Ex Parte Rizzotto et al

Board of Patent Appeals and Interferences

Sep 21, 2005

09827686 (B.P.A.I. Sep. 21, 2005)

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The opinion in support of the decision being entered
today was not written for publication in a law journal
and is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES

Ex parte JOHN RIZZOTTO and EUGENE KARDELIS JR.

Appeal No. 2005-2436
Application No. 09/827,686

ON BRIEF

Before KIMLIN, GARRIS and KRATZ, Administrative Patent Judges.
KIMLIN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1, 4-9,
18 and 22-26. Claim 1 is illustrative:
1. A chewable flavor delivery system comprising in
combination:
a carrier consisting of an edible cellulosic plant material
being 100% cabbage leaves prepared by one of, forming into
strands or in grannular form dried to a moisture content of at or
below 8% by weight, said cabbage leaves having at least 30%
intact cell walls;
a water soluble but not water containing flavoring
ingredient in liquid form and capable of entering intact cell
walls of said cabbage leaves; and
an effective amount of a food safe humectant.
Appeal No. 2005-2436
Application No. 09/827,686
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In the rejection of the appealed claims, the examiner relies
upon the following references:
Garber 2,331,830 Oct. 12, 1943
Finberg 3,067,068 Dec. 4, 1962
Rozacky et al. (Rozacky) 3,702,615 Nov. 14, 1972
Aebi et al. (Aebi) 5,368,873 Nov. 29, 1994
Nonomura et al. (Nonomura) 5,597,400 Jan. 28, 1997
Appellants' claimed invention is directed to a chewable
flavor delivery system comprising a carrier of 100% cabbage
leaves, a water soluble flavoring ingredient in liquid form, and
a food safe humectant. The cabbage leaves have a moisture
content at or below 8% by weight and have at least 30% intact
cell walls.
Appealed claims 1, 4-8, 18, 24 and 25 stand rejected under
35 U.S.C. § 102(b) as anticipated by or, in the alternative,
under 35 U.S.C. § 103(a) as being unpatentable over Finberg.
Claims 1, 4-6, 8, 18, 23 and 25 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by or, in the alternative, under
35 U.S.C. § 103(a) as being unpatentable over Aebi. In addition,
the claims stand rejected under 35 U.S.C. § 103(a) as follows:
(a) claims 4-6, 22 and 23 over Finberg in view of Garber;
(b) claims 9 and 26 over Aebi in view of Nonomura;
(c) claims 1 and 4-8 over Rozacky; and
(d) claim 9 over Rozacky in view of Nonomura.
Appeal No. 2005-2436
Application No. 09/827,686
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Appellants submit that "[c]laims 1, 4-6 and 9 stand as one
embodiment of the invention," and that "[c]laims 18, 22-23 and 26
stand as a second embodiment of the invention" (page 6 of
principal brief). However, the Argument section of appellants'
brief fails to set forth an argument that is reasonably specific
to any particular claim on appeal. Accordingly, the groups of
claims separately rejected by the examiner stand or fall
together. For instance, the separate § 102/§ 103 rejections over
Finberg and Aebi stand or fall together with claim 1.
We have thoroughly reviewed each of appellants' arguments
for patentability. However, we are in complete agreement with
the examiner's reasoned analysis and application of the prior
art, as well as her cogent disposition of the arguments raised by
appellants. Accordingly, we will adopt the examiner's reasoning,
as stated in the Answer, as our own in sustaining the rejections
of record, and we add the following for emphasis only.
Concerning the § 102/§ 103 rejection of claim 1 over
Finberg, appellants contend that, whereas Finberg uses papaya
leaves in addition to cabbage leaves in making a satisfactory
chewing tobacco/snuff replacement, appellants' claimed
composition "is 100% cabbage leaves" (page 2 of Reply Brief,
second paragraph). However, the examiner properly explains that
Appeal No. 2005-2436
Application No. 09/827,686
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the recitation of "comprising" in the first line of claim 1
"opens" the claim to ingredients other than those specifically
recited, for instance, the papaya leaves of Finberg. The
appealed claims encompass a composition that comprises a carrier
consisting of 100% cabbage leaves and another carrier consisting
of 100% papaya leaves. We note that appellants attempted to
amend the claims accordingly after final rejection, but this
amendment was not entered by the examiner.
Appellants also maintain that "Finberg teaches flavoring of
cabbage leaves prior to grinding/shredding" (page 7 of principal
brief, last paragraph). The examiner properly notes, however,
that the appealed claims do not recite "any particular order of
flavoring/grinding . . . [and] are drawn to a product, not a
method" (page 10 of Answer, second paragraph).
Appellants also argue with respect to both § 102/§ 103
rejections that the references do not disclose the claim
requirement that the cabbage leaves have at least 30% intact cell
walls. However, it is well settled that when a claimed product
reasonably appears to be substantially the same as a product
disclosed by the prior art, the burden is on the applicant to
prove that the prior art product does not necessarily or
inherently possess characteristics attributed to the claimed
Appeal No. 2005-2436
Application No. 09/827,686
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product. See In re Spada, 911 F.2d 705, 708, 15 USPQ2d 1655,
1658 (Fed. Cir. 1990); In re Best, 562 F.2d 1252, 1255, 195 USPQ
430, 433 (CCPA 1977). In the present case, the examiner has set
forth a rationale why it is reasonable to conclude that the
cabbage leaves of Finberg and Aebi have at least 30% intact cell
walls. Appellants, on the other hand, have failed to set forth
any argument, let alone objective evidence, that the processing
conditions of Finberg and Aebi would result in cabbage leaves
having less than 30% intact cell walls. As has often been said,
it is imminently fair to place such burden on an applicant
inasmuch as the USPTO is not equipped to test the products of the
prior art. While appellants may "bristle" at the conclusion
reached by the examiner, such analysis is in accordance with
current patent jurisprudence (page 8 of principal brief, last
paragraph). We do not understand appellants' argument that
nowhere does Aebi disclose that "the product should have anything
less than 100% intact cell walls" (page 9 of principal brief,
last full sentence), since 100% intact cell walls falls directly
within the claimed range and, therefore, anticipates the range.
As for the claimed moisture content of at or below 8% by
weight, the examiner points out that Finberg describes a water
content of about 5% by weight, whereas Aebi describes a final
Appeal No. 2005-2436
Application No. 09/827,686
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product having a water content preferably in the range of 2-6% by
weight.
Regarding the examiner's separate rejections under § 103, we
refer to the Examiner's Answer. We observe that appellants base
no argument upon objective evidence of nonobviousness to rebut
the prima facie case of obviousness established by the examiner.
In conclusion, based on the foregoing and the reasons well-
stated by the examiner, the examiner's decision rejecting the
appealed claims is affirmed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a)(1)(iv) (effective Sep. 13, 2004; 69 Fed. Reg. 49960
(Aug. 12, 2004); 1286 Off. Gaz. Pat. Office 21 (Sep. 7, 2004)).
AFFIRMED
EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
)
BRADLEY R. GARRIS ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
PETER F. KRATZ )
Administrative Patent Judge )
ECK:clm
Appeal No. 2005-2436
Application No. 09/827,686
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James C. Simmons
Ratner & Prestia
One Westlakes, Berwyn, Suite 301
P.O. Box 980
Valley Forge, PA 19482-0980
September 13, 2005