GENERAL MILLS, INC.

Patent Trials and Appeals Board

Jan 19, 2022

2021000751 (P.T.A.B. Jan. 19, 2022)

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. 14/766,557 08/07/2015 Bernhard H. Van Lengerich 0463.000023US01 6334 121854 7590 01/19/2022 MRG/General Mills c/o Mueting Raasch Group 111 Washington Ave. S., Suite 700 Minneapolis, MN 55401 EXAMINER MCCLAIN, TYNESHA L. ART UNIT PAPER NUMBER 1793 NOTIFICATION DATE DELIVERY MODE 01/19/2022 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): GMI.Patents@genmills.com ptodocketing@mrgs.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte BERNHARD H. VAN LENGERICH, OLAF GRUESS, JOACHIM HANS, LARS OLE HAUSTEDT, ANDREAS HOCHHEIMER, MICHEAL KROHN, JENS-PETER MULLER, CHRISTINE M. NOWAKOWSKI, SUZANNE DENISE PECORE, CANDACE MICHELLE RATHJEN-NOWAK, LIA SCARABOTTOLO, and KARSTEN SIEMS Appeal 2021-000751 Application 14/766,557 Technology Center 1700 Before DEBRA L. DENNETT, MERRELL C. CASHION, JR., and SHELDON M. MCGEE, Administrative Patent Judges. MCGEE, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 21-26 and 29-48. We have jurisdiction. 35 U.S.C. § 6(b). We affirm in part. 1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as General Mills, Inc. Appeal Br. 2. Appeal 2021-000751 Application 14/766,557 2 CLAIMED SUBJECT MATTER The claims are directed to food products containing a salt and at least one isolated compound selected from a group of compounds which purportedly modify or enhance the taste, e.g., the saltiness, of the food product. Claim 21; Spec. ¶ 1. “For example, food products that include one or more taste modulating or salty compounds . . . may have lower sodium content relative to food products that do not include” such compounds, “while imparting a similar level of saltiness.” Spec. ¶ 6. Sole independent claim 21, reproduced below, is illustrative of the claimed subject matter: 21. A food product comprising: a salt that elicits a salty taste; and at least one isolated compound selected from the group consisting of compounds 10, 23, 24, 25, 29, 36, 37, 38, 48, 54, 56, 60, 61, 65, 66, 83, 84, 87, and 94, wherein the at least one isolated compound is present in the food product in an amount sufficient to enhance perception of saltiness of the food product relative to a substantially similar food product that does not include the at least one isolated compound. REJECTIONS I. Claims 21-23, 25, 26, 29, 34, 35, 41, and 42 under pre-AIA 35 U.S.C. § 103(a) over Jones2 in view of Segal3; II. Claims 24, 30, and 31 under pre-AIA 35 U.S.C. § 103(a) over Jones, Segal, and DeSimone4; 2 US 2006/0112584 A1, published June 1, 2006. 3 WO 2010/026596 A2, published March 11, 2010. 4 US 2005/0031717 A1, published February 10, 2005. Appeal 2021-000751 Application 14/766,557 3 III. Claims 24, 32, 33, and 36-40 under pre-AIA 35 U.S.C. § 103(a) over Jones, Segal, and Rafi5; IV. Claims 21, 25, 34, 35, 41, 43, 44, and 46 under pre-AIA 35 U.S.C. § 103(a) over Jones and Matthewson6; V. Claims 21-23, 25, 34, 35, 41, 42, and 45 under pre-AIA 35 U.S.C. § 103(a) over Jones and Heymann7; VI. Claims 21, 22, 25, 34, 35, 41, 42, and 47 under pre-AIA 35 U.S.C. § 103(a) over Jones and Ferdani8; VII. Claims 21, 25, 34, 35, 41, 42, and 48 under pre-AIA 35 U.S.C. § 103(a) over Jones and Ekong9; VIII. Claims 21-23, 25, 26, 29, 32, 34, 36, and 47 under 35 U.S.C. § 101 as claiming the same invention as claims 1, 2, and 5 of US Patent 10,159,268. OPINION We review the appealed rejections for reversible error based on the arguments and evidence presented by Appellant. 37 C.F.R. § 41.37(c)(1)(iv); Cf. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. 5 US 2005/0215635 A1, published September 29, 2005. 6 WO 02/26713 A1, published April 4, 2002. 7 Henry Heymann et al., Constituents of Sindora sumatrana MIQ. I. Isolation and NMR Spectral Analysis of Sesquiterpenes from the Dried Pods, 42 Chem. Pharm. Bull. 138-46 (1994). 8 Riccardo Ferdani et al., Anion transport in liposomes responds to variations in the anchor chains and the fourth amino acid of heptapeptide ion channels, 29 New J. Chem. 673-80 (2005). 9 D.E.U. Ekong et al., Chemistry of the Constituents of Xylopia aethiopica. The Structure of Xylopic Acid, a New Diterpene Acid, J. Chem. Soc. 311-12 (1968). Appeal 2021-000751 Application 14/766,557 4 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”). Rejections I-III The Examiner finds that Jones discloses a food product encompassed by claim 21, but fails to expressly disclose that the food product comprises isolated compound 83. Final Act. 3. The Examiner finds that Segal discloses therapeutic compositions comprising polyhydroxylated fatty alcohols which preferably contain a carbon backbone of from C13 to C25, optionally with one or more unsaturated carbon bonds, and preferably with hydroxyl groups at C1, C2, or C4, and preferably “acylated (esterified) or oxidized.” Id. at 3-4. The Examiner finds that Segal’s genus of polyhydroxylated fatty alcohols includes the species of compound 83. See Ans. 24-25. Based on these combined disclosures, the Examiner determines that it would have been obvious for the skilled artisan to have selected compound 83 for inclusion in Jones’ food product. Id. at 4-5. Appellant argues that Segal discloses a genus which “includes an exceedingly large number of potential compounds and fails to specifically identify [the species] compound 83.” Appeal Br. 11. According to Appellant, “[t]here is nothing in the teachings of Segal that would lead one of skill in the art in the chemical or food arts to compound 83.” Id. We agree with Appellant and reverse these rejections. A species is not rendered obvious merely by falling within the scope of a prior art genus. In re Baird, 16 F.3d 380, 382 (Fed. Cir. 1994); see also In re Jones, 958 F.2d 347, 350 (Fed. Cir. 1992) (rejecting the Commissioner’s argument that “regardless of how broad, a disclosure of a Appeal 2021-000751 Application 14/766,557 5 chemical genus renders obvious any species that happens to fall within it.”). Rather, as with any determination of obviousness, the Office must: 1) determine the scope and content of the prior art, 2) ascertain the differences between the prior art and the claims, 3) determine the level of skill possessed by the ordinary skilled artisan in the pertinent art, and 4) evaluate any evidence of secondary considerations. See Graham v. John Deere, 383 U.S. 1, 17 (1966). Moreover, when a claimed species is encompassed by a prior art genus, the MPEP counsels that Office personnel should consider 1) the size of the prior art genus, 2) the reference’s express teachings, including those of structural similarity or similar properties or uses, 3) the technology’s predictability, and 4) any other teaching that supports the selection of the species. MPEP 2144.08.II.4(a)-(f) (9th ed. Rev. 10.2019, rev. June 2020). On this record, the Examiner fails to provide the requisite analysis to establish that the skilled artisan would have selected the species of compound 83 from the genus of polyhydroxylated fatty alcohols (“PFAs”) and derivatives thereof--a genus of untold scope. In fact, the Examiner acknowledges that “Segal encompasses a large number of compounds,” but asserts that “compound 83 can be at once envisaged by the disclosure of Segal.” Ans. 24. That assessment lacks merit. To the extent that the Examiner is attempting to rely on the rationale set forth in In re Petering, 301 F.2d 676 (CCPA 1962), we find such reliance misplaced. In Petering, the genus contained 20 species. Id. at 681-682. The genus of PFAs and derivatives thereof disclosed by Segal is undoubtedly much larger than that Appeal 2021-000751 Application 14/766,557 6 present in Petering because Segal’s PFA compounds and derivatives are neither limited in size of carbon backbone nor degree of saturation. See Segal 10:10-15 (expressing a preference for PFAs having a C13-C25 backbone with the option of at least one unsaturated (e.g., double or triple) bond along the chain). Moreover, Segal does not appear to limit the number of hydroxyl moieties present on the chain. Because the Examiner fails to establish that the skilled artisan would have been motivated to select compound 83 from the broad genus of PFAs and derivatives thereof disclosed in Segal, we do not sustain Rejection I. Rejections II and III fail for the same reason. Rejection IV Appellant addresses the claims subject to this rejection as a group. Appeal Br. 13. We, therefore, select claim 21 as representative. 37 C.F.R. § 41.37(c)(1)(iv). The Examiner undisputedly finds that Jones discloses the claimed food product, but fails to expressly disclose isolated compound 61. Final Act. 10. To address this difference between Jones and claim 21, the Examiner turns to Matthewson, which the Examiner undisputedly finds discloses 3-dimethylallyl-4-methoxy-2-quinolone, i.e., compound 61. Id.; Matthewson 3:30-4:4. The Examiner determines that it would have been obvious to combine the teachings of Jones and Matthewson and arrive at the subject matter of claim 21 because these references “similarly teach preparing extracts from fruit as well as oral compositions used to treat diseases and disorders,” Matthewson “discloses pharmaceutical uses of the therapeutic agents,” and Jones “is not limited to the particular food(s), herb(s), and/or nutritional Appeal 2021-000751 Application 14/766,557 7 supplement(s) selected.” Final Act. 10. Thus, the Examiner determines that it would have been obvious to select compound 61 as a component of Jones’ food product “based upon its suitability for its intended purpose with the expectation of successfully preparing a food product.” Id. at 10-11 (citing In re Kerkhoven, 626 F.2d 846, 850 (CCPA 1980). Appellant argues that “like Jones, there is nothing in Matthewson that would lead one to understand or expect that compound . . . 61 would enhance the perception of salty taste of a food product.” Appeal Br. 13. Rather, Appellant asserts that Matthewson discloses that compound 61 is used to treat parasitic infection. Id. We are not persuaded by this argument because it does not squarely address the rejection that was made by the Examiner. Here, the Examiner determined it would have been obvious to add compound 61 to Jones’ food composition not for salty taste, but for the treatment of a disease or disorder. Final Act. 10-11. It is irrelevant for purposes of patentability that Appellant’s addition of compound 61 to a food product is different than that set forth in the rejection. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419-20 (2007) (“In determining whether the subject matter of a patent claim is obvious, neither the particular motivation nor the avowed purpose of the patentee controls.” Rather, “any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.”). Because Appellant fails to identify error in the rejection, we sustain it. Rejections V-VII Our analysis of these rejections has a similar posture to that of Rejection IV. Appellant again argues the claims subject to these rejections Appeal 2021-000751 Application 14/766,557 8 as a group, and we again select claim 21 as representative. 37 C.F.R. § 41.37(c)(1)(iv). The Examiner undisputedly finds that Jones teaches the food product of claim 21, but fails to expressly disclose compound 56 (Rejection V), compound 84 (Rejection VI), or compound 94 (Rejection VII). Final Act. 11-17. To address these differences between Jones and claim 21, the Examiner turns to Heymann, Ferdani, and Ekong for their uncontested disclosures of the species of compound 56, compound 84, and compound 94, respectively. Id. The Examiner then determines that it would have been obvious for the skilled artisan to have combined the teachings of Jones with each of these references, and arrive at the subject matter of the rejected claims. Final Act. 11-17. Specifically, the Examiner determines that it would have been obvious to incorporate i) compound 56 into Jones’ food product for treating, e.g., a fever (id. at 12), ii) compound 84 into Jones’ food product for the therapeutic reason of “vary[ing] the ionic transport in liposomes” (id. at 14- 15), and iii) compound 94 into Jones’ food product because of its known use in folk medicine (id. at 17). For each of these rejections, Appellant advances an argument substantially similar to that presented for Rejection IV--i.e., that none of Jones, Heymann, Ferdani, or Ekong discloses that compounds 56, 84, or 94 enhance the perception of a salty taste. Appeal Br. 13-15. This argument is unpersuasive for the reasons provided with respect to Rejection IV. See KSR, 550 U.S. at 419 (“In determining whether the subject matter of a patent claim is obvious, neither the particular motivation nor the avowed purpose of the patentee controls.”). For this reason, Rejections V-VII are sustained. Appeal 2021-000751 Application 14/766,557 9 Rejection VIII The Examiner rejects claims 21-23, 25, 26, 29, 32, 34, 36, and 37 under 35 U.S.C. § 101 as claiming the same invention as claims 1, 2, and 5 of US Patent 10,159,268. Final Act. 18-19. Appellant argues that this rejection is erroneous because the rejected claims are not directed to the same invention of claims 1, 2, and 5 of the ʼ268 patent. Specifically, Appellant points to claim 21’s requirement that the “isolated compound is present in the food product in an amount sufficient to enhance perception of saltiness of the food product relative to a substantially similar food product that does not include the at least one isolated compound.” We agree with Appellant and reverse this rejection. 35 U.S.C. § 101 prevents two patents from issuing on the same invention. . . . A good test, and probably the only objective test, for “same invention,” is whether one of the claims could be literally infringed without literally infringing the other. If it could be, the claims do not define identically the same invention. . . . If it is determined that the same invention is being claimed twice, 35 U.S.C. § 101 forbids the grant of the second patent. In re Vogel, 422 F.2d 438, 441 (CCPA 1970). Applying that test to the instant facts, the rejected claims are not the “same invention” as claims 1, 2, or 5 of the ʼ268 patent. For example, claim 21 can be literally infringed without infringing claims 1, 2, or 5 of the ʼ268 patent because it allows for an isolated compound not covered by the genus recited in the ʼ268 patent’s claim 1, e.g., compound 94. Moreover, Appellant is correct that the ʼ268 patent claims do not require an amount of the isolated compound “sufficient to enhance perception of saltiness of the food product” as recited in appealed claim 21. Appeal 2021-000751 Application 14/766,557 10 For this reason, the Examiner’s statutory double patenting rejection is not sustained. CONCLUSION Rejections I-III and VIII are not sustained. Rejections IV-VII are sustained. DECISION SUMMARY Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 21-23, 25, 26, 29, 34, 35, 41, 42 103(a) Jones, Segal 21-23, 25, 26, 29, 34, 35, 41, 42 24, 30, 31 103(a) Jones, Segal, DeSimone 24, 30, 31 24, 32, 33, 36-40 103(a) Jones, Segal, Rafi 24, 32, 33, 36-40 21, 25, 34, 35, 41, 43, 44, 46 103(a) Jones, Matthewson 21, 25, 34, 35, 41, 43, 44, 46 21-23, 25, 34, 35, 41, 42, 45 103(a) Jones, Heymann 21-23, 25, 34, 35, 41, 42, 45 21, 22, 25, 34, 35, 41, 42, 47 103(a) Jones, Ferdani 21, 22, 25, 34, 35, 41, 42, 47 21, 25, 34, 35, 41, 42, 48 103(a) Jones, Ekong 21, 25, 34, 35, 41, 42, 48 21-23, 25, 26, 29, 32, 34, 36, 47 101 Statutory Double Patenting US Patent 10,159,268 21-23, 25, 26, 29, 32, 34, 36, 47 Overall Outcome 21-23, 25, 34, 35, 41-48 24, 26, 29- 33, 36-40 Appeal 2021-000751 Application 14/766,557 11 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED IN PART