Ex Parte Wild et al

Patent Trial and Appeal Board

Jul 27, 2016

12861218 (P.T.A.B. Jul. 27, 2016)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
12/861,218 08/23/2010 Hans-Peter Wild 3075-055 1608
7590 07/27/2016
Luke A. Kilyk, Esq.
KILYK & BOWERSOX, P.L.L.C.
Suite 102
400 Holiday Court
Warrenton, VA 20186
EXAMINER
MORNHINWEG, JEFFREY P
ART UNIT PAPER NUMBER
1793
MAIL DATE DELIVERY MODE
07/27/2016 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 HANS-PETER WILD, RAFAEL SALOM, and
ROBERT SATTLER
____________

Appeal 2014-006605
Application 12/861,218
Technology Center 1700
____________

Before N. WHITNEY WILSON, CHRISTOPHER C. KENNEDY and
JENNIFER R. GUPTA, Administrative Patent Judges.

WILSON, Administrative Patent Judge.

DECISION ON APPEAL

Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s
October 2, 2013 decision finally rejecting claims 1–16 (“Final Act.”). We have
jurisdiction over the appeal under 35 U.S.C. § 6(b). An oral hearing was held
on July 14, 2016. The Board thanks counsel for Appellants for his clear
presentation of the issues involved in this appeal. A transcript of that hearing
will be made part of the record.
We affirm.

1 Appellants identify the Real Party in Interest as Rudolf Wild GmbH & Co.
KG (Appeal Br. 3).
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CLAIMED SUBJECT MATTER
Appellants’ invention is directed to a sweetening composition comprising
a steviol glycoside and a masking agent obtained from carob and a citrus fruit
(Abstract). The masking agent is said to “mask” the bitter metallic aftertaste of
the steviol glycoside (Spec. 2). Details of the claimed composition are set forth
in independent claim 1 as reproduced below from the Claims Appendix
(emphasis added):
1. A sweetening composition comprising:
a) a steviol glycoside, and
b) a natural masking agent, said natural masking agent
obtained from carob and a citrus fruit by a process comprising
the steps of:
i) obtaining an aqueous extract from carob;
ii) obtaining an aqueous extract from a citrus fruit;
iii) mixing the aqueous extracts from steps i) and ii);
iv) fractionating the product of step iii) to obtain a
first fraction comprising polysaccharides,
polyols, proteins, free amino acids, fibers, fats
and polyphenols; a second fraction of ionized
molecules comprising minerals and organic
acids; and a third fraction comprising
monosaccharides and disaccharides; and
v) mixing the first fraction and the second fraction
to obtain the natural masking agent.

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REJECTIONS
I. Claims 1, 2, 7, 8, and 10–15 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Gittleman2 in view of Avlon,3 Sanjuan Diaz,4 and
Prakash.5
II. Claims 3–6, 9, and 16 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Gittleman in view of Avlon, Sanjuan Diaz, and
Prakash, and further in view of Wild.6

DISCUSSION
Rejection I. The Examiner finds that Gittleman discloses a sweetening
composition comprising a steviol glycoside and an agent obtained from carob
(“Because of the strong aftertaste of most stevia powders, you may wish to
use stevia only in recipes that contain strongly flavored ingredients like
carob”) (Final Act. 2, citing Gittleman, ¶ 362). The Examiner further finds
that Gittleman does not disclose obtaining a masking agent obtained from
carob and citrus fruit as set forth in steps (b)(i)–(b)(v) (Final Act. 3), but that
these steps are taught by the combination of Avlon, Sanjuan Diaz, and
Prakash (Final Act. 3–4, citing Avlon, 1:10–11, 1:26–40, 2:58–59, 2:83–87;
Sanjuan Diaz, 3:20–30; Prakash, generally).
Having reviewed the evidence and arguments set forth in the Appeal
Brief and the Reply Brief, in addition to the presentation made by counsel for
Appellants during the oral hearing, we conclude that, essentially for the

2 Gittleman, Get the Sugar Out: 501 Simple Ways to Cut the Sugar Out of
Any Diet, 2nd Ed., Three Rivers Press (2008).
3 Avlon, U.S. Patent No. 1,765,899, issued June 24, 1930.
4 Sanjuan Diaz, U.S. Patent No. 5,624,500, issued April 29, 1997.
5 Prakash et al., U.S. Patent Pub. 2007/0116823 A1, published May 24, 2007.
6 Wild, EP 2 002 734 A1, published December 17, 2008.
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reasons set forth in the Final Action and the Answer, Appellants have not
shown reversible error in the Examiner’s findings or conclusion that the
claims would have been obvious over the cited prior art. We add the
following for emphasis.
In particular, the Examiner finds that the combination of Avlon,
Sanjuan Diaz, and Prakash would have made obvious the claimed “natural
masking agent” and that combining this agent with a steviol glycoside would
have been obvious in view of Gittleman’s teaching that “[b]ecause of the
strong aftertaste of most stevia powders, you may wish to use stevia only in
recipes that contain strongly flavored ingredients like carob” (Gittleman,
¶ 362).
Appellants have argued and provided evidence that the claimed natural
masking agent is flavorless and odorless (e.g. Appeal Br. 11, Reply Br. 5,
Declaration Under 37 C.F.R. § 1.132 of Robert Sattler (“Sattler Decl.”)).
Therefore, a person of skill in the art would not have been taught by Gittleman
to combine a steviol glycoside and the claimed natural masking agent, as
Gittleman indicates that the stevia is combined with something having a
strong flavor.
However, as noted by the Examiner (Ans. 9–10), the claims are not
limited to a masking agent which is flavorless and odorless. Claim 1 recites
the masking agent in product-by-process form, but the recited steps are not
particularly specific. Thus, nothing in the claims, or the Specification,
requires that the masking agent be flavorless and odorless. In fact, the
Specification states that “the natural masking agent used in [the] invention
overcomes undesired off-notes of steviol glycosides in food and beverages
due to its specific natural flavor” (Spec. 9, emphasis added). In this regard,
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the preponderance of the evidence does not support Appellants’ claim (e.g.
Appeal Br. 12–13) that “flavorless and odorless” are properties of the natural
masking agent which inherently flow (i.e. necessarily and always occurs) from
the specified steps used to produce it.
Because the natural masking agent is not limited to a flavorless and
odorless composition, Appellants’ argument that Gittleman teaches away from
the combination of a steviol glycoside and the claimed masking agent is not
persuasive (Appeal Br. 11–12).
Appellants also argue that Gittleman does not teach or suggest isolating
an aqueous extract from carob or combining it with an aqueous extract from a
citrus fruit, and the fractionating the combination and combining only some of
the fractions (Appeal Br. 10–11). However, this argument does not account
for the entirety of the rejection, which includes reference to a number of other
references. It is axiomatic that an applicant “cannot show non-obviousness by
attacking references individually where, as here, the rejections are based on a
combination of references.” In re Keller, 642 F.2d 413, 426 (CCPA 1981).
The Examiner finds that Avlon teaches steps (b)(i)–(b)(iii) (Final
Act. 4). In particular, the Examiner finds that Avlon discloses a beverage
additive comprising a carob extract and “a fruit acid, such as citric acid”
(Final Act. 3). Appellants make several arguments urging us to find reversible
error in this finding. First, Appellants argue that the carob extract disclosed
by Avlon is different from the carob extract used to create the claimed natural
masking agent (Appeal Br. 14–15) because it has a different flavor than the
carob extract produced in Example 1 of the Specification. However, as noted
above, the claimed natural masking agent is not limited with regard to its
flavor profile. Thus, Appellants have not shown that the Avlon’s carob
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extract is different from the material identified in claimed step i) (“obtaining
an aqueous extract from carob”).
Second, Appellants argue that Avlon does not disclose the use of an
aqueous citrus fruit extract because the citric acid disclosed by Avlon is in dry
powder form, and is not an aqueous extract from citrus fruit (Appeal Br. 14).7
In response, the Examiner finds that:
[t]he present claim does not require extracting an aqueous
extract from a citrus fruit but merely requires obtaining a
product that may be considered an aqueous extract of a citrus
fruit. Dissolving dry citric acid in water is considered
equivalent to “obtaining an aqueous extract from a citrus
fruit”, since the composition would be comparable to an
extract physically obtained via extracting a citrus fruit (at least
as related to the water and acid content.)

(Ans. 11). Thus, the key question is whether the term “aqueous extract from a
citrus fruit” reads on the citric acid solution described in Avlon and, if not,
whether the Examiner has adequately established that the claimed “aqueous
extract from a citrus fruit” would have been obvious in view of Avlon’s citric
acid solution.
It is well established that “the PTO must give claims their broadest
reasonable construction consistent with the specification.” In re ICON Health
& Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (emphasis added).
“[A]s applicants may amend claims to narrow their scope, a broad
construction during prosecution creates no unfairness to the applicant or
patentee.” Id.

7 Avlon states that the dry powder citric acid is dissolved in water prior to use
(1:87–89). Therefore, Avlon fairly teaches the use of an aqueous solution of
citric acid. However, as discussed infra this does not, by itself, teach the use
of “an aqueous extract from a citrus fruit,” as set forth in claim 1.
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In this instance, the Specification does not provide a specific definition
of “an aqueous extract from a citrus fruit.” However, the Specification does
indicate that “the aqueous extract from citrus fruit” may be obtained as
described in Wild (Spec. 4). The cited portion from Wild (7–8) describes
production of an aqueous extract from oranges. The raw material includes
“different non-edible parts of the orange fruit once the juice has been obtained
by squeezing the orange” (Wild 7). The raw material is crushed to small
particle sizes (2–3 mm), which are then mixed with water and stirred to obtain
a thick paste, the liquid portion of which is the raw orange extract (Wild 8).
Similarly, the example in the Specification describes a similar method for
generating the required aqueous extracts from citrus fruits (Spec. 10). These
examples are consistent with a dictionary definition of “extract”: “a solid,
viscid, or liquid substance extracted from a plant, drug, or the like, containing
its essence in concentrated form.”8
While it is not proper to import limitations from the Specification into
the claims, (see, e.g. SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d
870, 875 (Fed. Cir. 2004)), the broadest reasonable interpretation of claim
term must be consistent with the Specification. ICON, 496 F.3d at 1379.
Thus, we conclude that an aqueous solution of dried, purified citric acid as
disclosed by Avlon is not an “an aqueous extract from a citrus fruit” as recited
in claim 1, because the Specification makes clear that “an aqueous extract” is
extracted from portions of actual citrus fruit.9 We do not agree with the

8 Dictionary.com, http://www.dictionary.com/browse/extract?s=t, accessed
on July 20, 2016.
9 An alternative definition of “extract” is “a solution or preparation
containing the active principles of a drug, plant juice, or the like.”
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Examiner that any aqueous solution of a component found in a citrus fruit
would necessarily be “an aqueous extract of a citrus fruit.”
However, the Examiner finds that:
dissolving dry citric acid is considered equivalent to “obtaining
an aqueous extract from a citrus fruit”, since the composition
would be comparable to an extract physically obtained via
extracting a citrus fruit (at least as related to the water and acid
content). Thus, Avlon is considered to adequately disclose
obtaining an aqueous extract from citrus fruit. As such, Avlon
is considered to render obvious all of steps i) – iii) of claim 1.

(Ans. 11). Appellants have not persuasively challenged the Examiner’s
determination that Avlon’s aqueous solution of citric acid would have
rendered obvious the claimed “aqueous extract of a citrus fruit” (see,
generally, Reply Br.). Accordingly, we determine that Appellants have not
shown reversible error in the Examiner’s findings that Avlon would have
rendered obvious claim steps i) to iii).
Appellants also argue that because Sanjuan Diaz is specifically
interested in the carob extract fraction which is discarded in the claimed
process, it would not have been obvious to use its fractionation process to
remove the sugary fraction, as is required by the rejection to reach the claimed
natural masking agent (Appeal Br. 15–17). However, the Examiner has
provided a reasoned explanation (Final Act. 4–5; Ans. 14) of why a person of
skill in the art would have sought to use the unused fractions from the process
of Sanjuan Diaz and discarded the sugary fractions: namely that in seeking to

Dictionary.com, http://www.dictionary.com/browse/extract?s=t, accessed on
July 20, 2016. However, this definition is not consistent with the
Specification, which suggests that the aqueous extract comes from portions
of actual fruit or fruit pieces.
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create a low calorie sweetener, discarding the high calorie fraction would
minimize the caloric contribution of the masking agent to the sweetening
composition, as disclosed by Prakash. Appellants do not persuasively refute
this reasoning.
Appellants also argue that the prima facie case of obviousness has been
overcome by the proffered evidence of unexpected and superior results
(Appeal Br. 18–20). These arguments are unpersuasive for the reasons set
forth by the Examiner at pages 15–16 of the Answer, in particular that
Appellants have not established that the proffered taste profiles are
unexpected.
Thus, we determine that Appellants have not shown reversible error in
the rejection over Gittleman in view of Avlon, Sanjuan Diaz, and Prakash.
Claim 11. Appellants argue that claim 11 (which recites that the natural
masking agent is formulated with a food carrier) is separately patentable
(Appeal Br. 21–22). The Examiner finds that Prakash discloses formulating
the product of its process with a food carrier, namely maltodextrin and gum
acacia Senegal (which is equivalent to gum arabic) (Final Act. 5, citing
Prakash, ¶¶ 26, 100). Appellants argue that Prakash does not teach that either
of these components may be considered to be useful as a food carrier (Appeal
Br. 22). However, as noted by the Examiner, Appellants’ Specification
explicitly states that both arabic gum and maltodextrin are “food carriers”
(Spec. 6). Thus, as noted by the Examiner (Ans. 17), that Prakash does not
characterize these components as food carriers does not mean that their
inclusion would not have been considered obvious in view of the disclosure of
Prakash.
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Claim 15. Claim 15 recites that the carob is carob pods pulp. The
Examiner finds that Avlon discloses the use of pulp from at least carob pods
(Final Act. 6, citing Avlon, 2:58–65), which would have rendered it obvious
to have used carob pulp pods. Appellants argue that differing flavor profiles
of Avlon’s carob extract versus the claimed carob extract means that Avlon
cannot have disclosed using carob pulp pods (Appeal Br. 22). As explained
by the Examiner (Ans. 17-18), the claimed composition does not exclude the
inclusion of carob seeds (in addition to the claimed carob pulp pods), and
Avlon’s explicit description of the use of carob pods is sufficient to have
made their use obvious.

Rejection II.
This rejection is affirmed essentially for the reasons well-expressed by
the Examiner in the Final Action (6–7) and the Answer (18–19), which we
adopt as our own.

CONCLUSION
We AFFIRM the rejection of claims 1, 2, 7, 8, and 10–15 under
35 U.S.C. § 103(a) as being unpatentable over Gittleman in view of Avlon,
Sanjuan Diaz, and Prakash.
We AFFIRM the rejection of claims 3–6, 9, and 16 under
35 U.S.C. § 103(a) as being unpatentable over Gittleman in view of Avlon,
Sanjuan Diaz, and Prakash, and further in view of Wild.

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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. § 1.136(a).
AFFIRMED