (dependent
claim 3 and independent claim 22).
A copy of representative claims 1 and 3, taken from the Claims
Appendix of the Appeal Brief, appears below.
1. A shelf-stable concentrate cooking aid comprising
MSG in an amount from about 1.0% to about 2.0% by weight;
IMP in an amount from about 0.05% to about 0.1%;
GMP in an amount from about 0.05% to about 0.1%;
sodium chloride;
between 10 and 20 % by weight of food derived acids and
carbohydrates; and
between 20 and 45 % by weight macromolecules comprising
polysaccharides, proteins, and fats, wherein the polysaccharides are present
in an amount from about 8% to about 20% and the proteins are present in an
amount from about 8% to about 20%, and the MSG, the IMP, the GMP, the
food derived acids, the carbohydrates and the macromolecules are provided
by a raw product used to produce the shelf-stable concentrate cooking aid,
the raw product selected from the group consisting of vegetables, meat and a
combination thereof.
3. The shelf stable cooking aid according to claim 1, comprising Xian
sensory characteristics.
The Examiner rejects claims 3 and 22 under the 2nd paragraph of
35 U.S.C. § 112 as being indefinite (Final Action 2).
Under 35 U.S.C. § 103(a), the Examiner rejects as unpatentable:
claims 1—6, 10, 13—17, 20—22, and 24 over Schoenmaker et al. (US
6,190,709 Bl, issued Feb. 20, 2001) (“Schoenmaker”) in view of Emster
(US 5,077,062, issued Dec. 31, 1991), Eldridge et al. (Carbohydrate
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Composition of Soybean Flours, Protein Concentrates, and Isolates, 27 J.
Agric. Food Chem. 799-802 (1979)) (“Eldridge”), and Huisman et al. (Cell
wall polysaccharides from soybean (Glycine max.) meal. Isolation and
characterisation, 37 Carbohydrate Polymers 87—95 (1998)) (“Huisman”) {id.
at 3—13);
claim 12 over these first recited references in combination with Olson
et al. (US 3,743,514, issued July 3, 1973) (“Olson”) {id. at 14);
claims 18 and 19 over the first recited references in combination with
Anderson et al. (US 5,053,234, issued Oct. 1, 1991) (“Anderson”) and JP
’676 (Ochi, JP 58-193676 A, published Nov. 11, 1983) (“JP ’676”) {id. at
14—18); and
claim 23 over the first recited references in combination with Yoshida
et al. {Participation of Free Fatty Acids in the Oxidation of Purified Soybean
Oil During Microwave Heating, 69 JAOCS 1136—1140 (1992)) (“Yoshida”)
{id. at 18—19).
In contesting the § 103 rejections, Appellants present arguments
specifically directed to the independent claims only with no separate
additional arguments of any meaningful specificity directed to the dependent
claims (App. Br. 14—29). Therefore, in assessing these § 103 rejections, the
dependent claims will stand or fall with their parent independent claims of
which claim 1 is representative.
We sustain each of the above rejections for the reasons expressed in
the Final Action, the Answer, and below.
The $ 112, 2nd paragraph. Rejection
The Examiner considers the recitation “‘Xian characteristics’” to
render claims 3 and 22 indefinite because the phrase has not been adequately
defined in the Specification and because the Specification discloses that the
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objective description and characterization of the term Xian “still remains
unclear” (Final Action 2 (referring to original Spec. 3:1—4 and published
Spec. 1 5)).
Appellants argue “the specification disclose[s] that ‘Xian is a taste
descriptor well understood and frequently used in Chinese culinary food
culture’ (emphasis added)” (App. Br. 12) and that “the skilled artisan would
immediately appreciate what is meant by the phrase ‘Xian characteristics’”
(id. at 14).
The original Specification disclosure teaches: “The so called XIAN
expression is well understood and commonly used in Chinese culinary
culture but its objective description and characterization still remains unclear
since it seems to go beyond the umami dimension.” (Original Spec. 3:1—5).
This Specification teaching supports the Examiner’s indefmiteness
determination. This determination also is supported by the Specification
disclosure that “deliciousness is a subjective attribute” (original Spec. 2:9-
10) and that “the expression XIAN is the one that corresponds and describes
to the best as deliciousness” (id. at 2:31—32). These Specification
disclosures evince that the claim phrase “Xian characteristics” is a subjective
attribute whose objective description and characterization remain unclear.
For these reasons, claims 3 and 22 viewed in light of Appellants’
Specification do not “inform those skilled in the art about the scope of the
invention with reasonable certainty.” Nautilus, Inc. v. Biosig Instruments,
Inc., 134 S. Ct. 2120, 2129 (2014).
In support of their definiteness position, Appellants also make
reference to the Specification disclosure of typical Xian organoleptic
descriptors (App. Br. 12—13) and reference to “a graphical representation of
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umami/xian degree and Xian” (id. at 13).2 3However, these references fail to
provide the reasonable certainty required by the 2nd paragraph of § 112.
Based on the record before us, we agree with the Examiner that claims
3 and 22 are indefinite.
The § 103 Rejections-
In rejecting claim 1, the Examiner concludes that it would have been
obvious “to include salt in the flavor enhancer of Schoenmaker as in Emster
in order to further enhance the flavoring imparting ability” (Final Action 4)
and “to modify the flavor enhancer of Schoenmaker to include
polysaccharides in the amounts as disclosed in [Ejldridge and Huisman since
these are the amounts found in soybean flours and soybean meal and since
the polysaccharides would have added to the taste and texture of the flavor
enhancer” (id. ). The Examiner further concludes that it would have been
obvious to provide Schoenmaker’s MSG, IMP, and GMP in the claimed
amounts because such amounts overlap the ranges disclosed by
Schoenmaker (id. at 4—5) and likewise obvious to provide Schoenmaker’s
proteins in the claimed amounts “since they contribute to the flavor provided
by the flavor enhancer and it would have been obvious to optimize for the
desired level of flavor enhancement” (id. at 5).
We observe that Appellants do not address, and therefore do not
identify any error in, the Examiner’s rebuttals of several arguments
2 Based on the record before us, this graphical representation is merely
attorney argument unsupported by objective evidence.
3 The indefiniteness of claims 3 and 22 does not prevent us from assessing
the § 103 rejection thereof because the Examiner considers the phrase “Xian
characteristics” to be an inherent characteristic of these claims and the
applied prior art (see, e.g., Final Action 2, 5).
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contesting the § 103 rejections. For example, Appellants acknowledge
Schoenmaker discloses IMP and GMP amounts of less than about 0.1% (i.e.,
within the claim 1 range) but point out Schoenmaker prefers amounts of less
than 0.01% (i.e., outside the claim 1 range) and correspondingly argue
“Schoenmaker teaches away from the presently claimed amounts” (App. Br.
16). However, Appellants do not address the rebuttal of this argument
wherein the Examiner cites legal authority for the proposition that
Schoenmaker’s preference does not teach away from the claimed amounts
(compare Reply Br. generally with Ans. 20-21). We will not further
reiterate such arguments wherein the Examiner’s persuasive rebuttals have
not been challenged by Appellants in the record of this appeal.
Regarding the polysaccharides limitation of claim 1, Appellants argue
“after the thorough enzymatic and fermentative hydrolysis described in
Schoenmaker, the skilled person would not expect any polysaccharides
would still be present, unless in very minor amounts” (App. Br. 16).
Appellants provide no evidence in support of this argument. More
importantly, Appellants do not specifically address and show error in the
Examiner’s conclusion that it would have been obvious to provide the flavor
enhancer of Schoenmaker with polysaccharides in the claimed amounts in
view of Eldridge and Huisman because “the polysaccharides would have
added to the taste and texture of the flavor enhancer” (Final Action 4).
Appellants contend that Schoenmaker discloses 20.25^44.0% proteins
which “is well above the presently claimed amounts [i.e., “from about 8% to
about 20%” (claim 1)]” (App. Br. 16).
Appellants’ contention is not persuasive for a number of reasons.
First, Appellants fail to explain why the claim 1 limitation “about 20%”
should be interpreted as excluding the 20.25% of Schoenmaker. Second,
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Appellants fail to dispute in their Reply Brief the Examiner’s determination
that the 20.25% of Schoenmaker is so close to the “about 20%” of claim 1
that “one of ordinary skill would have expected compositions that are in
such close proportions to those in [the] prior art to be prima facie obvious
and to have the same properties” (Ans. 22). We emphasize that this
determination of the Examiner is supported by established precedent. See
Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783 (Fed. Cir.
1985); see also In re Harris 409 F.3d 1339, 1341 (Fed. Cir. 2005).
Appellants further argue “there exists no reason why the skilled
artisan would have been motivated to combine the cited references to arrive
at the presently claimed subject matter when none of the references even
consider Xian characteristics” (App. Br. 18).
Appellants’ argument is unconvincing because it is not embellished
with any discussion of the reasons expressly articulated by the Examiner for
combining the applied references, for example, in order to provide flavor,
taste, and texture (Final Action 4). Moreover, this argument is premised on
“Xian characteristics” which only claims 3 and 22 recite.
Further regarding the “Xian characteristics” of claims 3 and 22,
Appellants acknowledge the Examiner’s position that “such a property
would have been an inherent characteristic of the composition” (Final
Action 5) but apparently consider this position to be erroneous because
“Schoenmaker fails to disclose or suggest several elements of the present
claims” (App. Br. 18).
Contrary to Appellants’ apparent belief, it is not inappropriate to rely
on inherency in an obviousness analysis. “[I]n order to rely on inherency to
establish the existence of a claim limitation in the prior art in an obviousness
analysis—the limitation at issue necessarily must be present, or the natural
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result of the combination of elements explicitly disclosed by the prior art.”
PAR Pharm., Inc. v. TWi Pharms., Inc., 773 F.3d 1186, 1195—96 (Fed. Cir.
2014). The Examiner’s proposed combination of the applied prior art would
result in a composition within the scope of the appealed claims, and
accordingly the “Xian characteristics” of claims 3 and 22 would be the
natural result of this proposed combination.
Finally, Appellants argue that “it would not have been obvious to
modify the amounts of components in Schoenmaker because the Examiner
has not demonstrated that any of the presently recited claim elements are
result-effective variables” (App. Br. 18—19).
“A recognition in the prior art that a property is affected by the
variable is sufficient to find the variable result-effective.” In re Applied
Materials, Inc. 692 F.3d 1289, 1297 (Fed. Cir. 2012). Here, the fact that
Schoenmaker discloses component-amounts, including amount ranges
overlapping the claimed ranges, evinces a recognition by Schoenmaker that
a property, such as flavor enhancement, of Schoenmaker’s flavor enhancer is
affected by the component-amount variable. For this reason, the record
reflects that the component-amount variable of Schoenmaker is an art-
recognized result-effective variable.
For the reasons stated above and given by the Examiner, Appellants’
arguments fail to reveal error in the § 103 rejections before us.
Conclusion
The decision of the Examiner is affirmed.
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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)(1).
AFFIRMED
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