Ex Parte Yang et al

Patent Trial and Appeal Board

May 20, 2016

13781068 (P.T.A.B. May. 20, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
131781,068 02/28/2013
23575 7590 05/20/2016
CURATOLO SIDOTI CO., LPA
24500 CENTER RIDGE ROAD, SUITE 280
CLEVELAND, OH 44145
FIRST NAMED INVENTOR
Xiaogen YANG
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.
GIV.P30334A 1394
EXAMINER
DEES, NIKKI H
ART UNIT PAPER NUMBER
1791
MAILDATE DELIVERY MODE
05/20/2016 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 XIAOGEN YANG, YILI WANG,
ROBERT G. EILERMAN, and JASON JORDAN 1
Appeal2014-008095
Application 13/781,068
Technology Center 1700
Before TERRY J. OWENS, CHRISTOPHER C. KENNEDY, and
DEBRA L. DENNETT, Administrative Patent Judges.
DENNETT, Administrative Patent Judge.
DECISION ON APPEAL 2
1 According to Appellants, the Real Party in Interest is Givaudan S.A.
2 In our opinion below, we refer to the Final Action mailed November 21,
2013 ("Final Act."), the Appeal Brief filed April 21, 2014 ("App. Br."), the
Examiner's Answer mailed June 4, 2014 ("Ans."), the Reply Brief filed July
25, 2014 ("Reply"), and the Declaration of David Bratton dated March 3,
2013 and submitted in the parent application (12/357,724), of which the
current case is a continuation ("Mar. 23, 2012 Deel. of David Bratton").
Appeal2014-008095
Application 13/781,068
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1-14. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
The Invention
Appellants claim methods of flavoring. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A method of enhancing vanilla beany flavor in an orally-
receivable product containing a product base and a vanilla
flavor, said method comprising:
adding to said product base, an amount of at least one
compound selected from guaiacol propionate or guaiacol
butyrate, effective to enhance vanilla beany flavor in said
orally-receivable product.
App. Br. 34 (Claims Appendix).
The References
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Young et al.
("Young")
Haiber, et al.
("Haiber")
US 2006/0045954 Al Mar. 2, 2006
WO 2008/105652 Al Sept. 4, 2008
The Rejections
Claims 1-14 stand rejected under 35 U.S.C §103(a) as being
unpatentable over Haiber in view of Young, or over Young in view of
Haiber. Final Act. 3, Ans. 2. Claims 1, 4, and 8 are independent claims.
Appellants argue the rejections of claims 1-14 as a group. Accordingly,
claims 1-14 stand or fall together.
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Application 13/781,068
OPINION
According to Haiber, vanillin ( 4-hydroxy-3-methoxybenzaldehyde)
was identified in the 19th century as the major flavor compound in cured
vanilla beans. Haiber 3:1-5. Because vanilla extract is an expensive
ingredient, many syntheses have been developed for the preparation of
vanillin, as well as substances with a similar flavor profile as vanillin. Id.
Haiber teaches that, besides vanillin, a number of other, structurally closely
related phenol derivatives are widely used in the flavor industry, among
them guaiacol. Id. at 4: 18-21. Such substances are at the center of the
instant appeal.
Appellants do not dispute the Examiner's finding that Haiber teaches
the following chemical structure:
0
R1)l0
y
wherein R1 is a C7 to C21 alkyl, Y and Z are H (hydrogen), and Xis --OCH3.
Ans. 2 (citing Haiber claim 1); see also Haiber 5:1-12. IfR1 is a C7 alkyl,
the molecule is guaiacol octanoate. Spec. 5. Appellants also do not dispute
the Examiner's finding that their claimed guaiacol propionate and guaiacol
butyrate are homologs3 of this structure taught by Haiber, guaiacol
3 A homo log is a compound belonging to a series of compounds differing
from each other by a repeating unit, such as a methylene bridge -DHz--, a
peptide residue, etc. GLOSSARY OF TERMS USED IN MEDICINAL CHEMISTRY
(IUP AC Recommendations 1998),
http://www.chem.qmul.ac.uk/iupac/medchem/ah.html#h5 (last visited May
11, 2016).
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Appeal2014-008095
Application 13/781,068
propionate and guaiacol butyrate differing structurally from Haiber's
teaching only by successive addition of---CHz--- groups. Ans. 3. Specifically,
for the structure given above, Y and Z are H (hydrogen), X is---OCH3, and R 1
is a C2 alkyl (guaiacol propionate) or a C3 alkyl (guaiacol butyrate) or a C7
alkyl (guaiacol octanoate ).
Similar to Haiber, Young addresses improving the taste profile of an
artificial vanilla flavoring to more closely resemble real vanilla extract.
Young i-fi-f l and 7. Young discloses accomplishing this goal by producing
Maillard reaction based flavors that may include guaiacyl (guaiacol)
acetate. 4 Id. at i121. Guaiacol acetate has the structure taught by Haiber,
wherein Y and Z are H (hydrogen), X is---OCH3, and R 1 is CH3. Thus,
guaiacol acetate is a homolog of guaiacol octanoate taught by Haiber, as
well as of the claimed guaiacol propionate and guaiacol butyrate. When
prior art compounds essentially "bracketing" the claimed compounds in
structural similarity are all known as useful for a specific purpose, here for
improving the flavor of synthetic substitutes for vanilla, one of ordinary skill
in the art would clearly be motivated to make those claimed compounds in
searching for vanilla flavor substitutes. In re Payne, 606 F.2d 303, 314
(CCPA 1979).
Appellants do not address whether guaiacol acetate is a homolog of
their claimed compounds. Instead, they dispute the Examiner's use of
Young as a reference, complaining that Young (1) lists guaiacol acetate as
one of 29 optional ingredients as flavor chemicals useful in the disclosed
4 Young refers to the compound as guaiacyl acetate. Young i1 21.
Appellants refer to the same compound in their Specification as guaiacol
acetate. Spec. p. 20, 1. 6.
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Appeal2014-008095
Application 13/781,068
process, (2) fails to exemplify use of guaiacol acetate in any Example, fails
to claim use of guaiacol acetate, and (3) fails to suggest the flavor effect that
the compound may contribute. App. Br. 14--16. However, for purposes of
§ 103, a reference is prior art for all that it discloses. Symbol Techs., Inc. v.
Opticon, Inc., 935 F.2d 1569, 1578 (Fed. Cir. 1991). Young discloses
guaiacol acetate an ingredient in a composition intended to closely resemble
real vanilla extract in taste and performance. Young ,-r 1.
Haiber aims to provide for foodstuffs, beverages, oral care products
and tobacco products flavor ingredients that yield a flavor character close to
natural vanilla extract. Haiber 1:8-9, 4:3--4. Young discloses compositions
intended to closely resemble real vanilla extract in taste and performance.
Young ,-r 1. Vanilla extract is described as the alcohol extractive of cured
vanilla beans. Id. at ,-r 2 (citing C.F .R. 21, Paragraph 169 .17 5). Appellants'
claims are directed toward enhancing vanilla beany flavor in an orally-
receivable product. App. Br. 34--35 (Claims Appendix).
Thus, the prior art compounds of Haiber and Young, and the claimed
compounds, have similar structure (are homo logs) and similar utility
(complementing or enhancing vanilla flavor in a food product). A prima
:frtcie case of obviousness may be made when chernical conipounds have
very close structural similarities and similar utilities. Jn re Payne, 606 F.2d
at 313 ("An obviousness rejection based on similarity in chemical structure
and function entails the motivation of one skilled in the art to make a
claimed compound, in the expectation that compounds similar in structure
wm have similar properties.~'); Jn re Dilloni 919 F.2d 688,i 692 (Fed. Cir.
1990) (''[S]tructural similarity between claimed and prior art subject matter,
proved by combining references or otherwise, where the prior art gives
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Appeal2014-008095
Application 13/781,068
reason or motivation to make the claimed compositions, creates a prima
facie case of obviousness, and that the burden (and opportunity) then falls on
an applicant to rebut that primafacie case."); In re Deuel, 51F.3d1552,
1558 (Fed. Cir. 1995) ("Structural relationships may provide the requisite
motivation or suggestion to modify known compounds to obtain new
compouncb, For example, a prior art compound may suggest its homologs
because homologs often have similar properties and therefi)re chemists of
ordinary skill would ordinarily contemplate making them to try to obtain
compounds vvith improved properties. 9 }
Appe11ants' argument that .,'{oung teaches away from use of guaiacol
acetate to enhance van ma beany flavor (App. Br. 17) is not persuasive. "A
reference does not teach away ... if it merely expresses a general preference
for an alternative invention but does not 'criticize, discredit, or otherwise
discourage' investigation into the invention claimed." DePuy Spine, Inc. v.
Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed.Cir.2009).
Appellants do not identify any passage in Young that explicitly discredits
or discourages use of guaiaco! acetate in flavoring. A stated preference for
an alternative is insufficient to teach away from the claimed invention.
See id.; In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).
Appellants provided a declaration under 37 C.F.R. § 1.132 dated
November 13, 2013 to support their assertion that the claimed compounds
provide surprising and unexpected results. App. Br. 36-43. The declaration
is unpersuasive, however, as it is not commensurate with the scope of the
claims. Appellants claim "enhancing" vanilla beany flavor in all orally-
receivable products; the declaration provides results for testing in only one
foodstuff-ice cream.
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Application 13/781,068
In addition, the declaration provides evidence that one of the prior art
compounds, guaiacol octanoate (disclosed in Haiber), exhibits "beany"
flavor, which is sufficient to meet the claimed "enhancing" vanilla beany
flavor. Moreover, another declaration in the file history, made March 23,
2012 by the same declarant in support of the parent application (12/357,724)
reveals that prior art compound guaiacol acetate (disclosed in Young) has
vanilla beany flavor. Mar. 23, 2012 Deel. of David Bratton at 3. These
declarations support the Examiner's finding of obviousness. They also
counter Appellants' contention that flavor chemicals are so notoriously
unpredictable as to make is unreasonable to expect the claimed compounds
would provide an enhanced vanilla beany flavor. See App. Br. 32.
Appellants assert that Young discloses "such a broad selection of
choices for further investigation" that the claimed subject matter is not
obvious to try. App. Br. 28. The Examiner found this argument unavailing,
as do we. The references explain the need to provide alternatives to
expensive natural vanilla extract. Haiber 3:1-5; Young i-f 2. The 29
alternative flavorings disclosed in Young are a ''finite number of predictable
solutions~· such that ''a person of ordinary skill in the art would have good
reason to pursue the known options within his or her technical grasp,"
making the claimed invention obvious to try. KSR Int 'l Co. v. Telejlex Inc.,
550 U.S. 398, 402----403 (2007).
As to Appellants' complaint that the Examiner relies on impermissible
hindsight to arrive at claimed invention, hindsight is impermissible only
when the sole reason for combining the teachings of the references is the
applicant's disclosure. In re McLaughlin, 443 F.2d 1392, 1395 (CCPA
1971 ). Rather than using hindsight, the Examiner points to specific
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Application 13/781,068
disclosures in the prior art that describe the limitations in Appellants' claims.
Final Act. 3---6. \Ve therefore find that the Examiner's obviousness
conclusion is based on sufficiently articulated reasoning that overcomes any
concerns about hindshz:ht bias. See KSR, 550 U.S. at 418 . .. __ ,
The arguments made in Appellants' Reply Brief are unpersuasive.
Appellants' Reply focuses on the November 13, 2013 Bratton Declaration to
argue that the claimed guaiacol propionate and guaiacol butyrate "enhance"
vanilla "beany" flavor more than do prior art compounds. Reply 4--5. This
issue is not in the claims, which require merely "enhancing," not "enhancing
more than." The declaration itself provides evidence that prior art guaiacol
octanoate (taught by Haiber) has a "beany" character. App. Br. 40.
Appellants have not identified reversible error in the Examiner's
rejections of claims 1-14 as obvious over Haiber in view of Young, or over
Young in view of Haiber.
DECISION/ORDER
For the above reasons, the Examiner's rejection of claims 1-14 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)(l )(iv) (2009).
AFFIRMED
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