Ex Parte Bell et al

Patent Trials and Appeals Board

Sep 26, 2013

12334937 - (D) (P.T.A.B. Sep. 26, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
12/334,937 12/15/2008 Zena Bell 006943.04310 9155
66811 7590 09/26/2013
BANNER & WITCOFF, LTD.
and ATTORNEYS FOR CLIENT NO. 006943
10 SOUTH WACKER DR.
SUITE 3000
CHICAGO, IL 60606
EXAMINER
WATTS, JENNA A
ART UNIT PAPER NUMBER
1791
MAIL DATE DELIVERY MODE
09/26/2013 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ZENA BELL, THOMAS LEE.
and LARISSA GOBLE
____________

Appeal 2012-009095
Application 12/334,937
Technology Center 1700
____________

Before EDWARD C. KIMLIN, BRADLEY R. GARRIS, and
BEVERLY A. FRANKLIN, Administrative Patent Judges.

KIMLIN, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal from the final rejection of claims 1-26. We have
jurisdiction under 35 U.S.C. § 6(b). Claim 1 is illustrative:
1. A beverage product comprising:
water;
a non-sweetening amount of monatin, wherein
the non-sweetening amount of monatin in the beverage product
is in the range of greater than zero and less than 3.0 ppm, and
the non-sweetening amount of monatin in the beverage product
is effective as a taste modifier; and
an additional beverage product ingredient comprising at least one of:
Appeal 2012-009095
Application 12/334,937

2
a sweetening amount of a sweetener other than monatin comprising at
least one of a potent natural sweetener other than monatin, a potent artificial
sweetener, a nutritive natural sweetener, a non-nutritive natural sweetener
other than monatin,

and a mixture of any of them;
a flavorant;
a colorant;
an acidulant;
a vitamin;
a mineral;
and a mixture of any of them.

The Examiner relies upon the following references as evidence of
obviousness:
Abraham et al. (Abraham) US 2005/0106305 A1 May 19, 2005
Chang et al. (Chang) US 2002/0102331 A1 Aug. 1, 2002

Appellants' claimed invention is directed to a beverage product
comprising the known sweetener, monatin, in a so-called non-sweetening
amount of greater than 0 and less than 3.0 ppm. According to Appellants,
while monatin in the claimed concentration does not increase the sweetness
of the beverage product, it does modify the taste of the beverage by causing
an increase in a desirable taste characteristic, such as accentuation of flavor
impact, improvement of sweetness temporal effect, etc. (see Prin. Br. 7, first
para.).
Appealed claims 1-5, 7-24, and 26 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Abraham. Appealed claims 6 and 25
stand rejected under 35 U.S.C. §103(a) as being unpatentable over Abraham
in view of Chang.
Appeal 2012-009095
Application 12/334,937

3
Appellants do not present separate arguments for any particular claim
on appeal. Nor do Appellants present a separate, substantive argument
against the Examiner's separate § 103 rejection of claims 6 and 25.
Accordingly, all the appealed claims stand or fall together with claim 1.
We have thoroughly reviewed each of Appellants' arguments for
patentability. However, we are in complete agreement with the Examiner
that the claimed subject matter would have been obvious to one of ordinary
skill in the art within the meaning of §103 in view of the applied prior art.
Accordingly, we will sustain the Examiner's rejections for the reasons set
forth in the Answer, which we incorporate herein, and we add the following
for emphasis only.
There is no dispute that Abraham discloses a beverage product
comprising the claimed components, including monatin, in a concentration
range that includes about 3 ppm as a lower limit ([0032]). Accordingly,
since Abraham expressly discloses that a beverage product may comprise
monatin in an amount of about 3 ppm, we find no error in the Examiner's
legal conclusion that it would have been obvious for one of ordinary skill in
the art to formulate a beverage product, as presently claimed, which
comprises monatin in an amount of less than 3 ppm.
The principal argument advanced by Appellants is that Abraham
teaches the use of monatin in a sweetening amount, not in the claimed non-
sweetening amount. Appellants urge that "the teaching of the art of record
to use a sweetening amount of monatin could not possibly teach or suggest
that there are beverage formulations in which monatin can be usefully
included in a non-sweetening amount" (Prin. Br. 14, last para.). Appellants
Appeal 2012-009095
Application 12/334,937

4
emphasize that Abraham "teaches only use of a sweetening amount of
monatin" (Prin. Br. 15, second para.).
We, like the Examiner, are not persuaded by Appellants' argument.
Since Abraham teaches or would have suggested a beverage product
comprising monatin in a concentration of less than 3 ppm, we agree with the
Examiner that the reference beverage would necessarily exhibit the same
degree of sweetness as beverage products within the scope of the appealed
claims comprising less than 3 ppm of monatin, e.g., 2.95 ppm. A beverage
product comprising 2.95 ppm of monatin will possess a specific level of
taste whether it be characterized as sweet or non-sweet. Just as a rose by
any other name is still a rose, a beverage product comprising less than (i.e.,
about) 3 ppm of monatin has the same characteristics or properties whether
it be labeled a sweetened or non-sweetened beverage. Also, if Appellants'
2.95 ppm of monatin can be fairly considered a non-sweetening amount, it
logically follows that the 2.95 amount of monatin fairly taught or suggested
by Abraham can likewise be considered a non-sweetening amount.
We also agree with the Examiner that Abraham teaches that monatin
may be used as a non-sweetener as a taste modifier with other known
sweeteners to suppress after taste, enhance other flavors such as lemon, or to
improve the temporal flavor profile ([0123]).
As a final point, we note that Appellants base no argument upon
objective evidence of nonobviousness, such as unexpected results.
Appellants have proffered no objective evidence which demonstrates that
concentrations of monatin, e.g., as small as 2.95 ppm, do not possess a
sweetening property. Nor have Appellants established that concentrations of
Appeal 2012-009095
Application 12/334,937

5
monatin only slightly greater than 0, e.g., 0.5 ppm, cause an increase in a
desirable taste characteristic of a beverage product, such as accentuation of
flavor impact, flavor enhancement, improvement of sweetness temporal
effect, addition of quick sweetness onset, and/or improved mouthfeel. It is
well settled that counsel's arguments in the Brief cannot take the place of
objective evidence.
In conclusion, based on the foregoing and the reasons well stated by
the Examiner, the Examiner’s decision rejecting the appealed claims is
affirmed.
The decision of the Examiner is affirmed.
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

cam