NESTEC S.A.Download PDFPatent Trials and Appeals BoardMar 31, 20212020003190 (P.T.A.B. Mar. 31, 2021) Copy Citation 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 Appeal Br. 2. 3 Claims 1 and 4–10 are withdrawn and claims 2, 3, 12, and 13 are cancelled.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. Appeal 2020-003190 Application 15/106,415 2 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 Appeal 2020-003190 Application 15/106,415 3 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. Appeal 2020-003190 Application 15/106,415 4 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”). Appeal 2020-003190 Application 15/106,415 5 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. Appeal 2020-003190 Application 15/106,415 6 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 Appeal 2020-003190 Application 15/106,415 7 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 Appeal 2020-003190 Application 15/106,415 8 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 Appeal 2020-003190 Application 15/106,415 9 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 Appeal 2020-003190 Application 15/106,415 10 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). Appeal 2020-003190 Application 15/106,415 11 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 Copy with citationCopy as parenthetical citation