Ex Parte Corkery et alDownload PDFPatent Trial and Appeal BoardMay 27, 201612723100 (P.T.A.B. May. 27, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 121723,100 03/12/2010 110933 7590 05/31/2016 Carstens & Cahoon, LLP PO Box 802334 Dallas, TX 75380 FIRST NAMED INVENTOR Robert CORKERY 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 ATTORNEY DOCKET NO. CONFIRMATION NO. CFLAY.00509 4509 EXAMINER YOO, HONG THI ART UNIT PAPER NUMBER 1793 MAILDATE DELIVERY MODE 05/31/2016 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 PATENT TRIAL AND APPEAL BOARD Ex parte ROBERT CORKERY, ADAM FEILER, WLIE ANNE GROVER, CHRIS DIMELOW, and EAPEN GEORGE Appeal2013-007923 Application 12/723, 100 Technology Center 1700 Before PETER F. KRATZ and MARK NAGUMO, and WESLEY B. DERRICK, Administrative Patent Judges. KRATZ, Administrative Patent Judge. DECISION ON APPEAL This is a decision on an appeal under 35 U.S.C. § 134 from the Examiner's final rejection of claims 1---68. We have jurisdiction pursuant to 35 U.S.C. § 6. Appellants' claimed invention is directed to a flavoring composition, a method of flavoring a food product with the flavoring composition, and a food composition that includes the flavoring composition. Claims 1, 28, and 48 are illustrative and reproduced below: 1. A method for flavoring a food product, said method comprising the steps of: applying to said food product a flavoring composition comprising porous particles with a first fraction of pores having Appeal2013-007923 Application 12/723, 100 a first substantially uniform pore diameter and loaded with a first liquid flavorant, wherein said first pore diameter is chosen based on a desired flavor profile of said first liquid flavorant. 28. A food composition comprising: a food product; a flavoring composition comprising a plurality of porous particles with a first fraction of pores having a first substantially uniform pore diameter and loaded with a first liquid flavorant; and a flavor profile based on said first pore diameter. 48. A flavoring composition comprising: a plurality of porous particles having a first substantially uniform pore diameter and loaded with a first liquid flavorant; and a flavor profile based on said first pore diameter. The Examiner relies on the following prior art references as evidence in rejecting the appealed claims: Calabro Luan Lin Ku Kitahata us 4;775;537 US 2006/0130861 Al US 2006/0154069 Al US 2006/0266700 Al US 2007 /0003492 Al Oct 4; 1988 Jun.22,2006 Jul. 13, 2006 Nov. 30, 2006 Jan.4,2007 A.J. Burggraaf et al., Fundamentals oflnorganic Membrane Science and Technology, Membrane Science and Technology Series, 4 (1996). The Examiner maintains the following grounds of rejection: 1. Claims 1, 2, 6, 7, 13-23, 26-28, 30, 34--43, 46-48, 54---64, 67, and 68 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Kitahata in view of Luan, as evidenced by Burggraaf. 2 Appeal2013-007923 Application 12/723, 100 2. Claims 11, 29, 30, 49, and 50 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Kitahata in view of Luan, as evidenced by Burggraaf, and further in view of Calabro. 3. Claims 3-5, 8-10, 12, 31-33, and 51-53 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Kitahata in view ofLuan, as evidenced by Burggraaf, and further in view of Ku. 4. Claims 24, 25, 44, 45, 65, and 66 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Kitahata in view of Luan, as evidenced by Burggraaf, and further in view of Lin. We affirm the stated rejections. Our reasoning follows. Rejection 1 Appellants present substantially the same arguments with respect to the independent claims 1, 28, and 48 (Groups I-III), and identifies certain groups of dependent claims (Groups IV-VII) for separate argument (Br. 5- 10). Other dependent claims subject to Rejection 1 are identified as a part of a group of claims (Group XI) that are not separately argued (Br. 12). Accordingly, we select claim 1 as the representative claim on which we primarily focus on in deciding this appeal as to commonly rejected claims 1, 28,48,6, 13, 15, 18-20,24-27,34, 38--40,44-47,54,58---61,64,67,and68 that are members of Appellants' identified claim Groups I-III and XI. Our discussion of rejected claims that are members of the other claim groupings identified by Appellants follow, in due course, below. Concerning representative claim 1, the Examiner finds that Kitahata teaches, inter alia, flavoring a food product with a composition including menthol (and/or other flavorings such as peppermint) supported by porous silica (porous particles) but Kitahata does not explicitly describe that the 3 Appeal2013-007923 Application 12/723, 100 silica has at least a fraction of its pores (some pores) with a substantially uniform pore diameter, which pore diameter is chosen based on a desired flavor profile of the liquid flavoring (menthol) as required by representative claim 1 (Ans. 3--4; Kitahata i-fi-1 62----67, 107, and 108). While Kitahata does not expressly describe and discuss pore size uniformity and its relationship to flavor profile in general, Kitahata teaches that the pore sizes in the silica can be controlled by controlling the alkyl chain length of a surfactant when an organic surfactant is employed as a template in forming the pores so as to obtain pores of "an optimal size" "for the menthol to be supported" (i-f 82). In this regard, Kitahata is concerned not only with supporting menthol with the porous support but with controlled release of menthol from the porous silica (i-f 62). Furthermore, the Examiner finds that (Ans. 4): Luan teaches a flavoring carrier (flavoring composition) comprising a mesoporous molecular sieve (porous particles) \vith a flavor releasably disposed \vithin the sieve ('861, [0004]- [0005]; [0012]; [0037]-[0040]). Luan's mesoporous molecular sieve is porous and has a defined particle size therefore Luan's mesoporous molecular sieve is considered porous particles. Luan teaches the flavor includes menthol and essential oils (liquid flavorant) (861, [0043]). Luan teaches the pore size (diameter) of the mesoporous molecular sieve can be selected as a function of a flavor compound to be delivered ('861, [0041 ]). Luan teaches the pores on the surfaces of the mesoporous molecular sieve are uniform in arrangement, distribution and orientations ('861, [0044], claim 98). Based on the combined teachings of Luan and Kitahata, the Examiner has determined that one of ordinary skill in the art would have been led to employ "Luan's mesoporous molecular sieve (porous particles) in Kitahata's method of flavoring a food product" in light of the teachings of Kitahata and 4 Appeal2013-007923 Application 12/723, 100 Luan including Luan's teaching that "the mesoporous molecular sieve pore size is effective to contain and substantially avoid or minimize unwanted migration of flavors such as in storage" (Ans. 4; Luan i-f 45). Appellants argue that "Luan is directed to delivering menthol flavor in a smoking article" wherein the concern is with "how a vaporized flavorant will release from porous silica particles" which "is not analogous to a foodstuff' and "how a liquid flavorant will release in the mouth of a consumer when flavored food is eaten" (Br. 5). Hence, Appellants urge "that a skilled artisan would not look to teachings relating to vaporized flavor delivery [in] a smoking article for anything relevant to flavor delivery in foods" given that "the mechanism for flavor delivery in foods differs significantly from the mechanism used for smoking articles, which renders Luan non-analogous art" (Br. 6). Contrary to Appellants' argument, we concur with the Examiner that Appellants' contentions do not establish that Luan represents non-analogous art (Ans. 3). The two separate tests for determining whether a prior art reference is analogous are as follows: (1) whether the art is from the same field of endeavor, regardless of the problem addressed; and (2) if the reference is not within the inventor's endeavor, whether the reference is reasonably pertinent to the particular problem with which the inventor is involved. In re Bigio, 381F.3d1320, 1325 (Fed. Cir. 2004). The appealed claims are not limited to flavor delivery in a food product as evinced by appealed claim 48, which does not recite food as a limitation or even as an intended use. Moreover, Kitahata teaches that its flavor carrying porous silica composition can be employed as part of a 5 Appeal2013-007923 Application 12/723, 100 foodstuff composition or as part of a tobacco product, as well as other items (iTiT 107-111). In light of the above, the field of Appellants' endeavor is not strictly limited to flavor delivery in a food composition as argued by Appellants. Moreover, even if we considered representative claim 1 to be directed to using the flavoring composition in a food, a narrower field of endeavor that is not a particular focus of Luan, Appellants' arguments fail to demonstrate that Luan does not constitute analogous art that is reasonably pertinent to the problem or problems at hand with respect to providing a flavoring composition comprising porous silica particles/powder that effectively contain flavor compounds in a releasable manner that can provide for controlled delivery for purposes of enhancing taste associated with the use of the flavor compositions. "If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). For the same reason, if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill. Id. Furthermore, "'familiar items may have obvious uses beyond their primary purposes."' In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1380 (Fed. Cir. 2007) (quoting KSR, 550 U.S. at 420). "A reference is reasonably pertinent if, even though it may be in a different field from that of the inventor's endeavor, it is one which, because of the matter with which it deals, logically would have commended itself to 6 Appeal2013-007923 Application 12/723, 100 an inventor's attention in considering his problem." Jn re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992). Nor is the problem to be addressed strictly limited to the inventor's problem. After all, resolution of other problems facing an artisan can form the basis for a modification of the prior art and, where appropriate, a determination of obviousness. Here, Appellants' arguments fail to sufficiently articulate why the flavor carrier compositions of Luan would lack reasonable pertinence to fashioning the food product of Kitahata that includes porous flavor carriers as in Luan notwithstanding the argued and readily apparent differences between flavor delivery via a smoking article and a foodstuff. This is so given that Kitahata teaches or suggests that its flavor carrier porous silica can be used in a food product and can have (a) a hexagonal shaped pore structure corresponding to the pore structure as disclosed by Luan, (b) pore sizes overlapping the pore sizes disclosed by Luan and pore size optimized for particular flavors, and ( c) can be used to convey flavors, such as menthol and/or peppermint, which are among the flavors employed by Luan (Kitahata i-fi-133, 35, 37, 39, 62, 63, 66-69, 82, 105; Luan i-fi-139--45, 60). As our reviewing court has indicated, labeling a reference as analogous art "merely connotes that it is relevant to a consideration of obviousness under§ 103 as 'prior art."' In re Sovish, 769 F.2d 738, 742 (Fed. Cir. 1985). Contrariwise, considering a reference as non-analogous art is a determination that removes it as prior art to be considered; that is, it is construed as being non-relevant evidence for consideration of the obviousness question mandated by statute. 7 Appeal2013-007923 Application 12/723, 100 For reasons set forth above and in the Answer, we concur with the Examiner that Appellants' arguments set forth in the Appeal Brief fail to indicate that Luan is not relevant to the obviousness question before us and should be excluded from consideration. In addition, Appellants argue that the Examiner's obviousness rejection is predicated on an insufficient rationale to lead one of ordinary skill in the art to subject matter within the scope of representative claim 1 based on the Examiner's proposed combination of Luan with Kitahata. According to Appellants, this is because Luan is concerned with flavor storage and not flavor delivery and Luan does not explicitly describe a relationship of flavor profile and flavor release rate to pore diameter (Br. 6- 7). Contrary to Appellants' argument, however, Luan is concerned with both flavor storage and flavor delivery with the disclosed flavor carriers (i-fi-f 3-8, 16-20, 39--45). Luan teaches that the mesoporous material pore size "can be selected as a function of a flavor compound to be delivered" and the mesoporous material is "tailored to achieve optimal flavor containment (retention) and delivery" (i-f 41). Also, the reason for combining the prior art need not be the same as the Appellants' reason. KSR, 550 U.S. at 420 ("any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed"); In re Kemps, 97 F.3d 1427, 1430 (Fed. Cir. 1996) ("the motivation in the prior art to combine the references does not have to be identical to that of the applicant to establish obviousness"). 8 Appeal2013-007923 Application 12/723, 100 In light of the above and for the reasons set forth by the Examiner, Appellants arguments contending, in effect, that the Examiner has not presented a prima facie case of obviousness for representative claim 1 are without substantive merit. Thus, Appellants have not established harmful error in the Examiner's proposed modification of Kitahata in rejecting representative claim 1, which modification has ample motivating support in the teachings of Luan and Kitahata for reasons set forth above and in the Answer (Ans. 3--4, 23-24). Concerning dependent claim 2 (Group IV), Appellants merely recite additional limitations said to be required by claim 2 and state that the method of claim 2 is not taught or suggested by the applied prior art "for reasons similar to those discussed above. This is not a substantive argument for the separate patentability of claim 2. 1 Accordingly, we affirm Rejection 1 as to claim 2 for reasons discussed above with respect to representative claim 1 and for the additional reasons set forth by the Examiner (Ans. 5, 25). Concerning claims 14, 16, and 17 (Group IV), and claims 35-37 and 55-57 (Group V), Appellants present substantially the same argument for patentability (Br. 8-9). Accordingly, we merge these two claim groupings and select claim 14 as the representative claim on which we decide this appeal as to these consolidated groupings of dependent claims. Representative claim 14 requires that the flavoring composition comprising 1 In particular, skeletal arguments such as presented in the Appeal Brief here are not arguments in support of the separate patentability of dependent claim 2. See In re Lovin, 652 F.3d 1349, 1356-57 (Fed. Cir. 2011) ("[T]he Board reasonably interpreted Rule 41.37 to require more substantive arguments in an appeal brief than a mere recitation of the claim elements and a naked assertion that the corresponding elements were not found in the prior art."). 9 Appeal2013-007923 Application 12/723, 100 porous particles that is applied to a food product as required by claim 1 further includes a plurality of solid flavorant particles, such as salt, sugar or any other solid flavorant particles, admixed with the porous particles of claim 1 as a free-flowing powder mixture. Appellants argue that while Kitahata employs quaternary amine salts and ascorbic acid, as relied upon by the Examiner, the quaternary amine salts are employed as a surfactant by Kitahata in forming the porous particles, not as a separate flavorant particles to form a powder mixture with the porous particles; and, the ascorbic acid is employed by Kitahata as a functional substance added to the pores of the porous silica particles, not as a a plurality of solid flavorant particles used to form a powder mixture with the porous particles (Br. 8, Kitahata i-fi-176, 77, 101). Appellants summarize their argument by stating that "nothing in Kitahata would suggest to a skilled artisan to mix flavor-loaded porous particles with separate solid flavorant particles, such as salt particles, to form a free-flowing powder mixture" (Br. 9). We concur with Appellants that Kitahata employs quaternary amine salts in making the porous particles and discloses adding ascorbic acid to the porous silica particles/powder and does not explicitly disclose forming a mixture of ascorbic acid particles and the porous particles as a flavoring composition. However, Appellants' argument falls short of identifying harmful error in the Examiner's obviousness rejection of representative claim 14. In particular, Kitahata teaches that a variety of foods including snacks, candies, biscuits, and chewing gums can be the foodstuff that includes the menthol-supporting porous silica as an additive (i-f 108). For instance and in forming a chewing gum, Kitahata teaches or suggests that the 10 Appeal2013-007923 Application 12/723, 100 menthol-containing porous silica can be combined with the base chewing gum material and other auxiliary materials (i-f 113). Appellants' argument that "nothing in Kitahata would suggest to a skilled argument to mix flavor-loaded porous particles with separate solid flavorant particles, such as salt particles, to form a free-flowing powder mixture" (Br. 9) fails to articulate why one of ordinary skill in the art would not have been led to mix the flavor loaded porous particles with other typical particulate/powdery ingredients of the foodstuff to be prepared, such as sugars or salts etc. that are part of typical recipes in forming product foodstuffs. As the Supreme Court has explained, "the [obviousness] analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ." KSR, 550 U.S. at 418. That is because "[a] person of ordinary skill is also a person of ordinary creativity, not an automaton." Id. at 4 21. In light of the above, Appellants' arguments regarding representative claim 14 (Group V and Group VI dependent claims) are without persuasive merit. Concerning dependent claims 21, 22, 41, 42, 62, and 63, which are grouped together (Group VII) by Appellants, we select claim 21 as the representative claim. Claim 21 requires that the porous particles of claim 1 include a second fraction of pores having a substantially uniform pore diameter that is different from the pore diameter of the first fraction of the porous particles. Appellants argue that the applied prior art does not disclose bi-modal pore particles as claimed and is non-enabling as to how to make bi-modal pore particles (Br. 9-10). 11 Appeal2013-007923 Application 12/723, 100 This minimal argument is not persuasive of harmful error in the Examiner's obviousness rejection of representative claim 21 substantially for the reasons set forth by the Examiner (Ans. 26-27). Concerning the assertion that the prior art is non-enabling as to a method of method of making bi-modal pore particles, it is worth noting at the outset that representative claim 21 is not limited to employing particles that are strictly characterized by being of bi-modal pore sizes in the method of flavoring food of claim 1 as argued. Rather, claim 21 is open to the use of particles having multiple pore sizes so long as at least one fraction of the pores (two or more pores) have pore diameters that are substantially uniform in size albeit different from the substantially uniform pore diameters of another fraction of the pores (two or more other pores) of the particles.2 Appellants do not articulate with any discernable particularity why one of ordinary skill in the art would not have been enabled to form porous particles having a pore size distribution embraced by claim 21 armed with the combined disclosures of Kitahata and Luan. For instance, Appellants do not address the facially enabling teaching ofKitahata that "[w]hen the alkyl chain length of the surfactant is controlled, the diameter of the template changes, whereby the size of the pores formed can also be controlled" in tendering the non- enabling argument (Br. 9-10; Kitahata i-f 82). It follows that we shall affirm the Examiner's first stated rejection. Rejection 2 2 Concerning the substantially uniform pore diameter fraction(s), Appellants disclosure states "[i]n one embodiment, the pore diameters of at least one fraction of pores vary less than about 10%" (Spec. i-f 17). 12 Appeal2013-007923 Application 12/723, 100 Appellants present two groups of claims (Groups Vlll and IX) in opposing Rejection 2 of certain dependent claims (Br. 10-11). However, Appellants present the same argument for the claims designated as Group IX (claims 29 and 49) as presented for the claims designated as Group VIII (claims 11, 303, and 50); that is, that "Calabro's sequential release relies on the solubility difference between oil-based flavors and water-based flavors" and "nothing in the art cited by the Examiner teaches or suggests that pore size can be used to control flavor profile" by varying pore size without providing separate argument as to any of the claims (id.). We consolidate Groups VIII and IX as presented by Appellants and we select claim 11 as the representative claim on which we focus in deciding this appeal as to the claims subject to Rejection 2. Claim 11 depends from claim 1 and further requires sequential release of the first and a second liquid flavorant. 4 We concur with Appellants' observation that Calabro relies on the initial release from a chewing gum of non-confined water-soluble flavoring agents prior to the subsequent release of non-confined oil-soluble flavoring ingredients and/or the differently timed releases based on differing water solubility or oil solubility of differing flavoring agents that are either water soluble or oil soluble (Calabro, abstract, col. 3, 1. 15 - col. 5, 1. 41). However, Appellants' argument lacks merit in identifying harmful error substantially for reasons set forth by the Examiner and already discussed 3 Claim 30 is also among the claims subjected to the Examiner's first stated rejection, as acknowledged by Appellants (Br. 4). 4 We observe that the recitation "said second liquid flavorant" in claim 11 has no antecedent support. 13 Appeal2013-007923 Application 12/723, 100 above concerning Rejection 1 with respect to the combined teachings of Kitahata and Luan (Ans. 8-12, 28-29). In this regard, Kitahata teaches or suggests the porous particles can be charged with more than one flavorant and Appellants' argument focusing on Calabro fails to identify why one of ordinary skill in the art would not have been led to load the flavorings in a manner to achieve a desired flavor profile based on the combined teachings of Kitahata and Luan as contended by the Examiner (Ans. 8-9; Kitahata i-f 66). Moreover, Appellants have not carried the burden to demonstrate unexpected results commensurate in scope with the claimed subject matter by the reference to the Specification disclosure wherein flavor intensity ratings over time and shelf life tests based on consumption of certain particularly flavored potato crisps by unidentified testers is reported. It follows that we shall sustain the Examiner's second stated rejection. Rejection 3 Concerning the dependent claims subject to Rejection 3, Appellants identify the additional limitations several of the claims require but argue the claims together as a group (Group X) (Br. 11-12). We select claim 4 as the representative claim on which we shall focus in deciding this appeal as to Rejection 3. Claim 4 depends from claim 1 and further requires that the "porous particles are loaded with a second liquid flavorant which is preferentially wetting over the first liquid flavorant on said porous particles" (claim 4). As already discussed above and by the Examiner in the Answer, the provision of a second liquid flavorant is taught by Kitahata (i-f 66). There are 14 Appeal2013-007923 Application 12/723, 100 only two possibilities as to the relative wettability characteristics of the two liquid flavorants with respect to the porous particles; that is, one liquid flavorant is preferentially wetting as compared to the other or the two liquid flavorants have the same wetting characteristics. 5 In other words, the wettability characteristic of a particular liquid flavor as to a given porous surface is intrinsic to the nature of the particular liquid flavorant as indicated by Ku in describing the measured wettability characteristics of a particular porous surface with respect to a particular (given) fluid (Ku i-f 22). Consequently, Appellants additional argument focusing on the disclosures of Ku with respect to providing a pore so as to have a different contact angle (measure of wettability for a given fluid) is unpersuasive of harmful error in the Examiner's obviousness rejection. Although not explicitly expressed by Kitahata, it would have been reasonably expected that that the wettability characteristics of the different flavorants disclosed or suggested by Kitahata as being employable in combination with a porous carrier would be at least somewhat different based on the different intrinsic properties of the different flavorants. As such, we are not persuaded that the additional argument leveled at Rejection 3 by Appellants identifies reversible error therein. Accordingly, we affirm Rejection 3. Rejection 4 Appellants do not separately address the dependent claims subject to Rejection 4. It follows that we shall affirm the latter rejection. 5 See Appellants' dependent claims 4 and 10. 15 Appeal2013-007923 Application 12/723, 100 CONCLUSION The Examiner's decision to reject the appealed claims is affirmed. 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 16 Copy with citationCopy as parenthetical citation