Tropicana Products, Inc.

Patent Trials and Appeals Board

Jun 2, 2020

2019004362 (P.T.A.B. Jun. 2, 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.
15/247,411 08/25/2016 Khushal BRIJWANI 2189-292720 9838
23644 7590 06/02/2020
Barnes & Thornburg LLP (CH)
P.O. Box 2786
Chicago, IL 60690-2786
EXAMINER
BADR, HAMID R
ART UNIT PAPER NUMBER
1791
NOTIFICATION DATE DELIVERY MODE
06/02/2020 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):
Patent-ch@btlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KHUSHAL BRIJWANI, STEVEN E. HAVLIK,
RACHEL L. JORDAN, JOHN SCHUETTE, JIN-E SHIN, and
BRIAN SONG
Appeal 2019-004362
Application 15/247,411
Technology Center 1700
Before KAREN M. HASTINGS, JAMES C. HOUSEL, and
MICHELLE N. ANKENBRAND, 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, under 35 U.S.C. § 103, claims 1–28 as
unpatentable over Paeschke (US 2012/0135109 A1, pub. May 31, 2012), and
claims 7 and 13–15 as unpatentable over Paeschke in view of Gusek (US

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Tropicana
Products, Inc. Appeal Brief (“Appeal Br.”) filed December 12, 2018, at 2.
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2013/0123374 A1, pub. May 16, 2013). We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER2
The invention relates to beverage and food products containing
enzymatically-treated high fiber fruit and vegetable materials, such as
pomace.3 Spec. ¶ 2. Appellant discloses that these beverage products exhibit
a significantly reduced viscosity when compared to beverage products
containing high fiber fruit and vegetable materials that have not been
enzymatically treated. Id. In addition, Appellant discloses that the fiber
content of the high fiber fruit and vegetable materials remains the same
before and after enzymatic treatment. Id.
Claim 1, reproduced below from the Claims Appendix to the Appeal
Brief, is illustrative of the claimed subject matter. The limitation at issue is
italicized.
1. A beverage product comprising:
liquid; and
about 1–40 wt% enzymatically-treated pomace, wherein
the enzymatically-treated pomace is derived from pomace

2 This Decision also refers to the Specification (“Spec.”) filed August 25,
2016, the Examiner’s Answer (“Ans.”) dated March 21, 2019, and the Reply
Brief (“Reply Br.”) filed May 14, 2019.
3 Appellant discloses that “pomace” refers to by-products remaining after
fruit or vegetable juice pressing processes, wine crush operations, puree and
concentrate operations, canning processes, and other food manufacturing
processes. Spec. ¶ 16. Appellant further discloses that “pomace includes all
by-products from fruit and vegetable juice, paste, puree and canning
processes.” Id. ¶ 17.
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selected from a group consisting of at least one fruit, at least
one vegetable, and combinations thereof; and
wherein the enzymatically-treated pomace comprises an
amount of fiber that is the same before and after enzymatic
treatment.
Independent claim 16 recites a food product similarly including about
1–40 wt% enzymatically-treated pomace, wherein the enzymatically-treated
pomace comprises an amount of fiber that is the same before and after
enzymatic treatment. Appeal Br. 14 (Claims App’x).
Independent claim 18 recites a method of enzymatically treating
pomace, wherein a fiber content of the pomace is the same before and after
enzyme treatment. Id. at 15 (Claims App’x).
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 the
argued claims and each of Appellant’s arguments, we are not persuaded of
reversible error in the appealed rejections.
Rejection 1: Obviousness over Paeschke
The Examiner rejects claims 1–28 under 35 U.S.C. § 103 as
unpatentable over Paeschke. Ans. 3–6. The Examiner finds that Paeschke
discloses beverage and food products containing enzymatically-treated
pomace. Id. at 3–4. The Examiner further finds that the claims are directed
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to products, and that the recitation that the amount of fiber is the same before
and after enzymatic treatment is a process limitation. Id. at 4. As such, the
Examiner treats the claims as product-by-process claims. Id. The Examiner
notes that if a product in a product-by-process is the same as or obvious
from a product of the prior art, the claim is unpatentable even though made
by a different process. Id. (citing In re Thorpe, 777 F.2d 695, 698 (Fed. Cir.
1985)). In this regard, the Examiner finds that Appellant has not established
that the amount of fiber in Paeschke’s products differs from the amount of
fiber in the claimed products. Ans. 5. In addition, the Examiner determines
that the amount of fiber in Paeschke depends on the extent of enzymatic
hydrolysis and, therefore, concludes that it would have been obvious to
adjust the enzymatic hydrolysis to provide partial or complete hydrolysis. Id.
at 5–6.
Appellant argues that Paeschke fails to disclose a beverage
comprising an enzymatically treated pomace, wherein the enzymatically-
treated pomace comprises an amount of fiber that is the same before and
after enzymatic treatment. Appeal Br. 6. In particular, Appellant contends
that Paeschke’s beverage does not comprise an amount of fiber that is the
same before and after enzymatic treatment because Paeschke includes a
filtration step or steps that remove larger, insoluble fiber from a desired
molecular weight fraction of fiber in the permeate. Id. at 6–7. Appellant
asserts that fully hydrolyzing pomace fiber would increase sugar content at
the expense of fiber content, thereby reducing the amount of fiber. Id. at 7.
These arguments are not persuasive of reversible error because
Appellant’s claims do not exclude a filtration step, regardless of whether
such a step reduces the amount of fiber in the enzymatically-treated pomace
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used to make the beverage. Specifically, claim 1 recites that “the
enzymatically-treated pomace comprises an amount of fiber that is the same
before and after enzymatic treatment.” This recitation limits the amount of
fiber being constant solely to the enzymatic treatment step, and does not
exclude a subsequent filtration step. There is no dispute that Paeschke
teaches an enzymatic treatment step that is the same as or similar to
Appellant’s disclosed enzymatic treatment step. Thus, Paeschke’s pomace
comprises an amount of fiber that is the same before and after enzymatic
treatment, even though Paeschke may remove some insoluble fiber by
subsequent filtration.
Notwithstanding the above, we further note that Paeschke teaches an
intermediate product comprising liquid and enzymatically-treated pomace
prior to filtration that is the same as or substantially similar to the beverage
product of claim 1. We find no structural, functional, or process distinction
between Paeschke’s product stream (i.e., between steps 140 and 150 of the
processes of Figures 1a and 1b) and Appellant’s beverage product of claim
1.
Moreover, with regard to the Examiner’s finding that there is no
difference between Paeschke’s beverage product and Appellant’s claim 1
beverage product, we note that Appellant fails to present any objective
evidence that the amount of fiber in the beverage product of claim 1 is
necessarily different from Paeschke’s. Indeed, as the Examiner finds, the
amount of fiber in Paeschke’s beverage product may be varied to provide
any desired amount of fiber and viscosity. Appellant fails to dispute or
otherwise address this finding.
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In addition, the Examiner finds that it would have been obvious to
extend Paeschke’s enzymatic hydrolysis in order to convert more insoluble
fiber to lower molecular weight soluble fiber. Ans. 5–6. Although Appellant
asserts that fully hydrolyzing pomace fiber would increase sugar content at
the expense of fiber content, Appellant fails to direct our attention to any
objective evidence that Paeschke’s enzymatic hydrolysis would reduce fiber
content.4 To the contrary, Paeschke teaches that such enzymatic treatment
converts high molecular weight, insoluble fiber to low molecular weight and
prebiotic soluble fiber. Paeschke ¶¶ 43, 44. We also note that Paeschke
teaches use of the same enzymes, including pectinase, cellulase, and
hemicellulase, that Appellant discloses to be capable of reducing fiber chain
length without releasing sugars. Compare Spec. ¶ 20, with Paeschke ¶ 43.
Thus, contrary to Appellant’s assertion, an ordinary artisan would not have
expected any reduction in fiber content, nor an increase in sugar content in
Paeschke’s enzymatic treatment.
Accordingly, for the reasons given in the Examiner’s Answer and
above, we sustain the Examiner’s obviousness rejection of claim 1. Because
Appellant argues claim 1 as representative of the claims and does not argue

4 To the extent that Appellant might rely on Specification paragraph 25,
Table 1, we note that the amount of dietary fiber without enzymatic
treatment is 3.5 wt% whereas, after enzymatic treatment, the amount of
dietary fiber varies between 2.9–3.1 wt%. Appellant does not disclose the
enzyme nor the conditions used in each of enzyme treatments 1–3. Thus, at
best Table 1 is not probative of Appellant’s assertion, and at worst
establishes that the amount of fiber pre- and post-enzymatic treatment may
be different by more than 17 wt%. Appellant’s explanation in the Reply
Brief (Reply Br. 3) that the difference is attributable to natural variation
between samples and inherent fiber testing analytical variability lacks any
support in the record.
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claims 2–28 separately (Appeal Br. 6), we likewise sustain the Examiner’s
obviousness rejection of claims 2–28.
Rejection 2: Obviousness over Paeschke and Gusek
The Examiner rejects claims 7 and 13–15 under 35 U.S.C. § 103 as
unpatentable over Paeschke in view of Gusek. Ans. 6–7. The Examiner finds
that Paeschke fails to teach the inclusion of viscosity building materials
and/or dairy products in comestible products, as the claims require. Id. at 7.
For these features, the Examiner finds that Gusek teaches modified citrus
fiber may be used as a viscosity building material for products including
beverages, such as dairy drinks, wherein an enzyme such as pectinase,
cellulase, and hemicellulase may enzymatically treat the citrus fiber. Id. The
Examiner also finds that Gusek teaches that this fiber may be blended with
other vegetable or grain fibers, including oat fiber, which has the ability to
increase viscosity of beverages. Id. The Examiner concludes that it would
have been obvious to modify Paeschke’s beverage by including viscosity
building materials and/or dairy products as taught in Gusek with a
reasonable expectation of success. Id.
Appellant argues that Paeschke teaches away from including Gusek’s
viscosity building material because doing so would render Paeschke’s
beverage unsuitable for its intended purpose. Appeal Br. 8. Appellant
contends that Paeschke teaches an advantage of the enzymatically-treated
fiber material is that it may be added to a comestible product without a
concomitant significant increase in viscosity. Id. Because adding Gusek’s
modified citrus fiber to Paeschke’s beverage would increase the beverage’s
viscosity, Appellant urges that doing so is contradictory to Paeschke’s
teaching. Id. Appellant also contends that Paeschke teaches another
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advantage of the enzymatically-treated fiber material is that it was not made
by a chemical modification process. Id. at 9. Because Gusek’s modified
citrus fiber was made in a process including solvent extraction, Appellant
urges that adding Gusek’s modified citrus fiber to Paeschke’s beverage is
contradictory to Paeschke’s teaching. Id.
Appellant’s arguments are not persuasive of reversible error because,
as the Examiner responds (Ans. 12–15), Paeschke does not teach away from
the inclusion of Gusek’s modified citrus fiber as a viscosity building
material. Although Paeschke does teach that the enzymatically-treated
pomace does not significantly increase viscosity of the beverage to which it
is added, the Examiner finds, without dispute, that nowhere does Paeschke
teach that viscosity building materials may not also be included. Id. at 12–
13. Appellant fails to show that Paeschke criticizes, discredits, or otherwise
discourages the use of viscosity building materials, apart from the
enzymatically-treated pomace fiber product, for producing a beverage. In re
Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994) (“A reference may be said to
teach away when a person of ordinary skill, upon reading the reference,
would be discouraged from following the path set out in the reference, or
would be led in a direction divergent from the path that was taken by the
applicant.”); DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d
1314, 1327 (Fed. Cir. 2009) (citing In re Fulton, 391 F.3d 1195, 1201 (Fed.
Cir. 2004)) (“A reference does not teach away, however, if it merely
expresses a general preference for an alternative invention but does not
‘criticize, discredit, or otherwise discourage’ investigation into the invention
claimed.”).
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In addition, the Examiner finds, without dispute, that Gusek’s solvent
extraction is not a chemical modification of the fiber. Ans. 14. In any event,
the Examiner relies on Gusek to teach the function of viscosity building
materials in beverages, wherein a viscosity building material may be
desirable when a lower fiber content is desired. Id. at 15. The Examiner also
finds that Paeschke teaches that materials for modifying the taste, mouthfeel,
and nutritional characteristics may be added, including oat fiber. Id.
Appellant fails to dispute or otherwise address the Examiner’s response,
including these additional findings.
Further, even if Gusek’s teaching is contrary to Paeschke’s teaching
that two advantages of the enzymatically-treated pomace fiber are that the
product does not significantly increase the viscosity of beverages and the
product is all-natural, one of ordinary skill in the art still would have found
the claimed subject matter obvious over the combination of Paeschke and
Gusek. As indicated above, the Examiner finds that Paeschke teaches that
materials for modifying the taste, mouthfeel, and nutritional characteristics
may be added. Our reviewing court has recognized that a given course of
action often has simultaneous advantages and disadvantages, and this does
not necessarily obviate any or all reasons to combine teachings, much less
constitute teaching away from the combination. See Winner Int’l Royalty
Corp. v. Wang, 202 F.3d 1340, 1349 n. 8 (Fed. Cir. 2000) (“The fact that the
motivating benefit comes at the expense of another benefit, however, should
not nullify its use as a basis to modify the disclosure of one reference with
the teachings of another. Instead, the benefits, both lost and gained, should
be weighed against one another.”).
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Accordingly, for the reasons given in the Examiner’s Answer and
above, we sustain the Examiner’s obviousness rejection of claim 7. Because
Appellant argues claim 1 as representative of the claims subject to this
rejection and does not argue claims 13–15 separately (Appeal Br. 8), we
likewise sustain the Examiner’s obviousness rejection of claims 13–15.
CONCLUSION
The Examiner’s decision to reject, under 35 U.S.C. §103, claims 1–28
as unpatentable over Paeschke and claims 7 and 13–15 as unpatentable over
Paeschke in view of Gusek, is affirmed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–28 103 Paeschke 1–28
7, 13–15 103 Paeschke, Gusek 7, 13–15
Overall
Outcome
1–28

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