Givaudan, S.A.

Patent Trials and Appeals BoardAug 3, 2021

2020004583 (P.T.A.B. Aug. 3, 2021)

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. 14/843,409 09/02/2015 Panchali CHAKRABORTY GIV.P30816 4693 23575 7590 08/03/2021 CURATOLO SIDOTI CO., LPA 24500 CENTER RIDGE ROAD, SUITE 280 CLEVELAND, OH 44145 EXAMINER MCCLAIN-COLEMAN, TYNESHA L. ART UNIT PAPER NUMBER 1793 NOTIFICATION DATE DELIVERY MODE 08/03/2021 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): docket@patentandtm.com pair@patentandtm.com sidoti@patentandtm.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte PANCHALI CHAKRABORTY, PABLO VICTOR KRAWEC, HONGYANG LI, and SUDARSHAN NADATHUR Appeal 2020-004583 Application 14/843,409 Technology Center 1700 Before ADRIENE LEPIANE HANLON, BEVERLY A. FRANKLIN, and JANE E. INGLESE, Administrative Patent Judges. Opinion for the Board filed by Administrative Patent Judge BEVERLY A. FRANKLIN. Concurring opinion filed by Administrative Patent Judge ADRIENE LEPIANE HANLON. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–3, 5–8, 10, and 21. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Givaudan SA. Appeal Br. 3. Appeal 2020-004583 Application 14/843,409 2 CLAIMED SUBJECT MATTER Claim 1 is illustrative of Appellant’s subject matter on appeal and is set forth below: 1. A flavor system comprising: a protein binder including a mixture of at least one terpene and at least one carbonyl compound; and one or more off-note blocking compounds; wherein the flavor system provides improved flavor release in non-animal derived protein containing consumables when the weight ratio of off-note blocking compound to protein binder compound in the flavor system is between about 1:1 and about 10:1. REFERENCE The prior art relied upon by the Examiner is: Name Reference Date Hasselstrom GB 751,476 June 27, 1956 REJECTION Claims 1–3, 5–8, 10, and 21 are rejected under 35 U.S.C. § 103 over Hasselstrom. OPINION We review the appealed rejection for error based upon the issues identified by Appellant and in light of the arguments and evidence produced thereon. 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) (“[I]t has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections.”). After considering the evidence presented in this Appeal (including the Examiner’s Answer, the Appeal Brief, and the Reply Brief), we are persuaded that Appellant identifies Appeal 2020-004583 Application 14/843,409 3 reversible error essentially for the reasons provided by Appellant in the record, with the following emphasis. The dispositive issue in this appeal is whether Hasselstrom suggests the claimed weight ratio of off-note blocking compound to protein binder compound in the flavor system as being between about 1:1 and about 10:1 as recited in claim 1.2 On page 4 of the Answer, the Examiner makes the finding that Hasselstrom’s Example I discloses a weight ratio of off-note blocking compound to protein binder compound in the flavor system as being 13:1. On page 5 of the Answer, the Examiner states that the presently claimed ratio and that taught by Hasselstrom are so close to each other that the fact pattern is similar to the one in In re Woodruff, 919 F.2d 1575 (Fed. Cir. 1990) or Titanium Metals Corp. of America v. Banner, 778 F.2d 775 (Fed.Cir. 1985), where despite a “slight” difference in the ranges, the court held that such a difference did not “render the claims patentable” or, alternatively, that “a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough so that one skilled in the art would have expected them to have the same properties”. Ans. 5. The Examiner concludes that in view of the aforementioned case law, the presently claimed weight ratio of off-note blocking compound(s) to protein binder is but an obvious variant of that taught in Hasselstrom, and 2 Claim 8 is dependent upon claim 1 and recites that the weight ratio of off- note blocking compound to protein binder compound is between about 1:1 and about 5:1. Appeal 2020-004583 Application 14/843,409 4 thereby one of ordinary skill in the art would have arrived at the claimed invention. Ans. 5–6. The Examiner also states that the claimed subject matter is rendered obvious, absent unexpected results, because it would be a matter of choice and routine experimental modification of Hasselstrom in order to ascertain optimum flavor. Ans. 7–8. On page 6 of the Appeal Brief, Appellant states that the ratio of 13:1 in Hasselstrom is not sufficiently close to create a prima facie case of obviousness. Appellant states that in contrast to the slight differences at issue in Titanium Metals and Woodruff, there is a 26% difference between 13:1 and 10:1. Appeal Br. 6. Appellant also argues that the Examiner has not provided any evidence or reasoning showing that the ratio of off-note blocking compound to protein binder compound in Hasselstrom and the ratio recited in claim 1 are close enough such that “one skilled in the art would have expected to have the same [or similar] properties” as required by Titanium Metals. Appeal Br. 7. We are persuaded by this line of argument. Notably, in response thereto, the Examiner merely reiterates the position that the respective weight ratios “are close enough” without responding to these specific points raised by Appellant. Ans. 10. Appellant also argues that the Examiner has not established that Hasselstrom teaches that the weight ratio of off-note blocking compound to protein binder compound is a result-effective variable. In response, the Examiner maintains the position that the routine experimental modification of Hasselstrom done in order to ascertain optimum flavor of the disclosed pepper composition renders Appellant’s claims unpatentable in the absence of unexpected results. Ans. 13–14. Appeal 2020-004583 Application 14/843,409 5 However, as stated by Appellant on page 3 of the Reply Brief, the optimization rule is limited to cases in which the optimized variable is a result-effective variable. A particular parameter must first be recognized as a result-effective variable, i.e., a variable which achieves a recognized result, before the determination of the optimum or workable ranges of said variable might be characterized as routine experimentation. In re Antonie, 559 F.2d 618, 620 (CCPA 1977). Furthermore, the rejection must provide some rational underpinning explaining why a skilled artisan would have arrived at the claimed subject matter through routine optimization, which it does not. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). We thus agree with Appellant (Reply Br. 2) that the Examiner has not provided sufficient explanation or reasoning to support the position that Hasselstrom’s weight ratio of 13:1 sufficiently supports a prima facie case. As recognized in our concurring colleague’s position, the prima facie case is a procedural tool of patent examination, allocating the burdens of going forward as between Examiner and Applicant. In re Spada, 911 F.2d 705, 707 n.3 (Fed. Cir. 1990). The term “prima facie case” refers only to the initial examination step. In re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984); In re Rinehart, 531 F.2d 1048, 1052 (CCPA 1976). As discussed in In re Piasecki, the Examiner bears the initial burden, on review of the prior art or on any other ground, of presenting a prima facie case of unpatentability. See In re Spada, 911 F.2d at 707 n.3. If an examiner has satisfied this burden, then the burden of coming forward with evidence or argument shifts to Appellant. In re Corkill, 771, F.2d 1496, 1500 (Fed. Cir. 1985). After evidence or argument is submitted by Appellant in response, patentability is determined on the totality of the record, by a preponderance Appeal 2020-004583 Application 14/843,409 6 of evidence (that it is more likely than not), with due consideration to persuasiveness of argument. In re Caveney, 761 F.2d 671, 674 (Fed. Cir. 1985); In re Johnson, 747 F.2d 1456, 1460 (Fed. Cir. 1984). As such, in the instant case, it is the Examiner’s burden of showing that the taught and claimed weight ratios are “close enough” that one skilled in the art would have expected them to have the same properties to establish a prima facie case of obviousness, and for the reasons discussed supra, the Examiner has not met this initial burden. Therefore, the burden has not shifted to Appellant to show criticality of the claimed weight ratio. In view of the above, we reverse the rejection. CONCLUSION We reverse the Examiner’s decision. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–3, 5–8, 10, 21 103 Hasselstrom 1–3, 5–8, 10, 21 REVERSED Appeal 2020-004583 Application 14/843,409 7 HANLON, Administrative Patent Judge, concurring. I concur with the majority opinion. Claim 1 recites that the “flavor system provides improved flavor release in non-animal derived protein containing consumables when the weight ratio of off-note blocking compound to protein binder compound in the flavor system is between about 1:1 and about 10:1.”3 Appeal Br. 11 (emphasis added). There appears to be no dispute on this record that Hasselstrom’s Example 1 discloses a composition comprising a protein binder and off-note blocking compounds within the scope of claim 1. The Examiner finds, and the Appellant does not dispute, that the weight ratio of off-note blocking compounds to protein binder in Hasselstrom’s Example 1 is about 13:1. Final Act. 3.4 The Examiner finds that the ratio recited in claim 1 and the ratio taught by Hasselstrom are close enough that one of ordinary skill in the art would have expected the claimed flavor system and the composition described in Hasselstrom’s Example 1 to have the same properties. Final Act. 4 (citing In re Woodruff, 919 F.2d 1575 (Fed. Cir. 1990) and Titanium Metals Corp. of America v. Banner, 778 F.2d 775 (Fed. Cir. 1985), for support). The Appellant argues that the Examiner has not provided any evidence or reasoning to show that the alleged ratio of off-note blocking compound to protein binder compound in Hasselstrom and the ratio recited in claim 1 are close enough such that “one skilled in the art would have 3 Claim 1 does not recite that the flavor system comprises a non-animal derived protein. Rather, the claimed flavor system is intended to be used with a non-animal derived protein. 4 Final Office Action dated October 7, 2019. Appeal 2020-004583 Application 14/843,409 8 expected to have the same [or similar] properties” as required by Titanium Metals. Appeal Br. 7. I agree. See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) (examiner bears the initial burden of presenting a prima facie case of unpatentability). Nonetheless, the evidence of record reasonably supports the Examiner’s finding that one of ordinary skill in the art would have expected the claimed flavor system and the composition in Hasselstrom Example 1 to have the same properties. In that regard, the Appellant discloses that “[t]he flavor system may include the off-note blocking compound and protein binder in weight ratio between about 1:1 and about 20:1, in another embodiment between about 1:1 and about 10:1, and in yet another embodiment between about 1:1 and about 5:1.” Spec. 11, ll. 9–11 (emphasis added). Significantly, the Appellant does not disclose that the different weight ratios in those embodiments, which include the weight ratio in Hasselstrom’s Example 1 (i.e., 13:1), result in flavor systems having different properties. See Spec. 9, ll. 25–26 (disclosing that off-note blockers “block, mask or modify the off-notes [in a particular non-animal derived protein] and make them less apparent or unnoticeable”). That being said, the Examiner did not rely on page 11, lines 9–11 of the Specification to support the obviousness rejection of claim 1. Therefore, I concur with the majority that the obviousness rejection on appeal should not be sustained.