Francisco RuetteDownload PDFPatent Trials and Appeals BoardJul 20, 20202019006772 (P.T.A.B. Jul. 20, 2020) Copy Citation 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. 13/576,560 08/01/2012 Francisco Ruette ARLP-10202/08 5902 25006 7590 07/20/2020 DINSMORE & SHOHL LLP 900 WILSHIRE DRIVE SUITE 300 TROY, MI 48084 EXAMINER DICUS, TAMRA ART UNIT PAPER NUMBER 1791 NOTIFICATION DATE DELIVERY MODE 07/20/2020 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): MichiganPatTM@dinsmore.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte FRANCISCO RUETTE Appeal 2019-006772 Application 13/576,560 Technology Center 1700 ____________ Before ROMULO H. DELMENDO, MICHAEL P. COLAIANNI, and MICHAEL G. MCMANUS, Administrative Patent Judges. DELMENDO, Administrative Patent Judge. DECISION ON APPEAL The Appellant1 appeals under 35 U.S.C. § 134(a) from the Primary Examiner’s final decision to reject claims 1, 2, 4, 7, 9–11, and 17.2 Oral arguments were heard from the Appellant’s representative on July 10, 2020. We have jurisdiction under 35 U.S.C. § 6(b). We reverse, but enter new grounds of rejection under 35 U.S.C. § 112, ¶ 2. 37 C.F.R. § 41.50(b). 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42—the Inventor (Application Data Sheet filed August 1, 2012 at 1). The Appellant identifies “Acquafibra, Inc.” as the real party in interest (Appeal Brief filed March 4, 2019 (“Appeal Br.”) at 2). 2 See Appeal Br. 5–20; Reply Brief filed September 11, 2019 (“Reply Br.”) at 1–5; Final Office Action entered September 5, 2018 (“Final Act.”) at 6– 20; Examiner’s Answer entered July 11, 2019 (“Ans.”) at 3–20. Appeal 2019-006772 Application 13/576,560 2 I. BACKGROUND The subject matter on appeal relates to a beverage and to a process for its manufacture (Specification filed August 1, 2012 (“Spec.”) at 1, ll. 1–13). Claims 1 and 2, the sole independent claims on appeal, are reproduced from the Claims Appendix to the Appeal Brief, as follows: 1. A process to obtain a beverage enriched with fibers and vitamins with added fruit flavors, said process consisting of: placing 200 to 300 liters of water in a mixture tank; adding soluble fiber to the mixture tank and mixing the mixture with a tri-blender; sending the mixture to a preparation tank; repeating said step of placing 200 to 300 liters of water in a mixture tank, said step of adding soluble fiber to the mixture tank and mixing with a tri-blender, and said step of sending the mixture to a preparation tank until a desired amount of said soluble fiber is dissolved in the mixture; placing an additional 200 to 300 liters of water in said mixture tank; a combination of potassium sorbate and sodium benzoate to the mixture tank; sending the mixture to said preparation tank; placing 200 to 300 liters of water in the mixture tank; adding fruit concentrate to the mixture tank and sending the mixture to said preparation tank; adding water to adjust the final volume of water; pasteurizing the mixture, thereby creating a beverage; sending the beverage to a storage tank; bottling and packaging the beverage; palleting and storing the beverage; and distributing the beverage. 2. A beverage consisting of with percentages by weight: fruit juices 65 to 80° brix from 0.25 to 0.3%; soluble fiber from 2.2 to 3.1%; a combination of potassium sorbate and sodium benzoate from 0.01 to 0.03%; tropical fruits aroma from 0.003 to 0.06%; citric acid from 0.1 to 0.3%; niacin from 0.001 to 0.002%; folic acid from 0.000010 to 0.000020%; water from Appeal 2019-006772 Application 13/576,560 3 95 to 99%; a combination of aspartame and sodium saccharin from 0.003 to 0.004%; acesulfame potassium from 0.003 to 0.004%; pantothenic acid from 0.00032 to 0.00042%; and pyridoxine from 0.000095 to 0.000100%. (Appeal Br. 21 (emphases added)). II. REJECTIONS ON APPEAL On appeal, the Examiner maintains two rejections under pre-AIA 35 U.S.C. § 103(a),3 as follows: A. Claims 1, 7, 9–11, and 174 as unpatentable over Nunes et al.5 (“Nunes”) in view of Voigt et al.6 (“Weisser”), and further in view of Johnson;7 and B. Claims 2 and 4 as unpatentable over Nunes in view of Johnson. (Ans. 3–20; Adv. Act. 3–7 (not paginated); Final Act. 6–20). 3 In the Final Office Action, claims 2 and 6–22 were rejected under 35 U.S.C. § 112, ¶ 2, and claims 12–16 and 18–22 were rejected under 35 U.S.C. § 112, ¶ 4 (Final Act. 4–6). These rejections were withdrawn after claim 2 was amended and claims 6, 8, 12–16, and 18–22 were canceled (Advisory Action entered December 14, 2018 (“Adv. Act.”) at 1 (not paginated); Amendment filed December 5, 2018). 4 In the Examiner’s Answer, claims 6, 8, 12–16, and 18–22 were inadvertently included in the statement of the rejection (Ans. 3; Adv. Act. 3). 5 US 2003/0203097 A1, published October 30, 2003. 6 Tobias Voigt, Thomas Rädler, & Horst Weisser, Technische Universität München: Standard Specification for Data Acquisition Systems in Beverage Bottling Plants, (October 2000) (translation). 7 US 2006/0040001 A1, published February 23, 2006. Appeal 2019-006772 Application 13/576,560 4 III. DISCUSSION 1. The Examiner’s Position With respect to claim 1, the Examiner finds that Nunes describes a process for manufacturing a beverage enriched with fibers and vitamins and provided with added fruit flavors (Ans. 4; Final Act. 7). Specifically, the Examiner finds that Nunes discloses some of the limitations recited in claim 1 but acknowledges that the prior art differs from the claimed subject matter, as follows: (i) the lack of a disclosure of “the exact steps involving water and their respective amounts” (Ans. 4; Final Act. 7); (ii) the lack of a disclosure of preservatives—i.e., potassium sorbate and sodium benzoate (Ans. 5; Final Act. 8); (iii) the lack of a disclosure regarding “a tri-blender, or amounts of water, or repeating steps” (Ans. 5; Final Act. 8); (iv) the disclosure of the addition of milk, particles, or fruit juices, that would be excluded by the claim language “consisting of” (id.); (v) the lack of a disclosure of pasteurization (Ans. 7; Final Act. 10); and (vi) the lack of a disclosure that the fibers used in the prior art are “soluble” (Ans. 8; Final Act. 11). Regarding difference (i), the Examiner concludes that “it would have been obvious to have modified the amounts of water and the steps to mix, dissolve, and dilute the mixture to provide desired end products such as beverages from carbonated beverages, to juices, the [sic] increase the water to scale up the compositions for commercialization” (Ans. 4; Final Act. 7). Regarding difference (iii), the Examiner concludes: Appeal 2019-006772 Application 13/576,560 5 [B]ecause Nunes teaches the general steps of mixing ingredients with mixers/blenders, tanks, for bottling packaging, it would have been obvious to one having ordinary skill in the art to mix the ingredients until dissolution and optimize the process by using tri-blenders by increasing the blades to make it three blades, storing in tanks, and repeating the steps to dissolve the solutes in the solution and to thoroughly mix it to yield a homogenous beverage and to get it ready for packaging and further distribution for commercialization. As stated above a repetitive continuous process that accomplishes the same result, storing, packaging, and distributing for commercialization, and the process of incorporation of ingredients for making a beverage is not inventive, "Merely operating the process in a continuous manner does not render the combination inventive in the absence of a showing of unexpected beneficial results," and merely carrying out prior process in continuous manner is obvious. Fact that specific step is essentially different from that of prior method does not mean that patentably new combination of steps is presented. Ex parte Beeber et al., 123 USPQ 221 (Bd. Pat. App. & Int. 1959). (Ans. 5; Final Act. 8) (emphasis added). Regarding difference (iv), the Examiner asserts that “it would have been [obvious] to remove any ingredients (such as milk or particles or fruit juices) as it is directly related to taste and such ingredients are known and have an expected function in the food art” (Ans. 5; Final Act. 8). According to the Examiner, “the addition or elimination of common ingredients, or treating them in ways which differ from the former practice, do not amount to invention” (Ans. 6; Final Act. 9). This rationale is repeated with respect to claim 2 (Ans. 15; Final Act. 18). The remaining differences above are less relevant to our disposition of the Examiner’s stated rejections, and, therefore, we do not discuss them. Appeal 2019-006772 Application 13/576,560 6 2. The Appellant’s Contentions Regarding the difference (i) between Nunes and the subject matter recited in claim 1, the Appellant contends that the Examiner’s obviousness conclusion is based on “an unsupported and conclusory statement” because the “the significant changes in process between claim 1 and that of Nunes involves [sic] far more than commercial scale up differences” (Appeal Br. 10). The Appellant also argues that “there is no motivation within Nunes to modify its process to include the claimed steps of solubilizing the fiber alone and separately from preservatives and fruit concentrate as per the second through fourth steps of claim 1” (id.) According to the Appellant, the Examiner’s rationales for modifying the prior art process lack a sufficient underpinning to support the obviousness conclusion (id. at 10–11). With respect to claim 2, the Appellant argues, inter alia, that the claim recites the transitional phrase “consisting of” and, therefore, “excludes any component not expressly specified in the claim itself” (id. at 18). The Appellant points out that Nunes, for example, requires protein (id.). 3. Opinion We concur with the Appellant that the Examiner’s rejections are not well-founded. Our reasons follow. Nunes describes an acidic composition, which is particularly useful as a food or beverage composition, comprising a protein and from about 0.8% to about 5% of a fiber component, wherein the composition comprises particles having a median particle size of about 1 micron or less and the pH is from about 3 to about 5 (Nunes ¶¶ 2, 6–9). According to Nunes, the fiber component stabilizes the protein (i.e., prevent the protein from curdling or Appeal 2019-006772 Application 13/576,560 7 coagulating) under acidic conditions and is selected from various hydrophilic colloidal compounds such as inulin (id. ¶¶ 42–43). With respect to the process of making the composition, Nunes teaches forming a first mixture of the protein component and the fiber component, together with optional components, under high shear and preferably aqueous conditions and then forming a second mixture by slowly mixing an acidic component with the first mixture under high shear and preferably aqueous conditions (id. ¶¶ 56–69, 141–142). Johnson discloses nutritional compositions, such as a beverage or solid nutritional bar, for treating and preventing osteoporosis (Johnson Abstr.). As the Examiner correctly finds, Johnson teaches that “[t]he combination of dried fruit solids (e.g., dried plum solids) and soluble indigestible oligosaccharides (e.g., fructooligosaccharides) have been found to be surprisingly more effective in affecting bone mineral density” (id.). Weisser discloses a standard specification for data acquisition systems used in beverage bottling plants (Weisser 3). In “Picture 2” (Section 2.2), Weisser shows a general depiction of a “Model of Bottling Plant” that includes various bottling operations (id. at 6). Although the Examiner concludes that it would have been obvious to a person having ordinary skill in the art to modify Nunes’s process in the manner claimed by the Appellant as a matter of optimization (e.g., Ans. 5), the Examiner’s factual findings are insufficient to support such a conclusion as the conclusion is based largely on conclusory statements rather than factual evidence. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (To facilitate review, th[e obviousness] analysis should be made explicit.”); In re NuVasive, Inc., 842 F.3d 1376, 1383 (Fed. Cir. 2016) (“‘[C]onclusory Appeal 2019-006772 Application 13/576,560 8 statements’ alone are insufficient and, instead, the finding must be supported by a ‘reasoned explanation.’” (internal citation omitted)); In re Applied Materials, Inc., 692 F.3d 1289, 1295–97 (Fed. Cir. 2012) (obviousness conclusion based on a theory of optimization of a variable requires a showing that the variable is result-effective). Therefore, we do not sustain the Examiner’s stated rejection as maintained against claim 1 (and claims 7, 9–11, and 17 dependent thereon). As for claim 2, the Examiner concludes that “it would have been obvious to one having ordinary skill in the art to remove any ingredients (such as milk or particles) as it is directly related to taste and such ingredients are known and have an expected function in the food art” (Ans. 15). That reasoning is flawed because Nunes is focused on protein-based compositions and solving a problem with curdling or coagulating in such compositions containing proteins under acidic environments using particular fiber components, as we found above (Nunes ¶¶ 2, 6–9, 42, 47). Thus, regardless of whether Nunes and Johnson teach soluble fibers, we discern no basis to conclude that a person having ordinary skill in the art would have been prompted to remove Nunes’s protein—a key component in Nunes’s composition—while retaining the fiber component, which is disclosed as stabilizing the protein from curdling or coagulation. In re Ratti, 270 F.2d 810, 813 (CCPA 1959) (“Th[e] suggested combination of references would require a substantial reconstruction and redesign of the elements shown in [the prior art reference] as well as a change in the basic principles under which the [prior art reference’s] construction was designed to operate.”). Therefore, we also do not sustain the rejection as maintained against claim 2 (and claim 4 dependent thereon). Appeal 2019-006772 Application 13/576,560 9 IV. NEW GROUNDS OF REJECTION Claims 1, 2, 4, 7, 9–11, and 17 are rejected under 35 U.S.C. § 112, ¶ 2, as indefinite. “[T]he purpose of the definiteness requirement is to ensure that the claims delineate the scope of the invention using language that adequately notifies the public of the patentee’s right to exclude.” Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1347 (Fed. Cir. 2005). Independent claims 1 and 2 recite “soluble fiber” (Appeal Br. 21). But neither the claims nor the remainder of the Specification contain any description or enlightenment as to what degree of solubility would be required for a fiber material to be considered a “soluble fiber.” This ambiguity or uncertainty is particularly pronounced because the term “soluble” is a relative term that has previously been defined in the art to have a meaning that is different than that argued by the Appellant. Specifically, Johnson teaches that “soluble, indigestible oligosaccharides for use in the compositions and methods of [Johnson’s] invention are generally categorized in the chemical and nutrition arts as soluble fiber” (Johnson ¶ 37 (emphases added)). According to Johnson, the term “soluble” refers to an oligosaccharide component or fiber source that is at least 60% soluble as determined by American Association of Cereal Chemists (AACC) Method 32-07 and encompasses, e.g., pectin and inulin (id. ¶¶ 37, 150 (Example 2, “Low pH Smoothie”)). By contrast, the current Specification does not provide any indication how the term “soluble” should be interpreted. Indeed, it appears that the term “soluble” is not limited to 100% solubility, as argued, because the Specification itself indicates that the presence of some “non-soluble fibers” Appeal 2019-006772 Application 13/576,560 10 is contemplated (Spec. 1, ll. 4–13). Although mathematical precision may not be required to satisfy the definiteness requirement, the Specification lacks sufficient disclosure reasonably informing one of ordinary skill in the art as to the degree of non-solubility that may be tolerated. Datamize, 417 F.3d at 1350. And, to the extent that the Appellant intends the term “soluble” to mean 100% solubility, claims 1 and 2 (and claims 4, 7, 9–11, and 17 dependent thereon) are indefinite for failing to particularly point out and distinctly claim what the Appellant regards as the invention. In re Zletz, 893 F.2d 319, 322 (Fed. Cir. 1989) (“[I]f the claims do not ‘particularly point[ ] out and distinctly claim[ ]’, in the words of section 112, that which examination shows the applicant is entitled to claim as his invention, the appropriate PTO action is to reject the claims for that reason.”). Claim 2 (and claim 4 dependent thereon) are further indefinite because the range of amounts recited for the “soluble fiber” (“from 2.2 to 3.1%”) is inconsistent with the range of amounts recited for water (“from 95 to 99%”). For example, it does not appear to be possible for the claimed beverage to contain 99% by weight of water when the minimum soluble fiber content is 2.2% by weight. Therefore, it is unclear whether claim 2 encompasses compositions having water contents within the fully-recited range or, alternatively, soluble fiber contents in the fully-recited range. For these reasons, we hold that claims 1, 2, 4, 7, 9–11, and 17 do not comply with the definiteness requirement of 35 U.S.C. § 112, ¶ 2. Appeal 2019-006772 Application 13/576,560 11 V. CONCLUSION In summary: Claims Rejected Basis References/Basis Affirmed Reversed New Ground 1, 7, 9–11, 17 § 103(a) Nunes, Weisser, Johnson 1, 7, 9–11, 17 2, 4 § 103(a) Nunes, Johnson 2, 4 1, 2, 4, 7, 9– 11, 17 § 112, ¶ 2 Indefiniteness 1, 2, 4, 7, 9–11, 17 Overall Outcome 1, 2, 4, 7, 9–11, 17 1, 2, 4, 7, 9–11, 17 VI. FINALITY AND RESPONSE This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record. . . . No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). Appeal 2019-006772 Application 13/576,560 12 REVERSED; 37 C.F.R. § 41.50(b) Copy with citationCopy as parenthetical citation