Ex Parte Talebi et al

Patent Trials and Appeals BoardApr 28, 2016

13217845 - (D) (P.T.A.B. Apr. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/217,845 08/25/2011 134769 7590 05/02/2016 Sterne, Kessler, Goldstein & Fox P.L.L.C. 1100 New York Avenue, N.W. Washington, DC 20005 FIRST NAMED INVENTOR Fari Talebi 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. 006943.04722 6758 EXAMINER GWARTNEY, ELIZABETH A ART UNIT PAPER NUMBER 1791 NOTIFICATION DATE DELIVERY MODE 05/02/2016 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): e-office@skgf.com tdurkin@skgf.com rmoore@skgf.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte F ARI T ALEBI, MANUEL ANTONIO ARCE GARCIA, THOMAS LEE, PEI K. CHANG, HANG CHEN, and TODD A. ZANIEWSKI Appeal2014-009785 Application 13/217,845 Technology Center 1700 Before ROMULO H. DELMENDO, GEORGE C. BEST, and MONTE T. SQUIRE, Administrative Patent Judges. DELMENDO, Administrative Patent Judge. DECISION ON APPEAL The Appellants 1 seek our review under 35 U.S.C. Â§ 134(a) of a decision of the Primary Examiner to reject claims 1-2 7. We have jurisdiction under 35 U.S.C. Â§ 6(b). We AFFIRM. 1 The Appellants state that "Concentrate Manufacturing Company of Ireland ... a subsidiary of PepsiCo, Inc." is the real party in interest (Appeal Brief entered May 30, 2014, hereinafter "Appeal Br.," 3). Appeal2014-009785 Application 13/217,845 BACKGROUND The subject matter on appeal relates to a beverage product and a method of preparing the beverage product including non-nutritive sweetener comprising rebaudioside A, rebaudioside D and at least one of tagatose and erythritol (Specification, hereinafter "Spec.," Abst.; iii! 7-10). Representative claim 1 is reproduced from page i of the Appeal Brief (Claims Appendix), with the key limitation at issue indicated in italicized text, as follows: 1. A beverage product comprising: a non-nutritive sweetener comprising rebaudioside A, rebaudioside D, and at least one of tagatose and erythritol; and an acidulant comprising lactic acid, tartaric acid and citric acid, wherein the rebaudioside D is present in an amount above its sweetness perception threshold in the beverage. THE REJECTIONS The Examiner rejected the claims as follows: I. Claims 1-27 under 35 U.S.C. Â§ 112, iJ 1, as failing to comply with the written description requirement; II. Claims 1-18, 20-22, and 24-27 under 35 U.S.C. Â§ 103(a) as being unpatentable over Prakash et al. ("Prakash")2' 3; 2 US 2008/0108710 Al published May 8, 2008. 3 In the heading of this 35 U.S.C. Â§ 103(a) rejection in the Final Office Action and the Examiner's Answer, the Examiner did not include claims 25 and 26; however, a fair reading of the explanation of the rejection reasonably articulates claims 25 and 26 were also rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Prakash. 2 Appeal2014-009785 Application 13/217,845 III. Claim 23 under 35 U.S.C. Â§ 103(a) as being unpatentable over Prakash and Rodney4 ; and IV. Claims 1-27 under non-statutory obviousness-type double patenting over Talebi et al. ("Talebi"). 5 (Examiner's Answer entered July 14, 2014, hereinafter "Ans.," at 2-5; Final Office Action entered December 4, 2013, hereinafter "Final Act.," at 2-11.) DISCUSSION We affirm these rejections for essentially the reasons set forth in the Examiner's Answer. Nevertheless, we add the following comments primarily for emphasis. I In arguing for the reversal of Rejection I, the Appellants argue claims 1-27 together, focusing only on claim 1. Therefore, consistent with 37 C.F.R. Â§ 41.37(c)(l)(iv), we confine our discussion to representative claim 1. By rule, claims 2-27 stand or fall with claim 1. The Examiner has rejected claims 1-27 under 35 U.S.C. Â§ 112, ,-i 1, "as failing to comply with the written description requirement" because "[t]he claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that ... the inventor(s), at the time the application was filed, had possession of the claimed invention" (Ans. 2) (emphasis omitted). Specifically, the Examiner determined that the requirement "wherein the rebaudioside D is present in an amount above its sweetness perception 4 US 2002/0054946 Al published May 9, 2002. 5 US 8,029,846 B2 issued October 4, 2011. 3 Appeal2014-009785 Application 13/217,845 threshold in the beverage" does not comply with the written description requirement under 35 U.S.C. Â§ 112, iJ 1 because the Examiner found, inter alia, that [ w ]hile there is clear support for claiming a beverage with a mixture of sweeteners wherein the mixture of the sweeteners provide perceived sweetness to the beverage, there is no support for claiming a specific sweetener, i.e. rebaudioside D, added as part of a sweetener mixture in an amount above its sweetness perception threshold in the beverage (Ans. 10). The Appellants argue that the Specification provides literal support for sweetness perception of sweeting agents and using rebaudioside D in the beverage as a sweetening agent (Appeal Br. 10-11) (citing Spec. iii! 15, 19, 22). In view of these disclosures, the Appellants contend the "[S]pecification adequately discloses that the claimed beverage products may comprise rebaudioside D in an amount above its sweetness perception threshold and provides clear indication that Appellants had possession of that invention" (Appeal Br. 11 ). The Appellants additionally argue that three diet cola formulations (control, Variant 2, and Variant 4) are disclosed in Example 1 of the Specification and "the only sweetener present in these three diet cola formulations is rebaudioside A . . . . Thus, the specification as originally filed provides support for the use of a single rebaudioside in an amount above its sweetness perception threshold" (Reply Brief entered September 04, 2014, hereinafter "Reply Br.," 5). The Appellants contend that since the disclosure supports using other steviol glycosides [] in place of rebaudioside A as a sweetener, and [] that rebaudioside D is a rebaudioside component that provides sweetness, one of ordinary skill in the art would readily appreciate that the as-filed specification 4 Appeal2014-009785 Application 13/217,845 adequately discloses that the claimed beverage products may comprise rebaudioside D in an amount above its sweetness perception threshold (id. at 6). We have fully considered the Appellants' arguments; however we find the arguments do not reveal a reversible error in the Examiner's determination that the Specification fails to support adding rebaudioside D above its sweetness perception threshold in the beverage. As found by the Examiner (Ans. 11 ), the Specification does not specifically disclose including rebaudioside D in an amount above its sweetness perception threshold as required by the claims. Therefore, the relevant inquiry is whether there is evidence that one of ordinary skill in the art would consider the description in the Specification sufficient to support including rebaudioside D "in an amount above its sweetness perception threshold in the beverage." See In re Alton 76 F.3d 1168, 1175 (CCPA 1996) (citing In re Wertheim, 541F.2d257, 264 (CCPA 1976) andin re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)), stating "[i]f, on the other hand, the specification contains a description of the claimed invention, albeit not in ipsis verb is (in the identical words), then the examiner or Board, in order to meet the burden of proof, must provide reasons why one of ordinary skill in the art would not consider the description sufficient. Once the examiner or Board carries the burden of making out a prima facie case of unpatentability, 'the burden of coming forward with evidence or argument shifts to the applicant"'). Here, as found by the Examiner (Ans. 10) and argued by the Appellants (Appeal Br. 11 ), the Specification discloses using sweeteners that are perceived as sweet by the sense of taste, i.e., sweetness perception, and 5 Appeal2014-009785 Application 13/217,845 discloses providing a beverage employing steviol glycosides including rebaudioside D, which contributes to sweetness (iJiJ 15, 19, 21-22). The Examiner found further, however, that the disclosure that rebaudioside D contributes to sweetness does not provide support for adding such a component above its sweetness perception because "in a mixture, each sweetener or sweetening agent may be in an amount below its sweetness perception threshold but combined the sweeteners or sweetening agents provide perceived sweetness" and "the perceived sweetness of a composition will depend on many factors including, for example, the types and amounts of sweeteners present, the amount and type of flavorings, acidity, carbonation and viscosity" (Ans. 9-10). In view of the Examiner's specific findings and reasoning, which we find to be reasonable, we discern no reversible error in the Examiner's determination that the Specification is not sufficiently descriptive of including rebaudioside D in the beverage "in an amount above its sweetness perception threshold" and thus hold that the claim does not comply with written description requirement as required by 35 U.S.C. Â§ 112, iJ 1. In so holding, we note that the Appellants have proffered no factual evidence, besides mere attorney speculation, that rebuts the Examiner's findings and determinations or that would indicate that one of ordinary skill in the art would find the general disclosure of sweetness perception taken collectively to constitute a description6 of rebaudioside D 6 Although the inclusion of rebaudioside D in an amount above its sweetness perception threshold may have been obvious to a person skilled in the art, obviousness is not the appropriate standard for measuring compliance with the written description requirement of 35 U.S.C. Â§ 112, iJ 1. Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997) ("[D]escription which renders obvious the invention ... is not sufficient."). 6 Appeal2014-009785 Application 13/217,845 being present in the composition "in an amount above its sweetness perception threshold." See In re Scarbrough, 500 F.2d 560, 566 (CCPA 1974). II In arguing for the reversal of Rejection II, the Appellants argue claims 1-18, 20-22, and 24-27 together, focusing only on claim 1. Therefore, consistent with to 37 C.F.R. Â§ 41.37(c)(l)(iv), we confine our discussion to representative claim 1. The Examiner found that Prakash describes a beverage product comprising "at least one natural high potency sweetener including rebaudioside A, B, C, D, E and F[;] ... at least one sweet taste improving composition including carbohydrate, i.e. tagatose, [sic, ;] polyol, i.e. erythritol, [sic, ;] and organic acid, i.e. lactic acid, citric acid, tartaric acid, adipic acid, succinic acid, ascorbic acid, glutaric acid, fumaric acid, maleic acid and malic acid" (Final Act. 4, emphasis in original). The Examiner further found that Prakash discloses "the combination of at least one natural high-potency sweetener and at least one sweet taste improving composition improve the temporal profile and/or flavor profile to be more sugar-like" (id.). In view of this finding, the Examiner concluded that [i]t would have been obvious to one of ordinary skill in the art at the time of the invention ... to have selected the combination of natural high potency sweetener including rebaudioside A and D and sweet taste improving compositions to include an acidulant made up of citric, tartaric and lactic acid, a polyol to include erythritol and a carbohydrate including tagatose for the 7 Appeal2014-009785 Application 13/217,845 purpose of producing a no calorie or low-calorie beverage that has a more sugar-like flavor profile (id.). As for the amount of rebaudioside D, the Examiner maintained that "[ o ]ne of ordinary skill in the art would know how to adjust, in routine processing, the amounts of each sweetener, including wherein rebaudioside D is added in amount above its sweetness perception threshold, to obtain a desired sensory profile" (Ans. 13). The Appellants contend that Prakash discloses "merely a laundry list of sweeteners" and "a long list of alternatives of each of multiple different types of potential ingredients to improve the taste of high-potency sweeteners" (Appeal Br. 13-14). In view of the number of alternatives, the Appellants argue "there would not have been any expectation from Prakash to arrive at the beverage products having rebaudioside D present in an amount above its sweetness perception threshold" (id.). We have considered fully the Appellants' analysis of the Prakash reference in their argument and the Examiner's interpretation of the teachings; however, we disagree with the Appellants' analysis and, therefore, their argument fails to reveal any reversible error in the Examiner's factual findings, analysis, and conclusion of obviousness. The test of obviousness is not whether an express suggestion of the claimed invention is present in any or all references but rather what the references would have suggested to those of ordinary skill in the art presumed to be familiar with them. In re Rosselet, 347 F.2d 847, 851(CCPA1965); In re Hedges, 783 F.2d 1038, 1041 (Fed. Cir. 1986). Additionally, a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art. Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) ("the mere absence from the prior art of a teaching 8 Appeal2014-009785 Application 13/217,845 or a limitation recited in the patent at issue is insufficient for a conclusion of no no bviousness"). As found by the Examiner (Final Act. 4) and conceded by the Appellants (Appeal Br. 13-14), Prakash discloses including a sweetening composition that "comprises at least one natural and/or synthetic high- potency sweetener" and specifically discloses a list of natural high-potency sweeteners ("NHPS") for use as a sweetener including, inter alia, rebaudioside A, rebaudioside B, rebaudioside C, rebaudioside D, rebaudioside E, and rebaudioside F (iJ 31 ). Additionally, Prakash discloses "[f]or example, particular embodiments comprise combinations ofNHPSs, such as steviolglycosides" and then further discloses that "[ n ]onlimiting examples of suitable stevioglycosides which may be combined include rebaudioside A, rebaudioside B, rebaudioside C, rebaudioside D, rebaudioside E, rebaudioside F, dulcoside A, dulcoside B, rubusoside, stevioside, or steviolbioside" (iJ 53). Given these explicit disclosures, we agree with the Examiner and find that the inclusion of multiple stevioglycosides, including rebaudioside A and rebaudioside Dis envisioned by Prakash. Thus, it would have been obvious to one of ordinary skill in the art at the time of the invention to provide a sweetener comprising a combination of natural high-potency sweeteners including a combination of rebaudioside A and rebaudioside D in the amounts required by the claim. See KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) ("The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results"). 9 Appeal2014-009785 Application 13/217,845 The Appellants argue that "Prakash teaches away from the use of rebaudioside D" because "Prakash teaches that rebaudioside D is an impurity that should be removed from sweetener preparations by recrystallization" and because "Prakash fails to disclose any amount of rebaudioside D suitable for use as a sweetener ... in stark contrast to the other Stevia sweeteners for which Prakash expressly discloses" (Appeal Br. 15, emphasis in original). We are unpersuaded by this argument because, as explained below, it is directed to particular embodiments, which do not limit the broader general disclosure of the prior art. As found by the Examiner (Ans. 14), Prakash, in discussing rebaudioside D as an impurity, discloses a particular "exemplary" embodiment related to "the purification of rebaudioside A" (,-i,-i 39-43; see also Prakash ,-i 868 stating"[ c ]rude rebaudioside A (77.4% purity) mixture was obtained from a commercial source [and] [t]he impurities (6.2% stevioside, 5.6% rebaudioside C, 0.6% rebauiodioside [sic] F, 1.0% other steviolglycosides, 3.0% rebaudioside D, 4.9% rebaudioside B, 0.3% steviolbioside) were identified"). We additionally find the absence of rebaudioside D in a "particularly desirable embodiment[]" of Prakash is unpersuasive as it does not negate the broader general disclosure of using rebaudioside Das a natural high-potency sweetener, discussed supra (,-i 53). Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or non-preferred embodiments. In re Susi, 440 F.2d 442, 445 n.3 (CCPA 1971). Rather, a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art. Merck, 874 F.2d at 807 ("the mere absence from the prior art of a teaching or a limitation recited in the patent at issue is insufficient for a 10 Appeal2014-009785 Application 13/217,845 conclusion of nonobviousness"). As we found supra, Prakash explicitly teaches of using rebaudioside D for sweetening and we cannot locate objective and factual evidence, nor have the Appellants proffered any such evidence, that Prakash teaches away from using rebaudioside D as a sweetener. See DyStar Textilfarben GmbH v. C.H. Patrick Co., 464 F.3d 1356, 1364 (Fed. Cir. 2006) ("We will not read into a reference a teaching away from a process where no such language exists."). Similarly, we reject the Appellants' argument (Appeal Br. 17) that the "publically available preliminary amendment" of Prakash "effectively disclaimed the use of rebaudioside D" because an amendment or disclaimer during the prosecution of patent application as to certain subject matter does not necessarily negate that disclosure for prior art purposes, i.e., "once an invention is in the public domain, it is no longer patentable by anyone." In re Hall, 781 F.2d 897, 898 (Fed. Cir. 1986). The Appellants argue Prakash does not "disclose[] rebaudioside D [is] present in a beverage in an amount above its sweetness perception threshold" and rely on the September 13, 2013 Declaration of Dr. Thomas Lee (Lee Deel.) as evidence to support this argument (Appeal Br. 18). Additionally, the Appellants argue that the "Examiner has not met her burden of showing that Prakash necessarily or inherently discloses rebaudioside D present in an amount above its sweetness perception threshold in a beverage." (Id. at 19). We find these arguments misplaced and unpersuasive because neither the Lee Declaration nor the lack of inherency is germane to the Examiner's reasoning and ultimate determination of obviousness. The Examiner has maintained "one of ordinary skill in the art would have found it obvious to adjust, in routine 11 Appeal2014-009785 Application 13/217,845 processing, the amount of each sweetener to obtain the desired sugar-like properties" (Ans. 16). The Appellants have proffered no factual evidence or persuasive arguments to rebut this articulated position. Lee's mere testimony (iJiJ 9-10) that Prakash does not disclose the claim limitation at issue is insufficient to identify a reversible error in the Examiner's obviousness determination based on routine optimization of the amount of rebaudioside D that a person having ordinary skill in the art would have undertaken. The Appellants' mere assertions to the contrary are insufficient to identify a reversible error. See Ex parte Belinne, No. 2009-004693, 2009 WL 24 77843 *4 (BP AI 2009) (informative) ("[W]e find that the Examiner has made extensive specific fact finding ... with respect to each of the argued claims. Appellants' argument ... repeatedly restates elements of the claim language and simply argues that the elements are missing from the reference. However, Appellants do not present any arguments to explain why the Examiner's explicit fact finding is in error"). See also 37 C.F.R. Â§ 41.37(c)(l)(vii) (noting that an argument that merely points out what a claim recites is unpersuasive). III In arguing for the reversal of Rejection III, the Appellants present no additional arguments and, therefore, we maintain this rejection for substantially the same reasons as set forth above. IV The Examiner rejected claims 1-27 under obviousness-type double patenting over Talebi (Ans. 8-9). Specifically, the Examiner found that "[a ]lthough the conflicting claims are not identical, they are not patentably 12 Appeal2014-009785 Application 13/217,845 distinct from each other because [Talebi] is directed to a natural cola beverage product" and found Tale bi encompasses all the requirements of the claims as drafted (id.). In view of this finding, the Examiner concluded "it would have been obvious to one of ordinary skill in the art that the disclosure of [Talebi] overlaps that presently claimed" (id. at 9). The Appellants present no substantive arguments regarding the merits of the Examiner's rejection of claims 1-27 under obvious type double patenting. Therefore, we summarily affirm the obviousness-type double patenting rejection of claims 1-27 for essentially the reasons as set forth in the Final Rejection. SUMMARY Rejections I, II, III, and IV are affirmed. Therefore, the Examiner's final decision to reject claims 1-27 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 3 7 C.F .R. Â§ 1.13 6( a )(1 ). AFFIRMED 13