11100217 (P.T.A.B. Feb. 26, 2013)

Ex Parte Jordan et al

Patent Trial and Appeal BoardFeb 26, 2013

11100217 (P.T.A.B. Feb. 26, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 11/100,217 04/06/2005 Rachel L. Jordan 006943.01595 3369 66811 7590 02/27/2013 BANNER & WITCOFF, LTD. and ATTORNEYS FOR CLIENT NO. 006943 10 SOUTH WACKER DR. SUITE 3000 CHICAGO, IL 60606 EXAMINER BEKKER, KELLY JO ART UNIT PAPER NUMBER 1791 MAIL DATE DELIVERY MODE 02/27/2013 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 RACHEL L. JORDAN, CHRISTINE M. BENZA, and JESSICA L. FRANKLIN ________________ Appeal 2011-005185 Application 11/100,217 Technology Center 1700 ________________ Before TERRY J. OWENS, KAREN M. HASTINGS, and MICHAEL P. COLAIANNI, Administrative Patent Judges. OWENS, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-005185 Application 11/100,217 2 STATEMENT OF THE CASE The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1-4, 6, 7, 9 and 10, which are all of the pending claims. We have jurisdiction under 35 U.S.C. § 6(b). The Invention The Appellants claim a frozen carbonated beverage. Claim 1 is illustrative: 1. A frozen carbonated beverage comprising: from about 5% to about 25% by volume fruit juice; carbon dioxide; a foaming agent; and water; the frozen carbonated beverage comprising a slushy texture and having a carbon dioxide overrun of from about 80% to about 120%. The References Kochakji US 2004/0018275 A1 Jan. 29, 2004 Ozaki EP 0 127 686 A1 Dec. 12, 1984 Lee WO 02/087358 A1 Nov. 7, 2002 The Rejection Claims 1-4, 6, 7, 9 and 10 stand rejected under 35 U.S.C. § 103 over Ozaki in view of Kochakji and Lee. OPINION We affirm the rejection. Because our rationale differs substantially from that of the Examiner we denominate the affirmance as involving a new ground of rejection under 37 C.F.R. § 41.50(b). The Appellants argue the claims as a group (Br. 9-16). We therefore limit our discussion to one claim, i.e., claim 1, which is the sole independent claim. See 37 C.F.R. § 41.37(c)(1)(vii) (2007). Appeal 2011-005185 Application 11/100,217 3 The Appellants argue that “Ozaki does not teach or suggest a carbon dioxide overrun1 (it only teaches the possibility of freezing carbonated water)” (Reply Br. 3) and that Ozaki’s “addition of carbon dioxide through the use of use of carbonated water does not significantly increase the total volume of the beverage and therefore does not teach or suggest a carbon dioxide overrun of from about 80% to about 120% as claimed” (Br. 11). Ozaki discloses a half-frozen beverage which can contain fruit juice and which, Ozaki indicates, is a slush (p. 1, ll. 4-6, 13-14; p. 2, ll. 20-22). The beverage includes sugars and/or sugar alcohols and carbon dioxide gas having a pressure at 15ºC of 0.2-0.9 kg/cm2 to control ice crystal formation such that the beverage is soft and a spoon dips into it smoothly (p. 7, ll. 5- 13). That gas pressure is below the gas pressure (more than 1.0 kg/cm2 at 15 ºC) at which a half-frozen beverage is prone to rush out when the package containing it is opened (p. 6, l. 35 – p. 7, l. 4). Ozaki discloses examples wherein the beverage contains carbonated water (p. 11, ll. 6-13, 27-33). Those examples do not disclose that the half-frozen beverage has a gas pressure. In another example, however, wherein the carbon dioxide gas pressure of carbonated water is adjusted to 3.4 kg/cm2 at 15 ºC and that gas pressure-adjusted carbonated water is injected into a package containing the beverage’s other components and the package then is hermetically sealed, shaken and half-frozen, the beverage has a gas pressure at 15 ºC of 0.7 kg/cm2 (p. 20, ll. 1-16). That beverage, therefore, appears to contain more carbon dioxide than the beverage which is 1 The Appellants state that “‘[o]verrun’ is the volume of carbon dioxide present in the frozen carbonated beverage in excess of the liquid volume” (Spec. ¶ 00018). Appeal 2011-005185 Application 11/100,217 4 made using non-pressure-adjusted carbonated water and does not have a reported gas pressure. Thus, the beverage made using the carbon dioxide pressure-adjusted carbonated water appears to have a carbon dioxide overrun, i.e., a volume of carbon dioxide in excess of the volume of liquid. Ozaki does not disclose the percentage overrun. However, the gas pressure at 15 ºC of 0.7 kg/cm2 (10 psi) is sufficiently high to indicate a substantial volume of carbon dioxide in excess of the liquid volume. Ozaki’s disclosure that reducing the amount of pressure-adjusted carbonated water from 62 ml to 52 ml lowers the half-frozen beverage’s gas pressure at 15ºC from 0.7 to 0.4 kg/cm2 (p. 20, ll. 1-22) indicates that the degree of overrun is variable. Hence, Ozaki would have led one of ordinary skill in the art, through no more than ordinary creativity, to determine, through no more than routine experimentation, the degree of overrun which controls the ice crystal formation to the extent required to obtain the half frozen beverage’s desired softness and smoothness (p. 7, ll. 5-13). See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (In making an obviousness determination one “can take account of the inferences and creative steps that a person of ordinary skill in the art would employ”). Because Ozaki, like the Appellants, uses carbon dioxide to control ice formation such that the beverage is slushy and smooth (Ozaki p. 7, ll. 7-9; Appellants’ Spec. ¶ 00018), it appears that such routine experimentation would result in beverages having carbon dioxide overruns which include those used by the Appellants. Accordingly, we affirm the rejection. Because the affirmance is based upon rationale which differs substantially from that of the Examiner we Appeal 2011-005185 Application 11/100,217 5 denominate the affirmance as involving a new ground of rejection under 37 C.F.R. § 41.50(b). DECISION/ORDER The rejection of claims 1-4, 6, 7, 9 and 10 under 35 U.S.C. § 103 over Ozaki in view of Kochakji and Lee is affirmed. It is ordered that the Examiner’s decision is affirmed. This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides that the appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record. . . . No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED; 37 C.F.R. § 41.50(b) kmm