Ex Parte Estes

Patent Trial and Appeal Board

May 7, 2018

13658897 (P.T.A.B. May. 7, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/658,897 10/24/2012 THOMAS GEORGE ESTES
140 7590 05/09/2018
LADAS & PARRY LLP
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
u 018620-4 6885
EXAMINER
1040 A venue of the Americas STIJLII, VERA
NEW YORK, NY 10018-3738
ART UNIT PAPER NUMBER
1791
NOTIFICATION DATE DELIVERY MODE
05/09/2018 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):
nyuspatactions@ladas.com
nymail@ladas.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS GEORGE ESTES 1
Appeal2016-005254
Application 13/658,897
Technology Center 1700
Before JAMES C. HOUSEL, JULIA HEANEY, and
JEFFREY R. SNAY, Administrative Patent Judges.
HOUSEL, Administrative Patent Judge.
DECISION ON APPEAL 2
Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the
Examiner's decision finally rejecting claims 1, 3, 6-13, and 16-23. We
have jurisdiction over the appeal under 35 U.S.C. § 6(b ).
We REVERSE.
1 According to the Appeal Brief (Appeal Br.) filed September 28, 2015,
Appellant is the Applicant, Numero Ocho Limited, which is the real party in
interest. Appeal Br. 3.
2 Our decision refers to the Specification (Spec.) filed October 24, 2012, the
Examiner's Final Office Action (Final) dated October 29, 2014, the
Examiner's Answer (Ans.) dated February 29, 2016, and Appellant's Reply
Brief (Reply Br.) filed April 15, 2016.
Appeal2016-005254
Application 13/658,897
STATEMENT OF THE CASE
The invention relates to an enhanced tequila beverage (Spec. 1 :2).
Specifically, the Inventor describes a process for infusing a standard tequila
beverage with extracts from cooked blue agave pifia (hearts) (id. at 2:3-5).
Independent claims 1 and 11, reproduced below from the Claims
Appendix to the Appeal Brief, are illustrative of the subject matter on
appeal.
1. A tequila beverage comprising a standard tequila beverage containing
added components infused from a cooked pifia or heart of a blue agave
plant for making said standard tequila beverage more desirable to a
consumer.
11. A process comprising providing a standard tequila beverage and then
contacting said standard tequila beverage with cooked pifia or heart of a
blue agave plant to infuse components for making said standard tequila
beverage more desirable to a consumer into said standard tequila
beverage.
REJECTIONS
The Examiner maintains, and Appellant requests our review of, the
following grounds of rejection:
1. Claims 1, 3, and 6-8 under 35 U.S.C. § 102(b) as anticipated by
Mayer, 3 as evidenced by Roman; 4
2. Claims 1, 3, and 6-10 under 35 U.S.C. § 103(a) as unpatentable
over Mayer, as evidenced by Roman;
3 US 2010/0178411 Al, published July 15, 2010 ("Mayer").
4 US 2008/0299258 Al, published December 4, 2008 ("Roman"). Although
not included in the Examiner's statement of this rejection, the Examiner
relies on Roman as evidentiary support for the source of Mayer's agave
nectar. Appellant addresses Roman in the Appeal and Reply Briefs.
Accordingly, we have corrected the statement to reflect the Examiner's
reliance on Roman.
2
Appeal2016-005254
Application 13/658,897
3. Claims 11-13 under 35 U.S.C. § 103(a) as unpatentable over
Mayer in view of Herstein; 5 and
4. Claims 16-23 under 35 U.S.C. § 103(a) as unpatentable over
Mayer in view of Herstein, and further in view of Wasmund. 6
ANALYSIS
Rejection 1: Anticipation by Mayer
The Examiner finds Mayer discloses a tequila beverage enhanced by
the addition of a sweet nectar derived from blue agave (agave nectar) (Ans.
2). The Examiner further finds Mayer teaches that the tequila beverage is
produced by fermentation of the sweet juice extracted from the cooked blue
agave pifia, followed by distillation of the fermented juice (id.). In addition,
the Examiner finds "agave nectar is an extract of cooked heart of blue agave
cactus" (id.).
The Examiner notes Mayer teaches raw agave pifia is comprised of
pure starch and finds that raw agave pifia is not used for juice/sugar
extraction (id.). The Examiner finds Mayer therefore teaches the extraction
of juice/sugar from blue agave pifia involves cooking the pifia (id.).
Moreover, the Examiner finds Mayer refers to Roman for the prior use of
agave syrup (nectar) as a natural sweetener that is derived from pifia, which
the Examiner concludes discloses the addition of agave nectar that has been
extracted from cooked blue agave pifia (id. at 3).
With regard to the limitation that the components are added to the
standard tequila beverage via infusing from cooked pifia, the Examiner
5 KARL M. HERSTEIN & MORRIS B. JACOBS, CHEMISTRY AND TECHNOLOGY
OF WINES AND LIQUORS, CHAP XIV, LIQUEURS AND CORDIALS, 217-222 (2nd
ed. 1948) ("Herstein").
6 US 2005/0084597 Al, published April 21, 2005 ("Wasmund").
3
Appeal2016-005254
Application 13/658,897
determines that this limitation is related to the process of making the
enhanced tequila beverage which does not impart any patentable distinction
to the product (id.).
Appellant raises two substantive arguments against the Examiner's
anticipation rejection: 1) that Mayer nor Roman discloses a tequila beverage
enhanced by adding components from cooked pifia; and 2) that Mayer nor
Roman discloses a tequila beverage enhanced by infusing components from
cooked pifia (Appeal Br. 7-8). With regard to the first argument, Appellant
notes that Mayer is silent as to the source of the agave nectar, except in
reference to, inter alia, Roman (id.). Appellant asserts that Roman discloses
extracting agave syrup from raw, not cooked, pifia that has been cut into
smaller pieces and pressed (id. at 8). Appellant urges that the ordinary
artisan would understand that the composition of raw pifia would be
different from that of cooked pifia (id.). With regard to the second
argument, Appellant asserts that infusing components from a cooked pifia
would result in an enhanced tequila beverage having a different composition
to that of Mayer which incorporates agave nectar from uncooked pifia into
the tequila beverage (id.).
Appellant's arguments are persuasive of reversible error in the
Examiner's anticipation rejection. As Appellant argues, Mayer does not
teach that the agave nectar is produced using cooked pifia. Rather, Mayer
teaches that the tequila beverage prior to the addition of the agave nectar is
itself produced from cooked pifia. Although the Examiner attempts to
demonstrate that agave nectar must also be produced from cooked pifia
based on Mayer's teaching that pifia is comprised of pure starch, we note
Roman teaches agave syrups are naturally sweet (Roman i-f 3), and that the
4
Appeal2016-005254
Application 13/658,897
crude syrup is extracted from raw pifia (id. i-f 6). In addition, Roman teaches
that the crude syrup may be further processed to break down inulin fiber into
fructose (id.). Therefore, without more, the Examiner's finding that Mayer
uses agave nectar from cooked pifia lacks support in either Mayer or Roman.
We are also persuaded that because Mayer does not infuse the tequila
beverage with cooked pifia, instead teaching the inclusion of agave nectar,
the Examiner has not established that Mayer's product is the same or
substantially the same as that of claim 1. As the Examiner correctly notes,
claim 1 includes product-by-process recitations, and "determination of
patentability is based on the product itself," not on "its method of
production." In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985) (citations
omitted). "If the product in a product-by-process claim is the same as or
obvious from a product of the prior art, the claim is unpatentable even
though the prior product was made by a different process." Id. (citation
omitted). However, the Examiner must make sufficient factual findings
such that it can be reasonably inferred that the prior art product and that of
the claim are the same or substantially the same. Howmedica Osteonics
Corp. v. Zimmer, Inc., 640 F. App'x 951, 958 (Fed. Cir. 2016).
Here, the Examiner makes no findings supporting an inference that a
tequila beverage infused with cooked agave pifia would be the same or
substantially the same as Mayer's product. We are mindful that Mayer's
product involves admixing or blending agave nectar produced by mechanical
extraction from raw pifia, whereas Appellant's infusion process involves
dissolution from cooked pifia into the tequila beverage. Because these
processes, mechanical extraction versus infusion, are different processes
which are likely to produce different extracted compounds, we cannot say
5
Appeal2016-005254
Application 13/658,897
that the Examiner has established a reasonable basis on which to find that
Mayer's product is the same or substantially the same as that of claim 1.
Accordingly, because the Examiner's rejection of claims 1, 3, and 6-8
under 35 U.S.C. § 102(b) based on Mayer, as evidenced by Roman, relies on
the above erroneous findings, we reverse this rejection.
Rejection 2: Obviousness over Mayer
The Examiner relies on the same findings and reasoning as presented
in the anticipation rejection in support of this obviousness rejection,
including the erroneous finding identified above, e.g., that Mayer includes
an extract from cooked blue agave pifia to enhance a tequila beverage. In
addition, the Examiner also repeats the same erroneous determination that
the infusing limitation is a process limitation which does not impart a
patentable distinction to the product of claim 1. Under these circumstances,
we cannot conclude that the Examiner has met the minimum threshold of
establishing obviousness under 35 U.S.C. § 103(a). See In re Oetiker, 977
F.2d 1443, 1445 (Fed. Cir. 1992); KSR Int'! Co. v. Teleflex Inc., 550 U.S.
398, 418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
Accordingly, we reverse the Examiner's rejection of claims 1, 3, and 6-10
under 35 U.S.C. § 103(a) based on Mayer, as evidenced by Roman, for the
reasons given above and presented by Appellant.
Rejection 3: Obviousness over Mayer in view of Herstein
The Examiner repeats the same findings as set forth above with regard
to Mayer (Ans. 6-7). The Examiner acknowledges Mayer does not contact
tequila with cooked pifia itself (id. at 7). For this feature, the Examiner finds
6
Appeal2016-005254
Application 13/658,897
Herstein discloses preparation of liqueurs and cordials from alcohol, refined
sugar, and flavorings and aromatics extracted from fruits, herbs, seeds, and
roots, by a variety of methods including, inter alia, distillation, infusion, and
blending (id.). In particular, the Examiner finds Herstein teaches infusion
involves steeping aromatic substances in a solution of alcohol and sugar to
impart their flavorings and aromatic principles (id. at 8). The Examiner
further finds Herstein discloses infusion and blending are alternative
methods for preparing liqueurs and cordials (id.). Therefore, the Examiner
concludes that it would have been obvious to have prepared an enhanced
tequila beverage by infusing the tequila with cooked pifia as a known
alternative to Mayer's blending process (id.).
Initially, we note that this rejection, like the prior rejections discussed
above, relies on the erroneous finding that Mayer blends an extract of
cooked pifia with a tequila beverage. The Examiner does not rely on
Herstein to establish that the use of cooked pifia would have been obvious to
the ordinary artisan. Therefore, on this basis alone, this rejection fails to
meet the minimum threshold of establishing obviousness. KSR, 550 U.S. at
418.
Moreover, as Appellant argues (Appeal Br. 12; Reply Br. 15),
Herstein does not describe that the different methods of preparation of
liqueurs and cordials are interchangeable. Although the Examiner states that
"[b ]oth of the blending and infusion methods produce the same results, i.e.
impart additional sweetness/flavor/aroma to the original distilled beverage"
(Ans. 11 ), the Examiner fails to direct our attention to any evidentiary
support for this finding. Indeed, contrary to this finding, Herstein teaches
that the characteristics of the finished product depend largely on the
7
Appeal2016-005254
Application 13/658,897
technique of preparation, independent of the quality of the materials used
(Herstein 218; Appeal Br. 12). With regard to infusion, Herstein further
states that the process depends largely on the material to be extracted,
including the solubility thereof in alcohol relative to undesired materials
(Herstein 219; Appeal Br. 12).
Accordingly, after review of the opposing positions articulated by
Appellant and the Examiner and the evidence of obviousness adduced by the
Examiner, we determine that the Appellant's arguments are persuasive. We,
therefore, reverse the Examiner's obviousness rejection based on the
combination of Mayer and Herstein.
Rejection 4: Obviousness over Mayer, Herstein, and Wasmund
The Examiner does not rely on Wasmund to remedy the deficiencies
identified above. Accordingly, for the same reasons given above, we reverse
the Examiner's obviousness rejection based on the combination of Mayer,
Herstein, and Wasmund.
DECISION
Upon consideration of the record, and for the reasons given above and
in the Appeal and Reply Briefs, the decision of the Examiner rejecting
claims 1, 3, 6-13, and 16-23 is reversed.
REVERSED
8