Ex Parte Graumlich et al

Board of Patent Appeals and Interferences

Nov 17, 2009

10307656 (B.P.A.I. Nov. 17, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte THOMAS RAY GRAUMLICH, ROBERT JOSEPH SCHAAR,
JOSEPH JOHN BUECHEL, GALEN EDWARD DOWNTON,
and JOHN WILLIAM WEGMAN
____________

Appeal 2009-009067
Application 10/307,656
Technology Center 1700
____________

Decided: November 17, 2009
____________

Before JEFFREY T. SMITH, BEVERLY A. FRANKLIN, and
KAREN M. HASTINGS, Administrative Patent Judges.

FRANKLIN, Administrative Patent Judge.

DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134 from the Examiner's
rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b). A
hearing was held on November 3, 2009.

STATEMENT OF THE CASE
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Claims 1 is representative of the subject matter on appeal and is set
forth below:

1. A beverage composition comprising:

(a) from about 20 ppm to about 90 ppm of a preservative selected
from the group consisting of sorbic acid, benzoic acid, alkali metal
salts thereof and mixtures thereof;

(b) from about 300 ppm to about 3000 ppm of a polyphosphate having
the structure:

wherein n averages from about 3 to about 100 and each M is
independently selected from the group consisting of sodium and
potassium; and

(c) water;

wherein the beverage composition has a pH of from about 2 to about 5
and a total hardness of from 0 to about 300.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Calderas 5,431,940 Jul. 11, 1995
Cirigliano 6,036,986 Mar. 14, 2000
Smith 6,126,980 Oct. 2, 2000

THE REJECTION(S)
1. Claims 1-20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Calderas.
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2. Claims 1-20 stand rejected under 35 U.S.C. § 102(b) as anticipated by
Cirigliano.
3. Claims 1-20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Smith.

ISSUES
1. Have Appellants shown reversible error in the Examiner’s
determination that the claimed range of “from about 20 ppm to about 90
ppm” is made obvious by Calderas’ disclosed range of from about 400 to
about 1000 ppm? We answer this in the affirmative.

2. Have Appellants shown reversible error in the Examiner’s
determination that Cirigliano’s requirement of cinnamic acid is not excluded
by Appellants’ claims? We answer this in the negative.

3. Have Appellants shown reversible error in the Examiner’s
determination that the claimed range of “from about 20 ppm to about 90
ppm” is obvious in view of Smith’s disclosed range of from about 100 to
about 1000 ppm? We answer this in the negative.

FINDINGS OF FACT
Appellants solely argue that amount of preservative taught by
Calderas does not make obvious their claimed amount of preservative. Br.
5. Calderas teaches an amount of preservative of from about 400 to about
1000 ppm. Calderas, Abstract.
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Appellants solely argue that because Cirigliano requires cinnamic
acid, Cirigliano does not anticipate Appellants’ claims. Br. 6-7.
Appellants solely argue that amount of preservative taught by Smith
does not make obvious their claimed amount of preservative. Br. 7-8.
Smith teaches an amount of preservative of from about 100 to about 1000
ppm. Smith, Abstract.

PRINCIPLES OF LAW
In the case where the claimed ranges “overlap or lie inside ranges
disclosed by the prior art” a prima facie case of obviousness exists. In re
Wertheim, 541 F.2d 257, 267 (CCPA 1976); In re Woodruff, 919 F.2d 1575,
1578 (Fed. Cir. 1990) (The prior art taught carbon monoxide concentrations
of “about 1-5%” while the claim was limited to “more than 5%.” The court
held that “about 1-5%” allowed for concentrations slightly above 5% thus
the ranges overlapped.); In re Geisler, 116 F.3d 1465, 1469-71 (Fed. Cir.
1997) (Claim reciting thickness of a protective layer as falling within a range
of “50 to 100 Angstroms” considered prima facie obvious in view of prior
art reference teaching that “for suitable protection, the thickness of the
protective layer should be not less than about 10 nm [i.e., 100 Angstroms].”
The court stated that “by stating that suitable protection’ is provided if the
protective layer is about’ 100 Angstroms thick, [the prior art reference]
directly teaches the use of a thickness within [applicant’s] claimed range.”).
Similarly, a prima facie case of obviousness exists where the claimed ranges
and prior art ranges do not overlap but are close enough that one skilled in
the art would have expected them to have the same properties. Titanium
Metals Corp. of America v. Banner, 778 F.2d 775, 780 (Fed. Cir. 1985)
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(Court held as proper a rejection of a claim directed to an alloy of having
“0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium” as
obvious over a reference disclosing alloys of 0.75% nickel, 0.25%
molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum,
balance titanium.).
However, an obviousness rejection based on optimization was
reversed where claimed values were outside the prior art range and the prior
art optimum resided within the range. In re Sebeck, 465 F.2d 904, 907
(CCPA 1972). (“Where … the prior art disclosure suggests the outer limits
of the range of suitable values, and that the optimum resides within that
range, and where there are indications elsewhere that in fact the optimum
should be sought within that range, the determination of optimum values
outside that range may not be obvious.”) See In re Sebeck, 465 F.2d 904,
907 (CCPA 1972).
The transitional term “comprising”, which is synonymous with
“including,” “containing,” or “characterized by,” is inclusive or open-ended
and does not exclude additional, unrecited elements or method steps. See,
e.g., Mars Inc. v. H.J. Heinz Co., 377 F.3d 1369, 1376 (Fed. Cir. 2004).

ANALYSIS
1. Calderas §103 Rejection
Appellants argue that Calderas’ teaching of an amount of preservative
does not make obvious their claimed amount. Br. 5-6. Calderas teaches an
amount of a preservative of from “about 400 ppm to about 1000 ppm”. We
agree with Appellants that this amount is significantly removed from
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Appellants’ claimed range of from “about 20 ppm to about 90 ppm” such
that this teaching does not suggest Appellants’ claimed amount of
preservative. In re Sebeck, 465 F.2d at 907.
We therefore reverse the obviousness rejection over Calderas.

2. Cirigliano §102 Rejection
Appellants argue that Cirigliano fails to anticipate the claims because
Cirigliano requires cinnamic acid. Br. 6-7. We are not convinced by this
argument for the following reasons.
As stated by the Examiner on page 8 of the Answer, the claims are
open to the inclusion of additional ingredients (which would include
cinnamic acid). Mars Inc. v. H.J. Heinz Co., 377 F.3d at 1376. Appellants
argue that Cirigliano teaches that the absence of cinnamic acid results in a
beverage that is microbially unstable, whereas their claimed invention is
directed to microbial stability. Br. 7. This is not relevant in view of the
undisputed open-ended nature of the claims on appeal (id.).
We therefore affirm the anticipation rejection over Cirgliano.

3. Smith §103 Rejection
Appellants argue that Smith does not suggest their claimed amount of
preservative of from “about 20 ppm to about 90ppm”.
Smith teaches an amount of preservative of from about 100 to about
1000 ppm. Smith, Abstract. We agree with the Examiner that this range
suggests the amount claimed by Appellants, absent a showing of criticality,
which, in the instant case, Appellants have not provided. Wertheim, 541
F.2d at 267; In re Woodruff, 919 F.2d at, 1578; In re Geisler, 116 F.3d at
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1469-71; Titanium Metals Corp. of America v. Banner, 778 F.2d at 780. A
person of ordinary skill in the art would have reasonably expected that
lowering the amount of preservative would have lowered the properties
associated with that component.
We therefore affirm the obviousness rejection over Smith.

CONCLUSIONS OF LAW
Appellants have shown reversible error in the Examiner’s
determination that the claimed range of “from about 20 ppm to about 90
ppm” is made obvious by Calderas’ disclosed range of from about 400 to
about 1000 ppm.

Appellants have not shown reversible error in the Examiner’s
determination that Cirigliano’s requirement of cinnamic acid is not excluded
by Appellants’ claims.

Appellants have not shown reversible error in the Examiner’s
determination that the claimed range of “from about 20 ppm to about 90
ppm” is obvious in view of Smith’s disclosed range of from about 100 to
about 1000 ppm.

DECISION
1. The rejection of claims 1-20 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Calderas is reversed.
2. The rejection of claims 1-20 stand rejected under 35 U.S.C. § 102(b)
as anticipated by Cirigliano is affirmed.
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3. The rejection of claims 1-20 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Smith 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)(1)(v).
AFFIRMED

Pl initial:
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