Klaus Kuhn

Patent Trials and Appeals Board

Jan 27, 2020

14761171 - (D) (P.T.A.B. Jan. 27, 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.
14/761,171 07/15/2015 Klaus KUHN 2693-000204-US-NP 6750
27572 7590 01/27/2020
Harness Dickey (Troy)
P.O. BOX 828
BLOOMFIELD HILLS, MI 48303
EXAMINER
BEKKER, KELLY JO
ART UNIT PAPER NUMBER
1791
NOTIFICATION DATE DELIVERY MODE
01/27/2020 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):
sto-ptomail@hdp.com
troymailroom@hdp.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte KLAUS KUHN
____________

Appeal 2019-002416
Application 14/761,171
Technology Center 1700
____________
Before GEORGE C. BEST, CHRISTOPHER C. KENNEDY, and
JULIA HEANEY, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 17–27, 35, and 37–39 of Application
14/761,171. Final Act. (May 7, 2018). We have jurisdiction under 35 U.S.C.
§ 6.
For the reasons set forth below, we affirm.

1 We use the word “Appellant” to refer to “Applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies Südzucker Aktiengesellschaft
Mannheim/Ochsenfurt, as the real party in interest. Appeal Br. 3.
Appeal 2019-002416
Application 14/761,171
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I. BACKGROUND
The ’171 Application describes a jelly confectionary such as a gummy
bear. Spec. 1. The jelly confectionary is said to be non-cariogenic, non-
laxative, reduced-calorie, and to have a low glycemic index. Id. In particular,
the jelly confectionary is produced by replacing the sucrose in prior art jelly
confectionaries with isomaltulose. Id. at 3.
Claim 17 is representative of the ’171 Application’s claims and is
reproduced below from the Claims Appendix of the Appeal Brief.
17. A jelly confectionary comprising:
(a) a sugar, the sugar being isomaltulose;
(b) at least one gelling agent; and
(c) water,
wherein the sugar in the jelly confectionary is 30 to 50 wt.-%
based on a total weight of the jelly confectionary, wherein the
jelly confectionary contains no sugar alcohol or polyols, and
wherein the jelly confectionary has a turbidity of 100 to 250
nephelometric turbidity units (NTU) measured at a frequency[2]
of 578 nm.
Appeal Br. 18 (Claims App.).

2 578 nm is a wavelength, not a frequency. If prosecution of the ’171
Application continues, Appellant should consider correcting this error. This
error also appears in claim 38 and in the Specification on at least pages 3, 8,
11, and 13.
Appeal 2019-002416
Application 14/761,171
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II. REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 17, 18, 23–27, and 35 are rejected under 35 U.S.C. § 103(a)
as unpatentable over the combination of Gyeong3 and Lees &
Jackson.4 Final Act. 2–5.
2. Claims 19 and 20 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Gyeong, Lees & Jackson,
and Applicant’s Admitted Prior Art (AAPA). Final Act. 5–6.
3. Claims 21, 22, and 37 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Gyeong, Lees & Jackson,
and Francisca.5 Final Act. 6–7.
4. Claims 38 and 39 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Gyeong, Lees & Jackson,
AAPA, and Francisca. Final Act. 7–10.
5. Claims 17–21, 23, 26, 27, 35, and 38 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Koivistoinen6
and Lees & Jackson. Final Act. 10–13.
6. Claims 22, 24, and 25 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Koivistoinen, Lees &
Jackson, and Francisca. Final Act. 13–14.

3 KR 100432039 B1, published July 16, 2004. We rely upon the machine
translation that was made of record in the prosecution of the ’171
Application on December 26, 2017.
4 R. Lees & E.B. Jackson, Sugar Confectionery and Chocolate Manufacture,
247, 249, Thomson Litho Ltd, publishers (1973).
5 US 2010/0104722 A1, published April 29, 2010.
6 W0 2008/071797 A1, published June 19, 2008.
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Application 14/761,171
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7. Claims 37 and 39 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Koivistoinen, Lees &
Jackson, Francisca, and AAPA. Final Act. 14–15.
III. DISCUSSION
Appellant argues that independent claims 17 and 38 are patentable
over the cited prior art. Appeal Br. 10–16. Appellant does not present
separate arguments for the patentability of any of the rejected dependent
claims. Id.
We address each of Appellant’s arguments in turn.
A. The Examiner Did Not Err by Selecting Isomaltulose from Lists
of Sugars Provided by Gyeong and Koivistoinen
The Examiner rejected claim 17 as unpatentable over the combination
of Gyeong and Lees & Jackson and rejected claim 38 as unpatentable over
the combination of Gyeong, Lees & Jackson, AAPA, and Francisca. Final
Act. 2, 7. In doing so, the Examiner found that Gyeong describes a jelly
confectionary comprising 0.1 to 35% of one or more sugars selected from a
group of eight sugars that includes isomaltulose. Id. at 2.
Similarly, the Examiner rejected claims 17 and 38 as unpatentable
over the combination of Koivistoinen and Lees & Jackson. Id. at 10. In
reaching this conclusion, the Examiner found that Koivistoinen describes a
jelly confectionary comprising 25 to 75% of one or more bulk sweeteners
selected from the group of 18 sweeteners including isomaltulose. Id. at 10–
11.
Appellant argues that each of the rejections of claims 17 and 38
should be reversed because the Examiner has not provided an adequate
reason to select isomaltulose from the list of sucrose substitutes set forth in
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Application 14/761,171
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Gyeong or Koivistoinen. Appeal Br. 11–13. Appellant further argues that the
Board’s decision in Ex parte Tatarka, appeal 2014-007414, 2016 WL
1239173 (PTAB March 28, 2016), supports its argument. Appeal Br. 12–13.
In Tatarka, we reversed an obviousness rejection because the Examiner did
not provide any specific rationale for why a person having ordinary skill in
the art would have “plucked” a particular elastomer from the many
possibilities suggested in the prior art. Tatarka, 2016 WL 1239173 at*2.
We are not persuaded by Appellant’s argument.
First, Tatarka is not controlling precedent. The Federal Circuit has
explained that the fact that a reference “discloses a multitude of effective
combinations does not render any particular formulation less obvious.”
Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989). See
also In re Corkill, 771 F.2d 1496, 1500 (Fed. Cir. 1985) (obviousness
rejection of claims affirmed in light of prior art teaching that “hydrated
zeolites will work” in detergent formulations, even though “the inventors
selected the zeolites of the claims from among ‘thousands’ of compounds”);
In re Susi, 440 F.2d 442, 445 (CCPA 1971) (obviousness rejection affirmed
where the disclosure of the prior art was “huge, but it undeniably include[d]
at least some of the compounds recited in appellant’s generic claims and
[was] of a class of chemicals to be used for the same purpose as appellant’s
additives”).
Second, Tatarka is distinguishable from the facts of this appeal.
According to Appellant, there are 255 possible combinations of the eight
sugars listed by Gyeong from which a person having ordinary skill in the art
could choose. Appeal Br. 12. Similarly, Appellant also calculates that there
are 262,143 possible combinations of the 18 sugars listed in Koivistoinen.
Id. In Tatarka, however, the prior art “[did] not identify only a finite number
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Application 14/761,171
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of predictable solutions.” Tatarka, 2016 WL 1239173 at*2. Tatarka,
therefore, at most stands for the proposition that an examiner must provide a
rationale to select a particular species that is suggested by disclosure of an
open ended list of possibilities. This is not such a case.
Third, as the Examiner points out, isomaltulose is specifically
identified in the list provided by Gyeong and Koivistoinen. See Answer 15
(“To use a named compositional component would have been encompassed
or at the very least obvious when one of ordinary skill in the art was
practicing the prior art as disclosed.”). We agree with the Examiner.
For these reasons, we determine that the Examiner did not err by
finding that the prior art describes or suggests creating jelly confectionaries
with isomaltulose.
B. The Examiner Did Not Err by Finding that Lees & Jackson
Suggests the Turbidity Limitation Recited in Claims 17 and 38
Appellant argues that Lees & Jackson fails to describe or suggest how
to create a jelly confectionary comprising isomaltulose and having a
turbidity of 100–250 NTU. Appeal Br. 13–15. Claims 17 and 38 both require
the jelly confectionary to have a turbidity in this range when measured at
578 nm. Id. at 18, 20.
In rejecting claim 17 and 38, the Examiner found that Lees & Jackson
describes jelly confectionaries cooled at 5–10°C after deposition in molds as
having better sparkle from reflected light. Final Act. 3, 8–9, 11–12. The
Examiner found that a person having ordinary skill in the art would have
used Lees & Jackson’s production method to make the jelly confectionaries
described or suggested by Gyeong or Koivistoinen to obtain better sparkle.
Id. the Examiner further found that the jelly confectionaries resulting from
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Application 14/761,171
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the combination of Gyeong and Lees & Jackson or Koivistoinen and Lees &
Jackson would be substantially identical to the claimed jelly confectionaries.
Id.; see also Answer 16–19. Based upon this finding, the Examiner required
Appellants to demonstrate that the product described or suggested by the
prior art differs from the claimed product. Id. (citing In re Best, 562 F.2d
1252, 1255 (CCPA 1977)).
Appellant argues that the Examiner erred because the cited portion of
Lees & Jackson does not describe production of a jelly confectionary
comprising sugar. Appeal Br. 14 (citing Lees & Jackson 247). This
argument is not persuasive because the cited portion of Lees & Jackson does
not expressly limit the production method to jelly confectionaries that do not
include sugar. See Lees & Jackson 247. Even if Appellant were correct, Lees
& Jackson specifically contemplates the manufacture of jelly confectionaries
that include sugar. See Lees & Jackson 249 (describing the effect of sugar
solution temperature on the gelling power of gelatin).
Thus, the Examiner was entitled to rely upon the burden-shifting
authorized by Best. Because Appellant has not met its burden of
demonstrating a difference between the jelly confectionary described or
suggested by the combination of prior art references relied upon in the
rejections of claims 17 and 38, we do not reverse the rejections of these
claims.
IV. CONCLUSION
In summary:
Claims
Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
17, 18, 23–
27, 35 103(a)
Gyeong, Lees &
Jackson
17, 18,
23–27, 35
Appeal 2019-002416
Application 14/761,171
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Claims
Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
19, 20 103(a) Gyeong, Lees & Jackson, AAPA 19, 20
21, 22, 37 103(a) Gyeong, Lees & Jackson, Francisca 21, 22, 37

38, 39 103(a)
Gyeong, Lees &
Jackson, AAPA,
Francisca
38, 39
17–21, 23,
26, 27, 35,
38
103(a) Koivistoinen, Lees & Jackson
17–21,
23, 26,
27, 35, 38

22, 24, 25 103(a) Koivistoinen, Lees & Jackson, Francisca 22, 24, 25

37, 39 103(a)
Koivistoinen, Lees &
Jackson, Francisca,
AAPA
37, 39
Overall
Outcome
17–27,
35, 37–39

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