Ex Parte REZA

Board of Patent Appeals and Interferences

Nov 24, 2003

09171670 (B.P.A.I. Nov. 24, 2003)

1
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was not written for publication and is not binding precedent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. 25
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte ALMA REZA
__________
Appeal No. 2003-2046
Application 09/171,670
__________
ON BRIEF
__________
Before ADAMS, MILLS, and POTEATE, Administrative Patent Judges.
POTEATE, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the final
rejection of claims 1-16 and 29. Claims 17-21, 24 and 30 are
also pending, but have been withdrawn from consideration as
directed to a non-elected invention. See Appeal Brief, Paper
No. 20, received March 17, 2003, page 1.
Appeal No. 2003-2046
Application 09/171,670
2
Claim 1 is representative of the subject matter on
appeal and is reproduced below:
1. A method for manufacturing a composition comprising
crushing tomatoes and apples, mixing the crushed tomatoes and
apples together in a weight ratio of tomatoes to apples between
0.8 and 1.25 to produce a mixture (M), allowing the mixture (M)
to stand for about twenty-four hours, and filtering the mixture
(M) after the standing for about twenty-four hours to produce a
filtered liquid as the composition.

The references relied upon by the examiner are:
Strobel et al. (Strobel) 4,971,813 Nov. 20, 1990
Grieve, M., “Papaw,” A Modern Herbal, copyright 1995-2002,
pp. 1-2.
GROUNDS OF REJECTION
1. Claims 1-10, 13-16 and 29 stand rejected under
35 U.S.C. § 103 as unpatentable over Strobel.
2. Claims 11 and 12 stand rejected under 35 U.S.C.
§ 103 as unpatentable over Strobel, further in view of Grieve.
We reverse as to both grounds of rejection.
Appeal No. 2003-2046
Application 09/171,670
3
DISCUSSION
The initial burden of presenting a prima facie case of
obviousness rests on the examiner. In re Oetiker, 977 F.2d 1443,
1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). In order to
establish a prima facie case of obviousness, the examiner must
identify a suggestion or motivation to modify the teachings of
the cited references to achieve the claimed invention. In re
Kotzab, 217 F.3d 1365, 1370, 55 USPQ2d 1313, 1316-17 (Fed. Cir.
2000). In the present case, we find that the examiner has failed
to satisfy his burden of proof and, therefore, has failed to
establish a prima facie case of obviousness. Accordingly, the
rejections are reversed for the reasons set forth in greater
detail below.
The invention is directed to a method for manufacturing
a composition comprising crushing tomatoes and apples, allowing
the mixture to stand and then filtering the mixture. Claim 1.
The filtered liquid may be used in dermatological formulations.
Appeal Brief, page 2.
It is the examiner’s position that Strobel teaches the
invention as claimed with the exception that “Strobel does not
explicitly teach mixing the crushed fruits and vegetables or the
Appeal No. 2003-2046
Application 09/171,670
4
addition of capsaicin.” Examiner’s Answer, Paper No. 21, mailed
May 27, 2003, page 4. As pointed out by the examiner, the claims
are directed to a method of making a “composition” and do not
include any limitations relating to dermatological applications.
Examiner’s Answer, page 5. Therefore, like the examiner, we are
unpersuaded by appellant’s initial argument that Strobel is non-
analogous art.
Appellant further traverses the examiner’s argument by
pointing out that several notable differences exist between
Strobel’s process and that of the claimed invention. In
particular, appellant notes that the present claims require
mixing crushed tomatoes and apples together while Strobel’s
process is limited to manufacturing a juice from a single type of
fruit or vegetable. See Appeal Brief, page 5. Additionally,
appellant notes that Strobel filters the squeezed/pressed fruit
or vegetable to remove the solids prior to fermenting the juice.
Conversely, in appellant’s process, the mixture of crushed
tomatoes and apples is allowed to stand and ferment prior to
filtering. See id.; claim 1.
Responsive to appellant’s arguments, the examiner urges
that although Strobel does not exemplify preparing a blend of
Appeal No. 2003-2046
Application 09/171,670
5
juices, he does teach that beverages can contain blends. See
Examiner’s Answer, page 8, referencing Strobel, column 4,
lines 4-10. We find that the examiner has mischaracterized the
referenced portion of Strobel. As pointed out by appellant,
Strobel does not teach mixing two crushed fruits and/or
vegetables. See Appeal Brief, page 5. Rather, Strobel teaches
that individual juice concentrates (i.e., post filtration and
fermentation) may be mixed together to provide a blend. Id.
With respect to the differences in processing steps
between Strobel and the claimed invention, the examiner asserts
that:
It is within the skill in the art to use
conventional methods and ingredients for
making a composition in any combination or
order and expect similar results. See In re
Levin, 84 USPQ 232 (CCPA 1949). Nothing critical
is seen in the conventional steps and ingredients
instantly claimed. Nothing critical has been
shown in the length of the standing time.
Assertions of unexpected results do not provide
patentability to the claims. Strobel teaches at
column 4, lines 409 [sic, 4-9] that blended
beverages or juices are useful. One of ordinary
skill in the art would expect any combination of
the disclosed fruits or vegetables to be useful in
the reference composition. [Examiner’s Answer,
page 4]
We do not find these arguments persuasive. The examiner is
reminded that the initial burden of proof is on the Patent Office
Appeal No. 2003-2046
Application 09/171,670
6
to show nonobviousness. The suggestion or motivation to modify a
reference may be implicit from the prior art as a whole rather
than expressly stated. Kotzab, 217 F.3d at 1370, 55 USPQ2d at
1316-17. However, regardless of whether the examiner relies on
an express or implicit showing, he must provide reasons for
finding a limitation to be taught or suggested in the reference.
Id. Reliance on “common knowledge and common sense” does not
fulfil the requirement to provide reasons in support of findings
of obviousness. In re Thrift, 298 F.3d 1357, 1364, 63 USPQ2d
2002, 2006 (Fed. Cir. 2002) (quoting In re Lee, 277 F.3d 1338,
1344, 61 USPQ2d 1430, 1434 (Fed. Cir. 2002)). The remaining
reference relied upon by the examiner, Grieve, fails to remedy
the deficiencies in the teachings of Strobel.
Appeal No. 2003-2046
Application 09/171,670
7
Accordingly, we find that the examiner has failed to
establish a prima facie case of obviousness and the rejections
are reversed.
REVERSED
DONALD E. ADAMS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
DEMETRA J. MILLS ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
LINDA R. POTEATE )
Administrative Patent Judge )
LRP:psb
Appeal No. 2003-2046
Application 09/171,670
8
Leydig Voit & Mayer
700 Thirteenth Street, N.W. - Suite 300
Washington, D.C. 20005-3960