Ex Parte KashimaDownload PDFPatent Trial and Appeal BoardMar 28, 201613474517 (P.T.A.B. Mar. 28, 2016) Copy Citation 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 following e-mail address( es): DBRIPDocket@dbr.com penelope.mongelluzzo@dbr.com 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." 2 Appeal2014-005067 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 3 Appeal2014-005067 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].) 4 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 5 Appeal2014-005067 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."). 6 Appeal2014-005067 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 7 Appeal2014-005067 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 Copy with citationCopy as parenthetical citation