Ex Parte Dubbelman et al

Patent Trial and Appeal Board

Feb 16, 2016

12809697 (P.T.A.B. Feb. 16, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/809,697 06/21/2010 Sander Dubbelman
116761 7590 02/18/2016
Unilever Patent Group (GT)
800 Sylvan A venue
AG West S. Wing
Englewood Cliffs, NJ 07632-3100
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.
133796-008016/US 1053
EXAMINER
YOO, HONG THI
ART UNIT PAPER NUMBER
1793
NOTIFICATION DATE DELIVERY MODE
02/18/2016 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):
njdocket@gtlaw.com
PatentgroupUS@unilever.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SANDER DUBBELMAN, NIKOLAOS MA VROUDIS,
LEANDRO OLIEHOEK, and PETER RA VESTEIN
Appeal2014-004134
Application 12/809,697 1
Technology Center 1700
Before KAREN M. HASTINGS, MICHAEL P. COLAIANNI, and
SHEILA F. McSHANE, Administrative Patent Judges.
McSHANE, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) of the Examiner's final
decision to reject claims 1-3 and 9-13. We have jurisdiction under 35 U.S.C. §
6(b).
We AFFIRM.
1 According to Appellants, the real party in interest is Conopco, Incorporated
(d/b/a Unilever). Appeal Brief filed August 12, 2013, hereafter "App. Br.," 3.
Appeal2014-004134
Application 12/809,697
BACKGROUND
The invention relates to a tomato fractions which can be used as a natural
sweetener. Specification, hereinafter "Spec.," i-f 1. 2 More specifically, the
invention relates to tomato fractions which can be used to sweeten food products
but not adding a savoury taste or off-setting the sweet taste. Id. i-f 4.
Representative claim 1 is reproduced from page 14 of the Appeal Brief
(Claims App'x) as follows, with emphasis added to relevant claim limitations:
1. A tomato fraction substantially comprising less than 3 ppm lycopene
based on the weight of the fraction and which comprises
- a w/w ratio of tomato sugars to citric acid higher than 10: 1, and
- a w/w ratio of tomato sugars to potassium higher than 15: 1
whereby tomato sugars is the combined amount of glucose and
fructose present in said tomato fraction.
In a Final Rejection, the Examiner rejects claims 1-3 and 9-13 under 35
U.S.C. § 112, second paragraph, 3 as indefinite for failing to particularly point out
and distinctly claim the subject matter regarded as the invention. The Examiner
rejects claims 1-3 and 9-11under35 U.S.C. § 103(a) as unpatentable over
Geifman, 4 Zelkha '646, 5 Appellants' admissions of prior art, De Bruyn, 6 and
2 See US Publication 2010/0272877 Al, published October 28, 2010, which the
Examiner refers to as "published specification." Final Act. 6. The Appellants
present no objection to the use of this publication as the application of record.
3 The current application was filed June 21, 2010, prior to the effective date of the
AIA (America Invents Act), and the pre-AIA statute is applicable.
4 EP 1082027 Bl, published June 22, 2005.
5 US Publication 2006/0088646 Al, published April 27, 2006.
6 J.W. De Bruyn, et al., Variation in Taste and Chemical Composition of the
Tomato (Lycopersicon esculentum Mill.), 20 EUPHYTICA 214--227 (1971).
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Application 12/809,697
Davies. 7 The Examiner also rejects claims 1-3 and 9-11 on an alternative basis
under 35 U.S.C. § 103(a) over Geifman, Zelkha '646, Willard, 8 De Bruyn, and
Davies. The Examiner rejects claims 12 and 13 under 35 U.S.C. § 103(a) as
unpatentable over Geifman, Zelkha '646, Appellants' admissions of prior art, De
Bruyn, Davies, and Zelkha '363. 9 The Examiner also rejects claims 12 and 13 on
an alternative basis under 35 U.S.C. § 103(a) over Geifman, Zelkha '646, Willard,
De Bruyn, Davies, and Zelkha '363. Final Action mailed March 7, 2013,
hereinafter "Final Act.," 2-16; see, also, Answer mailed November 8, 2013,
hereinafter "Ans.," 2-17.
DISCUSSION
The Appellants address claims 1-3 and 9-11 as one group for the
obviousness rejections, and claims 12 and 13 as a separate group, with common
arguments presented for each group. App. Br. 6-13. We will address the claims in
a similar manner, using claim 1 as representative for the first group and claim 12 as
representative for the second group.
35 USC § 112. second paragraph
The Appellants do not argue the rejections of claims 1-3 and 9-13 under 35
U.S.C. § 112, second paragraph. Pursuant to 37 C.F.R. § 41.37(c)(l), arguments
not included in the Appeal Brief are deemed waived for purposes of the appeal.
37 C.F.R. § 41.37(c)(l)(iv); see also Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI
2010). The rejections of claims 1-3 and 9-13 under 35 U.S.C. § 112, second
paragraph, are therefore summarily sustained.
7 J. Davies, et al., Changes in the individual sugars of tomato fruit during ripening,
26 J. SCI. FD. AGRIC. 1103-1110 (1975).
8 US Patent 4,698,230, issued October 6, 1987.
9 W095/16363, published June 22, 1995.
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Application 12/809,697
35 USC§ 103(a)
Claims 1-3 and 9-11 under Geifman. Zelkha '646. Admission of Prior Art.
De Bruyn, and Davies
The Examiner finds that Geifman discloses a clear tomato concentrate
(tomato fraction) obtained from a tomato serum, which includes amino acids and
sugars. Ans. 4--5 (citing Geifman i-f 1, claims 1, 3, and 5). The Examiner finds that
Geifman does not explicitly disclose that the sugar types in the clear tomato
concentrate (tomato fraction) are glucose and fructose, that the concentrate
contains citric acid and potassium, and also does not explicitly disclose that the
concentrate is substantially free from lycopene. Id. at 5. The Examiner finds,
however, that Zelkha '636 discloses a similarly-prepared clear tomato concentrate,
and its chemical makeup includes acids, sugars, amino acids, minerals, and some
flavor constituents dissolved in water with no lycopene. Id. at 5, 8 (citing Zelkha
'636 i-f 37). The Examiner further finds that De Bruyn identifies the chemical
components of a tomato as glucose, fructose, citric acid, potassium, as well as
aspartic acid and aminobutyric acid (amino acids). Id. at 5 (citing De Bruyn, 212,
214--217). The Examiner also refers to Geifman' s teaching of a "clear" tomato
serum, as viewed in light of Zelkha '63 6, stating that because it is well known that
lycopene is a red color pigment that Geifman's serum would be devoid of lycopene
and, thus, would be considered to meet a zero amount limitation. Id. at 6. The
Examiner also determines that "[i]t would have been obvious to one of ordinary
skill in the art to be motivated to remove amounts of lycopene contributing the red
colour pigment in the clear tomato serum (tomato fraction) to a zero amount,
which encompass the cited range of less than 3 ppm." Id.
The Examiner further finds that Appellants' Specification admits that prior
art processes produce the claimed weight to weight ("w/w") ratios for the
components of the tomato fractions, i.e. the ratio of tomato sugars to citric acid
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Application 12/809,697
higher than 10: 1 and the ratio of tomato sugars to potassium higher than 15: 1. Id.
at 7 (citing Spec. i-fi-13, 19).
The Appellants argue that the Examiner does not establish prima facie
obviousness because Zelkha '636 does not "modify" the teaching of Geifman, and
"although whole tomatoes may contain certain amounts of glucose, fructose, citric
acid, lycopene and potassium," that "there is no teaching or suggestion in either
Geifman or Zelkha [] of a product comprising glucose, fructose, citric acid,
lycopene and potassium in the amounts or ratios as claimed." App. Br. 8. The
Appellants contend that because glucose, fructose and citric add are highly water-
soluble substances, one of ordinary skill would understand that the amounts found
in the concentrate would be the same found in the tomatoes. Id. at 6. The
Appellants argue that the portions of the Specification that the Examiner cites
relating to the alleged admission that the claimed ratios were known in the prior art
indicate only that the inventors tested existing processes and found them not cost-
effective or robust, and, additionally, that there is no basis therein for the
conclusion that the process of Geifman yields a product having the claimed ratios.
Id. at 8-9.
The Appellants also allege that Geifman uses the process of Zelkha '363,
which teaches only a tomato concentrate with 5 ppm lycopene, while Zelkha '646
discloses only tomato products with a lycopene content from 300-1500 ppm, and
the cited references therefore fail to teach a tomato concentrate with less than 3
ppm lycopene. Id. at 7.
Upon consideration of the evidence on this record in light of the arguments
advanced by the Appellants, we find that the Appellants have not identified
reversible error in the Examiner's determination that claim 1 is unpatentable under
35 U.S.C. 103(a) based on the applied prior art detailed in this rejection.
Accordingly, we sustain the Examiner's rejection of this claim for the reasons set
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Application 12/809,697
forth in the Final Action and the Answer. We add the following primarily for
emphasis.
On the issue of the claimed ratios, the Specification states that
When trying to develop a process to prepare the inventive
tomato fractions, applicants found that existing processes
did produce the desired w/w ratios, but they were not cost-
effective or not robust, i.e. fractionation of different
undesirable tomato compounds was not reproducible
enough for economic production. Therefore it was a
further object of the invention to provide a process to solve
these problems.
Spec. i-f 19 (emphasis added).
In light of the disclosure in the Specification, we concur with the Examiner's
finding that there is an admission that the claimed component "w/w" ratios were
known in the prior art. The Appellants' arguments are unavailing. The issue of
whether the known processes were the most cost effective or robust are irrelevant
to the finding that they were known to produce the claimed ratios. Additionally,
the Appellants argue that the process of Geifman did not yield the claimed ratios.
Geifman is discussed in the Specification, (Spec. i-f 3), as a known process,
however, the Specification does not limit the scope of the known prior art to
Geifman-Appellants' admission addresses the known prior art more broadly and
unequivocally states that there were known processes available that produced the
claimed ratios.
Turning to the issue of the teaching of the tomato fraction of less than 3 ppm
lycopene, the Appellants argue that prior art fails to disclose this value. However,
the Examiner acknowledges that this concentration is not explicitly disclosed and
refers to the prior art teaching of a clear tomato serum. Ans. 5---6. The Examiner
determines "[i]t would have been obvious to one of ordinary skill in the art to be
motivated to remove amounts of lycopene contributing the red colour pigment in
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Application 12/809,697
the clear tomato serum (tomato fraction) to a zero amount, which encompass the
cited range of less than 3ppm." 10 Id. at 6.
A claimed invention is not patentable if the subject matter of the claimed
invention would have been obvious to a person having ordinary skill in the art.
KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The Appellants have not
identified evidence of any error in the Examiner's finding that one of skill in the art
would view that a clear concentrate has lycopene removed to a zero amount and
that encompasses 3 ppm. 11 With that, we find that the Examiner has provided
articulated reasoning with rational underpinnings to support the conclusions
reached concerning the lycopene concentration limitation.
Accordingly, sustain the obviousness rejection of representative claim 1 over
Geifman, Zelkha '646, Admission of Prior Art, De Bruyn, and Davies.
Claims 12 and 13 under Geifman. Zelkha '646. Admission of Prior Art. De
Bruyn, Davies. and Zelkha '363
Claim 12 is to "[a] method of sweetening a food product according to claim
11 whereby the food product to be sweetened is mixed with at least l wt% of said
tomato fraction based on the dry weight of the tomato fraction and the food
product." Claims App'x 14.
The Appellants argue that, even assuming a prima facie obviousness case
has been made out, that a person of ordinary skill "understands that complex
10 The Appellants' argument as to understandability of the Examiner's statement
relating to the "modification" of Geifman by Zelkha '646 is not relevant to the
disposition of the ratio teaching here. See App. Br. 8. However, in context, the
intent of the statement appears to be that Geifman should be viewed in light of the
teachings Zelkha '646.
11 It is well settled that arguments of counsel cannot take the place of factually
supported objective evidence. See, e.g., In re Huang, 100 F.3d 135, 139-40 (Fed.
Cir. 1996); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984).
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Application 12/809,697
tomato fractions and processes to prepare them with specific sweetness and flavor
profiles are related to other factors besides a selection of generic tomato
technologies alone" and the person of skill "would have no reasonable expectation
of success for the claimed composition." App. Br. 12-13. The Appellants have
provided no evidence besides attorney argument to support their allegations, and,
as discussed above, there is no demonstration that the claim limitations are not
disclosed in the combined prior art.
We therefore sustain the obviousness rejection of representative claim 12
under Geifman, Zelkha '646, Admission of Prior Art, De Bruyn, Davies, and
Zelkha '363.
Claims 1-3 and 9-11 under Geifman. Zelkha '636. Willard.
De Bruyn, and Davies
For this obviousness rejection, instead of the Appellants' admissions of the
prior art, the Examiner relies upon the teachings of Willard. The Examiner finds
that Willard discloses a flavor enhancing composition comprising sugars, citric
acid, and potassium in weight ratios meeting the claims. Ans. 11 (citing Willard,
Abstract, 8:26-46, 9:66, 10:23-26, 10:35-37, 15:49-55). The Appellants argue
that Willard relates to a potato flavor enhancing composition and is, therefore, not
in the same field of endeavor as the claimed invention and that Willard is not
pertinent to the problem faced by the inventor, namely, tomato products used as
food sweeteners. App Br. 10-11. The Examiner responds with the finding that
Willard represents the same field of endeavor as the claims, flavor enhancers, and
is pertinent to the problem faced by the inventor of providing a sweet flavor. Ans.
22-23.
There is a two-prong test for determining whether a prior art reference is
analogous: (1) whether the reference is from the same field of endeavor as the
claimed invention, and (2) if the reference is not within the same field of endeavor,
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Application 12/809,697
whether the reference is reasonably pertinent to the particular problem with which
the inventor is involved. In re Klein, 647 F.3d 1343 (Fed. Cir. 2011).
After considering each of the Appellants' arguments presented in this
Appeal, we are persuaded that the Appellants identify reversible error in the
rejection, and we reverse the Examiner's§ 103 rejection on these grounds. Under
these specific facts, we view the endeavor as being more discrete than that of
general flavor enhancement because the claims are directed to tomato fractions that
can serve as flavor enhancers. We note that Willard is directed to flavor enhancers
for use only with potatoes. See Willard, Abstract. Accordingly, we agree with
Appellants that the Examiner has not articulated a sufficient reason for modifying
Geifman with Willard. absent the use of impermissible hindsight. KSR, 550 U.S.
at 421 (citing Graham v. John Deere Co., 383 U.S. 1, 36 (1966) (warning against a
"temptation to read into the prior art the teachings of the invention in issue")).
We therefore cannot sustain the obviousness rejections of claims 1-3 and 9-
14 under Geifman, Zelkha '63 6, Willard, De Bruyn, and Davies.
r-Y1 • 'fl"\ 1 'f"l 1 l"'1 •I' 17 111 (/,I/ TTT•11 1 T"'\. T\ ctazms 1 L ana 1 j unaer uezrman. Leuma oLJ.o, vvzuara. ue liruyn,
Davies. and Zelkha '363
We cannot sustain the obviousness rejection of claim 12 and 13 for the same
reasons as those for claims 1-3 and 9-11, discussed above, for the obviousness
rejection grounds under Geifman, Zelkha '646, Willard, De Bruyn, Davies, and
Zelkha '363.
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Application 12/809,697
SUMMARY
The rejections of claims 1-3 and 9-14 under 35 U.S.C. § 112, second
paragraph are affirmed.
The rejections of claims 1-3 and 9-14 under 35 U.S.C. 103(a) over
Geifman, Zelkha '646, Admission of Prior Art, De Bruyn, and Davies are affirmed.
The rejections of claims 1-3 and 9-14 under 35 U.S.C. § 103(a) over
Geifman, Zelkha '636, Willard, De Bruyn, and Davies are reversed.
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 ).
AFFIRMED
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