Ex Parte Kirihara

Patent Trial and Appeal Board

Jan 31, 2017

12446610 (P.T.A.B. Jan. 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.
12/446,610 10/12/2009 Terry T. Kirihara 6903WOUS 7729
30173 7590 02/02/2017
Diederiks & Whitelaw, PLC
13885 Hedgewood Dr., Suite 317
Woodbridge, VA 22193-7932
EXAMINER
YOO, HONG THI
ART UNIT PAPER NUMBER
1793
NOTIFICATION DATE DELIVERY MODE
02/02/2017 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):
gmi.mail@dwpatentlaw.com
mail@dwpatentlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TERRY T. KIRIHARA
Appeal 2016-000992
Application 12/446,610
Technology Center 1700
Before KAREN M. HASTINGS, GEORGE C. BEST, and
N. WHITNEY WILSON, Administrative Patent Judges.
WILSON, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
December 15, 2014 decision finally rejecting claims 1—5, 12, 13, 15, and 17—
32 as unpatentable under 35 U.S.C. § 103(a). We have jurisdiction over the
appeal under 35 U.S.C. § 6(b).
We affirm.
1 Appellant identifies the real party in interest as General Mills Inc. (Appeal
Br. 3).
Appeal 2016-000992
Application 12/446,610
CLAIMED SUBJECT MATTER
Appellant’s invention is directed to essential oils for flavor ingredients
derived from nuts and legumes by steam distillation from nut butters (Spec.
12). Claims 1,12, and 30 are representative and are reproduced below from
the Claims Appendix of the Brief (emphasis in italics)'.
1. A food flavoring composition consisting of:
1—50%, by weight, of a steam distilled non-allergenic natural nut
essential oil, based on a total amount of food flavoring
composition, derived from agricultural nut material and having
100 ppb or less protein', and
a balance of liquid edible carrier, said non-allergenic natural nut
essential oil being dissolved in the liquid edible carrier, wherein
liquid edible carrier is selected from the group consisting of
ethanol, glycerol, propylene glycol, and mixtures thereof.
12. A method of preparing a food product, comprising the steps of:
[providing a comminuted nut material;
[extracting volatile flavor and aroma constituents from the
comminuted nut material through steam distillation to provide a
de-flavored nut material fraction and a non-allergenic essential
nut oil',
[ajdmixing 1-50%, by weight, of the non-allergenic essential nut
oil with a liquid carrier to provide a liquid natural nut essential
oil flavor material having a protein content of 100 ppb or less,
said 1—50% essential nut oil being based on a total amount of
liquid natural essential oil flavor material; and,
[ajpplying the liquid natural nut essential oil flavor material to
an edible food product base, wherein the edible food product
base includes a breakfast cereal and wherein the applying step
includes incorporating at least a portion of the liquid natural nut
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Application 12/446,610
essential oil flavor material into at least a portion of the
breahfast cereal.
30. A food product comprising'.
food flavoring composition consisting of. 1—50% by weight of a
steam distilled non-allergenic natural nut essential oil derived
from agricultural nut material and having 100ppb or less protein
and a balance of liquid edible carrier, based on a total amount
of food flavoring composition, said non-allergenic natural nut
essential oil being dissolved in the liquid edible carrier, wherein
the non-allergenic natural nut essential oil is obtained by steam
distillation of the agricultural nut material in a form of a smooth
nut paste of comminuted nuts or nut pieces', and
a blend of individual ready-to-eat cereal pieces topically coated
with the food flavoring composition.
Appeal Br. 16—17, 18 (Claims App.).
REJECTIONS
(1) Claims 1—5 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Yahoo Answers2 in view of RCAES,3 as evidenced by Burdock4 and
Raindrop Messenger Archive.5
2 https://answers.yahoo.com/question/index?qid=20060904115141AAdWG
7G (posted September 4, 2006) (“Yahoo Answers”).
3 33rd and 34th Annual Reports of Connecticut Agricultural Experiment
Station, p. 496, September 30, 1910 (“RCAES”).
4 George A. Burdock, Encyclopedia of Food and Color Additives, p. 103—05,
1997 (“Burdock”).
5 http://www.raindroptraining.eom/messenger/v4nl.html#sensitivities
(David Stewart, Ph.D., Raindrop Messenger Archive, Vol. 4, No. 1,
January—February 2006) (“Raindrop Messenger Archive”).
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Application 12/446,610
(2) Claims 12, 13, 15, and 17—29 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Bergin6 in view of Burdock, and further in
view of Pure Almond Extract7 and RCAES.
(3) Claims 30, 31, and 32 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Bergin in view of Pure Almond Extract, and further in
view of RCAES, as evidenced by Burdock.
DISCUSSION
Rejection (a)
The Examiner finds that Yahoo Answers teaches a hydrocyanic acid-
free almond extract flavoring composition, consisting of bitter-almond oil
with ethanol, glycerol or propylene glycol (Ans. 3). The Examiner also
finds that Yahoo Answers is silent as to: (i) the concentration of the almond
extract in the claimed amount, (ii) or that it is derived by steam distillation.
The Examiner cites the statement in RCAES that an agricultural
“[sjtandard almond extract is ‘the flavoring extract prepared from oil of
bitter almonds, free from hydrocyanic acid, and contains not less than one
(1) per cent by volume of oil of bitter almonds’” {id., citing RCAES p. 496).
The Examiner relies on Burdock’s evidence that bitter-almond oil extract is
obtained by steam distillation of comminuted bitter almond kernels (Ans. 3,
citing Burdock p. 104, 2d |). The Examiner further relies on Raindrop
Messenger Archive’s evidence, which discloses that an essential oil obtained
by steam distillation contains “no protein amounts” {id. at 4).
6 Bergin et al., U.S. Patent No. 4,608,263, issued Aug. 26, 1986 (“Bergin”).
7 http://web.archive.Org/web/20050829074611/http://www.spicebam.com/al
mond_extract,_htm (post available August 29, 1985) (“Pure Almond
Extract”).
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Application 12/446,610
The Examiner determines that it would have been obvious to the
ordinary skilled artisan “to use [RCAES’] amounts of oil of bitter almond,
free from hydrocyanic acid in [Yahoo Answers’] almond extract
(composition) since [RCAES] teaches a standard amount of oil bitter almond
in the almond extract (flavoring extract) is conventional” (Ans. 3).
The Examiner further determines that the claimed steam distillation
“method for attaining the non-allergenic natural nut essential oil does not
patentably distinguish the claimed product from the prior art since the end
product of the prior art contains the same natural nut essential oil and edible
carrier liquid, as claimed” {id. at 4).
Appellant makes the following arguments urging reversal of the
Examiner’s § 103(a) rejection: (1) “the collective teachings of the [Yahoo
Answers, RCAES, and Burdock] references would lead one of ordinary skill
in the art away from using natural bitter almond oil in a flavoring
composition” (Appeal Br. 6); (2) with respect to claims 1 and 5, the steam
distillation method patentably distinguishes the claimed product from the
prior art because the method “is necessary to arrive at the claimed amount of
100 ppb or less protein” {id. at 7, 8); (3) the Examiner has not made a prima
facie case of obviousness for claim 5 because the applied prior art does not
disclose “any teaching of steam distilling an agricultural nut material in a
form of a smooth nut paste of comminuted nuts or nut pieces” {id. at 8); and
(4) “interpreting a composition which ^requires a protein content and
[]specifies that the protein content is 100 ppb or less, cannot be met by
[Raindrop Messenger Archive’s] composition having no protein content at
all” {id. at 7; see also id. at 8).
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Appellant further argues that the Examiner’s prior art teaches away
from the present invention, because Yahoo Answers “teaches that the
disclosed almond extract is not pure, RCAE[S] teaches that pure bitter
almond oil contains poisonous hydrocyanic acid, and Burdock teaches that
‘bitter almond’ can refer to almond, apricot, or peach . . (id. ).
Whether a reference teaches away from a claimed invention is a
question of fact. In re Harris, 409 F.3d 1339, 1341 (Fed. Cir. 2005). For a
reference to “teach away,” it must criticize, discredit, or otherwise
discourage the claimed solution. See In re Fulton, 391 F.3d 1195, 1201
(Fed. Cir. 2004).
Appellant’s argument (1) is not persuasive because it fails to identify
any teaching in the applied prior art that criticizes, discredits, or discourages
a flavoring composition consisting of 1—50% natural bitter almond oil,
having 100 ppb or less protein, with a balance of liquid edible carrier. For
example, the Examiner relies on RCAES’s evidence that standard almond
extract is “‘free from hydrocyanic acid’” (Ans. 3, citing RCAES p. 496).
Regarding Burdock, the Examiner relies on evidence therein that bitter-
almond oil extract is obtained by steam distillation of comminuted bitter
almond kernels (Ans. 3, citing Burdock p. 104, 2d 1). Thus, Burdock’s
disclosures with respect to apricot and peach are not pertinent to our
disposition. Fastly, Appellant attempts to distinguish Yahoo Answers’
alleged teaching from claim 1 based on a limitation (i.e., pure) which is not
present in the claim. See, In re Self, 671 F.2d 1344, 1348 (CCPA 1982).
Appellant’s arguments (2) and (3) are not persuasive for the reasons
set forth below.
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It is well established that when claimed and prior art products 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 (CCPA 1977). This is true whether the rejection is under
35 U.S.C. § 102 (anticipation) or 35 U.S.C. § 103 (obviousness), and is
based on the fact that the PTO is not in a position to manufacture products or
to obtain and compare prior art products. Id.
In this instance, the Examiner has explained that Raindrop Messenger
Archive’s process for the production of non-allergenic essential oils is
substantially similar to the process described in Appellant’s claims (Ans. 4,
citing Raindrop Messenger Archive p. 2). The Examiner finds that Raindrop
Messenger Archive’s steam distillation process would reasonably be
expected to produce the food flavoring composition having 100 ppb or less
protein as set forth in appealed independent claims 1 and 5 (Ans. 4—5).
Placing the burden on Appellant to show that a food flavoring composition
derived by Raindrop Messenger Archive’s (or Burdock’s) steam distillation
process would not be a food flavoring composition consisting of “a steam
distilled non-allergenic natural nut essential oil. . . having 100 ppb or less
protein” is appropriate under these circumstances. Best, 562 F.2d at 1255.
Appellant has not met this burden. The record evidence is silent as to
any persuasive technical reasoning or evidence that the claimed natural nut
essential oil derived from steam distillation of “agricultural nut material”
(claim 1), which can be “in a form of a smooth nut paste of comminuted nuts
or nut pieces” (claim 5), would be substantially different from a modified
Yahoo Answer’s almond extract.
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With regards to argument (4), Appellant’s argument is not persuasive
because it presumes that the claimed natural nut essential oil “requires a
protein content” (Appeal Br. 7).
We give the open ended claim limitation “having a protein content of
100 ppb or less” its broadest reasonable construction consistent with the
Specification. In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379
(Fed. Cir. 2007). The Specification provides that an embodiment of the
present invention includes “a genuine (i.e., nut derived . . .) natural. . .
essential oil. . . essentially free of any protein based nut allergans” (Spec. 1
19). The Specification further discloses that “‘essentially free’” means that
“the protein level is below measurable thresholds of 100 parts per billion
(‘ppb’) or less” (id.).
Our broadest reasonable construction in light of the Specification is
that neither claims 1 nor 5 encompass a requirement for any protein content
in the natural nut essential oil. Rather, these claims merely require that the
composition is essentially free of any protein based nut allergens beyond a
measurable threshold. For the reasons set forth in the Answer (see Ans. 4—
5), Raindrop Messenger Archive fairly teaches that steam distillation
provides essential oils “essentially free of any protein based nut allergens”
(Spec. 119; see also Raindrop Messenger Archive, p. 2 (noting that essential
oils derived by steam distillation “do not contain the necessary compounds
to trigger allergies”, including allergies to “peanut, walnut, almond, etc.”)).
Furthermore, Appellant has not pointed us to any persuasive technical
reasoning or evidence that Appellant’s natural nut essential oil is
substantially different from Yahoo Answer’s modified almond extract
derived by steam-distillation. Best, 562 F.2d at 1255.
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Application 12/446,610
Therefore, Appellant has not persuasively argued that the facts and
reasons relied on by the Examiner are insufficient to establish a prima facie
case of obviousness as to independent claim 1 and separately argued
dependent claim 5. Dependent claims 3^4 will fall with their respective
independent claim. 37 C.F.R. § 41.37(c)(l)(iv).
Accordingly, we affirm the rejection of claims 1—5 for the reasons set
forth above and explained in the Examiner’s Answer.
Rejection (b)
The Examiner finds that Bergin teaches steps recited in independent
claim 12, including: (i) mixing flavoring material and dipeptide sweetener
for a cereal base coating, and (ii) applying a flavoring material comprising
bitter almond oil onto a cereal base (Ans. 5, citing Bergin 4:15—20, 25; 6:1—
2; see also Ans. 19). The Examiner determines that “[i]t would have been
obvious to one of ordinary skill in the art to be motivated to use Burdock’s
method in Bergin’s method to provide an oil of bitter almond rendered free
of Prussic [hydrocyanic] Acid, which is a known toxic” (Ans. 6, citing
Burdock p. 104, lst|).
The Examiner further finds that commercially available Pure Almond
Extract (“PAE”) discloses a flavoring extract comprising pure oil of bitter
almond extract admixed with a liquid edible carrier (Ans. 6). According to
the Examiner, the PAE contains a zero amount of protein in the composition
(id.).
The Examiner determines that it would have been obvious for the
ordinary skilled artisan to: (i) “be motivated to use RCAE[S’] amount of oil
of bitter almond (essential oil) in PAE because RCAE[S] teaches standard
amount of oil of bitter almond in PAE’s flavoring extract is conventional”;
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and (ii) “be motivated to use PAE as modified by RCAE[S] in Burdock’s
method because PAE provides [a] commercially available flavoring extract,
oil of bitter almond to be added to food product” {id. at 7).
Appellant makes the following arguments urging reversal of the
Examiner’s § 103(a) rejection: (1) Bergin’s “topical application ... is not
the same as incorporating at least a portion of the liquid natural nut essential
oil flavor material into a least a portion of the breakfast cereal” as required
by claim 12 (Appeal Br. 9; see also id. at 11 (further arguing that Bergin’s
coating feature cannot render claim 21 obvious when the claim encompasses
both topical coating and incorporation of the liquid natural nut essential oil
flavor material)); (2) “interpreting a composition which [Jrequires a protein
content and [jspecifies that the protein content is 100 ppb or less, cannot be
met by [PAE’s] composition having no protein content at all” {id. at 10);
(3) “the Examiner . . . did not point to any teaching of dissolving a natural
nut essential oil in a liquid carrier” as required by claim 13 because Bergin’s
flavoring material “is dispersed, rather than dissolved, in the fatty material”
{id. at 11); and (4) “[tjhere is no teaching or suggestion of preparing a nut
flavored syrup by admixing the liquid natural nut essential oil flavor material
with a pre-sweetener coating” as recited in claim 27 {id. at 12).
We are not persuaded by Appellant’s argument (1) for the reasons set
forth below.
The Supreme Court has made clear that an obviousness analysis “need
not seek out precise teachings directed to the specific subject matter of the
challenged claim, for a court can take account of the inferences and creative
steps that a person of ordinary skill in the art would employ.” KSR Int 7 Co.
v. Teleflex Inc., 550 U.S. 398, 418 (2007). That is because “[a] person of
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ordinary skill is also a person of ordinary creativity, not an automaton.” Id.
at 421.
Choosing known locations for placement of a known food flavoring
additive requires no more than ordinary creativity. See KSR, 550 U.S. at 416
(“The combination of familiar elements according to known methods is
likely to be obvious when it does no more than yield predictable results.”)
Appellant has provided no persuasive rationale or credible evidence that the
claimed method of incorporating liquid natural nut essential oil flavor
material into a breakfast cereal as recited in claim 12 is patentably
distinct over Bergin’s method of applying the flavoring material comprising
oil of bitter almond onto a cereal base. We, furthermore, determine that the
ordinary skilled artisan would have reasonably inferred that the known food
flavoring could be applied to both known locations of a cereal base, as
required by claim 21.
Appellant’s argument (2) is not persuasive based on our construction
set forth above of the open ended claim limitation “100 ppb or less.”
Appellant, furthermore, has not pointed us to any persuasive technical
reasoning or evidence that Appellant’s method of preparing a food product
of liquid natural nut essential oil flavor material having a protein content of
100 ppb or less is substantially different from Bergin’s modified method.
Appellant contends, in connection with argument (3), that because a
fatty material is incapable of dissolving an essential oil, Bergin’s fatty
material cannot suggest the claimed liquid edible carrier recited in claim 13
(Appeal Br. 11).
A reference stands for all of the specific teachings thereof as well as
the inferences one of ordinary skill in the art would have reasonably been
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expected to draw therefrom. In reFritch, 972 F.2d 1260, 1264—65 (Fed. Cir.
1992). Appellant’s arguments are not persuasive because they fail to
adequately address the Examiner’s position. As the Examiner found (Ans.
18), Bergin teaches that the oil of bitter almonds flavoring material may be
dissolved “in an alcoholic aqueous carrier” followed by emulsification into a
fatty base solution (see Bergin 4:10-25). Absent factual evidence showing
otherwise, we discern no reversible error in the Examiner’s finding that one
of ordinary skill in the art would have reasonably inferred that Bergin
suggests dissolving a natural nut essential oil in a liquid carrier.
Likewise, Appellant’s argument (4) is similarly not persuasive. In
connection with argument (4), Appellant further argues that “Bergin’s
teaching of separately applying a flavoring material and sweetener is not a
reasonable teaching of preparing a nut flavored syrup and applying the syrup
to a food base” (Reply Br. 3).
As the Examiner found (Ans. 19), however, Bergin teaches that “the
flavoring material and dipeptide sweetener are . . . intermingled” (Bergin,
5:60-62). Furthermore, Bergin’s teaching of separately applying is merely
an exemplified embodiment of intermingling, i.e., admixing, the flavoring
material and sweetener (see Bergin 5:63). Based on Bergin’s disclosure, one
of ordinary skill in the art could reasonably infer that the disclosed
intermingling may take place in a syrup as well (see Bergin 5:64—65
(disclosing that the dipeptide sweetener is “an aqueous solution”)). In re
Fritch, 972 F.2d at 126A-65.
Therefore, Appellant has not persuasively argued that the facts and
reasons relied on by the Examiner are insufficient to establish a prima facie
case of obviousness as to independent claim 12 and separately argued
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dependent claims 13, 21, and 27. Dependent claims 15, 17—20, 22—26, 28,
and 29 will fall with their respective independent claim. 37 C.F.R.
§41.37(c)(l)(iv).
Accordingly, we affirm the rejection of claims 12, 13, 15, and 17—29
for the reasons set forth above and explained in the Examiner’s Answer.
Rejection (c)
The Examiner determines that “the ‘consisting of language in claim
30 is limited to the flavoring composition^] but the claim is directed to a
food product with the open language of ‘comprising’; therefore[,] the claim
does not exclude other ingredients in the food product” (Ans. 9).
Appellant makes the following arguments urging reversal of the
Examiner’s § 103(a) rejection: (1) Bergin’s coating comprising a dipeptide
sweetener, a fatty material and a flavoring material with carbonyl
compounds provides no teaching of a liquid edible carrier in which oil is
dissolved (Appeal Br. 13); (2) “the fatty material and the dipeptide
sweetener constitute ingredients in the coating composition which are
excluded by the ‘consisting of’ language of claim 30 and modifying Bergin
to remove such ingredients would destroy the intended purpose of Bergin”
(id.); (3) “interpreting a composition which [jrequires a protein content and
[Jspecifies that the protein content is 100 ppb or less, cannot be met by
[PAE’s] composition having no protein content at all” (id. at 13); and
(3) because “claim 32 excludes all ingredients other than ethanol, glycerol,
propylene glycol,. . . claim 32 is not obvious over the applied prior art” (id.
at 11).
With respect to Appellant’s argument (1), Appellant repeats assertions
made in argument (3) above urging the reversal of Rejection (b) to claim 13
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(compare id. at 10-11; 13). Likewise, Appellant’s argument (1) for
Rejection (c) is not persuasive for the reasons set forth above and in the
Answer (see Ans. 8—11; 18; 20-21).
We are not persuaded by Appellant’s argument (2) because the
Examiner’s position that the claims do not preclude ingredients in a food
product comports with our construction of claim 30. Furthermore, the
Examiner’s position is supported by Bergin’s disclosure. Bergin’s
comestible is comprised of: (a) a comestible base, (b) a dipeptide sweetener,
(c) a fat dispersible flavoring material, and (d) an edible fatty material
(Bergin 2:1—10). As such, Bergin reasonably suggests that the fatty material
and the dipeptide sweetener are not included in the food flavoring
composition. Rather, these ingredients are separate components. Thus, the
Examiner’s proposed modification would not destroy the intended purpose
of Bergin.
With respect to Appellant’s argument (3), Appellant repeats assertions
made in argument (2) above urging the reversal of Rejection (b) (compare
Appeal Br. at 10; 13). Likewise, Appellant’s argument (3) for Rejection (c)
is not persuasive for the reasons set forth above and in the Answer (see Ans.
18; 20).
Regarding Appellant’s argument (4), we are not persuaded because
the Markush group of claim 32 does not preclude ingredients that are not
ethanol, glycerol, or propylene glycol. As the Examiner found (id. at 21),
PAE discloses propylene glycol to dissolve the pure oil of bitter almond
extract (see PAE (“Contains: Water, Alcohol (35%), Propylene Glycol, Pure
Oil of Almond.”)).
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Therefore, Appellant has not persuasively argued that the facts and
reasons relied on by the Examiner are insufficient to establish a prima facie
case of obviousness as to independent claim 30 and separately argued
dependent claim 32. Dependent claim 31 will fall with its independent
claim. 37 C.F.R. § 41.37(c)(l)(iv).
Accordingly, we affirm the rejection of claims 30, 31, and 32 for the
reasons set forth above and explained in the Examiner’s Answer.
CONCLUSION
We AFFIRM the rejection of claims 1—5 under 35 U.S.C. § 103(a) as
obvious over Yahoo Answers in view of RCAES, as evidenced by Burdock
and Raindrop Messenger Archive.
We AFFIRM the rejection of claims 12, 13, 15 and 17—29 under 35
U.S.C. § 103(a) as obvious over Bergin in view of Burdock, and further in
view of PAE and RCAES.
We AFFIRM the rejection of claims 30, 31, and 32 under 35 U.S.C.
§ 103(a) as obvious over Bergin in view of PAE, and further in view of
RCAES, as evidenced by Burdock.
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
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