Ex Parte Dhandhania

Patent Trial and Appeal Board

Sep 23, 2016

12440838 (P.T.A.B. Sep. 23, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/440,838 03/11/2009
23373 7590 09/27/2016
SUGHRUE MION, PLLC
2100 PENNSYLVANIA A VENUE, N.W.
SUITE 800
WASHINGTON, DC 20037
FIRST NAMED INVENTOR
Arnn Dhandhania
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.
Qll2435 6924
EXAMINER
STIJLII, VERA
ART UNIT PAPER NUMBER
1791
NOTIFICATION DATE DELIVERY MODE
09/27/2016 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
PPROCESSING@SUGHRUE.COM
sughrue@sughrue.com
USPTO@sughrue.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ARUN DHANDHANIA1
Appeal2015-001662
Application 12/440,838
Technology Center 1700
Before CATHERINE Q. TIMM, WESLEY B. DERRICK, and
JEFFREY W. ABRAHAM, Administrative Patent Judges.
ABRAHAM, Administrative Patent Judge.
This is a decision on an appeal under 35 U.S.C. § 134 from the
decision of the Examiner finally rejecting claims 12, 13, 15, and 16. We
have jurisdiction pursuant to 35 U.S.C. § 6(b). We affirm.
BACKGROUND
Appellants' claimed invention relates to a process for preparing
saffron cream liqueur. Abstract.
Claim 12 is the only independent claim on appeal, and is reproduced
below from the Claims Appendix (App. Br. 18):
1 According to the Appeal Brief, the real party in Interest is Ratnesh
Enterprises PVT. LTD. App. Br. 2.
Appeal2015-001662
Application 12/440,838
12. A cost effective process for preparing saffron cream
liqueur, comprising the steps of:
(a) adding 1-5 g of saffron to one liter of ENA/Silent
Spirit of 68% over proof (OP), (i.e., 96% v/v);
(b) intermittent stirring of the mixture of ENA/Silent
Spirit and saffron for 18-36 hours;
( c) extracting an essential oil containing aroma, color and
flavor;
(d) filtering the mixture of saffron and ENA/Silent Spirit
to obtain saffron concentrate;
( e) diluting the saffron concentration from 68% OP to 9-
45% OP by adding demineralized water at room temperature;
(f) adding about 5-15% food grade white milk cream and
properly mixing it;
(g) adding about 5-20% food grade sugar and mixing
until the sugar is dissolved; and
(h) adding about 1-5% food grade flavoring agent and
mixing it thoroughly and filtering to get saffron cream liqueur,
wherein the preparation process is a cold process and
involves no heating of ingredients.
The Examiner maintains, and Appellants appeal, the rejection of
claims 12, 13, 15, and 16 under 35 U.S.C. § 103(a) as obvious over
Dhandhania (EP 0 875 561 A2, published Nov. 4, 1998) in view of Walker
(GB 2 084 185 A, published April 7, 1982) and Herstein (Chemistry and
Technology of Wines and Liquors, Second Ed., 218-219, 226-227 (1948)).
OPINION
We sustain the above rejections based on the Examiner's findings of
fact, conclusions of law, and rebuttals to Appellant's arguments, as
expressed in the Final Action and Answer. The following comments are
added for emphasis.
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Application 12/440,838
Claim 12
The Examiner finds that Dhandhania discloses a saffron liqueur
comprising saffron extract, Extra Neutral Alcohol (ENA), demineralized
water, sugar, and an additional flavor agent. Final Act. 2. The Examiner
further finds that Dhandhania discloses forming the saffron concentrate by
"distilling saffron syrup, and then adding 'decoction to demineralised water
in such quantities that the blended Extra Neutral Alcohol contents from 90
mg to 270 mg of decoction of saffron based on the weight of the blended
Extra Neutral Alcohol per bulk litre of the final saffron flavoured liqueur.'"
Id. (quoting Dhandhania, 1 :23-28).
The Examiner acknowledges that Dhandhania does not include cream
as an ingredient in the liqueur, and teaches distilling saffron syrup at 80°C
instead of using a cold process involving no heating, as required by claim
12. Id. at 2-3. The Examiner, however, finds that Walker discloses an
alcoholic beverage containing cream and a neutral spirit. Id. at 2. The
Examiner determines that it would have been obvious to modify Dhandhania
to include cream in the liqueur composition because creamy alcoholic
beverages were "well known and widely available," and because doing so
would "further widen the assortment of creamy flavored alcoholic
beverages." Id. at 3.
The Examiner finds that Herstein discloses an infusion method as an
alternative to distillation of flavoring ingredients and their addition to
prepare flavored alcoholic beverages. Id. The Examiner further finds that
Herstein discloses that infusion is "the process by which the flavoring
ingredients are extracted from their natural raw materials and brought into
solution in the alcohol-water mixture" and that the extraction can be
performed "hot or cold." Id. (quoting Herstein, 219). The Examiner
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determines that a person of ordinary skill in the art would have been
motivated to modify Dhandhania by employing Herstein's cold infusion
method because the infusion method was well-known and used for the same
purpose as Dhandhania's distillation method, and because "infusion does not
require specific equipment associated with the distillation process and could
be done without additional labor, equipment and energy costs associated
with distillation." Id. at 3--4.
With regard to the mixing, extraction and filtering steps of claim 12,
the Examiner finds that
One of ordinary skill in the art would have been motivated to
employ stirring/mixing during the infusion extraction process in
order to increase extraction rate and to reduce extraction time.
The specific extraction time would depend on the desired
intensity/concentration of the extracted essence. One of ordinary
skill in the art would have been further motivated to employ
filtration in order to separate undesired residue of the saffron
plant material that is not intended to be used in the preparation
of the saffron liqueur as suggested by Herstein (page 218).
Id. at 4. The Examiner further determines that it would have been obvious
to a person of ordinary skill in the art to arrive at the claimed amounts of
ingredients based on Dhandhania's disclosure of ingredients and the desired
"organoleptic profile of the final beverage (mouthfeel, creaminess, caloric
values, color, sweetness, flavor, aroma, etc.)." Id.; Ans. 10.
Appellant argues that Dhandhania's hot distillation process and the
claimed cold infusion/extraction are "entirely different from each other and
will result in completely different qualities of saffron extract having
different chemical compositions." App. Br. 9 (citing the 37 C.F.R. § 1.132
Declaration of Arnn Dhandhania ("Dhandhania Declaration")). Appellant's
own Specification, however, undermines this argument, stating that both the
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Application 12/440,838
hot and cold processes "achieve[] the same result. No difference in result at
all." Spec. 6.
With regard to Walker, Appellant does not dispute that Walker is
directed to alcoholic beverages containing cream, but argues that there is no
disclosure relating to saffron or any of the detailed process parameters
required to obtain the desired saffron extract. App. Br. 10. The Examiner,
however, does not rely on Walker as disclosing these limitations. Final Act.
2; Ans. 11; see also In re Keller, 642 F.2d413, 426(CCPA1981) ("[O]ne
cannot show non-obviousness by attacking references individually where, as
here, the rejections are based on combinations of references.").
Appellant further argues that Herstein merely provides a "generalized
disclosure of the existence of a cold infusion/extraction process" that fails to
disclose or suggest the method steps recited in claim 12. App. Br. 11.
Appellant contends that there are many variables associated with obtaining a
saffron cream liqueur, and that Herstein is "at best a suggestion to vary
every parameter in every combination in an attempt to possibly obtain a
suitable liqueur." Id. at 13-14. According to Appellant, Herstein fails to
provide "the guidance that a person having ordinary skill in the art would
need to arrive at the presently claimed invention." Id. Appellant also
contends that a person of ordinary skill in the art would not have understood
Herstein as being applicable to saffron, because Herstein does not mention
the use of spices as a flavoring agent. Id. at 12. In the Reply Brief,
Appellant again focuses on these deficiencies in Herstein's disclosure.
Reply Br. 4---6.
We are unpersuaded by Appellant's arguments, as they fail to address
sufficiently the Examiner's findings based on the combined teachings of
Dhandhania, Walker, and Herstein. As to Appellant's argument that a
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person of ordinary skill in the art would not consider Herstein to be
applicable to saffron, we note that Herstein broadly refers to manufacture of
liqueurs using "herbs or seed, or other ingredients which flavor" the liqueur.
Herstein 218 (emphasis added). As the Examiner points out, Dhandhania
teaches the creation of a saffron liqueur using the ingredients recited in
claim 12, such as saffron plant extract, ENA, demineralized water, and an
additional flavoring agent. Ans. 10; Dhandhania, 1:23-28, 2:2-8, 2:29-32.
The Examiner provides reasons why a person of ordinary skill in the art
would modify Dhandhania's saffron liqueur by adding cream in view of
Walker, and by using a cold infusion process in place of a hot distillation
process in view ofHerstein. Ans. 8-11; Final Act. 3--4. The Examiner also
provides a reasonable explanation for why it would have been obvious to a
person of ordinary skill in the art to employ stirring/mixing and filtration
during an extraction process, and also to arrive at a particular extraction
time, as required by claim 12. Ans. 7-9; see also KSR Int'! Co. v. Teleflex
Inc., 550 U.S. 398, 421 (2007) ("A person of ordinary skill is also a person
of ordinary creativity, not an automaton.").
We also concur with the Examiner's determination that it would have
been obvious to a person of ordinary skill in the art to arrive at the specific
amounts of ingredients recited in claim 12. As the Examiner points out,
"Dhandhania discloses adding 'decoction to demineralised water in such
quantities that the blended Extra Neutral Alcohol contents from 90 mg to
270 mg of decoction of saffron based on the weight of the blended Extra
Neutral Alcohol per bulk litre of the final saffron flavoured liqueur' (Col. 1
lines 23-28)." Ans. 7; Final Act. 2. Dhandhania further discloses that
certain ingredients can be added in ranges "according to the flavour to be
obtained in final." Dhandhania, 1 :29-31. Herstein likewise teaches that
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"[t]he details of the process depend largely on the material which is being
extracted. The strength of the alcohol used may vary according to the
solubility of the flavor in diluted alcohol." Herstein 219. By finding that
"the amounts of saffron, ENA and demineralized water would depend on the
desired concentration of alcohol, in the final mixture and desired flavor
intensity of saffron present in the mixture" (Ans. 7) or organoleptic profile
of the final beverage (Final Act. 4), the Examiner reasonably treats the
amounts of saffron, ENA, and demineralized water as result-effective
variables. In re Antonie, 559 F.2d 618, 620 (CCPA 1977). Appellant,
however, has not demonstrated that the claimed ranges for the amounts of
ingredients are critical, namely, that they produce a new and unexpected
result. In re Aller, 220 F.2d 454, 456 (CCPA 1955).
Thus, when viewed as a whole, the combined teachings of
Dhandhania, Walker, and Herstein provide more than merely an invitation to
"vary all parameters or try each of numerous possible choices until one
possibly arrived at a successful result, where the prior art gave either no
indication of which parameters were critical or no direction as to which of
many possible choices is likely to be successful" as argued by Appellant.
App. Br. 12-13 (quoting In re Kubin, 561F.3d1351, 1359 (Fed. Cir. 2009)).
We, therefore, are not persuaded that Appellant has demonstrated reversible
error on the part of the Examiner in rejecting claim 122 over Dhandhania,
Walker, and Herstein. See, e.g., In re Jung, 637 F.3d 1356, 1365 (Fed. Cir.
2011).
2 Appellant does not separately argue the patentability of dependent claim
16, and, therefore, claim 16 stands or falls with independent claim 12.
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Claim 13
Claim 13 depends from claim 12, and further requires a saffron
concentration of 9%. The Examiner finds that the subject matter of claim 12
would have been obvious in view of Dhandhania' s disclosure of certain
amounts of saffron blended with ENA. Final Act. 4; Ans. 11 (citing
Dhandhania, 1 :23-28). The Examiner also reiterates that the amount of
saffron added to the liqueur would depend on the desired concentration of
alcohol and flavor intensity in the mixture. Ans. 11. For the same reasons
discussed above, we find that the Examiner presented adequate evidence to
establish a prima facie case of obviousness.
Appellant states that none of the prior art references disclose the
specific concentration of saffron, and that "[t]he 9% concentration of saffron
provides for a unique product having a unique composition and quality of
(saffron in) saffron cream liqueur." App. Br. 16 (citing Dhandhania
Declaration, 9). These types of conclusory statements, however, are
insufficient to overcome the Examiner's prima facie case of obviousness.
Claim 15
Claim 15 depends from claim 12, and further requires that the saffron
cream liqueur is stored at l 5°C in a clean jar made of glass or stainless steel.
The Examiner finds that storing alcoholic beverages in a glass container was
standard practice in the art, and that a person of ordinary skill in the art
would have been motivated to achieve optimal storage temperatures to
maintain the desired organoleptic properties of the alcoholic beverage. Final
Act. 5; Ans. 12.
In response, Appellant argues that these limitations are not disclosed
in the prior art, and offers statements regarding the reasons why saffron
cream liqueur should be stored in glass or stainless steel at l 5°C. App. Br.
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Application 12/440,838
16-17. These reasons, however, do not satisfy Appellant's burden of
presenting arguments or evidence sufficient to overcome the Examiner's
prima facie case of obviousness. See, e.g., In re Dillon, 919 F.2d 688, 692
(Fed. Cir. 1990).
CONCLUSION
For all of the foregoing reasons, we sustain the Examiner's final
rejection of claims 12, 13, 15, and 16.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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