Ex Parte Borlinghaus

Board of Patent Appeals and Interferences

Nov 12, 2002

08817277 (B.P.A.I. Nov. 12, 2002)

The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of the
Board.
Paper No. 39
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte AXEL HORST BORLINGHAUS
__________
Appeal No. 2001-2492
Application 08/817,277
___________
ON BRIEF
___________
Before PAK, OWENS, and KRATZ, Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
This appeal is from the final rejection of claims 11-13
and 15-18, which are all of the claims remaining in the
application.
Appeal No. 2001-2492
Application 08/817,277

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THE INVENTION
The claimed invention is directed toward a method for making
a beverage. Claim 11 is illustrative:
11. A method of preparing a beverage comprising the steps
of:
(a) providing a transportable, non-homogenized flavor
composition, said flavor composition comprising at least one
aqueous phase compound, at least one oil phase compound, and at
least one edible acid,
wherein said flavor composition is provided in a unitized
quantity corresponding to an integer part of a single batch
mixture of the beverage, said integer being greater than 0; and
wherein said flavor composition is concentrated such that
said aqueous phase compound and said oil phase compound separate
noticeably at 20°C within 2 hours when exposed only to
gravitational forces;
(b) providing a locally available dilution composition,
said dilution composition comprising water; and
(c) mixing said flavor composition with 200 or more parts
of said dilution composition per part of said flavor composition,
without prior homogenizing and without prior metering of said
flavor composition to provide a single batch mixture of the
beverage.
THE REFERENCES
Davis, Jr. et al. (Davis) 4,830,870 May 16, 1989
Elements of Food Technology 667-68 (Norman W. Desrosier ed., Avi
Publishing Co. 1977).
Olindo Secondini, Handbook of Perfumes and Flavors 17-20, 74-76
(Chemical Publishing Co. 1990).
Appeal No. 2001-2492
Application 08/817,277

3
Food Flavorings 106, 113, 114, 175, 178, 179 (P.R. Ashurst ed.,
Blackie Academic & Professional 1995) (Ashurst).
THE REJECTION
Claims 11-13 and 15-18 stand rejected under 35 U.S.C. § 103
as being unpatentable over Davis in view of Ashurst, Secondini
and Elements of Food Technology.
OPINION
We reverse the aforementioned rejection. We need to address
only claim 11, which is the sole independent claim.
The portion of Davis relied upon by the examiner (answer,
page 3) is the control beverage concentrate in example 2, which
has the following composition (col. 4, lines 34-45):
Component Weight percent
Water 93.4
Citric acid 4.6
Lemon oil emulsion 0.8
Potassium citrate 0.7
Aspartame 0.3
Preservatives 0.2
100.0
This concentrate is diluted with water at a 5:1 water-to-
concentrate ratio (col. 4, lines 50-51).
The portions of Ashurst relied upon by the examiner (answer,
pages 3-4) are the strawberry essence/water volumetric ratio in
the strawberry milk-based beverage in table 6.11 (page 175), and
Appeal No. 2001-2492
Application 08/817,277

4
the lemon essence/water ratio in the lemonade composition in
table 6.16 (page 179).
The examiner relies upon Elements of Food Technology
(pages 667-68) and Secondini (pages 17-20 and 74-76) for
descriptions of essences (answer, page 4).
The examiner argues that oil and water are known to separate
(answer, page 3). The examiner, however, has not established
that the 0.8 wt% of lemon oil emulsion in Davis’ control
composition would separate from the 93.4 wt% water at all, let
alone within 2 hours at 20ºC when exposed only to gravitational
forces as required by the appellant’s claim 11.
The examiner argues that “[n]othing new or unobvious is seen
in making a flavoring composition that is extremely concentrated
so that it must be diluted with 200 parts of water” (answer,
page 3). For a prima facie case of obviousness to be
established, however, the teachings from the prior art itself
must appear to have suggested the claimed subject matter to one
of ordinary skill in the art. See In re Rinehart, 531 F.2d 1048,
1051, 189 USPQ 143, 147 (CCPA 1976). The mere fact that the
prior art could be modified as proposed by the examiner is not
sufficient to establish a prima facie case of obviousness. See
In re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780, 1783 (Fed.
Appeal No. 2001-2492
Application 08/817,277

1 If the examiner considers any particular component of
Davis’ control concentrate to be the appellant’s flavor
composition, then the examiner has not established that the
component has an oil phase and an aqueous phase which separate
noticeably at 20ºC within 2 hours when exposed only to
gravitational forces as required by the appellant’s independent
claim.
5
Cir. 1992). The examiner has not established that the applied
prior art itself would have led one of ordinary skill in the art
to dilute Davis’ control composition, which is disclosed as being
diluted 5:1 (col. 4, lines 50-51), by a factor of at least
200:1.1
We therefore find that the examiner has not set forth a
factual basis which is sufficient to support a conclusion of
prima facie obviousness of the appellant’s claimed invention.
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Application 08/817,277

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DECISION
The rejection of claims 11-13 and 15-18 under 35 U.S.C.
§ 103 over Davis in view of Ashurst, Secondini and Elements of
Food Technology, is reversed.
REVERSED
)
CHUNG K. PAK )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
TERRY J. OWENS )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
PETER F. KRATZ )
Administrative Patent Judge )
TJO/ki
Appeal No. 2001-2492
Application 08/817,277

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