Ex Parte Kaneko et al

Patent Trials and Appeals Board

Jun 13, 2019

15389638 - (D) (P.T.A.B. Jun. 13, 2019)

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.
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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
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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.
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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
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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.
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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.
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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
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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
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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
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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.
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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
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