Sundar Bala et al.

Patent Trials and Appeals Board

Dec 30, 2019

14766828 - (D) (P.T.A.B. Dec. 30, 2019)

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.
14/766,828 08/10/2015 Sundar Bala 2189-292717 9811
23644 7590 12/30/2019
Barnes & Thornburg LLP (CH)
P.O. Box 2786
Chicago, IL 60690-2786
EXAMINER
GEORGE, PATRICIA ANN
ART UNIT PAPER NUMBER
1793
NOTIFICATION DATE DELIVERY MODE
12/30/2019 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):
Patent-ch@btlaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________
Ex parte SUNDAR BALASUBRAMANIAN,
BRYAN WILLIAM HITCHCOCK, MONGJAN HSIEH,
RACHEL LISA JORDAN, JEFFREY DAVID MATHEWS,
TEODORO RIVERA, JIN-E SHIN, and WILLIAM B. SMALL II
_______________
Appeal 2019–003368
Application 14/766,828
Technology Center 1700
_______________
Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and
DEBRA L. DENNETT, Administrative Patent Judges.
DENNETT, Administrative Patent Judge.
DECISION ON APPEAL1
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1–4, 6, 7, 11, and 44–46 of Application

1 In our Decision, we refer to the Specification filed August 10, 2015
(“Spec.”) of Application 14/766,828 (“the ’828 Application”); the Final
Office Action dated July 2, 2018 (“Final Act.”); the Appeal Brief filed
December 3, 2018 (“Appeal Br.”); the Examiner’s Answer dated February
21, 2019 (“Ans.”); and the Reply Brief filed March 28, 2019 (“Reply Br.”).
2 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies Tropicana Products, Inc. as the real
party in interest. Appeal Br. 2.
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14/766,828. See Appeal Br. 4; Final Act. 1. We have jurisdiction under
35 U.S.C. § 6.
For the reasons set forth below, we REVERSE.
BACKGROUND
The ’828 Application relates to a beverage comprising juice and a co-
product derived from juice extraction. Spec. ¶ 5. The ’828 Application
describes that juice extraction excludes portions of a whole fruit or vegetable
that would otherwise be consumed if the fruit or vegetable were to be eaten
in its whole form. Id. at ¶ 3. According to the Specification, fruit and
vegetable juices lack nutrients, such as fiber, phytonutrients, and vitamins,
which are contained in these excluded portions. Id. The ’828 Application
describes that use of co-products obtained from fruit or vegetable juice
extraction imparts nutrition and sensory characteristics to the beverage. Id.
¶ 2.
Claim 1 is representative of the ’828 Application’s claims and is
reproduced below from the Claims Appendix of the Appeal Brief.
1. A beverage comprising:
juice; and
a co-product from juice extraction, wherein the co-
product comprises a number average particle size of between
0.1 and 2000 microns, a total polyphenol content of at least
2500 parts 5 per million, a moisture content of between 70%
and 85% by weight, and a combined peel and seed content
between 0.01% and 20% by weight; and
wherein a viscosity of 8 ounces of the beverage
comprising at least 10 wt% of the co-product is at least 300 cps
at 25°C.
Appeal Br. 13 (Claims Appendix).
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REFERENCES
The Examiner relies on the following prior art in rejecting the claims
on appeal:
Name Reference Date
Paeschke et al.
(“Paeschke”)
US 2012/0135109 A1 May 31, 2012
Ames et al.
(“Ames”)
WO 2012/045045 A13 April 5, 2012
M.J. Fallourd et al., “1—Ingredient selection for stabilisation
and texture optimisation of functional beverages and the
inclusion of dietary fibre,” in Functional and Speciality
Beverage Technology, Woodhead Publishing Series in Food
Science, Technology and Nutrition, edited by P. Paquin
(Woodhead Publishing, 2009), p. 24 (hereinafter “Paquin”).
REJECTIONS
The Examiner maintains the following rejections4: (1) claims 1–4, 6,
7, 11, and 44–46 under 35 U.S.C. § 112, second paragraph, as indefinite;
(2) claims 4, 45, and 46 under 35 U.S.C. § 112, fourth paragraph, for
improper dependent form;5 and (3) claims 1–4, 6, 7, 11, and 44–46 under 35
U.S.C. § 103(a) as unpatentable over Paeschke in view of Ames, and further
in view of Paquin. Final Act. 2–17.

3 The Examiner cites to US 2014/0308389 A1, a national stage publication
of Ames. Appellant has not objected to the Examiner’s reliance on US
2014/0308389 A1.
4 Because this application claims priority to an application filed before the
March 16, 2013 effective date of the America Invents Act, we refer to the
pre-AIA version of the statutes.
5 In the Answer, the Examiner withdrew the rejection of claim 2 under 35
U.S.C. § 112, fourth paragraph, for improper dependent form. Ans. 3.
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Claims 32–35, 42, and 43 are withdrawn from consideration. Final
Act. 1; Appeal Br. 2. Claims 5, 8–10, 12–31, and 36–41 are canceled.
Appeal Br. 2.
DISCUSSION
Ground 1: Rejection claims 1–4, 6, 7, 11, and 44–46 as indefinite
Appellant argues claims in subgroups, which we adopt for the
purposes of this Discussion regarding Ground 1. See Appeal Br. 5–7.
Appellant does not argue in support of claim 3, but this claim is included in
the list of appealed claims. Id. 2. We, thus, view Appellant’s omission of
claim 3 from the argued subgroups as a clerical error. Claim 3 will stand or
fall with claim 1, from which it depends. See 37 C.F.R. § 41.37(c)(1)(iv).
Subgroup A: Claims 1, 2, 4, 6, 7, 11, and 44–46
Appellant selects claim 1 as representative of the claims in Subgroup
A. Appeal Br. 5.
The Examiner finds that claim 1 “is confusing” because “it is unclear
as to what the scope of the claimed [co-product’s] average particle size,
polyphenol content, moisture content, peel and seed content, [and viscosity]
contribute to the [beverage] composition as a whole.” Final Act. 3.
Appellant argues that paragraph 56 of the Specification explains how
the co-product’s features are specific to the particular fruits and/or
vegetables, which form the claimed co-product. Appeal Br. 6. As an
example, Appellant argues that the “Specification describes how moisture
content can be used to select the suitable fruits and/or vegetables” for
subsequent extraction and formation of the claimed co-product. Id. (citing
Spec. ¶ 56). Appellant argues that because “claim 1 recites the limitation of
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a beverage that comprises at least 10 wt% of the co-product,” the skilled
artisan is informed regarding what the claimed beverage actually comprises.
Reply Br. 2–3.
We are persuaded by Appellant’s arguments that the Specification’s
disclosure reasonably apprises the skilled artisan of the scope of the
invention. Appellant’s relied-upon passage adequately describes to one of
skill in the art that the limitations directed to the co-product also contribute
to the beverage composition as a whole. See Spec. ¶ 56. Appellant,
therefore, shows that the Examiner reversibly errs in finding claims 1, 2, 4,
6, 7, 11, and 44–46 are unclear as to what the scope of the claimed co-
product’s features contribute to the beverage composition.
Subgroup B: Claims 1, 4, and 45
Appellant selects claim 1 as representative of the claims in Subgroup
B. Appeal Br. 6.
With respect to claim 1, the Examiner finds that the limitation
“wherein a viscosity of 8 ounces of the beverage comprising at least 10 wt%
of the co-product is at least 300 cps at 25°C” to be indefinite. Final Act. 3;
Appeal Br. 13 (Claims Appendix).
According to the Examiner, because the limitation is directed to “any
amount of a beverage having any amount of co-product at any temperature,”
the limitation reciting “8 ounces of the beverage do[es] not further limit the
claim.” Final Act. 3. The Examiner finds that the limitation is indefinite
because it is directed “toward the intended use of the product that requires
portioning the beverage to 8 ounces, wherein a specific amount of co-
product is adjusted to 10, 15 or 20 wt%, and further adjusting for this made
product to have a specific temperature.” Id.
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Appellant argues “the viscosity limitation is directed to the beverage”
and “viscosities are characteristics of beverages irrespective of volume.”
Reply Br. 3. Appellant argues the “[t]he claimed temperature of 25°C is a
common, acceptable temperature at which skilled artisans typically measure
viscosities.” Id.
These arguments are persuasive. We, thus, agree with Appellant that
the skilled artisan would understand that claim 1 is directed to a beverage
with limitations regarding the amount of the co-product present in a
specified beverage volume when the beverage’s viscosity is measured at a
standardized temperature. Appeal Br. 7. Appellant, therefore, shows the
Examiner reversibly errs in finding that the limitations regarding beverage
viscosity measurement, as recited in claims 1, 4, and 45, are indefinite.
Subgroup C: Claim 2
Claim 2 is reproduced below from the Claims Appendix of the Appeal
Brief.
2. The beverage of claim 1, wherein the co-product
comprises citrus pomace co-product.
Appeal Br. 13 (Claims Appendix).
The Examiner finds that claim 2 is indefinite because the claim
“recites the broad recitation of pomace, however, the base claims already
recite the species of peel and seed, which is the narrower statement of the
range/limitation.” Final Act. 4.
We note that the Examiner withdrew the rejection of claim 2 under
35 U.S.C. § 112, fourth paragraph, for improper dependent form based on
Appellant’s arguments, which we find are also dispositive as to whether
claim 2 is indefinite. Appellant argues dependent claim 2 was not in
improper form because the Specification describes that the claimed co-
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product can include peel and seed from a variety of fruits and/or vegetables,
such as berries and/or citrus pomace. Appeal Br. 7 (citing Spec. ¶¶ 15–18).
As explained by Appellant, “claim 1 recites a co-product with a particular
peel and seed content, irrespective of source, and dependent claim 2 recites a
co-product that comprises citrus pomace . . . from a particular source.”
Appeal Br. 7. Appellant argues that these recitations are consistent with the
Specification. Id. (citing Spec. ¶¶ 15–18).
We find these arguments are similarly persuasive for reversal of the
Examiner’s rejection of claim 2 under 35 U.S.C. § 112, second paragraph, as
indefinite. Appellant, therefore, shows the Examiner reversibly errs in
finding that the limitation “wherein the co-product comprises citrus pomace
co-product,” as recited in claim 2, is indefinite.
Subgroup D: Claims 6 and 7
Appellant selects claim 6 as representative of the claims in Subgroup
D. Appeal Br. 7. Claim 6 is reproduced below from the Claims Appendix
of the Appeal Brief.
6. The beverage of claim 1, wherein the co-product
comprises between about 6% and about 20% by weight
fiber, wherein the fiber of the co-product comprises both
insoluble fiber and soluble fiber.
Id. at 13 (Claims Appendix).
The Examiner finds that claim 6 is indefinite because “it is unclear if
the claimed fiber is further/other than the fiber presented in ingredients
already claimed, like the seeds and peel, or the same.” Final Act. 4.
However, we agree with Appellant that the claim language, as
presently drafted, would be clear to the skilled artisan. Appeal Br. 7. We
find that the claim is directed to fiber present in the co-product, regardless of
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whether the fiber originated from a previously recited ingredient. Appellant,
therefore, shows the Examiner reversibly errs in finding that the limitations
recited in claims 6 and 7 regarding the amounts of fiber in the co-product are
indefinite.
We do not sustain the rejection of claims 1–4, 6, 7, 11, and 44–46
under 35 U.S.C. § 112, second paragraph, as indefinite. See 37 C.F.R.
§ 41.37(c)(1)(iv).
Ground 2: Rejection of claims 4, 45, and 46 for improper dependent
form
Appellant argues claims in subgroups, which we adopt for the
purposes of this discussion with respect to Ground 2. See Appeal Br. 8–9.
Subgroup A: Claims 4 and 45
Appellant selects claim 4 as representative of the claims in Subgroup
A. Id. at 6. Claim 4 is reproduced below from the Claims Appendix of the
Appeal Brief.
4. The beverage of claim 1, wherein the viscosity of 8
ounces of the beverage comprising about 15 wt% of the
co-product is about 1100 cps at 25°C.
Id. at 13 (Claims Appendix).
The Examiner finds that claim 4 is in improper dependent form
because it “fail[s] to further limit the claim of any amount of beverage
having any amount of co-product being at any temperature.” Final Act. 5.
For the reasons set forth above and in Appellant’s Briefs, we are not
persuaded that claim 1 is directed to any amount of beverage having any
amount of co-product at any given temperature. Claim 4, furthermore, limits
claim 1 by increasing: (i) the amount of co-product comprising the beverage
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from 10 wt% to 15 wt% and (ii) the viscosity of the beverage from at least
300 cps to about 1100 cps. Appeal Br. 15 (Claims Appendix).
Claim 45 similarly limits claim 1 by reciting limitations requiring
further such increases. Claim 45 is reproduced below from the Claims
Appendix of the Appeal Brief.
45. The beverage of claim 1, wherein the viscosity of 8
ounces of the beverage comprising about 20 wt% of the
co-product is about 3400 cps at 25°C.
Id. (Claims Appendix).
Appellant, therefore, shows the Examiner reversibly errs in finding
that the limitations recited in claims 4 and 45 are in improper dependent
form.
Subgroup B: Claim 2
Appellant’s arguments for reversal of the rejection of Subgroup B:
Claim 2 are moot. See Ans. 3; supra fn.5.
Subgroup C: Claim 46
Claim 46 is reproduced below from the Claims Appendix of the
Appeal Brief.
46. The beverage of claim 45, wherein 8 ounces of the
beverage comprising about 20 wt% of the co-product
further comprises at least 5 grams of fiber.
Appeal Br. 15 (Claims Appendix).
The Examiner finds that claim 46 is in improper dependent form
because “it is unclear as to how” claim 46 “further limits claim 45.” Final
Act. 5. Appellant, however, argues persuasively that the disputed claim
“specifies the amount of fiber present in the 8-ounce beverage having the
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claimed amount of co-product, a feature not recited in claim 45.” Appeal
Br. 9 (emphasis added).
Appellant, therefore, shows the Examiner reversibly errs in finding
that the limitations recited in claim 46 are in improper dependent form.
We reverse the rejection of claims 4, 45, and 46 under 35 U.S.C.
§ 112, fourth paragraph, for improper dependent form.
Ground 3: Rejection of claims 1–4, 6, 7, 11, and 44–46 as obvious
over Paeschke in view of Ames, and further in view of Paquin
The Examiner determines that claims 1–4, 6, 7, 11, and 44–46 would
have been rendered obvious over Paeschke in view of Ames, and further in
view of Paquin. Final Act. 7–13. Appellant argues the claims as a group.
Appeal Br. 9–11. We select claim 1 as representative. Claims 2–4, 6, 7, 11,
and 44–46 stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv).
Appellant argues that a prima facie case of obviousness has not been
established “because the Examiner’s rejection of claim 1 fails to consider
all” of the limitations recited in the instant claim. Appeal Br. 9.
Specifically, Appellant argues that the Examiner has failed to consider two
limitations: (i) “a combined peel and seed content between 0.01 % and 20%
by weight” and (ii) “wherein a viscosity of 8 ounces of the beverage
comprising at least 10 wt% of the co-product is at least 300 cps at 25°C.”
Id. at 10, 13 (Claims Appendix).
Appellant does not contest the Examiner’s findings with respect to the
obviousness of the remaining limitations recited in claim 1. See id. at 9–11;
Final Act. 7–10. Appellant, thus, does not contest the Examiner’s findings
regarding Ames. See Appeal Br. 9–11. Accordingly, our discussion
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regarding Ground 3 will focus on whether Paeschke in view of Paquin
would have rendered the disputed limitations obvious.
A. The claimed co-product comprising “a combined peel and
seed content between 0.01 % and 20% by weight”
Appellant argues, “[t]he Examiner has not considered Appellant’s
claimed co-product that comprises a combined peel and seed content
between 0.01 % and 20% by weight.” Id. at 10.
The Examiner, however, makes reasoned findings that Paeschke’s
process for providing a beverage from juice extraction byproducts discloses
or suggests the disputed limitation: a combined peel and seed content
between 0.01 % and 20% by weight. In particular, the Examiner finds
Paeschke teaches that the process used results in fiber
(i.e. byproduct particles, i.e. pomace, i.e. seeds and peel, i.e. co-
product), and illustrates that said fiber is used in quantities of:
about 5 wt% solids . . . , which encompasses at least 10
wt% of between 0.01 and 20 wt% of peel and seed content as in
claim 1;
about 4 wt% solids . . . , which encompasses at least 10
wt% of between 0.01 and 20 wt% of peel and seed content, as
in claim 1;
about 15 to 30 wt% of certain embodiments . . . , which
encompasses the claim of at least 10 wt% of between 0.01 and
20 wt% of peel and seed content as in claim 1; and
wherein the weight ratio of byproduct particles to liquid
may range between about 1:99 to about 3:1 . . . , which means
the amount of pomace is from about 1 to 75 wt% of the amount
of liquid used in the composition as a whole, which also
encompasses at least 10 wt% of between 0.01 and 20 wt% of
peel and seed content, as in claim 1.
Final Act. 11 (citing Paeschke ¶¶ 32, 33, 50; Table 1, 2; Figs. 3, 4). We are
not persuaded that the Examiner fails to consider the first of two disputed
limitations recited in claim 1. We, furthermore, find that Appellant’s
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assertion fails to substantively argue or identify reversible error in the
Examiner’s findings.
B. The claimed beverage “wherein a viscosity of 8 ounces of
the beverage comprising at least 10 wt% of the co-product is
at least 300 cps at 25°C.”
The Examiner finds that Paeschke describes that the viscosity of the
juice extraction byproduct is between 500 and 9,000 cp, thereby
encompassing the claimed viscosity of at least 300 cps. Final Act. 12 (citing
Paeschke Fig. 5). The Examiner finds that Paeschke further describes the
fiber’s viscosity as a result effective variable, which can be altered by the
fiber’s molecular weight. Final Act. 12 (citing Paeschke ¶ 19).
Although Paeschke is silent with respect to modifying the fluid’s
viscosity, the Examiner finds “Paeschke opens the door” to such
modifications “by teaching that the beverages disclosed may have any of
numerous different specific formulations or constitutions . . . , including
formulations that vary the mouthfeel.” Final Act. 12 (citing Paeschke ¶¶ 67,
68).
The Examiner finds Paquin teaches that “some types of hydrocolloids
produce a shear thickening effect which results in a higher viscosity (e.g.
coated mouth feel), while other produce a shear thinning effect which results
in a lower viscosity (e.g. non-coated mouth feel).” Final Act. 12. According
to the Examiner, Paquin teaches that “shear thickening of a juice beverage is
result effective based on the type of hydrocolloid selected.” Id. at 13. The
Examiner concludes
it would have been obvious to one with skill in the art at the
time of the invention to determine the optimal value for the
viscosity (i.e. shear thickening) and type of hydrocolloid used
in the process of Paeschke in view of Paquin, through routine
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experimentation, to impart the material with the desired
viscosity properties, as claimed, associated with juice beverage
because the selection of something based on its known
suitability for its intended use has been held to support a prima
facie case of obviousness.
Id. The Examiner finds that it would have been reasonable for one of
ordinary skill in the art to expect that a beverage produced from the use of
shear force to adjust beverage viscosity would have resulted in a viscosity of
at least 300 cps. Id.
Appellant argues that the Examiner’s reliance on Paeschke is
misplaced because Paeschke’s Figure 5 provides the viscosities of byproduct
prior to mesh filtration. Appeal Br. 10 (citing Paeschke ¶ 93 (“viscosity
readings were taken . . . on the samples prior to passing the mixture through
a 20 mesh screen”)). Appellant contends that post-filtration, Paeschke’s
filtered byproduct liquid is added to a beverage in order to prevent an
increase in the beverage’s viscosity from the byproduct. Appeal Br. 10
(citing Paeschke ¶ 62).
Appellant asserts that the Examiner’s proposed modification would
have increased the beverage’s viscosity. Appeal Br. 10. Appellant argues
that such an increase would have rendered Paeschke’s beverage unsuitable
for its intended purpose of forming a beverage having a low molecular
weight fiber extract without a concomitant significant increase in viscosity.
Id.; see also Reply Br. 7.
In response, the Examiner finds that Paeschke discloses: (i) the
composition comprises a co-product having a viscosity in the claimed range
(see Paeschke Fig. 5) and (ii) claim 1 does not require the viscosity to be
directed toward the composition as a whole. Ans. 29.
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The Examiner reversibly errs because the viscosity limitation recited
in the claim is directed to the beverage, not to the co-product. See Appeal
Br. 13 (Claims App.).
The Examiner reiterates that Paquin teaches that hydrocolloids
produce a shear thickening effect, which results in a higher viscosity. Ans.
30. However, Paquin teaches that hydrocolloids provide “higher viscosities
(i.e. 30 mPa s),” which equates to a viscosity value of only 30 cps. Paquin
24. We find that Paquin’s disclosure of a viscosity an order of magnitude
less than what claim 1 requires would have failed to teach or suggest raising
a beverage’s viscosity to at least 300 cps.
“After evidence or argument is submitted by the applicant in response,
patentability is determined on the totality of the record, by a preponderance
of evidence with due consideration to persuasiveness of argument.” In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992); see also In re Sullivan, 498
F.3d 1345, 1352 (Fed. Cir. 2007) (“Whether the composition would have
been obvious cannot be determined without considering evidence attempting
to rebut the prima facie case.”; In re Rinehart, 531 F.2d 1048, 1052 (CCPA
1976) (“When prima facie obviousness is established and evidence is
submitted in rebuttal, the decision-maker must start over.”).
On the record before us, Appellant’s contention that the Examiner’s
proposed modification would have rendered Paeschke’s beverage unsuitable
for its intended purpose of forming a beverage having a low molecular
weight fiber extract without a concomitant significant increase in viscosity is
persuasive of reversible error by the Examiner. See Appeal Br. 10; see also
Reply Br. 7.
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We do not sustain the rejection of claim 1 as obvious over Paeschke in
view of Ames, and further in view of Paquin. For the same reasons, we do
not sustain the rejection of claims 2–4, 6, 7, 11, and 44–46 as obvious over
the same combination of references.
CONCLUSION
In summary:
Claims
Rejected
35
U.S.C. §
Reference(s)/Basis  Affirmed Reversed
1–4, 6, 7,
11, 44–46
112 2nd paragraph,
indefiniteness 
1–4, 6, 7,
11, 44–46
4, 45, 46 112 4th paragraph,
improper dependent
form
4, 45, 46
1–4, 6, 7,
11, 44–46
103(a) Paeschke, Ames
Paquin
1–4, 6, 7,
11, 44–46
Overall
Outcome
1–4, 6, 7,
11, 44–46
REVERSED