William Mutilangi et al.

Patent Trials and Appeals Board

Jul 6, 2020

2019002300 (P.T.A.B. Jul. 6, 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.
14/627,075 02/20/2015 William Mutilangi 3711.2680000 9752
134769 7590 07/06/2020
Sterne, Kessler, Goldstein & Fox P.L.L.C.
1100 New York Avenue, N.W.
Washington, DC 20005
EXAMINER
DICUS, TAMRA
ART UNIT PAPER NUMBER
1791
NOTIFICATION DATE DELIVERY MODE
07/06/2020 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):
ajgardel@sternekessler.com>
e-office@sternekessler.com
tdurkin@sternekessler.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte WILLIAM MUTILANGI and NAIJIE ZHANG1
____________

Appeal 2019-002300
Application 14/627,075
Technology Center 1700
____________

Before KAREN M. HASTINGS, CHRISTOPHER C. KENNEDY, and
BRIAN D. RANGE, Administrative Patent Judges.

KENNEDY, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 12–18, 21, and 25. We have jurisdiction under
35 U.S.C. § 6(b). We REVERSE.
BACKGROUND
The subject matter on appeal relates to methods of preparing beverage
syrup, such as syrup used in fountain beverages. E.g., Spec. ¶ 1; Claim 12.
Claim 12 is reproduced below from page 16 (Claims Appendix) of the
Appeal Brief (one paragraph break added):

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. The Appellant identifies the real party in interest as
PepsiCo, Inc. Appeal Br. 3.
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12. A method of preparing a beverage syrup comprising combining:
water;
at least one ingredient selected from the group consisting of
sweeteners and flavorants; and
a sorbate solid dispersion
to form a beverage syrup;
wherein the sorbate solid dispersion comprises a sorbate salt
dispersed in a stabilizing carrier.
REJECTIONS ON APPEAL
The claims stand rejected under 35 U.S.C. § 103 as follows:
1. Claims 12–18, 21, and 25 over Tan (CA 2 827 889 A1, published
Nov. 15, 2012)2;
2. Claims 14 and 15 over Tan and Grenville (US 2007/0054026 A1,
published Mar. 8, 2007);
3. Claims 16–21 and 25 over Tan and Given (US 2012/0219681 A1,
published Aug. 30, 2012);
4. Claims 12–18, 21, and 25 over Given and Montezinos (US
5,792,502, issued Aug. 11, 1998).
ANALYSIS
Claim 12 requires, inter alia, the use of a “sorbate solid dispersion
[that] comprises a sorbate salt dispersed in a stabilizing carrier.” All other
claims on appeal depend from claim 12.
At the outset, we observe that the Examiner and the Appellant appear
to be interpreting the term “sorbate solid dispersion” in different ways. The

2 The Examiner’s citations are to the corresponding WIPO publication,
WO 2012/154245 A1.
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Examiner appears to be reading the term with an emphasis on “sorbate
solid” (“sorbate solid dispersion”) with the understanding that, for example,
a sorbate salt constitutes a “sorbate solid,” and that a sorbate salt that
precipitates as a solid out of a liquid solution may fall within the scope of the
term “sorbate solid dispersion” because it is a liquid dispersion comprising a
sorbate solid, i.e., a sorbate salt precipitate. See Ans. 3–8, 17.
The Appellant, on the other hand, appears to be reading the term with
an emphasis on “solid dispersion” (“sorbate solid dispersion”) with the
understanding that the dispersion itself must be a solid to fall within the
scope of the term. See, e.g., Appeal Br. 10 (“A ‘sorbate solid dispersion,’ is
a solid material comprising sorbate dispersed in a stabilizing carrier, i.e. one
solid dispersed in another solid.”). Under that interpretation, a liquid
dispersion comprising a sorbate salt that has precipitated out of the liquid as
a sorbate solid would not fall within the scope of the term “sorbate solid
dispersion” because the dispersion itself is not “solid”; it is a liquid
dispersion comprising a solid sorbate salt precipitate. See id.
Even under the “broadest reasonable interpretation” standard that is
applicable to this proceeding, see In re ICON Health & Fitness, Inc., 496
F.3d 1374, 1379 (Fed. Cir. 2007)), we agree with the Appellant’s
interpretation of the term “sorbate solid dispersion.” Paragraph 24 of the
Specification includes the following disclosure: “It was discovered that
precipitation of sorbic acid in syrup during manufacture of the syrup and the
beverage can be avoided by dispersing sorbate or sorbate/sorbic acid
particles into an inert hydrophilic solid carrier matrix using a spray drying
process (solid dispersion).” Spec. ¶ 24 (emphasis added). The subsequent
paragraphs go on to provide a method of making a solid dispersion
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comprising adding sorbate and a carrier to water, and then spray-drying the
sorbate/carrier solution “to yield fine sorbate solid dispersion powder.” Id.
¶¶ 25–31. Thus, a primary goal of the inventors was to avoid “precipitation
of sorbic acid” by using a “solid dispersion” of “sorbate/sorbic acid
particles” and a “solid carrier matrix.” Id.
In view of the Specification as a whole, the Examiner’s interpretation
of the term “solid sorbate dispersion” as encompassing what the
Specification discloses as being avoided by the disclosed invention (i.e.,
precipitation of sorbic acid from a beverage syrup) is not a reasonable
interpretation of the disputed term, particularly given that every relevant
disclosure in the Specification concerning a “sorbate solid dispersion”
evinces that the dispersion itself must be solid. See generally Spec. The
Examiner has not identified any portion of the intrinsic record that indicates
that the term should be interpreted as encompassing liquid dispersions. See
generally Ans.
On the record before us, we conclude that the term “sorbate solid
dispersion” requires a “solid dispersion” and does not encompass liquid
dispersions. See Spec. ¶¶ 24–31. With that understanding of the disputed
term, we address the Examiner’s rejections.
Rejections 1–3
The Examiner finds that Tan teaches a method that uses a sorbate
solid dispersion. Ans. 3–8. Although not entirely clear from the Examiner’s
statement of the rejection, in the “Response to Argument” section of the
Examiner’s Answer, the Examiner clarifies that the Examiner finds that the
sorbic acid precipitate that would be present when practicing Tan’s method
constitutes the claimed “sorbate solid dispersion.” Id. at 17 (“A precipitate
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is a solid dispersion despite allegations to the contrary. There is no
difference noted to this point.”) (citing Tan ¶ 53). The Appellant disagrees.
See generally Appeal Br.
“[T]he examiner bears the initial burden, on review of the prior art or
on any other ground, of presenting a prima facie case of unpatentability.”
See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
The Examiner has not adequately shown that Tan’s sorbic acid
precipitate falls within the scope of the term “sorbate solid dispersion,” as
interpreted above. A liquid dispersion comprising a solid sorbate salt
precipitate, as apparently relied on by the Examiner, does not fall within the
scope of the disputed term, as discussed above.
Because all other claims subject to Rejections 1–3 depend from claim
12, and the Examiner’s analysis of those claims does not remedy the error
identified above, we likewise reverse the Examiner’s rejection of the
remaining claims subject to Rejections 1–3.
Rejection 4
Rejection 4 is based on a different primary reference (Given), but the
Examiner’s analysis again fails to adequately explain how the cited prior art
teaches or suggests the claimed “sorbate solid dispersion,” as properly
interpreted. The Examiner identifies a disclosure in Given of rebaudioside
A, which Given teaches may be used as a sweetener in a syrup. Given ¶ 27.
The Examiner identifies no disclosure in Given concerning combination of
rebaudioside A with a sorbate salt to form a “sorbate solid dispersion,” as
interpreted above. See Ans. 15. The Examiner does not adequately explain
how the disclosure of the use of rebaudioside A as a sweetener teaches or
suggests the claimed sorbate solid dispersion.
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In the Response to Argument section of the Answer, the Examiner
cites Given ¶ 38 as disclosing a “solid.” Ans. 19. Paragraph 38 of Given
states that “[s]orbate can be introduced in solid form.” However, absent
additional explanation from the Examiner, it is unclear how that statement
teaches or suggests the claimed “sorbate solid dispersion,” which, as
discussed above, is more than simply a sorbate in solid form.
The Examiner also describes Montezinos as disclosing a “sorbate-
carrier powder.” Ans. 15 (citing Montezinos at 6:10–55, 7:11). We do not
discern, however, a disclosure of a sorbate-carrier powder in the cited
portions of Montezinos. Column 7, line 11 merely discloses potassium
sorbate, which corresponds to the “sorbate salt” portion of the “sorbate solid
dispersion” of claim 12. Column 6 discloses the use of a polysaccharide as a
thickener in a beverage; it does not disclose combining polysaccharide with
a sorbate salt to form a powder or other solid dispersion. The Examiner does
not adequately explain how the disclosure of using a polysaccharide as a
thickener in a beverage falls within the scope of the term “sorbate solid
dispersion” of claim 12. As noted above, a liquid dispersion comprising a
solid sorbate salt precipitate, as apparently relied on by the Examiner, does
not fall within the scope of the disputed term.
Accordingly, we reverse the Examiner’s rejection of claim 12.
Because all other claims subject to Rejection 4 depend from claim 12, and
the Examiner’s analysis of those claims does not remedy the error identified
above, we likewise reverse the Examiner’s rejection of the remaining claims
subject to Rejection 4.
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CONCLUSION
In summary:
Claims
Rejected
35
U.S.C. § Reference(s) Affirmed Reversed
12–18, 21, 25 103(a) Tan 12–18, 21, 25
14, 15 103(a) Tan, Grenville 14, 15
16–21, 25 103(a) Tan, Given 16–21, 25
12–18, 21, 25 103(a) Given, Montezinos 12–18, 21, 25
Overall
Outcome 12–18, 21, 25
REVERSED