Ex Parte Marriott

Patent Trial and Appeal Board

Oct 9, 2018

12280508 (P.T.A.B. Oct. 9, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/280,508 11/16/2009
24267 7590 10/11/2018
CESARI AND MCKENNA, LLP
ONE LIBERTY SQUARE
SUITE 310
BOSTON, MA 02109
FIRST NAMED INVENTOR
Raymond John Marriott
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.
218377-0002 1359
EXAMINER
STIJLII, VERA
ART UNIT PAPER NUMBER
1791
NOTIFICATION DATE DELIVERY MODE
10/11/2018 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):
docket@c-m.com
USPTOMail@c-m.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RAYMOND JOHN MARRIOTT
Appeal2017-010968
Application 12/280,508
Technology Center 1700
Before MARK NAGUMO, JEFFREY B. ROBERTSON, and LILAN REN,
Administrative Patent Judges.
REN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134 from a rejection2 of claims
13-20 and 24-36. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 The real party in interest is identified as Botanix Limited. Appeal Brief of
December 30, 2016 ("App. Br."), 2.
2 Final Office Action of October 19, 2016 ("Final Act."). In this opinion, we
also refer to the Examiner's Answer of May 16, 2017 ("Ans.") and the Reply
Brief of July 11, 2017 ("Reply Br.").
Appeal2017-010968
Application 12/280,508
CLAIMED SUBJECT MATTER
"This invention relates to antifoam agents derived from hop extracts
and especially the use of the antifoam agent in brewing." Spec. 1:4-5.3
"More specifically, the invention provides use of a mixture of hop lipids,
waxes and hard resins as an anti-foaming agent in brewing by addition of the
mixture in solid form to the brew kettle or by addition of the mixture as an
aqueous emulsion to the fermenter." Id. at 2:2-6. The specification
provides that "antifoam products compris[ e] hard resins and fixed oils and
waxes in the form obtainable by any extraction procedure." Id. at 2: 16-18.
"Accordingly the antifoam agent is composed of a mixture of hard resins,
waxes and lipids (oils/fats),from which has previously been removed a-
acids, optionally ~-acids, and essential oils which can cause unwanted
addition of bitterness or flavour." Id. at 2:23-25 ( emphases added).
Claims 13, 17, and 29, reproduced below, are illustrative of the
claimed subject matter:
13. A method of preparing an antifoam agent from
hops, the method comprising the steps of subjecting hops to
solvent extraction to obtain a hop extract; removing alpha acids,
optionally beta acids, and essential oils from the hop extract to
form a residue; and packaging the residue with instructions for
use as an antifoam agent, wherein the essential oils are removed
by distillation.
17. An anti-foaming method, the method comprising
the steps of producing an anti-foaming agent that includes a
mixture of lipids, waxes and hard resins by removing a-acids,
optionally ~-acids, and essential oils from a solvent extract of
hops, and adding the anti-foaming agent to an aqueous liquid
3 Application No. 12/280,508, Antifoamfrom Hop Extract, filed August 22,
2008 ("Spec.").
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Application 12/280,508
susceptible to foaming, wherein the essential oils are removed
by distillation prior to the adding step.
29. An anti-foaming agent comprising a mixture of
lipids, waxes, and hard resins obtainable by removing a-acids
and essential oils from a solvent extract of hops, wherein the
essential oils are removed by molecular distillation.
App. Br. 16, 17 (Claims Appendix).
REFERENCES
The prior art references relied upon by the Examiner in rejecting the
claims on appeal are:
Laws
Hsu
Guzinski
us 3,979,527
us 5,387,425
US 6,242,038 Bl
Sept. 7, 1976
Feb. 7, 1995
June 5, 2001
Tinseth, The Essential Oil of Hops: Hop Aroma and Flavor in Hops and
Beer (Oct. 27, 1997),
http://web.archive.org/web/l 997 l 027 l 45402/http://www.realbeer.com/ho
ps/ aroma.html
REJECTIONS
Claims 17, 18, 20, 26, and 29-36 are rejected under pre-AIA
35 U.S.C. § 102(b) as being anticipated by Guzinski. Final Act. 2.
Claims 17, 18, 20, 26, 27, and 29-36 are rejected under pre-AIA
35 U.S.C. § 103(a) as being unpatentable over Guzinski, Laws, and Tinseth.
Final Act. 7.
Claims 13-16, 19, 24, 25, and 28 are rejected under pre-AIA
35 U.S.C. § 103(a) as being unpatentable over Guzinski, Laws, Hsu, and
Tinseth. Final Act. 13.
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Application 12/280,508
OPINION
Anticipation of Claim 174 (anti-foaming method)
Appellant argues Guzinski does not describe each and every method
step of claim 17 particularly the step that "essential oils are removed by
distillation prior to the adding step." App. Br. 4. As Appellant points out,
the Examiner's rejection finds that Guzinski "discloses a non-acidic lipidic
resin which is derived from a carbon dioxide hop extract and free from alpha
acids, beta acids and their derivatives" with "anti-foaming effect" without
addressing the step of removing the "essential oil ... prior to the adding
step." Final Act. 2, 5, 6. The Examiner's Answer likewise does not address
this particular claim limitation. See, e.g., Ans. 20-27 (responding to some
but not all of the arguments raised by Appellant including the argument
regarding the step of removing the "essential oil ... prior to the adding
step"). The anticipation rejection of claim 17 does not show that "all of the
claim elements and their limitations are shown in a single prior art
reference," In re Skvorecz, 580 F.3d 1262, 1266 (Fed. Cir. 2009), and as a
result, we cannot sustain the rejection.
4 Appellant does not present argument separate for claims dependent from
claim 17. App. Br. 3-4. These dependent claims, namely, claims 18, 20,
and 26 stand or fall with claim 17 for the anticipation rejection. Id. at 4; see
also 37 C.F.R. § 41.37(c)(l)(iv) (2013).
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Application 12/280,508
Anticipation of Claim 295 (Anti-foaming agent)
Appellant argues Guzinski does not describe each and every method
step of claim 29 particularly "wherein the essential oils are removed by
molecular distillation." App. Br. 5. Appellant argues that the Examiner's
rejection finds that "the boiling of wort where volatile essential oils are
separated from liquid wort by evaporation reads on distillation" without
addressing the "molecular distillation" recited in claim 29. Final Act. 6; see,
e.g., Ans. 20-27 (responding to some but not all of the arguments raised by
Appellant including the argument regarding the "molecular distillation").
"The patentability of a product does not depend on its method of
production. If the product in a product-by-process claim is the same as or
obvious from a product of the prior art, the claim is unpatentable even
though the prior product was made by a different process." In re Thorpe,
777 F.2d 695, 697 (Fed. Cir. 1985). In this case, Appellant's argument is
directed to the differences (if any) between the prior art process and that
recited in claim 29 without showing that the prior art product is different
from that produced in the prior art process. We accordingly sustain the
Examiner's anticipation rejection of claim 29.
5 Appellant does not present argument separate for claims dependent from
claim 29. App. Br. 4-6. These dependent claims, namely, claims 30-36
stand or fall with claim 29 for the anticipation rejection. Id. at 4; see also
37 C.F.R. § 41.37(c)(l)(iv) (2013).
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Obviousness of Claim 176 ( Anti-foaming method)
Anti-foaming method claim 1 7 requires, inter alia, "removing ...
essential oils from a solvent extract of hops ... wherein the essential oils are
removed by distillation prior to the adding step." App. Br. 16 (Claims
Appendix). Under the broadest reasonable interpretation of this language, in
light of the Specification, the removal need not be complete. See In re
Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000) ("[D]uring examination
proceedings, claims are given their broadest reasonable interpretation
consistent with the specification."). Moreover, claim 17 (and the claims that
depend from it) does not recite, expressly or by implication, any necessary
amount of removal.
In rejecting claim 17, the Examiner acknowledges that Guzinski "is
silent as to the removal of the essential oils from the lipidic hop extract."
Final Act. 10. The Examiner, however, finds that Example 2B of Guzinski
describing heating a non-acidic lipidic hop resin at 95° C for 10 hours
teaches or suggests the removal of essential oils from the resin by
distillation. Id. The Examiner cites Tinseth for the teaching that "essential
hop oils are very volatile compounds and vaporize even at the room
temperature" and therefore reasons that essential oils from the hop extract in
Guzinski would be removed when heated (i.e., distillation). Id. at 10-11.
Additionally, the Examiner cites Laws for the teaching that "when
hops are added to the copper at the start of boiling nearly all of the hop oil
constituents are lost with the steam." Id. at 11 (citing Laws 1:15-17). The
6 Appellant does not present argument separate for claims dependent from
claim 17. App. Br. 6, 8-13. These dependent claims, namely, claims 18, 20,
and 26 stand or fall with claim 17 for the obviousness rejection. Id. at 13;
see also 37 C.F.R. § 41.37(c)(l)(iv) (2013).
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Examiner accordingly finds that Laws teaches essential oils may be removed
from the hop extract by steam distillation. Id. at 12.
Appellant argues that the Examiner erred in rejecting claim 17 for
obviousness because "under the conditions described in Guzinski, hop
essential oils would not have been lost upon heating a hop extract at 95° C
for 10 hours." App. Br. 9. In support, Appellant submits "Declaration by
Dr. Yannick Ford" dated May 20, 2013 ("First Ford Deel."), "Second
Declaration by Dr. Yannick Ford" dated July 20, 2015 ("Second Ford
Deel."), and "Declaration by Professor Paul Hughes) dated May 25, 2016
("Hughes Deel.").
Dr. Ford testifies that the conditions described in Guzinski "do[] not
remove significant amount of essential oils from the extract." First Ford
Deel. ,-J 3; see also id. ,-i 5 (testifying that the conditions "described in
Example 2B of Guzinski fail[] to significantly remove essential oils").
Appellant likewise argues that "[t]he experiments described in the first Ford
declaration showed that heating a hop extract to 95 °C for 10 hours does not
remove from the extract a measureable amount of hop essential oil." App.
Br. 10. Claim 17, however, does not recite a "significant amount" of
essential oil being removed. As discussed supra, the claim does not recite
any particular amount of the essential oil removed. Dr. Ford's testimony is
therefore not commensurate in scope with claim 17 and we accordingly are
not persuaded that the Examiner reversibly erred in evaluating the
Declaration by Dr. Yannick Ford dated May 20, 2013 with regard to the
teaching in Guzinski.
Dr. Ford performed certain experiments to show that conditions
described in Guzinski "result[] in no loss of volatile oils." Second Ford
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Deel. 2. The record before us, however, does not show a measurement of
"volatile oils" present in the hop extract before and after the conditions
(heating, etc.) described in Guzinski are applied to the hop extract. See, e.g.,
id. Because the record before us does not show the initial amount of the
volatile oils present in the hop extract, the conclusion that there is "no loss"
of such oils (Second Ford Deel. 2) lacks evidentiary support. Moreover,
rather than "volatile oils," claim 17 recites the removal of "essential oils,"
which Professor Hughes testifies should be distinguished from "volatile
oils." Hughes Deel. ,-J,-J 14, 15. For this reasons, we are not persuaded that
the Examiner reversibly erred in evaluating the Declaration by Dr. Y annick
Ford dated July 20, 2015 with regard to the teaching in Guzinski.
Upon carefully considering Professor Hughes' declaration, we find
that the testimony does not address the full scope of the claim. For example,
Professor Hughes testifies with regard to a particular prior art embodiment
but does not dispute that removal of essential oils from a hop extract by
distillation - which is the limitation at issue - is known in the prior art.
Unlike Dr. Ford, who conducted experiments under the prior art conditions,
Professor Hughes did not conduct any experiments. Professor Hughes
testified that "Guzinski does not describe the physical arrangement of the
experimental apparatus," but, Professor Hughes opined, the apparatus used
"would have been understood by any practical organic chemist." Hughes
Deel. ,-J 6. 7 Professor Hughes speculates that because a post-experiment
"aqueous layer was then removed and discarded" in Guzinski ( Guzinski at
7 The record before us does not establish whether the apparatus and
arrangement theorized in Professor's Hughes' declaration are the same as
those actually used in Dr. Ford's experiments.
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Application 12/280,508
6: 1-2), "there could not have been any loss of hop essential oils in Example
2 of Guzinski." Id. ,i 7 ( emphasis in original). Professor Hughes'
unequivocally stated speculation is not entirely consistent with Dr. Ford's
observation that Guzinski "does not remove significant amount of essential
oils from the extract." First Ford Deel. ,i 3. Professor Hughes'
acknowledgement that "[t]he conditions described in Guzinski in part B of
Example 2 would, unless steps were taken to avoid it, necessarily result in
evaporation of any water present after 10 hours" (Hughes Deel. ,i 6) and the
fact that Example 2 in Guzinski is silent on any preventative measures to
avoid evaporation reasonably suggests that a skilled artisan would have
understood that at least some essential oils would be lost during the process.
Moreover, Professor Hughes' conclusion that "any loss of hop
essential oils from the dispersible hop extract of Guzinski would have been
entirely contrary to the goal stated in this reference of developing an
improved method of providing a hoppy aroma to beer" (Hughes Deel. ,i 9)
does not support patentability because the argument is not directed to any
limitation recited in claim 17.
Professor Hughes' remaining testimony regarding the "terminology
around hop oil" discusses the vapor pressure of certain "common hop
essential oil components" but does not explain how the testimony relates to
the recited "essential oil" which is not defined in the claim or the
specification by vapor pressure or composition. See Hughes Deel. ,i,i 12-15.
Appellant's argument regarding the volatility of certain essential oils do not
explain why it supports the patentability of a claim that does not recite the
volatility of the essential oils. See App. Br. 11; see also Reply Br. 3-4.
Professor Hughes' testimony that because "Tinseth was authored by an
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Application 12/280,508
amateur brewer," "a chemist of ordinary skill in the art would not apply the
teaching of Tinseth to Guzinski or in any other way change their
understanding or interpretation of Guzinski based on anything set forth in
Tinseth" (Hughes Deel. ,i 11) also does not persuaded us of reversible error
in the Examiner's findings. The relevant inquiry here is "[i]f a person of
ordinary skill can implement a predictable variation [ of a known work],
§ 103 likely bars its patentability," KSR Int'! Co. v. Teleflex Inc., 550 U.S.
398, 417 (2007) - which is an issue not addressed by Appellant. Moreover,
we note that neither Professor Hughes nor Appellant argues that a skilled
artisan in this case excludes a person such as the author of Tinseth. No
reversible error has been identified in this aspect of the Examiner's
obviousness analysis.
In any case, Appellant's argument regarding whether an extract would
"impart aroma and flavor during the brewing process" (id.) and that the
"claimed invention features avoiding the addition of bitterness or flavor"
(Reply Br. 3) is not directed to any limitation of claim 17 and therefore
cannot impart patentability to claim 17. In re Hiniker Co., 150 F.3d 1362,
1369 (Fed. Cir. 1998) (holding that unclaimed features cannot impart
patentability to claims). Although neither declarant discusses Laws in detail,
Appellant argues that a skilled artisan would not have combined Guzinski
with Laws because "such a process would produce an extract that would no
longer impart aroma and flavor during the brewing process." App. Br. 12.
Appellant's unelaborated argument, however, does not show that Laws
teaches against removing the essential oils from the hop extract. See id.
(asserting that Laws "does not alter the conclusion above that a person
having ordinary skill in the art would not have been motivated to add a
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distillation step for removing hop essential oils from a hop extract to the
Guzinski method in order to produce an anti-foaming agent, a step required
by claim 17" without sufficiently identifying reversible error in the
Examiner's obviousness analysis).
In summary, Guzinski undisputedly describes nine examples of
preparing a dispersible lipidic hop extract such as the example cited by the
Examiner using a hop solution "containing 50% alpha acids and 30% beta
acids" from which acid is removed. Guzinski 5:54-57; see, e.g., id. at 6:55-
9:50 ( describing nine examples such as example 5 in which "commercial
hop extract, produced with the use of hexane as solvent, containing 48%
alpha acids and 27% beta acids" from which "[t]he water layer containing
alpha acids and beta acids was removed"). Guzinski undisputedly states that
"[i]t is preferable that at least part of the disperible lipidic hop extract be
added near the end of wort boil, or even after completion of the boiling
period, to minimize evaporative loss of the volatile hop oils therein." Id. at
9:25-28. References such as Tinseth and Laws confirm that essential oils of
a hop extract may be removed by distillation. See Laws 1: 15-17 ("Hence
when hops are added to the copper at the start of boiling nearly all of the hop
oil constituents are lost with the steam."); see Tinseth p. 1 ("By far the most
common way that hops are used is to add them to the brewkettle and boil
them in the sweet wort. ... Late kettle additions (0-30 minutes before
strikeout) are responsible for most of the 'hop character' of a beer, i.e. hop
flavor and aroma from the essential oils of the hop."). Professor Hughes
testifies that "hop essential oils, ... can be driven off from aqueous systems
when boiled, i.e., steam distillation, which is probably the major cause of
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hop essential oil losses in the open process of wort boiling during beer
production." Hughes Deel. ,i 13.
[I]t is elementary that the mere recitation of a newly
discovered function or property, inherently possessed by things
in the prior art, does not cause a claim drawn to those things to
distinguish over the prior art. Additionally, where the Patent
Office has reason to believe that a functional limitation asserted
to be critical for establishing novelty in the claimed subject
matter may, in fact, be an inherent characteristic of the prior art,
it possesses the authority to require the applicant to prove that
the subject matter shown to be in the prior art does not possess
the characteristic relied on.
In re Best, 562 F.2d 1252, 1254-55, (CCPA 1977). "It is a general rule that
merely discovering and claiming a new benefit of an old process cannot
render the process again patentable." In re Woodruff, 919 F.2d 1575, 1578
(Fed. Cir. 1990). In this case, to the extent that claim 17 recites "steps of
producing an anti-foaming agent," the claim does not require the anti-
foaming agent to have any particular composition, characteristics or
parameters, and Appellant has not shown that the prior art process does not
produce such a product. For these reasons, we sustain the Examiner's
obviousness rejection of claim 17.
Obviousness of Claim 298 (Anti-foaming agent)
Claim 29 is drawn to "[ a ]n antifoam agent, ... wherein the essential
oils are removed by molecular distillation." Appellant argues that the
8 Appellant does not present argument separate for claims dependent from
claim 29. App. Br. 7, 13. These dependent claims, namely, claims 30-36
stand or fall with claim 29 for the obviousness rejection. Id. at 13; see also
37 C.F.R. § 41.37(c)(l)(iv) (2013).
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Examiner reversibly erred because the recited molecular distillation "is
necessary to remove a sufficient quantity of hop essential oil from a solvent
extract of hops to make an anti-foaming product that will not impart any
flavor to the final product." App. Br. 8. Appellant argues that the "claimed
invention features avoiding the addition of bitterness or flavor." Reply Br.
3. This argument is based on limitations not recited in claim 29, and such
unclaimed features cannot impart patentability to claim 29. Hiniker, 150
F.3d at 1369. For reasons parallel to those set forth with regard to claim 17,
the Examiner's obviousness rejection of claim 29 is sustained.
Obviousness of Claim 139 (method of preparing antifoaming agent
In rejecting claim 13, Appellant argues Guzinski does not "teach or
even suggest a distillation step for removing hop essential oils from a hop
extract to produce an antifoam agent." App. Br. 13. Appellant repeats the
argument that "distillation, e.g., molecular distillation, must be employed to
remove a sufficient quantity of hop essential oils from a solvent extract of
hops to make an anti-foaming product that will not impart any flavor to the
final product." Id. Appellant also repeats that the "claimed invention
features avoiding the addition of bitterness or flavor." Reply Br. 3. We
again point out that claim 13 does not recite "make an anti-foaming product
that will not impart any flavor to the final product" (App. Br. 13); nor is
"avoiding the addition of bitterness or flavor" (Reply Br. 3) a requirement of
9 Appellant does not present argument separate for claims dependent from
claim 13. App. Br. 13-14. These dependent claims, namely, claims 14-16,
24, 25, and 28, stand or fall with claim 13 for the obviousness rejection. Id.
at 14; see also 37 C.F.R. § 41.37(c)(l)(iv) (2013).
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claim 13. Such unclaimed features cannot impart patentability to claim 13.
Hiniker, 150 F.3d at 1369.
With regard to Appellant's argument that Hsu describes a foam-
enhancing substance and therefore would "achieve the opposite outcome as
the method of claim 13" (App. Br. 14 (emphasis added)), we find that the
Examiner cites Hsu for the "packaging of various hop extracts" which is not
disputed by Appellant. Compare Final Act. 19, with App. Br. 13. Because
claim 13 does not recite any particular composition, characteristics,
parameters, or effect of the recited anti-foam agent, "claiming a new benefit
of an old process cannot render the process again patentable." Woodruff,
919 F.2d at 1578. We sustain the Examiner's obviousness rejection of claim
13.
DECISION
The Examiner's obviousness rejection of claims 17, 18, 20, 26, 27,
and 29-36 is affirmed.
The Examiner's obviousness rejection of claims 13-16, 19, 24, 25,
and 2 8 is affirmed.
The Examiner's anticipation rejection of claims 17, 18, 20, and 26 is
affirmed.
The Examiner's anticipation rejection of claims 29-36 is reversed.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l .136(a). See 37 C.F.R.
§ l.136(a)(l )(iv).
AFFIRMED
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