Ex parte Lee et al.

Board of Patent Appeals and Interferences

Feb 28, 2000

08268708 (B.P.A.I. Feb. 28, 2000)

Appeal No. 1996-3469
Application No. 08/268,708
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 17
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte THOMAS D. LEE,
and ROBERT W. WOOD
____________
Appeal No. 1996-3469
Application No. 08/268,708
____________
ON BRIEF
____________
Before WINTERS, OWENS, and LORIN, Administrative Patent Judges.
LORIN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. ' 134 from the
final rejection of claims 1, 2, 4-6, 8-12, and 14-20, all the
claims pending in the application. On consideration of the
record, we reverse the rejections.
Appeal No. 1996-3469
Application No. 08/268,708
2
Representative Claims
1. A bottled non-carbonated, sugar-free, fruit-flavored
beverage comprising fruit flavor, aspartame, citric acid
and citrate buffer salt wherein the beverage has a pH of from
3.2 to 3.6, a weight ratio of the citric acid to the citrate
buffer salt of 2.7-3.5:1 and a sour taste which is equivalent
to fruit-flavored beverages having a pH of about 2.9, and
wherein the sweetness of the beverage is provided
by aspartane alone or by aspartame for a majority of the
sweetness in combination with the other intensive sweeteners
selected from the group consisting of
alitame, acesulfame-K, saccharin, sucralose and combinations
thereof.
9. A method of raising the pH of a non-carbonated, sugar-
free, citric acid-containing and citrate buffer salt-
containing fruit-flavored, bottled beverage wherein the
sweetness of the beverage is provided by aspartame alone or
by aspartame for a majority of the sweetness in combination
with the other intensive sweeteners selected from the group
consisting of alitame, acesulfame-K, saccharin, sucralose and
combinations thereof, from below 3.0 to above 3.2
without lowering the sour taste of the beverage comprising
the steps of adjusting the level of citric acid, increasing
the level of citrate buffer salt, and decreasing the weight
ratio of citric acid to citrate buffer salt to 2.7-3.5:1.
The references relied upon by the examiner are:
Sakai et al. (Sakai) 4,770,889 Sep. 13, 1988
Wakabayashi et al. (Wakabayashi) 4,849,238 Jul. 18, 1989
Sabatura 4,876,106 Oct. 24, 1989
The rejections are:
Claims 1, 2, 4-6, 8-12, and 14-20 are rejected under 35
U.S.C. ' 112, first paragraph, as the specification does not
contain a written description of the claimed invention.
Claims 1, 2, 4-6, 8-12, and 14-20 are rejected under 35
U.S.C. ' 103 as being unpatentable over Sakai and Wakabayashi
in view of Sabatura.
Appeal No. 1996-3469
Application No. 08/268,708
3
Decision
In rendering our decision, we have considered the
following:
The entire specification and record in 08/268,708;
Final Rejection (paper no. 9, mailed July, 26 1995);

Brief (paper no. 15, filed March 25, 1996); and,
Examiner's Answer (paper no. 16, mailed May 8, 1996).
Claims 1, 2, 4-6, 8-12, and 14-20 are rejected under
35 U.S.C. ' 112, first paragraph, as the specification
does not contain a written description of the claimed
invention.
The term "non-carbonated" was newly added to claims
1 and 9 by an amendment (paper no. 7, filed May 19, 1995)
filed after the first Office action (paper no. 5, mailed
December 30, 1994). Because the examiner could not find
"verbatim basis" (Examiner's Answer, p. 3) for this term
in the original disclosure, a rejection under 35 U.S.C. '
112, first paragraph, was applied.1 We reverse the rejection for two
reasons.
Appeal No. 1996-3469
Application No. 08/268,708
4

First, the examiner applies the wrong legal standard. A specification need not have
"verbatim basis" of the terms in the claims. "The claimed subject matter need not be described
in haec verba to satisfy the description requirement," In re Herschler, 591 F.2d 693, 701, 200
USPQ 711, 717 (CCPA 1979).
Second, the term "non-carbonated" is implicitly disclosed for the reasons stated by
appellants in their brief (p. 2). The specification (page 1, lines 12-21) contrasts "Carbonated
soft drink manufacturers who enjoy a relatively quick distribution . . ." and "beverage products
where the distribution and use cycle may extend to a period of several months . . ." The clear
implication is that "beverage products" are other than "carbonated soft drinks." Since this can
only mean non-carbonated beverages, the claimed invention has written descriptive support.
Claims 1, 2, 4-6, 8-12, and 14-20 are rejected under 35 U.S.C. ' 103 as
being unpatentable over Sakai and Wakabayashi in view of
Sabatura.
We feel compelled to point out the following defects
in examiner's position:

First, examiner states that "the claim now requires
a non-carbonated beverage [but that it] is not given
weight as it is considered new matter." Examiner's
Answer, p. 4. Simply because a limitation in a claim may
not comply with the written description requirement of 35
U.S.C. ' 112 does not mean examiner can ignore the
Appeal No. 1996-3469
Application No. 08/268,708
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limitation with regard to obviousness under 35 U.S.C. '
103. In fact, it must be considered.
Even though the above quoted expressions are
held by us to introduce new matter into the
claims, nevertheless, they cannot be ignored,
but rather, must be considered and given weight
when evaluating the claims so limited with
regard to obviousness over the art. See In re
Miller, 58 CCPA 1182, 441 F.2d 689, 169 USPQ 597
(1971) and In re Wilson, 57 CCPA 1029, 424 F.2d
1382, 165 USPQ 494 (CCPA 1970).
Ex parte Pearson, 230 USPQ 711, 712. See also Ex parte
Grasselli, 231 USPQ 393, 394.
Second, examiner uses the wrong standard for
determining obviousness. The standard is as follows:
Under ' 103, the scope and content of the prior
art are to be determined; differences between
the prior art and the claims at issue are to be
ascertained; and the level of ordinary skill in
the pertinent art resolved. Against this
background, the obviousness or non-obviousness
of the subject matter is determined.
Graham v. John Deere, 148 USPQ 459, 467 (US 1966).
Instead, examiner makes a number of unsupported
statements to the effect that claimed features are
"obvious" or contain "nothing . . . non-obvious." From
this follows the determination that it would have been
"obvious" to use them. This is an example:
Features variously recited in the different
claims are considered obvious features or
Appeal No. 1996-3469
Application No. 08/268,708
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control limitations well within the
determination of one with the ordinary skill in
the art. Therefore, it would have been obvious
to use such known features in the composition
and process of the combined reference.
The relevant inquiring is whether the claimed subject
matter would have been obvious over the prior art to one
with ordinary skill. For a large number of claimed
features, no prior art is relied upon.
Third, "[i]t is elementary that the claimed
invention must be considered as a whole in deciding the
question of obviousness," In re De Blauwe, 736 F.2d 699,
706, 222 USPQ 191, 196 (Fed. Cir. 1984). Examiner's
position never comes to grip with the invention as a
whole. It is presented as though every feature of the
claim is independent from each other. According to the
examiner, all the claimed features are known or obvious
for one reason or another. But the
question is not whether any single feature is obvious
over the prior art but whether it, in combination with
all the other features claimed, is obvious over the prior
art to one of ordinary skill.
Lastly, examiner states that AAppellants argue that
they have shown commercial success.@ In fact, they filed
a declaration (paper no. 8, filed May 19, 1995).
Appeal No. 1996-3469
Application No. 08/268,708
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Examiner never mentions the declaration, let alone treats
the substance of it. Instead of revaluating the prima
facie case of obviousness in light of the declaration,
examiner dismisses1 it. This is improper. As emphasized by the court in Connell v.
Sears, Roebuck & Co., 722 F.2d 1542, 1549, 220 USPQ 193, 199 (Fed. Cir. 1983):
It is inappropriate and injudicious to disregard any admissible evidence in
any judicial proceeding. Hence, all relevant evidence on the
obviousness issue must be considered before a conclusion is
reached. Stratoflex,
Inc. v. Aeroquip Corp., 713 F.2d 1530,
218 USPQ 871 (Fed. Cir. 1983).
Evidence under 37 CFR ' 1.132 must be considered and, as
mandated by the court in In re Piasecki, 745 F.2d 1468,
1472, 223 USPQ 785, 7882 (Fed. Cir. 1984) and In re Rinehart, 531 F.2d 1048,
1052, 189 USPQ 143, 1473 (CCPA

1 A"The product may be commercially successful, but can still
contain obvious subject matter which it would have been within
the skill of the ordinary worker to vary to achieve the claimed
product.@ Examiner's Answer, p. 8.
2 AIf rebuttal evidence of adequate weight is produced, the
holding of prima facie obviousness, being but a legal inference
from previously uncontradicted evidence, is dissipated.
Regardless of whether the prima facie case would have been
characterized as strong or weak, the examiner must consider all
of the evidence anew.@
3 AFacts established by rebuttal evidence must be evaluated
along with the facts on which the earlier conclusion was
reached, not
against the conclusion itself. Though the tribunal must begin
anew, a final finding of obviousness may of course be reached,
but such finding will rest upon evaluation of all facts in
evidence, uninfluenced by any earlier conclusion reached by an
earlier board upon a different record.@
Appeal No. 1996-3469
Application No. 08/268,708
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1976), the prima facie case must be considered anew in view of this evidence.
Now turning to the merits of the rejection.
The claims call for a non-carbonated beverage containing aspartame, citric acid and
citrate buffer salt wherein the beverage has a pH of 3.2 to 3.6 and a weight ratio of the citric
acid to the citrate buffer salt of 2.7-3.5:1 and a sour taste which is equivalent to fruit-flavored
beverages having a pH of about 2.9. These are the salient but not all the features required by
the claims. But even these are not disclosed.
Appeal No. 1996-3469
Application No. 08/268,708
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The examiner has the initial burden of establishing a prima facie case of obviousness. In
re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). That has not
been done here.
Neither the claimed pH of 3.2 to 3.6 nor the claimed weight ratio of the citric acid to the
citrate buffer salt of 2.7-3.5:1 are taught. Nevertheless, Examiner rests on the fact that Sakai
and Wakabayashi teach carbonated drinks containing citric acid and a citrate buffer and that
"Sabatura discloses variations in the citric-citrate ratios . . . for fruit flavor beverage mixes"
(Examiner's Answer, p. 4). Sabatura teaches a dry mix. All three references teach aspartame.
Based on this, examiner concludes that
to vary ratios as claimed in each of Sakai et al. or Wakabayashi et al. would
have only involved only the ordinary skill of one in the art. Appellants are doing
no more than varying the conventional citric-citrate ratio of beverage
preparations for the expected consequence of the mixture.
Examiner's Answer, p. 4. Moreover, the "claimed pH would appear to be within the scope of
the applied references" and "it would have been obvious that different ratios of acids to buffers
are required if a product is more or less acid."
We are not persuaded that the two references to carbonated drinks with citric acid and
citrate buffer and the third reference to a dry mix, in which the citric acid and citrate acid buffer
ration can be adjusted, would lead one of ordinary skill to select the particularly claimed weight
ratio of the citric acid to the citrate buffer salt of 2.7-3.5:1 with a pH of 3.2-3.5 as to a non-
carbonated beverage. If anything, based on the combined references, it would have been
Appeal No. 1996-3469
Application No. 08/268,708
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obvious to adjust the weight ratio of the citric acid to the citrate buffer salt for carbonated
beverages, not non-carbonated ones.
Even so, there is no suggestion to select the ratio claimed. This ratio, as appellants have
argued, allows for the production of an acidic, fruit-flavored aspartame containing non-
carbonated beverage with both aspartame stability and a sour taste equivalent to a similar
beverage having a pH of about 2.9. Considering what the references do not teach and that no
good reason has been given why one of ordinary skill reading the prior art references would
select the particular citric acid to the citrate buffer salt ratio that is claimed for the acidic
aspartame-containing
Appeal No. 1996-3469
Application No. 08/268,708
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non-carbonated sour-tasting fruit-flavored beverage that is claimed, we necessarily come to the
conclusion that examiner has failed to make out a prima facie case of obviousness. We
therefore reverse the rejection.
REVERSED
SHERMAN D. WINTERS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
TERRY J. OWENS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
HUBERT C. LORIN )
Administrative Patent Judge )
LCH/sld
Appeal No. 1996-3469
Application No. 08/268,708
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Thomas R. Savoie
Kraft General Foods, Inc.
Patent Law Department (RA-6N)
250 North Street
White Plains, NY 10625
The rejection is one of "new matter" in the claims. In accordance with 37 CFR ' 1.118
ee also MPEP ' 608.04), where the new matter has been entered into the claims, the
aims are rejected under 35 U.S.C. ' 112, first paragraph, as the specification does not
ntain a written description of the claimed invention. See also MPEP ' 706.03(c).