NESTEC S.A.

Patent Trials and Appeals Board

Jul 22, 2021

2020005096 (P.T.A.B. Jul. 22, 2021)

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.
14/758,015 06/26/2015 Federico Mora 3712036-02461 7881
29157 7590 07/22/2021
K&L Gates LLP-Nestec S.A.
P.O. Box 1135
Chicago, IL 60690
EXAMINER
MCCLAIN-COLEMAN, TYNESHA L.
ART UNIT PAPER NUMBER
1793
NOTIFICATION DATE DELIVERY MODE
07/22/2021 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):
USpatentmail@klgates.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FEDERICO MORA, ERIC DOSSIN,
PHILIPPE MONTAVON, VALERIE MARTINE JEANINE LELOUP,
IMRE BLANK, THOMAS HOFMANN, and PETER KORNAS

Appeal 2020-005096
Application 14/758,015
Technology Center 1700
Before JEFFREY B. ROBERTSON, BRIAN D. RANGE, and
SHELDON M. MCGEE, Administrative Patent Judges.
MCGEE, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 5–10, 17–20, 23, and 24. We have
jurisdiction. 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 SOCIÉTÉ
DES PRODUITS NESTLÉ S.A. Appeal Br. 2.
Appeal 2020-005096
Application 14/758,015
2

CLAIMED SUBJECT MATTER
The claims are directed to methods of producing a coffee beverage
(claim 5) and processes of making a coffee product (claim 6).
Independent claim 5, reproduced below, is illustrative of the claimed
subject matter:
5. A method of producing a coffee beverage, the method
comprising:
(i) providing a composition comprising at least two 4-
vinylcatechol monomers released from caffeic acid;
(ii) inducing polymerization of the at least two 4-
vinylcatechol monomers of step (i) to obtain a foaming aid
comprising a compound selected from the group consisting of (a)
trans-5,6-Dihydroxy-1-methyl-3-(3'-4'-dihydroxyphenyl)
indane, (b) cis-5,6-Dihydroxy-1-methyl-3-(3'-4'-
dihydroxyphenyl) indane, (c) trans-1,3-bis(3'-4'-
dihydroxyphenyl)butene and (d) mixtures thereof, the inducing
of the polymerization of the at least two 4-vinylcatechol
monomers comprises subjecting the composition comprising the
at least two 4-vinylcatechol monomers to heat treatment; and
(iii) adding the foaming aid to a coffee extract to produce
the coffee beverage, the coffee beverage comprising 2-8 mg/L of
the compound.
REJECTIONS
On appeal, the Examiner maintains the following rejections under 35
U.S.C. § 103:
I. Claims 5–10, 19, 23, 24 over Zehentbauer (US 2007/0003678
A1, published January 4, 2007);
II. Claims 5–10, 17–19, 23, and 24 over Gurol (WO 97/23139,
published July 3, 1997);
Appeal 2020-005096
Application 14/758,015
3
III. Claims 5–10, 17–20, 23, and 24 over Asquith (EP 0337541 A2,
published October 18, 1989); and
IV. Claims 5–10, 17, 19, 23, and 24 over Navarini (EP 1021957
A1, published July 26, 2000).
OPINION
We review the appealed rejections for reversible error based on the
arguments and evidence presented by Appellant. 37 C.F.R.
§ 41.37(c)(1)(iv); 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) (explaining that even if the Examiner had failed to make a prima
facie case, “it has long been the Board’s practice to require an applicant to
identify the alleged error in the examiner’s rejections”).
Upon consideration of Appellant’s arguments in light of the evidence
in the appeal record, we determine that Appellant has identified no error in
the rejections on appeal. We therefore affirm the obviousness rejections of
claims 5–10, 17–20, 23, and 24 for the reasons provided by the Examiner.
Final Act. 3–11. We add the following for emphasis.
Rejection I
Appellant’s main argument on appeal is that “obviousness based on
routine optimization requires that the cited references must demonstrate that
the variable was recognized to be a result-effective variable for the claimed
purpose.” Appeal Br. 6. Thus, according to Appellant, because Zehentbauer
fails to recognize that adjusting the amount of one of the claimed
compounds impacts the degree of foaming, the Examiner’s optimization
rationale is erroneous. Id. at 6–10. Appellant’s position is not consistent
with the law.
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“[T]he prior art need not provide the exact method of optimization [to
that claimed] for the variable to be result-effective. A recognition in the
prior art that a property is affected by the variable is sufficient to find the
variable result-effective.” In re Applied Materials, Inc., 692 F.3d 1289,
1297 (Fed. Cir. 2012) (emphasis added). Such is precisely the case here.
Zehentbauer expressly discloses two of the claimed compounds––(cis)- and
(trans)-5,6-dihydroxy-1-methyl-3-(3’,4’-dihydroxylphenyl)indan––as
examples of “strongly bitter tasting compounds” (¶¶ 29–31), and that the
amount of the bitter compound isolate impacts the flavor profile (¶ 67).
Appellant acknowledges as much. Appeal Br. 8. Thus, Zehentbauer
recognizes the result-effective nature of the amount of one or more of the
claimed bitter compounds in a beverage product. It is, therefore, irrelevant
whether Zehentbauer also recognizes that varying the amounts of these
compounds affects the particular property recited in the claims. Appellant’s
citation to three non-precedential Board decisions (Appeal Br. 6–7) does not
compel a different result because each of these decisions pre-date our
reviewing court’s decision which controls the outcome here. Applied
Materials, 692 F.3d 1297.
Rejection I is sustained.
Rejections II–IV
These rejections have a somewhat different posture than Rejection I.
In Rejection I, two of the claimed compounds are expressly disclosed in the
cited prior art reference. In Rejections II–IV, however, the Examiner finds
that the claimed compounds are naturally present in roasted coffee. Final
Act. 6, 8, 10. The Examiner determines that the skilled artisan would have
been motivated to optimize the amount of these compounds through routine
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Application 14/758,015
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experimentation to adjust the coffee product or beverage to a desired flavor
or consistency. Id. at 7, 9, 11.
Appellant asserts that none of Gurol, Asquith, or Navarini “even
disclose or suggest the claimed compounds.” Appeal Br. 11, 14, 17. Such
naked assertions do not constitute substantive argument. In re Lovin, 652
F.3d 1349, 1357 (Fed. Cir. 2011). However, even if we considered
Appellant’s assertion, it would be unpersuasive because it does not address
the rejections made by the Examiner––i.e., rejections based on a finding that
“these compounds are naturally present in roasted coffee.” Compare Appeal
Br. 11, 14, 17, with Final Act. 6, 8, 10.2
Appellant then repeats the erroneous assertion that the cited prior art
must recognize that the claimed compounds are result-effective for the
claimed property. Appeal Br. 11, 14, 15, 18. We reject that assertion here
as we did for Rejection I.
Rejections II–IV are sustained.
CONCLUSION
The Examiner’s rejections are affirmed.

2 We observe that the Examiner’s finding has evidentiary support in the
appeal record. See Zehentbauer ¶ 26 (discussing certain quinide compounds
present in roasted coffee), ¶¶ 29–31 (identifying “strongly bitter tasting
compounds” which “coelute with the . . . late eluting bitter fraction,” are not
quinides, but are phenylindans).
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DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
5–10, 19,
23, 24
103 Zehentbauer 5–10, 19,
23, 24

5–10, 17–
19, 23, 24
103 Gurol 5–10, 17–
19, 23, 24

5–10, 17–
20, 23, 24
103 Asquith 5–10, 17–
20, 23, 24

5–10, 17,
19, 23, 24
103 Navarini 5–10, 17,
19, 23, 24

Overall
Outcome
5–10, 17–
20, 23, 24

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