Zhonghua Jia et al.

Patent Trials and Appeals Board

Aug 21, 2019

14352223 - (D) (P.T.A.B. Aug. 21, 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.
14/352,223 04/16/2014 Zhonghua Jia GIV.P30532 8375
23575 7590 08/21/2019
CURATOLO SIDOTI CO., LPA
24500 CENTER RIDGE ROAD, SUITE 280
CLEVELAND, OH 44145
EXAMINER
WONG, LESLIE A
ART UNIT PAPER NUMBER
1793
NOTIFICATION DATE DELIVERY MODE
08/21/2019 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):
docket@patentandtm.com
pair@patentandtm.com
sidoti@patentandtm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ZHONGHUA JIA,
XIAOGEN YANG, ESTHER VAN OMMEREN, JENIFER AUGELLI,
ADAM MOYLE, AND KIMBERLEY GRAY
____________

Appeal 2018-008521
Application 14/352,223
Technology Center 1700
____________

Before MICHAEL P. COLAIANNI, N. WHITNEY WILSON, and
MERRELL C. CASHION, JR., Administrative Patent Judges.

CASHION, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision to finally reject claims 20–40. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM and designate our affirmance as a NEW GROUND OF
REJECTION pursuant to 37 CFR 41.50(b) because our decision is based on
reasoning that differs from the reasoning advanced by the Examiner.

1 Givaudan S.A., Vernier is the Applicant/Appellant and identified as the
real party in interest. App. Br. 3.
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The invention is generally directed to a sweetness enhancing
composition and an orally consumable composition containing the
composition. Spec. 1. Claim 20 is illustrative of the subject matter claimed
and is reproduced below:
20. A mixture consisting essentially of individual pure
stevioside and pure rebaudioside A ingredients with an admixed
ratio of stevioside to rebaudioside A of about 2:1 to about 4:1,
wherein said stevioside has a purity of greater than 80%,
wherein said rebaudioside A has a purity of greater than 80%,
and wherein said mixture has a sweetness that is greater than
the same concentration of pure rebaudioside A alone.
Appellant requests review of the Examiner’s decision to finally
reject claims 20–40 under pre-AIA 35 U.S.C. § 103(a) as unpatentable
over Abelyan (US 2010/0112171 A1, published May 6, 2010),
Schiffman (S. S. Schiffman et al., “Investigation of Synergism In
Binary Mixtures of Sweeteners,” XP-002428872, Brain Research
Bulletin, 1995, Vol. 38, No. 2, pp. 105–120, Elsevier Science Ltd.,
USA.), Goto (Goto et al., “Influence of the Solubility Rebaudioside A
and Stevioside,” Cienc Tecnologies. Aliment. vol. 18 no. 1 Campinas
Jan./Apr. 1998 (http:1/dx.doi .org/10.1590/SO101-
20611998000100002)), Hazen (Hazen, Sweet Options, Food Product
Design, Vol. 21 No. 2 February 2011, pages 1–7), and Prepared Foods
(Sweet Combinations, Prepared Foods, October 1, 2006). App. Br. 7;
Final Act. 2.
Appellant presents arguments only for claims 20, 21, 28, 29, 35,
and 40. Appellant does not present separate arguments for claims 23–
27, 30–34, and 39–39. We select independent claim 20 as
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representative of the subject matter claimed. Claims 23–27, 30–34,
and 39–39 stand or fall with claim 20. We address claims 21, 28, 29,
35, and 40 separately.

OPINION
After review of the respective positions provided by Appellant and the
Examiner, we AFFIRM the Examiner’s rejection of claims 20–40 under 35
U.S.C. § 103)(a). Because our decision is based on further reasons than
those advanced by the Examiner, we denominate this affirmed rejection as a
NEW GROUND OF REJECTION pursuant to 37 C.F.R. § 41.50(b).
Claim 20
The Examiner finds that the combined teachings of Abelyan and
Schiffman suggest a mixture consisting essentially of the individual
ingredients stevioside and rebaudioside A in a stevioside to rebaudioside A
ratio of about 2.6:1, which overlaps the claimed ratio for those ingredients of
1:1 to about 4:1, and having a purity for each component that overlaps the
respective claimed purity ranges of greater than 80%. Final Act. 2–3. The
Examiner relies on Goto and Hazen to establish that rebaudioside A is
known to be powerfully synergistic with many other sweeteners. Final Act
3; see Hazen 6. The Examiner determines that it would have been obvious
to a person of ordinary skill in the art that the sweetener mixture from the
combined teachings of Abelyan and Schiffman would have been reasonably
expected to be sweeter than the individual components in view of
rebaudioside A’s synergistic capability. Final Act. 4.

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We have considered Appellants arguments on pages 8–11 and 17–19
of the Appeal Brief but are unpersuaded of reversible error in the
Examiner’s determination of obviousness. We note that Appellant does not
dispute the Examiner’s finding that Schiffman teaches a stevioside to
rebaudioside A ratio of about 2.6:1. Final Act. 3; see generally App. and
Reply Briefs.2 Therefore, Appellant does not contest that Schiffman’s ratio
falls within Appellant’s claimed ratio of stevioside to rebaudioside A of
about 2:1 to about 4:1. Thus, the combined teachings of the cited art
establish a prima facie case of obviousness. See In re Peterson, 315 F.3d
1325, 1329 (Fed. Cir. 2003) (“In cases involving overlapping ranges, we and
our predecessor court have consistently held that even a slight overlap in
range establishes a prima facie case of obviousness.”); see In re Harris, 409
F.3d 1339, 1341 (Fed. Cir. 2005) (quoting In re Peterson, 315 F.3d at 1330).
In such a case, the burden is on Appellant to rebut prima facie obviousness
by showing evidence of unexpected properties at the claimed range relative
to the prior art range. See In re Geisler, 116 F.3d 1465, 1469, 1470 (Fed.
Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990).
Appellant directs our attention to Example 2 in the Specification as
showing unexpected results. App. Br. 12; see Spec. 16.
Example 2 compares the upfront sweetness of stevioside/rebaudioside
A (3:1) and (2:1) with the upfront sweetness of stevioside and rebaudioside
A through a sensory evaluation carried out with 5 experienced tasters. Spec.

2 We also note that Schiffman suggests a ratio of stevioside/rebaudioside A
of 2.0:1 and 2.1:1, based on the concentrations disclosed on Table 3, that
also fall within the claimed ratio of stevioside/rebaudioside A. Schiffman
106.
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16. The samples tested were 30 ppm of stevioside/rebaudioside A (3:1),
(2:1), and rebaudioside A on top of 5% sucrose solution. These samples
were prepared along with 20, 35, 45, 75 ppm stevioside in 5% sucrose
solutions. Id. The results ranked the tested samples as follows from most
upfront sweetness to less: (1) stevioside/rebaudioside A (3:1); (2)
stevioside/rebaudioside A (2:1); (3) rebaudioside A; (4) steviosides. Id.
According to Appellant, Example 2 demonstrates that the present claims are
non-obvious as one having skill in the art would not contemplate adding
more of the less potent sweetener stevioside to the more potent sweetener
rebaudioside A and expect the mixture to be sweeter than pure rebaudioside
A alone. App. Br. 12.
The burden of establishing unexpected results rests on the Appellant.
Appellant may meet this burden by establishing that the difference between
the claimed invention and the closest prior art was an unexpected difference.
See In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). The unexpected
results must be established by factual evidence; attorney statements are
insufficient to establish unexpected results. See In re Geisler, 116 F.3d
1465, 1470–71 (Fed. Cir. 1997). Further, a showing of unexpected results
supported by factual evidence must be reasonably commensurate in scope
with the degree of protection sought by the claims on appeal. In re
Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983); In re Clemens, 622 F.2d
1029, 1035 (CCPA 1980).
First, it is not clear that Appellant has compared the claimed invention
against the closest prior art (Schiffman). Further, the Specification describes
the upfront sweetness as a desired property. Spec. 16. Moreover, Appellant
does not explain how the upfront sweetness property relates to the claimed
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sweetness property. Also, Appellant has not explained adequately why the
stevioside/rebaudioside A (3:1) and the stevioside/rebaudioside A (2:1)
samples are representative of the broad scope of sweetener mixtures
claimed. Thus, on this record, Appellant has not adequately explained why
the evidence relied upon would have been unexpected by one of ordinary
skill in the art or is reasonably commensurate in the scope with the claims.
Appellant also argues that Schiffman shows the binary combination of
stevioside and rebaudioside A investigated does not result in synergism.
App. Br. 13. Appellant directs attention to Tables 3–5 where Schiffman
concludes that binary combinations of stevioside and rebaudioside A at
different sucrose levels were found to be additive or suppressive.3 Id. at 13–
15. That is, Appellant contends that Schiffman, even at a
stevioside/rebaudioside A ratio of 2.6:1 (which falls within the claimed ratio
range), does not result in the synergism claimed. Id. at 16.
We are unpersuaded by these arguments as well. Given that the prior
art ratio falls within the claimed ratio range, one skilled in the art would
have reasonably expected that a sweetener from the combined teachings of
Abelyan and Schiffman to have the same sweetening property of the claimed
mixture. Appellant has not explained why Appellant’s sweetener mixture
has a different sweetening property given that the prior art
stevioside/rebaudioside A ratio and component purities are encompassed by
the claimed range of ratios for the respective features. Appellant has not
explained what is being done differently in making the claimed sweetener
mixture that results in the unexpectedly superior sweetening property.

3 See Schiffman 105 (second column) for a discussion of additive and
suppressive properties.
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Claims 21 and 40
Claim 21 recites a stevioside to rebaudioside A ratio of about 2:1 to
about 3:1 that is met by Schiffman’s stevioside to rebaudioside A ratio of
2.6:1 for the reasons discussed above.
Claim 40 recites a stevioside to rebaudioside A ratio of about 3:1.
Appellant argues that there is also no disclosure or suggestion in the
cited references to use a sweetener mixture having a stevioside to
rebaudioside A ratio of 3:1. App. Br. 20.
Appellant’s argument is unavailing because Appellant has not shown
any criticality for the claimed ratio of 3:1 as compared to, for example,
2.6:1. Further, Goto discloses that the ratio of stevioside to rebaudioside A
can be adjusted to achieve a particularly desired effect. See Goto §§ 3.1
(Table 3- solubility), 3.3 (Table 4- taste). In view of this disclosure,
Appellant has not explained sufficiently why one skilled in the art, using no
more than ordinary creativity, would not have been capable of modifying the
prior art’s stevioside to rebaudioside A ratio to achieve a desired sweetness
effect. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) (“A
person of ordinary skill is also a person of ordinary creativity, not an
automaton.”); see also In re Sovish, 769 F.2d 738, 743 (Fed. Cir. 1985)
(presuming skill on the part of one of ordinary skill in the art).
Claims 28, 29, and 35
Claims 28 and 29 recite mixtures that are respectively iso-sweet with
1.25% sucrose solution and with 1% sucrose solution. Claim 35 recites that
the mixture is at a concentration at which it is at or near its sweetness
detection threshold.
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With respect to claims 28 and 29, Appellant argues that there is also
no disclosure or suggestion in the cited references to use a sweetener
mixture that is iso-sweet with 1.25% and 1% sucrose solutions. App. Br. 20.
Regarding claim 35, Appellant argues that there is also no disclosure or
suggestion in the cited references to use a sweetener mixture in a
consumable composition at or near its sweetness detection threshold level, a
concentration at which the mixture is not perceived as sweet. Id.
We are unpersuaded of error in the Examiner’s determination of
obviousness.
We note that the Specification describes that “[t]he sweetness
detection threshold may not be absolute for the mixture, and may depend on
the presence of other ingredients that may be present in a composition
containing said mixture, or on other stimuli that a consumer experiences
during consumption of the mixture.” Spec. 4. The term “iso-sweet” is also
used in the Specification to define a certain level of sweetness. Id. 5.
Therefore, like claims 21 and 40, the limitations of claims 28, 29, and 35 are
directed to obtaining a desired level of sweetness.
As we indicated above, Appellant has not explained sufficiently why
one skilled in the art, using no more than ordinary creativity, would not have
been capable of modifying the prior art’s mixture to achieve a desired
sweetness level.
Accordingly, we affirm the Examiner’s prior art rejection of claims
20–40.

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DECISION
The Examiner’s rejection of claims 20–40 under 35 U.S.C.
§ 103(a) is affirmed.

TIME PERIOD FOR RESPONSE
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
Section 41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the prosecution will be
remanded to the examiner. The new ground of rejection is
binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the opinion
of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the
claims, appellant may again appeal to the Board pursuant to this
subpart.
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.

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Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED
NEW GROUND OF REJECTION (37 C.F.R. § 41.50(b))