Feronia Water, LLC

Patent Trials and Appeals Board

Mar 4, 2020

13572745 - (D) (P.T.A.B. Mar. 4, 2020)

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.
13/572,745 08/13/2012 Michael Farrell 181.001 5865
90034 7590 03/04/2020
Irving M. Fishman
89 Headquarters Plaza
Suite 1422, North Tower
Morristown, NJ 07960
EXAMINER
THAKUR, VIREN A
ART UNIT PAPER NUMBER
1792
MAIL DATE DELIVERY MODE
03/04/2020 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 MICHAEL FARRELL
____________

Appeal 2019-000501
Application 13/572,745
Technology Center 1700
____________

Before LINDA M. GAUDETTE, KAREN M, HASTINGS, and
JANE E. INGLESE, Administrative Patent Judges.

INGLESE, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 requests our review under 35 U.S.C. § 134(a) of the
Examiner’s decision to finally reject claims 2, 3, 7, 9–16, 20, and 22–28.2
We have jurisdiction over this appeal under 35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
Independent claim 16 illustrates the subject matter on appeal, and is
reproduced below with contested subject matter italicized:

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies Gavilan Tech, LLC as the real party in
interest. Appeal Brief filed June 4, 2018 (“Appeal Br.”) at 5.
2 Final Office Action entered February 13, 2018 (“Final Act.”).
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16. A method of making a maple sap beverage product
composition suitable for ingestion by a human, said
composition having a Brix value of from 1 to 5, said
composition consisting of
(a) a first maple sap comprising water, said first maple sap
having a Brix value in the range of 1 to 5; or
(b) a second maple sap comprising water wherein said second
maple sap is said first maple sap which has had its Brix
value adjusted to have a standard predefined Brix value in
the range of 1 to 5; and
upon having been subjected to an Ultra-High Temperature
pasteurization (UHT) and packaged in aseptic containers
under aseptic packaging conditions, at the time of said
packaging and said UHT, said maple sap beverage product
having a micro-organism load of not more than 10 colony
forming units/ml (CFU/ml) and after 12 months of storage at
21°C to 25°C a micro-organism load of not more than 10
CFU/ml;
said method consisting of
A) obtaining said first maple sap;
B) optionally filtering the first maple sap through a filter
having a pore size of 100 micron in order to remove
gross contaminants;
C) optionally adjusting the result of steps A), or A) and B) to
said standard predefined Brix value selected from a Brix
value in the range of from 1 to 5 defining said second
maple sap;
the results of said step A) and optionally any of said steps B)
through C) resulting in a pre-UHT, prior to being
packaged product; and
D) subjecting said pre-UHT, prior to being packaged
product to either of
(a) an Ultra-High Temperature pasteurization (UHT)
step followed by packaging thereof in aseptic
containers under aseptic conditions; or
(b) (i) using aseptic conditions to package said pre-
UHT, prior to being packaged product in aseptic
containers followed by
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(ii) using said UHT as a terminal sterilization step;
wherein said UHT step is conducted at a temperature
selected from the range of from 130°C to 150°C and an
exposure time selected from the range of 1 second to 10
seconds;
wherein said optional step C) can be done at any point after
obtaining said first maple sap until after said step D),
provided that if step C) is performed after step D), that
the respective materials used therein and the conditions
of carrying out such step carried out after step D) be
aseptic and conducted under aseptic conditions;
said maple beverage product at the time of being placed into
said containers but after said UHT having a micro-organism
load of not more than 10 CFU/ml and after 12 months
storage at 21°C to 25°C a micro-organism load of not more
than 10 CFU/mL.

Appeal Br. Claims Appendix 4–6 (emphasis added).
REJECTIONS
The Examiner maintains the following rejections in the Examiner’s
Answer entered August 23, 2018 (“Ans.”):3,4
I. Claims 7, 9–11, 13–16, 20, and 22–28 under 35 U.S.C. § 103(a)

3 The Examiner modified the rejections set forth in the Final Office Action
in the Advisory Action entered April 16, 2018 (“Advisory”), and we
accordingly refer to the rejections as presented in the Advisory Action.
4 Although the Examiner sets forth six provisional nonstatutory double
patenting rejections in the Advisory Action (Advisory 10–18), Appellant
does not contest these rejections. Appeal Br. 21. Nonetheless, we note that
the copending patent applications on which the rejections are based have all
been abandoned, rendering the rejections moot.
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as unpatentable over Tap5 in view of Appellant’s admitted prior art,6 Fleury,7
Jeong,8 Brody,9 Kim,10 and Barbeau;11 and
II. Claims 2, 3, and 12 under 35 U.S.C. § 103(a) as unpatentable
over Tap in view of Appellant’s admitted prior art, Fleury, Jeong, Brody,
Kim, Barbeau, Trollbridgecreek,12 and Wijesinghe.13
FACTUAL FINDINGS AND ANALYSIS
Upon consideration of the evidence relied upon in this appeal and
each of Appellant’s contentions, we affirm the Examiner’s rejections of
claims 2, 3, 7, 9–16, 20, and 22–28 under 35 U.S.C. § 103(a) for the reasons
set forth in the Final Action, the Answer, and below.
We review appealed rejections for reversible error based on the
arguments and evidence the appellant provides for each issue the appellant

5 Tap, Maple Trees at Home – Collect Sap & Make Syrup, published at the
Wayback Machine, February 10, 2011, available at
http://web.archive.org/web/20110210111030/http://www.tapmytrees.com/co
prsap.html (“Tap”).
6 Paragraph 5 of Appellant’s Specification.
7 Fleury et al., US 2011/0052759 A1, issued March 3, 2011 (“Fleury”).
8 Jeong, KR 10-0497048, published June 28, 2004.
9 Aaron L. Brody & Kenneth S. Marsh, The Wiley Encyclopedia of
Packaging Technology 41–45 (John Wiley & Sons, Inc., 2nd ed. 1997)
(“Brody”).
10 Kim, 10-2010-0093719, published August 26, 2010.
11 Barbeau et al., US 2014/0010930 A1, published January 9, 2014
(“Barbeau”).
12 Trollbridgecreek, History, published at the Wayback Machine, January 23,
2011, available at
http://web.archive.org/web/20110123013313/http://trollbridgecreek.ca/histor
y.html (“Trollbridgecreek”).
13 Wijesinghe et al., US 2013/0052298 A1, published February 28, 2013
(“Wijesinghe”).
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identifies. 37 C.F.R. § 41.37(c)(1)(iv); Ex parte Frye, 94 USPQ2d 1072,
1075 (BPAI 2010) (precedential) (cited with approval in In re Jung, 637
F.3d 1356, 1365 (Fed. Cir. 2011) (explaining that even if the Examiner had
failed to make a prima facie case, “it has long been the Board’s practice to
require an applicant to identify the alleged error in the examiner’s
rejections”)).
Rejection I
We first address the Examiner’s rejection of claims 7, 9–11, 13–16,
20, and 22–28 under 35 U.S.C. § 103(a) as unpatentable over Tap in view of
Appellant’s admitted prior art, Fleury, Jeong, Brody, Kim, and Barbeau.
Claims 13–16, 20, and 22–24
Appellant’s arguments are not directed to the separate patentability of
any of claims 13–16, 20, and 22–24, and thus, in effect, Appellant argues
these claims as a group. Appeal Br. 21–56. We, therefore, select
independent claim 16 as representative, and decide the appeal as to claims
13–16, 20, and 22–24 based on claim 16 alone.14 37 C.F.R.
§ 41.37(c)(1)(iv).
Independent claim 16 requires the recited method of making a maple
sap beverage product to consist of obtaining a first maple sap (having a
recited Brix value), and subjecting the first maple sap to ultrahigh

14 Appellant does not contest the aspects of the Examiner’s rejection of claim
16 that rely on Appellant’s admitted prior art and Fleury; consequently, we
need not address these references. Compare Advisory 4, with Appeal Br.
21–56. The Examiner relies on Kim in the rejection of claims 7, 9–11, 13–
15, 25, and 26. Advisory 6–7. Because we limit our discussion to claim 16,
we also need not address Kim.
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temperature pasteurization (UHT), followed by packaging the sap in aseptic
containers under aseptic conditions. Claim 16 requires the maple beverage
product, at the time of being placed into the containers and after ultrahigh
temperature pasteurization, to have a micro-organism load of not more than
10 CFU/ml, and to have a microorganism load of not more than 10 CFU/mL
after 12 months of storage at 21°C to 25°C.
Tap discloses collecting sap from maple trees to produce a maple sap
beverage. Tap p. 1. Tap discloses that although the maple sap may be
consumed “straight from the collection method,” the maple sap should be
boiled before consumption, to “effectively kill bacteria” and “eliminate any
possible bacteria growth.” Id. The Examiner finds that Tap does not
disclose subjecting maple sap to ultrahigh temperature pasteurization,
followed by packaging the sap in aseptic containers under aseptic conditions,
and the Examiner relies on Jeong, Barbeau, and Brody for suggesting
modification of Tap’s method to include these steps. Advisory 4–5.
Jeong discloses that the most common drinkable saps include those
from bamboo and maple trees. Jeong pp. 3–4. Jeong discloses that sap “is
easily decomposed by microorganisms,” and, therefore, must be sterilized
before it can be stored at room temperature for long periods of time. Jeong
pp. 8–9. Jeong discloses sterilizing sap by heating it to 135ºC to 140ºC and
maintaining the sap at that temperature for 2 to 3 seconds, which Jeong
refers to as “ultrahigh high temperature short time sterilization.” Jeong pp.
11–12. Jeong discloses that ultrahigh temperature short time sterilization
“can effectively destroy microorganisms while minimizing destruction of the
nutritious components . . . [but] to achieve a more complete sterilization
effect . . . [a] high voltage pulsed electric field treatment step (20) is carried
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out” following the ultrahigh temperature short time sterilization step. Jeong
pp. 13–14. Jeong discloses that the “sterilized sap which has gone through
said steps can be put into suitable container[s] such as pre-sterilized cans,
bottles, resin-coated paper packages and the like as the final step.” Jeong p.
19.
Barbeau discloses sterilizing sap produced from maple trees for a time
sufficient to greatly reduce, and preferably eliminate, microbial life in the
sap “with minimal taste alteration.” Barbeau ¶¶ 12, 47, 210, 211, 214, 230.
Barbeau discloses that suitable processes for sterilizing maple sap include
heat sterilization treatment (“also known as UHT treatment”), which may be
conducted alone or in combination with pulsed electric field sterilization.
Barbeau ¶¶ 47, 235. Barbeau discloses that heat sterilization treatment may
involve heating to from about 130ºC to about 150ºC for about 2 to 8
seconds. Barbeau ¶¶ 49, 236.
Brody discloses an aseptic packaging process for producing shelf-
stable packaged food products that involves filling sterilized containers with
a pre-sterilized product in a hermetically sealed, commercially sterile
environment. Brody p. 41; Fig. 1.
In view of these disclosures in Jeong, Barbeau, and Brody, the
Examiner concludes that it would have been obvious to one of ordinary skill
in the art at the time of Appellant’s invention to modify Tap’s method of
making a maple sap beverage by sterilizing the sap using the ultrahigh
temperature sterilization conditions disclosed in Jeong and Barbeau, and
packaging the sterilized sap using aseptic techniques as taught by Brody, to
ensure that the product does not spoil. Advisory 5.
The Examiner determines that because Tap’s method as modified by
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Jeong, Barbeau, and Brody involves sterilizing Tap’s maple sap beverage
using ultrahigh temperature sterilization at a temperature and time that
overlap the corresponding ranges recited in claim 16, and also involves
packaging the sterilized sap using aseptic packaging under aseptic
conditions, the maple sap beverage so treated would have, after ultrahigh
temperature sterilization and at the time of being packaged, a micro-
organism load of not more than 10 CFU/ml, and would have a
microorganism load of not more than 10 CFU/mL after 12 months of storage
at 21°C to 25°C, as recited in claim 16. Advisory 6. The Examiner explains
that because the “microbial load as recited in the claim is seen to express the
intended result of a positively recited process step . . . [and because] the
prior art teaches the process step, it is not seen that the particular result of
the process would have been patentability distinct.” Id.
Appellant argues that the Examiner does not meet the Examiner’s
burden of showing that one of ordinary skill in the art would have been
motivated “to combine the [applied prior art] references with a reasonable
expectation of success in achieving” a microorganism load as recited in
claim 16 of not more than 10 CFU/ml after 12 months storage at 21ºC to
25ºC (referred to hereinafter as “the recited storage sterility”). Appeal Br.
28–29, 32–34, 40, 47 (emphasis omitted).
Appellant argues that the applied prior art references do not teach or
suggest the recited storage sterility, but teach, at best, “a possible
expectation of not more than 9 months storage stability.” Appeal Br. 27–29,
33–34. Appellant argues that the only applied prior art references that
disclose ultrahigh temperature sterilization are Jeong and Barbeau, which
disclose, respectively, that ultrahigh temperature sterilization of bamboo
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yields a room temperature storage stability of not more than three months,
and ultrahigh temperature sterilization of maple sap yields a room
temperature storage stability of up to six months. Id. Appellant argues that
data presented in the Declaration of inventor Michael Farrell filed June 4,
2018 show that when maple sap was subjected to ultrahigh temperature
sterilization and packaged in aseptic containers without the use of aseptic
conditions during packaging, sterility was maintained for 3–7.75 months.
Id. at 29–30, 38–39, 50, 52. Appellant argues that these “results varied
between what was shown in Jeong for bamboo to what is asserted in
Barbeau (all without the use of aseptic conditions during packaging).” Id. at
29, 38, 50.
Appellant further refers to Kirk-Othmer, 18 Encyclopedia of Chemical
Technology, 5th ed., pp. 32–33 (2006), discussed in paragraph 26 of
Appellant’s Specification, and Zoltai et al. (US 7,700,145 B1, issued April
20, 2010), cited by Appellant in an Information Disclosure Statement filed
September 19, 2017. Appeal Br. 27–29, 36, 37, 46–47, 51. Appellant
argues that Kirk-Othmer and Zoltai are “the only art in the record” that
disclose a sterility time point achieved using a combination of ultrahigh
temperature sterilization and packaging into aseptic containers under aseptic
conditions. Id. at 28. Appellant argues that Kirk-Othmer discloses that
treating milk according to such a process resulted in a storage stability for up
to six months, while Zoltai discloses that treating dairy products according
to such a process resulted in a storage stability for up to nine months. Id. at
27–28. Appellant argues that these disclosures in Jeong, Barbeau, Kirk-
Othmer, and Zoltai do not teach or suggest that the recited storage stability
has been achieved or is achievable, and, Appellant argues, the teachings of
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the references, therefore, mitigate against a reasonable expectation that the
recited storage sterility could be successfully achieved. Id. at 28–29, 32–34,
40, 47.
Appellant’s arguments do not identify reversible error in the
Examiner’s rejection, for reasons that follow.
As discussed above, Tap discloses that bacteria present in maple sap
following collection from maple trees should be killed before the sap is
consumed, and Jeong and Barbeau both disclose that maple sap collected
from maple trees requires sterilization to reduce the level of microorganisms
present in the sap. Tap p. 1; Jeong pp. 8–9; Barbeau ¶ 12. As discussed
above, Jeong discloses that ultrahigh temperature sterilization of maple sap,
conducted at 135ºC to 140ºC for 2 to 3 seconds, “can effectively destroy
microorganisms while minimizing destruction of the nutritious components”
in the sap, and Barbeau discloses that heat sterilization, conducted at from
about 130ºC to about 150ºC for about 2 to 8 seconds, greatly reduces
microbial life in maple sap “with minimal taste alteration.” Jeong pp. 13–
14; Barbeau ¶¶ 230, 235, 236. These disclosures in Jeong and Barbeau
would have led one of ordinary skill in the art to sterilize maple sap
collected from maple trees as disclosed in Tap using Jeong and Barbeau’s
ultrahigh temperature sterilization conditions, to ensure safe consumption of
the sap by greatly reducing the level of microorganisms present in the sap,
while minimally altering its taste and nutritional content. Furthermore, in
view of Jeong’s disclosure of packaging the sterilized maple sap in pre-
sterilized containers, and Brody’s disclosure that using aseptic packaging
techniques yields shelf-stable packaged food products, one of ordinary skill
in the art would have been led to package the maple sap sterilized as
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disclosed in Jeong and Barbeau in pre-sterilized containers using aseptic
packaging techniques as disclosed in Brody, to produce packaged maple sap
that would be shelf-stable. Brody p. 41; Fig. 1. One of ordinary skill in the
art reasonably would have expected that packaging maple sap sterilized
using Jeong and Barbeau’s ultrahigh temperature sterilization conditions in
pre-sterilized containers using aseptic packaging techniques as disclosed in
Brody would successfully extend the storage sterility of the maple sap. In re
Kubin, 561 F.3d 1351, 1360 (Fed. Cir. 2009) (“Obviousness does not require
absolute predictability of success . . . all that is required is a reasonable
expectation of success.”) (emphasis omitted) (citing In re O’Farrell, 853
F.2d 894, 903‒04 (Fed. Cir. 1988).
As discussed above, Appellant argues that Jeong, Barbeau, Kirk-
Othmer, and Zoltai teach, at best, “a possible expectation of not more than 9
months storage stability” for maple sap, and, Appellant argues, the prior art,
therefore, “mitigates against” a reasonable expectation that the storage
sterility recited in claim 16 could be successfully achieved. As the Examiner
explains, however, Kirk-Othmer and Zoltai disclose sterilization and aseptic
packaging of milk and dairy products—rather than maple sap. Ans. 4. Due
to the significant compositional differences between maple sap and milk and
dairy products, one of ordinary skill in the art reasonably would not have
expected that the storage stability of maple sap after sterilization and aseptic
packaging would be the same, or even similar to, the storage stability of milk
and dairy products disclosed in Kirk-Othmer and Zoltai. Id.
Furthermore, consistent with the disclosures in Appellant’s
Specification, the storage sterility recited in claim 16 (a microorganism load
of not more than 10 CFU/ml after 12 months storage at 21ºC to 25ºC),
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expresses a result of performing the steps recited in the claim of subjecting
maple sap to ultrahigh temperature pasteurization, followed by packaging in
aseptic containers under aseptic conditions, rather than imposing a further
limitation on the claimed method. Spec. ¶¶ 26, 28, 29. The recited storage
sterility, therefore, does not impart patentable weight to the method of claim
16. Tex. Instruments Inc. v. U.S. Int’l Trade Comm’n, 988 F.2d 1165, 1172
(Fed. Cir. 1993) (“whereby” or “thereby” clauses in a method claim “that
merely state[] the result of the limitations in the claim add[] nothing to the
patentability or substance of the claim”); Minton v. Nat’l Ass’n of Securities
Dealers, Inc., 336 F.3d 1373, 1381 (Fed. Cir. 2003) (“A whereby clause in a
method claim is not given weight when it simply expresses the intended
result of a process step positively recited.”); In re Kubin, 561 F.3d at 1357
(“Even if no prior art of record explicitly discusses the [limitation],
[applicants’] application itself instructs that [the limitation] is not an
additional requirement imposed by the claims on the [claimed invention],
but rather a property necessarily present in [the claimed invention]”).
Appellant argues that In re Stepan Co., 868 F.3d 1342 (Fed. Cir.
2017) “controls in this case,” and because “the Examiner has not rebutted
this argument, the Examiner should be reversed.” Appeal Br. 23–25, 34–41.
Contrary to Appellant’s arguments, Stepan does not “control” in this
case, for reasons that follow.
In contrast to Appellant’s claim 16, which is a method claim, the
claims at issue in Stepan were composition claims. Stepan, 868 F.3d at
1344–45. The sole independent claim (claim 1) recited an ultrahigh load,
aqueous glyphosate salt-containing concentrate comprising water, a
glyphosate salt, and a surfactant system, and recited “said concentrate
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having a cloud point above at least 70°C, or no cloud point when the
concentrate is heated to its boiling point.” Id. The Federal Circuit vacated
and remanded the Board’s decision affirming the Examiner’s rejection of the
claims as obvious because “[t]he Board failed to explain why it would have
been ‘routine optimization’ to select and adjust the claimed surfactants and
achieve a cloud point above at least 70°C.” Id. at 1346. The court indicated
that “the Board must provide some rational underpinning explaining why a
person of ordinary skill in the art would have arrived at the claimed
invention through routine optimization.” Id.
In contrast to the claims at issue in Stepan, which recited a property of
a claimed composition, claim 16 recites a result (storage sterility) of
performing the positively recited steps of the claimed method. Also in
contrast to Stepan, the Examiner’s rejection in the present case is not based
on a determination that one of ordinary skill in the art would have achieved
the recited storage sterility through routine optimization. Rather, the
Examiner finds that the teachings of Tap, Jeong, Barbeau, and Brody would
have suggested producing a maple sap beverage using the method steps
recited in claim 16 (subjecting maple sap to ultrahigh temperature
pasteurization, followed by packaging the sterilized sap in aseptic containers
under aseptic conditions), which necessarily would result in production of a
maple sap product having a storage sterility as recited in claim 16. Advisory
3–6; see Kubin, 561 F.3d at 1357.
Appellant argues that the “consisting of” transitional phrase recited in
claim 16 “requires one of ordinary skill in the art to select the specifically
included process steps from the broad range of possible sterilization
techniques available,” while “specifically exclud[ing] all of the non-recited
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sterilization techniques from consideration.” Appeal Br. 42–43. Appellant
argues that the Examiner’s position that because “the various techniques
used in the present invention are available in the art, it would be obvious to
combine them in achieving the invention process . . . abrogates the claim
limitation of ‘consisting of.’” Id. at 43.
Appellant’s arguments again do not identify reversible error in the
Examiner’s rejection. As discussed above, Tap discloses that although
maple sap may be consumed “straight from the collection method,” the
maple sap should be boiled before consumption, to “effectively kill bacteria”
and “eliminate any possible bacteria growth.” Tap p. 1. Jeong’s disclosure
that ultrahigh temperature sterilization, conducted at 135ºC to 140ºC for 2 to
3 seconds, “can effectively destroy microorganisms while minimizing
destruction of the nutritious components” in maple sap, and Barbeau’s
disclosure that heat sterilization conducted at from about 130ºC to about
150ºC for about 2 to 8 seconds, greatly reduces microbial life in maple sap
“with minimal taste alteration,” would have led one of ordinary skill in the
art to sterilize maple sap collected from maple trees as disclosed in Tap
using the ultrahigh temperature sterilization conditions disclosed in Jeong
and Barbeau, rather than sterilizing the sap by boiling it as disclosed in Tap,
to maintain the nutritional content of the sap without altering its taste, while
greatly reducing the level of microorganisms in maple sap. Jeong pp. 13–
14; Barbeau ¶¶ 230, 235, 236.
As also discussed above, Brody’s disclosure that using aseptic
packaging techniques yields shelf-stable packaged food products would have
led one of ordinary skill in the art to package maple sap sterilized using
Jeong and Barbeau’s ultrahigh temperature sterilization conditions in pre-
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sterilized containers using aseptic packaging techniques, to extend the
storage stability of the maple sap. Brody p. 41; Fig. 1.
The proposed modification of Tap’s method of producing a maple sap
beverage thus involves substituting ultrahigh temperature sterilization as
disclosed in Jeong and Barbeau for boiling as disclosed in Tap, and
packaging the sterilized sap using aseptic packaging techniques as disclosed
in Brody. Contrary to Appellant’s arguments, the proposed modification of
Tap’s method, therefore, does not abrogate the “consisting of” transitional
phrase recited in claim 16, because the proposed modified method includes
only the steps recited in claim 16—subjecting maple sap to ultrahigh
temperature pasteurization, followed by packaging the sterilized sap in
aseptic containers under aseptic conditions.
Appellant argues that the Examiner incorrectly interprets Barbeau’s
disclosure of using ultrahigh temperature sterilization to kill “all spores,
micro-organisms, yeasts, and molds” in maple sap as indicating that all
levels of these spores, microorganisms, yeasts, and molds are destroyed.
Appeal Br. 44–45, 48. Appellant argues that this disclosure in Barbeau “is
more reasonably interpreted to mean that ‘all types’ of these are destroyed”
to a large extent, without indicating “that all levels of all types are
destroyed.” Id. at 48.
Claim 16 does not require the recited method to eliminate all spores,
microorganisms, yeasts, and molds in the maple sap beverage produced
according to the claimed method, however. Appellant’s arguments,
therefore, do not identify reversible error in the Examiner’s rejection
because the arguments are directed to subject matter that is not claimed. In
re Self, 671 F.2d 1344, 1348 (CCPA 1982) (“[A]ppellant’s arguments fail
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from the outset because . . . they are not based on limitations appearing in
the claims.”). Nonetheless, we point out that Barbeau explicitly discloses
sterilizing sap produced from maple trees for a time sufficient “to greatly
reduce and preferably eliminate the microbial life in the sap.” Barbeau
¶ 230; see also id. ¶¶ 210, 211, 214.
Appellant argues that Jeong teaches away from sterilizing maple sap
using ultrahigh temperature sterilization without also subjecting the sap to
high voltage pulsed electric field treatment, because sterilizing sap using a
combination of these two treatments “is the invention in Jeong.” Appeal Br.
49–50, 54. Appellant argues that “[n]othing in either Jeong or Brody gives
one of ordinary skill in the art any motivation to eliminate the electric field
effect,” and if the ordinarily skilled artisan “were to apply ‘aseptic
packaging of the product’ to the disclosure in Jeong, the logical addition
would be to apply it to the product resulting in a sap being treated by both
UHT [ultrahigh temperature sterilization] and the electric field effect.” Id.
at 54.
As discussed above, however, Jeong discloses that ultrahigh
temperature sterilization of maple sap “can effectively destroy
microorganisms while minimizing destruction of the nutritious
components.” Jeong pp. 13–14. Although Jeong discloses that “to achieve a
more complete sterilization effect . . . [a] high voltage pulsed electric field
treatment step (20) is carried out,” this disclosure does not negate Jeong’s
explicit disclosure that ultrahigh temperature sterilization of maple sap alone
effectively destroys microorganisms in the sap. Id. at 14. Contrary to
Appellant’s arguments, Jeong, therefore, does not teach away from
sterilizing maple sap by conducting ultrahigh temperature sterilization in the
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absence of a high voltage pulsed electric field treatment step, because Jeong
does not criticize or disparage such a sterilization process. Rather, Jeong
explicitly discloses the effectiveness of ultrahigh temperature sterilization
alone for destroying microorganisms in the maple sap. See Meiresonne v.
Google, Inc., 849 F.3d 1379, 1382 (Fed. Cir. 2017) (“A reference that
‘merely expresses a general preference for an alternative invention but does
not criticize, discredit, or otherwise discourage investigation into’ the
claimed invention does not teach away.”) (quoting Galderma Labs., L.P. v.
Tolmar, Inc., 737 F.3d 731, 738 (Fed. Cir. 2013)); Bayer Pharma AG v.
Watson Labs., Inc., 874 F.3d 1316, 1327 (Fed. Cir. 2017) (“[T]he teaching
away inquiry does not focus on whether a person of ordinary skill in the art
would have merely favored one disclosed option over another disclosed
option.”).
Furthermore, as discussed above, Barbeau discloses sterilizing sap
produced from maple trees for a time sufficient to greatly reduce, and
preferably eliminate, microbial life in the sap “with minimal taste
alteration.” Barbeau ¶¶ 12, 47, 210, 211, 214, 230. Barbeau discloses that
such a sterilization process can be a heat sterilization treatment (“also known
as UHT treatment”), which may be conducted alone or in combination with
pulsed electric field sterilization. Barbeau ¶¶ 47, 235. One of ordinary skill
in the art would have understood Barbeau’s disclosure that maple sap may
be sterilized using heat sterilization treatment—in the absence of pulsed
electric field sterilization—to indicate that heat sterilization treatment alone
is effective to greatly reduce microbial life in maple sap. KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007) (an obviousness analysis “need not
seek out precise teachings directed to the specific subject matter of the
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challenged claim, for [an examiner] can take account of the inferences and
creative steps that a person of ordinary skill in the art would employ.”); see
also In re Preda, 401 F.2d 825, 826 (CCPA 1968) (“[I]t is proper to take
into account not only specific teachings of the reference but also the
inferences which one skilled in the art would reasonably be expected to draw
therefrom.”).
Thus, contrary to Appellant’s arguments, one of ordinary skill in the
art would have understood from the above disclosures of Jeong and Barbeau
that maple sap could be effectively sterilized using ultrahigh temperature
sterilization without also subjecting the sap to a pulsed electric field
treatment. Accordingly, the combined disclosures of Tap, Jeong, Barbeau,
and Brody would have suggested substituting ultrahigh temperature
sterilization as disclosed in Jeong and Barbeau—without a pulsed electric
field sterilization treatment—for boiling as disclosed in Tap, and packaging
the sterilized sap using aseptic packaging techniques as disclosed in Brody,
as recited in claim 16.
Appellant argues that aseptic packaging conditions were known in the
art at least as early as 1977, but “Jeong does not mention anything about
aseptic conditions for packaging the [maple sap] product [described in the
reference] other than utilizing sterile containers.” Appeal Br. 55. Appellant
argues that “there is no reference relied upon by the Examiner that indicates
that anyone thought of making the invention until after Applicant’s [sic]
filed their applications, a period of approximately 8 years after the
publication of Jeong, and over 35 years after the art concerning aseptic
conditions in packaging was known,” which, Appellant argues, demonstrates
that Appellant’s invention fulfilled a long-felt, unmet need. Id. at 55–56.
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The age of prior art references alone, however, is insufficient to show
the non-obviousness of a combination of the references’ teachings, in the
absence of evidence establishing that, notwithstanding knowledge of the
references, the art tried and failed to solve the same problem addressed by
the claimed invention. In re Wright, 569 F.2d 1124, 1127 (CCPA 1977)
(“The mere age of the references is not persuasive of the unobviousness of
the combination of their teachings, absent evidence that, notwithstanding
knowledge of the references, the art tried and failed to solve the problem.”).
On the record before us, Appellant does not provide objective
evidence establishing that “the art tried and failed to solve the problem”
described in Appellant’s Specification of sterilizing maple sap in a manner
that imparts “sufficient shelf life to last from one production year to
another.” Spec. ¶ 4. To the contrary, the applied prior art references
demonstrate that means for effectively sterilizing maple sap were known in
the art at the time of Appellant’s invention, and Appellant’s unsupported
arguments do not show that the known sterilization methods for maple sap
would not have resulted in a shelf life sufficient to allow the sap to last from
one production year to another. In re Schulze, 346 F.2d 600, 602 (CCPA
1965) (“Argument in the brief does not take the place of evidence in the
record.”). Rather, as discussed above, Jeong discloses that maple sap
sterilized by ultrahigh temperature treatment effectively destroys
microorganisms in the sap, allowing it to be stored at room temperature for
long periods of time. Jeong pp. 8–9, 13–14. And Barbeau discloses that
sterilizing sap produced from maple trees using ultrahigh temperature
sterilization greatly reduces microbial life in the sap, while Brody discloses
that using aseptic packaging techniques to package food yields shelf-stable
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products. Barbeau ¶¶ 12, 47, 49, 210, 211, 214, 230, 235; Brody p. 41; Fig.
1. Icon Health & Fitness, Inc. v. Strava, Inc., 849 F.3d 1034, 1043 (Fed.
Cir. 2017) (“Attorney argument is not evidence” and cannot rebut other
admitted evidence.).
In view of these disclosures in Jeong, Barbeau, and Brody,
Appellant’s unsupported arguments do not constitute objective evidence
establishing the existence of a persistent problem recognized by those of
ordinary skill in the art for which a solution was not known, which was
solved by Appellant’s invention. Appellant’s unsupported arguments,
therefore, do not establish that Appellant’s invention fulfilled a long-felt,
unmet need. See In re Gershon, 372 F.2d 535, 538–39 (CCPA 1967)
(establishing long-felt need requires objective evidence showing existence of
a persistent problem recognized by those of ordinary skill in the art for
which a solution was not known); Newell Cos. v. Kenney Mfg. Co., 864 F.2d
757, 768 (Fed. Cir. 1988) (the long-felt need must not have been satisfied by
another before the invention by applicant); In re Kahn, 441 F.3d 977, 990
(Fed. Cir. 2006) (“[O]ur precedent requires that the applicant submit actual
evidence of long-felt need, as opposed to argument.”).
Appellant argues that results presented in the Declaration of inventor
John Zabrodsky filed June 4, 2018 show that when maple sap was sterilized
by ultrahigh temperature pasteurization (at either 140ºC or 142.7ºC for 3.5
seconds) and packaged in aseptic containers using aseptic conditions during
packaging, a micro-organism load of not more than 10 CFU/ml was
achieved after storage at ambient temperature for 33 months (“33 months
sterility”), which was “surprising and unexpected,” in view of results
presented in the Declaration of inventor Michael Farrell filed June 4, 2018.
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Appeal Br. 29–30, 47; Zabrodsky Decl. ¶ 13; Farrell Decl. ¶¶ 15, 16.
Appellant argues that “the Examiner’s position has foreclosed any
consideration of these results” because the Examiner’s approach limits the
Zabrodsky Declaration “to a secondary role of having to overcome the prima
facie case the Examiner has asserted is present,” in violation of the “express
requirements of Graham v. John Deere Co., 383 U.S. 1 (1966) . . . that the
[obviousness] analysis consider all of the factors, including the so called
‘secondary factors’ together.” Appeal Br. 29–30.
When evidence of secondary considerations is submitted, we begin
anew and evaluate the rebuttal evidence along with the evidence upon which
the conclusion of prima facie obviousness was based. In re Eli Lilly & Co.,
902 F.2d 943, 945 (Fed. Cir. 1990) (citing In re Piasecki, 745 F.2d 1468,
1472 (Fed. Cir. 1984)) (“After a prima facie case of obviousness has been
made and rebuttal evidence submitted, all the evidence must be considered
anew.”); In re Rinehart, 531 F.2d 1048, 1052 (CCPA 1976).
The burden of analyzing and explaining data presented in a
Declaration to support an assertion of non-obviousness rests with the
appellant. In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). To meet this
burden, the appellant must provide objective evidence demonstrating that the
claimed subject matter imparts results that (1) would have been unexpected
by one of ordinary skill in the art at the time of the appellant’s invention
relative to the closest art, and (2) are commensurate in scope with the
claimed subject matter. In re Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005)
(“Even assuming that the results were unexpected, Harris needed to show
results covering the scope of the claimed range. Alternatively Harris needed
to narrow the claims.”); In re Baxter Travenol Labs., 952 F.2d 388, 392
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(Fed. Cir. 1991) (“[W]hen unexpected results are used as evidence of
nonobviousness, the results must be shown to be unexpected compared with
the closest prior art.”); In re Greenfield, 571 F.2d 1185, 1189 (CCPA 1978)
(“Establishing that one (or a small number of) species gives unexpected
results is inadequate proof, for ‘it is the view of this court that objective
evidence of non-obviousness must be commensurate in scope with the
claims which the evidence is offered to support.’” (quoting In re Tiffin, 448
F.2d 791, 792 (CCPA 1971))).
In the present case, Appellant does not meet this burden. Paragraph
13 of the Zabrodsky Declaration describes subjecting two maple sap samples
to ultrahigh temperature pasteurization at either 140ºC or 142.7ºC for 3.5
seconds, packaging the sap in sterile containers under aseptic conditions, and
storing the packages at ambient temperature. The Zabrodsky Declaration
indicates that the first sample was “stable” after 33.75 months storage, while
the second sample was “stable” after 15.75 months storage. Zabrodsky
Decl. ¶ 13. Jeong, the closest prior art, discloses sterilizing maple sap at a
temperature of 135ºC to 140ºC for 2 to 3 seconds (pp. 11–12), and then
putting the sterilized sap into pre-sterilized containers (p. 19).
The Farrell Declaration describes “comparative” experiments that
involved subjecting maple sap to ultrahigh temperature sterilization at
138.9ºC to 139.4ºC for 3 seconds, packaging the sterilized sap in sterile
containers without using aseptic packaging conditions, and storing the
packaged sap at ambient temperature. Farrell Decl. ¶ 15. The Farrell
Declaration indicates that the sample exhibiting the longest storage stability
“fail[ed]” after 7.75 months, defined as exhibiting a microorganism load of
at least 10 CFU/ml. Farrell Decl. ¶ 16.
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The inventive experiments described in paragraph 13 of the
Zabrodsky Declaration, therefore, differ from the process disclosed in Jeong,
and the experiments described in the Farrell Declaration, by including use of
aseptic conditions when packaging the sterilized maple sap. Although the
Zabrodsky Declaration indicates that it was “totally unexpected and
surprising” that “extensive additional storage times with excellent sterility”
were achieved “by merely assuring sterile (aseptic) conditions in the
packaging operations,” neither the Declarant nor Appellant provides any
objective evidence that corroborates this opinion. Zabrodsky Decl. ¶ 13.
Notably, Brody’s disclosures discussed above show that it was known in the
art that aseptic packaging processes produce shelf-stable food products, and
the Zabrodsky Declaration does not address this disclosure in Brody. The
opinion provided in the Zabrodsky Declaration that the additional storage
sterility afforded by using sterile (aseptic) conditions during packaging was
“totally unexpected and surprising,” therefore, does not take into
consideration the state of the art as a whole at the time of Appellant’s
invention.
We, consequently, accord the opinion set forth in the Zabrodsky
Declaration little weight. Yorkey v. Diab, 601 F.3d 1279, 1284 (Fed. Cir.
2010) (the Board has discretion to give more weight to one item of evidence
over another “unless no reasonable trier of fact could have done so”); In re
Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) (“[T]he
Board is entitled to weigh the declarations and conclude that the lack of
factual corroboration warrants discounting the opinions expressed in the
declarations.”); Velander v. Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003)
(“[W]hat the Board consistently did was accord little weight to broad
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conclusory statements that it determined were unsupported by corroborating
references. It is within the discretion of the trier of fact to give each item of
evidence such weight as it feels appropriate.”).
Furthermore, claim 16 recites conducting ultrahigh temperature
pasteurization at a temperature of from 130ºC to 150ºC with an exposure
time of 1 to 10 seconds. As discussed above, paragraph 13 of the Zabrodsky
Declaration describes subjecting two maple sap samples to ultrahigh
temperature pasteurization conducted at only two temperatures—140ºC or
142.7ºC—for a single time period of 3.5 seconds. Appellant does not
explain why the limited ultrahigh temperature pasteurization conditions
tested in the Zabrodsky Declaration are reasonably commensurate with the
full scope of claim 16, which recites ultrahigh temperature pasteurization
temperatures and times that are not limited to those tested in the experiments
described in paragraph 13 of the Zabrodsky Declaration. Harris, 409 F.3d at
1344; Greenfield, 571 F.2d at 1189. Nor has Appellant provided an
adequate basis to support a conclusion that other embodiments falling within
the claim would be expected to behave in the same manner as the tested
embodiments. See In re Kao, 639 F.3d 1057, 1068 (Fed. Cir. 2011) (“If an
applicant demonstrates that an embodiment has an unexpected result and
provides an adequate basis to support the conclusion that other embodiments
falling within the claim will behave in the same manner, this will generally
establish that the evidence is commensurate with the claims.”).
Thus, considering the totality of the evidence in the record before us,
the evidence of obviousness relied on by the Examiner outweighs
Appellant’s evidence of non-obviousness, and a preponderance of the
evidence, therefore, weighs in favor of the Examiner’s conclusion of
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obviousness. Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1372 (Fed. Cir.
2007) (evidence of unexpected results and other secondary considerations
will not necessarily overcome a strong prima facie showing of
obviousness.); see also In re Nolan, 553 F.2d 1261, 1267 (CCPA 1977)
(“Considering all of the evidence, we are not persuaded that the evidence of
the unexpected higher luminous efficiency and lower peak discharge current
rebuts the strong showing of obviousness.”).
We, accordingly, sustain the Examiner’s rejection of claims 13–16,
20, and 22–24 under 35 U.S.C. § 103(a).
Claims 7, 9–11, and 25–28
Claims 7, 25, and 26 depend from independent claim 16 and recite
that the product has a micro-organism load after being packaged in aseptic
containers, being subjected to said ultrahigh temperature pasteurization
under aseptic conditions, and having been stored at 21ºC to 25ºC for a period
of 24 months, 15 months, or 21 months, respectively, of not more than 10
CFU/ml.
Claims 10 and 11 depend from independent claim 16 and recite that
the product has a shelf life of at least 12 months or 24 months, respectively,
after being packaged under aseptic conditions in aseptic containers and
subjected to ultrahigh temperature pasteurization.
Claims 9, 27, and 28 depend from independent claim 23 and recite
that the product has a micro-organism load after being packaged in aseptic
containers, being subjected to said ultrahigh temperature pasteurization
under aseptic conditions, and having been stored at 21ºC to 25ºC for a period
of 24 months, 15 months, or 21 months, respectively, of not more than 10
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CFU/ml.
Appellant argues that the “art simply does not give anyone any
expectation of success in achieving these longer storage sterility time points
required by . . . claims [7, 9–11, and 25–28].” Appeal Br. 31, 52–54.
Appellant argues that because claims 7, 9–11, and 25–28 recite sterility
times longer than the 12 months recited in independent claim 16, “the
unexpected nature of the storage time frame [recited in these claims] is ever
so much stronger.” Id. at 52.
As with independent claim 16 discussed above, however, the storage
sterility recited in each of claims 7, 9–11, and 25–28 expresses a result that
occurs when the steps recited in each claim are performed (subjecting maple
sap to ultrahigh temperature pasteurization, followed by packaging in aseptic
containers under aseptic conditions), rather than imposing a further
limitation on the recited method. Kubin, 561 F.3d at 1357. The storage
sterility recited in each of claims 7, 9–11, and 25–28, therefore, does not
impart patentable weight to the method set forth in each claim. Tex.
Instruments, 988 F.2d at 1172; Minton, 336 F.3d at 1381.
Furthermore, as discussed above, neither Declarant Zabrodsky nor
Appellant provide any objective evidence corroborating the opinion set forth
in the Declaration that it was “totally unexpected and surprising” that
“extensive additional storage times with excellent sterility” were achieved
by using aseptic conditions when packaging maple sap sterilized by
ultrahigh temperature sterilization. As also discussed above, the Zabrodsky
Declaration does not take into consideration the state of the art as a whole at
the time of Appellant’s invention, particularly Brody’s disclosure that it was
known in the art that aseptic packaging processes produce shelf-stable food
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products. Accordingly, as with independent claim 16, the evidence
Appellant relies on to support Appellant’s assertion of nonobviousness does
not outweigh the evidence the Examiner relies on to establish obviousness.
A preponderance of the evidence in this appeal record, therefore, weighs in
favor of the Examiner’s conclusion that the subject matter of claims 7, 9–11,
and 25–28 would have been obvious at the time of Appellant’s invention.
We, accordingly, sustain the Examiner’s rejection of these claims under 35
U.S.C. § 103(a).
Rejection II
Appellant states in the Appeal Brief that the Examiner’s rejection of
claims 2, 3, and 12 under 35 U.S.C. § 103(a) as unpatentable over Tap in
view of Appellant’s admitted prior art, Fleury, Jeong, Brody, Kim, Barbeau,
Trollbridgecreek, and Wijesinghe “is not being argued at this time, and these
claims stand or fall with the claims from which they depend.” Appeal Br.
20–21. Accordingly, because we sustain the Examiner’s rejection of claim
16 (as discussed above), from which claims 2, 3, and 12 depend, we also
sustain the Examiner’s rejection of claims 2, 3, and 12 under 35 U.S.C.
§ 103(a).
CONCLUSION

Claims
Rejected

35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
7, 9–11, 13–
16, 20, 22–28
103(a)  Tap, Appellant’s
admitted prior art,
Fleury, Jeong, Brody,
Kim, Barbeau
7, 9–11,
13–16, 20,
22–28

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Claims
Rejected

35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
2, 3, 12 103(a)  Tap, Appellant’s
admitted prior art,
Fleury, Jeong, Brody,
Kim, Barbeau,
Trollbridgecreek,
Wijesinghe
2, 3, 12
Overall
Outcome
2, 3, 7,
9–16, 20,
22–28

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)(iv).

AFFIRMED