Gregory Aharonian

Patent Trials and Appeals BoardNov 3, 2021

2021001246 (P.T.A.B. Nov. 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. 14/744,242 06/19/2015 Gregory Aharonian 4710.0010008 6889 26111 7590 11/03/2021 STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C. 1100 NEW YORK AVENUE, N.W. WASHINGTON, DC 20005 EXAMINER GWARTNEY, ELIZABETH A ART UNIT PAPER NUMBER 1759 NOTIFICATION DATE DELIVERY MODE 11/03/2021 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): e-office@sternekessler.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte GREGORY AHARONIAN Appeal 2021-001246 Application 14/744,242 Technology Center 1700 Before KAREN M. HASTINGS, MICHAEL P. COLAIANNI, and JENNIFER R. GUPTA, Administrative Patent Judges. GUPTA, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING 1 Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the Examiner’s decision to reject claims 1–13. We have jurisdiction under 35 U.S.C. § 6(b). 1 In this Decision, we refer to the Appeal Brief filed October 25, 2019 (“Appeal Br.”); the Decision on Appeal dated July 28, 2021 (“Dec.”); and the Request for Rehearing filed September 27, 2021 (“Req. Reh’g”). 2 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Mr. Gregory Aharonian. Appeal Br. 3. Appeal 2021-001246 Application 14/744,242 2 Appellant3 filed a request for rehearing under 37 C.F.R. § 41.52 (“Request”) of our decision dated July 28, 2021 (“Decision”), affirming the rejections of claims 1–13 under 35 U.S.C. § 103. Requests for Rehearing are limited to matters overlooked or misapprehended by the Panel in rendering the original decision. See 37 C.F.R. § 41.52(a) (2019). An appellant may not rely upon new evidence or new arguments except as permitted by § 41.52 paragraphs (a)(2) though (a)(4). Id. We have considered the Request and determine that Appellant has not persuasively identified any points that were misapprehended or overlooked by the Panel that resulted in error in the original Decision. DISCUSSION Appellant argues that the Panel overlooked Appellant’s argument at page 16 of the Appeal Brief that claim 1’s cocoa-based foodstuff comprises at least one coca alkaloid “being effective to reduce bitterness of said unsweetened cocoa.” Req. Reh’g 4. The Panel did not overlook, but instead recognized Appellant’s argument that neither Cooking with Amy nor Jenkins teaches or suggests coca leaves nor any coca alkaloid has any sort of coca-de-bittering property at page 4 of the Decision. Dec. 4;4 Appeal Br. 16. Although the Panel may not have commented on the recitation “being effective to reduce bitterness of said unsweetened cocoa” explicitly, the Decision states that the Panel 3 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Mr. Gregory Aharonian. Appeal Br. 3. 4 We note that the Decision inadvertently cites page 15 instead of page 16 of the Appeal Brief as the page where this argument appears. Appeal 2021-001246 Application 14/744,242 3 sustained the appealed rejections for the reasons presented by the Examiner in the Non-Final Office Action and Answer, and the discussion in the Decision is added “for emphasis.” Id. at 3. The Examiner finds that Jenkins teaches that coca tea contains alkaloids, such as benzoylecgonine. Non-Final Act. 4 (citing Jenkins 5–6). Benzoylecgonine would have been effective to reduce bitterness of unsweetened cocoa given that it is one of the coca alkaloids claimed by Appellant. See Appeal Br. 22 (Claims App., claim 7); In re Papesch, 315 F.2d 381, 391 (CCPA 1963) (“From the standpoint of patent law, a compound and all of its properties are inseparable, they are one and the same thing.”). Appellant argues that the Board misapprehended the prior art descriptions relied on by the Examiner in the rejection as “encouraging persons of ordinary skill in the art to discover coca tea from Jenkins, mix cocoa with coca tea . . ., and then add less than usual amounts of fat and/or sugar from Amy’s recipe.” Req. Reh’g 8. The Panel did not misapprehend the factual evidence cited by the Examiner in support of the rejection. Although Cooking with Amy does not list coca tea as an example of a tea for use in its tea-infused hot cocoa recipe, Cooking with Amy states that “types of tea that work with chocolate vary,” and aside from the mentioned teas, “[t]here could be other types of tea that are wonderful with cocoa,” and “it’s certainly worth more experimentation.” Cooking with Amy 1. Jenkins evinces that coca tea is a known tea that is commonly consumed in South American countries. Jenkins, Abstract. Given Cooking with Amy discloses a tea-infused hot cocoa comprising a prepared tea, and Jenkins teaches coca tea is a tea known and consumed in many South American countries, a preponderance of the evidence supports the Appeal 2021-001246 Application 14/744,242 4 Examiner’s conclusion that it would have been obvious to one of ordinary skill in the art to have used coca tea, as taught by Jenkins, in Cooking with Amy’s recipe. As discussed above, Jenkins teaches that coca tea contains alkaloids, such as benzoylecgonine, which would have been effective to reduce bitterness of unsweetened cocoa given that it is a coca alkaloid claimed by Appellant. See Appeal Br. 22 (Claims App., claim 7). Although Appellant argues that “many decades of significant bodies of research regarding bitter blockers and analyzing properties of coca alkaloids have nonetheless failed to identify specific de-bittering properties of any particular coca alkaloids” (Req. Reh’g 7), claiming of an unknown property that is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254 (CCPA 1977); Ex parte Obiaya, 227 USPQ 58, 60 (BPAI 1985) (“The fact that appellant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious.”). The Examiner finds, and Appellant does not dispute that, Cooking with Amy discloses a tea-infused hot cocoa that includes 4 grams of fat, 18 grams of sugar, and 14.7 grams of cocoa or (F + S) > C. Non-Final Act. 5; Cooking with Amy 2. Cooking with Amy teaches that the amount of sugar can be adjusted to produce a desired taste. Cooking with Amy 2. Because Cooking with Amy recognizes that sugar is a result effective variable, i.e., the amount of sugar affects the taste of the tea-infused hot cocoa, we are not persuaded that the Examiner reversibly erred in concluding that it would have been obvious to one having ordinary skill in Appeal 2021-001246 Application 14/744,242 5 the art to decrease the amount of sugar used to make Cooking with Amy’s tea-infused hot cocoa to amounts less than 10.7 grams, and arrive at the claimed range of (F + S) < C. Non-Final Act. 5; see In re Boesch, 617 F.2d 272, 276 (CCPA 1980) (“[D]iscovery of an optimum value of a result effective variable ... is ordinarily within the skill of the art.”). CONCLUSION The Decision has been reconsidered, but, for the reasons set forth above, the Request is denied with respect to making changes to the final disposition of the rejections therein. DECISION SUMMARY Outcome of Decision on Rehearing: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Denied Granted 1–4, 7, 8, 10–13 103 Amy, Jenkins, Backyard Patch Herbal Blog, Good Girl Gone Green, Appellant’s Admitted Prior Art 1–4, 7, 8, 10–13 5 103 Amy, Jenkins, Backyard Patch Herbal Blog, Good Girl Gone Green, Appellant’s Admitted Prior Art, Carroll 5 6 103 Amy, Jenkins, Backyard Patch Herbal Blog, Good Girl Gone Green, Appellant’s 6 Appeal 2021-001246 Application 14/744,242 6 Admitted Prior Art, Burdock 9 103 Amy, Jenkins, Backyard Patch Herbal Blog, Good Girl Gone Green, Appellant’s Admitted Prior Art, Genius Kitchen 9 Overall Outcome 1–13 Final Outcome of Appeal after Rehearing: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–4, 7, 8, 10–13 103 Amy, Jenkins, Backyard Patch Herbal Blog, Good Girl Gone Green, Appellant’s Admitted Prior Art 1–4, 7, 8, 10–13 5 103 Amy, Jenkins, Backyard Patch Herbal Blog, Good Girl Gone Green, Appellant’s Admitted Prior Art, Carroll 5 6 103 Amy, Jenkins, Backyard Patch Herbal Blog, Good Girl Gone Green, Appellant’s Admitted Prior Art, Burdock 6 9 103 Amy, Jenkins, Backyard Patch 9 Appeal 2021-001246 Application 14/744,242 7 Herbal Blog, Good Girl Gone Green, Appellant’s Admitted Prior Art, Genius Kitchen Overall Outcome 1–13 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). DENIED