Ex Parte Kaneko et alDownload PDFPatent Trials and Appeals BoardJun 13, 201915389638 - (D) (P.T.A.B. Jun. 13, 2019) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 15/389,638 12/23/2016 4743 7590 06/17/2019 MARSHALL, GERSTEIN & BORUN LLP 233 SOUTH WACKER DRIVE 6300 WILLIS TOWER CHICAGO, IL 60606-6357 FIRST NAMED INVENTOR Ryosuke Kaneko 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. 30945/48181A 4453 EXAMINER STIJLII, VERA ART UNIT PAPER NUMBER 1791 NOTIFICATION DATE DELIVERY MODE 06/17/2019 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): mgbdocket@marshallip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte RYOSUKE KANEKO and SHINSUKE ITO 1 Appeal2018-003993 Application 15/389,638 Technology Center 1700 Before ROMULO H. DELMENDO, CHRISTOPHER C. KENNEDY, and MONTE T. SQUIRE, Administrative Patent Judges. KENNEDY, Administrative Patent Judge. DECISION ON APPEAL This case is an appeal under 35 U.S.C. § 134(a) from the Examiner's decision rejecting claims 1---6. We have jurisdiction under 35 U.S.C. § 6(b ). We AFFIRM-IN-PART. BACKGROUND The subject matter on appeal relates to methods for producing unfermented, non-alcoholic, "beer-taste" beverages. E.g., Spec. ,r 2; Claim 1. Claim 1 is reproduced below from page 26 (Claims Appendix) of the Appeal Brief: 1 The Appellant is the Applicant, Asahi Breweries, Ltd., which is also identified as the real party in interest. See App. Br. 3. Appeal2018-003993 Application 15/389,638 1. A method for producing an unfermented, non-alcohol, beer-taste beverage, comprising: (a) preparing a liquid sugar solution; (b) adding to the liquid sugar solution a soybean dietary fiber having a NIBEM in a 0.1 % by mass aqueous solution with a pH of3.5 of at least 160 to form a mixture; and, ( c) preparing an unfermented, non-alcohol, beer-taste beverage from the liquid sugar solution-dietary fiber mixture without fermentation, wherein the resulting beer-taste beverage has a pH of 3.5 to 4.0, and wherein an amount of the added soybean dietary fiber is 0.05% by mass or more but 0.2% by mass or less of the resulting beer-taste beverage. ANALYSIS Claims 1---6 stand rejected under 35 U.S.C. § I03(a) as unpatentable over Itakura (JP 2010/284153 A, published Dec. 24, 2010)2 in view of Takahashi (WO 2008/069027 Al, published June 12, 2008) 3• After review of the cited evidence in the appeal record and the opposing positions of the Appellant and the Examiner, we determine that the Appellant has not identified reversible error in the Examiner's rejection of claims 1-3, 5, and 6. Accordingly, we affirm the rejection of those claims for reasons set forth below, in the Final Action, and in the Examiner's Answer. See generally Final Act. 2-7; Ans. 2-9. However, for reasons set forth below, we reverse the rejection as to claim 4. 2 The Examiner and the Appellant rely on US 2012/0021116 Al, published Jan. 26, 2012, as an English-language equivalent. Ans. 2; App. Br. 7. 3 The Examiner and the Appellant rely on US 2010/0028486 Al, published Feb. 4, 2010, as an English-language equivalent. Ans. 2; App. Br. 7. 2 Appeal2018-003993 Application 15/389,638 Claim 1. The Appellant argues claims 1-3, 5, and 6 as a group. We select claim 1 as representative of the grouped claims, and claims 2, 3, 5, and 6 will stand or fall with claim 1. The Examiner finds that Itakura teaches or suggests a method that comprises the steps of claim 1, including the addition of a dietary fiber, but that Itakura does not specifically disclose a soybean dietary fiber that falls within the scope of claim 1. Ans. 2-3. As to the recited pH of 3.5 to 4.0, the Examiner finds that Itakura "discloses pH of less than 4," which overlaps the claimed range and establishes a prima facie case of obviousness. Id. at 3. As to the claimed dietary fiber, the Examiner cites Takahashi for its disclosure of the use of a soybean dietary fiber used as a bubble stabilizer in beverages. Id. at 2-3. The Examiner finds that Takahashi discloses a mass percent of its fiber that overlaps the claimed range. Id. at 3--4. The Examiner determines that, in view of Takahashi, it would have been obvious to modify Itakura "to include soybean dietary fiber ... as a source of dietary fiber and as a foaming agent." Id. at 3. In the statement of the rejection, the Examiner does not expressly address the NIB EM value recited by claim 1. See id. at 2-3. However, in addressing claim 2, which recites a molecular weight for the soybean fiber, the Examiner finds that Takahashi discloses a production method for its fiber that is the same as or essentially the same as that disclosed by the Appellant's Specification, and the Examiner determines that the molecular weight of the soybean fiber "is an inherent[] result of the method and materials of the preparation of the soybean dietary fiber." Id. at 4--5. The Examiner indicates that the same analysis applies to the NIBEM value. See id. at 8 ("[I]t is noted that Appellant has not provided any evidence that the 3 Appeal2018-003993 Application 15/389,638 NIB EM value of the disclosed soybean dietary fiber is different from the claimed range."); Final Act. 6 (same). 4 In view of those findings and other findings less material to the issues raised by the Appellant in this appeal, the Examiner concludes that the subject matter of claim 1 would have been obvious to a person of ordinary skill in the art. Ans. 2--4. The Appellant first argues that the claimed pH range of 3.5 to 4.0 and the claimed dietary fiber content of 0.05 to 0.2 mass percent are critical and produce unexpected results. App. Br. 10-13. Citing examples in the Specification, the Appellant argues that pHs between 3 .5 and 4 yield "good" flavor, but pHs of 2. 7 and 3 .0 do not. Id. at 11. The Appellant also argues that dietary fiber concentrations falling within the claimed range have desirable foam, transparency, and flavor characteristics, while fiber concentrations outside of the range result in beverages having less desirable foam, transparency, and flavor. Id. The burden of providing evidence to show unexpected results rests with the Appellant. In re Huang, 100 F.3d 135, 139 (Fed. Cir. 1996). "[W]hen unexpected results are used as evidence of nonobviousness, the results must be shown to be unexpected compared with the closest prior art." In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991) (emphasis added). "[I]t is not enough to show that results are obtained which differ from those obtained in the prior art: that difference must be shown to be an 4 In the Appeal Brief, the Appellant indicates a similar understanding and directly addresses the issue of whether the recited NIBEM value is inherent in Takashi's fibers. App. Br. 14--15. We discuss the Appellant's arguments below. 4 Appeal2018-003993 Application 15/389,638 unexpected difference." In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972) ( emphasis in original). "[ A ]ny superior property must be unexpected to be considered as evidence of non-obviousness." See Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1371 (Fed. Cir. 2007) (emphasis in original). "[I]t is well settled that unexpected results must be established by factual evidence. 'Mere argument or conclusory statements in the specification does not suffice."' In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (quoting In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1994)). Additionally, the relied-upon results must be commensurate in scope with the claims. In re Peterson, 315 F.3d 1325, 1329-31 (Fed. Cir. 2003). "Establishing that one ( or a small number of) species gives unexpected results is inadequate proof, for 'it is the view of [the CCP A] that objective evidence of non- obviousness must be commensurate in scope with the claims which the evidence is offered to support."' In re Greenfield, 571 F .2d 1185, 1189 (CCPA 1978) (quoting In re Tiffin, 448 F.2d 791, 792 (CCPA 1971)). In the Answer, the Examiner indicates that good flavor at a pH range of 3.5--4.0 would not have been unexpected because Itakura discloses pHs of less than 4 and because a person of ordinary skill in the art would have known that pHs significantly below 4 "would lead to [an] extremely sour taste." Ans. 6-7. The Examiner indicates that good foam results at fiber ranges of 0.05---0.2% would not have been unexpected because Takahashi discloses that its fiber is a foaming agent and foam stabilizer agent, and a person of ordinary skill in the art would have known to include "just enough ... to achieve desired foaming properties without jeopardizing the visual appearance," including transparency. Id. at 7. Additionally, we observe that, even assuming that the Appellant's relied-upon results are superior to 5 Appeal2018-003993 Application 15/389,638 the results of prior art beverages, the Appellant's arguments are not persuasive because the Appellant identifies no evidence indicating that any superior results were actually unexpected. The Appellant does not identify any discussion or indication in the Specification that the relied-upon results were unexpected or surprising, and it does not appear that the words "unexpected" or "surprising" ( or synonyms) are used by the Specification. Nor does the Appellant otherwise provide relevant evidence. Although we recognize that the Appellant uses the word "unexpected" in the Appeal Brief, the Appellant's discussion concerns whether the results are superior to the comparative examples, not whether the results would have been unexpected. See App. Br. 11. Unsupported use of the word "unexpected" in the Appeal Brief, of itself, is unpersuasive. See In re Pearson, 494 F .2d 1399, 1405 (CCPA 1974) ("Attorney's argument in a brief cannot take the place of evidence."). We also observe that the relied-upon examples appear to use only a single dietary fiber, SOYAFIBE-S-LA200. See Spec. ,r 42 (examples 1 and 3-10), ,r 45 (examples 11-16). The claims are not limited to that particular dietary fiber. The Appellant has not attempted to establish that the relied- upon examples, which use only a single dietary fiber, are commensurate with the full scope of the claims. See Greenfield, 571 F .2d at 1189. Thus, on this record, the Appellant has not shown that unexpected results support a conclusion of nonobviousness. The Appellant also argues that the NIBEM value of claim 1 is not taught or suggested by the prior art, and that it would not have been inherent in Takahashi's soybean fiber. App. Br. 13-17. 6 Appeal2018-003993 Application 15/389,638 Where "the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product." In re Best, 562 F.2d 1252, 1255-56 (CCPA 1977). In the Final Action, the Examiner reproduces paragraphs 23 to 27 of Takahashi, which disclose Takahashi's method of making its soybean fiber. Final Act. 4--5. Those paragraphs disclose, inter alia, that "okara" (soy pulp), which is "produced as a byproduct" of tofu or "a soybean protein isolate," is subjected to heat extraction at a temperature of 100°C or higher and at a pH "lower than the isoelectric point of a soybean protein, preferably at an acidic pH of 2.4 to 4.0." Takahashi ,r,r 23-25. Takahashi discloses that, "[a]fter heat-extraction, solids and the extract are separated by a conventional method such as filtration, centrifugation, and the like." Id. ,I 26. The Specification discloses a similar, if not identical method, of producing soybean fiber "usable in the present invention." Spec. ,r 14. It discloses that the fiber is produced by subjecting "soy pulp (Okara) obtained as a by-product in production of tofu, soy milk, or soy protein isolate" to an extraction process at "preferably a temperature exceeding 100°C" and at a pH "in a weakly acidic range near the isoelectric point of the soybean protein," and "then an aqueous solution of the dietary fiber is obtained by solid-liquid separation." Id. The only difference in process identified by the Appellant is that Takahashi discloses a pH of "lower than the isoelectric point," while the Specification discloses a pH "near the isoelectric point." App. Br. 14--15. 7 Appeal2018-003993 Application 15/389,638 However, the Appellant does not identify the isoelectric point of the soybean protein, and the Specification's disclosure of "near the isoelectric point" (emphasis added) encompasses pHs that are "lower than," but "near" the isoelectric point. In that regard, we observe that both Takahashi and the Specification disclose acidic pHs. Compare Spec. ,r 14, with Takahashi ,r,r 22-23. Moreover, even assuming some minor difference between the pH of Takahashi's process and the pH of the Specification's process, the Appellant provides no evidence that minor pH differences have sufficient influence on the NIB EM value of the resulting fiber to cause Takahashi' s fiber to fall beyond the scope of claim 1. See App. Br. 14--15. As set forth above, the Specification and Takahashi use the same raw materials, a heat extraction process at the same temperatures and similar (if not the same) pHs, and a similar ( if not the same) so lid-liquid separation process. We determine that the similarity, if not identity, of the two processes is sufficient to shift the burden to the Appellant "to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product," Best, 562 F.2d at 1255-56, and that the Appellant has not provided adequate reason to believe that Takahashi's process would not produce soybean fibers that inherently have NIBEM values that fall within the scope of claim 1. Cf Ex parte Obiaya, 227 USPQ 58, 60 (BP AI 1985) ("The fact that appellant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious."). Citing certain soybean fibers disclosed by the Specification, the Appellant also argues that "not all soybean dietary fiber has the recited 8 Appeal2018-003993 Application 15/389,638 NIBEM value." App. Br. 15. That argument is not persuasive because the Appellant does not allege that the soybean fibers falling beyond the scope of claim 1 were produced by either Takahashi's method or the method disclosed by the Specification. See id. On this record, the Appellant's arguments concerning NIBEM values do not persuade us of reversible error in the Examiner's rejection. See In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) ("[I]t has long been the Board's practice to require an applicant to identify the alleged error in the examiner's rejections .... "). The Appellant's final argument concerning claim 1 is that Itakura' s beverages are unfermented but Takahashi' s are not and, therefore, that "there is no reasonable expectation of success for modifying Itakura in view of Takahashi." App. Br. 17-21. That argument is not persuasive of reversible error in the rejection. Even assuming that the Appellant correctly identifies certain differences between unfermented and fermented beverages, see id., the Appellant does not persuasively explain why any of those differences would have caused a person of ordinary skill in the art to doubt that Takashi' s fiber would successfully function in Itakura's beverage. Itakura expressly suggests the use of a dietary fiber in its beverage, e.g., Itakura ,r 20, but it does specifically identify a fiber that should be used. The Appellant identifies no portion of Itakura that suggests any particular fiber, including soybean fibers, would be unsuitable. Nor does the Appellant identify any portion of Takahashi that suggests its soybean fiber would function only in fermented beverages. The Examiner's proposed combination is the use of a known dietary fiber (Takahashi's) in a beverage that calls for a dietary fiber but 9 Appeal2018-003993 Application 15/389,638 does not specify the dietary fiber. Such combinations typically do not result in nonobvious subject matter. See KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 416-21 (2007) ("The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results."); see also id. at 416 ("[W]hen a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result."); In re Fout, 675 F.2d 297, 301 (CCPA 1982) ("Express suggestion to substitute one equivalent for another need not be present to render such substitution obvious."). Even if differences between unfermented and fermented beverages may cast minor doubt on whether the proposed combination would be successful, "[t]he reasonable expectation of success requirement for obviousness does not necessitate an absolute certainty for success." PAR Pharm., Inc. v. TWI Pharm., Inc., 773 F.3d 1186, 1198 (Fed. Cir. 2014). On this record, we are not persuaded that differences between fermented and unfermented beverages indicate reversible error in the Examiner's rejection. We affirm the Examiner's rejection of claim 1. Claim 4. Claim 4 depends from claim 1 and recites, "wherein no malt is used." The Examiner finds that Takahashi discloses both malt and non- malt beverages and determines that "it would be obvious to employ both malt or no-malt containing beverages." Ans. 5. The Appellant argues that, because Itakura includes malt as "an essential feature," and "[t]he only modification proposed by the action is to add Takahashi's soybean dietary fiber to Itakura's beverage," the Examiner's proposal does not meet all of the limitations of claim 4 because 10 Appeal2018-003993 Application 15/389,638 the Examiner needed to show that "it would have been obvious to remove the malt component from Itakura." App. Br. 22. The Appellant's argument is persuasive. The Examiner does not identify any beverage in primary reference Itakura that is a non-malt beverage. On the contrary, Itakura repeatedly describes malt beverages. See generally Itakura. An object of Itakura is "to provide an unfermented beer- flavored malt beverage that has reduced or eased sourness." Id. ,r 9. Itakura states that "[t]he present inventors have found that by allowing a particular seasoning ingredient to exist in a wort with a pH adjusted to lower than 4.0 using a pH adjuster, the sourness of a pH adjuster can be reduced or eased and favorable, well-balanced tastes as a beer-flavored beverage can be achieved." Id. ,r 10 (emphasis added). Itakura further discloses: "The findings were surprising to the present inventors that by allowing the seasoning ingredient to exist in the wort, the strong sourness of the pH adjuster can be reduced or eased .... " Id. (emphasis added); see also id. ,r 18 ("A malt beverage according to the present invention is characterized in that in a wort supplemented with a pH adjuster, the sourness of the pH adjuster is reduced or eased by a seasoning ingredient."). Thus, wort is disclosed as an important or critical component of achieving Itakura's beverage. The Appellant asserts, and the Examiner does not dispute, that wort "contains malt." App. Br. 24; see also Itakura ,r 5 ( describing "worts produced from malt"), ,r 13 ("the term 'malt beverage' means a beverage mainly composed of a wort .... "). On this record, the Examiner has not adequately established that a person of ordinary skill in the art would have been motivated to eliminate the use of wort (malt) from Itakura's method and resulting beverage. 11 Appeal2018-003993 Application 15/389,638 Although we recognize that Takahashi discloses both malt and non-malt beverages, the Examiner's rejection provides no persuasive reason to combine the various features of Itakura and Takashi to achieve a method that falls within the scope of claim 4. See KSR, 5 5 0 U.S. at 418 (" [A] patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art."). In view of the Examiner's limited analysis, and in view of the foregoing discussion, we reverse the Examiner's rejection of claim 4. CONCLUSION We AFFIRM the Examiner's rejection of claims 1-3, 5, and 6. We REVERSE the Examiner's rejection of claim 4. 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 12 Copy with citationCopy as parenthetical citation