Ex Parte Oki et al

Patent Trials and Appeals BoardApr 15, 2019

14241357 - (D) (P.T.A.B. Apr. 15, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/241,357 02/26/2014 134795 7590 04/17/2019 MICHAEL BEST & FRIEDRICH LLP (DC) 100 E WISCONSIN A VENUE Suite 3300 MILWAUKEE, WI 53202 FIRST NAMED INVENTOR Shiho Oki 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. 880240-0012-usoo 2499 EXAMINER DEES, NIKKI H ART UNIT PAPER NUMBER 1791 NOTIFICATION DATE DELIVERY MODE 04/17/2019 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): DCipdocket@michaelbest.com sbj ames@michaelbest.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte SHIRO OKI and MASAKI SAKIMOTO Appeal2018-003783 Application 14/241,357 Technology Center 1700 Before LINDA M. GAUDETTE, JAMES C. HOUSEL, and GRACE KARAFFA OBERMANN, Administrative Patent Judges. OBERMANN, Administrative Patent Judge. DECISION ON APPEAL Appellants 1 seek relief from the Examiner's final rejection of claims 1-3 and 5-7 under 35 U.S.C. Â§ 103(a). Appeal Br. 6-12. We have jurisdiction under 35 U.S.C. Â§ 6(b). We AFFIRM. 1 Appellants identify Mitsubishi Shoji Foodtech Co., Ltd. as the real party in interest. Appeal Br. 3. Appeal2018-003783 Application 14/241,357 STATEMENT OF THE CASE Appellants describe their invention as relating to a sweetener having a sucrose-like sweet taste quality. Spec. ,r 1. According to Appellants, there has been a defect in sucrose-free or low saccharide sweets in that their taste quality is rather plain as compared to those using sucrose. Id. ,r 5. Appellants assert that they have found a new sweetener having a sweet taste quality equivalent to or better than sucrose, which can be obtained by blending a yeast extract to one or more of sugar alcohols and intense sweeteners. Id. ,r 8. Claim 1 is illustrative of the subject matter and is reproduced below: A sweetener having sucrose-like sweet taste quality, comprising a sugar alcohol and a yeast extract; the sugar-alcohol is at least one selected from the group consisting of maltitol, xylitol, sorbitol, mannitol, lactitol, hydrogenated isomaltulose, hydrogenated starch hydrolysate; and the yeast extract comprises sodium chloride of 7% or less, nucleic acids of 17% or less, and free amino acids of 3% or less based on the weight of the yeast extract, wherein a weight ratio of the yeast extract to the sugar alcohol is about 0.001---0.005 to 1. Appeal Br., Claims Appendix, 13. 2 Appeal2018-003783 Application 14/241,357 OPINION The Examiner rejects claims 1-3 and 5-7 as obvious over Saito et al. 2 Final Action 3--43â€¢ Appellants argue claims 1-3 and 5-7 as a group. Appeal Br. 6-12. We select claim 1 as representative of the group. See 37 C.F.R. Â§ 4I.37(c)(l)(iv). Appellants argue that the Examiner has not shown that the claimed weight ratio range of 0.001---0.005 is primafacie obvious over the ratio of 0.00001---0.01 that is disclosed in Saito. Appeal Br. 7-8. Appellants assert that Saito' s disclosed range extends across three orders of magnitude, whereas Appellants' claimed range spans only within one order of magnitude. Id. at 8. Appellants state that these facts are analogous to Genetics Institute, LLC v. Novartis Vaccines & Diagnostics, Inc., where our reviewing court held that claims drawn in terms broad enough to encompass 68,000 protein variants "present[ed] a case where the 'disclosed range is so broad as to encompass a very large number of possible distinct compositions' thus 'requir[ing] nonobvious invention."' 655 F.3d 1291, 1306 (Fed. Cir. 2011) (second alteration in original) (quoting In re Peterson, 315 F.3d 1325, 1330 n.1 (Fed. Cir. 2003)); Appeal Br. 8. We disagree that claim 1 is analogous to Genetics because, in contrast to the 68,000 protein variants in Genetics, this case involves one composition having two ingredients-sugar alcohol and yeast extract. Although the weight ratio range in Saito spans three orders of magnitude, the 2 US 2003/0152684 Al (published Aug. 14, 2003). 3 We refer to the Specification filed Feb. 26, 2014 ("Spec."); Final Office Action mailed Jun. 27, 2017 ("Final Action"); Examiner's Answer mailed Dec. 27, 2017 ("Answer"); and the Reply Brief, filed Feb. 26, 2019 ("Reply Br."). 3 Appeal2018-003783 Application 14/241,357 claim defines a precise endpoint, without unacceptable breadth, as the range spans only over a length of approximately 1 %. See Saito ,r 12 (disclosing a range of 0.001 to 1 wt. % ). Appellants' attempt to distinguish In re Peterson is not persuasive because the range in Saito ( which spans a length of about 1 %) is of even narrower length than the prior art ranges in Peterson. See Appeal Br. 8; see also In re Peterson, 315 F.3d 1325, 1328-30 (Fed. Cir. 2003) (affirming determination that claimed composition was prima facie obvious over prior art ranges spanning lengths of 7% (i.e., Oo/o-7%) and 15% (i.e., 3o/o-18%) notwithstanding the appellants' argument that the prior art "defines very broad ranges" of Oo/o-7% and 3o/o-18%). Next, Appellants argue that, even if the Examiner presents a prim a facie case of obviousness, Appellants have advanced sufficient rebuttal evidence of unexpected results. Appeal Br. 8-12. Appellants rely on a Declaration Under 37 C.F.R. Â§ 1.132, filed June 13, 2017, which compares four different compositions encompassed by claim 1 to four other compositions characterized by a 0.0001 to 1 weight ratio of yeast extract to sugar alcohol (which is the weight ratio taught in Example 14 of Saito). Deel. ,r 4. From those comparisons, the Declaration concludes that Appellants' compositions unexpectedly exhibit a higher degree of similarity to foods using sucrose, as compared to foods using the amounts of yeast extract taught in Saito. Id. at ,r 5. As the Examiner explains, however, where "claim 1 claims 7 sugar alcohols and combinations thereof," the Declaration is not commensurate in scope with claim 1. Answer 7. In the Reply Brief, Appellants confirm that two of the claimed sugar alcohols-maltitol and hydrogenated starch hydrolysate-were tested (Reply Br. 5), but provide no argument or 4 Appeal2018-003783 Application 14/241,357 evidence from which we reasonably can conclude that the other claimed sugar alcohols and combinations thereof would behave in the same or a similar manner. Accordingly, Appellants fail to establish error in the Examiner's conclusion that the Declaration-which provides test data for only two of the seven sugar alcohols and combinations thereof recited in claim I-is not commensurate in scope with claim 1. Further, the Examiner explains, "[ s ]imply showing that one point within the claimed range is 'better' than one other point outside the claimed range ... is not convincing of unexpected results arising from the claimed ratio." Answer 8. Although the Declaration actually provides test data for two weight ratio data points within the claimed range (i.e., 0.0012 to 1 and 0.0025 to 1) (Deel. ,r 4.c, i, p, v), we nevertheless still agree with the Examiner's position that the test data relied on in the Declaration is insufficient to show unexpected results over the entire claimed range- specifically, the values above 0.0025 to 1, up to 0.005 to 1. See Peterson, 315 F.3d at 1331 ("data ... d[id] not evidence unexpected results for the entire claimed range" where there was no data to show that "the uppermost portion of the claimed range ... would lead to unexpected results"). Moreover, as the Examiner indicates, the only point of comparison in the Declaration of the comparative sample was 0.0001: 1 (Answer 8), which is insufficient to demonstrate that the claimed range is critical, especially because there is no point of comparison to samples with a weight ratio above 0.005 to 1. See In re Hill, 284 F .2d 955, 959 (CCP A 1960) ( explaining that a sufficient number of tests outside of the claimed range should have been presented to show criticality of the claimed range). 5 Appeal2018-003783 Application 14/241,357 In the Reply Brief, Appellants also dispute the Examiner's finding that both Saito and Appellants' invention combine yeast and sugar alcohol for the same purpose. Reply Br. 3. Appellants assert that the Examiner's allegation is erroneous in regard to Saito teaching of "[a] sweetener having sucrose-like sweet taste quality." Id. at 3--4. According to Appellants, the purpose of Saito is to provide a sweetness improving agent that improves sweetness properties, not a sucrose-like sweet taste quality. Id. Appellants' argument is not persuasive because Appellants narrowly focus on the "sweetness improving agent" of Saito in arguing that "the sweetness improving agent of Saito is intended to have a sweet taste quality that is different from sucrose" (id. ( emphasis added)), when the Examiner relies on a composition that also includes a sugar alcohol (i.e., sweetener) (Final Action 3; Saito ,r,r 11-13). Moreover, Appellants acknowledge that Saito teaches "generat[ing] more intense and sharper sweetness." Reply Br. 4. Appellants' position that Saito consequently does not "provide a sweetness that is more similar to sucrose" is inconsistent with the Specification's admission that "it is known that sucrose-like taste quality can be obtained by use of an intense sweetener." Spec. ,r 4. ORDER The Examiner's decision to reject claims 1-3 and 5-7 is 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). AFFIRMED 6