Ex Parte Soldani

Board of Patent Appeals and Interferences

Dec 4, 2008

11314042 (B.P.A.I. Dec. 4, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte CHRISTIANA SOLDANI
____________

Appeal 2008-4029
Application 11/314,042
Technology Center 1700
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Decided: December 04, 2008
____________

Before BRADLEY R. GARRIS, PETER F. KRATZ, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

KRATZ, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 13-17. We have jurisdiction pursuant to
35 U.S.C. § 6.

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STATEMENT OF THE CASE
Appellant’s claimed invention is directed to a confectionary product
comprising one or more sugar alcohols and at least one acidic component
wherein the water content is below 3 percent. Appellant’s product is
claimed to be a glassy amorphous solid that has allegedly improved
transparency compared to a glassy amorphous solid that does not contain an
acid, as evidenced by transmission properties at specified wavelengths
recited in claim 13 (the sole independent claim on appeal). Claim 13 is
illustrative and reproduced below:
13. A confectionery product comprising a glassy amorphous solid
comprising one or more sugar alcohols and at least one acidic component,
the glassy amorphous solid having a water content below 3% and an
improved transparency compared to a glassy amorphous solid that does not
contain an acid, as evidenced by a transmission of:

at least 47.8% at 450 nm; and/or

at least 50.9% at 550 nm; and/or

at least 52.3% at 650 nm.

The Examiner relies on the following prior art references as evidence
in rejecting the appealed claims:
Rivier (Rivier I) EP1151672 A1 Jul. 11, 2001
Rivier (Rivier II) EP1151673 A2 Jul. 11, 2001

The Examiner maintains the following rejections:
Claims 13-17 stand rejected under 35 U.S.C. § 102(a) as being
anticipated by Rivier I. Claims 13-17 stand rejected under 35 U.S.C.
§ 102(a) as being anticipated by Rivier II.
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The claims are argued together as a group. Accordingly, we select
claim 13 as the representative claim on which we shall decide this appeal as
to both anticipation grounds of rejection before us.

ISSUES AND SUMMARY DECISION
The principal issue with respect to each of the stated anticipation
rejections developed by the appeal record is capsulated in the following
question. Has Appellant established that none of the confectionary products
described by Rivier I and Rivier II possess a transparency property
corresponding to the appealed claim 13 confectionary product transparency
requirements based on the submitted Declaration1 and the Specification
evidence and thereby shown reversible error in the Examiner’s anticipation
rejection over each applied reference?
We answer this question in the negative as to each of the applied
references separately. Therefore, we affirm the Examiner’s Decision as to
both stated grounds of rejection for substantially the reasons set forth in the
Examiner’s Answer and below.

PRINCIPLES OF LAW
The factual determination of anticipation requires the disclosure in a
single reference of every element of the claimed invention, either explicitly
or inherently. See In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997).
Anticipation by a prior art reference does not require that the reference

1 Appellant incorrectly labels the submitted Declaration under 37 C.F.R. §
1.132 by Christiana Soldani (the named inventor) as an Affidavit (App. Br.;
Exhibit E).
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recognize either the inventive concept of the claimed subject matter or the
inherent properties that may be possessed by the prior art reference. See
Verdegaal Bros. Inc. v. Union Oil Co., 814 F.2d 628, 633 (Fed. Cir.), cert.
denied, 484 U.S. 827 (1987). Also, see In re Best, 562 F.2d 1252, 1255
(CCPA 1977)
Where, as here, the claimed and prior art products are identical
or substantially identical….the PTO can require an applicant to
prove that the prior art products do not necessarily or inherently
possess the characteristics of his claimed product…its fairness
is evidenced by the PTO’s inability to manufacture products or
to obtain and compare prior art products.

Moreover, “[T]here is nothing intrinsically wrong with [defining
something by what it does rather than what it is] in drafting patent claims.”
In re Schreiber, 128 F.3d at 1478. “Yet, choosing to define an element
functionally, i.e., by what it does, [or can do,] carries with it a risk.” Id. As
our reviewing court stated in Schreiber, 128 F.3d at 1478 quoting In re
Swinehart, 439 F.2d 210, 213 (CCPA 1971):
[W]here the Patent Office has reason to believe that a
functional limitation asserted to be critical for establishing
novelty in the claimed subject matter may, in fact, be an
inherent characteristic of the prior art, it possesses the authority
to require the applicant to prove that the subject matter shown
to be in the prior art does not possess the characteristic relied
on.

Anticipation is a factual determination. See In re Baxter Travenol
Labs., 952 F.2d 388, 390 (Fed. Cir. 1991) (citing In re Bond, 910 F.2d 831,
833 (Fed. Cir. 1990)).

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RELEVANT FACTUAL FINDINGS (FF)
1. The Examiner has correctly found that, like Appellant’s claim 13
confection, Rivier I discloses a glassy amorphous solid confectionary
product comprising an acid component and at least one sugar alcohol-
containing component, with the confection having a water content less than
3 percent by weight (Rivier I, ¶ ¶ 0016, 0017, 0028, and 0029; Ans. 4).
2. Also, the Examiner has correctly found that Rivier II similarly
discloses a glassy amorphous solid confectionary product that comprises an
acid component and at least one sugar alcohol–containing component
(Rivier II, ¶ ¶ 0052-0053; Ans. 5).
3. Rivier II discloses that the confection has a final moisture (water)
content less than 3 weight percent (Rivier II, ¶ ¶ 0054, 0059, 0074, 0077).
4. Based on the correspondence between the acid-containing
confection product of Rivier I or Rivier II with Appellant’s claim 13
confection, the Examiner has correctly made the inferential factual finding
that the acid and sugar alcohol containing confection product described by
Rivier I or the products described by Rivier II would have been expected,
prima facie, to intrinsically possess a light transparency property
(functionality) corresponding to that recited in Appellant’s claim 13 (Ans.
5).
5. Appellant provides an example (Example 1) of a product said to be
according to the invention (Spec. 7-8). In this Example, the product is
described as being made using 50kg of water, 25 kg of a specified maltitol
syrup, 125 kg of a specified Isomalt. The batch is mixed and heated to a
temperature of 80°C. Then, 1 kg of a specified citric acid, 1.4 kg of a
specified malic acid, and 0.2 kg of Acesulfame K are added for forming the
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casing premix of the confection. The casing premix is subjected to heating
progressively in two evaporators in series up to a temperature of 138°C,
subjected to vacuum flashing, then cooling, and is subsequently filled with a
specified filling, all in a specified manner.
6. Appellant provides an example (Example 2) of a product, which is
said to have been made as a comparison example, from substantially the
same ingredients as used in Example 1 (Spec. 8). However, the acid
addition occurs after the steps of subjecting a casing batch mix to several
heating steps, including a heating step above 145 °C (cooking) in an
evaporator, a vacuum application step, and a discharge on a cooling table
step. Subsequently, the casing is filled with a specified filling.
7. Appellant provides an Example 3 specifying how light transmission
properties for an average of six samples of outer casings of products made
according to Examples 1 and 2 are determined with an analysis model (Spec.
8-11). The results, including standard errors, are determined for each of the
samples and presented in Table 1 as an average for samples made in
accordance with each Example at a number of wavelengths, and with a plot
provided in drawing Figure 3 (Spec. 8-11; Fig. 3).
8. Table 1 of the Specification reports that the six samples of product
casings made in accordance with Example 1 demonstrated an average
transmission of: (a) 48.43 percent at 450 nm wavelength, (b) 51.90 percent
at 550 nm wavelength, and (c) 53.07 percent at 650 nm wavelength with
respective standard errors of 0.85, 0.89, and 0.94 percent (Spec. 11). The
six samples of product casings made in accordance with comparison
Example 2 demonstrate an average transmission of: (d) 45.70 percent
prepared at 450 nm wavelength, (e) 48.85 percent at 550 nm wavelength,
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and (f) 50.32 percent at 650 nm wavelength with respective standard errors
of 2.11, 2.02, and 1.94 percent. Id.
9. Rivier I provides an Example wherein a confection product casing
recipe includes 80 percent isomalt, 10 percent maltitol syrup and 10 percent
water (¶ 0028). The batch is cooked until 145 °C temperature is reached and
discharged on a cooling table where 1 percent of citric acid, 0.15 percent
lemon flavor, 0.8 percent Acesulfame K are added and the ingredients are
mixed until forming a plastic mass, and then subjected to a filling process
(Rivier I, ¶ ¶ 0028 - 0030).
10. Rivier II provides Examples 1 and 2 wherein a confection product
casing recipe includes 80 kg isomalt, 10 kg maltitol syrup and 10 kg water
that is heated under 60 percent vacuum until reaching a cooking temperature
of 155 °C (¶ ¶ 0074 and 0077). The resulting cooked mass is flavored,
colored, acidified and cooled down to 70 °C and a batch roller is charged
therewith and the mass is then subjected to a filling process (Rivier II, ¶ ¶
0074 -0077).
11. The Declaration under 37 C.F.R. § 1.132 by Christiana Soldani
does not present any additional experimental evidence to that presented in
the subject Specification (App. Br., Exhibit E).
12. Christiana Soldani states, inter alia, in the Declaration under 37
C.F.R. § 1.132 that:
5. As summarized in the Examples and Figures of
the present disclosure, the addition of acidic
components of a hard candy at the beginning of the
manufacturing process, including the cooking stage,
results in a hard candy having a greater transmission
than a hard candy produced by a process wherein the
acidic components are added during the cooling stage
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that follows cooking. More specifically, Figure 3 and
Table 1 of the present specification illustrate the
surprisingly high transmission that is achieved when the
acidic components of Example 1 was added during the
cooking stage, as opposed to the process of Example 2
wherein the acidic components are added during a
subsequent cooling stage. Therefore, although
Examples 1 and 2 comprise hard candies having similar
ingredients, a surprisingly high transmission is achieved
by the addition of the acidic components of a hard
candy at the beginning of the manufacturing process.

6. Rivier I fails to disclose or suggest a glassy
amorphous solid having an improved
transparency as evidenced by a transmission of at least
47.8% at 450 nm; and/or at least 50.9% at 550 nm;
and/or at least 52.3% at 650 nm. In fact, at no place in
the disclosure does Rivier I even recognize any glassy
amorphous solid having a specific transmission, let
alone the improved transmission of the glassy
amorphous solid as described herein above.

7. Rivier I teaches a conventional process for
producing confectionery products wherein acidic
components are added after cooking. Specifically,
Rivier I teaches a casing whose recipe is composed by
80% isomalt, 10% maltitol syrup and 10% water that is
cooked to high final solids until 145°C. The mass is
then put in batch under a slight vacuum (0.9 atm.) for 3
minutes. The cooked mass is then discharged on a
cooled table and 1% citric acid, 0.15% lemon flavour,
0.8% Acesulfame K are added. The ingredients are
mixed until a plastic mass is formed. This mass at 75°C
is then introduced in the batch roller. This process will
not result in a glassy amorphous solid having an
improved transparency as evidenced by a transmission
of at least 47.8% at 450 nm; and/or at least 50.9% at
550 nm; and/or at least 52.3% at 650 nm. In fact,
because Rivier I teaches a conventional process for
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producing confectionery products wherein acidic
components are added after cooking, the resulting
transmission will be less than the presently claimed
transmission of at least 47.8% at 450 nm; and/or at least
50.9% at 550 nm; and/or at least 52.3% at 650 nm.
Because Rivier I teaches that the acidic components are
added after cooking and because Rivier I does not
disclose improved transmission properties, Rivier I
cannot teach the improved transmission properties of
the confectionery product discussed herein above or
disclosed in the present application.

8. Rivier II fails to disclose or suggest a glassy
amorphous solid having an improved transparency as
evidenced by a transmission of at least 47.8% at 450
nm; and/or at least 50.9% at 550 nm; and/or at least
52.3% at 650 nm. In fact, at no place in the disclosure
does Rivier II even recognize any glassy amorphous
solid having a specific transmission, let alone the
improved transmission of the glassy amorphous solid as
described herein above.

9. Rivier II teaches a conventional process for
producing confectionery products wherein acidic
components are added after cooking. Specifically,
Rivier II teaches that a mixture of 80 Kg of isomalt F,
10 Kg of maltitol syrup and 10 Kg of water is cooked
under 60% vacuum until reaching a cooking
temperature of 155°C. Subsequently, the resulting
cooked mass is flavoured, coloured and acidified and
cooled down at 70°C. This process will not result in a
glassy amorphous solid having an improved
transparency as evidenced by a transmission of at least
47.8% at 450 nm; and/or at least 50.9% at 550 nm;
and/or at least 52.3% at 650 nm. In fact, because Rivier
II teaches a conventional process for producing
confectionery products wherein acidic components are
added after cooking, the resulting transmission will be
less than the presently claimed transmission of at least
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47.8% at 450 nm; and/or at least 50.9% at 550 nm;
and/or at least 52.3% at 650 nm. Because Rivier II
teaches that the acidic component is added after cooking
and because Rivier II does not disclose improved
transmission properties, Rivier II cannot teach the
improved transmission properties of the confectionery
product discussed herein above or disclosed in the
present application.
(App. Br., Exhibit E)

13. The subject Specification and the Christiana Soldani Declaration
do not furnish a comparison example testing the light transmission
properties of a product confection casing made according to the Examples of
either Rivier I or Rivier II.

ANALYSIS
Appellant’s proffered evidence shows that a somewhat lower average
light transmission occurred at 450 nm, 550 nm, and 650 nm wavelengths for
the Comparison Example 2 wherein acids were added after cooking in
comparison to the alleged inventive Example 1. In Example 1, the acids
were added at the beginning of the heating/cooking stages in making a
product within the scope of the compositional requirements of the product
required by representative claim 13 (FF 5-12). However, neither the
Specification nor the Christiana Soldani Declaration under 37 C.F.R. § 1.132
specifically addresses, much less adequately explains, why a comparison
with the exemplified confection products of either of the applied references
(Rivier I and Rivier II) was not made (FF 12 and 13). Nor has Appellant
adequately demonstrated how the single comparative exemplified product
made according to the Specification Example 2 recipe and method would
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accurately and necessarily reflect the relevant light transmission properties
for the exemplified products described by each of the applied references.
This is because the reference products’ ingredients, while within the scope
of the ingredient requirements of representative claim 13, are not identical to
the Specification comparison Example 2 recipe. Also, the Specification
Example 2 methodology is not identical to the methods of preparation
described in each reference (FF 5-13). This is important given that
Appellant has reported standard errors associated with the Specification
Example 2 light transmission values of about two percent (FF 8;
Specification Table 1). The significance of the reported standard error is
underscored by observing that the alternatively required light transmission
percents at 450 nm, 550 nm and 650 nm that are called for in representative
claim 13 differ from the reported average light transmission percents of the
comparative Example 2 by about two percent (compare representative claim
13 with FF 8).
Given the above, the Examiner has reasonably established that Rivier
I and Rivier II each discloses a confectionary product corresponding to the
representative claim 13 confection product requirements that would
reasonably be expected to be characterized by corresponding light
transmission properties (FF 1-3). Thus, Appellant has the burden of coming
forward with evidence that persuasively establishes that the products of each
of the applied references would not be expected to possess at least one of the
light transmission properties, as specified in representative claim 13 (FF 1-
4). Here, Appellants have not discharged this burden of production by the
proffered evidence for reasons set forth above and in the Examiner’s Answer
(FF 5-13, Ans. 7-10). Accordingly, the arguments set forth in the Appeal
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Brief and Reply Brief, which arguments are premised on the Specification
Evidence and Soldani Declaration establishing a product difference based on
the claimed light transmission properties, are not persuasive.

CONCLUSION
Appellant has not established that the described acid and sugar alcohol
containing confectionary products of Rivier I and the like products described
by Rivier II would not have possessed a transparency property
corresponding to the appealed claim 13 confectionary product transparency
requirements based on the submitted Soldani Declaration and the referenced
Specification evidence. Accordingly, Appellant has not identified reversible
error in either of the Examiner’s anticipation rejections.

ORDER
The decision of the Examiner to reject claims 13-17 under 35 U.S.C. §
102(a) as being anticipated by Rivier I and to reject claims 13-17 under 35
U.S.C. § 102(a) as being anticipated by Rivier II 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).

AFFIRMED

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