Ex Parte Kashima

Patent Trial and Appeal Board

Mar 28, 2016

13474517 (P.T.A.B. Mar. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/474,517 05/17/2012
55694 7590 03/30/2016
DRINKER BIDDLE & REATH (DC)
1500 K STREET, N.W.
SUITE 1100
WASHINGTON, DC 20005-1209
FIRST NAMED INVENTOR
Takanori Kashima
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.
047233-5067-0l-US(484329) 5756
EXAMINER
STIJLII, VERA
ART UNIT PAPER NUMBER
1791
NOTIFICATION DATE DELIVERY MODE
03/30/2016 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
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE
THE PA TENT TRIAL AND APPEAL BOARD
Exparte TAKANORI KASHIMA 1
Appeal2014-005067
Application 13/474,517
Technology Center 1700
Before MARK NAGUMO, JAMES C. HOUSEL, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.
NAGUMO, Administrative Patent Judge.
DECISION ON APPEAL
Takanori Kashima ("Kashima") timely appeals under
35 U.S.C. § 134(a) from the Final Rejection2 of claims 7, 9, and 11, which
are all of the pending claims. We have jurisdiction. 35 U.S.C. § 6.
We reverse for reasons well-stated by Kashima.
1 The real party in interest is listed as Suntory Holdings Limited. (Appeal
Brief, filed 1November2013 ("Br."), 2.)
2 Office action mailed 3 April 2013 ("Final Rejection").
Appeal2014-005067
Application 13/474,517
A. Introduction3
OPINION
The subject matter on appeal relates to processes of distilling liquors
that use the stems and leaves of shiso (Perilla frutescens var. crispa), a
member of the mint family, as a flavoring ingredient. (Spec. 1 [0001 ]-
[0002].) These distilled spirits belong to a class of spirits referred to
generically in Japanese as "shochu." (Id. at 9 [0021].) According to
the '517 Specification, perillaldehyde accounts for 55% of the essential oils
in shiso (id. at 2 [0008]), but has "a somewhat oily and grass-like smell"
(id. at 3 [0009]). Prior art technology is said to have focused on increasing
the perillaldehyde content of shiso-flavored spirits, and, in so doing, to have
failed to obtain spirits having the "fresh and natural fragrance of shiso."
(Id.) Kashima seeks patent protection for a process said to overcome the
defects of the prior art by distilling liquors from a pot still at specified ranges
of reduced pressure and temperature. In preferred embodiments, certain
other aroma compounds ("components (B)") are said to be present in the
distilled spirits in a weight ratio to perillaldehyde ("component (A)"), of 0.9
or more, i.e., (B)/(A) 2: 0.9. (Id. at 4, 11. 15-22.) The compounds (B) are
said to mask the oily and grass-like smell of component (A). (Id. at 10,
11. 22-28.)
3 Application 13/474,517, Distilled liquors and spirits having the fresh and
natural fragrance of shiso and processes for producing the same,
filed 17 May 2012 as a division of 12/663,947, filed 10 December 2009,
now abandoned, which is the national stage of PCT /JP2008/060826,
filed 13 June 2008. We refer to the '" 517 Specification," which we cite as
"Spec."
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Application 13/474,517
Sole independent claim 7 is representative and reads:
A process for producing a distilled liquor or spirit comprising
the steps of:
charging a distillation vessel of a pot still with an alcohol-
containing distillation feed and Perilla frutescens var.
crispa; and
distilling the distillation feed at a reduced pressure
between 150 mmHg (ca. 20 kPa) and 350 mmHg
(ca. 46. 7 kPa) to obtain the distilled liquor or spirit,
wherein the temperature of the distillation feed at the time
when the first fraction distills out is between 50 °C and 78 °C;
wherein the temperature of the distillation feed at the end of
distillation is between 55 °C and 90 °C; and
wherein the Perilla frutescens var. crispa is one or more
members selected from among:
( 1) leaves or stem of fresh Perilla frutescens var. crispa;
(2) a dried, sheared, ground or enzymatically treated
product of leaves or stem of fresh Perilla frutescens var.
crispa; and
(3) a liquid extract obtained by extracting (1) or (2) with
water or an aqueous solution.
(Claims App., Br. 13; some indentation, paragraphing, and emphasis added.)
The Examiner maintains the following grounds of rejection4 :
A. Claims 7, 9, and 11 stand rejected under 35 U.S.C. § 103(a)
in view of the combined teachings of Yukio5 and Kadoshita. 6
4 Examiner's Answer mailed 15 January 2014 ("Ans.").
5 Yukio Nagai et al., JP2007060962 (A) (15 March 2007); Espacenet
abstract, Derwent abstract, and a partial translation provided by Kashima
on 17 May 2012, during examination. (Following the Examiner and
Kashima, we refer to this reference as "Yukio.")
6 Haruo Kadoshita, Production of distilled liquor from nut of Brazilian
palm, JP61-015682 (1986); Patent Abstracts of Japan abstract, Derwent
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Application 13/474,517
B. Claims 7, 9, and 11 stand rejected under 35 U.S.C. § 103(a)
in view of the combined teachings ofUchiki7 and Kadoshita.
B. Discussion
Findings of fact throughout this Opinion are supported by a
preponderance of the evidence of record.
Kashima urges, inter alia, that the Examiner erred in finding that the
use of a pot still for the distillation step would have been obvious because
Yukio discourages the use of a pot still. (Br. 5, 11. 6-26, citing Yukio [0007]
and [0020].)
As Kashima indicates (id.), Yukio teaches that "since distillation
using a pot still unavoidably prolongs the retention time of moromi[SJ in the
pot still, the deterioration of flavor components is inevitable and the superior
quality of liquor due to the characteristic flavor or plant leaves has not been
achieved." (Yukio [0007].) Moreover, Kashima points out (Br. 5, 11. 19-22)
that Yukio provides a comparison between the output of an inventive gas-
liquid countercurrent contact apparatus and a pot still, in which the members
abstract, and a partial translation (of the "Claims" section) filed 1 July 2013,
with the request for reconsideration following the Final Rejection.
7 Masato Uchiki and Norihisa Fujiwara, Processed product of green leaf
and use thereof, JP 2005-143503 (2005) (Patent Abstracts of Japan abstract:
we have not considered the partial translation filed with the Brief
on 1November2013, because good cause has not been shown why that
partial translation was not filed during the regular course of examination.
37 C.F.R. § 41.37(c)(2) ("A brief shall not include any new or non-admitted
amendment, or any new or non-admitted affidavit or other Evidence.")).
8 The '517 Specification defines "moromi" as "the product of alcoholic
fermentation of a saccharide-containing material with a yeast."
(Spec. 7 [0016].)
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Appeal2014-005067
Application 13/474,517
of a nine-member tasting panel preferred the product of the inventive
process (Yukio [0020]-[0024]).
The Examiner's holding that the appealed claims "are directed to the
method, not to the apparatus" (Ans. 6, 1. 11) is correct. However, the
Examiner's conclusion that "[ o ]ne of ordinary skill in the art would have
been motivated to use any conventional distillation apparatus based on the
price, availability, etc." (id. at 11. 11-13) overlooks or misapprehends the
teachings of Yukio, which teach away from the use of a pot still. The weight
of the evidence is that a person having ordinary skill in the art, aware of the
teachings of Yukio, would not have regarded a pot still as equivalent to the
apparatus recommended by Yukio. In the absence of evidence and
reasoning to the contrary, the Examiner's error is harmful and suffices to
require reversal of the rejection based on Yukio.
Kashima urges further that the Examiner erred in combining the
teachings of Yukio, which are directed to producing a distilled spirit from
various plant leaves, with the teachings of Kadoshita, which is directed to
the distillation of spirits from a rice-derived, alcohol-containing mash
combined with fruit pulp of Brazilian palms. (Br. 6, 11. 9-19.) In Kashima's
words, "[t]here is no evidence on the record, or adduced by the Examiner,
that a skilled artisan at the time would have been directed to use a method
suitable for extracting flavor(s) from fruit pulp of Brazilian palms to extract
flavor(s) from Yukio's plant leaves, let alone that such a modification would
have worked predictably." (Id. at 11. 16-20.) Moreover, Kashima argues,
"[e]ven though the two pressure ranges [i.e., of the Kashima process and of
the claimed process] overlap at a single point, i.e., 150 mm Hg, Kadoshita
does [nothing] to cure Yukio's defects. The Examiner at least fails to justify
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Application 13/474,517
why a skilled artisan would have combined Yukio and Kadoshita, given that
they are directed to process different materials from different plants."
(Id. at 7, 11. 23-26.) Furthermore, Kashima points out that the results
presented in Table 4 of the Specification indicate that distillation at 150
and 200 mmHg yield three and almost four times as much of shiso scent
(component (A)) as distillation at 120 mm Hg, and that at 60, 80,
and 100 mm Hg, no shiso scent was obtained. (Br. 8, 11. 1-7, citing
Specification Table 4 (Spec. 20 [0048]).) Thus, Kashima urges, the pressure
range required by the claims is "critical" to the invention, and the
Examiner's analysis that obviousness can be justified on the basis of routine
experimentation is harmfully erroneous. (Id. at 11. 7-8.)
The Examiner does not direct our attention to any evidence in
response to these criticisms. Rather, the Examiner merely states that
because both Yukio and Kadoshita are concerned with distilling a shochu
beverage "by distilling alcohol-containing material that further contains
plant material, one of ordinary skill in the art would have been motivated to
vary the pressure and temperature of the distillation process in order to
obtain the desired result." (Ans. 6, 11. 22-25.) Motivation to combine
teachings of references is a factual issue9, and therefore is evaluated based
on the preponderance of the evidence. The weight of the evidence as to
motivation to combine is with Kashima. The rejection in view of Yukio and
Kashima is therefore reversed for this reason as well.
9 In re Gartside, 203 F.3d 1305, 1316 (Fed. Cir. 2000) ("The presence or
absence of a motivation to combine references in an obviousness
determination is a pure question of fact.").
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Application 13/474,517
Kashima also urges that the Examiner erred harmfully in relying of
U chiki because U chiki teaches a single reduced pressure for distillation
of 8.00 x 10-3 MPA, corresponding to about 60 mm Hg, short of the range
of 150-350 mm Hg required by claim 7. (Br. 9, 11. 8-11.) Moreover,
according to Kashima, as in the rejection based on Yukio, the Examiner has
not shown why the routineer would have combined the teachings of
Kadoshita, whether for distillation temperatures or pressures, with the
teachings ofUchiki. (Id. at 11. 11-13.) Finally, Kashima urges that Uchiki
discloses using a processed product of shiso leaves that have been frozen,
thawed, and squeezed. (Id. at 11, 11. 3-5.) In contrast, the claims require
that the distillation pot be charged with an alcohol feed and one or more of
(1) shiso stems and leaves; (2) dried, ground, or enzymatically treated shiso
leaves or stems; or (3) a water- or aqueous-extract of (1) or (2).
The Examiner responds that because both Uchiki and Kadoshita
disclose distilled shochu beverages from alcohol-containing materials that
contain plant materials, it would have been obvious to vary pressure and
temperature to obtain the desired result. (Ans. 8, 11. 7-12.) The Examiner
has not directed our attention to any disclosure in the prior art indicating any
awareness of any trends associated with distillation temperatures or
pressures that would have suggested any reason to conduct distillations at
any temperatures and pressures within the recited ranges. As the
predecessor to our reviewing court explained nearly four decades ago,
In In re Aller, 220 F.2d 454 ... ([CCPA] 1955), the court set
out the rule that the discovery of an optimum value of a
variable in a known process is normally obvious. We have
found exceptions to this rule in cases where the results of
optimizing a variable, which was known to be result
effective, were unexpectedly good. . . . This case, in which
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Application 13/474,517
the parameter optimized was not recognized to be a result-
effective variable, is another exception.
Application of Antonie, 559 F.2d 618, 620 (CCPA 1977) (internal citations
omitted).
Moreover, as Kashima explains (Reply, 10 paragraph bridging 2-3), the
Examiner errs in finding that Uchiki teaches distillation from alcohol-
containing materials containing fresh shiso leaves. The Examiner has not
come forward with any credible evidence or explanation why the processed
material used by Uchiki falls within the materials defined by claim 7 as
"Perilla frutescens var. crispa."
Both errors are harmful, as no motivation has been established in the
applied prior art to arrive at the critical parameters of distillation pressures
and temperatures, and as a critical element of the claimed process, namely a
starting material, is not taught by the applied references.
The Examiner makes no findings regarding the limitations recited in
the dependent claims that cure the deficiencies of the rejections of
independent claim 7.
C. Order
It is ORDERED that the rejections of claims 7, 9, and 11 are reversed.
REVERSED
10 Reply Brief filed 11 March 2014 ("Reply").
8