Ex Parte Shefler

Patent Trial and Appeal Board

Aug 4, 2016

10530202 (P.T.A.B. Aug. 4, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
10/530,202 11/01/2005
466 7590
YOUNG & THOMPSON
209 Madison Street
Suite 500
Alexandria, VA 22314
08/08/2016
FIRST NAMED INVENTOR
Yuri Shetler
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
2005-1030 9618
EXAMINER
STIJLII, VERA
ART UNIT PAPER NUMBER
1791
NOTIFICATION DATE DELIVERY MODE
08/08/2016 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):
DocketingDept@young-thompson.com
yandtpair@firs ttofile. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YURI SHEPLER
Appeal2014-008044
Application 10/530,202
Technology Center 1700
Before LINDA M. GAUDETTE, DONNA M. PRAISS, and
DEBRA L. DENNETT, Administrative Patent Judges.
PRAISS, Administrative Patent Judge.
Appeal2014-008044
Application 10/530,202
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's decision2
finally rejecting claims 12-17 under 35 USC §103(a) as unpatentable over
Jamnikov et al. (RU 2044045 Cl, published Sept. 20, 1995), Bobryshev (RU
2175010 Cl, published Oct. 20, 2001) and Filippova et al. (US 5,618,573, issued
Apr. 8, 1997). 3 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
The invention is directed to a process to prepare vodka. (Spec. 4 1 :3). Claim
12 is representative of the invention and is reproduced below from the Claims
Appendix to the Appeal Brief: 5
12. A process for preparing vodka, comprising:
mixing water and absolute alcohol to obtain a mixture with a
percentage of absolute alcohol in water of about 35-50 vol%,
treating the mixture by passing the mixture through a column
with activated coal followed by filtration,
adding sugar, aroma compounds and optionally other
ingredients,
cooling the mixture after treating the mixture with activated coal
to a temperature of about -10°C to -l 5°C, at which temperature the
mixture is maintained for about 4--8 hours,
filtering the cooled mixture through a carbon filter and gradually
adapting the mixture to room temperature to obtain a filtrate, and
1 The real party in interest is identified as Spirits Product International Intellectual
Property B.V. of Oranjestad, the Netherlands.
2 Final Office Action mailed June 20, 2013 ("Final Act.").
3 Appeal Brief filed Dec. 16, 2013 ("App. Br.").
4 Specification filed Apr. 4, 2005.
5 We will limit our discussion to independent claim 12. Appellant has not argued
the dependent claims separately. App. Br. 3-16. Accordingly, claims not argued
separately will stand or fall together with independent claim 12. See 37 C.F.R.
§ 41.4l(b)(2)(2013).
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Application 10/530,202
optionally further filtering the filtrate at room temperature before
bottling said filtrate, wherein
the sugar is added at any moment of the process, and
the aroma and optionally other ingredients are added at a time
after the mixture has been adapted to room temperature to obtain the
filtrate.
The Examiner makes the following findings of fact:
Jamnikov establishes that at the time of the invention, it was known in the
vodka producing art to (1) mix water and absolute alcohol to obtain a 40% mixture
of absolute alcohol in water, (2) filter the mixture through submersible filters, (3)
cool the mixture to -4 °C, ( 4) maintain this temperature of the mixture for eight
hours, ( 5) filter the mixture on membrane micro filters, and ( 6) naturally heat the
mixture to ambient temperature prior to bottling. Ans. 6 2 (citing Jamnikov,
Abstract, 3).
Bobryshev evidences that at the time of Appellant's invention, it was known
in the art to purify a water and alcohol mixture with a proof value of 40% with
activated carbon by passing it through a carbon-cleansing battery or column and
adding sugar (fructose), aroma compounds (extract of flax seeds), and other
ingredients (ascorbic acid). Id. at 3 (citing Bobryshev, Abstract).
Filippova evidences that at the time of the invention, it was known in the art
to remove impurities from aqueous ethyl alcohol while maintaining desirable
organoleptic qualities by using supercooling technology. Id. at 4--5. Specifically,
Filippova discloses contacting a mixture of ethyl alcohol and water with three
layers of activated charcoal at a temperature of from -45°C to -22°C followed by
contacting the mixture with three other layers of activated charcoal at a
temperature of from -22°C to 5°C. Id. at 4 (citing Filippova, Abstract).
6 Examiner's Answer mailed May 8, 2014.
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Application 10/530,202
Based on the above findings of fact, the Examiner concludes it would have
been obvious to one of ordinary skill in the art "to modify Jamnikov in view of
Bobryshev and to use activated carbon in order to purify [the] aqueous-spiritous
mixture as taught by Bobryshev ... since activated carbon filtration is a
conventional method of removing contaminants from the liquid." Id. at 4. The
Examiner reasons that since Jamnikov discloses filtering the aqueous-spirituous
mixture, "it would have been obvious to substitute one conventional filtration
method with another conventional filtration method used for purification and
clarification of liquids." Id. Regarding the addition of aroma and other
ingredients, the Examiner finds that it would have been obvious to add flax seed
extract, which Bobryshev discloses creates a pleasant aroma forming complex, and
also sugar and vitamin C (ascorbic acid) to increase nutrient value of the vodka and
stabilize the aroma forming complex as taught by Bobryshev. Id. at 3. As to the
timing of the addition of these ingredients, the Examiner determines that it would
"have been an obvious matter of choice based on the nature of [the] ingredients,
the purpose of their addition, the purity of the additives, etc." Id. at 4. The
Examiner also concludes that
one of ordinary skill in the art would have been motivated to modify
Jamnikov and to employ lower temperature in the range as recited and
as taught by [Filippova] for the reasons taught by [Filippova]. ... in
order to prevent formation of certain impurities during the process of
purification of aqueous ethyl alcohol, and to remove other impurities
therefrom while maintain[ing] desirable organoleptic qualities ....
Id. at 5 (citing Filippova, Abstract, 1:7-16). The Examiner's reasoning for
modifying the temperature is further based on Jamnikov's disclosure that "cooling
[the] aqueous-spiritous mixture leads to formation of precipitates that significantly
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Appeal2014-008044
Application 10/530,202
affect (lower) organolelptic and physicochemical properties of vodka (page 3 col. 1
lines 50-54)." Id. at 4.
Appellant does not dispute the above findings of fact with respect to
Jamnikov, Bobryshev, and Filippova. See App. Br. 7-16. Nor does Appellant
dispute that activated coal filtration and cooling were considered alternative
purification means. See id. at 8.
Appellant contends the Examiner reversibly erred in rejecting the claims
because there is no motivation to combine Jamnikov's process with Bobryshev's
purification step:
Because JAMNIKOV explicitly excludes active carbon (i.e. coal) for
treatment of the alcohol mixture, one would have expected that use of
active coal for filtering the alcohol mixture before cooling would have
rendered the method unsatisfactory for its intended purposes: preparing
a vodka wherein active carbon treatment of the alcohol mixture is
excluded.
Id. at 10.7
Appellant additionally contends that the Examiner reversibly erred in
rejecting the claims because Filippova does not disclose the claimed temperature
range and there is no reason to combine Filippova's supercooling temperatures
with Jamnikov's process as modified by Bobryshev:
7 Appellant further argues the Examiner has not identified in Jamnikov a disclosure
of the claimed temperature range, filtration through a carbon filter, and the addition
of aroma and optionally other ingredients. App. Br. 8. Similarly, Appellant argues
that Bobryshev does not teach further lowering the cooling temperature or active
coal filtration as a pre-cooling treatment. Id. at 12-13. The Examiner does not
rely on Jamnikov or Bobryshev alone for these claim limitations, but, rather, on the
combination of Jamnikov with Bobryshev and Filippova. Therefore, these
arguments are unpersuasive of error on the part of the Examiner. See In re Merck
& Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986); In re Keller, 642 F.2d 413, 426
(CCPA 1981).
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Application 10/530,202
FILIPPOV A also fails to disclose the specific range of -10°C to
-l 5°C for cooling a mixture made from water and alcohol (at about 35-
50 vol% alcohol) after treating the mixture with activated coal. Instead,
FILIPPOVA only considers a temperature in a range that overlaps the
claimed temperature range (-22°C to 5°C) for a 35-45% alcohol mixture
of (i) water and (ii) previously supercooled and filtered water/alcohol
mixture. The mixture of water and absolute alcohol (albeit at 65-75%
alcohol) is cooled at a far lower temperature, i.e. at most -22°C.
Thus, even if one would have been prompted to modify the
cooling temperature of JAMNIKOV in view of FILIPPOV A, at best,
the combination suggests a two-step cooling/filtering method, which
fails to teach a temperature range as claimed for cooling an active-
charcoal filtered mixture made from water and alcohol (about 35-50
vol% alcohol) as required by the sequence of steps in claim 12.
Id. at 15.
In the Reply Brief, Appellant further argues that
FILIPPO VA discloses charcoal filtration of a cooled 35% to 45%
alcohol mixture between [-22°C] to 5°C to minimize formation of
unpleasant-tasting compounds. FILIPPOVA is silent as to crystallizing
impurities with a low density such as fusel oils. Although the lower
temperatures of the range of FILIPPOV A may be sufficiently cold for
such crystallization, FILIPPOV A fails to disclose maintaining the
solution at such low temperatures for a long enough period to obtain
the crystalline film comprising impurities with a relatively low density.
In fact, FILIPPOV A only discloses flowing the cooled solution through
filters for merely several minutes.
Reply Br. 2-3. Because Jamnikov teaches a temperature of -4°C, Appellant further
argues that one of ordinary skill in the art would not have had a reason to change
the temperature taught by Jamnikov. Id. at 3.
If a person of ordinary skill can implement a predictable variation,
§ 103 likely bars its patentability. For the same reason, if a technique
has been used to improve one device, and a person of ordinary skill in
the art would recognize that it would improve similar devices in the
same way, using the technique is obvious unless its actual application
is beyond his or her skill.
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Application 10/530,202
KSR Int 'l Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007).
Each of Jamnikov, Bobryshev, and Filippova is directed to preparing vodka.
As correctly observed by Appellant (App. Br. 13), Bobryshev does not teach using
active coal filtration as a pre-cooling treatment. However, the Examiner relies on
Jamnikov for the sequence of removing impurities before cooling the mixture.
Ans. 7. The Examiner further finds that "active coal filtration is a well-known
method of liquids purification, especially in the preparation of vodka, as taught in
the background section of Jamnikov." Id. at 8. We are not persuaded that
Jamnikov teaches away from using active coal filtration simply because it
distinguishes its method over prior art processes. See In re Fulton, 391 F.3d 1195,
1201 (Fed. Cir. 2004) (explaining "[ t ]he prior art's mere disclosure of more than
one alternative does not constitute a teaching away from any of these alternatives
because such disclosure does not criticize, discredit, or otherwise discourage the
solution claimed"). Appellant does not direct us to any criticism of active coal
filtration by Jamnikov, only the clear statement that Jamnikov does not include the
known steps of using active carbon and quartz sand. Jamnikov Machine
Translation i-f7 ("In accordance with the inventive method from of technological
cycle is excluded stage treatment of sorting by activated carbon and filtration
through quartz sand."); App. Br. 9 (emphasis omitted) (translating Jamnikov as
teaching "[a ]ccording to the suggested method the stage of treating the solution
with active carbon and filtering it through the silica sand is excluded from the
technological cycle."). Accordingly, we find the Examiner's combination of
Bobryshev's active carbon filtration for the filtering step before cooling taught by
Jamnikov to be supported by the preponderance of the evidence.
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Application 10/530,202
Appellant also correctly observes (App. Br. 15) that Filippova's disclosure
of a cooling step that overlaps the claimed temperature range of -10°C to - l 5°C
further includes a preceding step of supercooling and filtering the water/alcohol
mixture. We are not persuaded by Appellants' argument that the combination of
Filippova with Jamnikov as modified by Bobyrshev necessarily requires the
process of the combination to include Filippova's supercooling step because "[t]he
test for obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference .... Rather, the test
is what the combined teachings of those references would have suggested to those
of ordinary skill in the art." In re Keller, 642 F.2d at 413.
Appellant's further assertion (App. Br. 15) that "[the claimed] temperature
range as the cooling step [] is optimal for crystallizing impurities without affecting
the molecular system of the water- alcohol mixture (as noted in the present
specification on page 5, lines 6-15)" is not supported by objective evidence. The
referenced portion of the Specification indicates that "[ f]iltration at such low
temperature still better purifies the water-alcohol liquid while not destroying the
molecular system water-alcohol formed at cooling of the water-alcohol liquid."
Spec. 5: 10-13. The cited portion of the Specification neither shows unexpected
results stemming from the claimed temperature range nor does it show a lower
temperature at which the water-alcohol molecular system would be destroyed.
Accordingly, we are not persuaded that the claimed range has been demonstrated
to be "optimal," nor are we persuaded that the temperature range of -22°C to 5°C
disclosed by Filippova would "destroy[] the molecular system" as implied by
Appellant. Moreover, it is well settled that arguments of counsel cannot take the
place of factually supported objective evidence. See, e.g., In re Huang, 100 F.3d
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Application 10/530,202
135, 139--40 (Fed. Cir. 1996); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir.
1984).
Appellant's argument that Filippova "fails to disclose maintaining the
solution at such low temperatures for a long enough period to obtain the crystalline
film comprising impurities with a relatively low density" (App. Br. 3) and
suggestion that it fails to achieve this result because it teaches "flowing the cooled
solution through [filters] for merely several minutes" (id.) are unpersuasive for a
number of reasons. First, claim 12 does not require forming a crystalline film.
Second, Appellant does not present objective evidence to show that such a
crystalline film would not form at the temperatures disclosed by Filippova.
Indeed, Filippova itself indicates that the short time for cooling "is rather
surprising when compared to the contact time used by the vodka industry, namely
of about 100 minutes or more." Filippova 6:40-42. Third, the Examiner relies
upon Jamnikov's disclosure of 8 hours for the step of cooling the water-alcohol
mixture, not Filippova. Ans. 2-5, 7.
For the reasons stated above and in the Answer, including the Response to
Argument, we affirm the Examiner's decision to reject claims 12-17.
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a)(l ).
AFFIRMED
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