Ex Parte Sekikawa et al

Patent Trial and Appeal Board

Dec 20, 2013

12447976 (P.T.A.B. Dec. 20, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
12/447,976 05/01/2009 Kaneaki Sekikawa GIV.P30267 8358
23575 7590 12/23/2013
CURATOLO SIDOTI CO., LPA
24500 CENTER RIDGE ROAD, SUITE 280
CLEVELAND, OH 44145
EXAMINER
DUBOIS, PHILIP A
ART UNIT PAPER NUMBER
1791
MAIL DATE DELIVERY MODE
12/23/2013 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 KANEAKI SEKIKAWA and MICHITERU WATANABE
____________
Appeal 2012-008651
Application 12/447,976
Technology Center 1700
____________

Before PETER F. KRATZ, KAREN M. HASTINGS, and
DONNA M. PRAISS, Administrative Patent Judges.

DECISION ON APPEAL

Appeal 2012-008651
Application 12/447,976

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Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
rejection of claims 12, 13 and 15-321 under 35 U.S.C. § 103(a) as obvious
over Yamaguchi2 in view of Trotta.3 We have jurisdiction over the appeal
pursuant to 35 U.S.C. § 6(b).
Independent claims 12 and 13 are representative of the claimed
invention:
12. An alcoholic drink or carbonated drink containing a flavor
composition comprising a flavor and a transparent emulsified composition
containing enzyme-degraded lecithin and lecithin, in a ratio of enzyme-
degraded lecithin to lecithin from 2.5:7.5 to 4.5:5.5, wherein transparency of
the alcoholic drink or carbonated drink is maintained.

13. A method of maintaining flavors in alcoholic drinks or
carbonated drinks, comprising the addition to the drink of flavor
composition comprising a flavor and a transparent emulsified composition
containing enzyme-degraded lecithin and lecithin, in a ratio of enzyme-
degraded lecithin to lecithin from 2.5:7.5 to 4.5:5.5.

ANALYSIS
Upon consideration of the evidence on this record and each of
Appellants’ contentions, we find that the preponderance of evidence on this
record supports the Examiner’s conclusion that the subject matter of
Appellants’ independent claims 12 and 13 is unpatentable over the applied

1 Appellants note that claims 1-11 and 14 were canceled; thus, the claims on
appeal are 12, 13, and 15-32 (App. Br. 11 (“Appellants therefore assume for
purposes of this Brief, that claims 12-13 and 15-32 have been rejected.”)).
The Examiner’s rejection of “[c]laims 12-14 and 16-32” which includes
claim 14 and omits claim 15 is harmless error (Ans. 6).
2 US 2002/0028280 A1 published Mar. 7, 2002.
3 Trotta et al., Phase behaviour of microemulsion systems containing lecithin
and lysolecithin as surfactants, Int’l. J. of Pharm. 143, pp. 67-73 (1996).
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Application 12/447,976

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prior art. We sustain the above rejection based on the findings of fact,
conclusions of law, and rebuttals to arguments expressed by the Examiner in
the Answer.
We add the following for emphasis.
It is well established that if a technique has been used to improve one
device or composition, and a person of ordinary skill in the art would
recognize that it would improve similar devices or compositions in the same
way, using the technique is obvious unless its actual application is beyond
that person’s skill. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007).
As pointed out by the Examiner, Trotta teaches that the stability range of
microemulsions containing lecithin were greatly increased by adding
lysolecithin (Ans. 8; Trotta abstract). Appellants have not adduced any
persuasive technical reasoning or evidence in response to the Examiner’s
reasonable determination that the addition of a stabilizing blend of
lysolecithin:lecithin for an emulsion as exemplified in Trotta will likewise
improve the emulsion stability of the transparent beverage of Yamaguchi,
especially as Yamaguchi teaches lysolecithin may be used to stabilize
emulsions in beverages (e.g. Ans. 12; generally App. Br; Reply Br.).
Yamaguchi also discusses that lecithin has been used to stabilize emulsions
(para. [0003]). “Obviousness does not require absolute predictability of
success . . . all that is required is a reasonable expectation of success.” In re
Kubin, 561 F.3d 1351, 1360 (Fed. Cir. 2009) (emphasis omitted) (citing In
re O’Farrell, 853 F.2d 894, 903-04 (Fed. Cir. 1988)).
In response to Appellants’ argument that one skilled in the art
concerned with transparent flavored beverages would not be motivated to
consider the teachings of Trotta (App. Br. 4-5; Reply Br. 10), we note that
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Application 12/447,976

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the reason for combining references does not have to be identical to that of
the applicant in order to establish obviousness. See In re Kemps, 97 F.3d
1427, 1430 (Fed. Cir. 1996). “As long as some motivation or suggestion to
combine the references is provided by the prior art taken as a whole, the law
does not require that the references be combined for the reasons
contemplated by the inventor.” In re Beattie, 974 F.2d 1309, 1312 (Fed. Cir.
1992).
Appellants’ argument that Trotta is nonanalogous art because it is
related to drug delivery systems (App. Br. 18) is also unavailing. The
Examiner’s determination that Trotta is analogous art since it relates to
improving the stability of a micro emulsion system (Ans. 13) is reasonable.
Likewise, the Examiner’s position that one of ordinary skill in the art would
know not to use any toxic ingredients that may be in Trotta’s microemulsion
systems in a beverage (Ans. 12) is reasonable.4 See In re Keller, 642 F.2d
413, 425-26 (CCPA 1981) (“The test for obviousness is not whether the
features of a secondary reference may be bodily incorporated into the
structure of the primary reference. . . . Rather, the test is what the combined
teachings of the references would have suggested to those of ordinary skill
in the art.”); see also In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed.
Cir. 1986) (“Non-obviousness cannot be established by attacking references
individually where the rejection is based upon the teachings of a
combination of references”); In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir.

4 It is also likely that toxic ingredients would not be used in a drug delivery
system.
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Application 12/447,976

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1983) (“[I]t is not necessary that the inventions of the references be
physically combinable to render obvious the invention under review”).
The decision of the Examiner is affirmed.
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

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