Ex Parte Chang et al

Board of Patent Appeals and Interferences

Dec 13, 2011

11338972 (B.P.A.I. Dec. 13, 2011)

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.
11/338,972 01/25/2006 Pei K. Chang 006943.01715 7228
66811 7590 12/13/2011
BANNER & WITCOFF, LTD.
and ATTORNEYS FOR CLIENT NO. 006943
10 SOUTH WACKER DR.
SUITE 3000
CHICAGO, IL 60606
EXAMINER
DEES, NIKKI H
ART UNIT PAPER NUMBER
1781
MAIL DATE DELIVERY MODE
12/13/2011 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte PEI K. CHANG,
KATHLEEN K. LATIMER, and CHRISTINE J. SISLER
__________

Appeal 2011-000700
Application 11/338,972
Technology Center 1700
__________

Before LORA M. GREEN, FRANCISCO C. PRATS, and
STEPHEN WALSH, Administrative Patent Judges.

PRATS, Administrative Patent Judge.

DECISION ON APPEAL
This appeal under 35 U.S.C. § 134 involves claims to a cola flavor
emulsion. The Examiner entered rejections for obviousness.
We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
STATEMENT OF THE CASE
The Specification discloses that cola beverages “are typically made by
combining a cola flavor syrup with carbonated water. The cola syrup is
composed of an acidified cola flavor emulsion that is added to other
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components including acid, water, sweetener and optionally caffeine as is
known in the art” (Spec. [0002]).
The Specification discloses, however, that “the flavor emulsion is
subjected to storage and shipping which can result in exposure to elevated
temperatures. Exposure to elevated temperatures can cause a degradation or
adverse effect upon the flavor of the cola emulsion” (id.).
In addressing this issue, the inventors “[s]urprisingly . . . discovered
that by controlling the amount of acid in the cola flavor emulsion for pH
adjustment, improved resistance to flavor degradation and adverse flavor
effects is provided” (id. at [0006]).
The Specification thus discloses a comparison between a control
flavor emulsion containing 13.4 % total phosphoric acid, and two inventive
emulsions, respectively containing 10.9% and 8.7% total phosphoric acid
(id. at [0027]-[0028]). The inventors found that the control emulsion
experienced flavor degradation after 6 weeks of storage at 90°F, whereas the
inventive emulsions did not (id. at [0027]-[0031]).
Based on the comparison, the Specification states that the “above
findings show that beverages made with the inventive emulsions stored at
90°F with low acid are beneficial in maintaining the same taste
characteristics of a non-modified control stored at 70°F. In addition, the
non-modified control stored at 90°F exhibited a non-desirable taste when
compared to storage at 70°F” (id. at [0032]). According to the Specification,
“[t]his example further demonstrates the amount of acid reduction is critical
in maintaining a similar taste to the control” (id. at [0033]).
Claims 1-22 stand rejected and appealed (see App. Br. 3). Claim 1 is
representative and reads as follows:
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1. A cola flavor emulsion that is resistant to heat degradation
comprising:
from about 1.2% to about 2.6% by weight cola flavor, caramel
color, water and from about 8% to about 11 % by weight phosphoric
acid, said cola flavor emulsion having a pH of from about 0.65 to
about 0.9.

The following rejections are before us for review:
(1) Claims 1-13, 21, and 22, under 35 U.S.C. § 103(a) as obvious over
Heath
1
(Ans. 4-5); and
(2) Claims 14-20, under 35 U.S.C. § 103(a) as obvious over Heath and
Ranken
2
(Ans. 5-6).
DISCUSSION
The Examiner found that Heath described a concentrate, MF 235,
which comprised “about 7.5% by weight phosphoric acid, about 4.2% by
weight cola flavor, caramel color, vanilla extract, and water” (Ans. 4). The
Examiner concluded that the “slight differences” between the concentrations
of ingredients in Heath’s composition and “the claimed composition are
considered to be obvious over the teachings of Heath” (id.).
The Examiner reasoned that, as “Heath teaches a variety of cola
syrups, emulsions, and concentrates, it would have been obvious to one of
ordinary skill in the art at the time the invention was made that cola flavor
emulsions have highly variable compositions, depending on the flavor
desired in the final composition” (id. at 5). The Examiner also found that an

1
HENRY B. HEATH, SOURCE BOOK OF FLAVORS 779-792 (AVI Publishing:
Westport, CT, 1981).
2
FOOD INDUSTRIES MANUAL 228-229, (M.D. Ranken et al. eds., Blackie
Academic and Professional: London, 1997).
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ordinary artisan “would have further recognized that the amount of
phosphoric acid and cola flavor in the composition are parameters that could
be adjusted with no more than routine experimentation to result in the
desired acidity and flavor in the composition” (id.).
As Appellants do not argue the claims subject to this ground of
rejection separately, we select claim 1 as representative of the rejected
claims. See 37 C.F.R. § 41.37(c)(1)(vii).
Appellants’ arguments do not persuade us that the Examiner failed to
make a prima facie case that claim 1 would have been obvious to an
ordinary artisan.
Appellants initially contend that the Examiner’s optimization rationale
fails to “provide an articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness” (App. Br. 7). Appellants argue,
“[i]n effect, the Examiner contends that the existence of ingredients provides
sufficient motivation to chop and change any of them in any particular way;
i.e., that it would be obvious to try any modification of the ingredients” (id.
at 7-8). In the instant case, however, Appellants urge that the Examiner’s
rationale provides “nothing more than a suggestion to vary all parameters
without any guidance as to which parameters are critical, or to which choices
would succeed” (id. at 8).
The Federal Circuit has held, however, “that a prima facie case of
obviousness exists when the claimed range and the prior art range do not
overlap but are close enough such that one skilled in the art would have
expected them to have the same properties.” In re Peterson, 315 F.3d 1325,
1329 (Fed. Cir. 2003) (citing Titanium Metals Corp. v. Banner, 778 F.2d
775, 783 (Fed. Cir. 1985).
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Thus, in Titanium Metals, the court held a claim directed to an alloy
containing 0.3% molybdenum, 0.8% nickel, with the balance being titanium,
prima facie obvious over two prior art alloys having “0.25% Mo-0.75% Ni
and 0.31% Mo-0.94% Ni, respectively. The proportions are so close that
prima facie one skilled in the art would have expected them to have the same
properties. Appellee produced no evidence to rebut that prima facie case.”
Titanium Metals, 778 F.2d at 783.
Here, representative claim 1 recites a cola flavor emulsion that
contains water, caramel color, from about 1.2% to about 2.6% by weight
cola flavor, and from about 8% to about 11 % by weight phosphoric acid.
As the Examiner points out, and Appellants do not dispute, Heath discloses a
“Cola Flavor Concentrate MF235” that contains about 4.2% by weight cola
flavor emulsion and about 7.5% by weight phosphoric acid, as well as
caramel color and water (see Heath 782; see also Ans. 4).
Thus, the instant case is similar to the situation in Titanium in that all
of the ingredients required by claim 1 are present in the prior art
composition, and in proportions very close to those recited in the claim,
especially considering the range-broadening “about” language of claim 1.
Moreover, given the same utilities of the prior art and claimed products, an
ordinary artisan would have expected the two compositions to have the same
properties.
We are therefore not persuaded that the Examiner failed to advance
sufficient evidence suggesting prima facie obviousness as to claim 1. Rather
than unguidedly varying any and all prior art parameters, or throwing
“metaphorical darts at a board filled with combinatorial prior art
possibilities” (App. Br. 10 (quoting In re Kubin, 561 F.3d 1351, 1359 (Fed.
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Cir. 2009))), the Examiner has advanced evidence showing that a
composition having the same utility and very similar ingredient proportions
to those claimed had been described in the art. See Titanium Metals, 778
F.2d at 783.
We are also not persuaded, as Appellants argue, that “nothing in the
[sic] Heath provides any rationale for adding phosphoric acid to an
emulsion, let alone adding phosphoric acid in the recited range” (App. Br.
8). To the contrary, by disclosing that the MF235 cola flavor concentrate
should contain both the cola flavor emulsion MF 233, and phosphoric acid in
a percentage undisputedly very close to that of claim 1 (see Heath 782),
Heath expressly suggests adding phosphoric acid to an emulsion, and in
amounts encompassed by the claims.
We acknowledge, as Appellants argue (App. Br. 8-9; Reply Br. 2),
that Heath uses the term “Cola Flavor Emulsion” to refer to formulation MF
233, whereas the distinct term “Cola Flavor Concentrate” is used to refer to
the formulation, MF 235, urged by the Examiner as obviating the emulsion
of claim 1 (id.). As noted, however, the cola flavor concentrate MF235
contains the cola flavor emulsion MF 233 (Heath 782), as well as phosphoric
acid in a concentration very close to that claimed.
Thus, while it might be true that Heath’s terminology is not entirely
consistent with Appellants’, we detect no error in the Examiner’s finding
that Heath’s composition is in fact a flavor emulsion that contains the
ingredients required by claim 1, in proportions very close to those required
by claim 1. In this regard, we acknowledge Appellants’ argument that
“emulsions can be easily broken by the addition of ingredients or the
addition of heat” (Reply Br. 2).
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However, Appellants point to no specific evidence of record showing,
or even suggesting, that Heath’s formulation lacked the properties required
of the claimed acidified cola flavor emulsion. To the contrary, given that the
prior art composition contained the claimed ingredients in proportions very
close to those claimed, we agree with the Examiner that it was reasonable to
find that it would have the same physical properties.
Appellants argue that “no rationale is supplied to explain why a
skilled artisan would have predicted that adding the recited range of
phosphoric acid to the emulsion would solve the problem of heat-induced
off-flavors in the final beverage. . . . Nothing in Heath discusses heat effects
on final beverage flavor” (App. Br. 9; see also Reply Br. 3).
Moreover, Appellants contend, “the skilled artisan could not have
predicted Applicants’ solution because not all amounts of phosphoric acid
confer the heat-protective effect” (App. Br. 9). Thus, Appellants urge, as
shown in Tables 1 and 2 of the Specification, only the inventive emulsions,
which contained 10.9% and 8.7% phosphoric acid, protected against heat-
induced off-flavors in the final beverage, whereas the control emulsion,
which contained 13.4% phosphoric acid, did not (id.).
These arguments do not persuade us that the Examiner erred in
maintaining the rejection.
While it might be true that the prior art’s purpose in making an
acidified cola flavor emulsion having the claimed percentage of phosphoric
acid was different that Appellants’ stated purpose of avoiding heat-induced
flavor degradation, that fact does not demonstrate that claim 1 would have
been non-obvious. See KSR Int’l v. Teleflex Inc., 550 U.S. 398, 419 (2007)
(“In determining whether the subject matter of a patent claim is obvious,
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neither the particular motivation nor the avowed purpose of the patentee
controls. What matters is the objective reach of the claim. If the claim
extends to what is obvious, it is invalid under § 103.”).
To the extent Appellants argue that claim 1’s composition has
improved heat stability, as the Federal Circuit has stated, “any superior
property must be unexpected to be considered as evidence of non-
obviousness.” Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1371 (Fed. Cir.
2007).
Thus, “[m]ere improvement in properties does not always suffice to
show unexpected results. . . . [W]hen an applicant demonstrates substantially
improved results . . . and states that the results were unexpected, this should
suffice to establish unexpected results in the absence of evidence to the
contrary.” In re Soni, 54 F.3d 746, 751 (Fed. Cir. 1995).
Here, while Appellants argue that it was unpredictable that reducing
the phosphoric acid content in an acidified cola flavor emulsion would result
in a composition whose flavor was more heat stable (see App. Br. 9; Reply
Br. 3), Appellants appear to make no clear or specific statement or argument
in the Appeal Brief or Reply Brief that an ordinary artisan would have
considered that result unexpected. As pointed out above, we note the
Specification’s statement that the inventors “[s]urprisingly . . . discovered
that by controlling the amount of acid in the cola flavor emulsion for pH
adjustment, improved resistance to flavor degradation and adverse flavor
effects is provided” (Spec. [0006]).
However, “when unexpected results are used as evidence of
nonobviousness, the results must be shown to be unexpected compared with
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the closest prior art.” In re Baxter-Travenol Labs., 952 F.2d 388, 392 (Fed.
Cir. 1991).
In the instant case, the closest prior art is the cited reference, Heath.
Appellants point to no comparison of the properties of Heath’s composition
compared to the composition recited in claim 1.
In this regard, we note that, unlike Appellants’ control emulsion,
Heath contains a very slightly lower percentage of phosphoric acid as
compared to claim 1. Thus, to the extent Appellants argue that claim 1’s
composition has properties that would not have been predicted based on the
cited prior art, we are not persuaded that an adequate comparison has been
made to support a showing of unexpected results.
Appellants argue that “the Examiner’s stated rationale is further
undercut because Applicants maintain the total amount of acid in the final
beverage. Some acid is added to the emulsion, and additional acid is added
during preparation of the cola syrup” (App. Br. 9). In contrast, Appellants
urge, “[n]othing in Heath suggests adding phosphoric acid to the emulsion
and additional acid to the syrup. Because the amount of acid in the final
beverage is unaltered, the contribution of acidity to final beverage flavor
does not support the Examiner’s asserted motivation” (id. at 10).
This argument does not persuade us that the Examiner erred in
concluding that claim 1 would have been obvious to an ordinary artisan. We
acknowledge the Specification’s disclosure that additional acid can be added
to the syrup when using Appellants’ inventive emulsions 1 and 2 (Spec.
[0028]). We also acknowledge the Examiner’s suggestion that optimizing
acid concentration would affect taste (Ans. 5).
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Ultimately, however, the Examiner’s conclusion of obviousness as to
representative claim 1 was based on the finding that Heath described a
composition, MF 235, having all of the ingredients recited in claim 1, in
proportions very close to those claimed (see Ans. 4). Thus, the fact that
Heath might not describe adding additional phosphoric acid when forming a
syrup from MF 235 does not, in our view, demonstrate that an ordinary
artisan would have considered a product having a composition almost
exactly like that of MF 235 to be non-obvious.
In sum, for the reasons discussed, Appellants’ arguments do not
persuade us that the Examiner erred in maintaining the obviousness rejection
of claim 1 over Heath. We therefore affirm the Examiner’s rejection of that
claim over that reference. As they were not argued separately, claims 2-13,
21, and 22 fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(vii).
The Examiner also rejected claims 14-20 as obvious over Heath and
Ranken (Ans. 5-6). The Examiner cited Ranken to show that it was
“common to combine soft drink syrups with carbonated water to provide
carbonated soft drinks” and reasoned that an ordinary artisan would have
considered it obvious “to combine a cola flavor syrup having a composition
based on the compositions as taught by Heath with carbonated water in order
to provide a cola flavored beverage” (id. at 6).
Appellants argue only that “Ranken does not cure the deficiencies of
Heath described above” (App. Br. 11). As discussed above, we do not find
those arguments persuasive. As we detect no other deficiency in the
Examiner’s prima facie case, we affirm the Examiner’s rejection of claims
14-20 as obvious over Heath and Ranken.

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SUMMARY
We affirm the Examiner’s obviousness rejection of claims 1-13, 21,
and 22 over Heath.
We also affirm the Examiner’s obviousness rejection of claims 14-20
over Heath and Ranken.
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

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