Ex Parte Perry

Board of Patent Appeals and Interferences

Apr 11, 2011

10249014 (B.P.A.I. Apr. 11, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte STEPHEN C. PERRY
__________

Appeal 2010-011411
Application 10/249,014
Technology Center 1700
__________

Before DONALD E. ADAMS, ERIC GRIMES, and FRANCISCO C.
PRATS, Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to sugar
substitutes. The Examiner has rejected the claims as obvious. We have
jurisdiction under 35 U.S.C. § 6(b). We reverse.
STATEMENT OF THE CASE
The Specification discloses that acesulfame potassium is a well-
known low-calorie sweetener (Spec. 2: ¶0008). The Specification discloses
that “[w]hen used in combination with specific bulking agents, acesulfame
Appeal 2010-011411
Application 10/249,014

2
potassium can be used to form a good-tasting sweetener that shares many
important characteristics with sucrose” (id. at ¶0009) and that “bakes like
sugar allowing for … safe foods for diabetics” (id. at ¶0008).
Claims 4, 5, 10 and 21 are on appeal. Claims 4 and 21 are the
independent claims and read as follows:
4. A diabetically-safe sugar substitute, comprising:
a composition including a mixture of acesulfame potassium; and a
bulking agent being a mixture of gluco-mannitol and gluco-sorbitol;
and wherein the ratio of the acesulfame potassium to the mixture of
gluco-mannitol and gluco-sorbitol is in the range of 0.20 to 0.35 percent by
weight in a mixture to be used as a sugar substitute; said sugar substitute
having a taste, texture, mouth feel and visual appearance of sugar.

21. A low calorie sugar replacement composition that is safe for
diabetics and that looks like sugar and can be used in activities such as
baking, cooking and general sweetening of food and beverages,
said sugar substitute having approximately the same texture, taste,
mouth feel and density as table sugar, said sugar substitute comprising:
acesulfame potassium; and
a bulking agent comprising erythritol, the ratio acesulfame potassium
to the erythritol is in the range of 0.20 to 0.35 percent by weight.

Issue
The Examiner has rejected claims 4, 5, 10 and 21 under 35 U.S.C.
§ 103(a) as being obvious in view of Yatka.1 The Examiner finds that Yatka
discloses “the conventional use and combination of erythritol, mannitol,
thaumatin, sorbitol, stevioside, acesulfame K, and mixtures thereof”
(Answer 3). The Examiner further finds that “the ratios claimed are … no
more than optimization and well-within the skill of the art” (id.). The

1 Yatka et al. US 6,264,999, July 24, 2001
Appeal 2010-011411
Application 10/249,014

3
Examiner concludes that it “would have been obvious to a person of
ordinary skill in the art … to use the claimed ratios … because the use and
manipulation of high intensity sweeteners and bulking agents is well-known
in the art” (id.).
Appellant contends that Yatka does not suggest the claimed sugar
substitute, which “looks like sugar, tastes like sugar, has a mouth feel of
sugar, [and] has a texture of sugar” (Appeal Br. 9) because Yatka “is related
solely and specifically to chewing gum, has a different consistency than
regular sugar, does not look like regular sugar and is not a sugar substitute”
(id.).
The issue presented is: Does the evidence of record support the
Examiner’s conclusion that the claimed sugar substitutes would have been
obvious based on Yatka?
Findings of Fact
1. Yatka discloses “a method of producing chewing gum with a new
bulk sweetener, specifically erythritol” (Yatka, col. 1, ll. 57-58).
2. Yatka discloses that the erythritol “may be combined with other
bulk sweeteners for use in chewing gum, including but not limited to
sucrose, dextrose, fructose, maltose, maltodextrin and xylose, as well as
sugar alcohols including but not limited to sorbitol, mannitol,” etc. (id. at
col. 2, ll. 1-5).
3. Yatka discloses that the “erythritol, may be combined in the gum
formulation or co-dried or blended with the other bulk sweeteners prior to
use in the gum formulation” (id. at col. 2, ll. 7-12).
Appeal 2010-011411
Application 10/249,014

4
4. Yatka discloses that the “erythritol, may also be combined with
high-intensity sweeteners including, but not limited to, … acesulfame K”
(id. at col. 2, ll. 12-15).
5. Yatka discloses that
[g]enerally, the ingredients are mixed by first melting the gum
base and adding it to the running mixer.… Color or emulsifiers
may also be added at this time. A softener such as glycerin may
also be added at this time, along with syrup and a portion of the
bulking agent/sweetener. Further portions of the bulking
agent/sweetener may then be added to the mixer. A flavoring
agent is typically added with the final portion of the bulking
agent. A high-intensity sweetener is preferably added after the
final portion of bulking agent and flavor have been added.
(Id. at col. 9, ll. 26-38.)
Analysis
Independent claims 4 and 21 are each directed to a sugar substitute
comprising a mixture of acesulfame potassium and a bulking agent that has
the look, taste, texture, and mouth feel of sugar. The Examiner concludes
that Yatka suggests the claimed compositions because Yatka discloses the
use of acesulfame potassium in combination with bulk sweeteners
(erythritol, mannitol, and sorbitol) for sweetening chewing gum (Answer 3).
Appellant argues that Yatka “is related solely and specifically to
chewing gum,” and does not suggest “a composition that looks like sugar,
tastes like sugar, has a mouth feel of sugar, has a texture of sugar and can be
used by diabetics safely as a sugar substitute for sweetening foods and
beverages and for cooking and baking” (Appeal Br. 9).
Appellant’s arguments are persuasive that the Examiner has not
adequately explained how Yatka suggests a sugar substitute that has the
Appeal 2010-011411
Application 10/249,014

5
same look, taste, texture, and mouth feel as sugar. Yatka discloses the use of
bulk sweeteners to sweeten gum preparations, and also discloses that the
bulk sweetener(s) can be combined with acesulfame potassium. However,
Yatka does not suggest that the sweetening composition be formulated to
resemble sugar in its taste, texture, mouth feel, and visual appearance.
Further, Yatka discloses its sweetening composition only for making
chewing gum, and discloses that the high intensity sweeteners, e.g.
acesulfame potassium, are preferably added to the gum base after the bulk
sweeteners have been added. Thus, Yatka does not suggest a claimed
composition that contains a bulk sweetening agent and acesulfame
potassium in amounts that result in a composition resembling the taste,
texture, mouth feel, and visual appearance of sugar.
Conclusion of Law
The evidence of record does not support the Examiner’s conclusion
that the claimed sugar substitutes would have been obvious based on Yatka.
SUMMARY
We reverse the rejection claims 4, 5, 10 and 21 under 35 U.S.C.
§ 103(a).

REVERSED

lp