Ex Parte Walton et al

Patent Trial and Appeal BoardJul 19, 2018

14271223 (P.T.A.B. Jul. 19, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/271,223 05/06/2014 716 7590 07/19/2018 DYKEMA GOSSETT P.L.L.C. 112 EAST PECAN STREET, SUITE 1800 SAN ANTONIO, TX 78205-1521 FIRST NAMED INVENTOR Stacey K. Walton 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. 5338.4300 2530 EXAMINER WONG, LESLIE A ART UNIT PAPER NUMBER 1793 MAIL DATE DELIVERY MODE 07/19/2018 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 STACEY K. WALTON and GINO E. OLCESE Appeal2017-010213 Application 14/271,223 Technology Center 1700 Before ADRIENE LEPIANE HANLON, JEFFREY R. SNAY, and LILAN REN, Administrative Patent Judges. SNAY, Administrative Patent Judge. DECISION ON APPEAL 1 Appellant2 appeals under 35 U.S.C. Â§ 134(a) from the Examiner's decision rejecting claims 1, 3, 4, 6, 8-10, 12, 14, 15, 17, and 19-26. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We reverse. 1 We cite the Specification ("Spec.") filed May 6, 2014; Final Office Action ("Final Act.") dated April 15, 2016; Appellants' Appeal Brief ("App. Br.") dated October 20, 2016; Examiner's Answer ("Ans.") dated December 14, 2016; and Appellants' Reply Brief ("Reply Br.") dated January 23, 2017. 2 Appellant is DR PEPPER/SEVEN UP, INC., which also is identified as the real party in interest. App. Br. 1. Appeal2017-010213 Application 14/271,223 BACKGROUND The subject matter on appeal relates to beverages. Claim 1 is illustrative: 1. A beverage comprising: stevia extract in an amount of about 100 ppm to about 600 ppm; wherein said stevia extract provides greater than about 50% of the total sweetness provided in the beverage; wherein the most prevalent steviol glycoside of said stevia extract is rebaudioside M; wherein said rebaudioside M is present in said stevia extract at a level of between about 3 0% to about 90% by weight with respect to the total amount of said stevia extract; wherein the beverage has a calorie content of less than about 70 calories for an 8 oz portion of said beverage; and naringenin in an amount of between about 10 ppm to about 50 ppm; wherein the ratio of stevia extract to naringenin is between about 15: 1 to about 8: 1. App. Br. 8 (Claims Appendix) ( emphasis added to highlight a key claim element in dispute). Independent claims 14 and 23 also recite a beverage containing, inter alia, naringenin with a specified concentration range. Each remaining claim on appeal depends from claim 1, 14, or 23. 2 Appeal2017-010213 Application 14/271,223 REJECTION Claims 1, 3, 4, 6, 8-10, 12, 14, 15, 17, and 19-26 stand rejected under 35 U.S.C. Â§ 103 as unpatentable over Prakash I, 3 Morita, 4 Prakash II, 5 Prakash III, 6 Bell, 7 and Nutrinova. 8 OPINION Relevant to Appellant's arguments on appeal, the Examiner finds that Prakash I discloses a beverage that contains naringenin in the same amount as is recited in Appellant's claims. Final Act. 3 ("composition comprises naringenin in the amount of between 250 micrograms to 65 mg (10 ppm to 50 ppm)"); Ans. 9 ("Prakash et al (US 2007/0116838 Al) teach that the amount of antioxidant, which includes naringenin, varies and includes from between 25 ppm and 65 mg per serving .... This is the same as is claimed."). Appellant argues that Prakash I does not disclose the claimed naringenin concentration. App. Br. 3; Reply Br. 1-2. We agree. Prakash I identifies naringenin as one of a number of possible antioxidant additives. Prakesh I ,r 22. The amount of antioxidant provided is said to "var[y] widely depending on the particular functional sweetener composition and the desired antioxidant." Id. ,r 35. Contemplated antioxidant concentration ranges are disclosed for vitamin C (up to 55 mg to 65 mg per 240 ml serving), vitamin E (up to 1 mg to 3 mg per 240 ml 3 US 2007/0116838 Al, published May 24, 2007 ("Prakash I"). 4 US 2011/0183056 Al, published July 28, 2011 ("Morita"). 5 US 2015/0018432 Al, published January 15, 2015 ("Prakash II"). 6 US 2014/0271996 Al, published September 18, 2014 ("Prakash III"). 7 US 2014/0342043 Al, published November 20, 2014 ("Bell"). 8 US 2013/0136839 Al, published May 30, 2013 ("Nutrinova"). 3 Appeal2017-010213 Application 14/271,223 serving), vitamin A (up to 250 Âµg to 350 Âµg per 240 ml serving), and polyphenol (up to 25 ppm to 35 ppm per 240 ml serving). Id. No concentration or concentration range is specified for naringenin. See id. In light of the foregoing, we are persuaded that the Examiner's finding that Prakash I discloses the claimed naringenin concentration is in error. In the Final Office Action, the Examiner states that Prakash I teaches a range of 250 Âµg to 65 mg. 9 Final Act. 3. In the Answer, the Examiner states that Prakash I teaches a range of 25 ppm to 65 mg. Ans. 9. In either instance, the numerical values cited by the Examiner correspond to concentrations disclosed in Prakash I in connection with three different antioxidants, none of which is naringenin. See Prakash I ,r 3 5. The Examiner does not provide an explanation why one of ordinary skill in the art would adopt any of these values as range endpoints when providing naringenin as an antioxidant, particularly where Prakash teaches that the amount of antioxidant varies with the antioxidant selected. 10 9 The Examiner does not explain how these values meet any range recited in Appellant's claims. In a water-based beverage, 250 Âµg per 240 ml corresponds to about 1 ppm and 65 mg per 240 ml serving corresponds to about 270 ppm. 10 Appellant additionally argues that any optimization of naringenin concentration in Prakash I would not necessarily lead to the claimed concentration range because Prakash I provides naringenin solely as an antioxidant, whereas the claimed concentration is selected based on different properties, including upfront sweetness, overall mouthfeel, and sweetness delocalization. App. Br. 5 ( citing Spec. ,r 27). While we find merit in this argument, we need not decide the issue because, as noted, the sole rejection is premised on a finding that Prakash I meets the claimed concentration range. No obviousness analysis regarding naringenin concentration is before us. 4 Appeal2017-010213 Application 14/271,223 For the foregoing reasons, we are persuaded that the sole rejection on appeal is premised on an erroneous finding that Prakash I discloses a naringenan concentration that meets the range recited in each of the independent claims. Accordingly, the rejection is not sustained. DECISION The Examiner's decision rejecting claims 1, 3, 4, 6, 8-10, 12, 14, 15, 17, and 19-26 is reversed. REVERSED 5