NESTEC S.A.

Patent Trials and Appeals Board

Mar 31, 2021

2020003190 (P.T.A.B. Mar. 31, 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.
15/106,415 06/20/2016 Carol Borland 3712036-02663 5203
29157 7590 03/31/2021
K&L Gates LLP-Nestec S.A.
P.O. Box 1135
Chicago, IL 60690
EXAMINER
LI, CHANGQING
ART UNIT PAPER NUMBER
1793
NOTIFICATION DATE DELIVERY MODE
03/31/2021 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):
USpatentmail@klgates.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte CAROL BORLAND, XIAOPING FU,
and SCOTT A. WESTFALL
____________

Appeal 2020-003190
Application 15/106,415
Technology Center 1700
____________

Before ADRIENE LEPIANE HANLON, MONTÉ T. SQUIRE, and
JEFFREY R. SNAY, Administrative Patent Judges.

SQUIRE, Administrative Patent Judge.

DECISION ON APPEAL1
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision to reject claims 11 and 14–23.3 We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 This Decision refers to the Specification filed June 20, 2016 (“Spec.”);
Non-Final Office Action dated Nov. 4, 2019 (“Non-Final Act.”); Appeal
Brief filed Jan. 14, 2020 (“Appeal Br.”); Examiner’s Answer dated Feb. 11,
2020 (“Ans.”); and Reply Brief filed Mar. 24, 2020 (“Reply Br.”).
2 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies SOCIÉTÉ DES PRODUITS NESTLÉ
S.A. as the real party in interest. Appeal Br. 2.
3 Claims 1 and 4–10 are withdrawn and claims 2, 3, 12, and 13 are cancelled.
Final Act. 1, 2.
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CLAIMED SUBJECT MATTER
The invention relates to a liquid coffee beverage in a closed container
and a method of producing same. Spec. 1, 2; Abstract. Claim 11 illustrates
the subject matter on appeal and is reproduced below from the Claims
Appendix to the Appeal Brief:
11. A method of producing a liquid coffee beverage in a
closed container, the method comprising:
a) stripping coffee aroma from roast and ground coffee
with steam to produce steam comprising the coffee aroma;
b) removing low volatile coffee aroma compounds from
the steam comprising the coffee aroma, the low volatile coffee
aroma compounds selected from the group consisting of
2-ethyl-5-methy1pyrazine, 2-ethyl-6-methylpyrazine,
trimethylpyrazine, 2-ethyl-3,5-dimethylpyrazine, 2-ethyl-3,6-
dimethylpyrazine, 2,3-diethyl-5-methylpyrazine, pyridine,
furfural, furfurylalcohol, 5-methylfurfural, guaiacol,
ethylguaiacol, vinylguaiacol, acetic acid, and combinations
thereof;
c) recovering high volatile coffee aroma compounds from
the steam comprising the coffee aroma, the high volatile coffee
aroma compounds selected from the group consisting of
methanethiol, dimethylsulfide, dimethyldisulfide,
methylpropanal, 2-methylbutanal, 3-methylbutanal, 2-methyl-
furan, N-methyl-pyrrole, and combinations thereof;
d) adding the recovered high volatile coffee aroma
compounds of step c) to a liquid coffee extract, wherein the
liquid coffee extract with the added high volatile coffee aroma
compounds obtained in this step is not subjected to drying; and
e) filling the liquid coffee extract with the added high
volatile coffee aroma compounds into the closed container to
produce the liquid coffee beverage,
the filled closed container comprises a gaseous
headspace comprising a weight ratio of the high volatile
coffee aroma compounds to the low volatile coffee aroma
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compounds of at least about 1.5 when measured at about
25°C.
Appeal Br. 13 (key disputed claim limitation italicized and bolded).
REFERENCES
The Examiner relies on the following prior art as evidence in rejecting
the claims on appeal:
Name Reference Date
Hurlow et al.
(“Hurlow”)
US 4,232,598 Nov. 11, 1980
Borland et al.
(“Borland”)
US 2002/0012736 A1 Jan. 31, 2002
Hayakawa et al.
(“Hayakawa”)
US 2012/0107482 A1 May 3, 2012
Inoue EP 1 680 964 A1 July 19, 2006
Valdez WO 2012/078148 A1 June 14, 2012

REJECTIONS
On appeal, the Examiner maintains (Ans. 3) the following rejections:
1. Claims 11 and 20–23 are rejected under 35 U.S.C. § 103 as
being unpatentable over Inoue, Hurlow, and Hayakawa (“Rejection 1”). Ans.
3.
2. Claims 14–16 are rejected under 35 U.S.C. § 103 as being
unpatentable over Inoue, Hurlow, and Hayakawa as applied to claim 11
above, and further in view of Borland (“Rejection 2”). Ans. 6.
3. Claims 17–19 are rejected under 35 U.S.C. § 103 as being
unpatentable over Inoue, Hurlow, and Hayakawa as applied to claim 11
above, and further in view of Valdez (“Rejection 3”). Ans. 7.

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OPINION
Having considered the respective positions the Examiner and
Appellant advance in light of this appeal record, we affirm the Examiner’s
rejections based essentially on the factual findings and reasons the Examiner
provides in the Answer and Non-Final Office Action. We add the following
primarily for emphasis.
Rejection 1
The Examiner rejects claims 11 and 20–23 under § 103 as obvious
over Inoue, Hurlow, and Hayakawa. Ans. 3. In response, Appellant presents
argument for the patentability of claim 11 but does not present separate
substantive argument for any of the remaining claims subject to the
Examiner’s rejection.4 Appeal Br. 6–8. We select claim 11 as representative
and claims 20–23 stand or fall with claim 11. 37 C.F.R. § 41.37(c)(1)(iv).
The Examiner determines that the combination of Inoue, Hurlow, and
Hayakawa suggests a method satisfying the limitations of claim 11 and
concludes the combination would have rendered the claim obvious. Ans.
3–6.

4 Although Appellant presents argument for the patentability of claim 23
under a separate heading at page 9 of the Appeal Brief, Appellant does not
present any additional substantive arguments. Instead, Appellant repeats and
appears to rely on essentially the same arguments Appellant presents for the
patentability of claim 11. See, e.g., Appeal Br. 10 (arguing “[a]s discussed
above, there is no teaching in the cited references that would have led the
skilled artisan to recognize that providing a ratio of at least 1.5 provides a
liquid coffee beverage with improved aroma perception upon opening of the
can”).
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Appellant argues the Examiner’s rejection should be reversed because
one of ordinary skill in the art would not have combined the cited references
to arrive at the claimed invention. Appeal Br. 6; Reply Br. 2–4. In particular,
relying principally on the Declaration Under 37 C.F.R. § 1.132 of Xiaoping
Fu,5 Appellant contends Hurlow does not teach or suggest obtaining a
desired coffee aroma by modifying the weight ratio of aroma constituents in
a gaseous headspace in a closed container that contains the beverage. Appeal
Br. 6–7.
Appellant further contends there is no teaching or suggestion in the
cited references that would have led the skilled artisan to recognize that
providing a ratio of at least 1.5 provides a liquid coffee beverage with
improved aroma perception upon opening of the can, and that optimizing the
ratio in the liquid would not necessarily result in an optimum ratio in the
headspace. Id. at 7.
Appellant also contends that, in view of the differences in the cited
references’ disclosures, the skilled artisan without hindsight would not have
arrived at the claimed invention by combining the references, nor had a
reasonable expectation of success. Id. at 8.
We do not find Appellant’s arguments persuasive of reversible error
in the Examiner’s rejection based essentially on the factual findings and
reasons the Examiner provides at pages 3–6 and 9–13 of the Answer, which
a preponderance of the evidence supports. Inoue, Abstract, ¶¶ 39–40
(Example 1); Hurlow, Abstract, 2:1–18; Hayakawa, Abstract, ¶¶ 3, 42, 56,

5 Declaration under 37 C.F.R. § 1.132 of Xiaoping Fu, filed Feb. 12, 2019.
Xiaoping Fu is one of the named Inventors on this application. BIB Data
Sheet 1.
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57. Rather, on this appeal record, we agree with the Examiner that the
combination of Inoue, Hurlow, and Hayakawa suggests the limitations of
claim 11 and would have rendered the claim obvious.
As the Examiner finds (Ans. 3), Inoue teaches a method of making
liquid coffee beverage in a sealed metal can comprising: stripping coffee
aroma from roast and ground coffee with super-heated steam to produce
steam comprising coffee aroma; recovering aroma compounds from the
steam; adding recovered aroma compounds to a liquid coffee extract,
wherein the liquid coffee extract is not subjected to drying; and filling the
liquid coffee extract with aroma compounds into metal cans. Inoue,
Abstract, ¶¶ 39–40 (Example 1).
As the Examiner further finds (Ans. 4), Hurlow teaches that aromatic
constituents from coffee can be separated by distillation into low boiling
point aroma and high boiling aroma (Hurlow, Abstract, 2:1–18) and
Hayakawa teaches that the composition that contains coffee aroma may be
distilled and separated into high volatile coffee aroma compounds (i.e., the
“fraction”) and low volatile coffee aroma compounds (i.e., the “concentrated
solution”) (Hayakawa ¶¶ 3, 42). As the Examiner also finds (Ans. 4),
Hayakawa teaches treating the low volatile component with porous
adsorbent to remove guaiacol, which is a compound claim 11 recites, and
combining the treated low volatile component with the high volatile
component to obtain a coffee extract solution having “a rich sweet aroma
and clean aftertaste.” Hayakawa ¶¶ 56–57.
As the Examiner finds and explains (Ans. 5), because, being a sealed
container, Inoue’s canned liquid coffee would inherently have a gaseous
headspace in which the gas phase (formed by volatile coffee aroma
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compounds) is in equilibrium with the liquid phase, the gaseous headspace
would necessarily comprise both high volatile aroma compounds and low
volatile aroma compounds at some ratio.
The Examiner also provides a reasonable basis why one of ordinary
skill in the art would have had reason to combine the teachings of Inoue,
Hurlow, and Hayakawa to arrive at the claimed invention. Ans. 4
(explaining one of ordinary skill in the art would have been motivated to
modify Inoue’s method of making a coffee beverage to include: the step of
separating the coffee aroma by distillation into high and low volatile
components, as taught by Hurlow and Hayakawa, and the additional steps of
removing guaiacol with an adsorbent and recovering the aroma by
combining the treated low volatile component with the high volatile
component, as taught by Hayakawa, in order to obtain a coffee extract
solution having a rich, sweet aroma and clean aftertaste); see also KSR Int’l
Co. v. Teleflex, Inc., 550 U.S. 398, 420 (2007) (explaining that any need or
problem known in the art can provide a reason for combining the elements in
the manner claimed).
As the Examiner concludes and further explains (Ans. 5–6, 9–10),
because the ratio of high volatile and low volatile aroma compounds in the
coffee is a result effective variable, it would have been obvious to one of
ordinary skill in the art to have arrived at the claimed weight ratio of the
high volatile coffee aroma compounds to the low volatile coffee aroma
compounds of at least about 1.5 through routine optimization in order to
obtain a final coffee beverage with a desired coffee aroma, which a
preponderance of the evidence supports. In re Aller, 220 F.2d 454, 456
(CCPA 1955) (“[W]here the general conditions of a claim are disclosed in
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the prior art, it is not inventive to discover the optimum or workable ranges
by routine experimentation.”); see also 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.”).
Appellant’s arguments do not reveal reversible error in the
Examiner’s factual findings, analysis, and conclusions.
Appellant’s argument that Hurlow does not teach or suggest obtaining
a desired coffee aroma by modifying the weight ratio of aroma constituents
in a gaseous headspace in a closed container that contains the beverage is not
persuasive of reversible error because it is conclusory and it is premised on
what Hurlow teaches individually, and not the combined teachings of the
cited references as a whole, and what the combined teachings of the
references would have suggested to one of ordinary skill in the art. One
cannot show non-obviousness by attacking references individually where the
rejection is based on a combination of references. See In re Keller, 642 F.2d
413, 425 (CCPA1981). The Examiner does not rely solely upon Hurlow for
suggesting the claimed ratio of the high volatile coffee aroma compounds to
the low volatile coffee aroma compounds. Rather, as we previously discuss
above, the Examiner relies on the combined teachings of the cited references
for suggesting the claimed weight ratio of “at least about 1.5,” which a
preponderance of the evidence supports. Ans. 5–6, 9–10.
Appellant’s contentions that there is no teaching or suggestion in the
cited references that would have led the skilled artisan to recognize that
providing a ratio of at least 1.5 provides a liquid coffee beverage with
improved aroma perception upon opening of the can (Appeal Br. 7) and that
optimizing the ratio in the liquid would not necessarily result in an optimum
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ratio in the headspace (id.) are equally unpersuasive. These contentions are
conclusory and, without more, insufficient to establish reversible error in the
Examiner’s rejection. In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984).
Appellant’s argument that a skilled artisan would not have combined
the cited references to arrive at the claimed invention (Appeal Br. 6) is not
persuasive because, as we previously discuss above, we determine the
Examiner does provide a reasonable basis, which a preponderance of the
evidence in the record supports, why one of ordinary skill in the art would
have combined the teachings of the cited art to arrive at the method of claim
11. Ans. 4–6, 9–10. Appellant’s disagreement as to the Examiner’s factual
findings and reasons for combining the references, without more, is
insufficient to establish reversible error. SmithKline Beecham Corp. v.
Apotex Corp., 439 F.3d 1312, 1320 (Fed. Cir. 2006) (“[M]ere statements of
disagreement . . . as to the existence of factual disputes do not amount to a
developed argument.”).
Appellant’s contention that the skilled artisan without hindsight would
not have arrived at the claimed invention nor had a reasonable expectation of
success (Appeal Br. 8) is not persuasive because it too is conclusory. De
Blauwe, 736 F.2d at 705. Moreover, as we discuss above, we determine the
Examiner’s rejection is based on specific disclosures in the cited references
and what those disclosures considered as a whole reasonably would have
suggested to one of ordinary skill in the art, rather than based on
impermissible hindsight, as Appellant argues. See In re McLaughlin, 443
F.2d 1392, 1395 (CCPA 1971) (acknowledging that “[a]ny judgment on
obviousness is in a sense necessarily a reconstruction based upon hindsight
reasoning” but such reconstruction is proper “so long as it takes into account
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only knowledge which was within the level of ordinary skill at the time the
claimed invention was made and does not include knowledge gleaned only
from applicant’s disclosure”).
Accordingly, we affirm the Examiner’s rejection of claims 11 and
20–23 under 35 U.S.C. § 103 as obvious over Inoue, Hurlow, and
Hayakawa.

Rejections 2 and 3
In response to the Examiner’s Rejections 2 and 3 (Ans. 6, 7),
Appellant does not present any additional substantive arguments. Rather,
Appellant repeats and relies principally on the same arguments it previously
discusses and presents above in response to the Examiner’s rejection of
claim 11 under 35 U.S.C § 103 as obvious over Inoue, Hurlow, and
Hayakawa (Rejection 1). See Appeal Br. 10, 11.
Thus, based on the factual findings and reasoning the Examiner
provides in this appeal record, and for essentially the same reasons we
discuss above for affirming the Examiner’s rejection of claim 11 as obvious
over Inoue, Hurlow, and Hayakawa, we affirm the Examiner’s rejections of
claims 14–16 under 35 U.S.C. § 103 as obvious over Inoue, Hurlow,
Hayakawa, and Borland (Rejection 2) and claims 17–19 under
35 U.S.C. § 103 as obvious over Inoue, Hurlow, Hayakawa, and Valdez
(Rejection 3).

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CONCLUSION
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
11, 20–23 103 Inoue, Hurlow,
Hayakawa
11, 20–23
14–16 103 Inoue, Hurlow,
Hayakawa, Borland
14–16
17–19 103 Inoue, Hurlow,
Hayakawa, Valdez
17–19
Overall
Outcome
11, 14–23

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