Ex Parte Triulzi

Patent Trials and Appeals Board

Apr 16, 2019

14009891 - (D) (P.T.A.B. Apr. 16, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/009,891 10/28/2013
11982 7590 04/18/2019
Bay State IP, LLC
One Boston Place
201 Washington St, Suite 2600
Boston, MA 02108
FIRST NAMED INVENTOR
Giovanni Triulzi
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.
1003.127.FV 1823
EXAMINER
DICUS, TAMRA
ART UNIT PAPER NUMBER
1791
NOTIFICATION DATE DELIVERY MODE
04/18/2019 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):
patents@baystatepatent.com
abruno@baystatepatent.com
gmacinnis@baystatepatent.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GIOVANNI TRIULZI
Appeal2018-005377
Application 14/009,891
Technology Center 1700
Before ROMULO H. DELMENDO, LILAN REN, and JANE E. INGLESE,
Administrative Patent Judges.
DELMENDO, Administrative Patent Judge.
DECISION ON APPEAL
The Applicant ("Appellant") 1 appeals under 35 U.S.C. § 134(a) from
the Primary Examiner's final decision to reject claims 1-18. 2 We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 The Appellant, Giovanni Triulzi, and "Esseco S.r.l." are listed as the real
parties in interest (Appeal Brief filed October 12, 2017 ("Appeal Br."), 3).
2 Appeal Br. 9-26; Reply Brief filed April 26, 2018 ("Reply Br."), 1-5;
Final Office Action entered May 18, 2017 ("Final Act."), 2-14; Examiner's
Answer entered March 8, 2018 ("Ans."), 3-18.
Appeal2018-005377
Application 14/009,891
I. BACKGROUND
The subject matter on appeal relates to a process for imparting color
stability and "stability in oxidation conditions" to alcoholic drinks and
precursors or derivatives thereof (Specification filed October 4, 2013
("Spec."), 1, 11. 5-9). Representative claim 1 is reproduced from the Claims
Appendix to the Appeal Brief, as follows:
1. Process for the stabilizing of alcoholic drinks and
precursors and derivatives thereof, consisting in adding thereto
a composition containing polyglutamate and/or polyaspartate.
(Appeal Br. 29.)
II. REJECTIONS ON APPEAL
On appeal, the Examiner maintains several rejections:
A. Claims 12-18 under pre-AIA 35 U.S.C. § 112, ,r 2, as
indefinite;
B. Claims 1---6 under pre-AIA 35 U.S.C. § I03(a) as unpatentable
over Otsuka3 in view of Takahashi; 4
C. Claims 6 and 7 under 35 U.S.C. § I03(a) as unpatentable over
Otsuka in view of Takahashi and Lankhorst; 5 and
D. Claims 8-18 under 35 U.S.C. § I03(a) as unpatentable over
Otsuka in view of Takahashi, Lankhorst, and Vieth et al. 6
("Vieth").
3 JP 60-130367 A, published July 11, 1985 (Derwent abstract only). The
record also includes a translation provided by the Appellant (Exhibit A
attached to the Appeal Brief).
4 US 2010/0160232 Al, June 24, 2010.
5 WO 2010/133543 A2, published November 25, 2010.
6 US 4,601,981, issued July 22, 1986.
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Application 14/009,891
(Ans. 3-18; Final Act. 2-14.)
III. DISCUSSION
Rejection A (Indefiniteness). Claim 12 recites: "Process for the
stabilizing of alcoholic drinks and precursors and derivatives thereof,
consisting in adding thereto a composition containing polyaspartate"
(Appeal Br. 31 ).
The Examiner states:
Re claim 12, Applicant uses "consisting in" regarding
polyaspartate. It is not clear what ingredients are in the claim.
See MPEP 2111.03 Transitional Phrases The transitional phrases
"comprising", "consisting essentially of' and "consisting of'
define the scope of a claim with respect to what unrecited
additional components or steps, if any, are excluded from the
scope of the claim. The determination of what is or is not
excluded by a transitional phrase must be made on a case-by-case
basis in light of the facts of each case. Because the claims are not
enabled, it is not clear what Applicant's claimed invention is and
the specification lacks direction in this regard.
(Ans. 4. 7)
The Appellant does not offer any substantive argument contesting the
Examiner's determination that "consisting in" in its current context renders
the claim indefinite (Appeal Br. 9). Instead, the Appellant merely responds
7 Although the Examiner states that "the claims are not enabled" (id.), no
rejection under 35 U.S.C. § 112, ,r 1, is before us. Therefore, we need not
address whether the claims comply with the enablement requirement of
§ 112, ,r 1.
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Application 14/009,891
that "consisting in" contains a typographical error and should read as
"consisting of' (id.). 8
Because no substantive argument or corrective amendment responsive
to the rejection has been submitted, we summarily uphold the Examiner's
rejection. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (explaining that
although the Board reviews a rejection on appeal de nova, identifying a
"'reversible error' means that the applicant must identify to the Board what
the examiner did wrong"); Hyatt v. Dudas, 551 F.3d 1307, 1314 (Fed. Cir.
2008) ("In the event of ... a waiver, the [Board] may affirm the rejection ...
without considering the merits.").
Rejection B (Obviousness). The Appellant argues claims 1---6
together (Appeal Br. 9-23). Therefore, we confine our discussion to claim
1, which we select as representative pursuant to 37 C.F.R. § 4I.37(c)(l)(iv).
By this rule, claims 2---6 stand or fall with claim 1.
The Examiner finds that Otsuka describes a process comprising
combining, e.g., sodium glutamate (MSG) with an alcoholic drink such as
wine, whiskey, "sake," or beer (Ans. 5). The Examiner finds that Otsuka' s
process differs from the process recited in claim 1 in that polyglutamate is
not added to the alcoholic drink (id.). The Examiner finds further, however,
that Takahashi teaches adding polyglutaminate (i.e., polyglutamate) to
beverages for taste purposes (id. at 5-7). The Examiner concludes from
these findings that "it would have been obvious to one having ordinary skill
8 The Appellant also refers to a "previously submitted response" (id.), but
the identity of the "previously submitted response" in the context of this
rejection is not clear.
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Application 14/009,891
in the art to have modified the process of adding to the Otsuka wine ... the
composition comprising polyglutamate" (id. at 7).
The Appellant's principal argument is that "there is no disclosure in
the cited references of a method related [to] the stabilization of alcoholic
drinks, precursors and derivatives" (Appeal Br. 11; emphasis added), such as
preventing precipitate formation (id. at 19), which is a "new, unexpected[,]
and useful function" for the additives specified in claim 1. The Appellant
also argues that the references do not disclose polyaspartate (id. at 11, 17).
Furthermore, the Appellant argues that, unlike the claimed subject matter,
Otsuka relates to alcohol-based flavoring additives for food (id. at 15-16)
and that Otsuka's composition also includes a foaming agent, which is not
ideal for wines (id. at 23). Regarding Takahashi, the Appellant argues that
the reference relates to a complex rather than a "single molecule" (id. at 18).
According to the Appellant, "[t]o establish obviousness based on a
combination of references, the references must contain some motivation,
suggestion or teaching to one of ordinary skill in the art of the desirability of
making the combination" (id. at 12).
The Appellant's arguments are ineffective to identify any reversible
error. Jung, 637 F.3d at 1365.
As an initial matter, the Appellant urges a standard for obviousness
that is not consistent with the law. In rejecting the teaching, suggestion, or
motivation (TSM) test as the sole test for obviousness, the Supreme Court of
the United States explained that "neither the particular motivation nor the
avowed purpose of the [applicant] controls." KSR Int'! Co. v. Teleflex Inc.,
550 U.S. 398, 419 (2007). The Court stated that "[u]nder the correct
analysis, any need or problem known in the field of endeavor ... can
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Application 14/009,891
provide a reason for combining the elements in the manner claimed." Id. at
420. See also In re Dillon, 919 F.2d 688, 693 (Fed. Cir. 1990) (en bane)
("[I]t is not necessary in order to establish a prima facie case of obviousness
that both a structural similarity between a claimed and prior art compound
( or a key component of a composition) be shown and that there be a
suggestion in or expectation from the prior art that the claimed compound or
composition will have the same or a similar utility as one newly discovered
by applicant."); In re Kemps, 97 F.3d 1427, 1430 (Fed. Cir. 1996) (the
motivation or reason to combine the references in the manner claimed need
not be identical to that of the inventor).
Applying the correct standard for analyzing obviousness, we discern
no reversible error in the Examiner's obviousness conclusion. Specifically,
Takahashi describes a process in which a food product composition
containing a complex of a protamine or a salt thereof and an acidic
macromolecular substance or gum arabic is added to a beverage such as an
alcoholic beverage ( e.g., sake, whiskey, or wine) (Takahashi ,r,r 31, 32, 35).
According to Takahashi, protamine suppresses fat absorption but has a harsh
or astringent taste (id. ,r 2). Takahashi teaches that protamine's harsh or
astringent taste can be reduced by interacting the protamine with the acidic
molecular substance or gum arabic (id. ,r 24). Takahashi discloses that a
polyglutamic acid or a salt thereof is a preferred acidic molecular substance
(id. ,r,r 47, 49).
Although the Appellant argues that Takahashi teaches a complexed
form of the acidic molecular substance, Takahashi further states that the
blending weight ratio for the protamine or salt thereof (A) to acidic
molecular substance (B) is preferably set to fall within the range of 4: 1 to
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Application 14/009,891
1 :2 (id. ,r,r 51, 52). Therefore, statistically, some of the polyglutamic acid or
salt would reasonably be expected to be present in the composition in a non-
complexed state. In any event, claim 1 recites "adding ... a composition
containing polyglutamate and/or polyaspartate" (Appeal Br. 29; emphasis
added). Therefore, consistent with the Examiner's position (Ans. 16), the
composition recited in claim 1 is open to the presence of unrecited
components, such as Otsuka's foaming agent or Takahashi's protamine or
salt thereof. Mars, Inc. v. H.J. Heinz Co., L.P., 377 F.3d 1369, 1375 (Fed.
Cir. 2004).
The Appellant's argument that neither reference discloses
polyaspartate has no persuasive merit. Claim 1 recites "polyglutamate
and/or polyaspartate" (Appeal Br. 29), and, therefore, claim 1 reads on
polyglutamate alone.
Lastly, as the Examiner states (Ans. 16), the Appellant's argument
relating to unexpected results is not accompanied by any objective evidence
of unexpected results, such as comparative experimental data comparing the
claimed process against the closest prior art. Therefore, the argument is
entitled to little or no probative weight. In re Geisler, 116 F.3d 1465, 1470
(Fed. Cir. 1997); Dillon, 919 F.2d at 693.
For these reasons, we sustain the Examiner's rejection.
Rejection C. The Appellant relies on the same arguments offered in
support of claim 1 (Appeal Br. 24). Therefore, we sustain Rejection C for
the same reasons discussed above with respect to Rejection B.
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Application 14/009,891
Rejection D. The Appellant does not argue any claim separately, so
we limit our discussion to representative claim 12. 9 Claim 12 recites:
"Process for the stabilizing of alcoholic drinks and precursors and
derivatives thereof, consisting in adding thereto a composition containing
polyaspartate" (Appeal Br. 31 ).
The Examiner further relies on Vieth for the polyaspartate limitation
(Ans. 10; Final Act. 9). The Appellant argues that Vieth teaches
clarification of cloudy liquids, which is the opposite of preventing
precipitation as in the claimed subject matter (Appeal Br. 25). No facts,
such as Vieth's teachings or objective evidence in the form of comparative
tests or persuasive technical reasoning, are provided to support this
argument. Therefore, we also sustain Rejection D.
IV. SUMMARY
Rejections A through D are sustained. Therefore, the Examiner's
final decision to reject claims 1-18 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
9 The Appellant incorrectly lists claims 6 and 7 (heading) and only claims 8-
10 as rejected on this ground (Appeal Br. 24).
8