Ex Parte Bontenbal

Patent Trial and Appeal BoardAug 31, 2017

11723883 (P.T.A.B. Aug. 31, 2017)

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. 11/723,883 03/22/2007 Elize Willem Bontenbal 127576 7476 759025944 OLIFF PLC P.O. BOX 320850 ALEXANDRIA, VA 22320-4850 09/05/2017 EXAMINER BEKKER, KELLY JO ART UNIT PAPER NUMBER 1791 NOTIFICATION DATE DELIVERY MODE 09/05/2017 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): OfficeAction25944@oliff.com j armstrong @ oliff.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ELIZE WILLEM BONTENBAL Appeal 2016-003394 Application 11/723,883 Technology Center 1700 Before TERRY J. OWENS, ROMULO H. DELMENDO, and MICHAEL G. McMANUS, Administrative Patent Judges. McMANUS, Administrative Patent Judge. DECISION ON APPEAL The Examiner finally rejected claims 1, 4—6, and 10 of Application 11/723,883 under 35 U.S.C. § 103(a) as obvious. Final Act. (Oct. 27, 2014) 2-4. Appellant1 seeks reversal of these rejections pursuant to 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6. For the reasons set forth below, we AFFIRM-IN-PART. BACKGROUND The present application generally relates to confectionary products. Spec. 1. More specifically, it relates to an edible composition indicated to 1 Purac Biochem B.V. is identified as the real party in interest. Appeal Br. 1. Appeal 2016-003394 Application 11/723,883 be suitable for acid-sanding of confectionery products comprising a partially neutralized polycarboxylic acid and at least one of a sugar and sweetener. Abstract. Claim 1 is representative of the pending claims and is reproduced below: 1. A composition comprising: 1 to 45 wt % of a partially neutralized malic acid; and 5 to 99 wt % of at least one of a sugar and sweetener, wherein: the composition is a powder acid-sanding composition, the partially neutralized malic acid and the at least one of a sugar and sweetener are present in the composition as separate and individual particles, and a weight ratio of the at least one of a sugar and sweetener and the partially neutralized malic acid is 99:1 to 55:45. Appeal Br. (Claims App. A-l). REJECTIONS On appeal, the Examiner maintains the following rejections: 1. Claims 1, 4—6, and 10 are rejected under 35 U.S.C. § 103(a) as obvious over Corriveau et al. (US 2003/0026878 Al, pub. Feb. 6, 2003) (hereinafter “Corriveau”) in view of Igoe et al. (Dictionary of Food Ingredients, 3rd Edition, 1996) (hereinafter “Igoe”). Final Act. 2—3. 2. Claims 1 and 4—6 are additionally rejected under 35 U.S.C. § 103(a) as obvious over Shiao (WO 2006/0424792) (hereinafter “Shiao”) or in the alternative, over Shiao in view of Rogers (Helping the Medicine Go 2 The Examiner refers to US 2008/0286388 Al, pub. Nov. 20, 2008, as an English language equivalent to WO 2006/042479. Final Act. 3. 2 Appeal 2016-003394 Application 11/723,883 Down, The Candy Industry May 2001, pages 37-40) (hereinafter “Rogers”) and Hanke (WO 97/06695, pub. Feb. 27, 1997) (hereinafter “Hanke”). Id. at 3^4. DISCUSSION Rejection 1. The Examiner rejected claims 1, 4—6, and 10 as obvious over Corriveau in view of Igoe. Id. at 2—3. The Examiner finds that Corriveau teaches a powdered acid sanding composition comprising 50—99% of at least one sugar and about 0.001-5% of an acidulant including citric acid, malic acid, and the like. Final Act. 2. The Examiner finds that Corriveau does not, however, teach a partially neutralized acid as required by claim 1. Id. The Examiner further finds that Igoe teaches that sodium hydrogen malate is “a known acidulant.” Id. (citing Igoe 128). Additionally, the Examiner finds that it would have been obvious to a person of ordinary skill in the art “for the malic acid acidulant as taught by Corriveau to be sodium hydrogen malate as it was a known acidulant for use in foods.” Final Act. 2—3. The Examiner similarly finds as follows: Corriveau specifically teaches the use of malic acid acidulates and as Igoe shows that sodium hydrogen malate, which is a partially neutralized malic acid, was a known acidulant for foods, the use of sodium hydrogen malate is a clear suggestion of the prior art. To use a known type of the specific acidulant taught by the primary reference Corriveau would have been an obvious suggestion of the prior art. Answer 6. That is, the Examiner finds that the structural similarity of malic acid and sodium hydrogen malate, in conjunction with Corriveau’s teachings (138), would have led one of skill in the art to consider sodium hydrogen 3 Appeal 2016-003394 Application 11/723,883 malate as a known suitable acidulant for use in confection coatings of the sort taught by Corriveau. Appellant alleges that such rejection is erroneous as the Examiner has not stated a sufficient basis why a person of ordinary skill in the art would have combined the teachings of Corriveau and Igoe. Appeal Br. 7—13. Appellant further argues that the Examiner implicitly relies upon an “obvious to try” rationale without making the requisite factual findings in support thereof. An obviousness determination requires finding both “that a skilled artisan would have been motivated to combine the teachings of the prior art ... and that the skilled artisan would have had a reasonable expectation of success in doing so.” Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1367—68 (Fed. Cir. 2016). “[T]o have a reasonable expectation of success, one must be motivated to do more than merely to vary all parameters or try each of numerous possible choices until one possibly arrived at a successful result.” Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1365 (Fed. Cir. 2007) (quoting Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006)). Here, Corriveau teaches that one may use an acidulant “to impart a tart or sour flavor.” Corriveau 138. The Examiner has come forward with evidence that sodium hydrogen malate was a known acidulant at the time the application was filed. There is, however, no evidence in the record indicating that sodium hydrogen malate was known to impart a tart or sour flavor. Accordingly, it has not been shown that a person of ordinary skill in the art would have had a reasonable expectation of success in using sodium 4 Appeal 2016-003394 Application 11/723,883 hydrogen malate to impart the “tart or sour flavor” of Corriveau to a confection. Rejection 2. The Examiner additionally found claims 1 and 4—6 obvious over Shiao or, in the alternative, over Shiao in view of Rogers and Hanke. Final Act. 3^4. Appellant argues that the Examiner has failed to make a prima facie case of obviousness because it has not been shown that Shiao is analogous art to the present application. Id. at 14—21. An obviousness analysis is limited to analogous art, which includes references in the same field of endeavor as that of the invention. Wyers v. Master Lock Co., 616 F.3d 1231, 1237—38 (Fed. Cir. 2010) (“The Supreme Court's decision in KSR International Co. v. Teleflex, Inc. directs us to construe the scope of analogous art broadly”) (citation omitted). “Similarity in structure and function between the claimed invention and the cited prior art is indicative of the field in which the invention belongs.” Securitypoint Holdings, Inc. v. United States, 129 Fed. Cl. 25, 36 (2016) (citing In re Bigio, 381 F.3d 1320, 1325-26 (Fed. Cir. 2004)). Here, claim 1 is directed to a powder composition comprising partially neutralized malic acid and a sweetener. Appeal Br. (Claims App. A-l). The Specification indicates that “[cjonfectionery products that are very suited for sanding are for example hard candies as lolly-pops gelatin- based or starch-based soft candies. Further, chewing gum, toffees, jelly beans and the like can also be used in acid-sanding applications.” Spec. 1—2. Shiao describes, inter alia, a food composition including malic acid and other carboxylic acids as well as their acidic salts of sodium. Shiao 5 Appeal 2016-003394 Application 11/723,883 142. Shiao further teaches that the composition may include “sweetener.” Id. at 50. Shiao describes the invention generally as follows: This invention uses edible acids. Therefore, the edible organic carboxylic acids and/or their acidic salts can be used as additive in health care food. Their carriers are food acceptable compounds including raw materials that are processed from acid containing fruits, such as orange, acid orange, lemon, plum, grape fruit, star fruit, mulberry, strawberry, and pineapple. The types of health care food are normal oral food such as drinks, candy, biscuits, capsule, tablets, flake, granular, powder, pile, syrup, solution, and suspension. Shiao | 56 (emphasis added). This is consistent with the Examiner’s finding that “Shiao has the same active ingredients as instantly claimed” and “Shiao teaches of a powdered material which is suitable for coatings, and ... a candy product.” Answer 6—7. Appellant’s proposed field of endeavor, “[t]his invention relates to a composition for acid-sanding of confectionery products comprising a partially neutralized polycarboxylic acid selected from malic acid, citric acid, fumaric acid, and/or adipic acid and to a method for said acid-sanding of confectionery products” (Appeal Br. 14) is too narrow as it fails to recognize similarity in structure and function between the instant application and Shiao. Accordingly, Appellant has failed to show error in the Examiner’s finding that Shiao is in the same field of endeavor as the invention. CONCLUSION In view of the foregoing, the rejections of claims 1, 4—6, and 10 as obvious over Corriveau in view of Igoe are reversed. The rejections of 6 Appeal 2016-003394 Application 11/723,883 claims 1 and 4—6 as obvious over Shiao or, in the alternative, Shiao in view of Rogers and Hanke, are 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). AFFIRMED-IN-PART 7