Gregory Aharonian

Patent Trials and Appeals Board

Feb 22, 2022

2021001214 (P.T.A.B. Feb. 22, 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. 15/442,628 02/25/2017 Gregory Aharonian 4710.001000A 8946 26111 7590 02/22/2022 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 02/22/2022 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): 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 2021-0012141 Application 15/442,628 Technology Center 1700 Before KAREN M. HASTINGS, MICHAEL P. COLAIANNI, and JENNIFER R. GUPTA, Administrative Patent Judges. GUPTA, Administrative Patent Judge. DECISION ON APPEAL2 1 Appellant, and the Appellant’s legal representative state that they are unaware of any related appeals and interferences. We note, however, that this application is a continuation of US 14/744,242 (Spec. ¶ 1), which was the subject of related Appeal 2021-001246, affirmed July 28, 2021, rehearing denied November 3, 2021. 2 In this Decision, we refer to the Specification filed February 25, 2017 (“Spec.”); the Final Office Action dated March 26, 2019 (“Final Act.”); the Appeal Brief filed October 25, 2019 (“Appeal Br.”); the Examiner’s Answer dated December 31, 2019(“Ans.”). Appeal 2021-001214 Application 15/442,628 2 Pursuant to 35 U.S.C. § 134(a), Appellant3 appeals from the Examiner’s decision to reject claims 1-8. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. CLAIMED SUBJECT MATTER The claims are directed to a cocoa-based foodstuff having reduced bitterness to taste. Spec. ¶ 26. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A cocoa-based foodstuff having a reduced bitterness to taste, consisting essentially of: i) a bitter, fat-free, unsweetened cocoa, ii) an extract of one or more leaves from at least one plant that is a member of the genus Erythroxylum in an amount sufficient to substantially reduce the bitterness of said bitter, fat-free, unsweetened cocoa with neither added fat nor added sugar. Appeal Br. 18 (App. A). 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. Appeal 2021-001214 Application 15/442,628 3 REJECTION The Examiner maintains the rejection of claims 1-8 under 35 U.S.C. § 103 over Cooking with Amy,4 and Jenkins.5 DISCUSSION We sustain the Examiner’s rejection for the reasons presented by the Examiner in the Final Office Action and Answer. In doing so, we adopt the Examiner’s well-reasoned, well-articulated response to arguments presented in the Answer, and add the following for emphasis. Appellant argues the claims as a group. Appeal Br. 4-16. We select claim 1 as representative. 37 C.F.R § 41.37(c)(1)(iv). The Examiner finds that Cooking with Amy teaches a tea-infused hot cocoa recipe that includes tea, unsweetened cocoa powder, milk and sugar, and teaches that the sugar in its recipe can be adjusted to one’s liking. Final Act. 3; Cooking with Amy 1-2. The Examiner finds that Cooking with Amy also teaches that a variety of teas, including herbal tea, work in its recipe, and encourages experimenting with different types of teas not specifically named. Id. The Examiner acknowledges, however, that Cooking with Amy does not disclose an extract of a leaf from a plant that is a member of the genus Erythroxylum. Final Act. 3. The Examiner finds that Jenkins teaches coca tea (i.e., leaves from a plant that is a member of the genus Erythroxylum) is known and consumed 4 Amy Sherman, Tea-infused Hot Cocoa Recipe, COOKING WITH AMY: A FOOD BLOG (Dec. 20, 2010), http://cookingwithamy.blogspot.com/2010/12/tea-infused-hot-cocoa- recipe.html. 5 Amanda J. Jenkins et al., Identification and Quantification of Alkaloids in Coca Tea, 77 Forensic Sci. Int. 179-189 (1996). Appeal 2021-001214 Application 15/442,628 4 in many South American countries. Id. (citing Jenkins, Abstract). The Examiner finds that Jenkins also teaches that prepared coca tea contains alkaloids, such as benzoylecgonine. Id. (citing Jenkins 5-6). Given that Cooking with Amy encourages experimenting with different types of teas and Jenkins teaches coca tea is a known tea that is consumed in many South American countries, the Examiner determines that it would have been obvious to one of ordinary skill in the art to use coca tea in Cooking with Amy’s Tea-Infused Hot Cocoa recipe. Final Act. 4. Appellant argues that Cooking with Amy only invites a reader to try any possible tea, but does not provide a motivation or suggestion to choose coca tea from all the possible choices of tea. Appeal Br. 13. Appellant argues that neither Cooking with Amy nor Jenkins, alone or in combination, teaches or suggests that coca leaves or any coca alkaloid has any sort of coca-de-bittering property. Id. Appellant argues that the Examiner erroneously claims that the claimed de-bittering agent is an inherent property of coca tea. Id. Appellant also argues that neither Amy nor Jenkins, alone or in combination, teaches or suggests the claimed ratio of fat and sugar. Id. Appellant’s arguments do not persuade us of reversible error in the Examiner’s 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. “[I]t has been held that the simple substitution of one known element for another to obtain Appeal 2021-001214 Application 15/442,628 5 predictable results is obvious.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). Thus, as the combination of Cooking with Amy and Jenkins suggest, it would have been obvious to use coca tea in Cooking with Amy’s recipe. 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. 18 (Claims App., claim 3). One of ordinary skill in the art would have understood how to modify brewing temperature and time to substantially reduce bitterness. Although others may not have recognized that one or more Erythroxylum extracts can be used as a debittering agent (Spec. ¶ 20), 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.”). Moreover, as the Examiner points out, a foodstuff having reduced bitterness still may be perceived as having bitterness. Ans. 10. Despite Appellant’s argument, claim 1 does not require any particular ratio of fat and sugar. In fact, claim 1 uses the transitional phrase “consisting essentially of.” As a result, claim 1’s foodstuff includes the listed ingredients as well as those that “do not materially affect the basic and novel properties of the invention.” AK Steel Corp. v. Sollac, 344 F.3d 1234, 1239 (Fed. Cir. 2003) (The phrase “consisting essentially of” in a patent claim “has long been understood to permit inclusion of components not listed in the claim, Appeal 2021-001214 Application 15/442,628 6 provided that they do not ‘materially affect the basic and novel properties of the invention.”’). On this record, Appellant has not directed us to sufficient evidence to show that sugar and milk “materially affect” the basic and novel properties of its cocoa-based foodstuff having a reduced bitterness to taste. Moreover, Cooking with Amy teaches that its tea-infused hot cocoa can be made with water instead of milk and that one can adjust the sugar in the recipe to one’s liking. Cooking with Amy 2. Based on those teachings, one of ordinary skill in the art would reasonably infer that milk and sugar do not have to be added and could be omitted completely, if desired. KSR, 550 U.S. at 421 (“A person of ordinary skill is also a person of ordinary creativity, not an automaton.”); see id. at 418 (in making an obviousness determination one “can take account of the inferences and creative steps that a person of ordinary skill in the art would employ”). Appellant argues that the Declaration under 37 C.F.R. § 1.132 of Angus Kennedy executed May 3, 2017, demonstrates that the present invention “addresses a long-felt commercial need in the chocolate industry for cacao-baaed foods that have enjoyable taste and mouth feel, but with reduced sugar and fat.” Appeal Br. 16 (citing Kennedy Decl. ¶ 10). Establishing long-felt need requires objective evidence that a recognized problem existed in the art for a long period of time without solution. Newell Cos. v. Kenney Mfg. Co., 864 F.2d 757, 768 (Fed. Cir. 1988). Once a long-felt need has been established, it must further be shown that the claimed invention satisfied the need. In re Cavanagh, 436 F.2d 491, 496 (CCPA 1971). We note that “long-felt need is analyzed as of the date of an articulated identified problem and evidence of efforts to solve that Appeal 2021-001214 Application 15/442,628 7 problem.” Texas Instr. Inc. v. Int’l Trade Comm’n, 988 F.2d 1165, 1178 (Fed. Cir. 1993). Appellant has not produced sufficient objective evidence to establish a long-felt need or the failure of others to satisfy a long-felt need. See In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984) (discussing that arguments and conclusions unsupported by factual evidence carry no evidentiary weight). Because we are not persuaded of reversible error in the Examiner’s rejection, we sustain the obviousness rejection of claims 1-8. CONCLUSION The Examiner’s decision is affirmed. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-8 103 Amy, Jenkins 1-8 TIME PERIOD FOR RESPONSE 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