Ex Parte Subramaniam et alDownload PDFPatent Trial and Appeal BoardMay 7, 201512399601 (P.T.A.B. May. 7, 2015) Copy Citation 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. 12/399,601 03/06/2009 Girish Subramaniam 006943.02593 2367 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 2013-005983 Application 12/399,601 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 rejected claims 22‒32 and 34‒44 of Application 12/399,6011 under 35 U.S.C. § 103(a) as obvious. Non-Final Act. (May 17, 2012). Appellants2 seek reversal of these rejections pursuant to 35 U.S.C. 1 The ’601 Application is related to the application that is the subject of Appeal No. 2013-006447. Our opinion in that appeal is being issued concurrently with this opinion. 2 Tropicana Products, Inc., a wholly-owned subsidiary of PepsiCo, is identified as the real party in interest. App. Br. 3. Appeal 2013-005983 Application 12/399,601 2 § 134(a). Because one or more of these claims has been previously rejected, we have jurisdiction under 35 U.S.C. § 6(b). For the reasons set forth below, we REVERSE. BACKGROUND The ’601 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 22 is representative of the ’601 Application’s claims and is reproduced below: 22. A juice product processing apparatus comprising: a micro-filtration stage operative for filtering a juice to produce a primary retentate stream and a primary permeate stream, the primary retentate stream comprising sinking solids of the juice and the primary permeate stream comprising a clarified juice; a nano-filtration stage operative for selectively removing more sucrose than monosaccharides from the clarified juice, the nano-filtration stage operative for producing a secondary retentate stream and a secondary permeate stream, the secondary retentate stream comprising a solution having a higher Brix than the juice and the secondary permeate stream having a sugar content comprising 0 to 30 wt. % sucrose; and a stage operative for packaging the secondary permeate stream. App. Br. Claims App’x i. Appeal 2013-005983 Application 12/399,601 3 REJECTIONS On appeal, the Examiner maintains the following rejections: 1. Claims 22‒323 and 36‒434 are rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Black,5 Walker,6 and Strobel.7 Non-Final Act. 2. 2. Claims 34, 35, and 44 are rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Black, Walker, Fricker,8 and Strobel. Non-Final Act. 6. DISCUSSION Rejection 1. The Examiner rejected claims 22‒32 and 36‒43 as obvious over the combination of Black, Walker, and Strobel. Non-Final Act. 2. In arguing for reversal of this rejection, Appellants treat these claims as a single group. App. Br. 10‒14. Accordingly, we select claim 22—the only independent claim in the group—as representative. 37 C.F.R. 3 We treat the Examiner’s inclusion of claim 33 in this rejection as an inadvertent error because claim 33 was cancelled before the Non-Final Action. See Response After Final Action 6 (February 27, 2012). 4 We treat the Examiner’s omission of claim 36 from the summary statement of this rejection as an inadvertent error. Because the Examiner included claim 36 in the detailed discussion of the rejection, Non-Final Act. 5, Appellants were not prejudiced by this omission. See also App. Br. 9 (including claim 36 in the request for review of this rejection). 5 US 5,403,604, issued April 4, 1995. 6 US 4,959,237, issued September 25, 1990. 7 US 4,971,811, issued November 20, 1990. 8 US 4,792,402, issued December 20, 1988. Appeal 2013-005983 Application 12/399,601 4 § 41.37(c)(1)(iv) (2012). Appellants also present a separate argument for the patentability of claim 26. App. Br. 14‒15. Accordingly, claims 23‒25, 27‒ 32, and 36‒44 will stand or fall with claim 22, and we will address claim 26 separately. Claim 22. We begin by noting that claim 22, which is directed to an apparatus, is written in functional language. Such claims are, of course, proper. For purposes of a prior art rejection, the Examiner must demonstrate that there is a reason to believe that the prior art apparatus is capable of performing the claimed function. See In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997). Once there is reason to believe that the prior art structure is inherently capable of performing the claimed function, the burden shifts to the applicant to show that the claimed function patentably distinguishes the claimed structure from the prior art. Id. In this case, claim 22 states that the claimed apparatus includes “a nano-filtration stage operative for selectively removing more sucrose than monosaccharides from the clarified juice, . . . [yielding a] permeate stream having a sugar content comprising 0 to 30 wt. % sucrose.” Claim 22 (emphasis added). The Examiner found that Black describes a juice processing apparatus comprising a nanofiltration membrane. Non-Final Act. 2. The Examiner also found the nanofiltration membrane in Black’s apparatus has a molecular weight cut off (MWCO) of about 100-20,000. Id. at 2 (citing Black col. 3, line 1). This finding is erroneous, because the cited portion of Black describes the range of MWCO values that are correlated with range of pore sizes of available nanofiltration membranes. See Black col. 2, l. 65‒col. 3, l. 1. Black describes its apparatus as using a nanofiltration membrane with an MWCO between 500 and 20,000. See Black col. 3, ll. 25‒30. Appeal 2013-005983 Application 12/399,601 5 As explained in Appellants’ Specification, a nanofiltration membrane with an MWCO of approximately 200 is necessary to distinguish between sucrose (a disaccharide) and fructose and glucose (monosaccharides). See Spec. ¶ 33. Although the Examiner is correct in explaining that the MWCO for a given membrane is only an approximate value, the Examiner has not pointed to any evidence that Black’s apparatus is capable of yielding a permeate stream having a sugar content that comprises between 0% and 30% sucrose. As the Examiner admits, the data in Black shows that Black’s apparatus yields a permeate stream that has a sugar content that is 32% sucrose. Ans. 10. Thus, Black does not describe an apparatus that actually yields a permeate with the claimed sucrose content. The Examiner, however, argues that Black’s membrane is adjustable. Id. This likely is true, and it also likely is true that using a nanofiltration membrane with a lower MWCO in Black’s apparatus would yield a permeate with the claimed sucrose content. The Examiner, however, has not provided any argument or reasoning supported by adequate facts to explain why a person of ordinary skill in the art would have been motivated to make such changes to Black’s apparatus. In the absence of such an explanation, we cannot affirm the rejection of claim 22. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”). Claim 26. Because we conclude that the Examiner has not established a prima facie case of obviousness for independent claim 22, we reverse the rejection of claim 26—which depends from claim 22—without need to consider Appellants’ arguments specific to claim 26. Appeal 2013-005983 Application 12/399,601 6 Rejection 2. The Examiner rejected claims 34, 35, and 44 as obvious over the combination of Black, Walker, Fricker, and Strobel. Non-Final Act. 6. The Examiner’s discussion of Fricker, see Non-Final Act. 6, does not provide the reasoning and explanation that was missing from Rejection 1. Accordingly, we also reverse the rejection of claims 34, 35, and 44 as obvious. CONCLUSION For the reasons set forth above, we reverse the rejection of claims 22‒ 32 and 34‒44 of the ’601 Application as obvious. REVERSED KRH Copy with citationCopy as parenthetical citation