Ex Parte Schmid et al

Patent Trial and Appeal BoardMar 6, 2017

12663113 (P.T.A.B. Mar. 6, 2017)

United States Patent and Trademark Office 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. 12/663,113 12/04/2009 Nikolaj Schmid 074008-0962-US (286121) 1358 123223 7590 03/08/2017 Drinker Biddle & Reath LLP (WM) 222 Delaware Avenue, Ste. 1410 Wilmington, DE 19801-1621 EXAMINER TARAZANO, DONALD LAWRENCE ART UNIT PAPER NUMBER 1791 NOTIFICATION DATE DELIVERY MODE 03/08/2017 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): IPDocketWM @ dbr.com penelope. mongelluzzo @ dbr. com DB RIPDocket @ dbr. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte NIKOLAJ SCHMID, GERO SPIKA, and MILAN JARON Appeal 2016-000064 Application 12/663,1131 Technology Center 1700 Before PETER F. KRATZ, JULIA HEANEY, and DEBRA L. DENNETT, Administrative Patent Judges. HEANEY, Administrative Patent Judge. DECISION ON APPEAL Appellants request review pursuant to 35 U.S.C. § 134(a) of a decision of the Examiner2 to reject claims 12—17 and 19—22 of Application 12/663,113. Claims 1—11 and 18 have been canceled. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 Appellants identify the real party in interest as BASF SE. Appeal Brief dated Jan. 16, 2015 (“App. Br.”) 2. 2 Final Action dated Sept. 3, 2014 (“Final Act.”) 3—7. Appeal 2016-000064 Application 12/663,113 BACKGROUND The subject matter on appeal relates to a process for improving the value-determining properties of biological fermented solutions, particularly beer, by treatment with a crosslinked polymer based on N-vinylimidazole. App. Br. 4. Value-determining properties include odor, flavor, foaming, and microbiological and physicochemical stability. Specification dated Dec. 4, 2009 (“Spec.”) 1. The process seeks to influence the aroma profile by adsorption of heavy metal ions and phenolic compounds, at a point in the process while aroma formation is still taking place. Spec. 5,11. 5—9. Claim 12, reproduced below from the Claims Appendix of the Appeal Brief, is representative of the claims on appeal: 12. A process for improving a value-determining property of a biological fermented solution, which comprises treating the biologically fermented solution after the fermentation, per 100 liter, with 1 to 3000 g of a polymer which comprises 50-99.5% by weight of N-vinylimidazole and 0 to 49.5% by weight of another copolymerizable monomer incorporated by polymerization and is produced in the absence of oxygen and polymerization initiators and also in the presence of 0.5 to 10% by weight, based on the monomers, of a crosslinker, wherein the biological fermented solution is beer or a beer-like drink, and wherein the treatment with the polymer takes place in the process at a time point at which aroma formation is still taking place. App. Br. 19 (paragraphing and indentation added). 2 Appeal 2016-000064 Application 12/663,113 THE REJECTION Claims 12—17 and 19-22 are rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Detering3 and Kabanov.4 DISCUSSION Appellants argue for reversal of the rejection of claims 12—17 and 19- 22 on the basis of limitations present in claim 12. See Appeal Br. 4—7. We, therefore, limit our analysis to claim 12. Claims 13—17 and 19—22 will stand or fall with claim 12. 37 C.F.R. § 41.37(c)(l)(iv). The Examiner finds that Detering discloses all aspects of the claimed process of treating a biologically fermented solution, including the recited polymer composition (Final Act. 3—4, citing Detering 1:11—18, 2:47—50, 3:1—10, 19-35, 42, 54—56, 4:7—8, 49—56; 5:37—40), except that Detering does not disclose using its process on beer. Final Act. 4. The Examiner finds that Kabanov discloses a polymer of vinyl pyrrolidone and a cross linker capable of complexing heavy metal ions in industrial clarification of wine and beer. Id. at 4—5, citing Kabanov 1:25—42, 62—66. The Examiner further finds that Kabanov recognizes Detering’s use of a polyvinylpolypyrrolidone (PVPP) polymer with a co-monomer of vinylimidazole (the polymer composition recited in claim 12) for binding copper or iron ions, and seeks to provide a crosslinked PVPP to improve haze removal by enhancing removal of both polyphenols and metal ions. Id. at 5—6, citing Kabanov 1:6—12, 53—66, 2:38—45. The Examiner thus determines that it would have been obvious to a person of ordinary skill in 3 Detering (5,094,867; Mar. 10, 1992). 4 Kabanov (5,866,660; Feb. 2, 1999). 3 Appeal 2016-000064 Application 12/663,113 the art to use Detering’s polymer in Kabanov’s process in order to enhance clarification and removal of metal ions. Final Act. 6. Appellants argue that the rejection should be reversed for several reasons, including the following: (1) the polymers taught by Detering and Kabanov are significantly different, and the Examiner has provided no reason that a person of ordinary skill in the art would have expected them to behave in the same manner (App. Br. 7—8); (2) nothing in the references would have suggested to a person of ordinary skill in the art to use the recited polymer “at a time point at which aroma formation is still taking place” (App. Br. 9); and (3) the rejection is based on hindsight because the Examiner has not pointed to language within the references sufficient to explain why a person of ordinary skill in the art would have used the N- vinylimidazole polymer recited in claim 12 in the production of beer during aroma formation. App. Br. 10. We address Appellants’ arguments in turn. Appellants’ argument that the polymers taught by Detering and Kabanov are significantly different is not persuasive. Although Appellants point to the Abstract of each reference to support their argument, the references as a whole support the Examiner’s finding that both Detering and Kabanov use a polymer based upon N- vinylpyrrolidone. Ans. 13—14. Further, the fact that Kabanov does not disclose N-vinylimidazole such as Detering does (App. Br. 8) does not support reversal of the rejection, because the Examiner’s rationale is not based on Kabanov’s disclosure of the claimed polymer. Rather, the Examiner relies on Kabanov for teaching that an insoluble polymer based on N-vinylpyrrolidone is capable of removing heavy metal ions from both wine and beer. Ans. 13. We discern no reversible error in the Examiner’s reasoning that the claimed invention and both references are trying to solve a 4 Appeal 2016-000064 Application 12/663,113 common problem, removal of metal ions from dilute aqueous solutions of alcohol, with the same tool, N-vinylimidazole / N- vinylpyrrolidone polymers, so that a person of ordinary skill in the art would have found it obvious to use the claimed polymer, as in Detering, for removal of metal ions from beer and beer-like beverages. Ans. 11—12. Appellants’ argument that the references would not have suggested treating with polymer “at a time point at which aroma formation is still taking place” (claim 12) is not persuasive. As the Examiner explains, the Specification states that “aroma formation is essentially complete” at final clarification or post-treatment of a finished drink, and “aroma formation is still taking place” when yeasts are still present. Ans. 9, citing Spec. 5,11. Applying the definition provided in the Specification, a person of ordinary skill in the art would have understood that Detering treats with polymer during aroma formation because it states that treatment “at an earlier stage of wine production [prior to final clarification] is also possible.” Detering 5:38-40. Further, we are not persuaded by Appellants’ argument that a person of ordinary skill in the art would not have understood from Detering that its polymer treatment for wine-making would also improve beer (Reply Br. 4—5), as it is attorney argument, unsupported by evidence. Appellants’ hindsight argument (App. Br. 9—11) essentially relies on the same points as we have addressed in connection with the arguments discussed above. The rejection is not impermissibly based on hindsight because the Examiner has articulated reasoning having evidentiary underpinnings for proposing the combination of Detering and Kabanov. In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). Appellants’ further argument that the Examiner erroneously relies on Detering’s reference to DE 1945749 (App. Br. 10-11) is not persuasive of reversible error, because Detering’s 5 Appeal 2016-000064 Application 12/663,113 discussion of DE 1945749 is not the sole part of Detering on which the Examiner relies. Rather, the Examiner also relies on multiple disclosures of the claimed polymer in other parts of Detering. See Final Act. 3^4. DECISION We affirm the rejection of claims 12—17 and 19—22 under 35 U.S.C. § 103(a). 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 6