Ex Parte Prakash et alDownload PDFPatent Trials and Appeals BoardMay 15, 201914046514 - (D) (P.T.A.B. May. 15, 2019) 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. 14/046,514 10/04/2013 Indra Prakash 12600.105135 1050 121055 7590 05/17/2019 Kina Rr SnalHina EXAMINER 1180 Peachtree Street Atlanta, GA 30309 WONG, LESLIE A ART UNIT PAPER NUMBER 1793 NOTIFICATION DATE DELIVERY MODE 05/17/2019 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, GIL MA, AVETIK MARKOSYAN, and YOULUNG CHEN Appeal 2018-005899 Application 14/046,514 Technology Center 1700 Before ROMULO H. DELMENDO, JEFFREY R. SNAY, and BRIAN D. RANGE, Administrative Patent Judges. DELMENDO, Administrative Patent Judge. DECISION ON APPEAL The Applicants (“Appellants”)1 appeal under 35 U.S.C. § 134(a) from the Primary Examiner’s final decision to reject claims 1, 4-6, 8, 12-17, 19, and 29.2 We have jurisdiction under 35 U.S.C. § 6(b). We reverse. 1 The Applicants are The Coca-Cola Company and PureCircle SDN BHD (Application Data Sheet filed October 19, 2015), which are also identified as the real parties in interest (Appeal Brief filed August 28, 2017 (“Appeal Br.”), 3). 2 Appeal Br. 11-30; Reply Brief filed May 21, 2018 (“Reply Br.”; not paginated), 2-5); Final Office Action entered July 26, 2016 (“Final Act.”), 2-3; Examiner’s Answer entered March 21, 2018 (“Ans.”), 3-6. Appeal 2018-005899 Application 14/046,514 I. BACKGROUND The subject matter on appeal relates to a beverage comprising a disordered crystalline composition containing rebaudioside M and rebaudioside D with improved aqueous solubility (Specification filed October 4, 2013 (“Spec.”), 2,1. 15-5,1. 18). According to the Inventors, “crystalline rebaudioside M has poor aqueous solubility or dissolution qualities in beverage formulations” (e.g., certain crystalline compositions containing about 75-90 wt. % rebaudioside M and about 10-25 wt. % rebaudioside D cannot be dissolved above concentrations of 0.1-0.15% (%w/w) at room temperature) (id. at 2,11. 4-8). The Inventors state, however, that a “disordered crystalline composition exhibits improved aqueous solubility [(i.e., about 0.3% (w/w) or greater)] compared to crystalline forms of the composition” (id. at 3,11. 3-5).3 Representative claim 1, the sole independent claim on appeal, is reproduced from the Claims Appendix to the Appeal Brief, as follows: 1. A zero-calorie beverage comprising a composition comprising a steviol glycoside mixture comprising rebaudioside M and rebaudioside D, wherein the steviol glycoside mixture comprises rebaudioside M in greater than about 75% by weight and rebaudioside D in less than about 25%> by weight, the composition has a water solubility of about 0.3% (w/w) or greater; 3 The Specification defines a “disordered crystalline” material as that “ha[ving] long range order and crystalline structure unlike [a] material in a fully amorphous state, but does not possess all of the characteristics typical of [a] material that is in a fully crystalline state” and that “[f]or example, [a] disordered crystalline material may be birefringent (indicating its crystallinity) but lack[s] multiple sharp peaks in its powder X-ray diffraction pattern (as is typical of crystalline materials)” (Spec. 7,11. 10-14). 2 Appeal 2018-005899 Application 14/046,514 and the composition is a disordered crystalline composition prior to dissolution in the zero-calorie beverage. (Response to Non-Compliant Appeal Brief filed January 24, 2018, Corrected Claims Appendix, 4; emphases added.) II. REJECTION ON APPEAL The Examiner maintains a rejection under 35 U.S.C. § 103(a) (pre- AIA) entered against claims 1, 4-6, 8, 12-17, 19, and 29 as unpatentable over Morita et al.4 (“Morita”) in view of Prakash et al.5 (“Prakash”) (Ans. 3- 6; Final Act. 2-3). III. DISCUSSION The Examiner finds that Morita describes a sweetener comprising rebaudioside M and rebaudioside D for use in foods and beverages (Ans. 3). The Examiner acknowledges that Morita’s disclosure differs from claim l’s subject matter in that it does not disclose the specified amounts for the rebaudioside M and rebaudioside D and the specified water solubility of about 0.3% (w/w) or greater {id.). To resolve these differences, the Examiner relies on Prakash {id.). According to the Examiner, “[i]t would have been obvious to a person of ordinary skill in the art... to use the claimed amounts and rebaudiosides as taught by Prakash ... in that of Morita . . .because the use, manipulation, and combination of steviol glycosides is conventional and well-known in the art” {id. at 3—4). Regarding water solubility, the Examiner states that “the claimed water solubility would be no more than obvious to that of the combined teachings 4 WO 2010/038911 Al, published April 8, 2010. 5 US 2007/0116823 Al, published May 24, 2007. 3 Appeal 2018-005899 Application 14/046,514 of the prior art as the same components are used” and that “the selection and manipulation of water solubility would appear to be no more than expected in the art wherein the desired solubility plays a crucial role in the final product acceptability” {id. at 4). The Appellants contend, inter alia, that no prima facie case of obviousness has been established because, e.g., the combined teachings of Morita and Prakash have not been shown to provide a disordered crystalline composition and that any potential inherency theory in this regard is flawed (Ans. 12-13, 22). The Appellants also argue that Morita teaches only a small amount of rebaudioside M and teaches away from using greater amounts, while Prakash does not even mention rebaudioside M {id. at 13- 14, 25). We concur with the Appellants that the Examiner’s rejection is not well-founded. The Examiner appears to have taken the position that the “disordered crystalline composition” limitation may be ignored because claim 1 is directed to a beverage—not a method— and the disordered crystalline composition is dissolved in the beverage (Ans. 5). That position, however, does not take account of the disordered crystalline composition’s water solubility characteristic (Spec. 3,11. 3-5; 7,11. 10-14), which is also recited in the claim. The Examiner’s conclusory statement that “the claimed water solubility would be no more than obvious to that of the combined teachings of the prior art as the same components are used” lacks sufficient factual basis. In re NuVasive, Inc., 842 F.3d 1376, 1382 (Fed. Cir. 2016) (“[T]he [PTO] must make the necessary findings and have an adequate ‘evidentiary basis for its findings’” and must articulate logical and rational reasons supporting its decisions). 4 Appeal 2018-005899 Application 14/046,514 The Examiner’s position regarding the amounts for rebaudioside M and rebaudioside D is also without sufficient factual basis. Morita describes a sweetener containing rebaudioside A and a novel steviol glycoside, which is included in the variety Stevia Rebaudiana Bertoni containing a high content of rebaudioside A (Morita 1, 10). Realizing that Morita does not disclose rebaudioside M and rebaudioside D in the amounts as specified in claim 1, the Examiner turns to Prakash (Ans. 3). But consistent with the Appellants’ arguments (Appeal Br. 13; Reply Br. 4), Prakash has not been shown to disclose or suggest the use of rebaudioside M in the amounts as recited in claim 1 (e.g., Prakash 45). Because no prima facie case of obviousness has been established, In re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984), we need not address other matters, such as the sufficiency of the proffered secondary consideration evidence. IV. SUMMARY The Examiner’s final decision to reject claims 1, 4-6, 8, 12-17, 19, and 29 is reversed. REVERSED 5 Copy with citationCopy as parenthetical citation