Ex Parte Pellaud et al

Patent Trial and Appeal BoardFeb 22, 2019

13836754 (P.T.A.B. Feb. 22, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/836,754 03/15/2013 57600 7590 02/26/2019 HOLLAND & HART 222 South Main Street, Suite 2200 P.O. Box 11583 Salt Lake City, UT 84110 FIRST NAMED INVENTOR Jerome Pellaud 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. 79834.0020 1016 EXAMINER PRAKASH, SUBBALAKSHMI ART UNIT PAPER NUMBER 1793 NOTIFICATION DATE DELIVERY MODE 02/26/2019 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): PA TENTDOCKET@HOLLANDHART.COM PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JEROME PELLAUD, NEERAJ SHARMA, FRANK Z. HELL WIG, WILFRIED LOSSIGNOL, AARON PENN, and PATRICK O'RIORDAN Appeal2018-003539 Application 13/836,754 Technology Center 1700 Before MICHELLE N. ANKENBRAND, JENNIFER R. GUPTA, and LILAN REN, Administrative Patent Judges. REN, Administrative Patent Judge. DECISION ON APPEAL Appeal2018-003539 Application 13/836,754 STATEMENT OF THE CASE Appellants 1 appeal under 35 U.S.C. Â§ 134(a) from a rejection2 of claims 1--4, 6-18, and 22-26. We have jurisdiction under 35 U.S.C. Â§ 6(b). We affirm. CLAIMED SUBJECT MATTER The claims are directed to a method for decarbonating fermented liquids, such as beer and other similar malt-based beverages. Spec. ,r 10. 3 Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A method of decarbonating fermented liquids in-line, the method comprising: directing a carbonated cereal-based liquid through a nozzle; directing the carbonated cereal-based liquid from the nozzle into a space; and maintaining the carbonated cereal-based liquid in the space until substantially all of the carbon dioxide dissolved within the carbonated cereal-based liquid has been removed to form a non-carbonated still base liquid; and packaging the non-carbonated still base liquid into an end-consumer package that is sold directly to an end consumer. Claims Appendix (Br. 14). 1 The real party in interest is identified as "Anheuser-Busch, LLC." Appeal Brief of January 27, 2017 ("App. Br."), 2. 2 Final Office Action of June 16, 2016 ("Final Act."). In this opinion, we also refer to the Examiner's Answer of May 1 7, 2017 ("Ans.") and the Reply Brief of July 17, 2017 ("Reply Br."). 3 Method for Decarbonating Fermented Liquids, Application No. 13/836,754 ("Spec."). 2 Appeal2018-003539 Application 13/836,754 REFERENCES The Examiner relied upon the following prior art references in rejecting the claims on appeal: Schneible us 1, 832,587 Nov. 17, 1931 (Filed July 30, 1926) Koch US 2007/0248719 Al Oct. 25, 2007 REJECTIONS 4 Claims 1--4, 6, 8-18, and 22-26 are rejected under pre-AIA 35 U.S.C. Â§ I03(a) as being unpatentable over Schneible in view of Koch. Final Act. 2. OPINION Appellants argue that the Examiner reversibly erred in rejecting claim 15 because Schneible "teaches away from packaging a non-carbonated still base liquid," and combining Schneible with Koch would impermissibly alter Schneible's principle of operation. App. Br. 7, 9. More specifically, without disputing the Examiner's finding that the combined prior art meets all the process steps recited in claim 1 ( compare id. at6-11, with Final Act. 2-3), Appellants argue that Schneible describes "the steps of decarbonating, 4 Claim 7, dependent from claim 1, is rejected under pre-AIA 35 U.S.C. Â§ I03(a) as being unpatentable over Schneible in view of Koch and an additional reference. Final Act. 8. Appellants do not present separate arguments for claim 7. App. Br. 12. Claim 7, therefore, stands or falls with claim 1. 37 C.F.R. Â§ 4I.37(c)(l)(iv) (2013). 5 Appellants do not present separate arguments for independent claim 22 or dependent claims 2--4, 6, 8-18, and 23-26. App. Br. 12. Those claims, therefore, stand or fall with claim 1. 37 C.F.R. Â§ 4I.37(c)(l)(iv) (2013). 3 Appeal2018-003539 Application 13/836,754 dealcoholizing, and recarbonating," which "are all performed as part of a single inline process." App. Br. 6-7. According to Appellants, Koch's teaching of decarbonating beverages prior to packaging is "incompatible with" that of Schneible which does not teach storing the beverage in decarbonated form. Id. The test for obviousness is not whether the entire features of one reference may be bodily incorporated into those of another reference. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. In re Keller, 642 F.2d 414, 425 (CCPA 1981); In re Young, 927 F.2d 588,591 (Fed. Cir. 1991). In this case, although Schneible describes a process involving both decarbonating and recarbonating, the process occurs in distinct stages with the corresponding equipment. For example, Schneible describes that "the beer is substantially decarbonated" in decarbonating chamber 3 and subsequently recarbonated in brine cooler 5. Scheible 2:29-30, 70-74. A skilled artisan, who is "also a person of ordinary creativity, not an automaton," KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,421 (2007), would have understood that decarbonating is a separate and distinct processing stage which may be followed by- but does not require - the subsequent recarbonating stage. Appellants' argument, directed to the recarbonating portion of Schneible' s process, does not sufficiently explain why it would have been beyond the capability of the skilled artisan to implement the known techniques to decarbonate the intermediate product. See KSR, 550 U.S. at 417 (providing that "if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would 4 Appeal2018-003539 Application 13/836,754 improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill"). Moreover, Appellants have not identified any particular principle that would be changed by combining Schneible's decarbonating techniques with Koch's teaching of packaging the decarbonated intermediate beer product. Appellants' argument that "modifying Schneible' s method to remove the recarbonation step would significantly change the principles of the Schneible dealcoholizing process" (App. Br. 9) is not persuasive because the obviousness rejection is based on the known decarbonating techniques and not based on the removal of the recarbonation step from Schneible's process. We emphasize that open-ended claim 1 only requires the recited decarbonating and packaging steps and does not preclude additional processing steps before and after. 6 We observe that rather than "remov[ing]" the recarbonating equipment from Schneible's process argued by Appellants (id.), a skilled artisan, given Koch's teaching to package the decarbonated intermediate beer product, would have known to collect such an intermediate product from the prior art process after the recited decarbonating steps. We further note that Koch also expressly provides that decarbonating techniques are known. See Koch ,r 14 (providing various examples of decarbonation processes). Appellants' argument that the end product of Schneible is a carbonated beverage is also unpersuasive because 6 For example, the specification expressly provides: "The base liquid may then be shipped and sold to consumers, where it may be ... carbonated to provide a personalized beverage." Spec. ,r 45. 5 Appeal2018-003539 Application 13/836,754 open-ended claim 1 does not preclude producing a carbonated product from a decarbonated intermediate. 7 We are also not persuaded that Schneible' s silence regarding any possible packaging of an intermediate product as recited in claim 1 is a teaching away. 8 Appellants' argument that Schneible teaches carbonating the beverage and subsequently packaging the carbonated beverage in a pressurized container (Rely Br. 2, 4)9 is not persuasive of patentability because open-ended claim 1 does not preclude any such packaging of a carbonated beverage - for example, subsequent to the recited process steps. Given the prior art teaching as a whole, Appellants have not sufficiently explained, with evidentiary support, why Schneible' s silence serves to "criticize, discredit, or otherwise discourage" the packaging of an intermediate product. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Thus, we are in accord with the Examiner that combining Schneible' s teachings for decarbonating with those of Koch for packaging a 7 We again point out that the specification expressly provides: "The base liquid may then be shipped and sold to consumers, where it may be ... carbonated to provide a personalized beverage." Spec. ,r 45. 8 We note that the claim language "that is sold directly to an end consumer" is not a process step but is instead a modifier of the recited "an end-consumer package." Should prosecution continue, an inquiry into the scope of "an end consumer" and "an end-consumer package" (and any distinction between an "end consumer" and a "consumer" which are both used in the specification) may be considered. Cf App. Br. 4 (citing Spec. ,r,r 8, 54, 61, and 104 for the process step "packaging the non-carbonated still base liquid into an end-consumer package that is sold directly to an end consumer"). 9 The Reply Brief is not paginated and we, therefore, apply our own pagination. 6 Appeal2018-003539 Application 13/836,754 decarbonated intermediate product would have led the one of ordinary skill in the art to the process recited in claim 1. Appellant's citation to Ashland Oil Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281 (Fed. Cir. 1985) does not persuade us otherwise. The Ashland Oil court found that the "district court did not point to any teachings or suggestions in either reference which would have led one skilled in the art to perceive an advantage to be derived from their combination." Id. at 301. In this case, however, Koch undisputedly describes "producing an at least CO2-sparse, in particular CO2-free, beer intermediate" which can be packaged, stored, and transported. Koch ,r,r 21, 22 (cited in Final Act. 3). Koch also provides that decarbonation techniques were known. Id. ,r 14. The Ashland Oil court also found that the prior art reference "Rothrock taught that his process could not be practiced using an alkali earth metallic hydroxide catalyst," whereas the prior art "Japanese Patent required such a catalyst." Ashland Oil, 776 F.2d at 301. As analyzed supra, the evidence in this case shows that Schneible is silent with regard to any possible packaging of the intermediate product, but that Koch expressly describes packaging such an intermediate product. The undisputed prior art teachings in this case show that claim 1 is a "combination of familiar elements according to known methods" which "does no more than yield predictable results." KSR, 550 U.S. at 416. We agree with the Examiner's conclusion of obviousness as a result. DECISION The Examiner's decision is affirmed. 7 Appeal2018-003539 Application 13/836,754 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). See 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED 8