Ex Parte GrabDownload PDFPatent Trial and Appeal BoardJun 27, 201612375298 (P.T.A.B. Jun. 27, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/375,298 01127/2009 27389 7590 06/27/2016 PARFOMAK, ANDREW N, NORRIS MCLAUGHLIN & MARCUS PA 875 THIRD A VE, 8TH FLOOR NEW YORK, NY 10022 FIRST NAMED INVENTOR Willi Grab 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. 102790-303 6381 EXAMINER DEES, NIKKI H ART UNIT PAPER NUMBER 1791 MAILDATE DELIVERY MODE 06/27/2016 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 WILLI GRAB Appeal2013-008335 Application 12/375,298 Technology Center 1700 Before BEYERL YA. FRANKLIN, MARK NAGUMO, and MICHAEL P. COLAIANNI, Administrative Patent Judges. FRANKLIN, Administrative Patent Judge. DECISION ON APPEAL Appellant seeks our review under 35 U.S.C. § 134 of the Examiner's decision rejecting claims 1, 3-10, 12, and 13. We have jurisdiction over the appeal under 35 U.S.C. § 6(b ). Appeal2013-008335 Application 12/375,298 STATEMENT OF THE CASE Claim 1 is illustrative of Appellant's subject matter on appeal and is set forth in full in the attached Appendix (with text in bold for emphasis). The limitations at issue in this claim are reproduced below (i.e., claim 1 is reproduced, in part, below): 1. A method of providing a flavored food product, wherein at least one flavor precursor of formula I R1 oTen'oA n.--1 /cm {'-o Ra wherein n and m are selected from 0 and 1, and if n is 1 then m is 0, and if n is 0 then m is 1 ; wherein FJ is selected from the group consisting of a straight-chain C7 to Cl 7 alkyl, a straight-chain C7 to Cl 7 alkenyl, a branched C7 to C 17 alkyl, a branched C7 to C 1 7 alkenyl, a straight-chain C7 to Cl 7 monoalkenyl, a branched C7 to Cl 7 monoalkenyl, a straight-chain C7 to C 17 alkadienyl, a branched C7 to C 17 alkadienyl, a straight-chain C7 to Cl 7 alkatrienyl, a branched C7 to Cl 7 alkatrienyl. a straight-chain C9 to Cl 7 alkatetraenyl, a branched C9 to Cl 7 alkatetraenyl, and a straight-chain Cl l to Cl 7 alkapentaenyl, a branched Cl l to Cl 7 alkapentaenyl; * * * is admixed to a food product in a sufficient concentration to release a flavor of noticeable aroma upon consumption and/or heating of the food product. 2 Appeal2013-008335 Application 12/375,298 The Examiner relies on the following prior art references as evidence of unpatentability: Lamparsky us 3,883,558 May 13, 1975 THE REJECTION Claims 1, 3-10, 12, and 13 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Lamparsky. ANALYSIS We select claim 1 as representative of all the claims on appeal, based upon Appellant's presented arguments. 37 C.F.R. § 41.37(c) (1) (iv) (2014). We adopt the Examiner's findings in the Answer and AFFIRM, and add the follmving. The Examiner's statement of the rejection is set forth on pages 2--4 of the Final Office Action and on pages 3--4 of the Answer. Therein, the Examiner refers to Structure (I) ofLamparsky (col. 1, 11. 15-29, col. 2, 11. 13-19), which corresponds to formula I of claim 1 with m = 0, n = 1. The Examiner finds that that Appellant's claimed C7---Cl 7 alkyls and alkenyls are homo logs of the compound taught in Lamparsky. The Examiner states that the compounds differ only by the successive addition of---CH2-. Id. The Examiner takes the position that Lamparsky's disclosed range of C2---C6 alkyls and alkenyls "touches the claimed range of C7-C 1 7 alkyls and alkenyls," and concludes that it would have been obvious to have used a homolog of that disclosed in Lamparsky to arrive at Appellant's claimed 3 Appeal2013-008335 Application 12/375,298 subject matter because there is a presumed expectation that a homolog will possess similar properties, and the Examiner refers to MPEP § 2144.09(II) in this regard. Id. Appellant argues that the skilled artisan would not have had a reasonable expectation of success in using the claimed compounds as a "flavor precursor" as claimed. Appeal Br. 4. Appellant submits that Lamparsky only teaches that certain dioxolane derivatives can be used as flavorings in aroma compositions, and that one would not have expected that modifying the R1 substituent of Lamparsky to a C7 to Cl 7 homo log would have minimized premature release of flavors. Appeal Br. 5. Appellant states that their claimed subject matter minimizes premature release of flavors, which was completely surprising and unexpected in view of Lamparsky because Lamparsky fails to address this issue. Id. We are not convinced by these arguments for the reasons provided by the Examiner in the record, and for the following reasons. On pages 5---6 of the Answer, the Examiner correctly states that Appellant unsuccessfully addressed the positon that because Lamparsky's compound and the instantly claimed compound are structurally similar compounds, it is reasonable to expect that they have similar properties. "An obviousness rejection based on similarity in chemical structure and function entails the motivation of one skilled in the mi to make a claimed compound, in the expectation that compounds similar in structure will have similar properties." in re Payne, 606 F.2d 303, 313 (CCPA 1979} Also, compounds which are position isomers (compounds having the same radicals in physically different positions on the same nucleus) or homo logs (compounds differing regularly by the successive addition of the same 4 Appeal2013-008335 Application 12/375,298 chemical group, e.g., by -CH2- groups) are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties. Jn re Wilder, 563 F.2d 457, 460 (CCPA 1977). \Vith regard to the argument that Lamparsky discusses flavorings but not "flavor precursors" as claimed (Appeal Br. 5), it is the Examiner's position that Lamparsky teaches to add the disclosed compounds to foodstuffs to provide flavors to the foodstuffs upon consumption. Ans. 6. Lamparsky, col. 34--40. As such, it is the Examiner's position that it would have been obvious to have used a homo log of the compound of Lamparsky, to arrive at Appellant's claimed subject matter, because there is a presumed expectation that a homolog will possess similar properties (given the close structural similarity). The Examiner states it is reasonable to expect that the dioxolane derivatives of Lamparsky "release" flavors upon consumption in the same manner. Id. We agree. We add that, in Jn re Dillon, 919 F.2d 688, 693 (Fed. Cir. 1990), the Court held that "it is not necessary in order to establish a prima facie case of obviousness ... that there be a suggestion in or expectation from the prior art that the claimed [invention] will have the same or a similar utility as one newly discovered by applicant," and concluded that a prima facie case was established because "[t]he art provided the motivation to make the claimed compositions in the expectation that they would have similar properties." Also, the Examiner's point is well taken that the modified compound of Lamparsky (even though not called a precursor compound) would have been expected to release flavors upon consumption. FVilder, 563 F.2d at 460. 5 Appeal2013-008335 Application 12/375,298 With regard to Appellant's argument that the effect of minimizing premature release of flavors is unexpected (Appeal Br. 5---6), we agree with the Examiner's response made on page 6 of the Answer, wherein the Examiner correctly points out that Appellant does not direct us to convincing evidence in the record that supports this stated position. 1 Absent such supporting evidence, the Appellant's assertion amounts to a mere conclusory statement that is entitled to little, if any, probative weight. See, e.g., In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997). In view of the above, we affirm the Examiner's decision. DECISION The rejection is affirmed. 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). See 37 C.F.R. § 1.136(a). ORDER AFFIRMED 1 On page 6 of the Appeal Brief, Appellant disputes the Examiner's statement that the effect of minimizing premature release of flavors would be expected. However, it is Appellant's burden to rebut the primafacie case by providing comparative data in support of unexpectedly superior results. On the present record, we have no comparison between the behavior of compounds described by Lamparsky and those within the scope of the claims. 6 Appeal2013-008335 Application 12/375,298 APPENDIX 1. A method of providing a flavored food product, wherein at least one flavor precursor of formula I R1 oTCn~o A,_J cm /'o/ Ra wherein n and m are selected from 0 and 1, and if n is 1 then m is 0, and if n is 0 then m is 1 ; wherein RI is selected from the group consisting of a straight-chain C7 to Cl 7 alkyl, a straight-chain C7 to Cl 7 alkenyl, a branched C7 to Cl 7 alkyl, a branched C7 to Cl 7 alkenyl, a straight-chain C7 to Cl 7 monoalkenyl, a branched C7 to Cl 7 monoalkenyl, a straight-chain C7 to Cl 7 alkadienyl, a branched C7 to Cl 7 alkadienyl, a straight-chain C7 to Cl 7 alkatrienyl, a branched C7 to Cl 7 alkatrienyl. a straight-chain C9 to Cl 7 alkatetraenyl, a branched C9 to Cl 7 alkatetraenyl, and a straight-chain Cl l to Cl 7 alkapentaenyl, a branched Cl l to Cl 7 alkapentaenyl; wherein R2 is selected from the group consisting of H, a C 1 to C 15 alkyl, a C 1 to Cl5 oxoalkyl, a Cl to Cl5 hydroxyalkyl, C2 to Cl5 alkenyl, a C2 to Cl5 oxoalkenyl, and a C2 to C 15 hydroxyalkenyl, and R3 is selected from the group consisting of C 1 to C 15 straight-chain alkyl comprising one or two substituents independently selected from 0, OH, N, NH, phenyl, furanyl, C9 aryl, C 10 aryl, SH, and SR4, wherein R4 is a straight-chain or branched C 1 to C5 alkyl residue optionally selected from methyl, ethyl, propyl, isopropyl, butyl, isobutyl, pentyl and isopentyl; and the total number of carbon atoms in R3 and R4 is up to 15, Cl to Cl5 7 Appeal2013-008335 Application 12/375,298 straight-chain alkyl, comprising on or two atoms independently selected from O,S or N within the alkyl chain, C3 to C 15 singly, doubly or multiply branched alkyl optionally substituted with one or two residues independently selected from 0, OH, N, NH. SH, and SR4, wherein R4 is a straight-chain or branched C 1 to C 15 alkyl residue optionally selected from methyl, ethyl, propyl, isopropyl, butyl, isobutyl, pentyl and isopentyl, and the total number of carbon atoms in R3 and R4 is up to 15, C3 to C 15 singly, doubly or multiply branched alkyl comprising one or two atoms independently selected from 0, Sor N within the alkyl chain, C2 to C15 straight-chain alkenyl, C3 to C15 straight-chain alkadienyl, C2 to C15 straight-chain alkenyl optionally substituted with one or more residues independently selected from 0, OH, N, NH, phenyl, £uranyl, C9 aryl, ClO aryl, SH, SR4 wherein R4 is a straight-chain or branched Cl to C5 alkenyl residue optionally selected from ethenyl, propenyl, butenyl, and pentenyl, and the total number of carbon atoms in R3 and R4 is up to 15, C2 to C 15 straight-chain alkenyl, optionally comprising one or more atoms independently selected from 0, Sand N within the alkyl chain, C3 to C 15 branched alkenyl, optionally substituted with one or two alkyl groups, C2 to C 15 branched alkenyl comprising one or two alkyl groups optionally substituted with one or two residues independently selected from 0, OH, N, NH, phenyl, furanyl, C9 aryl, C 10 aryl, SH, SR4 wherein R4 is a straight-chain or branched Cl to C5 alkenyl residue optionally selected from ethenyl, propenyl, butenyl, and pentenyl, and the total number of carbon atoms in R3 and R4 is up to 15, C3 to C 15 branched alkenyl comprising one or two alkyl groups and one or more atoms independently selected from 0, Sand N within the alkyl chain, C5 to C 15 singly, doubly, or multiply branched alkadienyl, optionally substituted with one or two alkyl groups, C4 to C 15 singly, doubly, or multiply branched alkadienyl comprising one or more atoms independently selected from 0, S and N within the alkenyl chain; a 5- or 6-membered carbon ring residue comprising up to two heteroatoms independently selected from 0, S, and N, optionally substituted with one or more residues independently selected from 0, OH, alkoxy, alkyl, alkenyl; 8 Appeal2013-008335 Application 12/375,298 a C 1 to C6 alkyl or alkenyl substituted with a 5- or 6-membered carbon ring residue comprising up to two heteroatoms independently selected from 0, S, and N, optionally substituted with one or more residues independently selected from 0, OH, alkoxy, alkyl, alkenyl; or wherein R2-C-R3 form a ring residue selected from oxacyclopentan optionally substituted with a residue selected from methyl, dimethyl, ethyl, hydroxy, and methoxy, oxacyclopentene optionally substituted with a residue selected from methyl, dimethyl, ethyl, hydroxy, and methoxy, hydroxycyclopentene, hydroxyalkylcyclopentene, hydroxymethylcyclopentene, hydroxydimethylcyclopentene, ethylhydroxycyclopentene, and ethylhydroxymethylcyclopentene, thiacyclopentane, alkylthiacyclopentane, and alkyl-3-thia-cyclopentane, oxa-cyclopentene, 2-oxacyclopentene, 3- oxacyclopentene, alkyloxacylcopentene, alkyl-3-oxacyclopentene, methy J- 3-oxa-cyclopentene, alkyl-3, oxacyclopentene, dimethyl-3-oxacyclopentene, ethyl-3- oxacyclopentene, ethlymethyl-3-oxacyclopentene, hydroxyalkyl-3- oxacyclopentene, hydroxymethyl-3-oxacyclopentene, hydroxydimethyl-3- oxacyclopentene, hydroxyethyl-3-oxacyclopentene, ethylhydroxymethyl-3- oxacyclopentene, oxacyclopentane, 3-oxacyclopentan, alkyl-3- oxacyclopentan, methyl-3-oxa-cyclopentan, dimethyl-3-oxacyclopentan, ethyl-3- oxacyclopentan, ethylmethyl alkyl-3-oxacyclopentan, alkylcyclopentan, alkenylcyclopenten, alkylalkenylcyclopenten, methylcylopenten, dimethylcyclopenten, ethylmethylcyclopenten, propylmethylcyclopenten, butylmethylcyclopenten, butenylmethylcyclopenten, pentylmethylcyclopenten, pentenylmethylcyclopenten, alkylcarboxy-alkenyl-cyclopentan, alkylcarboxy-alkyl-cyclopentan, methylcarboxy-alkenyl-cyclopentan, methylcarboxy-alkylcyclopentan, alkylcarboxy-pentenyl-cyclopentan, alkylcarboxy-pentyl-cyclopentan, methylcarboxy-alkenyl-cyclopentan, and methylcarboxy-alkyl-cyclopentan, and wherein the alkyl is selected from methyl, ethyl, propyl, butyl, pentyl, pentenyl, hexyl, heptyl, and octyl, oxoalkylcyclohexcn, oxo-methylcyclohexen, oxo-trimethylcyclohexen, oxo- ethylcyclohexen, oxo-ethymethylcyclohexen, oxo-propylcyclohexen, oxo- propylmethylcyclohexen, oxo-isopropylcyclohexen, oxo- isopropylmethylcyclohexen, oxo-thiopropylcyclohexen, oxo- thiopropylmethylcyclohexen, alkylcyclohexen, methylcyclohexen, trimethylcyclohexen, ethylcyclohexen, ethylmethylcyclohexen, propylcyclohexen, propylmethylcyclohexen, isopropylcyclohexen, isopropylmethylcyclohexen, thiopropylcyclohexen, 9 Appeal2013-008335 Application 12/375,298 thiopropyhnethylcyclohexen, alkylcyclohexan, methylcyclohexan, trimethylcyclohexan, ethylcyclohexan, ethylmethylcyclohexan, propylcyclohexan, propylmethylcyclohexan, isopropylcyclohexan, isopropyhmethylcyclohexan, thiopropylcyclohexan, thiopropylmethylcyclohexan; and wherein R2 and R3 together have a total number of carbon atoms of up to 15, and R2-C-R3 has a total number of carbon atoms of up to 16, is admixed to a food product in a sufficient concentration to release a flavor of noticeable aroma upon consumption and/or heating of the food product. 10 Copy with citationCopy as parenthetical citation