Ex Parte Oertling et al

Patent Trial and Appeal Board

Apr 11, 2016

12898893 (P.T.A.B. Apr. 11, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/898,893 10/06/2010
7590 04/12/2016
William E McShane
Connolly Bove Lodge & Hutz LLP
Suite 1100
1875 Eye Street, NW
Washington, DC 20006
FIRST NAMED INVENTOR
Reiko Oertling
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.
15637-00125-US 4706
EXAMINER
WEBB, WALTERE
ART UNIT PAPER NUMBER
1612
MAILDATE DELIVERY MODE
04/12/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte REIKO OERTLING, HUBERT LOGES,
ARNOLD MACHINEK, ULRIKE SIMCHEN, and HORST SURBURG1
Appeal2014-002057
Application 12/898,893
Technology Center 1600
Before DONALD E. ADAMS, MELANIE L. McCOLLUM, and
RICHARD J. SMITH, Administrative Patent Judges.
McCOLLUM, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving a flavoring agent
composition claim. The Examiner has rejected the claim as obvious. We
have jurisdiction under 35 U.S.C. § 6(b). We affirm.
1 Appellants identify the real party in interest as SYMRISE AG (Br. 2).
Appeal2014-002057
Application 12/898,893
STATEMENT OF THE CASE
Claim 24, the only claim on appeal (Br. 2),2 reads as follows:
24. A flavoring agent composition, wherein the flavoring agent
composition comprises:
(a) menthol;
(b) a quantity of menthane carboxylic acid-N-( 4-methoxyphenyl)-
amide (WS-12) sufficient to mask the bitterness of the menthol; and
( c) menthone.
Claim 24 stands rejected under 35 U.S.C. § 103(a) as obvious over
Harvey et al. (US 2007/0148283 Al, June 28, 2007) (Ans. 2).
The Examiner finds that Harvey "teaches compositions having a
sensation substantially similar to that provided by menthol" and that the
"compositions may or may not comprise menthol" (id.). The Examiner also
finds that Harvey "teaches, 'Using menthol in combination with one or more
physiological cooling agents provides optimal cooling with unwanted flavor
characteristics. Adding the physiological cooling agent provides an
unexpected, high-flavor impact where the harsh notes have been reduced or
eliminated'" (id. at 2-3 (quoting Harvey i-f 83)). In addition, the Examiner
finds that Harvey teaches that "[p]referred cooling agents include WS-12"
and "that the 'minty taste' is provided by menthone" (id. at 3).
The Examiner also refers to "Cooling composition D, comprising
menthone, WS-14, and menthol" (id.). The Examiner concludes that it
"would have been reasonable to substitute WS-14, with WS-12 as a
preferred cooling agent" (id.). The Examiner also concludes that it would
2 Claims 27 and 29--43 are also pending but have been withdrawn from
consideration (Br. 2).
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Application 12/898,893
have been obvious "to have selected a composition comprising menthol,
WS-12 and menthone as claimed given the plain enumeration of each in the
prior art" (id.).
FINDINGS OF FACT
1. Harvey "relates to a composition and products for oral or skin
delivery such as chewing gums and confectioneries[, t]he composition and
products ... including agents that in combination provide substantially the
same physiological sensation as that provided by menthol alone" (Harvey 1:
iT 2).
2. Harvey states that "very strong flavors such as menthol have
often been used to provide a burst of flavor," but that, "at concentrations
effective to provide a burst of flavor, menthol ... also manifest[ s] a bitter,
harsh, burning taste sometimes described as a 'harsh note'" (id. at 1: iT 9).
3. Harvey discloses: "Cooling flavor compositions that provide
the desired cooling sensation but not the unwanted harshness and flavor
characteristics of menthol are provided. The cooling flavor compositions
replace some or all of the peppermint oil and menthol presently used to
create a cooling." (Id. at 2-3: iT 37 (emphasis added).)
4. Harvey also discloses:
The compositions take advantage of the characteristic "nasal
action,""aroma,""cooling effect," and "minty taste," imparted by
naturally occurring menthol as present in, for example,
peppermint oil. Various compounds may be used in combination
in varying amounts to achieve such a result so long as the
physiological effect imparted is substantially the same as
naturally occurring menthol. In some embodiments, the "nasal
action" is provided by one or more of menthone, isomenthone,
camphor and eucalyptol. In some embodiments, the "aroma" is
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Application 12/898,893
provided by one or more of eucalyptol, camphor, menthone and
isomenthone. In some embodiments, the "cooling effect" is
provided by one or more of isopulegol, monomenthyl succinate,
and menthyl lactate. In some embodiments, the "minty taste" is
provided by one or more of menthone ....
(Id. at 3: i-f 38 (emphasis added).)
5. In addition, Harvey discloses that the "compositions may
include one or more cooling agents in addition to those that are chosen to
impart a substantial menthol sensation" (id. at 3: i-f 40).
6. Harvey also discloses: "Preferred cooling agents may include,
for example, 3-(1-menthoxy)propane-l,2-diol, 3-(1-menthoxy)-2-methyl-
propane-l,2-diol, p-menthane-3,8-diol, 3-(1-menthoxy)ethan-1-ol,
3-(1-menthoxy)propan-1-ol, and 3-(1-menthoxy)butan-1-ol. Still preferred
are 3-(1-menthoxy)propane-l, 2-diol and 3-(1-menthoxy)-2-methylpropane-
1,2-diol, WS-3, WS-12, WS-14, and WS-23." (Id. at 4: i-f 61.)
7. In addition, Harvey discloses: "Using menthol in combination
with one or more physiological cooling agents provides optimal cooling
without unwanted flavor characteristics. Adding the physiological cooling
agent provides an unexpected, high-flavor impact where the harsh notes
have been reduced or eliminated." (Id. at 5: i-f 83.)
8. Harvey also discloses:
Some compositions that provide an especially similar
physiological sensation as that provided by menthol feature
menthone in an amount of about 10 to about 22 wt. % ... [and]
WS-14 in an amount of about 9 to about 19 wt. % . . . .
Optionally, WS-3 may be present in an amount of about 10 to
about 22 wt. % ... and menthol may be present in an amount of
about 4 to about 5 wt.%.
(Id. at 6: i-f 93.)
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Application 12/898,893
9. In particular, Harvey discloses Cooling Composition D, which
contains 11.71 wt.% WS-3, 9.76 wt.% Menthone, 9.76 wt.% WS-14, and
4.87 wt.% Menthol (id. at 15: Table 2).
10. In Example 2, the Specification describes an embodiment in
which the "proportion of ... WS-12 ... in the 1st preparation of
Example 1.2 was replaced by menthane-3-carboxylic acid-N-ethyl amide
(WS-3)" (Spec. 32: 17-19).
11. The Specification states:
In the case of the toothpaste with the flavoring agent composition
containing ... WS-3 ... , the bitter perception was hardly
reduced, whereas in the case of the toothpaste containing the
flavoring agent composition with ... WS-12 ... , the bitter
perception was significantly reduced. In addition the toothpaste
with ... WS-12 ... was perceived as aromatically more
harmonic, rounder and fuller. This impression was supported by
the comparatively long-lasting sensation of freshness which was
triggered by the use of ... WS-12 ... [, which] can be seen
immediately from Figure 1.
(Id. at 32: 28 to 33: 20.)
12. The Specification also discloses:
In a teeth cleaning compound according to the invention, the task
of component c) of the flavoring agent composition[, that is, one
or more further flavoring agents that have a log-Kow value in the
range of 1.5 - 5, such as menthone,] is to solubilize the quantity
of WS-12 in the teeth cleaning compound necessary for masking
bitterness, thereby making it available for the purposes of
masking bitterness.
(Id. at 11: 20-23, 4: 21-22, & 12: 12-14.)
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Application 12/898,893
PRINCIPLES OF LAW
"If a prima facie case is made in the first instance, and if the applicant
comes forward with reasonable rebuttal, whether buttressed by experiment,
prior art references, or argument, the entire merits of the matter are to be
reweighed." In re Hedges, 783 F.2d 1038, 1039 (Fed. Cir. 1986).
"Evidence of secondary considerations, including evidence of unexpected
results ... , [is] but a part of the 'totality of the evidence' that is used to
reach the ultimate conclusion of obviousness .... The existence of such
evidence ... does not control the obviousness determination." Richardson-
Vicks Inc. v. Upjohn Co., 122 F.3d 1476, 1483 (Fed. Cir. 1997).
ANALYSIS
Harvey discloses a composition comprising menthol and menthone
(Findings of Fact (FF) 3--4). Harvey also discloses that the "compositions
may include one or more cooling agents" (FF 5). As the cooling agent,
Harvey discloses, among others, WS-3, WS-12, and WS-14 (FF 6). In
addition, Harvey exemplifies a composition containing 11. 71 wt. % WS-3,
9.76 wt.% Menthone, 9.76 wt.% WS-14, and 4.87 wt.% Menthol (FF 9).
We agree with the Examiner that it would have been prima facie obvious to
replace the WS-14 (and/or the WS-3) in this composition with WS-12.
With regard to the claimed amount ofWS-12, Harvey discloses that
menthol manifests a "harsh note" (FF 2). In addition, Harvey discloses that
"[a]dding the physiological cooling agent provides an unexpected, high-
flavor impact where the harsh notes have been reduced or eliminated"
(FF 7). Thus, we conclude that it would have been obvious to include an
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Application 12/898,893
amount of cooling agent, such as WS-12, sufficient to reduce or eliminate
the harsh notes associated with menthol.
Appellants argue, however, that they "discovered that menthone ...
unexpectedly improves the solubility of WS-12 so that sufficient amounts
can be used to mask the bitterness of menthol" (Br. 8). We are not
persuaded.
As noted by the Examiner, "the instant specification states that
solubility becomes an issue in a teeth cleaning compound" (Ans. 4 (citing
Spec. 11: 20-23 (FF 12))). However, claim 24 is directed to a flavoring
agent composition, not a teeth cleaning compound. Thus, to the extent that
Appellants have provided evidence that menthone "unexpectedly improves
the solubility ofWS-12" (Br. 8), which Appellants do not clearly point to,
Appellants do not adequately explain why such evidence would be
commensurate in scope with claim 24.
Appellants also argue that "[m]asking bitterness to increase the
amount of menthol useable in compositions (as applicants have done) runs
contrary to the teachings of Harvey and frustrate its attempt to eliminate
and/or replace menthol with alternative cooling agents" (Br. 8). We are not
persuaded.
As noted by the Examiner, claim 24 does not require any specific
amount of menthol (Ans. 5). In addition, Harvey clearly discloses including
menthol (FF 3 & 8). Harvey also discloses that "[u]sing menthol in
combination with one or more physiological cooling agents provides optimal
cooling without unwanted flavor characteristics" (FF 7). In addition, Harvey
exemplifies a composition comprising both menthol and cooling agents
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Application 12/898,893
(FF 9 & 6). Thus, we agree with the Examiner that including a cooling
agent, such as WS-12, along with menthol does not run contrary to the
teachings of Harvey (Ans. 4--5).
In addition, Appellants argue that the "rejection is ... improper based
on [Appellants'] evidence of unexpected results," specifically Examples 1.2
and 2 in the present Specification (Br. 8-10). We are not persuaded.
With regard to Example 1.2, we note that Appellants do not explain
why this comparison would be considered a comparison to the applied art,
which includes cooling agent(s), specifically WS-3 and WS-14 (FF 6 & 9).
In addition, Appellants do not provide sufficient evidence that the result is
unexpected, particularly in view of the disclosure in Harvey that "[a]dding
the physiological cooling agent provides an unexpected, high-flavor impact
where the harsh notes have been reduced or eliminated" (FF 7).
With regard to Example 2, the Specification indicates that the
composition containing WS-12, as compared to WS-3, was better at
reducing "the bitter perception," "was perceived as aromatically more
harmonic, rounder and fuller," and provided a "long[ er ]-lasting sensation of
freshness" (FF 10-11). However, on balance, we do not find this evidence
sufficient to rebut the strong prima facie case of obviousness. In this regard,
we note that Appellants have not pointed to sufficient evidence that it would
have been unexpected that different cooling agents would provide different
results and Appellants have not shown that WS-12 is better than WS-14,
which is also specifically taught by Harvey (FF 9).
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CONCLUSION
The evidence supports the Examiner's conclusion that Harvey
suggests the composition of claim 24. We, therefore, affirm the obviousness
rejection of claim 24.
TIME PERIOD FOR RESPONSE
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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