Ex Parte Matsubayashi et al

Patent Trial and Appeal Board

Mar 18, 2016

12671096 (P.T.A.B. Mar. 18, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/671,096 05/14/2010
55694 7590 03/22/2016
DRINKER BIDDLE & REATH (DC)
1500 K STREET, N.W.
SUITE 1100
WASHINGTON, DC 20005-1209
FIRST NAMED INVENTOR
Hideki Matsubayashi
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.
47233-5068-00 (447493) 7993
EXAMINER
DICUS, TAMRA
ART UNIT PAPER NUMBER
1791
NOTIFICATION DATE DELIVERY MODE
03/22/2016 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):
DBRIPDocket@dbr.com
penelope.mongelluzzo@dbr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HIDEKI MATSUBA Y ASHI
and MAMI MIZUTA 1
Appeal2014-004075
Application 12/671,096
Technology Center 1700
Before, JEFFREY T. SMITH, JAMES C. HOUSEL, and
JULIA HEANEY, Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134(a) from the
Examiner's final rejection of claims 1 and 4-11. We have jurisdiction
pursuant to 35 U.S.C. § 6(b).2
1 According to the Appeal Brief, the Real Party in Interest is Suntory
Holdings Limited. Br. 1.
2 Although Appellants state that they are unaware of any related appeals, we
determine that this appeal is related to Appeal No. 2014-004725 (involving
U.S. Patent Application 12/866,168). Both this application and the
12/866, 168 application name the same inventorship and are each assigned to
the same assignee. In addition, the claims of both applications are directed
to fruit juice-containing alcoholic beverages.
Appeal2014-004075
Application 12/671,096
BACKGROUND
Appellants' invention relates to a fruit juice-containing alcoholic
beverage. (Spec. 1.) Claim 1 is reproduced below from the Claims
Appendix to the principal Brief:
1. A fruit juice-containing alcoholic beverage base
compnsmg:
a fruit juice and an alcohol,
wherein the percentage of fruit juice (B) is at least 300%,
relative to 100 % obtained by squeezing fruit,
wherein a ratio of a percentage of the fruit juice (B) to a
percentage of the alcohol (A) is B/A 2:19.0,
wherein the percentage of alcohol (A) is at least 9 v/v%,
and the percentage of fruit juice satisfies the following
equation:
the percentage of fruit juice (B)=(C) x (D) x 100%,
wherein (C) is the amount of a concentrated fruit juice in g/100
ml and (D) is the concentration rate,
wherein the fruit juice is a thermally concentrated fruit
JUI Ce.
wherein the fruit juice-containing alcoholic beverage
base is produced by a method comprising:
a step 1 of mixing the alcohol with one or more kinds of
fruit juice to obtain a mixed solution; and
a step 2 of storing the mixed solution for at least 1 day.
The Examiner maintains, and Appellants appeal, the
rejections I-IV of claims 1 and 4-11 as follows: 3
3 Final Act. 3-9; Ans. 3-9; App. Br. 2-17
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Application 12/671,096
I. Claim 9 stands rejected under 35 U.S.C. § 112, second
paragraph, as indefinite.
II. Claims 1--4 and 6-10 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Shimizu et al. US 2007 /0092623 Al
(hereinafter "Shimizu" published Apr. 26, 2007) in view of
Cole et al US 2,967,778. (hereinafter "Cole" issued Jan. 10,
1961 ).
III. Claim 5 stands rejected under 35 U.S.C. § 103(a) as allegedly
unpatentable over Shimizu in view of Cole and Nakashima
US 6, 238,712 (issued May 29, 2001).
IV. Claim 11 stands rejected under 35 U.S.C. § 103(a) as allegedly
unpatentable over Shimizu in view of Cole and Blake
US 4,244,981 (issued Jan. 13, 1981).
The Examiner also maintained the following rejection (Final
Act. 2; Ans. 2):
V. Claims 1 and 4-11 are rejected under the judicially created
doctrine of obviousness-type double patenting as being
unpatentable over claims 1-19 of copending Application, Serial
No. 12/866,168 (filed Aug. 4, 2010).
OPINION
Rejection under 35 U.S.C. § 112, second paragraph
We REVERSE.
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Application 12/671,096
The Examiner found that independent claim 9 is indefinite because
"the phrase '80% or higher' renders the claim(s) indefinite because claim 1
indicates fruit juice of at least 300%. Thus 80% up to 299% is not within the
range the claim depends from." (Final Act. 3).
Appellants argue:
Claim 8 depends from claim 1 and recites a "dilution-type
alcoholic beverage produced by mixing the fruit juice-containing
alcoholic beverage base of claim 1 with a diluting solution." Claim 9
recites that the "dilution-type alcoholic beverage of Claim 8 [has] a
percentage of fruit juice of 80% or higher." A person skilled in the art
would have understood from a plain reading of these claims that the
fruit juice-containing alcoholic beverage base of claim 1 and the
dilution type alcoholic beverage of claim 8 are different compositions.
(Br. 4).
The test for compliance with§ 112, ii 2 is whether the claims set out
and circumscribe a particular area with a reasonable degree of precision and
particularity when read in light of the application disclosure as they would
be interpreted by one of ordinary skill in the art. In re Moore, 439 F.2d
1232, 1235 (CCPA 1971). Thus, the language of a claim satisfies§ 112, ii 2
only if "one skilled in the art would understand the bounds of the claim
when read in light of the specification." Exxon Research & Eng 'g Co. v.
United States, 265 F.3d 1371, 1375 (Fed. Cir. 2001).
The Specification states:
The degree of dilution can be determined according to the type
of a diluting solution, a desired flavor, and the like. The tingling
sensation distinctive of alcohol in a diluted beverage can be reduced
or eliminated when the percentage of fruit juice in the diluted
beverage is 80% or higher. Thus, it is desirable to dilute a beverage
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Application 12/671,096
such that the percentage of fruit juice in the diluted beverage is 80%
or higher, preferably 100% or higher.
(Spec. ii 54).
A person skilled in the art would have understood from the plain
meaning of the Specification that the base beverage is diluted such that the
percentage of fruit juice in the dilution beverage is 80% or higher. Thus, on
this record, the Examiner has not adequately explained why claim 9 fails to
particularly point out and distinctly claim the subject matter which the
inventor regards as the invention.
Accordingly we reverse the Examiner's rejection under 35 U.S.C.
§ 112, second paragraph.
Prior Art Rejections
We have reviewed each of Appellants' arguments for patentability.
However, we determine that a preponderance of the evidence supports the
Examiner's§ 103 rejections. Accordingly, we will sustain all of the
Examiner's rejections for essentially the reasons expressed in the Answer
and we add the following for emphasis. 4
The Specification refers to several patent documents describing
attempts that have been made to reduce or eliminate such an alcohol
irritation. (Spec. iii! 3-5). This includes the addition of fruit and fruit juice
to eliminate an unpleasant smell of an alcoholic beverage so that aftertaste
and taste are improved. The Examiner found Shimizu also teaches a fruit
4 A complete statement of the Examiner's rejections appeared on pages 3-9
of the Final Action.
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Appeal2014-004075
Application 12/671,096
juice containing alcoholic beverages. (Final Act. 4; Shimizu 56-64 ).
Shimizu teaches the fruit component can be from concentrated fruit juice
and the amount of the fruit component is not limited. (Shimizu 63-64). The
Examiner recognized that Shimizu does not teach at least 9 v /v% of alcohol
or amount of alcohol being 11.5 times, as claimed. (Final Act. 4). The
Examiner concluded it would have been obvious to modify the volume
percentage and amount of alcohol, because Shimizu teaches that fruit juice is
adjusted for taste in an alcoholic fruit juice beverage. (Final Act. 4; Shimizu
64). The Examiner also found Cole teaches techniques, including thermal
concentrating, for making fruit juice concentrate. (Final Act 8; Cole col. I,
11. 35-50.). The Examiner further found Blake teaches malic acid is a well-
known organic acid for use in the food art for adjusting pH. (Final Act 9;
Blake col. 6, 1. 60 to col. 7, 1. 21).
Rejections II and III s, 6
Appellants argue the Examiner's statement of rejection is
overgeneralized and Shimizu does not suggest how to decrease the irritant
sensation of alcohol or enhance the mature flavor of fruit, and fails to
disclose using concentrated fruit juice; thus no amount of optimization could
result in a percentage of fruit juice greater than 100%. (Br. 6-7).
5 Appellants have not presented arguments directed to any particular claim.
We select independent claim 1 as representative of the rejected subject
matter and will limit our discussion thereto.
6 Appellants do not present additional arguments for separately rejected
claim 5 (Rejection III). Appellants rely on the same arguments presented for
independent claim 1. Consequently, claim 5 will stand or fall with
independent claim 1.
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Appellants further argue the percentage of fruit juice in claim 1 is over 15
times higher than the highest amount in Example 9 of Shimizu. (Br. 8).
Appellants' arguments lack persuasive merit. In an obviousness
analysis, we consider "not merely what the references disclose, but whether
a person of ordinary skill in the art, possessed with the understandings and
knowledge reflected in the prior art, and motivated by the general problem
facing the inventor, would have been led to make the combination recited in
the claims." In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). The
Specification discloses to achieve a percentage of fruit juice greater than
100%, concentrated fruit juice must be utilized. (Spec. 23). Shimizu
discloses the use of concentrated fruit juice in the formation of alcoholic
beverages. Shimizu expressly states that the amount of fruit component can
be varied from the point of taste. (Shimizu iii! 63-64). Thus, a person of
ordinary skill in the art would have recognized the amount of fruit juice
utilized in the alcoholic beverage would vary depending upon the alcohol
content. The claimed invention is not limited to enhancing the mature flavor
of fruit.
Appellants' arguments regarding Shimizu Example 9 are not
persuasive of reversible error in the Examiner's rejection. A reference is not
limited to its examples, but is available for all that it discloses and suggests
to one of ordinary skill in the art. See In re Widmer, 353 F.2d 752, 757
(CCPA 1965). As set forth above a person of ordinary skill in the art would
have sufficient skill to determine the appropriate amount of fruit juice to be
utilized in the alcoholic beverage.
Appellants argue that evidence of nonobviousness has been presented
in the present record. Appellants specifically state "[t]he present claims and
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Application 12/671,096
application clearly indicate that the coaction or cooperative relationship
between the percentage of fruit juice (B) and the percentage of alcohol (A)
produces a new, unexpected, and useful function: the irritation sensation of
alcohol is eliminated." (Br. 10-13).
Appellants' evidence of nonobviousness does not establish
unexpected results. As set forth above, the utilization of fruit juice to mask
the irritation of alcohol is known to persons of ordinary skill in the art. The
evidence in the present record exemplifies increasing the amount of fruit
juice relative to the alcohol content reduces the amount of irritation. This is
the result that would have been expected by a person of ordinary skill in the
art.
Appellants argue the Examiner has ignored the structure implied by
the process steps of claim 1. Appellants specifically argue the process
limitation contained in claim 1 must correspond to a difference in the
underlying structure because the "reduction or elimination of tingling
sensation would not have been observed." (Br. 14).
This argument is not persuasive because Appellants have not directed
us to evidence to support the allegation of a structural difference.
Rejection IV
Appellants argue Blake is cited as teaching a beverage containing
malic acid to adjust pH and not used as an alcohol irritation suppressant. (Br.
16). Appellants further argue Blake does not recognize the benefit of pairing
malic acid and fruit juice to suppress alcohol irritation (and improve mature
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Application 12/671,096
flavor). In further support of their arguments, Appellants referred to
Unigene. 7
As recognized by the Examiner and not disputed by Appellants, Blake
provides a reason to add maleic acid to a beverage for adjusting the pH. The
person of ordinary skill in the art would have recognized the suitability of
adding maleic acid to a fruit juice containing beverage as suggested by the
Examiner although this reason differs from that of Appellants. See In re
Kronig, 539 F.2d 1300, 1304 (CCPA 1976) ("[I]t is sufficient here that [the
reference] clearly [suggests] doing what appellants have done."); Ex parte
Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Int. 1985) ("The fact that
appellant has recognized another advantage which would flow naturally
from following the suggestion of the prior art cannot be the basis for
patentability when the differences would otherwise be obvious.")
Contrary to Appellants' arguments, the Unigene case does not support
patentability of the presently claimed invention. The court determined the
cited 'O 14 patent described the use of citric acid for bioavailability in the
context of a liquid injection into a rat duodenum, not a human use in a liquid
pharmaceutical formulation. In other words, the court determined that a
person of ordinary skill in the art would not have found it obvious to
combine the divergent teachings of the cited prior art.
7 Unigene Laboratories Inc. v. Apotex, Inc., 655 F.3d 1352 (Fed. Cir. 2011).
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Application 12/671,096
Obviousness-type Double Patenting
Claims 1 and 4-11 are rejected under the judicially created doctrine of
obviousness-type double patenting as being unpatentable over claims 1-19
of copending Application, Serial No 12/866, 168. Appellants in the Brief do
not contest the Examiner's rejection of claims 1 and 4-11 for obviousness-
type double patenting over claims 1-19 of copending Application, Serial No
12/866, 168. (Final Act. 2; Ans. 2-3) Accordingly, we summarily sustain
this rejection. 37 C.F.R. § 41.39(c)(l)(iv).
CONCLUSION
In view of the reasons set forth in the Final Action, Answer, and
above, we affirm the Examiner's 35 U.S.C. § 103(a) rejections of claims 1
and 4-11; and we affirm the Examiner's non-statutory obviousness-type
double patenting rejection of claims 1 and 4-11. However, we reverse the
Examiner's rejection of claim 9 under 35 U.S.C. § 112, second paragraph for
the reasons set forth above.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l.136(a)(l )(iv).
AFFIRMED
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