Ex Parte Fiorenza et al

Patent Trial and Appeal Board

Feb 16, 2016

12671047 (P.T.A.B. Feb. 16, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/671,047 11/03/2010
23413 7590 02/18/2016
CANTOR COLBURN LLP
20 Church Street
22nd Floor
Hartford, CT 06103
FIRST NAMED INVENTOR
Francesca Fiorenza
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.
CDS0188US 7519
EXAMINER
DEES, NIKKI H
ART UNIT PAPER NUMBER
1791
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):
usptopatentmail@cantorcolbum.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FRANCESCA FIORENZA, LEANNE FISHER, and
CAROLE ANNE BINGLEY1
Appeal2014-002381
Application 12/671,047
Technology Center 1700
Before CHUNG K. PAK, WESLEY B. DERRICK, and
SHEILA F. McSHANE, Administrative Patent Judges.
DERRICK, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner's maintained final rejection of claims 1, 5-15, and 17-22.2 We
have jurisdiction pursuant to 35 U.S.C. § 6.
We AFFIRM.
1 Appellants identify Intercontinental Great Brands LLC, a subsidiary of
Mondelez International Inc., as the Real Party in Interest. App. Br. 2.
2 The Examiner has withdrawn a rejection of claims 1, 5-15, and 17-22
under 35 U.S.C. § 112, second paragraph. Ans. 8; Advisory Action, mailed
June 14, 2013.
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Application 12/671,047
BACKGROUND
Appellants' invention relates to sweetener compositions and methods
of preparing sweetener compositions. Spec. 1 11. 3--4. Independent claim 1
is directed to a sweetener composition. Independent claim 7 is directed to a
method of making a sweetener composition by blending constituent
components.
Independent claim 1 is illustrative:
1. A sweetener composition comprising a blend of:
a. an extract from the leaves of the Stevia rebaudiana plant
and/or an extract from the leaves of the Rubus suavissimus
plant comprising
about 50 to about 55 weight percent of stevioside,
about 20 to about 25 weight percent of rebaudioside A,
about 5 to about 10 weight percent rebaudioside C, and
about 3 to about 5 weight percent of dulcoside A;
or
about 5 to about 14 weight percent of stevioside,
about 65 to about 72 weight percent of rebaudioside A,
about 3 to about 9 vveight percent rebaudioside C, and
about 0.6 to about 1.2 weight percent of dulcoside A
based on the total weight of the extract from the leaves of the
Stevia rebaudiana plant and/or the extract from the leaves of
the Rubus suavissimus plant;
b. an extract from the fruit of Lo Han Guo; and
c. a salt of monocarboxylic organic acid selected from the
group consisting of calcium lactate, magnesium lactate, sodium
lactate, calcium gluconate, magnesium gluconate, sodium
gluconate, and combinations thereof;
wherein the ratio of a:b is in the range 70:30 to 90: 10
based on the respective sweetness contributions of a and b,
wherein the sweetener composition is free of taste
potentiators and tagatose, and
wherein the taste potentiators include 2-hydroxybenzoic
acid, 3-hydroxybenzoic acid, 4-hydroxybenzoic acid, 2,3-
dihydroxybenzoic acid, 2,4-dihydroxybenzoic acid, 2,5-
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Application 12/671,047
dihydroxybenzoic acid, 2,6-dihydroxybenzoic acid, 3,4-
dihydroxybenzoic acid, 3,5-dihydroxybenzoic acid, 2,3,4-
trihydroxybenzoic acid, 2,4,6-trihydroxybenzoic acid, 3,4,5-
trihydroxybenzoic acid, 4-hydroxyphenylacetic acid, 2-
hydroxyisocaproic acid, 3-hydroxycinnamic acid, 3-
aminobenzoic acid, 4-aminobenzoic acid, 4-methoxysalicylic
acid and combinations thereof.
App. Br. 17-18 (Claims Appendix).
THE REJECTIONS
Claims 7-11 stand rejected under 35 U.S.C. § 112, first paragraph as
failing to comply with the written description requirement.
Claims 1, 5-9, 11-15, and 17-20 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Benedict et al. (US 2007/0026121 Al,
published February 1, 2007) ("Benedict") in view of Lee et al.
(US 2007/0082106 Al, published April 12, 2007) ("Lee") and Prakash et al.
(US 2007/0116800 Al, published May 24, 2007) ("Prakash").
Claims 1, 5-8, 10, 11, 13-15, and 17-22 stand rejected under 35
U.S.C. § 103(a) as unpatentable over Anfinsen et al. (US 2006/0286248 Al,
published December 21, 2006) ("Anfinsen") in view of Lee and Prakash.
DISCUSSION3
Upon consideration of the evidence and opposing contentions of the
Appellants and the Examiner, we are persuaded the Examiner erred
reversibly in rejecting claims 7-11 as failing to comply with the written
description requirement.
3 We refer to the Final Office Action (mailed April 5, 2013), the Advisory
Action (mailed June 14, 2013), the Appeal Brief (filed August 28, 2013),
and the Examiner's Answer (mailed October 25, 2013).
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Application 12/671,047
We are, however, unpersuaded of reversible error in the Examiner's
decision concluding that at the time of the invention, one of ordinary skill in
the art, armed with knowledge of the cited prior art, would have been led to
the claimed subject matter. We add the following.
Rejection under 35 U.S. C. § 112, second paragraph
The critical issue regarding the adequacy of a disclosure to satisfy the
written description requirement is factual: does the originally filed
Specification contains a written description of the invention recited in the
claims on appeal. Ariad Pharmaceuticals, Inc. v. Eli Lilly and Co., 598 F .3d
1336, 1351 (Fed. Cir. 2010) (en bane) ("This inquiry, as we have long held,
is a question of fact.") (citation omitted).
The purpose of the written description requirement is to
prevent an applicant from later asserting that he invented that
which he did not; the applicant for a patent is therefore required
to "recount his invention in such detail that his future claims
can be determined to be encompassed within his original
creation."
Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1330 (Fed. Cir.
2003) (quoting Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1561 (Fed. Cir.
1991) (citation omitted)).
We will not sustain the rejection of claims 7-11under35 U.S.C.
§ 112, first paragraph. As explained by Appellants, the Examiner has not
shown that the Specification, particularly the disclosure of blends in Tables
2--4 at pages 94-95 of the Specification, where it is uncontested that the
Specification discloses "combining" and "mixing" components to obtain
blends (Ans. 2, 9), does not convey with reasonable clarity to those skilled in
the art that, as of the filing date of the instant application, that Applicants
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Application 12/671,047
were in possession of the claimed method in which the components are
mixed, i.e., blended, to form blends (App. Br. 7).
Rejections under 35 U.S.C. § 103(a)
The Examiner relies on either Benedict or Anfinsen in combination
with Lee and Prakash in the obviousness rejections. We find the Examiner's
factual findings and conclusion one of ordinary skill in the art at the time of
the invention would have found the claimed subject matter obvious well
founded for both combinations of prior art.
The Examiner finds Benedict teaches a sweetening composition that
includes a nutritive sweetener and a combination of Stevia and Lo Han Guo.
Ans. 3 (citing Benedict claims 1, 2, 6, and 12). Benedict's claim 12 recites a
sweetening crystal comprising a natural plant extract that is "stevia, luo han
guo, or combinations thereof." The Examiner concedes Benedict is silent as
to the specific composition of the Stevia used. Ans. 3.
The Examiner finds Anfinsen teaches a sweetening composition that
includes a nutritive sweetener and a combination of Stevia and Lo Han Go,
provided as two-way blends at different levels to provide sweetening power
and synergistic flavor. Ans. 5 (citing Anfinsen Abstract, ,-i 39). The
Examiner further finds Anfinsen discloses it is readily appreciated by those
of ordinary skill in the art "that non-nutritive sweeteners can be combined in
various ratios to impart the desired overall sweetness for a given
application." Ans. 7 (citing Anfinsen ,-i,-i 41--42).
The Examiner finds Prakash (,-i 97) teaches addition of magnesium
gluconate as a sweet taste improving additive. Ans. 4, 7.
The Examiner finds Lee teaches Stevia extracts including those from
Stevia plants with more Rebaudioside A than is typical (Lee ,-i 25) and that
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the composition is the same as those required by Appellants' claim 1. Ans.
4, 6. We note the particular composition of several Stevia extracts set forth
in Lee's paragraph 25 correspond to those set forth in independent claim 1.
Further, we find Lee also teaches that "[p ]referred two-way blends
include ... Stevia extract/Lo Han Guo extract" (Lee ,-i 31) and that"[ o ]ne of
ordinary skill in this art will readily appreciate that non-nutritive sweeteners
may be combined in various ratios ... for a given application" (Lee ,-i 32),
and that the "[a ]ppropriate ratios can be readily determined by one of
ordinary skill in the art" (id.).
Benedict in view of Lee and Prakash
In rejecting claims 1, 5-9, 11-15, and 17-20 over Benedict in view of
Lee and Prakash, the Examiner concludes it would have been obvious to one
of ordinary skill in the art at the time of the invention to use the Stevia
extracts of Lee-disclosed in ,-i 25-in Benedict's composition including
Stevia and Lo Han Guo because doing so "would have required no more
than looking to the art to find a stevia composition" and "would have been a
routine selection to one of ordinary skill." Ans. 3--4. The Examiner further
finds that use of combinations of high-intensity sweeteners, which include
Stevia and Lo Han Guo, is widely known in the art, that it was within the
ambit of one of ordinary skill to adjust the amounts of these sweeteners in
order to obtain a desired sweetening effect-including maintaining favorable
organoleptic properties of sucrose-and that one of ordinary skill in the art
at the time of the invention would have had a reasonable expectation of
success. Ans. 4, 9-10. The Examiner similarly concludes it would have
been obvious to one of ordinary skill in the art at the time of the invention to
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have included magnesium gluconate as a sweet taste improving additive to
further improve the sweet taste of the combination. Ans. 5.
The Examiner determines that, while some amount of experimentation
would be required, the necessary experimentation would be considered
routine. Ans. 9-10. Accordingly, the Examiner concludes one of ordinary
skill in the art, armed with the knowledge of Benedict, Lee, and Prakash,
would have been led to the claimed subject matter.
Appellants, minimizing the import of disclosure cited by the
Examiner, argue "Benedict does not provide any reason that would have
prompted a person of ordinary skill in the art to combine the two extracts."
App. Br. 10 (citing Benedict iJ 22, claim 12).
Appellants' argument is without merit where the invention in
Benedict is identified as a sweetening crystal comprising a natural plant
extract that is "stevia, luo han guo, or combinations thereof' (claim 12) and
the Examiner relies on that disclosure for its teaching of the combination of
Stevia and Lo Han Guo (Ans. 3). Moreover, Appellants' argument does not
take into account the teachings of Lee discussed supra.
Appellants proffer arguments that Benedict fails to provide the
necessary guidance to arrive at the specific ratios of Stevia and Lo Han Guo
(App. Br. 8-9) or for one of ordinary skill in the art to even appreciate the
ratio of Stevia and Lo Han Guo extracts can be altered to provide sweeteners
with superior properties (id. at 10).
We find these arguments unpersuasive of reversible error because
they focus on what they contend is not taught by Benedict where, for the
particular ratios of Stevia and Lo Han Guo, the Examiner relies on what is
widely known and within the ambit of one of ordinary skill in the art. See,
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e.g., DyStar Textilfarben GmbH & Co. Deutsch/and KG v. CH. Patrick Co.,
464 F.3d 1356, 1361 (Fed. Cir. 2006) (The rationale for combining or
modifying the prior art "may be found in any number of sources, including
common knowledge, the prior art as a whole, or the nature of the problem
itself."); In re Aller, 220 F.2d 454, 456 (CCPA 1955) ("where the general
conditions of a claim are disclosed in the prior art, it is not inventive to
discover the optimum or workable ranges by routine experimentation."). In
particular, we find Appellants fail to address squarely that it is widely known
in the art to adjust amounts of these sweeteners to obtained desired
sweetening effects and that arriving at the appropriate amounts of these
sweeteners is within the ambit of the routineer. Ans. 4, 9-10. Moreover,
Appellants again fail to take into account the teachings of Lee discussed
supra.
As to Appellants' skeletal argument that Lee fails to overcome the
deficiencies of Benedict (App. Br. 10), we find them without merit and
unsupported by the record before us, particularly where, as noted above, Lee
teaches two-way blends of Stevia and Lo Han Guo extracts (Lee ,-i 31 ),
including Stevia extracts corresponding in composition to those recited in
the claims (Lee ,-i 25), and highlights that it is well known in the art to
combine these sweeteners and arrive at appropriate ratios for a given
application (Lee ,-i 32).
Appellants further contend they have surprisingly found that the
combination of Stevia and Lo Han Guo extracts in the specific ratios
claimed provides a synergistic effect and a sweetness profile closer to that of
sucrose than either sweetener alone. App. Br. 11 (citing Spec. 4, 11. 18-21;
5, 11. 4-7; 96, 11. 1-7, 9-12).
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Having carefully considered the record, we find Appellants' proffered
supporting evidence inadequate to rebut the Examiner's prima facie case of
unpatentability for obviousness. It is well established that Appellants bear
the burden of showing that the claimed invention imparts unexpected results.
In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); In re Klosak, 455 F.2d
1077, 1080 (CCPA 1972). To meet the burden, Appellants must establish
that the results actually would have been unexpected, and that the
unexpected results are reasonably commensurate with the scope of
protection sought by the claims on appeal. Klosak, 455 F.2d at 1080; In re
Grasselli, 713 F.2d 731,743 (Fed. Cir. 1983); In re Clemens, 622 F.2d 1029,
1035 (CCPA 1980). In this instance, Appellants do not contend that
combining Stevia extracts and Lo Han Guo extracts for use as sweeteners
was unknown (generally App. Br.) and it is in this context we find
Appellants fail to meet the burden. In particular, although the Specification
describes that "[i]t has surprisingly been found that the combination of these
two sweeteners [Stevia and Lo Han Guo] offers a sweetness profile which is
closer to that of sucrose than either sweetener when taken alone" (Spec. 4, 11.
18-20), we find Appellants' showing (the statements at Spec. 4, 11. 18-21; 5,
11. 4-7; 96, 11. 1-7, 9-12 as well as Tables 2-4 at Spec. 94-95), insufficient
to establish unexpected results. As indicated supra, the Examiner has found
that Anfinsen teaches a combination of Stevia and Lo Han Go provided as
two-way blends at different levels to provide a desired sweetening power
and a synergistic flavor. In other words, Appellants do not show that the
improved synergistic sweetening power resulting from a combination of
Stevia and Lo Han Go is unexpected or surprising. Moreover, Appellants do
not show that Tables 2--4 showing blends of 160 to 162 ppm of Stevia and
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60 to 100 ppm of PureLo 2007 (Stevia/PureLo 2007 ratio of 80/20)
demonstrating a desired sweetness profile is reasonably commensurate with
the scope of protection sought by the claims on appeal directed to employing
the ratio of stevioside extract to Lo Han Guo extract in the range of 70:30 to
90: 10 based on their respective sweetness contributions, without specifying
the actual amounts of stevioside extract to Lo Han Guo extract used.
For these reasons, we sustain the Examiner's obviousness rejection
over Benedict in view of Lee and Prakash.
Anfznsen in view of Lee and Prakash
In rejecting claims 1, 5-8, 10, 11, 13-15, and 17-22 over Anfinsen in
view Lee and Prakash, the Examiner relies on Anfinsen for its teaching of a
sweetener including two-way blends of Stevia and Lo Han Guo for addition
to foodstuffs and that it is known by those of ordinary skill in the art to
combine non-nutritive sweeteners in various ratios to impart the desired
sweetening effect. Ans. 5, 7 (citing Anfinsen Abstract, 39, 41--42). As in
the rejection over Benedict in view of Lee and Prakash, the Examiner
concludes is would have been obvious to one of ordinary skill in the art at
the time of the invention to use the Stevia extracts having the composition
taught in Lee's ii 25 as doing so would be no more than routine selection of a
known Stevia composition. Ans. 6.
The Examiner determines it would have been within the ambit of one
of ordinary skill in the art to combine non-nutritive sweeteners in various
ratios to impart desired sweetening effect without undue experimentation.
Ans. 7 (citing Anfinsen ii 41--42). The Examiner further finds that use of
combinations of high-intensity sweeteners, which include Stevia and Lo Han
Guo, is widely known in the art, that it was within the ambit of one of
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ordinary skill to adjust the amounts of these sweeteners in order to obtain a
desired sweetening effect-including maintaining favorable organoleptic
properties of sucrose-and that one of ordinary skill in the art at the time of
the invention would have had a reasonable expectation of success. Ans. 7,
13-15. The Examiner concludes it would have been obvious to one of
ordinary skill in the art at the time of the invention to have included
magnesium gluconate as a sweet taste improving additive to further improve
the sweet taste of the combination. Ans. 7-8.
The Examiner determines that, while some amount of experimentation
would be required, the necessary experimentation would be considered
routine. Ans. 14-15. Accordingly, the Examiner concludes one of ordinary
skill in the art, armed with the knowledge of Anfinsen, Lee, and Prakash,
would have been led to the claimed subject matter.
Appellants argue there is insufficient reason to combine the Stevia
extract and Lo Han Guo extract. App. Br. 12-14. Appellants' arguments
emphasize the number of possible combinations where Anfinsen lists Lo
Han Guo in a nineteen member list of suitable non-nutritive sweeteners,
which also includes Stevia. App. Br. 12-13 (citing Anfinsen ,-i 39).
Appellants contend that "a person of ordinary skill in the art, having read
Anfinsen, would not be prompted to specifically select and combine Stevia
extract and Lo Han Go extract in ratios, as recited in claims 1 and 7." App.
Br. 13. Appellants argue that Lee fails to overcome the deficiencies of
Anfinsen. App. Br. 14.
Appellants' arguments are not persuasive of reversible error because
we do not find well-founded the position that a person of ordinary skill in
the art would not have selected and combined Stevia extract and Lo Han Go
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extracts where, as we explained above, Lee teaches two-way blends of
Stevia and Lo Han Guo extracts (Lee ii 31 ), including Stevia extracts
corresponding in composition to those recited in the claims (Lee ii 25), and
highlights that it is well known in the art to combine these sweeteners and
arrive at appropriate ratios for a given application (Lee ii 32).
Appellants proffer arguments that Anfinsen fails to provide the
necessary guidance to arrive at the specific ratios of Stevia and Lo Han Guo
(App. Br. 13-14), but, similar to the corresponding argument as to Benedict
above, we find these arguments unpersuasive of reversible error.
Furthermore, Appellants' arguments do not address squarely the cited
teaching in Anfinsen itself supporting that it is within the ambit of one of
ordinary skill to determine the optimum ratio of Stevia and Lo Han Guo.
Ans. 7 (citing Anfinsen ii 41--42).
Appellants reiterate the contention of surprising results and that these
rebut the Examiner's prima facie case (App. Br. 14), but, as explained
above, we find Appellants' proffered support inadequate to rebut the
Examiner's prima facie case of unpatentability for obviousness.
For these reasons, we sustain the Examiner's obviousness rejection
over Anfinsen in view of Lee and Prakash.
CONCLUSION
The Examiner's rejection of claims 7-11 under 35 U.S.C. § 112, first
paragraph is REVERSED.
The Examiner's rejection of claims 1, 5-15, and 17-22 under 35
U.S.C. § 103(a) is AFFIRMED.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C.F .R. § 1.13 6( a )(1 ).
AFFIRMED
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