Ex parte NAIR et al.

Board of Patent Appeals and Interferences

Mar 29, 2002

08937297 (B.P.A.I. Mar. 29, 2002)

Before any allowance of this application, the specification should be amended to provide1
explicit antecedent basis for the claim temperature range of “about 2 to 15 C” set out in original claimo
2. The specification appears to only provide antecedent basis for “temperatures of 0 to
10 C, preferably 2 to 7 C” (i.e., at page 9 lines 26-27). See 37 CFR §1.75(d)(1) and Manual ofo o
Patent Examining Procedure (MPEP) § 608.01(o)(8th ed. Aug. 2001).
The opinion in support of the decision being entered today was not written for publication and
is not binding precedent of the Board.
Paper No. 19
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte MALATHY NAIR, JAMES W. GEOFFRION,
and MARK A. KOOYMAN
____________
Appeal No. 2001-0901
Application No. 08/937,297
____________
ON BRIEF
____________
Before GARRIS, WALTZ and TIMM, Administrative Patent Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the Examiner's refusal to allow claims 1-9
and 13-14 . Claims 10-12 and 15-30 have been canceled.1
Appeal No. 2001-0901
Application No. 08/937,297
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Application No. 08/937,297
BACKGROUND
The subject matter on appeal relates to a food colorant blend. The blend comprises a first food
colorant which is an aqueous solution of water soluble annatto with a pH of about 12.5 to 13.5 and a
total solids content of about 14-18%, and a second food colorant which is an aqueous caramel
solution with a pH of about 6.5 to 6.9, a solids content of about 35 to 55%, and an ammonium content
of less than 0.05%. These two colorants are combined such that the weight ratio of the first colorant
(i.e., annatto) to the second colorant (i.e., caramel) ranges from 1:1 to 4:1, and the blend has a pH from
about 9.1 to 10. Appellants teach that it is essential that the blended product have a pH of about 9.1 to
10 (see specification, page 8, lines 20-22 and brief, page 3) in order to overcome problems
experienced with previous attempts to use an annatto- caramel colorant (see specification, pages 3-5
and brief page 4).
Claim 1 is representative of the subject matter on appeal and is reproduced below:
1. A food colorant blend comprising:
A. a first colorant comprising an aqueous solution of water soluble annatto having a pH
ranging from about 12.5 to 13.5 and a total solids content of about 14 to 18%,
B. a second colorant comprising an aqueous caramel solution having a solids content of
about 35 to 55%, a pH of about 6.5 to 6.9, and an ammonia content of less than
0.05%,
wherein the weight ratio to first colorant to second colorant ranges from about
one part of first colorant to one part second colorant to about four parts first
colorant to second colorant (1-4:1), and
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Application No. 08/937,297
wherein the annatto-caramel colorant blend has a pH of from about 9.1 to 10.
The prior art of record relied upon by the Examiner as evidence of obviousness are:
Kocher 2,831,775 Apr. 22, 1958
Rikon et al. 4,335,153 Jun. 15, 1982
Clark et al. 4,416,700 Nov. 22, 1983
Wullschleger et al. (Wullschleger) 5,223,298 Jun. 29, 1993
Applicants’ admission of prior art as stated on page 7, lines 13-26, of the specification (AAPA)
Claims 1-9 and 13-14 are rejected under 35 U.S.C. § 103(a) as being unpatentable over
Clark in view of either AAPA or Kocher, and further in view of Wullschleger or Rikon.
We refer to the brief, the reply brief, and to the answer for a complete exposition of the
opposing viewpoints expressed by the Appellants and by the Examiner concerning the above noted
rejection.
OPINION
We appreciate the thoroughness with which the Examiner has reviewed and considered these
claims. However, for the reasons set forth below, this § 103 rejection cannot be sustained.
The appealed claim 1 calls for a blend of two food colorants, annatto and caramel. AAPA
establishes that an annatto colorant with the pH range and solids content range as claimed was known.
Clark discloses that a caramel colorant with a pH of “about 7" was known (the Examiner’s position
being that a pH of “about 7" satisfies the claimed pH requirement of “about 6.5 to 6.9"), although
Clark is silent as to any numerical values for the solids content of his caramel solution. The Examiner
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Application No. 08/937,297
sets out on page 5 of the answer that blending two known colorants to make a third color hue would
have been prima facie obvious; and that optimizing the amounts/ratio of colorants to define a desired
hue would have been prima facie obvious optimization of a known result effective variable (that is, the
amounts/ratio of the two colorants is a known result effective variable for obtaining a desired color
hue). This may be true, however, we do not agree with the Examiner’s position that optimizing the
amounts/ratio of colorants to obtain the here claimed pH range, or to adjust the pH of the resulting
blend to the Appellants’ claimed essential pH range, would have been a prima facie obvious
optimization of a known result effective variable.
The Examiner’s position on this point is summarized on page 23 of the answer as follows:
Again, it is important to note that the product in the reference combination
contains two colorants each of which have initial pH values within the ranges recited.
The pH of the colorant blend is therefore inherently dependent upon the amounts/weight
ratio of the colorants. Therefore blending the two components, solely for the purpose
of achieving the desired final hue, would also inherently adjust the pH of the final blend.
The amounts/weight ratio of the colorants is a result effective variable . . . as discussed
above. Therefore the pH of the final colorant blend is also a result effective variable,
dependent upon the amounts/weight ratio of the colorants and the desired final color of
the end product, absent a showing of unexpected results.
We believe that this reasoning is deficient. The final end product colorant blend pH will depend
on the relative amounts of each colorant used, since as here claimed each colorant has a specified, non-
overlapping pH range. But this does not lead to the conclusion that the pH is a known result effective
variable when combining two colorants. What desired result is the pH effecting? We do not see any
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Application No. 08/937,297
evidence in this record to support the Examiner’s position that the pH is a known result effective
variable in this situation. There is simply no teaching or suggestion in the evidence of record to adjust
the pH of a colorant blend, or to achieve a particular pH range as here claimed.
Alternately, it appears the Examiner is stating the claimed pH will be an inherent result of
blending these two colorants. However, “[i]nherency . . . may not be established by probabilities or
possibilities. The mere fact that a certain thing may result from a given set of circumstances is not
sufficient.” See In re Oelrich, 666 F. 2d 578, 581, 212 USPQ 323, 326 (CCPA 1981), quoting
Hansgirg v. Kemmer, 102 F. 2d 212, 214, 40 USPQ 665, 667 (CCPA 1939). Further, a
retrospective view of inherency is not a substitute for some teaching or suggestion which supports the
selection and use of the various elements in a particular claimed combination. See In re Newell, 891
F.2d 899, 901, 13 USPQ2d 1248, 1250 (Fed. Cir. 1989)
As the Appellants stress in their reply brief (see page 2), specific steps are taken to actually
treat the blend to assure the essential pH range is achieved. This is taught in the specification at page
12, lines 23-30:
When admixed in the weight ratios described above, the resultant blend will
have a pH value ranging from about 9 to 10, depending in part upon the particular
ratios of alkaline annatto to “neutral” caramel colorant employed.
The blend is then treated as described above with either KOH or a strong
mineral acid to adjust the pH of the annatto-caramel colorant blend to desired values
within the essential pH range of 9.1 to 10.0.
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In light of the aforementioned quotation, it is clear that while the blend may have a pH within
the claimed range, it also may not have such a pH (and will then need to be treated). Thus, it cannot
be said that the claimed pH range will inherently result (i.e., always result) upon blending the two
claimed colorants together. See Oelrich, 666 F.2d at 581, 212 USPQ at 326.
For the reasons set forth above, we agree with the Appellants that there is no appreciation in
the art of record that pH of the colorant blend is a known result effective variable when combining two
colorants to make a colorant blend. It is also clear that the claimed pH range will not inherently occur
(i.e., always occur) upon blending these two colorants. Under these circumstances, we cannot accept
the Examiner's position that it would have been prima facie obvious optimization of a known result
effective variable to obtain the resulting pH range claimed herein of the colorant blend.
In light of the foregoing, we cannot sustain the Examiner's § 103 rejection of the appealed
claims.
OTHER ISSUES
A continuation application, Serial No. 09/697,172, of this application was allowed on February
1, 2002 and appears to contain claims drawn to subject matter at least similar to the
combination set forth in claim 9 herein. The Examiner and the Appellants should review those claims
and consider whether an obviousness type double patenting rejection should be made.
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CONCLUSION
The decision of the Examiner is reversed.
REVERSED
BRADLEY R. GARRIS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
THOMAS A. WALTZ ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
CATHERINE TIMM )
Administrative Patent Judge )
BRG/tdl
John O’ Toole
P.O. Box 1113
Minneapolis, MN 55440
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