Ex Parte Letourneau et al

Patent Trial and Appeal BoardAug 29, 2018

12956940 (P.T.A.B. Aug. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/956,940 11/30/2010 134769 7590 08/31/2018 Sterne, Kessler, Goldstein & Fox P.L.L.C. 1100 New York Avenue, N.W. Washington, DC 20005 FIRST NAMED INVENTOR Stephen A. Letourneau 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. 3711.6220000 1259 EXAMINER HEGGESTAD, HELEN F ART UNIT PAPER NUMBER 1793 NOTIFICATION DATE DELIVERY MODE 08/31/2018 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): e-office@sternekessler.com tdurkin @sternekessler.com tspruill@sternekessler.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Exparte STEPHEN A. LETOURNEAU and RASHMI TIW ARI Appeal2017-010552 Application 12/956,940 Technology Center 1700 Before DONNA M. PRAISS, CHRISTOPHER C. KENNEDY, and JENNIFER R. GUPTA, Administrative Patent Judges. GUPTA, Administrative Patent Judge. DECISION ON APPEAL 1 Appellants2 appeal under 35 U.S.C. Â§ 134(a) from the Examiner's decision rejecting claims 8 and 31-36, which constitute all the claims pending in this application. Claims 1-7 and 9-30 have been cancelled. We have jurisdiction under 35 U.S.C. Â§ 6(b). We affirm. 1 In this Decision, we refer to the Specification filed November 30, 2010 ("Spec."), the Non-Final Office Action dated January 9, 2017 ("Non-Final Act."), the Appeal Brief filed April 10, 2017 ("Appeal Br."), the Examiner's Answer dated June 8, 2017 ("Ans."), and the Reply Brief filed August 7, 2017 ("Reply Br."). 2 Appellants identify the real party in interest as Tropicana Products, Inc. Appeal Br. 3. Appeal2017-010552 Application 12/956,940 The subject matter of the claims on appeal relates to juice beverages. Claim 8, reproduced below from the Claims Appendix of the Appeal Brief, is illustrative of the claims on appeal. 8. A juice beverage comprising: at least one liquid derived from one or more fruits, one or more vegetables, or combinations thereof, wherein the at least one liquid comprises clarified carrot concentrate, tomato water, grapefruit serum, coconut water, cucumber serum, or combinations thereof; and solids derived from one or more fruits, one or more vegetables, or combinations thereof, wherein the solids are derived from one or more fruits or one or more vegetables distinct from the one or more fruits and one or more vegetables from which the at least one liquid is derived, wherein the taste of the beverage is identifiable as at least the one or more fruits or one or more vegetables from which the solids are derived, as determined by a sensory panel of trained testers; and wherein the appearance of the beverage is identifiable as a juice of at least the fruits or vegetables from which the at least one liquid is derived as determined by a sensory panel of trained testers; wherein the beverage meets the standard of identity, as set by the U.S. Food and Drug Administration, of a 100% juice; and wherein the beverage comprises less than 100 calories per 8 ounce serving. Appeal Br. 16 (Claims App.). 2 Appeal2017-010552 Application 12/956,940 REJECTIONS The Examiner maintains the following rejections on appeal: Rejection 1: Claims 8 and 31-36 under 35 U.S.C. Â§ 112 (pre-AIA), second paragraph, as indefinite (Non-Final Act. 3--4; Ans. 2-3); and Rejection 2: Claims 8 and 31-36 under 35 U.S.C. Â§ 103(a) as unpatentable over Chen et al. (US 5,756,141, issued May 26, 1998) ("Chen") in view of Johnson (US 2,115,815, issued May 3, 1938) (Non- Final Act. 6; Ans. 5). DISCUSSION Rejection 1 The Examiner finds that claim 8 is indefinite for use of the phrase "wherein the taste of the beverage is identifiable as at least the one or more fruits or vegetables from which the solids are derived, as determined by a sensory panel" because "the taste could be subjective, and could vary from panel to panel, and these findings would not be readily available to the public, so that they would know the metes and bounds of the claims." Non- Final Act. 4. The Examiner also finds that claim 8 is indefinite for use of the phrase "where the appearance of the beverage is identifiable as a juice of at least the fruits or vegetables from which the at least one liquid is device," because "[i]t is not clear from the claim what one would consider to be the 'appearance of the beverage,"' and " [ n] o measurements have been included in order to compare such to the prior art. . . . . Therefore, one does not know the metes and bounds of the claims." Non-Final Act. 5. 3 Appeal2017-010552 Application 12/956,940 Appellants argue that the Declaration under 37 C.F.R. Â§ 1.132 executed by Rashmi Tiwari on April 18, 2016, demonstrates that taste panels are well known in the art and that such taste panels can taste and measure the appearance of the beverage, and thus one of ordinary skill in the art would readily be able to determine, by relying on sensory panel measurements, whether a particular beverage meets the requirements of claim 8. Appeal Br. 7-9; Deel. ,r,r 9-11. In the present case, the taste and appearance of a beverage, even if determined by a panel of trained testers that is well known and typically used in the art, implicates a person's taste and/or subjective opinion, and would necessarily vary from panel to panel. Claim language whose meaning depends entirely on personal taste or a person's subjective opinion without any guidance provided in the claim language or written description is indefinite. See Application of Musgrave, 431 F.2d 882, 893 (1970) (noting that "[a] step requiring the exercise of subjective judgment without restriction might be objectionable as rendering a claim indefinite"); Sonix Tech. Co. v. Publ'ns Int'!, Ltd., 844 F.3d 1370, 1377-78 (Fed. Cir. 2017); see also, e.g., Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1371-72 (Fed. Cir. 2014) (holding the claim phrase "unobstructive manner" indefinite because the phrase was "purely subjective," and the specification failed "to provide the clarity that the subject claim language needs."); Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1350-52 (Fed. Cir. 2005) (holding the claim term "aesthetically pleasing," which "is completely dependent on a person's subjective opinion," indefinite because, even though the preferred embodiment provided "examples of aesthetic features of screen displays that 4 Appeal2017-010552 Application 12/956,940 can be controlled by the authoring system," the specification did not indicate "what selection of these features would be 'aesthetically pleasing'"). Appellants' Specification and claims fail to provide sufficient guidance or an objective standard for identifying the metes and bounds of the claims-when the taste of the beverage is or is not identifiable as a fruit or vegetable from which the beverage solids are derived, and the appearance of the beverage is or is not identifiable as a fruit or vegetable from which the beverage liquid is derived. Thus, we are not persuaded that the Examiner erred reversibly in rejecting claim 8 and 31-36 as indefinite. Rejection 2 The Examiner finds that Chen discloses an ultrafiltration process for producing a juice product containing a permeate ( clarified juice/ serum) and retentate (solid/pulp). Non-Final Act. 6; Chen Abstract, 7:49---60, 11:5-50. The Examiner finds that Chen discloses that its juice beverage may be derived from blending grapefruit juice (serum) 3 and banana juice. Non- Final Act. 6; Chen 11 :45-50. The Examiner finds that Chen discloses that the solids of its beverage can be derived from grapefruit and mixed with banana juice to reduce the bitter flavor of the grapefruit retentate (pulp). Non-Final Act. 6-7; Chen 10:53-55, 11:45-56, 12:7-11. The Examiner also finds that Chen discloses that its ultrafiltration membrane can be selected to pass flavor and aroma components to either the permeate or retentate. Non- Final Act. 7 (citing Chen 7:49-70). Based on Chen's disclosure, the Examiner finds that Chen teaches that its beverage tastes like at least one 3 Appellants do not dispute that grapefruit juice is grapefruit serum. See Appeal Br. generally. 5 Appeal2017-010552 Application 12/956,940 fruit of its solid components, and its beverage looks like at least one fruit of its liquid components. Non-Final Act. 7-8; see also Chen 2:46-55, 11: 11- 16. Appellants argue that Chen does not teach that its beverage would taste like the juice of its solid component, but look like the juice of its liquid component. Appeal Br. 10-11. Appellants' argument is not persuasive. As discussed above, although not expressly stated, Chen teaches that its beverage would taste like its solid component (grapefruit), and look like the juice of its liquid component (banana/grapefruit juice). Chen 4:46-55 ( describing its objective as producing a better tasting grapefruit juice that has a desirable natural fruit skin color); see also Chen 7:61---63, 11: 11-16 (describing the clarified banana/grapefruit juice as having a yellow color). Appellants' argument that Chen teaches the opposite of what is claimed by teaching that its beverage taste is masked using its liquid component, and thus, not identifiable as the solid component is not well- taken. Appeal Br. 11. Chen teaches that the grapefruit retentate has a slightly bitter flavor that can be overcome by adding clear banana juice. Chen 12:7-10. Overcoming bitterness does not mean that the juice would no longer taste like grapefruit juice. Rather, the sweet banana juice is added in Chen to provide a better tasting grapefruit juice (Chen 4:47-50), i.e., without a bitter aftertaste (id. at 4:23-30). Appellants also argue that Johnson does not remedy the deficiencies of Chen. As discussed above, we do not find any deficiencies in the Examiner's findings regarding Chen. Moreover, the Examiner relies on Johnson to reinforce the teachings in Chen. Ans. 16. 6 Appeal2017-010552 Application 12/956,940 We have carefully considered Appellants' arguments, but find them unpersuasive. Because Appellants have failed to identify harmful error, we sustain the Examiner's rejection of claims 8 and 31-36 over Chen in view of Johnson. DECISION For the above reasons, the rejections of claims 8 and 31-36 are affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l)(iv). AFFIRMED 7