Ex Parte Shimizu et al

Patent Trial and Appeal Board

Mar 11, 2015

10580070 (P.T.A.B. Mar. 11, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
_________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte TORU SHIMIZU,
YOSHINARI SHIGETA,
and SATOMI KUNIEDA
__________

Appeal 2012-009219
Application 10/580,070
Technology Center 1700
___________

Before ADRIENE LEPIANE HANLON, JEFFREY T. SMITH, and
BEVERLY A. FRANKLIN, Administrative Patent Judges.

HANLON, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134 from a final rejection of
claims 1, 3, 5, 8, 11–14, 16–20, and 23–28. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.

The subject matter on appeal is directed to a fruit juice-containing food
product, such as a beverage, comprising menthol and a cool feeling substance and
a method for reinforcing a flavor in a fruit juice-containing food product
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Application 10/580,070

2

comprising adding menthol and a cool feeling substance to the food product.
Claim 1 is representative of the subject matter on appeal and is reproduced below
from the Claims Appendix of the Appeal Brief dated January 27, 2012 (“Br.”).
1. A fruit juice-containing food product comprising, in
addition to a fruit component and a base having sweetness,
components (a) and (b):
(a) menthol in an amount of 0.009 to 0.045 parts by mass based
on 1000 parts by mass of the fruit juice-containing food product; and
(b) one or more cool feeling substances selected from the group
consisting of 3-1-menthoxypropane-1,2-diol, 3-1-menthoxy-2-
methylpropane-1,2-diol, and 2-1-menthoxyethane-1-ol in an amount
of 0.001 to 0.005 parts by mass based on 1000 parts by mass of the
fruit juice-containing food product,
wherein the fruit juice-containing food product is a fruit juice-
containing beverage,
the fruit component is a straight fruit juice or a concentrated
fruit juice or blends of two or more fruit juice components, and
the straight fruit juice or the concentrated fruit juice is a juice of
citrus fruits, apples, peaches, grapes, blueberries, raspberries,
strawberries, melons, Japanese apricots, cassis, and marumelos.
Br. 37 (emphasis added).
The claims on appeal stand rejected as follows:
(1) claims 1, 3, 5, 8, 13, 14, 17–20, and 25–28 under 35 U.S.C. § 103(a)
as unpatentable over Ishida 010
1
in view of Ishida 622;
2
and

1
US 6,570,010 B2, issued May 27, 2003.
2
WO 03/074622 A1, published September 12, 2003. The Examiner relies on US
2005/0129721 A1, published June 16, 2005 (“Ishida 721”), as the English
language equivalent of Ishida 622. The Appellants do not object. Therefore, for
purposes of this appeal, we will also rely on Ishida 721 as evidence of the
disclosure of Ishida 622.
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(2) claims 11, 12, 16, 23, and 24 under 35 U.S.C. § 103(a) as
unpatentable over Ishida 010 in view of Ishida 622, and further in view of Kaplan.
3

The rejections are sustained for the reasons set forth in the Examiner’s
Answer dated March 8, 2012 (“Ans.”). We add the following for emphasis.

DISCUSSION

The Examiner concludes, and the Appellants do not dispute, that the food
products and methods recited in the independent claims on appeal are rendered
prima facie obvious by the prior art of record. In an attempt to rebut the prima
facie case of obviousness, the Appellants argue that the claimed invention achieves
unexpected results. Br. 7, see also Br. 13, 16, 20, 23, 26, 30, 33. The Appellants
argue:
As shown in the present specification, fruit juice-containing beverages
according to the present invention having the specifically claimed
concentration range of menthol and cool feeling substances provide an
unexpectedly improved combination of light feeling in the mouth,
continuation of light feeling, and heavy feeling of sweetness (see
Table 3, Examples 1-(4) to 1-(6)),
[4]
as compared to other fruit juice-
containing beverages containing menthol and cool feeling substances
outside the claimed ranges.
Br. 7 (emphasis added); see also Br. 13, 16–17, 20, 23, 26–27, 30, 33.
The Appellants also argue that the data in Tables 5-1 and 5-2 shows that “the
claimed combinations of menthol and cooling substances provides [sic, provide]
especially strong light feeling in the mouth and provide relatively good feeling in

3
US 2002/0182296 A1, published December 5, 2002.
4
Examples 1-(4) to 1-(6) in Table 3 report results for an orange juice beverage
containing menthol as the refreshing feeling substance and 3-1-menthoxy-1,2-
propanediol as the cool feeling substance. Spec. 37, ll. 19–38, l. 2.
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taste, both immediately after preparation and after storage at 60ºC for 20 days.”
5

Br. 8; see also Br. 14, 17, 21, 24, 27, 31, 34.
It is well-settled that unexpected results must be established by factual
evidence. Attorney argument does not suffice. See In re Geisler, 116 F.3d 1465,
1470 (Fed. Cir, 1997) (attorney argument is not the kind of factual evidence that is
required to rebut a prima facie case of obviousness); see also In re De Blauwe, 736
F.2d 699, 705 (Fed. Cir. 1994) (“Mere argument or conclusory statements in the
specification does not suffice.”).
The Appellants do not direct us to any portion of the Specification that
describes the results reported in Tables 3, 5-1, or 5-2 as “unexpected.” See
Geisler, 116 F.3d at 1470 (there was nothing in the application to support Geisler’s
claim that test results showing greater wear resistance at lesser thicknesses were
unexpected). We recognize that certain beverage formulations exhibit “improved”
results. However, a mere improvement is not sufficient to establish that the results
are “unexpected.” See In re Freeman, 474 F.2d 1318, 1324 (CCPA 1973) (in order
for a showing of “unexpected results” to be probative evidence of non-
obviousness, the applicant must establish that the difference between the results
obtained through the claimed invention and those of the prior art would not have
been expected by one skilled in the art at the time of invention); see also Ans. 12

5
The Appellants disclose that “Table 5 shows that the beverages of Examples 2-(1)
to 2-(4), to which the cooling feeling substance of the present invention was added,
have a good light feeling and also a good taste even if the evaluation was
performed immediately after preparation and after storage for 20 days.” Spec. 44,
ll. 1–5 after Table 5-2. According to Table 4, the beverages in Examples 2-(1) to
2-(4) contain lemon juice, 0.009 parts by mass of menthol and 0.001 parts by mass
of the cool feeling substances disclosed in Table 5-1. Spec. 41, l. 23–42, l. 34.
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(relying on MPEP § 716.02, the Examiner points out that any difference between
the claimed invention and the prior art must be unexpected).
As for dependent claim 25, the Appellants argue that the claimed ranges of
menthol and the cool feeling substance are narrower than the ranges recited in
claim 1. Br. 10. However, the Examiner finds, and the Appellants do not dispute,
that the claimed ranges overlap the ranges disclosed in Ishida 721. Ans. 5–6, 7–8.
Thus, claim 25 is rendered prima facie obvious by the prior art of record. See In re
Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003) (“A prima facie case of
obviousness typically exists when the ranges of a claimed composition overlap the
ranges disclosed in the prior art.”).
To overcome the prima facie case of obviousness, the Appellants “must
show that the [claimed] range is critical, generally by showing that the claimed
range achieves unexpected results relative to the prior art range.” In re Woodruff,
919 F.2d 1575, 1578 (Fed. Cir. 1990). For the reasons set forth above and in the
Examiner’s Answer, the Appellants have failed to demonstrate that the claimed
ranges achieve unexpected results.
The Appellants also argue that it would not have been obvious to select the
cool feeling substance recited in claims 26 and 28 or the specific juices recited in
claims 27 and 28 based on the broad disclosures of the prior art. Br. 11–12.
We disagree. Claims 27 and 28 recite that the fruit juice-containing
beverage is selected from, among others, lemon juice. Br. 44. Example 8 of Ishida
010 is directed to a beverage containing lemon juice. Ishida 010, col. 9, ll. 35–53;
see also Ans. 8. Claims 26 and 28 recite that the cooling feeling substance is 3-1-
menthoxypropane-1,2-diol. Br. 44. Ishida 721 discloses that a limited number of
preferred cool feeling substances includes 3-1-menthoxypropane-1,2-diol. See
Ishida 721, ¶ 28; see also Ans. 8. Based on the foregoing, we find that Ishida 010
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and Ishida 721, respectively, suggest the selection of a beverage and a cooling
feeling substance as claimed. Therefore, the Examiner correctly concluded that
claims 26–28 are rendered prima facie obvious by the prior art of record. For the
reasons set forth above and in the Examiner’s Answer, the Appellants have failed
to rebut the prima facie case of obviousness.

DECISION
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)(1).

AFFIRMED

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