Ex Parte Prakash et alDownload PDFPatent Trial and Appeal BoardNov 15, 201714050840 (P.T.A.B. Nov. 15, 2017) Copy Citation United States Patent and Trademark Office 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 14/050,840 10/10/2013 Indra Prakash 12600.105128 5151 121055 7590 11/17/2017 Kina Rr SnalHina EXAMINER 1180 Peachtree Street Atlanta, GA 30309 DEES, NIKKI H ART UNIT PAPER NUMBER 1791 NOTIFICATION DATE DELIVERY MODE 11/17/2017 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): atlipdocketing @ kslaw. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte INDRA PRAKASH, JUVENAL HIGIRO, ROBERT SCOTT, and GIL MA Appeal 2017-002065 Application 14/050,840 Technology Center 1700 Before BEVERLY A. FRANKLIN, DONNA M. PRAISS, and JEFFREY R. SNAY, Administrative Patent Judges. PRAISS, Administrative Patent Judge. DECISION ON APPEAL1 1 In this Opinion, we refer to the Specification filed Oct. 10, 2013 (“Spec.”), the Final Office Action dated Nov. 13, 2014 (“Final Act.”), the Appeal Brief filed Dec. 14, 2015 as amended Apr. 25, 2016 (“App. Br.”), the Examiner’s Answer dated Sept. 22, 2016 (“Ans.”), and the Reply Brief filed Nov. 22, 2016 (“Reply Br.”). Appeal 2017-002065 Application 14/050,840 Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner’s decision to reject claims 1, 2, 13—15, and 27—333 as obvious under 35 U.S.C. § 103(a). App. Br. 9.4 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. The invention relates to beverages containing rare sugars and sweetness enhancers where the sweetness enhancer is present in a concentration at or below its sweetness recognition threshold. Spec. 1:10—12. According to Appellants, natural caloric sweeteners such as fructose, glucose, and, especially, sucrose, impart a pleasant taste to beverages whereas non-caloric or low caloric sweeteners, many of which are synthetic chemicals, do not exhibit the same desirable characteristics of sugar. Id. at 1:17—26. D-psicose, by comparison, is a natural sweetener that has almost no calorie content and that is found in small quantities in molasses and isomerized sugars making it a rare sugar. Id. at 1:27—31. Claim 1 is illustrative (paragraphing and numbering added): 1. A mid-calorie beverage comprising [1] D-psicose and [2] a sweetness enhancer of formula III: 2 The Coca-Cola Company is the real party in interest and also the Applicant. 3 The rejection of claim 16 stands withdrawn in view of the cancellation of claim 16. Ans. 5. 4 Both the Appeal Brief and the Reply Brief fail to include page numbers. For purposes of this Decision, citations to the Appeal Brief and the Reply Brief herein assign consecutive numbers to each page beginning with the first page as page number 1. 2 Appeal 2017-002065 Application 14/050,840 0 H r> NH;;, O. R (III) wherein R is selected from the group consisting of alkyl, substituted alkyl, carbocyclyl, substituted carbocyclyl; aryl, substituted aryl, arylalkyl, substituted arylalkyl, heterocyclyl, substituted heterocyclyl, heteroalkyl, substituted heteroalkyl, heteroaryl, substituted heteroaryl, heteroarylalkyl and substituted heteroarylalkyl; and wherein the sweetness enhancer is present in a concentration at or below its sweetness recognition threshold. App. Br. 20 (Claims Appendix). OPINION The Examiner finds that claims 1,2, 13—15, and 27—33 would have been obvious to one of ordinary skill in the art at the time of the invention over Fujihara5 and Tachdjian6 as evidenced by Leffmgwell7 for the reasons stated on pages 3—6 of the Final Office Action. Appellants do not separately argue the claims rejected, therefore, we select claim 1 as representative. See 37 C.F.R. § 41.37(c)(l)(iv). Appellants argue that the Examiner erred in rejecting the claims over the cited references using an obvious to try rationale because (1) the Examiner has not identified any recognized problem or need in the art to 5 Fujihara et al., US 2009/0304891 Al, pub. Dec. 10, 2009 (“Fujihara”). 6 Tachdjian et al., US 2011/0224155 Al, pub. Sept. 15, 2011 (“Tachdjian”). 7 John Feffmgwell, Flavor Properties of FEMA GRAS List 25 Flavor Chemicals: A preliminary assessment, 36 Perfumer & Flavorist 24—31 (June 2011). 3 Appeal 2017-002065 Application 14/050,840 enhance the sweetness of D-psicose containing beverages and (2) the Examiner has not shown a reasonable expectation of success that FEMA GRAS flavor 47018 would enhance D-psicose. App. Br. 10—11. Appellants contend that “the ability of a given compound to enhance the sweetness of sweetener A is not predictive of that compound’s ability to enhance the sweetness of sweetener B.” Id. at 17—18 (footnote citing an Interview Summary dated Jan. 23, 2015 and Applicant’s summary of the interview dated Feb. 23, 2015 omitted). The Examiner responds that paragraph 542 of Tachdjian “provide[s] motivation to enhance the sweetness of ‘known sweeteners’ which is considered to include D-psicose.” Ans. 6. The Examiner finds that Tachdjian teaches including a sweetness enhancer for the purpose of reducing the concentration of the known sweetener. Id. at 7. Therefore, the Examiner concludes, the motivation to include a sweetness enhancer in the beverages of Fujihara comes from the prior art. Id. The Examiner also finds that Tachdjian generally teaches sweetness enhancement of known sweeteners, of which D-psicose is one, therefore, it would have been reasonable to expect that the sweetness of this known sweetener compound would be enhanced by any of Tachdjian’s sweetness enhancer compounds, which include FEMA 4701. Id. at 8. In further support of this finding, the Examiner quotes Tachdjian’s explicit teaching that its method “enhances] the sweet taste of an ingestible composition comprising contacting the ingestible composition or precursors thereof with 8 The terms FEMA GRAS flavor 4701 and FEMA 4701 are used interchangeably. See, e.g., Spec. 15 (identifying the same chemical structure as FEMA GRAS flavor 4701 and FEMA 4701). 4 Appeal 2017-002065 Application 14/050,840 a chemosensory receptor ligand modifier.” Id. (quoting Tachdjian | 68). Regarding the expectation of success in enhancing the sweetness of a known sweetener with FEMA 4701, the Examiner further cites Leffmgwell as evidence that it was known that FEMA 4701 enhances the sweetness of sucrose. Id. at 9. In the Reply Brief, Appellants argue that “one of skill in the art would understand that sweetness enhancement is unpredictable” and that “there is no such thing as a ‘known sweetness enhancer’ without regard to substrate.” Reply Br. 3^4. Appellants further assert that with such unpredictability “one of skill in the art would not assume that simply because FEMA GRAS flavor 4701 enhances sucrose, it would also enhance D-psicose.” Id. at 7. Appellants concede that there are known sweeteners, but maintain that there are no known sweetness enhancers. Id. at 3. Regarding motivation from Tachdjian to combine a known sweetener with a sweetness enhancer, Appellants contend that paragraph 542 “at best. . . teaches that if a sweetness enhancer is included, the concentration of the sweetener is reduced” and that a skilled artisan “would not agree that it is universally desirable to reduce the amount of a sweetener in an ingestible composition by means of a sweetness enhancer — without regard to the identity of the sweetener, the ingestible composition and the sweetness enhancer.” Id. at 4 (emphasis omitted). Appellants further argue that the Examiner “made no finding as it relates to a recognized problem or need in the art” yet also contend that a skilled artisan “would clearly understand that the existence of any ‘problem’ (i.e., need to reduce sweetener concentration) would depend on the specific characteristics of the sweetener.” Id. at 6. According to Appellants, the 5 Appeal 2017-002065 Application 14/050,840 Examiner’s determination that FEMA 4701 ’s comparative enhancement of D-psicose versus sucrose (30% versus 100%) fails to demonstrate unexpected results is “improper.” Id. at 6. Appellants assert that the unexpected result is not the degree of enhancement but, rather, that FEMA 4701 enhances D-psicose at all. Id. at 6—7. We are not persuaded by Appellants’ arguments for the reasons stated by the Examiner in the Final Office Action and Answer. We add the following primarily for emphasis. The difficulty with Appellants’ argument is that Tachdjian explicitly teaches a benefit of combining its chemosensory receptor modifiers with one or more known sweeteners is “to reduce the concentration of the known sweetener required to prepare an ingestible composition having the desired degree of sweetness.” Tachdjian 1542. Appellants’ assertion that it is not “universally desirable to reduce the amount of a sweetener in an ingestible composition” (Reply Br. 4) is not persuasive of reversible error by the Examiner in combining Tachdjian’s sweetness enhancer with Fujihara’s sweetener D-psicose. Appellants do not dispute that D-psicose is a known rare sugar sweetener. Fujihara describes D-piscose as being “contained at an extremely small amount in molasses and isomerized sugars.” Fujihara 13. Fujihara also teaches that “the use of D-psicose alone is not practical” because it has to be used at such a large amount to give sweetness to a food such that the food gets a heavy taste. Id. Appellants’ Specification similarly acknowledges that D-psicose is a sweetener that is used in small amounts. It is approved for use in a non-alcoholic beverage at a maximum level of 2.1% (w/w) yet has a sucrose equivalence of only about 1.26%. Spec. 2:1—3. Therefore the rare sugar D-psicose is a known sweetener that would benefit 6 Appeal 2017-002065 Application 14/050,840 from Tachdjian’s modifier to achieve the desired degree of sweetness with a reduced concentration of sweetener. We also are not persuaded by Appellants’ argument (App. Br. 17) that Tachdjian’s modifier or sweetness enhancer (Tachdjian describes the function of its modifier as “enhancing the sweet taste of an ingestible composition”)9 is unpredictable at enhancing sweetness. Appellants assert as evidence of such unpredictability “the evidence of superior results shown in the declaration filed October 14, 2015, Point 30, which evidences a 30% increase in the sucrose equivalence (SE) of beverages containing D-psicose and 15 ppm FEMA GRAS flavor 4701.” App. Br. 18. As noted by the Examiner, Appellants’ declaration was filed on October 10, 2014 and the enhancement of the sweetness of sucrose using FEMA 4701 was known in the art as evidenced by Leffmgwell. Ans. 9; Leffmgwell 27; see also App. Br. 17 (“Leffmgwell, teaches that FEMA GRASS flavor 4701 is a sucrose enhancer.”). Appellants do not adequately explain why a person having skill in the art, armed with the knowledge that FEMA 4701 is a sweetness enhancer that is known to increase the sweetness of sucrose, would not reasonably expect enhancement of the sweetness of D-psicose. Moreover, Appellants do not direct us to any evidence of a known sweetener that is not enhanced by FEMA 4701, let alone a sweetener structurally similar to D-psicose, to support its assertion that it was an unexpected result that FEMA 4701 enhances D-psicose at all (Reply Br. 7). Appellants assert, without explanation, that Experiment 5 in Tachdjian “suggests” that its sweetness enhancers would not be expected to enhance the sweetness of any known sweetener (App. Br. 17). However, 9 Tachdjian 168; Ans. 8. 7 Appeal 2017-002065 Application 14/050,840 “obviousness cannot be avoided simply by a showing of some degree of unpredictability in the art so long as there was a reasonable probability of success.” Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1364 (Fed. Cir. 2007). “Obviousness does not require absolute predictability of success. ... [A]ll that is required is a reasonable expectation of success.” In re O'Farrell, 853 F.2d 894, 903-04 (Fed. Cir. 1988). Thus, the Examiner’s finding that Tachdjian generally teaches applying its sweetness enhancers for any and all sweeteners including the claimed D-psicose (Ans. 7; Final Act. 4) is supported by the preponderance of the evidence cited in this appeal. Moreover, the Examiner has provided a reason for combining Tachdjian’s sweetness enhancer with Fujihara’s rare sugar sweetener D-psicose, present at extremely small amounts, and that is to reduce the concentration of the sweetener required for the desired degree of sweetness. Ans. 7; Final Act. 4. The Examiner’s combination of the cited art is reasonable and the underlying findings are supported by the preponderance of the evidence cited in this appeal record. Appellants’ reliance in their briefs (App. Br. 13; Reply Br. 6) on Leo Pharma. Prods., Ltd. v. Rea, 726 F.3d 1346 (Fed. Cir. 2013) is inapplicable to the obviousness rejection before us on appeal. In Leo Pharma, the inventors recognized and solved a storage stability problem of certain formulations. Id. at 1353. Through experimental evidence, Leo Pharmaceuticals established that the prior art combinations of a vitamin D analog with a corticosteroid did not exhibit storage stable properties. Id. at 1354. In comparison, Appellants have not directed us to a problem that was not appreciated by the prior art. It was known that the use of D-psicose alone was not practical as a sweetener. Fujihara 13. The solution of adding 8 Appeal 2017-002065 Application 14/050,840 sweetener enhancers to known sweeteners was also known to reduce the amount of sweetener to achieve the desired degree of sweetness and enhance the sweet taste of an ingestible composition. Tachdjian || 68, 542. In sum, we affirm the Examiner’s rejection of claims 1,2, 13—15, and 27—33 as obvious over Fujihara and Tachdjian as evidenced by Leffmgwell. CONCLUSION We affirm the Examiner’s rejection of claims 1, 2, 13—15, and 27—33 as obvious under 35 U.S.C. § 103(a). DECISION The Examiner’s decision is 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)(1). AFFIRMED 9 Copy with citationCopy as parenthetical citation