Southern Visions, LLP

Patent Trials and Appeals Board

Oct 13, 2020

PGR2019-00045 (P.T.A.B. Oct. 13, 2020)

Trials@uspto.gov Paper 38
571.272.7822 Date: October 13, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________

RED DIAMOND, INC.,
Petitioner,

v.

SOUTHERN VISIONS, LLP,
Patent Owner.
_______________

PGR2019-00045
Patent 10,071,852 B2
_______________

Before CHRISTOPHER L. CRUMBLEY, JEFFREY W. ABRAHAM, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.

KENNEDY, Administrative Patent Judge.

JUDGMENT
Final Written Decision
Granting In Part Patent Owner’s Revised Motion to Amend
35 U.S.C. § 328(a)
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I. BACKGROUND
Petitioner, Red Diamond, Inc., filed a Petition for post-grant review of
claims 13, 18, and 19 of U.S. Patent No. 10,071,852 B2 (Ex. 1001). Paper 2
(“Pet.”). Patent Owner, Southern Visions, LLP, filed a Preliminary
Response. Paper 8. We instituted trial. Paper 9 (“DI”).
Following institution, Patent Owner did not file a Patent Owner
Response. Instead, Patent Owner filed a Motion to Amend requesting “on
an unconditional basis” that we cancel challenged claims 13, 18, and 19, and
enter proposed substitute claims 20–22. Paper 15 (“MTA”) at 2. Petitioner
filed an opposition. Paper 24. Pursuant to Patent Owner’s request, see
MTA at 2, we issued Preliminary Guidance, explaining that Petitioner had
likely identified certain statutory and regulatory reasons for denying the
Motion to Amend, but that Petitioner had not shown a reasonable likelihood
that the proposed substitute claims were unpatentable. Paper 26 (“PG”) at 3,
6, 11, 12.
Patent Owner filed a Revised Motion to Amend requesting “that the
Board cancel original claims 13, 18 & 19, unconditionally consider this
Motion, and enter [proposed] claims 23–25.” Paper 27 (“Revised MTA”)
at 1 (emphasis in original). Petitioner filed an Opposition to the Revised
Motion to Amend. Paper 30 (“Opp.”). Patent Owner filed a Reply.
Paper 32. Petitioner filed a Sur-reply. Paper 36.
Oral argument was held on August 11, 2020. A copy of the transcript
of that argument was entered into the record. Paper 37 (“Hearing Tr.”).
We have jurisdiction under 35 U.S.C. § 6, and we issue this Final
Written Decision under 35 U.S.C. § 328(a). For the reasons below, we grant
Patent Owner’s Revised Motion to Amend with respect to Patent Owner’s
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request that we cancel original challenged claims 13, 18, and 19, but we
deny Patent Owner’s Revised Motion to Amend with respect to Patent
Owner’s request that we enter proposed substitute claims 23–25.
A. RELATED MATTERS
The parties identify the following related matter: Southern Visions,
LLP v. Red Diamond, Inc., No. 2:18-cv-02039-RDP (N.D. Ala.). Pet. 8;
Paper 7 at 1.
Patent Owner also identifies the following related patents and patent
application: U.S. Patents No. 9,468,222; No. 9,468,330; No. 9,549,634;
No. 9,725,232; No. 10,071,852; No. 10,093,480; No. 10,130,209; and U.S.
Application No. 16/166,862. Paper 7 at 1.
Subsequent to institution of this post-grant review, the Board
instituted four inter partes reviews in which the same parties and similar
subject matter—but different patents—are involved: IPR2019-01661,
IPR2019-01662, IPR2019-01671, and IPR2020-00001.
B. THE ’852 PATENT
The ’852 patent relates to products for brewing sweetened beverages
such as tea. Ex. 1001 at code (57). The ’852 patent states that prior art
methods of brewing sweetened beverages, which include manually adding
sugar to a beverage after it brews, result in “a lack of consistency from one
batch of beverages to the next” because, for example, “one usually does not
have a scale to weigh out” the sweetener, which results in variation of Brix
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level1 among batches. Id. at 1:30–46. The ’852 patent aims “to provide an
accurate and consistent way of brewing sweetened beverages.” Id. at 2:61–
63. To that end, the ’852 patent discloses brewing products that “contain[]
beverage materials [e.g., tea] and sweetener in a prescribed blended ratio.”
Id. at 3:7–11.
The ’852 patent attributes significance to the particle size of the
sweetener. For example, the patent discloses that “[i]t has been found . . .
that an advantageous size of particles of sweetener, particularly sugar, is that
retained by US sieve numbers 3–35, although granule sizes larger than 3 will
work as well.” Id. at 9:37–41; see also id. at 4:20–23 (“Preferably, the size
of the granulated sugar particles used is in the range of U.S. mesh sieve nos.
3–35; although, particles the size of U.S. mesh sieve nos. 3 or larger will
work successfully in the present invention.”). According to the ’852 patent,
“[t]he sweetener dissolves rapidly and more fully . . . when the granular size
of the sweetener is generally U.S. Mesh sieve 35 or larger . . . as opposed to
when the granular size of the sweetener is generally smaller than U.S. Mesh
sieve 35.” Id. at 12:14–19.
C. LEVEL OF ORDINARY SKILL IN THE ART
In the Institution Decision, we determined that “a person of ordinary
skill in the art would have had sufficient experience and/or education in the
food industry to possess an understanding of (1) sugar particle size as it
pertains to brewed beverages, (2) sugar particle size screening, and (3) the
storage and use of sugar in commercial settings.” DI at 7–8. We also asked

1 “One degree Brix is one gram of sucrose in 100 grams of solution . . . .
Brewed sweetened tea has a typical Brix level of 10 to 11.” Ex. 1001, 1:35–
43.
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the parties to expressly discuss the level of ordinary skill in the art in
remaining briefing if either party disagreed with our determination. Id. at 8.
For purposes of this Final Written Decision, we maintain our
determination from the Institution Decision because neither party disputes
the level of ordinary skill identified in the Institution Decision, and because
we continue to find that the stated level of ordinary skill is consistent with
the record.
II. MOTION TO AMEND
A. ORIGINAL CHALLENGED CLAIMS
As noted above, Patent Owner requests that we “unconditionally
consider” the Revised Motion to Amend and cancel original claims 13, 18,
and 19. Revised MTA at 1. Because Patent Owner has not indicated that
our consideration of the Revised Motion to Amend is contingent on a
determination that original challenged claims 13, 18, and 19 are
unpatentable, we grant Patent Owner’s request to cancel original challenged
claims 13, 18, and 19. See Lectrosonics, Inc. v. Zaxcom, Inc., IPR2018-
01129, Paper 15 at 3 (PTAB Feb. 25, 2019) (precedential) (“A request to
cancel claims will not be regarded as contingent.”).
The remaining issue before us is whether to grant the Revised Motion
to Amend as to proposed substitute claims 23–25.
B. PROPOSED SUBSTITUTE CLAIMS
Patent Owner moves to replace original claims 13, 18, and 19 with
proposed substitute claims 23, 24, and 25, respectively. The proposed
substitute claims, with underlining indicating language added to, and
strikethrough indicating language removed from, the original claims, are
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reproduced below. See Revised MTA at Appx. A (Listing of Proposed
Substitute Claims).
23. A beverage brewing product for producing a sweetened beverage
comprising:
at least one water permeable sieve for placement in a container;
beverage tea particles and granulated sugar contained in said at
least one sieve;
wherein said granulated sugar includes particles having a size in
the range of U.S. mesh sieve no. 35 or lower;
at least 61 percent by weight of a total amount of granulated
sugar in said at least one water permeable sieve is within the
range of U.S. mesh sieve nos. 3-20;
wherein said total amount of granulated sugar in said at least one
water permeable sieve is in the range of 1.5 to 3 pounds; and
said permeable sieve having openings being generally smaller
than the size of the beverage tea particles and said sugar for the
retention of said beverage tea particles and said sugar; so that
said particles of said sugar are dissolved during steeping in water
to produce a sweetened beverage.
24. The A beverage brewing product of claim 13 for producing a
sweetened beverage comprising:
at least one water permeable sieve for placement in a container,
wherein said at least one sieve is an open filter;
tea particles and granulated sugar contained in said at least one
sieve;
wherein said granulated sugar includes particles having a size in
the range of U.S. mesh sieve no. 35 or lower;
at least 50 percent by weight of a total amount of granulated
sugar is in the range of U.S. mesh sieve nos. 3-18;
wherein said total amount of granulated sugar in said at least one
water permeable sieve is in the range of 1.5 to 3.75 pounds; and
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said permeable sieve having openings being generally smaller
than the size of the tea particles and said sugar for the retention
of said tea particles and said sugar; so that said particles of said
sugar are dissolved during steeping in water to produce a
sweetened beverage.
25. The A beverage brewing product of claim 13 for producing a
sweetened beverage comprising:
at least one water permeable sieve for placement in a container,
wherein said at least one sieve is formed from a material selected
from a group consisting of polymer, cotton, and cellulose, and
metal;
tea particles and granulated sugar contained in said at least one
sieve;
wherein said granulated sugar includes particles having a size in
the range of U.S. mesh sieve no. 35 or lower;
at least 70 percent by weight of a total amount of granulated
sugar is in the range of U.S. mesh sieve nos. 3-16;
wherein said total amount of granulated sugar in said at least one
water permeable sieve is in the range of 1.25 to 3 pounds; and
said permeable sieve having openings being generally smaller
than the size of the tea particles and said sugar for the retention
of said tea particles and said sugar; so that said particles of said
sugar are dissolved during steeping in water to produce a
sweetened beverage.
C. STATUTORY AND REGULATORY REQUIREMENTS
Before we consider the patentability of the proposed substitute claims,
we determine whether the Revised Motion to Amend meets the statutory and
regulatory requirements set forth in 35 U.S.C. § 326(d) and 37 C.F.R.
§ 42.221. See Lectrosonics, Paper 15 at 4.
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1. Reasonable Number of Substitute Claims
A motion to amend may, “[f]or each challenged claim, propose a
reasonable number of substitute claims.” 35 U.S.C. § 326(d)(1)(B). “The
presumption is that only one substitute claim would be needed to replace
each challenged claim, and it may be rebutted by a demonstration of need.”
37 C.F.R. § 42.221(a)(3).
Patent Owner cancels three claims and proposes three replacements.
See generally Revised MTA. Petitioner does not argue that the proposed
number of substitute claims is unreasonable. See generally Opp. We
determine that the number of proposed substitute claims is reasonable.
2. Responsive to a Ground of Unpatentability
“A motion to amend may be denied where . . . [t]he amendment does
not respond to a ground of unpatentability involved in the trial.” 37 C.F.R.
§ 42.221(a)(2)(i).
Patent Owner argues that proposed substitute claims 23–25 “are
responsive because each adds novel and nonobvious feature combinations
that further address Petitioner’s arguments.” Revised MTA at 15.
Each proposed substitute claim includes, inter alia, an amendment
that narrows the sugar particle size recited in the corresponding original
claim, and an amendment that specifies the total amount of granulated sugar
used in the beverage brewing product. See Revised MTA at Appx. A. In the
Institution Decision, we determined that Petitioner had shown a reasonable
likelihood that the prior art taught or suggested the use of sugar that falls
within the scope of the originally challenged claims. E.g., DI at 26–27. The
proposed amendments are responsive to that preliminary determination and
to the arguments for unpatentability presented in the Petition.
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Petitioner does not contend otherwise. See generally Opp.
On this record, we determine that the proposed amendments are
responsive to a ground of unpatentability involved in the trial.
3. Scope of Proposed Substitute Claims
A motion to amend “may not enlarge the scope of the claims of the
patent.” 35 U.S.C. § 326(d)(3); 37 C.F.R. § 42.221(a)(2)(ii). Although
Patent Owner does not appear to separately address this requirement in the
Revised Motion to Amend, see generally Revised MTA, we have reviewed
the proposed substitute claims and determine that they do not enlarge the
scope of the claims of the patent because they add limitations that render
each proposed substitute claim narrower than original challenged claim 13.2
Petitioner does not contend otherwise. See generally Opp.
On this record, we determine that the Revised Motion to Amend
satisfies this requirement.
4. New Matter/Written Description
A motion to amend “may not . . . introduce new matter.” 35 U.S.C.
§ 326(d)(3); see 37 C.F.R. § 42.221(a)(2)(ii). “New matter is any addition to
the claims without support in the original disclosure.” Lectrosonics,
Paper 15 at 7 (citing TurboCare Div. of Demag Delaval Turbomachinery
Corp. v. General Elec. Co., 264 F.3d 1111, 1118 (Fed. Cir. 2001)). “[T]he
Board requires that a motion to amend set forth written description support

2 Cf. Hunting Titan, Inc. v. Dynaenergetics Europe GmbH, IPR2018-00600,
Paper 67 at 9, 12 (PTAB July 6, 2020) (precedential) (Board may, in some
circumstances, provide information usually provided by a party when it is
“readily identifiable and so persuasive that the Board should take it up in the
interest of supporting the integrity of the patent system.”).
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in the originally filed disclosure of the subject patent for each proposed
substitute claim, and also set forth support in an earlier filed disclosure for
each claim for which benefit of the filing date of the earlier filed disclosure
is sought.” Id. (citing 37 C.F.R. §§ 42.121(b)(1) and (2)).3
Proposed substitute claim 23 includes, inter alia, the following new
limitation:
at least 61 percent by weight of a total amount of granulated
sugar in said at least one water permeable sieve is within the
range of U.S. mesh sieve nos. 3-20.
Consistent with the nomenclature of the Revised Motion to Amend, see
Revised MTA at 7, we refer to this limitation as the “percentage+range
limitation.”
The percentage+range limitation is the only limitation in proposed
substitute claim 23 that Petitioner alleges constitutes new matter. See Opp.
at 4. We have reviewed Patent Owner’s identification of written description
support for the other limitations of proposed substitute claim 23, see Revised
MTA at 2–3, and we determine that, on the record before us, Patent Owner
has adequately identified support for those limitations. However, as
explained below, we agree with Petitioner that the percentage+range

3 At the oral hearing, it became apparent that the parties dispute which party
bears the burden of persuasion on the issue of new matter. E.g., Hearing
Tr. 10. Board precedent “requires that a motion to amend set forth written
description support in the originally filed disclosure.” Lectrosonics,
Paper 15 at 7. Thus, Patent Owner has the burden of persuasion on this
issue. In any event, the outcome of this case would be the same regardless
of who bears the burden on the issue of new matter, because, as explained
below, Petitioner’s arguments and evidence are adequate to establish that the
disputed subject matter constitutes new matter.
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limitation constitutes new matter and warrants denial of the Revised Motion
to Amend with respect to entry of proposed substitute claim 23.
As is evident from our reproduction of proposed substitute claim 23
above, in terms of sugar particle size, originally challenged claim 13
required only that the granulated sugar include particles “having a size in the
range of U.S. mesh sieve no. 35 or lower.” Ex. 1001 at 14:27. That particle
size limitation finds support, for example, in the original disclosure’s
statement that, “[p]referably, the size of the granulated sugar particles used
is in the range of U.S. mesh sieve nos. 3-35; although, particles the size of
U.S. mesh sieve nos. 3 or larger will work successfully in the present
invention.” Ex. 2040 ¶ 16. The percentage+range limitation of proposed
substitute claim 23 modifies the original particle size limitation of claim 13
by specifying that 61 percent by weight of the granulated sugar must be
within the narrower range of U.S. mesh sieve nos. 3–20.
Patent Owner cites ¶¶ 16, 26, 51, and 61 of the original disclosure as
allegedly providing written description support for the percentage+range
limitation. Revised MTA at 3. Consistent with Petitioner’s arguments, see
generally Opp., we find that neither the paragraphs cited by Patent Owner,
nor any other portion of the original disclosure, mentions U.S. mesh sieve
no. 20 in any context. See generally Ex. 2040. The closest mesh sieve
number to 20 mentioned by the original disclosure is mesh sieve no. 35,
which is mentioned, for example, in paragraph 16. See, e.g., id. ¶ 16. Other
than stating that granulated sugar is preferably “in the range of U.S. mesh
sieve nos. 3–35,” id., apparently indicating a preference that up to 100% by
weight of the sugar be within that range, paragraph 16 does not attribute any
significance to any particular weight percentage of any particular sugar
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particle size, much less does it specifically identify 61 wt% within a mesh
sieve no. range of 3–20 as a desirable embodiment. See generally id.
Paragraph 26, also cited by Patent Owner, is essentially the same in relevant
part as paragraph 16. See id. ¶ 26.
We also do not discern support for Patent Owner’s position in
paragraphs 51 or 61. Paragraph 51 gives a general description of mesh sieve
sizes, notes that typical grocery store sugar has a mesh sieve range of 45–
120 and is “smaller than the size preferable for use in the present invention,”
and repeats that sugar retained by mesh sieve nos. 3–35 is “an advantageous
size of particles,” “although granule sizes larger than 3 will work as well.”
See id. ¶ 51. Paragraph 51 thus discloses that sugar in the size range of mesh
sieve nos. 45–120 is smaller than desirable, but that sugar in the size range
of mesh sieve nos. 3–35 is desirable. Paragraph 61 states that “[t]he
sweetener dissolves rapidly and more fully in the present invention when the
granular size of the sweetener is generally U.S. Mesh sieve 35 or larger (i.e.
lower mesh numbers) as opposed to when the granular size of the sweetener
is generally smaller than U.S. Mesh sieve 35 (i.e. mesh sieve numbers above
35).” Id. ¶ 61. We do not discern any disclosure in any of the cited
paragraphs concerning a mesh size of 20 or an indication that any particular
proportion of the sugar particles should be within a narrower size range than
the range of 3–35 expressly disclosed by the written description. See
generally id. ¶ 16, 26, 51, 61.
Patent Owner also cites various disclosures in U.S. Patent Application
No. 13/867,526, which is an application to which the ’852 patent claims
priority. See Revised MTA at 2–3 (citing Ex. 2025). The cited paragraphs,
however, reference only a mesh sieve range of 3–35 and, as above, do not
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contemplate that any particular proportion of the sugar particles should be
within a narrower size range. See Ex. 2025 ¶¶ 3, 10, 27, 28, 31, 32.
As described above, we find that neither the original disclosure nor
the ’526 application provides direct support for the percentage+range
limitation. Patent Owner does not meaningfully contend otherwise. See
Reply Br. at 1 (acknowledging that the original disclosure does not
“expressly describe” the percentage+range limitation).
Patent Owner is correct that claimed numerical ranges do not
necessarily need to correspond exactly to ranges described in an original
disclosure in order to be supported by the original disclosure. Revised MTA
at 8; Vas-Cath v. Mahurkar, 935 F.2d 1555, 1566 (Fed. Cir. 1991) (citing
Ralston Purina Co. v. Far-Mar-Co, Inc., 772 F.2d 1570, 1575 (Fed. Cir.
1985), for the proposition that ranges found in applicant’s claims need not
correspond exactly to those disclosed in the specification). Thus, the fact
that the mesh sieve range of 3–20 recited by proposed substitute claim 23
does not appear in the original disclosure is not, of itself, dispositive of
whether it is supported by the original disclosure. However, it is well
established that, to provide written description support, the original
disclosure “must do more than merely disclose that which would render the
claimed invention obvious.” ICU Med., Inc. v. Alaris Med. Sys., Inc., 558
F.3d 1368, 1377 (Fed. Cir. 2009); Ariad Pharms., Inc. v. Eli Lilly & Co., 598
F.3d 1336, 1352 (Fed. Cir. 2010) (en banc) (“[A] description that merely
renders the invention obvious does not satisfy the [written description]
requirement.”). The disclosure must “reasonably convey[] to those skilled in
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the art that the inventor had possession of the claimed subject matter as of
the filing date.” Id. at 1351.
The most recent Federal Circuit case relevant to the issue of written
description support for numerical ranges identified by the parties is General
Hospital Corp. v. Sienna Biopharmaceuticals, Inc., 888 F.3d 1368, 1372
(Fed. Cir. 2018).4 In that case, the Federal Circuit explained:
The disclosure of a broad range of values does not by itself
provide written description support for a particular value within
that range. Instead, where a specification discloses a broad range
of values and a value within that range is claimed, the disclosure
must allow one skilled in the art to immediately discern the
limitation at issue in the claims.
Id. (emphasis added); cf. Atofina v. Great Lakes Chem. Corp., 441 F.3d 991,
1000 (Fed. Cir. 2006) (“[T]he disclosure of a range is no more a disclosure
of the end points of the range than it is of each of the intermediate points.”).
The Federal Circuit has also stated that, “[i]n the absence of blazemarks”
that point to a particular species or sub-genus, “simply describing a large
genus of compounds is not sufficient to satisfy the written description
requirement.” Fujikawa v. Wattanasin, 93 F.3d 1559, 1571 (Fed. Cir. 1996).
We find those cases to be instructive because we discern no guidance
in the original disclosure that points to the percentage+range limitation of
proposed substitute claim 23. Nor do we find anything in the original
disclosure that would “allow one skilled in the art to immediately discern”

4 Despite the fact that Sienna was cited in (1) Petitioner’s opposition to
Patent Owner’s original Motion to Amend, Paper 24 at 11; (2) the
Preliminary Guidance issued by the Board, PG at 8; and (3) Petitioner’s
opposition to Patent Owner’s Revised Motion to Amend, Opp. at 12, Patent
Owner fails to cite or discuss Sienna, see generally Revised MTA; Reply.
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the percentage+range limitation. See Sienna, 888 F.3d at 1372. Patent
Owner has not persuasively identified any portion of the original disclosure
that attributes any significance to any mesh sieve number range other than
3–35, and Patent Owner has not persuasively identified any portion of the
original disclosure that attributes any significance to having a particular
proportion of particles (e.g., 61 wt%) falling within some narrower mesh
sieve number range. See Ex. 1021 (Coffield Decl.) ¶¶ 23–24.
Patent Owner argues that the original disclosure shows “that one of
the Inventors’ discoveries is that larger refined sugar granules work better.”
Revised MTA at 9–10. We agree with Patent Owner that the original
disclosure expresses a preference for large particles, but the original
disclosure repeatedly identifies mesh sieve numbers 3–35 as corresponding
to the preferred large sugar particle size range. See, e.g., Ex. 2040 ¶ 16, ¶ 51
(identifying mesh sieve nos. 45–120 as “smaller than the size preferable for
use in the present invention” and mesh sieve nos. 3–35 as “an advantageous
size of particles of sweetener”). Patent Owner does not persuasively identify
any disclosure indicating that particles larger than the range of mesh sieve
nos. 3–35 (e.g., 3–20 as recited by proposed substitute claim 23) are
desirable. See, e.g., Reply Br. at 3 (acknowledging that the original
disclosure teaches “using ‘large’ sugar in the 3–35 range”).
In the Reply, Patent Owner asserts that “the Disclosures teach using
sugar larger than Sugar in the Raw,” which “is at least 75% retained on mesh
20.” Reply Br. at 3 (citing Ex. 2025 ¶ 31). Paragraph 31 of Exhibit 2025,
cited by Patent Owner, discloses that “[o]ne reason the sugar works in the
present invention is the granular size (retained by U.S. mesh sieve 3–35). It
is like sugar in the raw, but bigger.” Ex. 2025 ¶ 31. That disclosure
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suggests that mesh sieve nos. 3–35 yield sugar that is bigger than sugar in
the raw, and—consistent with numerous other portions of the original
disclosure—that mesh sieve nos. 3–35 provide a desirable sugar size. It
provides no apparent suggestion to use sugar particles larger than the range
of mesh sieve nos. 3–35, or to use a particular particle size distribution from
some narrower subset of mesh sieve numbers within that range.
Paragraph 31 and numerous other paragraphs throughout both the ’526
Application and the original disclosure of the ’852 patent plainly and
repeatedly point to a mesh sieve range of 3 to 35—not a range that would
yield larger particles, such as 3–20 as recited by proposed substitute
claim 23. E.g., Ex. 2040 ¶¶ 16, 26, 51, 61, 62, claim 2, claim 7, claim 14;
Ex. 2025 ¶¶ 10, 25, 31, claim 5, claim 10, claim 14, claim 18, claim 34.
Patent Owner also states that, “[b]ecause each of the
percentage+range limitations [of proposed substitute claims 23–25] is well
within the originally claimed range, each has written description support.”
Revised MTA at 10–11. Patent Owner appears to be relying on a bright line
rule that the disclosure of a broader numerical range necessarily provides
support for a narrower one. See id. We do not agree that any such bright
line rule exists. See Sienna, 888 F.3d at 1372; see also Ralston Purina, 772
F.2d at 1575 (“Precisely how close the original description must come to
comply with the description requirement of 35 U.S.C. § 112 must be
determined on a case-by-case basis.”). Even accepting Patent Owner’s
arguments that a person of ordinary skill generally “understands sugar
particle size distributions” and that “a percentage is a good way to describe
‘how much’ large sugar works,” Revised MTA at 10–11; Reply Br. at 2, that
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fails to show support in the original disclosure for the percentage+range
limitation.
Patent Owner also argues that the original disclosure describes
“working embodiments because all embodiments necessarily include sugar
size blends,” and that the inventors “knew that blends inherently disclosed as
part of their invention worked!” Revised MTA at 11. That argument is
unpersuasive because Patent Owner provides no citation to the original
disclosure or other evidence that any working example described in the
original disclosure or the disclosure of a parent application falls within the
scope of proposed substitute claim 23. See id. Patent Owner’s assertion that
the named inventors “knew” that particle size ranges other than mesh sieve
nos. 3–35 would work is unpersuasive because it fails to show that the
original disclosure itself “conveys to those skilled in the art that the inventor
had possession of the claimed subject matter as of the filing date.” Ariad,
598 F.3d at 1351. What may have been in the minds of the inventors is less
probative than what actually appears in the original disclosure. Id. at 1352
(“[I]t is the specification itself that must demonstrate possession.”).
Patent Owner also argues that “the written description requirement
may be satisfied through disclosure of function and minimal structure,” and
that the original disclosure shows “that the structure of larger sugar . . .
results in the function of producing sweet iced tea. From this disclosure, a
POSA appreciates the Inventors’ knowledge that the percentage+range
limitations worked.” Revised MTA at 11–12. That argument is not
persuasive because, even accepting Patent Owner’s position concerning
structure and function, the original disclosure teaches that sugar retained by
mesh sieve nos. 3–35 has the structure (i.e., particle size) needed to
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optimally carry out the function (i.e., sweetening a beverage). E.g.,
Ex. 2040 ¶ 16. We discern no suggestion in the original disclosure that
some other range of mesh sieve numbers would be superior structure to
carry out the function; nor do we discern any suggestion that a particular
proportion (i.e., 61 wt%) of sugar particles should fall within some narrower
size range.
Patent Owner also argues that, because the art is generally predictable,
“the level of detail required to show possession of the percentage+range
limitations is low.” Revised MTA at 12. Even accepting that assertion as
accurate, however, there still must be something in the original disclosure to
indicate that the inventors were in possession of the recited subject matter as
of the filing date. See Ariad, 598 F.3d at 1351. For the reasons discussed in
this decision, on this record, we do not agree with Patent Owner that the
original disclosure is adequate to show possession of the percentage+range
limitation of proposed substitute claim 23.
Patent Owner cites several cases in support of its position that the
disclosed mesh sieve range of 3–35 is adequate to show possession of the
percentage+range limitation of proposed substitute claim 23. See generally
Revised MTA. Each cited case is distinguishable from the circumstances
present here. In In re Wertheim, a claimed solids content range of “at least
35%” (i.e., no upper boundary) was not supported by a disclosure of 25–
60% solids and specific disclosed examples of 36% and 50%, but a claimed
solids content range of “between 35% and 60%” was supported by those
disclosures. 541 F.2d 257, 262–65 (CCPA 1976). Relevant to the outcome
in Wertheim was that a specifically disclosed example (36%) differed from
the lower end of the recited range (35–60%) by only 1%. Id. at 264–65
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(“What those skilled in the art would expect from using 34% solids
content . . . instead of 35% is a different matter from what those skilled in
the art would expect from the next adjacent homolog of a compound whose
properties are disclosed in the specification.”). The disclosed example
(36%) was a blazemark pointing to 35%. The difference between proposed
substitute claim 23 and the disclosure at issue in this case (i.e., mesh sieve
no. 20 (recited by proposed substitute claim 23) vs. mesh sieve no. 35
(original disclosure)) is more significant than was the difference in
Wertheim. In any event, in Wertheim the CCPA expressly stated that it was
not “creating a rule applicable to all description requirement cases involving
ranges.” 541 F.2d at 264–65.
In Union Oil Co. of California v. Atlantic Richfield Co., the Federal
Circuit explained that “[t]he patent unmistakably informs skilled refiners to
increase or decrease the various components to arrive at preferred
combinations,” and also that “[t]he claimed ranges of the originally filed
claims are the same as those set forth in the six claims of the issued ’393
patent . . . . In other words, the disclosure at the time of filing taught one of
skill in the art that the inventors possessed the subject matter of the later
claims.” 208 F.3d 989, 999–1000 (Fed. Cir. 2000). Thus, the original
disclosure there (which includes the original claims, see id. at 994) provided
guidance leading to the disputed subject matter. Here, the original
disclosure leads to a mesh sieve number range of 3–35, and Patent Owner
does not persuasively identify a disclosure from which the narrower range of
the percentage+range limitation could be derived. As noted above, the fact
that the original disclosure may render the percentage+range limitation
obvious is not adequate to show written description support. Additionally,
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we observe that, in Union Oil Co., the Federal Circuit was reviewing jury
findings concerning written description under the deferential standard of
review accorded to jury determinations. See id. at 1001 (“Because the
record shows substantial evidence of adequate written description for each
claim as the jury found, this court affirms.”).
Patent Owner also cites several Board decisions from ex parte
appeals, each of which pre-dates the Federal Circuit’s Sienna decision,
discussed above. Revised MTA at 8. The cited Board decisions are
nonprecedential. See id. Each of those decisions is also distinguishable
from the facts before us.
In Ex parte Cauffriez, the disclosure at issue listed several examples
of preferred ranges (that encompassed the claimed ranges), indicating that
the inventors were in possession of more than a single range at the time of
the original disclosure, and indicating that the inventors did not regard any
single recited range as critical. See 2012 WL 3142174 (PTAB July 30,
2012). In Ex parte Tran, the Board identified several aspects of the original
disclosure that reasonably pointed to the disputed subject matter, and the
Board determined that the Examiner failed to adequately explain the
Examiner’s rejection. See Appeal 2014-008001, at 5, 7 (PTAB July 18,
2016). In Ex parte Logan, the Board characterized the Examiner’s rejection
as “consist[ing] of three conclusory sentences,” and the Board determined
that “[t]he Examiner fails to present any reasoning or evidence” in support
of the Examiner’s new matter rejection. See Appeal 2013-002601, at 4
(PTAB Apr. 15, 2015). In Ex parte Sixt, the Board found that the Examiner
had “overlook[ed]” a significant disclosure in the specification that
contributed to the Board’s determination that the Examiner did not
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adequately establish that the disputed limitation was new matter. See
Appeal 2011-011725, at 6 (PTAB Sept. 20, 2013).
Although we have reviewed and considered each of the cases cited by
Patent Owner, and we agree with Patent Owner that, in some cases, a
broader disclosed range may be sufficient to support a narrower claimed
range, we do not find the cited cases to provide significant support for Patent
Owner’s position on the particular facts of the case before us.
Even were we to agree with Patent Owner that the cases discussed
above support a determination that the original disclosure of a mesh sieve
size range of 3–35 supports the narrower range of 3–20 recited by proposed
substitute claim 23, that would not end the inquiry. As Petitioner points out
in the Opposition, Opp. at 12, proposed substitute claim 23 recites not only a
mesh sieve size range of 3–20, but it also requires that “at least 61 percent
by weight of a total amount of granulated sugar” fall within that range.
Consistent with Petitioner’s arguments, Opp. at 12, and as indicated above,
we discern no support in the original disclosure for a limitation requiring a
certain percentage of sugar particles to fall within a certain narrower subset
of mesh sieve nos. 3–35.
Patent Owner’s position appears to be that, by virtue of not reciting
any limitation on the weight % of sugar within the claimed range, the
original disclosure implicitly discloses a weight % range of “more than zero”
(i.e., 0–100%) for any given particle size within mesh sieve number range 3–
35, and, therefore, that any weight percentage of any particle size range
between 3–35 is supported by the original disclosure. See Revised MTA at
9. We disagree because that position is inconsistent with various Federal
Circuit cases discussed above, including, for example, Sienna, 888 F.3d at
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1372 (“The disclosure of a broad range of values does not by itself provide
written description support for a particular value within that range.”). We
agree with Petitioner that the original disclosure “never even frame[s] the
concept of weight percentages for various sized sugars, which is the focus of
the proposed amendments.” Opp. at 12. A person of ordinary skill in the
art’s generic familiarity with sugar particle size distribution, see Revised
MTA at 10–11; Reply Br. 2, does not show possession by the inventors of
the distribution specified by proposed substitute claim 23. See Ariad, 598
F.3d at 1352 (“[I]t is the specification itself that must demonstrate
possession.”).
Finally, we find persuasive Petitioner’s argument that the subject
matter of the percentage+range limitation was “devised during [a named
inventor’s] recent testing in support of the motion to amend.” Opp. at 7–9.
The specific numbers (61 wt%, 3–20 mesh) in the percentage+range
limitation appear in data obtained from experiments run by a named inventor
in connection with a declaration that was prepared for and submitted in this
post-grant review proceeding. See Ex. 2028 ¶¶ 61, 72, 73; Ex. 1019 at 76:2–
23; Ex. 2020 at 43:5–20. Although that is not dispositive of the new matter
issue in this case because it is possible that the original disclosure could
support those figures and that experimental data obtained after the filing date
of the original disclosure could happen to precisely match, we nevertheless
find it to be moderately persuasive evidence that the disputed subject matter
was not derived from the original disclosure, but, rather, that it was derived
from experiments performed for purposes of this proceeding. In this case,
there is “reason to doubt” whether the broader range of the original
disclosure shows possession by the inventors of the narrower range of
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proposed substitute claim 23. See Wertheim, 541 F.2d at 264 (“[T]he
question is whether, on the facts, the PTO has presented sufficient reason to
doubt that the broader described range also describes the somewhat narrower
claimed range.”).
Taking into account all of the evidence of record identified by the
parties, and all of the arguments presented by the parties, we find that the
percentage+range limitation of proposed substitute claim 23 constitutes new
matter.
Proposed substitute claims 24 and 25 include percentage+range
limitations that differ from proposed substitute claim 23 only in the specific
weight percentage and mesh sieve size range recited. Patent Owner does not
present separate arguments concerning the weight percentages or mesh sieve
size ranges of proposed substitute claims 24 and 25. We determine that the
analysis set forth above with respect to proposed substitute claim 23 applies
equally to proposed substitute claims 24 and 25. Accordingly, we determine
that the percentage+range limitations of proposed substitute claims 24 and
25 constitute new matter.
Because each of proposed substitute claims 23–25 introduces new
matter, we must deny Patent Owner’s Revised Motion to Amend with
respect to Patent Owner’s request that we enter claims 23–25 as substitutes
for cancelled claims 13, 18, and 19. See 35 U.S.C. § 326(d)(3); 37 C.F.R.
§ 42.221(a)(2)(ii).
D. PATENTABILITY OF PROPOSED SUBSTITUTE CLAIMS
Because our determination above is dispositive of Patent Owner’s
Revised Motion to Amend with respect to Patent Owner’s request that we
enter proposed claims 23–25 as substitutes for cancelled claims 13, 18, and
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19, we do not address whether proposed substitute claims 23–25 would have
been obvious over the prior art of record.
III. CONCLUSION
Patent Owner’s request to cancel original challenged claims 13, 18,
and 19 is granted.
Patent Owner’s request to enter proposed substitute claims 23–25 is
denied.
In summary:
Motion to Amend Outcome Claim(s)
Original Claims Cancelled by Amendment 13, 18, 19
Substitute Claims Proposed in the Amendment 23–25
Substitute Claims: Motion to Amend Denied 23–25
IV. ORDER
It is hereby:
ORDERED that claims 13, 18, and 19 of the ’852 patent are
cancelled;
FURTHER ORDERED that Patent Owner’s request to substitute
claims 23–25 for cancelled claims 13, 18, and 19 is denied;
FURTHER ORDERED that, because this is a Final Written Decision,
parties to the proceeding seeking judicial review of the decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

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For PETITIONER:
Jamaica Szeliga
SEYFARTH SHAW LLP
jszeliga@seyfarth.com

James Robertson
JM ROBERTSON LLP
jrobertson@jmrpatents.com

For PATENT OWNER:

Raymond Areaux
Joseph Miller
CARVER, DARDEN, KORETSKY, TESSIER, FINN, BLOSSMAN & AREAUX LLC
areaux@carverdarden.com
miller@carverdarden.com