Ex Parte Jendrysik et al

Patent Trial and Appeal Board

Feb 9, 2015

12766998 (P.T.A.B. Feb. 9, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/766,998 04/26/2010 Rod Jendrysik 006943.03233 2744
66811 7590 02/09/2015
BANNER & WITCOFF, LTD.
and ATTORNEYS FOR CLIENT NO. 006943
10 SOUTH WACKER DR.
SUITE 3000
CHICAGO, IL 60606
EXAMINER
GWARTNEY, ELIZABETH A
ART UNIT PAPER NUMBER
1791
MAIL DATE DELIVERY MODE
02/09/2015 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 ROD JENDRYSIK, MARYKAY SKRYPEC, and
STACEY M. KAPPES
____________

Appeal 2013-003997
Application 12/766,998
Technology Center 1700
____________

Before PETER F. KRATZ, JEFFREY T. SMITH, and
ELIZABETH M. ROESEL, Administrative Patent Judges.

ROESEL, Administrative Patent Judge.

DECISION ON APPEAL

Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1, 4–9, 11, 13, 14, 16, and 17. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

1 According to Appellants, the Real Party in Interest is Stokely-Van Camp,
Inc. App. Br. 3.

Appeal 2013-003997
Application 12/766,998

2
STATEMENT OF THE CASE
The claimed subject matter relates to a non-carbonated sports
beverage. App. Br. (Claims Appendix 1). According to the Specification,
the beverage provides for fluid, carbohydrate and electrolyte replacement
and contains an acidulant blend that reduces the level of aftertaste and
increases gulpability, compared with conventional sports drinks. Spec. ¶ 1.
Claim 1 is representative of the subject matter on appeal and is set
forth below:
1. A non-carbonated sports beverage comprising: water;
electrolytes, a material selected from the group consisting of
carbohydrates and non-nutritive sweeteners; an acidulant
system comprising citric acid in an amount from about 0.12%
to about 0.13% by weight of said non-carbonated sports
beverage composition and phosphoric acid, wherein the weight
ratio of citric acid to phosphoric acid is from about 5.0: 1 to
about 5.2:1 and wherein said non-carbonated sports beverage
composition has a pH from about 2.7 to about 3.3;
wherein the electrolytes are in the range of: sodium ion
10 to 75 mEq/liter; potassium ion 3 to 20 mEq/liter; and
chloride ion 9 to 25 mEq/liter.
App. Br. (Claims Appendix i).
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Portman US 6,051,236 Apr. 18, 2000
Hutt et al. US 2002/0132034 Al Sept. 19, 2002
Yang US 2003/0099753 Al May 29, 2003

THE REJECTIONS
1. Claims 1, 4, 5, 7–9, 11, 14, 16, and 17 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Hutt in view of Yang. Ans. 3–7.
Appeal 2013-003997
Application 12/766,998

3
3. Claims 6 and 13 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Hutt in view of Yang, as applied to claims 1 and 11, and
further in view of Portman. Ans. 7–8.

ANALYSIS
Appellants’ arguments are directed to independent claims 1 and 11
only. No separate arguments are presented concerning the dependent
claims, including separately rejected dependent claims 6 and 13. See, e.g.,
App. Br. 11, 15. As a consequence, the dependent claims stand or fall with
their parent independent claims, and we confine our discussion to
independent claim 1, which is representative.
The Examiner finds that Hutt discloses an isotonic beverage meeting
all elements of claim 1, except that Hutt does not expressly disclose the
amount of citric acid, the combination of citric and phosphoric acids, and the
ratio of these acids. Ans. 3–4 (citing Hutt Abstract, ¶¶ 3, 4, 15–18, 20, 24).
The Examiner finds that Yang teaches a beverage composition containing a
combination of citric and phosphoric acids in an amount that overlaps the
claimed range and concludes that it would have been obvious to use the
combination of acids taught by Yang in the beverage of Hutt. Id. at 4 (citing
Yang Abstract, ¶¶ 29, 80, Example 9, Table 12); see also id. at 12. The
Examiner determines that the ratio of citric to phosphoric acid could have
been adjusted to obtain the desired flavor and that the claimed ratio is not
shown to be critical. Id.
Appellants contend that Hutt and Yang do not teach or suggest a
beverage containing the claimed amount of citric acid, the claimed ratio of
citric acid to phosphoric acid, and the claimed amounts of electrolytes. App.
Appeal 2013-003997
Application 12/766,998

4
Br. 11–14; Reply Br. v–vii. Upon consideration of the evidence presented in
this Appeal and each of Appellants’ contentions, we are not persuaded that
Appellants identify reversible error, and we determine that a preponderance
of evidence supports the Examiner’s conclusion that the appealed claims are
unpatentable over the applied prior art. The basis for this conclusion and the
reasons Appellants’ arguments fail to reveal error are well expressed by the
Examiner in the Answer, which we adopt as our own. The following
comments are added for emphasis.
Regarding the claimed amount of citric acid, there is no dispute that
the claimed range completely overlaps and is encompassed by the amount of
edible acid disclosed by Yang. Compare App. Br. App’x i (claim 1: citric
acid in an amount from about 0.12% to about 0.13% by weight of the
composition) with Yang ¶ 29 (“edible acid comprises from about 0.01 to
about 3 wt% of the composition”). Regarding the claimed amounts of
electrolytes, there is no dispute that the claimed ranges for sodium and
potassium ions overlap the amounts disclosed by Hutt. Compare App. Br.
App’x i (claim 1: sodium ion 10 to 75 mEq/liter and potassium ion 3 to 20
mEq/liter) with Ans. 3 (Hutt discloses 2.6 to 10.8 mEq/liter sodium and 1.5
to 3.8 mEq/liter potassium, citing Hutt ¶ 20 and converting mg/l to mEq/l);
see also Ans. 12; Reply Br. v (conceding “slight overlap at the end points”).
We concur with the Examiner that the overlap between the claimed
and disclosed amounts of acid and electrolytes establishes a prima facie case
of obviousness, which is not sufficiently rebutted by Appellants. Ans. 8–13.
For example, Appellants do not direct us to evidence comparing beverages
containing the acidulant system recited in claim 1 with beverages containing
the acidulant system taught by Yang, contending instead that “no
Appeal 2013-003997
Application 12/766,998

5
comparative data is needed.” App. Br. 14. In re Peterson, 315 F.3d 1325,
1329 (Fed. Cir. 2003) (“A prima facie case of obviousness typically exists
when the ranges of a claimed composition overlap the ranges disclosed in
the prior art.”); In re Geisler, 116 F.3d 1465, 1469, 1470 (Fed. Cir. 1997)
(when the teachings of a prior art reference discloses a range that touches or
overlaps the range recited in the claim, the burden is on applicant to rebut
prima facie obviousness, e.g., by showing unexpected properties within the
claimed range); In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990) (“The
law is replete with cases in which the difference between the claimed
invention and the prior art is some range or other variable within the claims.
. . . These cases have consistently held that in such a situation, the applicant
must show that the particular range is critical, generally by showing that the
claimed range achieves unexpected results relative to the prior art range.”).
Regarding the claimed ratio of citric acid to phosphoric acid, there is
no dispute that Yang teaches the combination of citric and phosphoric acid.
Yang Abstract, ¶¶ 13, 22, 80 (Ex. 9 & Table 12). We agree with the
Examiner’s conclusion that, based on the teachings of Hutt and Yang, it
would have been obvious to use a combination of citric acid and phosphoric
acid in any ratio. Ans. 9. We are not persuaded by Appellants’ arguments
to the extent they assume that the ratio of citric acid to phosphoric acid that
would have been obvious in view of Yang is limited to the ratio of malic
acid to phosphoric acid that is taught by Yang. App. Br. 13 (citing Yang’s
examples). Appellants’ argument is not persuasive particularly in view of
the fact that, whereas Yang teaches that excess malic acid is undesireable,
Yang ¶ 30, there is no similar teaching regarding citric acid. We concur
with the Examiner that the combined teachings of Hutt and Yang are
Appeal 2013-003997
Application 12/766,998

6
sufficient to establish prima facie obviousness of Appellants’ claimed
composition, including the recited ratio of citric acid to phosphoric acid.
Ans. 9–13. Again, Appellants do not direct us to evidence sufficient to rebut
prima facie obviousness, instead contending that that “no comparative data
is needed.” App. Br. 14. Rather than showing criticality of the claimed
range, Appellants’ Specification suggests that a broader range is workable,
stating that the weight ratio of citric acid to phosphoric acid is typically from
about 0.5:1 to about 13.8:1. Spec. ¶ 12; see also id. at 7 (original claim 1).
Although Appellants argue that the claimed composition provides
unexpected improvements in aftertaste and what they term “gulpability,”
App. Br. 7, 11–14; Reply Br. iv–vi; Spec. ¶¶ 1, 3, 9–10, they do not direct us
to evidence sufficient to support that claim. In re Klosak, 455 F.2d 1077,
1080 (CCPA 1972) (“the burden of demonstrating unexpected results is on a
party who asserts them”); see also In re Geisler, 116 F.3d 1465, 1471 (Fed.
Cir. 1997) (attorney argument cannot take the place of evidence); In re
Freeman, 474 F.2d 1318, 1324 (CCPA 1973) (to show unexpected results,
applicant must establish: “(1) that there actually is a difference between the
results obtained through the claimed invention and those of the prior art . . .
and (2) that the difference actually obtained would not have been expected
by one skilled in the art at the time of invention”) (citation omitted). We are
not persuaded by Appellants’ argument based upon Yang’s teaching that
different acids and combinations of acids can be used without altering the
properties of the composition. Reply Br. vi. As noted by the Examiner,
Yang’s teaching supports interchangeability of different acids and
combinations of acids, Ans. 9, 13 (citing Yang ¶ 80), and does not support
Appeal 2013-003997
Application 12/766,998

7
that Appellants’ claimed ratio of citric acid to phosphoric acid provides
different or unexpected results, as compared with any other ratio.

CONCLUSION OF LAW AND DECISION
The rejections are 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).
AFFIRMED

lp