Ex Parte Seta et al

Patent Trial and Appeal Board

Apr 29, 2016

12739627 (P.T.A.B. Apr. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121739,627 04/23/2010
55694 7590 05/03/2016
DRINKER BIDDLE & REATH (DC)
1500 K STREET, N.W.
SUITE 1100
WASHINGTON, DC 20005-1209
FIRST NAMED INVENTOR
Harumichi Seta
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.
47233-5077-00-US
(451413)
1626
EXAMINER
DICUS, TAMRA
ART UNIT PAPER NUMBER
1791
NOTIFICATION DATE DELIVERY MODE
05/03/2016 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):
DBRIPDocket@dbr.com
penelope.mongelluzzo@dbr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte HARUMICHI SETA, HITOSHI MATSUBARA
and YUKI KA TAY AMA
Appeal2014-009547
Application 12/739,627
Technology Center 1700
Before JEFFREY T. SMITH, KAREN M. HASTINGS, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.
COLAIANNI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 5, 8 and 11. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
Appeal2014-009547
Application 12/739,627
Appellants' invention is directed to a carbonated beverage. App. Br.
4. Claim 5 illustrates the subject matter on appeal and is reproduced below:
5. A carbonated beverage produced by a method comprising:
feeding carbon dioxide into a liquid for beverage use in a
pressure vessel,
wherein the carbonated beverage contains the carbon dioxide
fed by a micro/nano bubble generator to generate micro/nano
bubbles of carbon dioxide, and
wherein the carbonated beverage contains 200 ppm to 12,000
ppm of dissolved carbon dioxide.
App. Br. 32 (Claims Appendix).
Appellants (see Appeal Brief, generally) request review of the
following rejections from the Examiner's Nonfinal Office Action of
November 7, 2013:
I. Claims 5, 8, and 11 rejected under 35 U.S.C. § 102(b) as
anticipated by or, in the alternative, under U.S.C. 103(a) as unpatentable
over Jamieson (US 5,290,574, issued March 1, 1994), as evidenced by Marie
Claire (Marie Claire, "How Many Bubbles in a Can of Coke?," accessed at
http://www.marieclaire.co.uk/news/world/196468/how-many-bubbles-in-a-
can-of-coke.html on April 29, 2013) and Wang et al.,( Gas Dissolution,
Release, and Bubble Formation in Flotation Systems, HANDBOOK OF
ENVIRONMENTAL ENGINEERING, Volume 12, 49--84 (2010)).
II. Claims 5, 8, and 11 rejected under 35 U.S.C. § 102(b) as
anticipated by or, in the alternative, under U.S.C. § 103(a) as unpatentable
over Jamieson, Marie Claire and ISO (ISO proposal on Fine Bubble
Technology, JISC, 2012, pp. 1-14).
III. Claims 5, 8, and 11 rejected under pre-AIA 35 U.S.C. § 103(a)
as unpatentable over Jamieson and Barker (The control of bubble size in
carbonated beverages, Received 16 March 2001; received in revised form
15 August 2001; accepted 6 October 2001, CHEM. ENGIN. Sci., Volume 57,
Issue 4, February 2002, Pages 565-573).
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Appeal2014-009547
Application 12/739,627
OPINION
Rejections under 35 USC§ 102(b) (Rejections I and II)
We REVERSE the Examiner's rejections of claims 5, 8 and 11 under
35 U.S.C. § 102(b) over Jamieson, as presented in Rejections I and II, for the
reasons of record given by Appellants. App. Br. 10-13, 19-22.
Rejections under 35 USC§ 103(a) (Rejections I-III)
After review of the respective positions provided by Appellants and
the Examiner, we AFFIRM the Examiner's rejection of claims 5, 8 and 11
under 35 U.S.C. § 103(a) as unpatentable over Jamieson and Barker
(Rejection III) for the reasons presented by the Examiner. We add the
following for emphasis.
Product-by-process claim 5 is directed to a carbonated beverage
having micro/nano bubbles and containing 200 ppm to 12,000 ppm of
dissolved carbon dioxide. Non-Final Act. 3.
The Examiner found Jamieson discloses a carbonated beverage
containing carbon dioxide and having small bubbles but does teach the size
of the bubbles. Non-Final Act. 3, 6, 9; Jamieson col. 5, 11. 27-30. The
Examiner found Barker discloses smaller bubbles (1.26-2.72 mm) in
beverages influence the texture of the drink and that the size of the bubbles
can be modified by varying parameters such as growth rate, time and surface
area. Non-Final Act. 9; Barker 566, 567, 570, 572, 573. The Examiner
found it would have been obvious to one of ordinary skill in the art to
modify the bubbles of the combination by reducing the size of the bubbles
for the reasons disclosed by Barker. Non-Final Act. 9.
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Appeal2014-009547
Application 12/739,627
Appellants argue that they have defined the size of the micro/nano
bubbles in the Specification as being less than 1 mm. App. Br. 8; Spec.
i-fi-f 14--16. Appellants argue Barker does not disclose or suggest a
carbonated beverage containing micro/nano bubbles as claimed because the
size of bubbles attainable in Barker's system, 1.26-2.72 mm, is larger than
the size of micro/nano bubbles as defined in the Specification. App. Br. 27-
28; Barker 570.
We are unpersuaded by these arguments and agree with the
Examiner's determination of obviousness. Non-Final Act. 9; Ans. 12.
"[D]uring examination proceedings, claims are given their broadest
reasonable interpretation consistent with the specification." In re Translogic
Tech., Inc., 504 F.3d 1249, 1256 (Fed. Cir. 2007) (quoting In re Hyatt, 211
F.3d 1367, 1372 (Fed. Cir. 2000)). See also In re Am. Acad. of Sci. Tech
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (The scope of the claims in
patent applications is not determined solely on the basis of the claim
language, but upon giving claims their broadest reasonable construction in
light of the specification as it would be interpreted by one of ordinary skill in
the art.) (citations omitted); Phillips v. AWH Corp., 415 F.3d 1303, 1315
(Fed. Cir. 2005) ("[T]he specification 'is always highly relevant to the claim
construction analysis. Usually, it is dispositive; it is the single best guide to
the meaning of a disputed term."' (Citation omitted)). In this instance,
Appellants' assertion that micro/nano bubbles are defined as having a size
less than 1 mm is inconsistent with the language in the Specification which
states bubbles generated by a micro/nano bubble generator can generate fine
bubbles of less than 1 mm in each diameter (emphasis added). Spec. i-fi-f 14--
16, 21-23. That is, the portions relied upon by Appellants to define
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Appeal2014-009547
Application 12/739,627
micro/nano bubbles do not expressly exclude bubbles of 1 mm or greater in
diameter. Appellants have not directed us to any portion of the Specification
that supports the narrow definition asserted.
With respect to claims 81 and 11, Appellants argue the Examiner does
not cite any evidence or explain why the proposed modifications of
Jamieson in view of Barker would have produced a carbonated beverage
having the recited residual rate (claim 8) and does not explain how or why
the artisan would have used Barker's information on varying bubble growth
rate and surface area to produce a carbonated beverage containing 5,000
ppm to 12,000 ppm of dissolved carbon dioxide (claim 11). App. Br. 29--30.
We are unpersuaded by these arguments and agree with the
Examiner's determination of obviousness. Ans. 14--15. Moreover,
Appellants acknowledge that the concentration and long retention times
(residual rates) of carbon dioxide are known to result in superior sparkling
characteristics in carbonated beverages. Spec. i-fi-13--4. Appellants have not
adequately explained why one skilled in the art, using no more than ordinary
creativity, would not have been capable of adjusting the residual rate and
carbon dioxide concentration for a carbonated beverage from the combined
teachings of Jamieson and Barker to meet desired product specifications.
KSR Int 'l Co. v. Teleflex Inc., 55 0 US. 3 98, 421 (2007) ("A person of
ordinary skill is also a person of ordinary creativity, not an automaton.").
Accordingly, we affirm the Examiner's rejection of claims 5, 8 and 11
under 35 U.S.C. § 103(a) as unpatentable over Jamieson and Barker
(Rejection III) for the reasons presented by the Examiner and given above.
1 Claim 8 has a lack of antecedent basis for the term system that need to be
addressed by Appellants.
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Appeal2014-009547
Application 12/739,627
Our affinnance of Rejection III above is dispositive for claims 5, 8
and 11, all claims on appeal. Thus, we need not reach a determination as to
the propriety of the rejection of claims 5, 8 and 11 under 35 U.S.C. § 103(a)
as unpatentable over Jamieson, as presented in Rejections I and II.
ORDER
The Examiner's prior art rejections of claims 5, 8 and 11 under 35
U.S.C. § 102(b) (Rejections I and II) as anticipated by Jamieson are
reversed.
The Examiner's prior art rejection of claims 5, 8 and 11 under 35
U.S.C. § 103(a) as unpatentable over Jamieson and Barker (Rejection III) is
affirmed.
We do not reach the Examiner's prior art rejections of claims 5, 8 and
11 under 35 U.S.C. § 103(a) as unpatentable over Jamieson (Rejections I and
II).
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l).
AFFIRMED
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