Ex Parte Subramaniam et al

Patent Trial and Appeal Board

May 7, 2015

11541610 (P.T.A.B. May. 7, 2015)

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.
11/541,610 09/30/2006 Girish Subramaniam 006943.00111 4230
66811 7590 05/07/2015
BANNER & WITCOFF, LTD.
and ATTORNEYS FOR CLIENT NO. 006943
10 SOUTH WACKER DR.
SUITE 3000
CHICAGO, IL 60606
EXAMINER
SMITH, PRESTON
ART UNIT PAPER NUMBER
1792
MAIL DATE DELIVERY MODE
05/07/2015 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte GIRISH SUBRAMANIAM, TEODORO RIVERA,
NICHOLAS SHIELDS, and DIANA PESHA
____________

Appeal 2013-006447
Application 11/541,610
Technology Center 1700
____________
Before CHUNG K. PAK, LINDA M. GAUDETTE, and
GEORGE C. BEST, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 1‒21, 36‒40, and 42‒51 of
Application 11/541,6101 under 35 U.S.C. § 103(a) as obvious. Final Act.
(July 10, 2012). Appellants2 seek reversal of these rejections pursuant to 35
U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6(b).

1 The ’610 Application is related to the application that is the subject of
Appeal No. 2013-005983. Our opinion in that appeal is being issued
concurrently with this opinion.
2 Tropicana Products, Inc. is identified as the real party in interest. App.
Br. 3.
Appeal 2013-006447
Application 11/541,610
2
For the reasons set forth below, we AFFIRM-IN-PART. We also
enter a NEW GROUND OF REJECTION with respect to claim 42.
BACKGROUND
The ’610 Application describes methods and apparatus for the
manufacture of reduced calorie fruit and vegetable juices. Spec. ¶¶ 1, 5‒7.
Appellants use a membrane filtration process to selectively remove sucrose
from the juice without removing fructose and glucose. Id. ¶¶ 5, 15‒22.
Because both fructose and glucose taste sweeter than sucrose, the juice
product has a higher perceived sweetness per calorie than juices produced by
removing all of the sugars in a non-selective manner. Id. ¶ 5.
Claim 1 is representative of the ’610 Application’s claims and is
reproduced below.
1. A method for producing a juice product comprising:
providing a juice;
processing the juice to selectively remove more sucrose
than monosaccharides to produce a stream of clarified low-
calorie juice; and
producing a juice product from the clarified low-calorie
juice, wherein sugar content of the juice product comprises 0 to
30 wt. % sucrose, and wherein the juice product contains no
artificial sweeteners.
App. Br. Claims App’x i (emphasis added).
Appeal 2013-006447
Application 11/541,610
3
REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 1‒15, 20, 21, 45, and 47‒503 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Black,4
Fontvieille,5 and Bohannon.6 Final Act. 2‒6.
2. Claims 16‒19, 36‒40, and 42 are rejected under 35 U.S.C. § 103(a)
as unpatentable over the combination of Black, Walker,7
Fontvieille, and Bohannon. Final Act. 6‒9.
3. Claims 43 and 44 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Black, Walker, Fricker,8
Fontvieille, and Bohannon. Final Act. 9‒10.

3 We have corrected the summary of the rejection to reflect cancellation of
claim 46. See Amendment After Final (December 5, 2012) (entered April
23, 2013).
4 US 5,403,604, issued April 4, 1995.
5 Truncated Abstract of A.M. Fontvieille et al., Relative Sweetness of
Fructose Compared with Sucrose in Healthy and Diabetic Subjects, 12
DIABETES CARE 481‒86 (1989). The Examiner’s February 9, 2011, Notice
of References gives an incorrect citation for this article. The complete
abstract of the article is available at http://bit.ly/1J6IkHS. A copy of the full
abstract will be provided to Appellants with this opinion.
6 Abstract of N.V. Bohannon, J.H. Karam, and P.H. Forsham, Endocrine
responses to sugar ingestion in man. Advantages of fructose over sucrose
and glucose., 76 J. AM. DIET. ASSOC. 555‒560 (1980) (obtained from
PubMed).
7 US 4,959,237, issued September 25, 1990.
8 US 4,792,402, issued December 20, 1988.
Appeal 2013-006447
Application 11/541,610
4
4. Claim 51 is rejected under 35 U.S.C. § 103(a) as unpatentable over
the combination of Black, Fontvieille, Bohannon, and Chen.9
Final Act. 10‒11.
DISCUSSION
Rejection 1. The Examiner rejected claims 1‒15, 20, 21, and 45, and
47‒50 as unpatentable over the combination of Black, Fontvieille, and
Bohannon. Final Act. 2‒6. With the exception of claims 49 and 50,
Appellants argue for reversal of this rejection without reference to the
limitations of any specific claims. See App. Br. 11‒16. We discuss the
claims subject to this rejection in three groups: (1) claims 1‒15, 20, 21, 45,
and 48; (2) claim 47; and (3) claims 49 and 50.
Claims 1‒15, 20, 21, 45, and 48. Independent claims 1, 45, and 48
each require production of a juice product having a sugar content that is
between 0 and 30 weight % sucrose. The Examiner found that Black fails to
teach the sucrose portion of the sugar content in the juice product is 30 wt.%
or less. Final Act. 4; Ans. 6. The Examiner also found that Fontvieille
“teaches that fructose causes less of an increment in plasma glucose levels
and insulin response and taste [sic, tastes] sweeter than sucrose.” Final Act.
4; Ans. 6. The Examiner further found that Bohannon teaches that plasma
glucose and insulin peaks are significantly lower after ingestion of fructose
as compared with sucrose or glucose. Final Act. 4; Ans. 6‒7. Based on
these findings, the Examiner concluded that it would have been obvious to a
person of ordinary skill in the art at the time of the invention to modify

9 US 6,162,474, issued December 19, 2000.
Appeal 2013-006447
Application 11/541,610
5
Black’s process to further reduce the amount of sucrose, thus obtaining a
juice product that has a sugar content comprising 30 wt.% or less sucrose.
Final Act. 4‒5; Ans. 7.
We reverse the rejection of independent claims 1, 45, and 48 because
it is based upon an erroneous factual determination. In particular, the
Examiner found that Fontvieille teaches that fructose tastes sweeter than
sucrose. Final Act. 4; Ans. 6. It is true that Fontvieille’s first sentence states
that fructose is credited with having a sweeter taste than sucrose. Fontvieille
Abstract. This statement, however, is unsupported by data and is present
solely as to set the table for the results of Fontvieille’s experiments. The
balance of the abstract summarizes the results of a series of taste tests. The
data from these experiments lead Fontvieille to “conclude that fructose has
either an equal, higher, or lower relative sweetness compared with sucrose,
depending on the physical and chemical characteristics of the solutions.”10
Id. Thus, the Examiner erred in finding that Fontvieille describes fructose as
having a consistently sweeter taste than sucrose.
In view of the Examiner’s error regarding Fontvieille’s description of
the relative sweetness of fructose and sucrose, the Examiner has not
provided an adequate reason for a person of ordinary skill in the art to
modify Black’s method to create a juice product having a sugar content that
is 30 wt.% or less sucrose. Thus, we reverse the rejection of claims 1, 45,
and 48 and claims 2‒15, 20, and 21, which depend from claim 1.

10 We note that the truncated version of Fontvieille’s Abstract entered into
the record on February 9, 2011 does not include the quoted sentence. The
data supporting this conclusion, however, is included in the portion of
Fontvieille that is in the record.
Appeal 2013-006447
Application 11/541,610
6
Claim 47. Independent claim 47 does not specify the fraction of the
juice product’s sugar content composed of sucrose. Instead, claim 47
specifies that “the juice product comprises a brix between 9 and 14, and
wherein the juice product contains no artificial sweeteners.”
The Examiner found that Black describes production of a clarified
juice stream of 9.5 Brix. Ans. 7.
As discussed above, Appellants’ arguments focus on the fraction of
the juice product’s sugar content that is sucrose. Appellants, therefore, do
not challenge the Examiner’s finding regarding Black’s description of the
brix of its juice product. See App. Br. 11‒16. We, therefore, affirm the
rejection of claim 47 as obvious over the combination of Black, Fontvieille,
and Bohannon.
Claims 49‒50. Our review of the record suggests that both the
Examiner and Appellants believe that claim 49’s sucrose content limitation
is the same as that set forth in claims 1, 45, and 48.11 Such belief, however,
is based upon an incorrect interpretation of claim 49’s language. For
example, Claim 1 specifies that sucrose comprises 30 wt.% or less of the
total sugar content of the juice product.
Claim 49, however, is not so limited. As written, claim 49 specifies
that sucrose comprise 30 wt.% or less of the juice product.12 In rejecting

11 For example, Appellants cite ¶ 19 of the Specification as providing written
description support for this limitation. See App. Br. 9. Paragraph 19 states
that, “[i]n one embodiment, the sucrose content of the sugar contained in the
permeate is reduced to about 0‒30 wt% while the primary sugars content is
about 70‒100 wt%.” Spec. ¶ 19 (emphasis added).
12 We recognize that during prosecution, claims are to be given their
broadest reasonable interpretation in view of the specification. We,
(Cont’d)
Appeal 2013-006447
Application 11/541,610
7
claim 49, the Examiner did not make any factual determinations regarding
the sucrose content of the final juice product. See Final Act. 6. We,
therefore, must reverse the rejection of claim 49 as lacking the necessary
factual support in the record. The rejection of claim 50, which depends from
claim 49, also must be reversed for this reason.
Rejection 2. The Examiner rejected claims 16‒19, 36‒40, and 42 as
unpatentable over the combination of Black, Walker, Fontvieille, and
Bohannon. Final Act. 6‒9. We reverse the rejection of claims 16‒19 and
36‒40. These claims depend, directly or indirectly, from claim 1. As
discussed above, we have concluded that claim 1 is not obvious over the
combination of Black, Fontvieille, and Bohannon. The Examiner has not
found that Walker’s description cures the defects we identified in the
rejection of claim 1. Thus, we also reverse the rejection of claims 16‒19 and
36‒40.
We also reverse the rejection of claim 42. We do so, however, for
purely procedural reasons. For reasons discussed below, we have newly
rejected claim 42 as indefinite. Thus, discerning the claim’s proper scope
would require undue and improper speculation. See In re Aoyama, 656 F.3d
1293, 1298‒99 (Fed. Cir. 2011) (explaining that a claim cannot be both

however, are reluctant to use the specification to construe claim language in
a manner contrary to its unambiguous ordinary meaning. See, e.g., In re
Yamamoto, 740 F.2d 1569, 1571–72 (Fed. Cir. 1984) (explaining that
applicants can correct errors in claim language and adjust claim scope by
amending claims in prosecution). Our reluctance is reinforced by
Appellants’ use of alternative language in other claims. We assume that
Appellants choose the language used in their claims with care and purpose.
If Appellants intended to limit sucrose to 30 wt.% or less of the juice’s sugar
content, they have demonstrated that they know how to do so.
Appeal 2013-006447
Application 11/541,610
8
indefinite and anticipated and refusing to review an anticipation rejection);
In re Steele, 305 F.2d 859, 862 (CCPA 1962) (“[W]e do not think a rejection
under 35 U.S.C. § 103 should be based on such speculations and
assumptions.”). We, therefore, reverse the obviousness rejection of claim
42. We emphasize that this reversal is purely procedural in nature and
should not be considered an expression of opinion regarding the rejection’s
merits.
In sum, we have reversed the rejection of claims 16‒19, 36‒40, and
42.
Rejection 3. The Examiner rejected claims 43 and 44 as unpatentable
over the combination of Black, Walker, Fricker, Fontvieille, and Bohannon.
Final Act. 9‒10. These claims depend, directly or indirectly, from claim 1.
As discussed above, we have concluded the Examiner’s determination that
the subject matter recited in claim 1 would have been obvious over the
combination of Black, Fontvieille, and Bohannon is not supported by a
preponderance of the evidence. The Examiner has not found that the
combined descriptions of Walker and Fricker cure the defects we identified
in the rejection of claim 1. Thus, we also reverse the rejection of claims 43
and 44.
Rejection 4. The Examiner rejected claim 51 as unpatentable over
the combination of Black, Fontvieille, Bohannon, and Chen. Final Act. 10‒
11. Claim 51 depends from claim 49. As discussed above, we have
reversed the rejection of claim 49 because the Examiner misconstrued the
claim’s limitations. This erroneous construction also affects the scope of
claim 51 and the Examiner’s obviousness analysis. Thus, we also reverse
this rejection.
Appeal 2013-006447
Application 11/541,610
9
New Ground of Rejection. As originally filed claim 42 depended
from claim 41. See Preliminary Amendment (February 2, 2009). Claim 41
was cancelled in subsequent prosecution. Amendment (December 21,
2011). The dependency of claim 42 was never changed to reflect the
cancellation of claim 41. Because claim 42 depends from a nonexistent
claim, it is indefinite. We, therefore, newly reject claim 42 for failure to
comply with 35 U.S.C. § 112(b) (formerly § 112 ¶ 2).
CONCLUSION
For the reasons set forth above, we reverse the rejection of claims 1‒
21, 36‒40, and 42‒45, and 48‒51 of the ’610 Application. Our reversal of
the rejection of claim 42 is purely procedural. We affirm the rejection of
claim 47.
Pursuant to 35 U.S.C. § 112(b), we have newly rejected claim 42 as
indefinite.
In addition to affirming the Examiner’s rejection(s) of one or more
claims, this decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b), which provides that “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
Section 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating
to the claims so rejected, or both, and have the matter
Appeal 2013-006447
Application 11/541,610
10
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .
Should Appellants elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), to preserve the right to seek review
under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection(s), the
effective date of the affirmance is deferred until conclusion of the
prosecution before the examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
If Appellants elect prosecution before the examiner and this does not
result in allowance of the application, abandonment, or a second appeal, this
case should be returned to the Board of Patent Appeals and Interferences for
final action on the affirmed rejection, including any timely request for
rehearing thereof.
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-IN-PART; NEW GROUND OF REJECTION
PURSUANT TO 37 C.F.R. § 41.50(b)
cdc

Notice of References Cited
Application/Control No. Applicant(s)/Patent Under Patent
Appeal No.
Examiner Art Unit
Page 1 of 1
U.S. PATENT DOCUMENTS
* Document Number Country Code-Number-Kind Code DateMM-YYYY Name Classification
A US-
B US-
C US-
D US-
E US-
F US-
G US-
H US-
I US-
J US-
K US-
L US-
M US-
FOREIGN PATENT DOCUMENTS
* Document Number Country Code-Number-Kind Code DateMM-YYYY Country Name Classification
N
O
P
Q
R
S
T
NON-PATENT DOCUMENTS
* Include as applicable: Author, Title Date, Publisher, Edition or Volume, Pertinent Pages)
U
V
W
X
*A copy of this reference is not being furnished with this Office action. (See MPEP § 707.05(a).)
Dates in MM-YYYY format are publication dates. Classifications may be US or foreign.
U.S. Patent and Trademark Office
PTO-892 (Rev. 01-2001) Notice of References Cited Part of Paper No.
11/541,610
1700
A.M. Fontvieille, et al. Relative Sweetness of Fructose Compared with Sucrose in Healthy and Diabetic Subjects. Diabetes Care,
July 1989. Vol. 12 No. 7, pgs 481-486.
+
Diabetes Care
care.diabetesjournals.org
doi: 10.2337/diacare.12.7.481
Diabetes Care July 1989 vol. 12 no. 7 481-486
Relative Sweetness of Fructose
Compared With Sucrose in
Healthy and Diabetic Subjects
Anne Marie Fontvieille, PhD, RD, Annick Faurion, PhD,
Isaad Helal, MD, Salwa W Rizkalla, PhD, Sophie Falgon, BS,
Martine Letanoux, MD, Georges Tchobroutsky, MD and
Gerard Slama, MD
Author Affiliations
Address correspondence and reprint requests to Gerard Slama, MD,
Department of Diabetes, Hotel Dieu Hospital, 1 Place du Parvis Notre
Dame, 75181 Paris, Cedex 04, France.
Abstract
Fructose is credited with some advantages over sucrose: it causes less
of an increment in plasma glucose and insulin response, and the taste
is sweeter. We reevaluated the latter property with a new methodology
(the “up and down” method adapted from Dixon) in 33 healthy
subjects, 17 insulin-dependent diabetes mellitus (IDDM) patients, and
12 non-insulin-dependent diabetes mellitus (NIDDM) patients.
Sweetening potency was determined over 2–3 test sessions in each
subject. Results are expressed in percent as the relative sweetness (R)
of fructose (F) over sucrose (S), taken as reference. In the first set of
experiments, with a 30-g/L sucrose-water solution at pH 7, we found
that R values were similar for healthy subjects (102 ± 8%) and diabetic
subjects (106 ± 7%) (P < .05). No significant difference between IDDM
and NIDDM patients was observed. In a second set of experiments,
performed in healthy subjects only, R was increased in acid water
(114%; P < .01), in lemon juice (136%; P < .001), in water at 2°C
(130%; P < .001), and in coffee at 2°C (120%; P < .02); mean values
were decreased in grapefruit juice (77%; P < .001), in water at 43°C
(88%; P < .01), and in coffee at 53°C (87%; P < .001). We found that
the test methodology had a very satisfactory intrasubject
reproducibility (coefficient of variation [C.V.] < 8%) but a very wide
intersubject variability (C.V. ≃ 32%). We conclude that fructose has
either an equal, higher, or lower relative sweetness compared with
sucrose, depending on the physical and chemical characteristics of the
solutions. The results were unpredictable for one given subject, but
fructose seemed regularly sweeter in cold beverages than in hot ones.
Diabetic individuals found fructose slightly but significantly sweeter
than sucrose, but it is doubtful that this modest difference has any
clinical implications.
Copyright © 1989 by the American Diabetes Association
Articles citing this article
Interaction of Gustatory and Lingual
Somatosensory Perceptions at the Cortical Level in
the Human: a Functional Magnetic Resonance
Imaging Study
Chemical Senses May 1, 2001 26:371-383
Abstract Full Text Full Text (PDF)