Ex Parte Lehmberg et al

Board of Patent Appeals and Interferences

Mar 10, 2009

10648618 (B.P.A.I. Mar. 10, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte GREGG LANCE LEHMBERG
and LESLIE JOHN HERZOG
____________

Appeal 2009-1668
Application 10/648,618
Technology Center 1700
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Decided:1 March 10, 2009
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Before EDWARD C. KIMLIN, TERRY J. OWENS, and
KAREN M. HASTINGS, Administrative Patent Judges.

KIMLIN, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal from the final rejection of claims 1-18 and 21-22.

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the Decided Date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2009-1668
Application 10/648,618

We have jurisdiction under 35 U.S.C. § 6(b). Claim 1 is illustrative:
1. A beverage precursor comprising:

(a) an infusible or wafer soluble material selected from the
group consisting of tea leaf, ground coffee, coffee or tea
particulates, cocoa, herbs and a mixture thereof; and

(b) aroma compound additive

wherein the infusible or water soluble material is present at a level that is
from about 0.5 to about 25.0% by weight less than a conventional amount
used for about a six to about eight ounce serving and the aroma compound is
an additive and not originating from the infusible or water soluble material
present, the conventional amount being defined as 1.90-2.50 grams for tea
leaf, 3.5-6.5 grams for ground coffee, 1.4-2.4 grams for coffee particulates,
0.30-0.90 grams for tea particulates, 1.0-2.5 grams for herb and 1.85-4.5
grams for cocoa.

The Examiner relies upon the following references in the rejection of
the appealed claims (Ans. 3):
Johnson 4,076,847 Feb. 28, 1978
Stoeckli 4,496,596 Jan. 29, 1985
Soughan 5,932,260 Aug. 03, 1999
Pultinas 0001460 A1 Apr. 18, 1979
Pflaumer 0011324 A1 May 28, 1980
Trumbetas 0560609 A1 Aug. 15, 1993
Daniel (as translated) DE 19919711 Nov. 16, 2000
Appellants’ claimed invention is directed to a beverage precursor and
the beverage composition comprising an aqueous solution of the precursor.
The precursor comprises an infusible or water soluble material, such as
ground coffee, and an aroma compound additive. The infusible or water
soluble material is present at a level that is from about 0.5 to about 25.0% by
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Appeal 2009-1668
Application 10/648,618

weight less than a conventional amount used for about a six to about eight
ounce serving.
Appealed claims 1-3, 10-12, 21 and 22 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by EP ‘609. The appealed claims stand
rejected 35 U.S.C. § 103(a) as follows:
(a) claims 1-18, 21 and 22 over DE ‘711,
(b) claims 1-3, 10-12, 21 and 22 over EP ‘609, Stoeckli,
EP ‘324, EP ‘460 or Soughan,
(c) claims 1-18, 21 and 22 over Johnson.
We have thoroughly reviewed each of Appellants’ arguments for
patentability. However, we find that the Examiner’s rejections are well
founded and supported by the prior art evidence relied upon. Accordingly,
we will sustain the Examiner’s rejections for the reasons set forth in the
Answer, and we add the following primarily for emphasis.
We consider first the § 102 rejection over EP ‘609. EP ‘609, like
Appellants, discloses a precursor composition for preparing a beverage
comprising coffee and an aroma compound, i.e., coffee oil. The Examiner
cites Example 1 of the reference and provides a calculation which
demonstrates that the exemplified beverage comprises soluble coffee at a
level that is within the claimed range of being less than a conventional
amount used for a 6-8 ounce serving (Ans. bridging 3-4). Appellants have
not refuted the Examiner’s calculation in any way, let alone in a manner
which demonstrates that the Examiner’s analysis is in error. Appellants
simply make the unsupported argument that
[t]here is no teaching whatsoever in the ‘609 reference that
even remotely suggests that less than conventional amounts
of infusible or water soluble materials selected may be used
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Appeal 2009-1668
Application 10/648,618

in combination with aroma compound additive that is carried
to make a superior precursor or beverage as claimed in the
present inventions.

(Br. 9, third para.). Appellants do not present any analysis that demonstrates
that the reference Example 1 does not, in fact, use less than the conventional
amounts of infusible or water soluble material, namely, coffee. Also,
Appellants offer no comment on the reference disclosure that “[a]ll of the
above samples gave a detectable improvement in the flavor and aroma of the
hot coffee beverage” (EP’609, p. 4, ll. 55-56). We do not understand
Appellants’ statement that “[t]he ‘609 reference is merely directed to a
coffee flavor and coffee aroma source of micromilled coffee that can be used
in coffee flavored food products like ice cream, candy, chewing gum and
fillings” (Br. 9, third para.). Manifestly, Example 1 of EP ‘609 prepares hot
coffee beverages.
Appellants assert that the claimed beverage composition “is superior
in that when reduced levels of infusible or water soluble material are present
in combination with aroma compound additive, the beverage is preferred by
consumers when compared to conventional beverages made with infusible or
water-soluble material at typical levels and in the absence of aroma
compound additive” (Br. bridging 8-9). However, Appellants fail to cite any
particular objective evidence of such superiority or preference by consumers
which may indicate unexpected results associated with compositions within
the broad scope of the appealed claims. Certainly, it is not within the
province of this Board to independently ferret out evidence of record and
interpret it in a light most favorable to Appellants. Furthermore, the
Examiner provides a thorough analysis of the sole Example in Appellants’
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Appeal 2009-1668
Application 10/648,618

Specification and sets forth valid criticisms of the limited probative value of
the Example to the extent that it falls far short of outweighing the evidence
of obviousness of record.2 Significantly, Appellants have not rebutted the
Examiner’s analysis and, as noted by the Examiner, evidence of unexpected
results is ineffective for rebutting a rejection under § 102.
Concerning the various § 103 rejections of the appealed claims,
Appellants have not refuted the Examiner’s factual determination that all of
the applied references employ the concept of adding an aroma compound in
combination with a soluble beverage substrate. To the extent the references
do not expressly disclose the claimed amounts of infusible or water soluble
material, we fully concur with the Examiner that it would have been obvious
for one of ordinary skill in the art to formulate a beverage precursor and
beverage compositions comprising the amounts of coffee, tea, etc. in
accordance with the particular taste of the consumer. We agree with the
Examiner that “it is expected that the flavor attributed to a reduction in water
soluble material may be met by adding an aroma additive to such degree as
to make up for any loss in flavor” (Ans. 9). We subscribe to the Examiner’s
position that “the particular amount of aroma agent to be added to a soluble
or infusible tea or coffee is seen as nothing more than a matter of preference
depending on the particular flavor desired and degree of flavoring” (id.).
It is well settled that where patentability is predicated upon a change
in a condition of a prior art composition, such as a change in concentration
or the like, the burden is on the Applicant to establish with objective
evidence that the change is critical, i.e., it leads to a new, unexpected result.
In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990); In re Aller, 220 F.2d

2 We direct attention to the analysis set forth at pages 8-9 of Answer.
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Application 10/648,618

454, 456 (CCPA 1955). In the present case, Appellants have proffered no
objective evidence which establishes criticality for compositions within the
broad scope of the appealed claims.
In conclusion, based on the foregoing and the reasons well stated by
the Examiner, the Examiner’s decision rejecting the appealed claims is
affirmed.

AFFIRMED

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