Ex Parte Roy et al

Patent Trial and Appeal BoardSep 18, 2012

10629759 (P.T.A.B. Sep. 18, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 10/629,759 07/30/2003 Glenn Roy 006943.00107 6813 66811 7590 09/19/2012 BANNER & WITCOFF, LTD. and ATTORNEYS FOR CLIENT NO. 006943 10 SOUTH WACKER DR. SUITE 3000 CHICAGO, IL 60606 EXAMINER STULII, VERA ART UNIT PAPER NUMBER 1781 MAIL DATE DELIVERY MODE 09/19/2012 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 GLENN ROY, ROBIN BERARDI, WENDY CHAN, and THOMAS LEE ____________ Appeal 2011-002645 Application 10/629,759 Technology Center 1700 ____________ Before CHUNG K. PAK, CHARLES F. WARREN, and KAREN M. HASTINGS, Administrative Patent Judges. PAK, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134 from the Examiner's final rejection of claims 1, 3 through 7, 10 through 13, 15 through 21, 24, and 25, all of the claims pending in the above-identified application.1 We have jurisdiction pursuant to 35 U.S.C. § 6. 1 See Appeal Brief (“App. Br.”) filed June 29, 2010, 1; Examiner’s Answer (“Ans.”) filed September 15, 2010, 2; and Reply Brief (“Reply Br.”) filed November 5, 2010, 2. Appeal 2010-002645 Application 10/629,759 2 STATEMENT OF THE CASE The subject matter on appeal is directed to “a food coloring composition comprising a botanically derived color stabilizer and a synthetic color, as well as to a stable synthetic colored beverage containing the same and to a method of preventing color fading by including in said beverage the same.” (See Spec. 1, para. 0001.) The Specification defines the term “botanically derived color stabilizers” as follows: As used herein, "botanical" refers to a material that is or may be tree-, plant-, weed- or herb-derived. As used herein, "botanically derived" refers to a material capable of having been derived from a botanical, as by isolation or extraction; however, "botanically derived" is not limited in this application to materials which actually are isolated or extracted from a botanical, but also includes materials obtained commercially or synthetically. [(Emphasis added.)] [(See Spec. 8, para. 0026.)] The preferred botanically derived color stabilizer, according to page 6, paragraph 0021of the Specification, is said to be: a C6-C3 phenylpropenoic carbonyl compound containing (i) unsaturation and (ii) oxidation at a carbon atom. In certain preferred embodiments, the C6-C3 phenylpropenoic carbonyl compound is selected from rosmarinic acid, chlorogenic acid, cichoric acid, caffeic acid, coumaric acid, cinnamic acid, ferulic acid, sinapic acid, caftaric acid, eichloric acid, echinacoside and combinations thereof and may optionally be provided in the form of an extract of a botanical selected from rosemary extract, green coffee bean extract, blueberry extract, rhododendron extract, sunflower kernel extract, chickory leaf extract, purple coneflower extract, lettuce extract and combinations thereof. In other preferred embodiments, the C6-C3 phenylpropenoic carbonyl compound is selected from cinnamoyl esters, coumarins, chalcones, flavones, chromones, isoflavones, and combinations thereof and may optionally be Appeal 2010-002645 Application 10/629,759 3 provided in the form of an extract of a botanical selected from horse chestnut extract, dandelion extract, eucalyptus extract, stringybark extract, saw palmetto extract, honeysuckle extract, hawthorn extract, noni fruit extract, red clover extract, orange extract, buckwheat extract, chamomile extract and combinations thereof. In other words, both the natural and synthetic color stabilizers are expected to behave in the same or similar manner when they have appropriate chemical structures. The Specification also states, at page 6, paragraph 0020, that: According to certain preferred embodiments of the present invention, the synthetic color is selected from β-Apo-8'- carotenal, canthaxanthin, β-carotene, Citrus Red No. 2, D&C Red No. 28, D&C Yellow No. 10, FD&C Blue No. 1, FD&C Blue No. 2, FD&C Green No. 3, FD&C Red No. 3, FD&C Red No. 40, FD&C Yellow No. 5, FD&C Yellow No. 6, ferrous gluconate, orange B, riboflavin, ultramarine blue, ultramarine green, ultramarine violet and red, and combinations thereof. [(Emphasis added.)] The food coloring composition containing such botanically derived color stabilizer and synthetic color is said to address an important color stability issue in the beverage world. (See Spec. 1 and 5, paras. 0002 and 0016.) As indicated at paragraph 0002 of the Specification: Color stability is an important issue in the beverage world. Both natural and synthetic (or artificial) colors are known to fade, most typically upon exposure to UV light. [(Emphasis added.)] Details of the appealed subject matter are recited in representative claims 1, 20, and 21 which are appended to this opinion. Appeal 2010-002645 Application 10/629,759 4 As evidence of non-patentability of the appealed subject matter, the Examiner relies on the following evidence23: Akihiko et al. (Akihiko) JP 2001323263 Nov. 22, 2001 Taguchi et al. (Taguchi) JP 2002138024 A May 14, 2002 Clarke et al., “Coffee: Related Beverages”, Elsevier Applied Science, Vol. 5, pp. 1, 2, 12, and 16 (1987) (hereinafter referred to as “Clarke4”). Appellants seek review of the following grounds of rejection maintained by the Examiner in the Answer5: (1) Claims 1, 3 through 7, 10, 11, 15 through 17, 19 through 21, 24, and 25 under 35 U.S.C. § 103(a) as unpatentable over the disclosure of Akihiko; 2 Our references to the Japanese patent publications are to the corresponding English translations of record. 3 We decline to consider the prior art references cited at page 3 of the Answer, but not included in the statements of rejection set forth in the Answer. See In re Hoch, 428 F.2d 1341, 1342 n. 3 (CCPA 1970)(“Where a reference is relied on to support a rejection, whether or not in a ‘minor capacity,’ there would appear to be no excuse for not positively including the reference in the statement of the rejection.”). 4 Both the Examiner and Appellants refer to “Clarke” as “COFFEE” in the Answer, the Appeal Brief, and the Reply Brief, respectively. 5 In each ground of rejection, Appellants do not separately argue the individual claims on appeal. (See App. Br. 9-18 and Reply Br. 2-5.) Therefore, for purposes of this appeal, we select claims 1, 12, and 13 as representative of the claims subjected to the three different § 103(a) rejections maintained by the Examiner and decide the propriety of such § 103(a) rejections based on these claims alone consistent with 37 C.F.R. § 41.37(c)(1)(vii). Appeal 2010-002645 Application 10/629,759 5 (2) Claims 12 and 13 under 35 U.S.C. § 103(a) as unpatentable over the combined disclosures of Akihiko and Clarke; and (3) Claim 18 under 35 U.S.C. § 103(a) as unpatentable over the combined disclosures of Akihiko and Taguchi. (See App. Br. 8 and Reply Br. 2.) DISCUSSION I. REJECTION (1) Appellants have not refuted the Examiner’s finding that Akihiko teaches a food coloring composition containing color (pigment) and a coffee bean extract (as a color fading inhibitor) useful for food and beverages (Compare Ans. 4-5 with App. Br. 9-14 and Reply Br. 2-3.) Nor have Appellants refuted the Examiner’s finding that the color (pigment) fading inhibitor taught by Akihiko is a coffee extract that contains the chlorogenic acids recited in claims 1, 20, and 21. (Compare Ans. 5 with App. Br. 9-14 and Reply Br. 2-3; see also Akihiko, paras. 0005 and 0015.) Appellants assert that “Akihicko specifically discloses only natural colorants (emphasis added).” (See, e.g., Reply Br. 2.) Although Appellants do not argue that their synthetic colorants are not known, they contend that Akihiko does not teach or suggest employing such color fading inhibitor with such known synthetic colorants. (See App. Br. 9-14 and Reply Br. 2- 3.) Thus, the dispositive question raised by Appellants and the Examiner is: Has the Examiner reversibly erred in determining that one of ordinary skill in the art reading the disclosure of Akihiko would have been led to employ its coffee extract containing chlorogenic acids as a color fading inhibitor for a known synthetic colorant, such as those recited in claims 1, Appeal 2010-002645 Application 10/629,759 6 20, and 21, within the meaning of 35 U.S.C. § 103(a)? On this record, we answer this question in the negative. As is apparent from paragraph 0001 of Akihiko, its invention lies in discovering a coffee-beans extract as a color fading inhibitor for “various coloring matter, such as . . . riboflavin coloring matter , DEYUNARIERA carotene coloring matter, red yeast coloring matter, and ANATO coloring matter . . .”. Akihiko indicates that its purpose is to provide a “fading inhibitor generally applicable to any coloring matter” since even in regard to natural coloring matters, they have various chemical structures and are discolored or faded by various mechanisms, i.e., “infinite variety of heat, light, etc.,” with their fading prevention not being explainable by the antioxidizing effectiveness. (See paras. 0006-0008.) Given the applicability of the coffee bean extract containing, inter alia, the chlorogenic acids recited in claims 1, 20, and 21 as a color fading inhibitor for various coloring matters, including those having the same or similar chemical structures as synthetic colorants (e.g., riboflavin) and having a fading problem that cannot be solved by the antioxidizing effectiveness, we concur with the Examiner that one of ordinary skill in the art would have been prompted to employ the coffee bean extract containing , inter alia, the chlorogenic acids recited in claims 1, 20, and 21 as a color fading inhibitor for various coloring matters, including the known synthetic colorants recited in claims 1, 20, and 21, motivated by a reasonable expectation of successfully reducing or minimizing the known color fading problem of the known synthetic colorant. Constant v. Advanced Micro- Devices Inc., 848 F.2d 1560, 1570 (Fed. Cir. 1988) (“A statement in a patent Appeal 2010-002645 Application 10/629,759 7 that something is in the prior art is binding on the applicant and patentee for determining anticipation and obviousness.”); In re Nomiya, 509 F.2d 566, 570-71 (CCPA 1975) (The admitted prior art in applicant’s Specification may be used in determining the patentability of a claimed invention.) Accordingly, based on the record established on appeal, including due consideration of the arguments advanced by the Examiner and Appellants, we determine that the preponderance of evidence weighs most heavily in favor of obviousness of the subject matter recited in claims 1, 3 through 7, 10, 11, 15 through 17, 19 through 21, 24, and 25 within the meaning of 35 U.S.C. § 103(a). II. REJECTIONS (2) AND (3) In rejecting claims 12, 13, and 18, the Examiner acknowledges that Akihiko does not teach using botanical extracts other than coffee bean extracts. (See Ans. 7 and 9.) To remedy this deficiency, the Examiner relies on Clarke to teach dandelion root extracts as a substitute for coffee bean extracts or relies on Taguchi to teach chestnut extracts as a substitute for coffee bean extracts in the food coloring composition suggested by Akihiko. (See Ans. 7-9.) On the other hand, Appellants contend that the Examiner has not established that the dandelion root or chestnut extracts taught by Clarke or Taguchi are useful as color fading inhibitors for the food coloring composition suggested by Akihiko. (See App. Br. 14-18 and Reply Br. 3-4.) Thus, the dispositive question raised by Appellants and the Examiner is: Has the Examiner reversibly erred in determining that one of ordinary skill in the art reading the collective teachings of Akihiko and either Clarke or Taguchi would have been led to employ the dandelion root or chestnut Appeal 2010-002645 Application 10/629,759 8 extracts taught by Clarke or Taguchi, in lieu of coffee bean extracts, in the food coloring composition suggested by Akihiko within the meaning of 35 U.S.C. § 103(a)? On this record, we answer this question in the affirmative. As correctly stated by Appellants at pages 14 through 18 of the Appeal Brief, Clarke teaches using its dandelion root as a substitute for coffee to impart coffee-like flavor and aroma and Taguchi teaches using its botanical extracts, including chestnut extracts, as a substitute for coffee extracts to provide a dye colorant for hair. (See also Clarke, pp. 12 and 16 and Taguchi, Abstract.) On this record, the Examiner has not shown that the dandelion root or chestnut extracts taught by Clarke or Taguchi are interchangeable with or equivalent to coffee extracts for the purpose of inhibiting color fading of various colorants, including synthetic colorants. Nor has the Examiner shown that the dandelion root or chestnut extracts taught by Clarke or Taguchi are known to be used together with a synthetic colorant. Accordingly, based on the record established on appeal, including due consideration of the arguments advanced by the Examiner and Appellants, we determine that the Examiner has not established a prima facie case of obviousness regarding the subject matter recited in claims 12, 13, and 18 within the meaning of 35 U.S.C. § 103(a). ORDER Upon consideration of the record, and for the reasons given, it is: Appeal 2010-002645 Application 10/629,759 9 ORDERED that the decision of the Examiner to reject claims1, 3 through 7, 10, 11, 15 through 17, 19 through 21, 24, and 25 under 35 U.S.C. § 103(a) as unpatentable over the disclosure of Akihiko is AFFIRMED; FURTHER ORDERED that the decision of the Examiner to reject claims 12 and 13 under 35 U.S.C. § 103(a) as unpatentable over the combined disclosures of Akihiko and Clarke is REVERSED; FURTHER ORDERED that the decision of the Examiner to reject claim 18 under 35 U.S.C. § 103(a) as unpatentable over the combined disclosures of Akihiko and Taguchi is REVERSED; and FURTHER ORDERED that no time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED-IN-PART cam Appeal 2010-002645 Application 10/629,759 10 APPENDED CLAIMS 1. A food coloring composition comprising: (a) a synthetic color selected from the group consisting of Citrus Red No. 2, D&C Red No. 28, D&C Yellow No. 10, FD&C Blue No. 1, FD&C Blue No. 2, FD&C Green No. 3, FD&C Red No. 3, FD&C Red No. 40, FD&C Yellow No. 5, FD&C Yellow No. 6, ferrous gluconate, orange B, ultramarine blue, ultramarine green, ultramarine violet, ultramarine red and combinations thereof: and (b) a botanically derived color stabilizer containing a C6-C3 phenylpropenoic carbonyl structure therein represented by a formula selected from the group consisting of said botanically derived color stabilizer is selected from the group consisting of rosmarinic acid, chlorogenic acid, cichoric acid, caffeic acid, coumarins, coumaric acid, cinnamoyl esters, cinnamic acid, chalcones, flavones, chromones, isoflavones, ferulic acid, sinapic acid, caftaric acid, eichloric acid, echinacoside and combinations thereof. Appeal 2010-002645 Application 10/629,759 11 20. A method of preventing color fading in a synthetically colored beverage comprising the step of including in said beverage (a) a synthetic color selected from the group consisting of Citrus Red No. 2, D&C Red No. 28, D&C Yellow No. 10, FD&C Blue No. 1, FD&C Blue No. 2, FD&C Green No. 3, FD&C Red No. 3, FD&C Red No. 40, FD&C Yellow No. 5, FD&C Yellow No. 6, ferrous gluconate orange B, ultramarine blue, ultramarine green, ultramarine violet, ultramarine red and combinations thereof; and (b) a color stabilizing amount of a botanically derived color stabilizer containing a C6-C3 phenylpropenoic carbonyl structure therein represented by a formula selected from the group consisting of said botanically derived color stabilizer is selected from the group consisting of rosmarinic acid, chlorogenic acid, cichoric acid, caffeic acid, coumarins, cournaric acid, cinnamoyl esters, cinnamic acid, chalcones, flavones, chromones, isoflavones, ferulic acid, sinapic acid, caftaric acid, eichloric acid, echinacoside and combinations thereof. Appeal 2010-002645 Application 10/629,759 12 21. A stable colored beverage comprising: (a) a synthetic color selected from the group consisting of Citrus Red No. 2, D&C Red No. 28, D&C Yellow No. 10, FD&C Blue No. 1, FD&C Blue No. 2, FD&C Green No. 3, FD&C Red No. 3, FD&C Red No. 40, FD&C Yellow No. 5, FD&C Yellow No. 6, ferrous gluconate, orange B, ultramarine blue, ultramarine green, ultramarine violet, ultramarine red and combinations thereof; and (b) a color stabilizing amount of a botanically derived color stabilizer containing a C6-C3 phenylpropenoic carbonyl structure therein represented by a formula selected from the group consisting of said botanically derived color stabilizer is selected from the group consisting of rosmarinic acid, chlorogenic acid, cichoric acid, caffeic acid, coumarins, coumaric acid, cinnamoyl esters, cinnamic acid, chalcones, flavones, chromones, isoflavones, ferulic acid, sinapic acid, caftaric acid, eichloric acid, echinacoside and combinations thereof.