Ex Parte KiriharaDownload PDFPatent Trial and Appeal BoardJan 31, 201712446610 (P.T.A.B. Jan. 31, 2017) Copy Citation 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 2 Appeal 2016-000992 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”). 3 Appeal 2016-000992 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”). 4 Appeal 2016-000992 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). 5 Appeal 2016-000992 Application 12/446,610 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. 6 Appeal 2016-000992 Application 12/446,610 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. 7 Appeal 2016-000992 Application 12/446,610 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. 8 Appeal 2016-000992 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”; 9 Appeal 2016-000992 Application 12/446,610 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 10 Appeal 2016-000992 Application 12/446,610 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 11 Appeal 2016-000992 Application 12/446,610 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 12 Appeal 2016-000992 Application 12/446,610 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 13 Appeal 2016-000992 Application 12/446,610 (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.”)). 14 Appeal 2016-000992 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 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 15 Copy with citationCopy as parenthetical citation