Ex Parte Watson et al

Patent Trial and Appeal Board

Jun 20, 2017

12248603 (P.T.A.B. Jun. 20, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/248,603 10/09/2008 Daniel Martin Watson 29823-0006001 1126
26231 7590 06/22/2017
FISH & RICHARDSON P.C. (DA)
P.O. BOX 1022
MINNEAPOLIS, MN 55440-1022
EXAMINER
STULII, VERA
ART UNIT PAPER NUMBER
1791
NOTIFICATION DATE DELIVERY MODE
06/22/2017 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):
PATDOCTC@fr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DANIEL MARTIN WATSON and
BILLIE SUNDAY WATSON1
Appeal 2017-008353
Application 12/248,603
Technology Center 1700
Before: DONNA M. PRAISS, AVELYN M. ROSS, and
BRIAN D. RANGE, Administrative Patent Judges.
ROSS, Administrative Patent Judge.
DECISION ON APPEAL2
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1—6, 8—13, 15, and 20. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify the real party in interest as Ultra Maturation, LLC, the
assignee of the instant application. Appeal Br. 1.
2 In our Decision we refer to the Specification (“Spec.”) filed October 9,
2008, the Non-Final Office Action (“Non-Final”) dated March 15, 2015, the
Appeal Brief (“Appeal Br.”) filed June 16, 2016 as supplemented September
16, 2016, the Examiner’s Answer (“Ans.”) dated March 13, 2017, and the
Reply Brief (“Reply Br.”) filed May 15, 2017.
Appeal 2017-008353
Application 12/248,603
STATEMENT OF THE CASE
The subject matter on appeal relates “to a method of creating very
quickly, an aged, wood flavored, ethanol-containing beverage.” Spec. 11.
Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. A method for rapidly aging while flavoring an ethanol-
containing beverage to form a smooth alcoholic beverage,
comprising the steps of:
(a) selecting wood useful in imparting at least one wood
flavor to an ethanol-containing beverage, wherein the wood is in
an amount of 20 grams of oak to 50 grams of oak per liter of the
ethanol-containing beverage;
(b) inserting the wood in a pressurizable container adapted
for holding liquid;
(c) adding a liquid containing between 30 percent and 50
percent ethanol into the pressurizable container; and
(d) applying a first pneumatic pressure in a range from
1000 psi to 2000 psi to the liquid in the pressurizable container
for a time period of 1 to 2 days to push the ethanol through the
wood and simultaneously age and flavor the ethanol in the
pressurizable container quickly aging the ethanol-containing
beverage with at least one wood flavor component to a
smoothness comparable to barrel aged alcoholic beverage.
Appeal Br. 3 (Claims App’x).
REJECTIONS
The Examiner maintains the following rejections:
A. Claims 1—6, 8—13, 15, and 20 stand provisionally rejected
on the ground of nonstatutory obviousness-type double
patenting as being unpatentable over claims 1—6 and 17 of
copending Application No. 12/957,108. Non-Final 3.
B. Claims 1—6, 8—13, 15, and 20 stand provisionally rejected
on the ground of nonstatutory obviousness-type double
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Application 12/248,603
patenting as being unpatentable over claims 1 and 4—13 of
copending Application No. 12/957,138. Id.
C. Claims 1—6, 10, and 15—19 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Slobodjanik3 in view
of Ackermann.4 Id.
D. Claims 8, 9, and 20 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Slobodjanik,
Ackermann, and in further view of Duggins.5 Id. at 7.
E. Claim 11—13 stands rejected under 35 U.S.C. § 103(a) as
being unpatentable over Slobodjanik, Ackermann, and
further in view of Poussard.6 Id. at 9-10.
Appellants request reversal of Rejections A—E. Appellants argue
rejections C—E together, and argue claims 1—6, 8—13, 15, and 20 as a group.
See generally Appeal Br. Therefore, consistent with the provisions of 37
C.F.R. § 41.37(c)(l)(iv) (2013), and in the absence of arguments over the
subsidiary rejections, we limit our discussion to claim 1 (Rejections A, B,
and C), the sole independent claim, and all other claims stand or fall together
with claim 1.
3 Ivan Petrovick Slobodjanik, RU 2,084,510, published July 20, 1997
(“Slobodjanik”). Citations herein are to the English language translation of
record on appeal.
4 Ackermann et al., DE 279,497 A, published June 6, 1990 (“Ackermann”).
Citations herein are to the English language Abstract of record on appeal.
5 Richard S. Duggins, US 4,173,656, issued November 6, 1979 (“Duggins”).
6 Felix Poussard, FR 2,897,619 A3, published August 24, 2004
(“Poussard”).
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Application 12/248,603
OPINION
Rejections A and B — Nonstatutory Obviousness-Type Double Patenting
The Examiner provisionally rejects claims 1—6, 8—13, 15, and 20 on
the ground of nonstatutory obviousness-type double patenting as being
unpatentable over claims 1—6 and 17 of copending Application No.
12/957,108. Non-Final 3. The Examiner also provisionally rejects claims
1—6, 8—13, 15, and 20 on the ground of nonstatutory obviousness-type
double patenting as being unpatentable over claims 1 and 4—13 of copending
Application No. 12/957,138. Id.
Appellants do not argue the merits of the Examiner’s rejections. See
generally Appeal Br. Thus, Appellants have not identified reversible error
in either of the Examiner’s provisional nonstatutory double patenting
rejections. We therefore summarily affirm the rejection of claims 1—6, 8—13,
15, and 20.
Rejection C— Obviousness (claims 1—6, 10, and 15—19)
The Examiner rejects claim 1 as obvious over Slobodjanik in view of
Ackermann. Non-Final 3. The Examiner finds that Slobodjanik teaches a
method of accelerating the aging process for an ethanol containing beverage,
specifically cognac, by using oak staves in contact with ethanol and
subjecting the ethanol to increased pressure of 2—5 atm for a period of 24-48
hours. Id. at 5—A. The Examiner further finds that Ackermann teaches a
method of treating fresh wine by applying “a thermal treatment in direct
contact with particles of oak wood and under the effect of a restricted
quantity of atmospheric oxygen” to produce wine that has a “similar in
quality to wines traditionally matured in oak casks, but at reduced cost.” Id.
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(quoting Ackermann, Abstract). The process of Ackermann applies
pressures of 0.1 to 5.0 MPa for a period of 15 minutes to an hour. Id.
Therefore, the Examiner reasons that one of ordinary skill in the art would
have reason “to further increase pressure in order to further reduce aging
time.” Id. The Examiner finds that both Slobodjanik and Ackermann teach
that increasing pressure reduces the maturation time of the alcohol and
explains that “[t]he applied pressure is seen to have been [a] result-effective
variable, which is routinely determinable.” Id. at 5.
Appellants present several arguments to oppose the Examiner’s
rejection. First, Appellants contend that there is no reason to combine
Slobodjanik and Ackermann because Slobodjanik teaches away from the
combination. Appeal Br. 2. Specifically, Appellants contend “there is no
motivation to combine Slobodjanik’s device with pressures disclosed in
Ackermann because Slobodjanik does not teach, suggest, or disclose the use
of a driving force or pressure that exceeds the level of the riveting.” Id. at 3.
Appellants’ argument fails to identity any reversible error by the
Examiner. To teach away, a reference must discourage one of ordinary skill
in the art from following the path set out in the reference, or lead that person
in a direction divergent from the path taken by the applicant. In re Gurley,
27 F.3d 551, 553 (Fed. Cir. 1994). Here Appellants have not identified any
specific teaching that would discourage the skilled artisan from combining
or increasing the pressure applied in the systems Slobodjanik or Ackermann.
Moreover, we note the Examiner has provided sufficient reason for
modifying the system of Slobodjanik to use a higher pressure as disclosed by
Ackermann (or more), that is, to further accelerate the aging or maturation
process for the ethanol-containing beverage. Ans. 11. Based on the
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teachings of Slobodjanik and Ackerman, the skilled artisan would have
understood that the use of higher pressure further accelerates the maturation
process. Slobodjanik 4—5; Ackerman Abstract.
Second, Appellants contend that there is no expectation of success in
the combination because the chemical reactions that occur under pressure
are unpredictable as shown by the April 22, 2015 declaration of Daniel
Martin Watson (“Watson Decl.”). Appeal Br. 3. Appellants urge “that
pressures from 1000 psi to 2000 psi produce reactions that are unpredictable
and the lower pressures in the cited art are not sufficient to produce these
additional reactions.” Id.
Appellants do not persuade us of reversible error. The Examiner
makes findings regarding the evidence submitted in the Watson Declaration
(Non-Final 11—12; Ans. 12—16), which we adopt as our own. Appellants do
not respond to the Examiner’s findings regarding the evidence in the Watson
Declaration. See generally Reply Br. Nor do Appellants address the lack of
clarity regarding the “2nd day” notation identified by the Examiner. Ans. 13.
Moreover, Appellants’ argument that the reactions are unpredictable at 200
psi is undermined by the fact that Ackermann teaches the successful
preparation of alcoholic beverages at pressures greater than 200 psi. See
Ackerman Abstract.
We also note that it is unclear whether Appellants are arguing for
unexpected results. However, and as the Examiner explains, the Watson
Declaration is insufficient to overcome the rejection because “Applicants
have not provided a comparison of the claimed subject matter with the
closest prior art on the record.” Ans. 12. Furthermore, Appellants’evidence
is not reasonably commensurate in scope with the claimed invention.
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Appellants’ evidence includes limited examples involving varied time, wood
type, and alcohol by volume. See e.g., Watson Decl. Tflf 6, 7, and 11.
Appellants’ claim 1 is broader than this showing such that it is insufficient to
rebut the prima facie case of obviousness.
Lastly, Appellants for the first time in reply argue that “there is no
reasonable expectation that the tank I disclosed in Slobodjanik will work
with the pressure disclosed in Ackermann.” Reply Br. 1.
Appellants have not explained, nor is it apparent, that these arguments
were necessitated by the Examiner’s Answer or could not have been
presented in the principal brief. Therefore, these arguments are untimely
and we will not reach arguments presented for the first time in a reply brief
in the absence of good cause. 37 C.F.R. §41.41(b)(2).
Therefore, for the reasons discussed above, we sustain the Examiner’s
rejection.
CONCLUSION
Appellants have failed to show the Examiner reversibly erred in
provisionally rejecting claims 1—6, 8—13, 15, and 20 on the ground of
nonstatutory obviousness-type double patenting as being unpatentable over
claims 1—6 and 17 of copending Application No. 12/957,108 (Rejection A)
and claims 1 and 4—13 of copending Application No. 12/957,138 (Rejection
B).
Appellants have failed to show the Examiner reversibly erred in
rejecting claims 1—6, 10, and 15—19 under 35 U.S.C. § 103(a) as being
unpatentable over Slobodjanik in view of Ackermann.
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Appellants have failed to show the Examiner reversibly erred in
rejecting claims 8, 9, and 20 under 35 U.S.C. § 103(a) as being unpatentable
over Slobodjanik, Ackermann, and in further view of Duggins.
Appellants have failed to show the Examiner reversibly erred in
rejecting claims 11—13 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Slobodjanik, Ackermann, and further in view of Poussard.
DECISION
For the above reasons, the Examiner’s rejection of claims 1—6, 8—13,
15, and 20 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)(1).
AFFIRMED
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