Schweitzer-Mauduit International, Inc.

Patent Trials and Appeals Board

Sep 1, 2021

2020004982 (P.T.A.B. Sep. 1, 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.
14/193,910 02/28/2014 Philippe Ragot SMD-213 (103159US) 8311
22827 7590 09/01/2021
DORITY & MANNING, P.A.
POST OFFICE BOX 1449
GREENVILLE, SC 29602-1449
EXAMINER
LE, EMILY M
ART UNIT PAPER NUMBER
1793
NOTIFICATION DATE DELIVERY MODE
09/01/2021 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):
USDOCKETING@DORITY-MANNING.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PHILIPPE RAGOT, BERNARD MOMPON, CEDRIC
ROUSSEAU, ESTHER PONS, and CHRISTIAN PINEAU
Appeal 2020-004982
Application 14/193,910
Technology Center 1700

Before LINDA M. GAUDETTE, MICHAEL P. COLAIANNI, and
JAMES C. HOUSEL, Administrative Patent Judges.

HOUSEL, 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, 2, 4, 5, 7–9, 34, 35, and 37–39.
Pending claims 10–17, 20, and 36 have been withdrawn from consideration
and are not before us on appeal. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM IN PART.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies Schweitzer-Maudit International, Inc. as
the real party in interest. Appeal Brief (“Appeal Br.”) filed December 27,
2019, 1.
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CLAIMED SUBJECT MATTER
The invention relates to an infusion product for making a beverage,
specifically a plant-based composition. Specification (“Spec.”) filed
February 28, 2014, at 1 (Field of the Invention).2 Appellant discloses that the
composition comprises a layer of fibrous plant product and a plant extract
applied thereto. Id. at 2 (Summary of the Invention).
Claim 1, reproduced below from the Claims Appendix to the Appeal
Brief, illustrates the claimed subject matter:
1. A product for making a beverage, the product comprising a
fibrous web formed from an insoluble fibrous residue fraction of
a plant, wherein the fibrous web is impregnated with a
concentrated plant extract, wherein the insoluble fibrous residue
fraction and the concentrated plant extract are from the same
plant, and wherein the impregnated fibrous web is not disposed
within a cellulose-based tea bag.
REFERENCES
The Examiner relies on the following prior art:
Name Reference Date
Carns et al. (“Carns”) US 6,235,323 B1 May 22, 2001
Hening et al. (“Hening”) CN 102422941 B Dec. 5, 2012

REJECTIONS
The Examiner maintains, and Appellant requests our review of, the
following rejections:
1. Claims 1, 2, 4, 5, 34, and 35 under 35 U.S.C. § 102(b) as
anticipated by Hening;

2 This Decision also cites to the Examiner’s Answer (“Ans.”) dated April 30,
2020, and the Reply Brief (“Reply Br.”) filed June 19, 2020.
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2. Claims 7–9 under 35 U.S.C. § 103 as unpatentable over
Hening; and
3. Claims 7–9 and 37–39 under 35 U.S.C. § 103 as
unpatentable over Hening in view of Carns.
OPINION
We review the appealed rejections for error based upon the issues
Appellant identifies, 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
Appellant’s arguments and the evidence of record, we are not persuaded of
reversible error in the stated rejections of claims 1, 2, 4, 5, 7–9, 34, and 35,
but are persuaded of reversible error in the stated rejection of claims 37–39.
Therefore, we affirm the Examiner’s rejections of claims 1, 2, 4, 5, 7–9, 34,
and 35 based substantially on the findings, reasoning, and conclusions set
forth in the Examiner’s Answer, which we adopt as our own, but reverse the
Examiner’s rejection of claims 37–39 for the reasons set forth in the Appeal
Brief. We offer the following for emphasis.
Rejection 1: Anticipation by Hening
The Examiner rejects claims 1, 2, 4, 5, 34, and 35 under 35 U.S.C.
§ 102(b) as anticipated by Hening. Ans. 3. The Examiner finds that Hening
teaches a product for making a beverage comprising “a fibrous web of
insoluble fibrous residue fraction of a plant (residue mint leaf extract of
same mint concentrated by way of centrifuge filtering . . . and blend
–jasmine and others . . . ).” Id. The Examiner finds that Hening’s dried mint
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leaf is equivalent to the recited fibrous web of an insoluble fibrous residue
fraction of a plant because, when dried, it is an insoluble fibrous web. Id. at
9. And the Examiner finds that because “the dried mint leaf web has been
extracted via boiling water and because it is saturated, the web is
impregnated.” Id. at 9–10. The Examiner finds that Hening does not require
a bag. Id. at 3.
Appellant argues that Hening teaches a canned liquid tea beverage
made from a blend of raw materials, wherein the residue portion is discarded
prior to canning. Appeal Br. 5. Appellant asserts that “Hening teaches that
the blend of raw materials are grass coral powder, jasmine, stevia, gongju,
mint leaves, osmanthus fragrance, and a sweetener.” Id. at 6. Appellant
further asserts that Hening teaches making an herbal tea from this blend by
adding a residue of these raw materials to mint leaves and water, followed
by boiling and filtering, wherein the filtrate is canned, but the resulting
residue is discarded. Id. Appellant, therefore, contends that Hening “contains
no teaching whatsoever of taking the fibrous portion [residue] and
impregnating it with the soluble portion.” Id.
Appellant urges that “claim 1 teaches forming a fibrous web, and
impregnating the fibrous web with a concentrated plant extract.” Reply Br.
2–3 (citing Spec. Ex. 1). As such, Appellant argues that the fibrous web is
not a tea leaf steeping in water because Hening does not separate the fibrous
portion of the leaf from its extract, followed by impregnating this fibrous
portion with a concentrated form of the extract. Id. at 3. In other words,
Appellant contends that Hening fails to form a fibrous web, concentrate a
plant extract, and impregnate the web with the concentrated extract. Id. at 3–
4. Appellant asserts that “extracting is not the same as concentrating,”
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wherein “extracting generally refers to merely removing or separating one
portion from another, [and] concentrating involves removing some or all of a
liquid or solvent to yield a more dense or intense extract.” Id. at 4.
Appellant’s arguments are not persuasive of reversible error because
they are based on unclaimed features and misapprehend the Examiner’s
application of Hening to the claims. Appellant appears to argue that Hening
cannot anticipate claim 1 because Hening fails to teach separating a fibrous
portion of a tea or mint leaf from an extract thereof and then impregnating
this fibrous portion with a concentrated form of this extract. However, claim
1 is directed to a product, not a process of making that product. As such,
steps of extraction, concentration, and impregnation are directed to the
process of making the product. The claim is a structural claim and as such
must be distinguished from the prior art based on structure. In re Thorpe,
777 F.2d 695, 697 (Fed. Cir. 1985) (citations omitted) (“If the product in a
product-by-process claim is the same as or obvious from a product of the
prior art, the claim is unpatentable even though the prior product was made
by a different process.”); In re Brown, 459 F.2d 531, 535 (CCPA 1972)
(“[I]t is the patentability of the product claimed and not of the recited
process steps which must be established.”).
Claim 1 requires a fibrous web that is formed from an insoluble
residue of a plant. As the Examiner finds, a dried tea or mint leaf is an
insoluble fibrous web from a plant. Ans. 9. Thus, absent a showing to the
contrary, Hening’s tea leaf and mint leaf have the same structure as the
claim 1 fibrous web formed from an insoluble residue of a plant.
Claim 1 further requires that the fibrous web is impregnated with a
concentrated plant extract from the same plant as the web. Claim 1 does not
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identify the type of extraction process used to form the extract, nor recite the
level of concentration of any ingredient in the extract. An “extract” is
defined as “a product (such as an essence or concentrate) prepared by
extracting,” where “extracting” means “to withdraw (something, such as
juice or a constituent element) by physical or chemical process.”3 Thus, an
extract may be a dilution of a substance contained in a tea or mint leaf; a
concentrate of that extract may then be that substance in the same quantity as
present in the original tea or mint leaf. Claim 1 recites that the fibrous web is
impregnated with the concentrated extract. The verb “impregnate” is defined
as “to cause to be infused or permeated throughout, as with a substance.”4 If
the substance in the concentrated extract is in the same quantity as originally
present in a tea or mint leaf, impregnating such an extract back onto the tea
or mint leaf would restore the tea or mint leaf to its original composition. As
such, Hening’s tea or mint leaf anticipates claim 1 because Appellant has not
structurally distinguished the claimed product from such tea and mint leaves.
“Where a product-by-process claim is rejected over a prior art product
that appears to be identical, although produced by a different process, the
burden is upon the applicants to come forward with evidence establishing an
unobvious difference between the claimed product and the prior art
product.” In re Marosi, 710 F.2d 799, 803 (Fed. Cir. 1983). In this case,
Appellant does not direct our attention to any structural difference between

3 Merriam-Webster.com (last accessed Aug. 23, 2021),
https://www.merriam-webster.com/dictionary/extracting.
4 Dictionary.com (last accessed Aug. 23, 2021), https://www.dictionary.com/
browse/impregnated.
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Hening’s tea or mint leaf and the claimed product, nor do we find any.
Therefore, Appellant has not met its burden.
Accordingly, we sustain the Examiner’s anticipation rejection of
claim 1 by Hening. Because Appellant does not present separate arguments
directed to claims 2, 4, 5, 34, or 35, we likewise sustain the Examiner’s
anticipation rejection of each of these claims for the same reasons given
above.
Rejection 2: Obviousness over Hening
The Examiner rejects claims 7–9 under 35 U.S.C. § 103 as
unpatentable over Hening. Ans. 4.
Claim 7 depends from claim 1, and further requires that the insoluble
residue fraction comprises at least 70% of the fibrous residue from one plant.
Claim 8 depends from claim 1, and further requires that the plant extract
comprises at least 70% of the extract from one plant. Claim 9 depends from
claim 1, and further requires that at least 70% of the insoluble fibrous
residue fraction and the plant extract is from tea.
Appellant argues that Hening fails to teach that either the fibrous
residue or the plant extract are at least 70% from one plant, particularly tea.
Appeal Br. 8–9.
This argument is not persuasive of reversible error because Hening’s
tea or mint leaf contains 100% (i.e., is at least 70%) from the same tea or
mint plant. Appellant’s argument incorrectly focuses on Hening’s liquid
product, rather than Hening’s raw material, e.g., tea and mint leaves, used to
produce that product.
Accordingly, we sustain the Examiner’s obviousness rejection of
claims 7–9 over Hening.
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Rejection 3: Obviousness over Hening and Carns
The Examiner rejects claims 7–9 and 37–39 under 35 U.S.C. § 103 as
unpatentable over Hening in view of Carns. Ans. 4–7.
Claims 7–9 each depend from claim 1, and further require that either
or both the insoluble fibrous residue fraction and the plant extract comprise
at least 70% from the same plant, e.g., tea (claim 9). Because we are not
persuaded of reversible error in the Examiner’s obviousness rejection of
claims 7–9 over Hening alone, we likewise sustain the Examiner’s
obviousness rejection of these claims over Hening in view of Carns for the
same reasons discussed above for Rejection 2.
Claim 37 depends from claim 1, and further requires that the product
has an optical density at 275 nm of greater than about 0.4 after 2.5 grams of
the composition are immersed in 500 ml of water at a temperature of 90°C
for 20 seconds.5 Claims 38 and 39 each depend from claim 37, and further
require that the optical density is greater than about 0.5 (claim 38) or greater
than about 0.6 (claim 39).
Appellant argues that Carns fails to remedy the deficiencies in Hening
previously argued, especially because “Carns is directed to using pieces of
tea leaf and dried solids inside a tea bag.” Appeal Br. 10. Appellant also
contends that Carns fails to teach or suggest an optical density at 275 nm of
2.5 grams of composition immersed in 0.5 l of water at a temperature of
90°C for 20 seconds. Id. Instead, Appellant asserts that Carns’ examples
teach extraction times substantially greater than 20 seconds. Id. With regard

5 We note that the Specification and Drawings both disclose measurement of
optical density at 274 nm, rather than at 275 nm (as now claimed)..
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to Example 6, Appellant asserts that the time period of 5–10 refers to drying
time in a drum, rather than extraction or infusion time. Id. at 11.
In response, the Examiner finds that Carns teaches absorbance or
optical densities greater than 0.4 (and 0.6), but dismisses Appellant’s
assertion that Carns fails to teach the extraction or infusion times of 20
seconds to achieve such values. Ans. 14. The Examiner states that “the claim
is directed to a measurement of absorbance values and since they are met by
Carns, what happens after in seconds is not critical.” Id.
Appellant’s argument is persuasive of reversible error with regard to
the Examiner’s obviousness rejection of claims 37–39 over Hening in view
of Carns. The Examiner fails to present any evidentiary support for finding
that Carns teaches optical densities of Hening’s product (i.e., a tea product as
recited in claim 1) under conditions as recited in claim 37. Nor has the
Examiner provided any technical reasoning that Hening’s product would
meet the limitations of claim 37 if tested under the recited conditions. As
Appellant asserts, Carns fails to provide any data for any tea product at 20
seconds. Also, Carns’ data is produced using tea bags having 9.5 g of tea
immersed in about 1.1 l of water at 22°C and measured at 450 nm beginning
at 90 seconds. Carns 6:7–32. The Examiner fails to explain how Carns’
disclosure teaches or suggests that Hening’s product would necessarily have
the recited optical density under the recited conditions or how it would have
been obvious to modify Hening’s product to achieve such optical density.
Accordingly, we do not sustain the Examiner’s obviousness rejection
of claims 37–39.

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CONCLUSION
Upon consideration of the record and for the reasons set forth above
and in the Examiner’s Answer, the Examiner’s decision to reject claims 1, 2,
4, 5, 7–9, 34, and 35 is affirmed. However, for the reasons set forth above
and in the Appeal Brief, the Examiner’s decision to reject claims 37–39 is
reversed.
DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 2, 4, 5,
34, 35
102(b) Hening 1, 2, 4, 5,
34, 35

7–9 103 Hening 7–9
7–9, 37–39 103 Hening, Carns 7–9 37–39
Overall
Outcome
1, 2, 4, 5, 7–
9, 34, 35
37–39

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) (2019).
AFFIRMED IN PART