Ex Parte Schrader et al

Patent Trials and Appeals Board

Jan 23, 2019

13867361 - (D) (P.T.A.B. Jan. 23, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/867,361 04/22/2013
28249 7590 01/23/2019
DILWORTH & BARRESE, LLP
Dilworth & Barrese, LLP
1000 WOODBURY ROAD
SUITE405
WOODBURY, NY 11797
FIRST NAMED INVENTOR
Dirk Schrader
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.
1507-29 8683
EXAMINER
PRAKASH, SUBBALAKSHMI
ART UNIT PAPER NUMBER
1793
MAIL DATE DELIVERY MODE
01/23/2019 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 DIRK SCHRADER,
CHRISTOPHER SABATER-LUENZEL,
MARTINABATALIA, THOMAS HENZE,
and SEBASTIAN HEINE
Appeal2018-003099
Application 13/867 ,361
Technology Center 1700
Before KAREN M. HASTINGS, MICHAEL G. McMANUS, and
SHELDON M. McGEE, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 requests review under 35 U.S.C. § 134(a) from the
Examiner's final rejection of claims 1-7, 12-14 and 16-26 under 35 U.S.C.
§ 103(a) as unpatentable over Mussawir-Key (GB 2474939A, published
May 5, 2011). We have jurisdiction pursuant to 35 U.S.C. § 6.
We AFFIRM.
1 Appellant is the Applicant, "SYMRISE AG", which is identified as the real
party in interest (Appeal Br. 1 ).
Appeal2018-003099
Application 13/867,361
BACKGROUND
Claim 1 is illustrative of the claimed subject matter and is reproduced
below from the Claims Appendix to the Appeal Brief:
1. Liquid aroma and flavouring compositions, comprising:
(a) 10 to 25 percent by weight oil-soluble aroma emulsions,
wherein the oil-soluble aroma emulsions component (a), comprises:
(al) 0.1 to 40 percent by weight oil-soluble aromatic compounds,
(a2) 5 to 20 percent by weight stabilizers,
(a3) 0 to 1 percent by weight-preservatives and
(a4) ad 100 percent by weight water
(b) 15 to 25 percent by weight inorganic salts,
( c) 6 to 12 percent by weight water-soluble constituents,
(d) 2 to 10 percent by weight water-insoluble constituents and dyes,
( e) 0.1 to 6 percent by weight-hydrocolloids and emulsifiers and
(f) ad 100 percent by weight water, and
wherein each of the components (al)-(a3) are different from each of
the components (b )-( e ).
Independent claim 21 is also drawn to a liquid aroma and flavouring
composition similar to claim 1, however reciting "consisting essentially of'
the listed components, with component (a) remaining as "comprises" its four
listed components (Appeal Br. Claims Appendix 29-30). Independent claim
26 is also drawn to a liquid aroma and flavoring composition similar to
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claim 1, however reciting that component ( d) is "5 to 8 percent by weight"
instead of "2 to 10 percent by weight" and reciting a viscosity of the
composition (Appeal Br. 30-31, Claims Appendix).
ANALYSIS
We have reviewed each of Appellant's arguments and evidence for
patentability. However, we are in agreement with the Examiner that the
claimed subject matter would have been obvious to one of ordinary skill in
the art within the meaning of§ 103 in view of the applied prior art. We
determine that, after consideration of all of the evidence in this appeal,
including the Specification Examples ( e.g., Appeal Br. 20), that the evidence
tending to establish the obviousness of the claimed subject matter outweighs
any evidence of record that may tend to indicate the non-obviousness
thereof.
Accordingly, we sustain the Examiner's rejections of the claims for
essentially those reasons expressed in the Answer and the Final Action,
including the Examiner's Response to Argument sections, and we add the
following primarily for emphasis.
It has been established that "the [obviousness] analysis need not seek
out precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ." KSR Int 'l Co. v. Teleflex
Inc., 550 U.S. 398,418 (2007). Likewise, it is also well settled that a
reference stands for all of the specific teachings thereof as well as the
inferences one of ordinary skill in the art would have reasonably been
expected to draw therefrom. See In re Fritch, 972 F.2d 1260, 1264---65 (Fed.
Cir. 1992).
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Appellant's arguments for patentability focus on the breadth of
Mussawir-Key's disclosure, and that the reference is silent on the problems
the inventors were attempting to solve (Appeal Br., Reply Br., generally).
Appellant states "there is no reason, teaching or suggestion in the prior art to
modify the broad disclosures of Mussawir-Key and arrive at the much more
specific description of claim 1, which is formulated for a different purpose"
(Appeal Br. 15). These arguments are unpersuasive. For one thing, the
Supreme Court has stated that it is error to "look only to the problem the
patentee [or applicant] was trying to solve." KSR Int'! Co. v. Teleflex, Inc.,
550 U.S. 398, 420 (2007); also In re Beattie, 974 F.2d 1309, 1312 (Fed. Cir.
1992) ("[T]he law does not require that the references be combined for the
reasons contemplated by the inventors.").
As aptly pointed out by the Examiner, the flavoring composition of
Mussawir-Key fully encompasses the claimed flavoring composition;
indeed, both compositions may be sprayed onto a food after cooking to add
flavor thereto. See In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003)
("In cases involving overlapping ranges, we and our predecessor court have
consistently held that even a slight overlap in range establishes a prima facie
case of obviousness."); Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804,
807 (Fed. Cir. 1989) (holding that the prior art's disclosure of over 1200
possible combinations rendered all possible formulations obvious). One of
ordinary skill would have readily appreciated that choices of flavoring
components and other ingredients would have benefits, both lost and gained,
for, e.g., resulting taste sensations. See also, cf Winner Int 'l Royalty Corp.
v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000) ("The fact that the
motivating benefit comes at the expense of another benefit, however, should
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not nullify its use as a basis to modify the disclosure of one reference with
the teachings of another. Instead, the benefits, both lost and gained, should
be weighed against one another"). Notably, the claims recite relatively
broad ranges of numerous generically named components (e.g., aromatic
compound, stabilizer, preservative, etc.) that would predictably result in a
wide range of flavors.
Appellant has not shown error in the Examiner's determination that
one of ordinary skill would have chosen the ingredients of the flavouring
composition of Mussawir-Key so as to result in a dispersion or emulsion
(similar to that claimed and described by Appellant) having any one of a
wide variety of pleasing tastes to a consumer (e.g., Ans. 8-10; Mussawir-
Key p. 1, 2, 6, 8, 9).
Appellant further urges that the proffered data evince unexpected
results (Appeal Br. 20). See, e.g., In re Woodruff, 919 F.2d 1575, 1578 (Fed.
Cir. 1990) (where the difference between the claimed invention and the prior
art is some range, the applicant must show that the particular range is
critical, generally by showing that the claimed range achieves unexpected
results relative to the prior art range).
It is well established that the burden of showing unexpected results
rests on the person who asserts them by establishing that the difference
between the claimed invention and the closest prior art was an unexpected
difference. It is not enough for the Appellants to show that the results in the
compared examples differ. The difference must be shown to be an
unexpected difference. See In re Freeman, 474 F.2d 1318, 1324 (CCPA
1973); In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). Appellant does not
direct us to Specification statement that the results would have been
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unexpected by one of ordinary skill in the art. Appellant has provided mere
attorney argument to that effect, and such arguments of counsel cannot take
the place of evidence. See In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir.
1984); In re Payne, 606 F.2d 303,315 (CCPA 1979); In re Greenfield, 571
F.2d 1185, 1189 (CCPA 1978). Further, the showing of unexpected results
must be commensurate in scope with the claims. See In re Peterson, 315
F.3d 1325, 1330-31 (Fed. Cir. 2003). Appellant has not shown reversible
error in the Examiner's findings that the evidence relied upon by Appellant
(two examples as set forth in the Specification that allegedly show enhanced
aroma or saltiness) is not commensurate in scope with the breadth of any of
the claims on appeal, and therefore is not persuasive evidence of
nonobviousness (Ans. 11; Appeal Br. 20).
Balancing all the evidence anew, it is our conclusion that the evidence
for obviousness outweighs any evidence against obviousness.
Appellant's argument that claim 21 's recitation of "consisting
essentially of' precludes "oil or non-stick substances that actually reduce the
amount of flavor for the weight of material" (Appeal Br. 23) are not
persuasive, since Appellant has not met the burden to show that prior art
ingredients not recited in the claim materially affect the basic and novel
characteristics of a claimed invention. It is an applicant's burden to show
that prior art ingredients not recited in the claim materially affect the basic
and novel characteristics of a claimed invention. In re De Lajarte, 337 F.2d
870, 873-74 (CCP A 1964). The claim phrase "consisting essentially of'
limits the scope of a claim to the specified ingredients and to those that do
not materially affect the basic and novel characteristics of the claimed
invention. In re Herz, 537 F.2d 549, 551-52 (CCPA 1976). In assessing
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whether ingredients materially affect the basic and novel characteristics of a
claimed invention, the claim must be read in light of the specification. See,
e.g., PPG Indus, v. Guardian Indus., Corp., 156 F.3d 1351, 1355 (Fed. Cir.
1998) ("PPG could have defined the scope of the phrase 'consisting
essentially of for purposes of its patent by making clear in its specification
what it regarded as constituting a material change in the basic and novel
characteristics of the invention.").
Appellant's argument that claim 23 (and claim 26) recites a viscosity
for the composition that is not taught or suggested by Mussawir-Key
(Appeal Br. 24, 25) is not persuasive for reasons set out by the Examiner
(e.g., Ans. 5). Notably, Appellant's Specification describes a broad
viscosity range that overlaps that of Mussawir-Key, and both Appellant 2 and
Mussawir-Key suggest having an appropriate viscosity to allow for spraying
the flavoring on the food. Thus, one of ordinary skill in the art would have
readily appreciated that the viscosity of the liquid flavoring is a result
effective variable. In re Applied Materials, Inc., 692 F.3d 1289, 1297 (Fed.
2 Indeed, Appellant describes that the spray apparatus for the purpose of
adding the flavoring are components that a "relevant person skilled in the art
is notoriously familiar with for this purpose" (Spec. 11, 11. 5-6). This implies
that the skilled artisan would also have fully appreciated the relevant
viscosities appropriate for such spray apparatus. An applicant cannot defeat
an obviousness rejection by asserting that the cited references fail to teach or
suggest elements which the applicant has acknowledged are taught by the
prior art. Constant v. Advanced Micro-Devices, Inc., 848 F. 2d 1560, 1570
(Fed. Cir. 1988) ("A statement in a patent that something is in the prior art is
binding on the applicant and patentee for determinations of anticipation and
obviousness.") and In re Nomiya, 509 F.2d 566,571 n.5 (CCPA 1975) (A
statement by an applicant that certain matter is prior art is an admission that
the matter is prior art for all purposes).
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Cir. 2012) ("A recognition in the prior art that a property is affected by the
variable is sufficient to find the variable result-effective."). It is well settled
that it would have been obvious for an artisan with ordinary skill to develop
workable or even optimum ranges for result-effective parameters. In re
Boesch, 617 F.2d 272, 276 (CCPA 1980). In light of these circumstances,
the use of the claimed viscosity does not appear to patentably distinguish
over a viscosity that one of ordinary skill in the art, using no more than
ordinary creativity, would have used for Mussawir-Key's flavor
composition.
Appellant's argument with respect to dependent claim 5 and
independent claim 26 that the recitation of 5 to 10 weight percent water-
insoluble is not taught or suggested by Mussawir-Key (Appeal Br. 24, 25) is
not persuasive. As pointed out by the Examiner, Mussawir-Key (similar to
Appellant) forms a dispersion or emulsion of "particles, grains or fine
powder" (Mussawir-Keyp. 1, 11. 11-17; Appellant's Spec. 10, 11. 30-31 (the
inventive "products are emulsions or fine particle dispersions")). While
Mussawir-Key prefers that "small solid particulates" constitute less than 2
percent by weight of the composition, it is also stated that this 2 percent is
"in combination with all other solid-free or substantially solid-free
components" and helps ensure the composition may be sprayed through a
spray dispensing mechanism onto the food. As pointed out by the Examiner,
Appellant also sprays his composition onto the food ( e.g., Ans. 5). Thus,
contrary to Appellant's assertion that Mussawir-Key fears clogging a spray
nozzle (Appeal Br. 17), it appears that the claimed amount would not have
clogged a spray apparatus as used in Mussawir-Key. Appellant also has not
adequately responded to the Examiner's position that the claimed insoluble
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constituents or dyes may also be dispersed or emulsified into the final
composition (Ans. 8, no reply brief has been filed). In light of these
circumstances, the use of the claimed weight percent of water insoluble
"constituents and dyes" does not appear to patentably distinguish over an
amount that one of ordinary skill in the art, using no more than ordinary
creativity, would have used for Mussawir-Key's flavor composition.
Accordingly, the § 103 rejection advanced by the Examiner in this
appeal is sustained.
ORDER
The Examiner's decision is affirmed.
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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