Givaudan, S.A.

Patent Trials and Appeals Board

Sep 10, 2020

2019005793 (P.T.A.B. Sep. 10, 2020)

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.
14/821,235 08/07/2015 Esther VAN OMMEREN GIV.P30600A 1058
23575 7590 09/10/2020
CURATOLO SIDOTI CO., LPA
24500 CENTER RIDGE ROAD, SUITE 280
CLEVELAND, OH 44145
EXAMINER
GEORGE, PATRICIA ANN
ART UNIT PAPER NUMBER
1793
NOTIFICATION DATE DELIVERY MODE
09/10/2020 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):
docket@patentandtm.com
pair@patentandtm.com
sidoti@patentandtm.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ESTHER VAN OMMEREN, GUISEPPE CORDA,
JAN BAKKER, and CAROLINE DAHAN

Appeal 2019-005793
Application 14/821,235
Technology Center 1700

Before MAHSHID D. SAADAT, DONNA M. PRAISS, and
BRIAN D. RANGE, Administrative Patent Judges.

RANGE, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–8 and 10–17. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Givaudan S.A.
Appeal Br. 3.
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CLAIMED SUBJECT MATTER2
Appellant describes the invention as relating to a replacement for
cocoa that provides, for example, reduced off-taste. Spec. 1:12–2:7. Claims
1 and 10 are the two independent claims on appeal. Below, we reproduce
claim 1 as illustrative:
1. A process for preparing a cocoa replacer, comprising the
steps of
(a) addition of a raw material selected from the group consisting
of roasted wheat, roasted barley, malted barley and mixtures
thereof to a quantity of water at an initial temperature of at
least 65°C in an evaporation vessel with mixing to form a
mixture;
(b) maintaining said initial temperature in said evaporation
vessel for at least 30 minutes to form an evaporated
mixture;
(c) adding an additional quantity of water comprising from 25-
40% of the total quantity of water used in the process to the
evaporated mixture; and
(d) spray-drying the resulting mixture of step (c) to provide the
cocoa replacer;
wherein the quantity of water in step (a) is such that the
weight of the raw material comprises from 12-22% of the
total weight of the raw material and water.
Appeal Br. 32 (Claims App.).

2 In this Decision, we refer to the Final Office Action dated January 24,
2019 (“Final Act.”), the Appeal Brief filed April 25, 2019 (“Appeal Br.”),
the Examiner’s Answer dated June 20, 2019 (“Ans.”), and the Reply Brief
filed July 29, 2019 (“Reply Br.”).
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REFERENCES
The Examiner relies upon the prior art below in rejecting the claims
on appeal:
Name Reference Date
Meinl US 737,432 Aug. 25, 1903
Haak US 4,062,979 Dec. 13, 1977
Bryan et al.
(“Bryan”)
US 4,356,209 Oct. 26, 1982
Ellis US 5,114,730 May 19, 1992
Blondeel et al.
(“Blondeel”)
US 2009/0263556 A1 Oct. 22, 2009
Rao et al.
(“Sambasiva”)3
US 2009/0311376 A1 Dec. 17, 2009
Cheng et al.
(“Cheng”)
US 2012/0288587 A1 Nov. 15, 2012
Greiser GB 190923765 A Mar. 24, 1910
Chen CN 101138601 A Mar. 12, 2008
Traditional Medicinals, Healthy Cycle Tea,
www.amazon.com/Traditional-Medicinals-Healthy-Cycle-
Bags/dp/B000EJNL26/ref=cm_cr_arp_d_product_top?ie=UTF8&th=1
(last visited Aug. 16, 2017) (“TM”).
REJECTIONS
The Examiner maintains the following rejections on appeal:
A. Claims 1–8 and 10–17 under 35 U.S.C. § 112 as indefinite. Ans. 3.
B. Claims 1–6 under 35 U.S.C. § 103 as obvious over Ellis in view of
Bryan, Cheng, Blondeel, Haak, and Meinl. Id. at 5.
C. Claim 7 under 35 U.S.C. § 103 as obvious over Ellis in view of Bryan,
Cheng, Blondeel, Haak, Meinl, and Greiser. Id. at 13.

3 The Examiner refers to this reference as Sambasiva. Ans. 15. For
consistency, we do the same.
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D. Claim 8 under 35 U.S.C. § 103 as obvious over Ellis in view of Bryan,
Cheng, Blondeel, Haak, Meinl, Chen, and TM. Id. at 14.
E. Claims 10–15 under 35 U.S.C. § 103 as obvious over Ellis in view of
Bryan, Cheng, Blondeel, Haak, Meinl, and Sambasiva. Id. at 15.
F. Claim 16 under 35 U.S.C. § 103 as obvious over Ellis in view of
Bryan, Cheng, Blondeel, Haak, Meinl, Sambasiva, and Greiser. Id. at
17.
G. Claim 17 under 35 U.S.C. § 103 as obvious over Bryan in view of
Meinl, Ellis, Cheng, Blondeel, Haak, Sambasiva, Chen, and TM. Id. at
18.

OPINION
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential),
cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t
has long been the Board’s practice to require an applicant to identify the
alleged error in the examiner’s rejections.”). After considering the evidence
presented in this Appeal and each of Appellant’s arguments, we are not
persuaded that Appellant identifies reversible error except where we
otherwise indicate below. Thus, where we affirm the Examiner’s rejections,
we do so for the reasons expressed in the Final Office Action and the
Answer. We add the following primarily for emphasis.
Rejection A, Indefiniteness. The Examiner rejects claims 1–8 and 10–
17 under 35 U.S.C. § 112 as indefinite. Ans. 3. The Examiner determines
that independent claims 1 and 10 are unclear because it is unclear how step
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(c) can follow step (b) and because “the material” lacks an antecedent basis.
Ans. 3–4. It appears that this aspect of the Examiner’s rejection relates to a
version of claims prior to amendment. Appeal Br. 6–7; Reply Br. 4–5. We,
thus, do not sustain this aspect of the rejection.
The Examiner also determines that the recitation “raw” is unclear.
Ans. 4. Appellant argues that raw is defined in the Specification which
states, “Cocoa replacers based on roasted wheat and malted and/or roasted
barley (hereinafter ‘the raw materials’) are well known and readily available
items of commerce.” Appeal Br. 6 (quoting Spec. 2:9–10). The Examiner
does not respond to Appellant’s argument in the Answer. Based on the
Specification, we agree with Appellant that the term “raw” is not unclear,
and we do not sustain the Examiner’s indefiniteness rejection.
Rejections B–G, obviousness. Appellant does not present any
substantively distinct arguments for claims other than claim 1. See, e.g.,
Appeal Br. 25–31 (arguing for patentability of independent claim 10 for
same reasons as claim 1 and arguing for patentability of dependent claims
based on them depending from claim 1 or claim 10). Therefore, consistent
with the provisions of 37 C.F.R. § 41.37(c)(1)(iv) (2013), we limit our
discussion to claim 1, and all other claims on appeal stand or fall together
with claim 1.
The Examiner rejects claim 1 under 35 U.S.C. § 103 as obvious over
Ellis in view of Bryan, Cheng, Blondeel, Haak, and Meinl. Ans. 5. The
Examiner finds Ellis teaches a process for making cocoa including adding
raw material to water, cooking at a temperature of at least 65º C for at least
thirty minutes, and spray-drying the solution. Id. (citing Ellis).
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The Examiner finds Ellis does not discuss use of a cocoa replacer. The
Examiner finds Bryan teaches, for example, toasted wheat as a cocoa
replacer and determines that it would have been obvious to replace Ellis’s
starting material with a cocoa replacer because doing so would, for example,
result in cost reduction. Id. at 6 (citing Bryan).
The Examiner finds the modified Ellis process does not teach the
temperature of the water added to raw material in step (a). Ans. 7. The
Examiner finds Cheng teaches use of roasted wheat to make spray dried
foods and teaches adding raw material to water having an initial temperature
of at least 65º C. Id. (citing Cheng). The Examiner determines that it would
have been obvious to add hot water as taught by Cheng in modified Ellis’s
process because Cheng has a similar intended use and Cheng teaches a
known way of heating the raw material. Id. at 7–8.
The Examiner finds Blondeel teaches a method of making spray dried
food and teaches 12–22% by weight raw material. Ans. 8 (citing Blondeel).
The Examiner finds it would have been obvious to use this quantity in
modified Ellis because Blondeel teaches similar material and a similar
process including a method of making spray dried food. Id. at 8–9.
The Examiner finds Haak teaches adding less water to grain makes it
harder to spray dry. Id. at 9 (citing Haak). The Examiner determines that the
amount of water needed for spray drying is a known result effective variable.
Id. The Examiner thus determines that, in view of Haak, a person of ordinary
skill would have optimized the amount of water in the modified Ellis
process. Id.
The Examiner finds Meinl teaches other cocoa substitutes including
roasted wheat products and roasted or malted barley. Id. at 10 (citing Meinl).
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The Examiner finds it would have been obvious to use these alternative
substitutes in the modified Ellis process because Meinl illustrates these
substitutes as suitable for similar intended uses. Id. at 10–11.
Appellant argues there is no reason to modify Ellis with Bryan
because Ellis relates to a process of making natural dark cocoa rather than a
cocoa substitute and Bryan does not teach that its wheat germ could replace
cocoa in a process that requires natural cocoa powder. Appeal Br. 10–11.
Appellant’s argument is unpersuasive. Bryan generally teaches suitability of
its wheat as a replacement in cocoa food products (Ans. 22; Bryan 1:6–20),
and spray-dried cocoa powder is an example of such a cocoa food product.
Indeed, Bryan suggests that its cocoa substitute can take on a powder form.
See also Bryan 8:20–24 (teaching an “extended cocoa powder” comprising
“defatted wheat germ”). Moreover, Cheng suggests that roasted wheat can
be used to make a spray-dried food product. Ans. 7; Cheng ¶¶ 1, 23, 55–58.
Cheng’s teaching is similar to those of Ellis, but Ellis spray-dries cocoa
rather than wheat.
Appellant further argues that modification of Ellis with Bryan would
impermissibly change Ellis’s principle of operation because Ellis requires
natural cocoa powder to make natural red, black, or brown cocoa. Appeal
Br. 11–12; Reply Br. 8–12. Replacing a cocoa with a cocoa substitute will,
of course, change Ellis’s product in some respect. However, this is true
nearly any time one prior art’s teaching is modified by another. Modification
of the primary reference’s teachings does not necessarily make the
references’ combined teachings non-obvious. Here, the Examiner finds
Bryan teaches a cocoa substitute and thus determines that a person of skill in
the art would have substituted Ellis’s cocoa with the Bryan cocoa substitute.
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Ans. 22–23. Doing so would have merely been “predictable use of prior art
elements according to their established functions.” KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 417 (2007) (“if a technique has been used to improve one
device, and a person of ordinary skill in the art would recognize that it would
improve similar devices in the same way, using the technique is obvious
unless its actual application is beyond that person’s skill”).
Moreover, Bryan teaches that its use of a cocoa substitute results in,
for example, satisfactory colors and cost savings. Bryan Abstract, 1:51–58.
Even if a cocoa substitute has some disadvantages over pure cocoa, a person
of skill in the art would have weighed these disadvantages against
advantages such as cost savings. Medichem, S.A. v. Rolabo, S.L., 437 F.3d
1157, 1165 (Fed. Cir. 2006) (“a given course of action often has
simultaneous advantages and disadvantages, and this does not necessarily
obviate motivation to combine”).
Appellant further argues that the Examiner’s combination of Ellis and
Bryan requires substantial reconstruction of Ellis because Ellis includes
process steps that are not recited by claim 1. Appeal Br. 13–14. As the
Examiner notes, however, claim 1 is a “comprising” claim that does not
forbid additional steps taught by the references. Ans. 24. Therefore, the
rejection does not change Ellis’s principle of operation with respect to the
additional steps taught by Ellis.
With regard to Cheng, Appellant argues that there would be no reason
to further modify Ellis based on Cheng because Cheng describes a process
with considerations irrelevant to Ellis’s process and unrelated to cocoa
replacers. Appeal Br. 14–16; Reply Br. 13–14. Appellant’s argument is
unpersuasive. The Examiner applies Cheng for teaching that roasted wheat
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may be heated by adding preheated water. Ans. 7–8; 27–28. Ellis already
teaches heating above 65º C, and a person of ordinary skill in the art reading
Cheng would have understood that adding preheated water is an appropriate
way to heat the product of Ellis as modified by Bryan. Ans. 7–8.
Moreover, the distinction between modified Ellis and claim 1 in
relevant respect is merely whether water is added and then heated (as with
Ellis) or whether, instead, water is heated prior to being added (as with claim
1 and Cheng). Appellant does not present persuasive evidence regarding
criticality of the order of these steps; the selection of any order of
performing process steps is prima facie obvious in the absence of new or
unexpected results. In re Burhans, 154 F.2d 690, 692 (CCPA 1946). The
reordering of steps here is merely “predictable use of prior art elements
according to their established functions.” KSR Int’l Co., 550 U.S. at 417.
With respect to Blondeel, Appellant argues that Blondeel is directed
to cocoa-derived materials rather than a cocoa replacer and that a person of
skill in the art, therefore, would not have applied Blondeel’s teaching
regarding the amount of raw material in water to modified Ellis. Appeal Br.
17–18; Reply Br. 15. Appellant’s argument is unpersuasive because the
Blondeel process is similar to the modified Ellis process. Ans. 28–30. A
person of ordinary skill in the art desiring to practice the modified Ellis
process would have to select some percent of solids for the spray drying
process, and the Examiner’s determination that a person of ordinary skill in
the art would have looked to Blondeel because it teaches percent solids for
spray drying cocoa is well-reasoned. Id. Use of Blondeel’s percent solids
would have been predictable use of prior art elements according to
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established function. KSR Int’l Co., 550 U.S. at 417. Appellant lacks
persuasive evidence to the contrary.
Moreover, the Examiner finds Haak teaches that percent water is a
result-effective variable for the spray-drying process (Ans. 9), and Appellant
does not persuasively dispute this point. Based on Haak’s teaching that spray
drying results are impacted by percent water, a person of ordinary skill in the
art would have known to adjust percent solids accordingly.
With respect to Haak, Appellant argues that Haak does not cure the
alleged error that we address above. Appeal Br. 18–19. This argument is
unpersuasive for the reasons explained above.
With respect to Meinl, Appellant argues that a person of skill in the art
would not have combined Meinl’s teachings with those of modified Ellis. In
particular, Appellant argues that a person of skill in the art would not replace
cocoa with Meinl’s grains because Meinl mixes its grains with cocoa.
Appeal Br. 19–20. This argument is unpersuasive because, as the Examiner
explains, claim 1 permits the inclusion of other ingredients such as cocoa.
Ans. 33–34. Moreover, Meinl teaches methods of making cocoa substitutes.
Id. at 34; Meinl Title (“PROCESS OF MANUFACTURING COCOA
SUBSTITUTES”). The preponderance of the evidence thus supports the
Examiner’s position that a person of skill in the art would have known to
substitute Meinl’s grains for cocoa.
Appellant also argues that Meinl does not disclose roasted barley or
malted barley. Appeal Br. 20. Appellant, however, concedes that Meinl
teaches roasted malted grain such as roasted malted barley. Id.; see also
Meinl 1:28–48. Appellant argues that “roasted malted barley” is not “malted
barley” (Appeal Br. 20), but roasted malted barley is one form of malted
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barley. Ans. 34–35. Moreover, as the Examiner explains, Bryan teaches
claim 1’s recited roasted wheat. Id. Claim 1 only requires addition of one of
“roasted wheat, roasted barley, malted barley and mixtures thereof.” Appeal
Br. 32 (Claims App.). Appellant’s argument is, thus, not persuasive of error.
Appellant argues that the Examiner’s combination of cited references
would fail to yield predictable results and that a reasonable expectation of
success is lacking. Appeal Br. 23–24; Reply Br. 8–12, 18. As explained
above, the Examiner provides sound reasoning why a person of skill in the
art would have had reason to predictably combine the teachings of each of
the cited references. Appellant cites no persuasive evidence of any
unpredictability about, for example, substituting a cocoa substitute for cocoa
or following the references’ teaching concerning temperature or spray
composition.
With respect to reasonable expectation of success, our reviewing court
has emphasized that there is a distinction between a reasonable expectation
of success and a reason to pursue the references’ teachings. Intelligent Bio-
Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1366–1368 (Fed. Cir.
2016). According to Intelligent Bio-Systems, reasonable expectation of
success only looks to “likelihood of success in combining references to meet
the limitations of the claimed invention.” Id. at 1367. Here, as explained
above, the combined teachings of the prior art references indicate that a
person of skill in the art could, for example, substitute Bryan’s cocoa
replacer for cocoa in a spraying drying process. Ans. 11, 38–40. The
recitations of claim 1 do not pose any technical hurdles that would have left
a person of skill in the art unable to practice claim 1’s recitations. Claim 1
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does not require that the end product cocoa replacer have specific desirable
qualities.
Because Appellant’s arguments do not identify Examiner error, we
sustain the Examiner’s rejections.

CONCLUSION
In summary:
Claims
Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–8, 10–17 112 Indefiniteness 1–8, 10–17
1–6 103 Ellis, Bryan, Cheng, Blondeel, Haak, Meinl 1–6
7 103
Ellis, Bryan, Cheng,
Blondeel, Haak, Meinl,
Greiser
7
8 103
Ellis, Bryan, Cheng,
Blondeel, Haak, Meinl,
Chen, TM
8
10–15 103
Ellis, Bryan, Cheng,
Blondeel, Haak, Meinl,
Sambasiva
10–15
16 103
Ellis, Bryan, Cheng,
Blondeel, Haak, Meinl,
Sambasiva, Greiser
16
17 103
Bryan, Meinl, Ellis,
Cheng, Blondeel,
Haak, Sambasiva,
Chen, TM
17
Overall
Outcome
1–8, 10–17
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TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED