Ex Parte Letourneau et al

Patent Trial and Appeal Board

Aug 29, 2018

12956940 (P.T.A.B. Aug. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/956,940 11/30/2010
134769 7590 08/31/2018
Sterne, Kessler, Goldstein & Fox P.L.L.C.
1100 New York Avenue, N.W.
Washington, DC 20005
FIRST NAMED INVENTOR
Stephen A. Letourneau
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.
3711.6220000 1259
EXAMINER
HEGGESTAD, HELEN F
ART UNIT PAPER NUMBER
1793
NOTIFICATION DATE DELIVERY MODE
08/31/2018 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):
e-office@sternekessler.com
tdurkin @sternekessler.com
tspruill@sternekessler.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte STEPHEN A. LETOURNEAU and
RASHMI TIW ARI
Appeal2017-010552
Application 12/956,940
Technology Center 1700
Before DONNA M. PRAISS, CHRISTOPHER C. KENNEDY, and
JENNIFER R. GUPTA, Administrative Patent Judges.
GUPTA, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 8 and 31-36, which constitute all the claims
pending in this application. Claims 1-7 and 9-30 have been cancelled. We
have jurisdiction under 35 U.S.C. § 6(b). We affirm.
1 In this Decision, we refer to the Specification filed November 30, 2010
("Spec."), the Non-Final Office Action dated January 9, 2017 ("Non-Final
Act."), the Appeal Brief filed April 10, 2017 ("Appeal Br."), the Examiner's
Answer dated June 8, 2017 ("Ans."), and the Reply Brief filed August 7,
2017 ("Reply Br.").
2 Appellants identify the real party in interest as Tropicana Products, Inc.
Appeal Br. 3.
Appeal2017-010552
Application 12/956,940
The subject matter of the claims on appeal relates to juice beverages.
Claim 8, reproduced below from the Claims Appendix of the Appeal Brief,
is illustrative of the claims on appeal.
8. A juice beverage comprising:
at least one liquid derived from one or more fruits, one or
more vegetables, or combinations thereof, wherein the at least
one liquid comprises clarified carrot concentrate, tomato water,
grapefruit serum, coconut water, cucumber serum, or
combinations thereof; and
solids derived from one or more fruits, one or more
vegetables, or combinations thereof, wherein the solids are
derived from one or more fruits or one or more vegetables
distinct from the one or more fruits and one or more vegetables
from which the at least one liquid is derived,
wherein the taste of the beverage is identifiable as at least
the one or more fruits or one or more vegetables from which the
solids are derived, as determined by a sensory panel of trained
testers; and
wherein the appearance of the beverage is identifiable as
a juice of at least the fruits or vegetables from which the at least
one liquid is derived as determined by a sensory panel of
trained testers;
wherein the beverage meets the standard of identity, as
set by the U.S. Food and Drug Administration, of a 100% juice;
and
wherein the beverage comprises less than 100 calories
per 8 ounce serving.
Appeal Br. 16 (Claims App.).
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Application 12/956,940
REJECTIONS
The Examiner maintains the following rejections on appeal:
Rejection 1: Claims 8 and 31-36 under 35 U.S.C. § 112 (pre-AIA),
second paragraph, as indefinite (Non-Final Act. 3--4; Ans. 2-3); and
Rejection 2: Claims 8 and 31-36 under 35 U.S.C. § 103(a) as
unpatentable over Chen et al. (US 5,756,141, issued May 26, 1998)
("Chen") in view of Johnson (US 2,115,815, issued May 3, 1938) (Non-
Final Act. 6; Ans. 5).
DISCUSSION
Rejection 1
The Examiner finds that claim 8 is indefinite for use of the phrase
"wherein the taste of the beverage is identifiable as at least the one or more
fruits or vegetables from which the solids are derived, as determined by a
sensory panel" because "the taste could be subjective, and could vary from
panel to panel, and these findings would not be readily available to the
public, so that they would know the metes and bounds of the claims." Non-
Final Act. 4.
The Examiner also finds that claim 8 is indefinite for use of the phrase
"where the appearance of the beverage is identifiable as a juice of at least the
fruits or vegetables from which the at least one liquid is device," because
"[i]t is not clear from the claim what one would consider to be the
'appearance of the beverage,"' and " [ n] o measurements have been included
in order to compare such to the prior art. . . . . Therefore, one does not know
the metes and bounds of the claims." Non-Final Act. 5.
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Application 12/956,940
Appellants argue that the Declaration under 37 C.F.R. § 1.132
executed by Rashmi Tiwari on April 18, 2016, demonstrates that taste panels
are well known in the art and that such taste panels can taste and measure the
appearance of the beverage, and thus one of ordinary skill in the art would
readily be able to determine, by relying on sensory panel measurements,
whether a particular beverage meets the requirements of claim 8. Appeal
Br. 7-9; Deel. ,r,r 9-11.
In the present case, the taste and appearance of a beverage, even if
determined by a panel of trained testers that is well known and typically
used in the art, implicates a person's taste and/or subjective opinion, and
would necessarily vary from panel to panel.
Claim language whose meaning depends entirely on personal taste or
a person's subjective opinion without any guidance provided in the claim
language or written description is indefinite. See Application of Musgrave,
431 F.2d 882, 893 (1970) (noting that "[a] step requiring the exercise of
subjective judgment without restriction might be objectionable as rendering
a claim indefinite"); Sonix Tech. Co. v. Publ'ns Int'!, Ltd., 844 F.3d 1370,
1377-78 (Fed. Cir. 2017); see also, e.g., Interval Licensing LLC v. AOL,
Inc., 766 F.3d 1364, 1371-72 (Fed. Cir. 2014) (holding the claim phrase
"unobstructive manner" indefinite because the phrase was "purely
subjective," and the specification failed "to provide the clarity that the
subject claim language needs."); Datamize, LLC v. Plumtree Software, Inc.,
417 F.3d 1342, 1350-52 (Fed. Cir. 2005) (holding the claim term
"aesthetically pleasing," which "is completely dependent on a person's
subjective opinion," indefinite because, even though the preferred
embodiment provided "examples of aesthetic features of screen displays that
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Application 12/956,940
can be controlled by the authoring system," the specification did not indicate
"what selection of these features would be 'aesthetically pleasing'").
Appellants' Specification and claims fail to provide sufficient
guidance or an objective standard for identifying the metes and bounds of
the claims-when the taste of the beverage is or is not identifiable as a fruit
or vegetable from which the beverage solids are derived, and the appearance
of the beverage is or is not identifiable as a fruit or vegetable from which the
beverage liquid is derived. Thus, we are not persuaded that the Examiner
erred reversibly in rejecting claim 8 and 31-36 as indefinite.
Rejection 2
The Examiner finds that Chen discloses an ultrafiltration process for
producing a juice product containing a permeate ( clarified juice/ serum) and
retentate (solid/pulp). Non-Final Act. 6; Chen Abstract, 7:49---60, 11:5-50.
The Examiner finds that Chen discloses that its juice beverage may be
derived from blending grapefruit juice (serum) 3 and banana juice. Non-
Final Act. 6; Chen 11 :45-50. The Examiner finds that Chen discloses that
the solids of its beverage can be derived from grapefruit and mixed with
banana juice to reduce the bitter flavor of the grapefruit retentate (pulp).
Non-Final Act. 6-7; Chen 10:53-55, 11:45-56, 12:7-11. The Examiner also
finds that Chen discloses that its ultrafiltration membrane can be selected to
pass flavor and aroma components to either the permeate or retentate. Non-
Final Act. 7 (citing Chen 7:49-70). Based on Chen's disclosure, the
Examiner finds that Chen teaches that its beverage tastes like at least one
3 Appellants do not dispute that grapefruit juice is grapefruit serum. See
Appeal Br. generally.
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Application 12/956,940
fruit of its solid components, and its beverage looks like at least one fruit of
its liquid components. Non-Final Act. 7-8; see also Chen 2:46-55, 11: 11-
16.
Appellants argue that Chen does not teach that its beverage would
taste like the juice of its solid component, but look like the juice of its liquid
component. Appeal Br. 10-11.
Appellants' argument is not persuasive. As discussed above, although
not expressly stated, Chen teaches that its beverage would taste like its solid
component (grapefruit), and look like the juice of its liquid component
(banana/grapefruit juice). Chen 4:46-55 ( describing its objective as
producing a better tasting grapefruit juice that has a desirable natural fruit
skin color); see also Chen 7:61---63, 11: 11-16 (describing the clarified
banana/grapefruit juice as having a yellow color).
Appellants' argument that Chen teaches the opposite of what is
claimed by teaching that its beverage taste is masked using its liquid
component, and thus, not identifiable as the solid component is not well-
taken. Appeal Br. 11. Chen teaches that the grapefruit retentate has a
slightly bitter flavor that can be overcome by adding clear banana juice.
Chen 12:7-10. Overcoming bitterness does not mean that the juice would
no longer taste like grapefruit juice. Rather, the sweet banana juice is added
in Chen to provide a better tasting grapefruit juice (Chen 4:47-50), i.e.,
without a bitter aftertaste (id. at 4:23-30).
Appellants also argue that Johnson does not remedy the deficiencies
of Chen. As discussed above, we do not find any deficiencies in the
Examiner's findings regarding Chen. Moreover, the Examiner relies on
Johnson to reinforce the teachings in Chen. Ans. 16.
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We have carefully considered Appellants' arguments, but find them
unpersuasive. Because Appellants have failed to identify harmful error, we
sustain the Examiner's rejection of claims 8 and 31-36 over Chen in view of
Johnson.
DECISION
For the above reasons, the rejections of claims 8 and 31-36 are
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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