Ex Parte Piorkowski

Patent Trials and Appeals Board

Apr 26, 2019

14701342 - (D) (P.T.A.B. Apr. 26, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/701,342 04/30/2015
48940 7590 04/26/2019
FITCH EVEN TABIN & FLANNERY, LLP
120 SOUTH LASALLE STREET
SUITE 2100
CHICAGO, IL 60603-3406
FIRST NAMED INVENTOR
Daniel T. Piorkowski
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.
1410-133835-US 2425
EXAMINER
DICUS, TAMRA
ART UNIT PAPER NUMBER
1791
MAIL DATE DELIVERY MODE
04/26/2019 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 DANIEL T. PIORKOWSKI
Appeal2018-005804
Application 14/701,342
Technology Center 1700
Before CATHERINE Q. TIMM, MICHAEL P. COLAIANNI, and
DEBRA L. DENNETT, Administrative Patent Judges.
TIMM, Administrative Patent Judge.
DECISION ON APPEAL 1
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner's decision to reject claims 1-10 and 21. We have jurisdiction
under 35 U.S.C. § 6(b ).
1 In explaining our Decision, we cite to the Specification of April 30, 2015
(Spec.), Non-Final Office Action of September 1, 2017 (Non-Final), and
Appeal Brief of November 16, 2017 (Appeal Br.). We have also considered
the Examiner's Answer of March 28, 2018 (Ans.) and Reply Brief of May
21, 2018 (Reply Br.).
2 Appellant is the applicant under 37 C.F.R. § 1.46, Kraft Foods Group
Brands LLC, which is also identified as the real party in interest. Appeal Br.
Appeal2018-005804
Application 14/701,342
We REVERSE.
The claims are directed to an emulsion-including, acidic concentrate
that is stabilized with quillaja. See, e.g., claim 1; Spec. ,r,r 1--4. The
concentrate is configured to provide a drinkable beverage when diluted with
a potable liquid. See, e.g., claim 1.
Quillaja, according to the Specification, is a natural surfactant
extracted from the bark of the Quillaja saponaria tree. Spec. ,r 16. Quillaja
is known for its use as a foam stabilizer and as an emulsifier for oil-in-water
emulsions. Id.
Quillaja has a known disadvantage: It loses its ability to stabilize the
emulsion when the pH of the aqueous phase of the emulsion drops under
approximately 2.6. Spec. ,r 17. Appellant has found that replacing some of
the water in the concentrate with a non-aqueous solvent enhances the
stability of the emulsion despite a low pH (i.e., from about 2.0 to about 2.6).
Spec. ,r 18. The non-aqueous solvent may be selected from the group
consisting of propylene glycol, glycerol, ethanol, triacetin, ethyl acetate,
benzyl alcohol, vegetable oil, 1,3-propanediol, and combinations thereof.
Spec. ,r 8.
Claim 1, with the limitation most at issue highlighted, is illustrative:
1. A concentrate comprising:
about 0.01 % to about 10% quillaja by total weight of the
concentrate;
3. Kraft Foods Brands LLC, according to the Brief, is a subsidiary ofKFG
Management Services LLC, which in tum is a subsidiary of Kraft Heinz
Foods Company. Id.
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Appeal2018-005804
Application 14/701,342
about 15% to about 70% non-aqueous solvent by total
weight of the concentrate; and
about 2% to about 60% acidulant by total weight of the
concentrate;
about 0.1 % to about 20% lipid by total weight of the
concentrate; and
about 1 % to about 70% water by total weight of the
concentrate;
wherein the concentrate contains an oil-in-water
emulsion having a pH of about 2.0 to about 2.6 and is shelf-
stable at storage temperatures of about 20°C to about 25°C for
at least about 4 months; and
wherein the concentrate is configured to provide a
drinkable beverage when diluted with a potable liquid.
Appeal Br. 19 ( claims appendix) ( emphasis added).
The Examiner maintains two rejections:
A. Therejectionofclaims 1-10and21 under35U.S.C. § 112(b)
for indefiniteness;
B. The rejection of claims 1-10 and 21 under 35 U.S.C. § 103 as
obvious over DeLease3 in view ofMai4 or Sanz-Valero. 5
3 DeLease et al., US 2008/0286421 Al, published November 20, 2008.
4 Mai et al., US 2012/0083530 Al, published April 5, 2012.
5 Sanz-Valero et al., US 2015/0257403 Al, published September 17, 2015.
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Appeal2018-005804
Application 14/701,342
OPINION
Indefiniteness
The Examiner rejects the claims as indefinite because "the phrase
'configured to provide a drinkable beverage' is not clear as to the exact steps
are absent to make this possible as to the indefinite drinkable beverage."
Non-Final 3. The Examiner determines "drinkable beverage" is redundant
or "means something else." Id.
The Examiner has not provided sufficient reasoning to support a
determination of indefiniteness.
The test for compliance for 35 U.S.C. § 112(b) is whether the claims
set out and circumscribe a particular area with a reasonable degree of
precision and particularity. In re Moore, 439 F.2d 1232, 1235 (CCPA
1971 ). "[T]he definiteness of the language employed must be analyzed not
in a vacuum, but always in light of the teachings of the prior art and of the
particular application disclosure as it would be interpreted by one possessing
the ordinary level of skill in the pertinent art." Id.
Both the Specification and the prior art indicate that those of ordinary
skill in the art understood the meaning of "concentrate" and "drinkable
beverage."
First, although the word "drinkable" before "beverage" might be
viewed as redundant, its presence in the phrase "drinkable beverage" does
not make the phrase indefinite. In fact, it makes the phrase more definite
because there can be no mistake that non-drinkable liquids are excluded.
Second, the Specification uses the term "drinkable beverage" in the
same manner one would use the term "beverage." Spec. ,r 3. And Delease
also uses the phrase in the same manner. DeLease ,r 3.
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Appeal2018-005804
Application 14/701,342
Third, Appellant's Specification and the prior art indicate that
Appellant is using "concentrate" according to its ordinary and accustomed
meaning. The Specification talks of frozen, fruit-flavored concentrates, such
as those traditionally sold in canisters that are diluted with water to provide a
fruit-flavored beverage. Spec. ,r 2. The canisters of orange juice concentrate
sold as most grocery stores come to mind. According to the Specification,
"[a] drinkable beverage from a beverage concentrate may be prepared using
a two-step process, where a beverage concentrate including emulsified oil is
prepared first, and is then diluted in water to create a drinkable beverage."
Spec. ,r 3. These disclosures parallel those of the prior art. See DeLease
,I 35; Mai ,I 137.
Lastly, the Examiner has not adequately explained why "configured to
provide a drinkable beverage" is inadequate to reasonably apprise the
ordinary artisan of the scope of the concentrates encompassed by the claims.
The full limitation reads "wherein the concentrate is configured to provide a
drinkable beverage when diluted with a potable liquid." The phrase
"configured to provide a drinkable beverage when diluted with a potable
liquid" merely sets forth how the concentrate composition is configured to
accomplish the intended use of the concentrate. It modifies the concentrate
composition by limiting the concentrate to compositions capable of creating
a beverage when diluted with potable liquid. Setting forth this intended use
does not make the claim indefinite.
We do not sustain the Examiner's rejection of claims 1-10 and 21
under 35 U.S.C. § 112(b).
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Appeal2018-005804
Application 14/701,342
Obviousness
Turning to the Examiner's rejection of claims 1-10 and 21 as obvious
over DeLease in view of Mai or Sanz-Valero, we agree with Appellant that
the Examiner has failed to establish that DeLease teaches a concentrate
including a non-aqueous solvent in combination with all the other
ingredients and properties required by the claims.
The Examiner plucks various teachings from disparate portions of the
DeLease reference to find that DeLease teaches a concentrate containing
ethanol. Ethanol is, indeed, a non-aqueous solvent within the meaning of
Appellant's claims, but DeLease does not discuss including ethanol in a
concentrate, only in the beverage.
DeLease teaches foam-creating compositions that can be incorporated
into a concentrate, a bottling syrup, a fountain syrup, or a beverage.
DeLease ,r 21. The foam-creating composition includes a dairy composition,
a hydrocolloid composition, a foam stabilizer, and other optional
components, such as fats, flavoring agents, sweeteners, coloring agents,
food-grade-acids, preservatives, and the like. DeLease ,r,r 23, 27, 31, 33, 37.
The foam stabilizer may be a quillaia extract. DeLease ,r 31. DeLease does
not mention adding ethanol to the concentrate. Instead, DeLease discloses
diluting the concentrate with a liquid, which can be water, juice, ethanol, and
others. DeLease ,r 38. It is the final beverage that contains ethanol, not the
concentrate.
On the one hand, the Examiner relies on DeLease's teaching of a
concentrate to establish that DeLease teaches a concentrate having the
claimed ingredients, in the concentrations of the claim, in oil-in-water
emulsion form, at the pH of the claim, and with the shelf-stability required,
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Appeal2018-005804
Application 14/701,342
but then the Examiner relies on De Lease's teaching of a final beverage for
the addition of ethanol in the concentration of the claims. The Examiner
does not provide a reasonable rationale supporting the obviousness of
formulating a composition that can be called a concentrate, i.e., a
composition capable of being diluted with a potable liquid to create a
beverage, but instead relies on disparate teachings in the reference without a
sufficiently supported reason to combine them in a manner resulting in
composition meeting the requirements of the claims.
The Examiner's reliance on Mai and Sanz-Valero does not cure the
deficiency.
We do not sustain the rejection of claims 1-10 and 21 under 35 U.S.C.
§ 103 as obvious over DeLease in view of Mai or Sanz-Valero.
CONCLUSION
We do not sustain the rejections of the Examiner.
DECISION
The Examiner's decision is reversed.
REVERSED
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