Ex Parte Takahashi et al

Patent Trial and Appeal Board

Feb 27, 2017

13492344 (P.T.A.B. Feb. 27, 2017)

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.
13/492,344 06/08/2012 Kenzo Takahashi 0388-114454 7709
28289 7590 03/01/2017
THE WEBB LAW FIRM, P.C.
ONE GATEWAY CENTER
420 FT. DUQUESNE BLVD, SUITE 1200
PITTSBURGH, PA 15222
EXAMINER
TURNER, FELICIA C
ART UNIT PAPER NUMBER
1793
NOTIFICATION DATE DELIVERY MODE
03/01/2017 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):
patents @ webblaw. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KENZO TAKAHASHI, YOSHIKIYO MIN AMI,
YOSHIYUKI KANABUCHI, KEIKO TOGAMI, and
MORIO MITSUHASHI
Appeal 2016-001782
Application 13/492,344
Technology Center 1700
Before LINDA M. GAUDETTTE, KAREN M. HASTINGS, and
AVELYN M. ROSS, Administrative Patent Judges.
GAUDETTE, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2016-001782
Application 13/492,344
Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s decision2
twice rejecting claims 1,3,4, and 6. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Claim 1, the only independent claim on appeal, is reproduced below:
1. A method of processing coffee cherries, comprising:
a fermentation process in which dried coffee cherries having a
coffee seed and coffee pulp are added with a suspension of yeast that
metabolizes said coffee pulp to cause fermentation, and a refining
process.
Claims Appendix filed May 15, 2015.
According to the Specification, the term “coffee berries,” or “coffee
cherries,” refers to berries of Coffea plants of the family Rubiaceae. 13. Coffee
berries include seeds (coffee seed) and coffee pulp. Id. 178. Coffee seed is
separated from the pulp by a refining process. See id. Tflf 78—81. “One or two
coffee seeds can be taken from a single coffee berry.” Id. 178. The coffee pulp is
considered a byproduct of the refining process. Id. 1100. “The term ‘coffee bean’
collectively refers to the [coffee] seeds.” Id. 13. “The term ‘green coffee beans’
indicates the coffee beans that have been refined but have not yet been roasted.”
Id. 178.
At the time of the invention, it was known in the art to treat ground green
coffee beans by inoculation with and fermentation by Aspergillus oryzae, followed
by roasting. Id. 19. Flavors and aromas produced by this process were then
extracted and added to roasted coffee beans to improve their flavor and aroma. Id.
According to the Specification, drawbacks of this known method include high
1 Appellants identity the real party in interest as Suntory Beverage & Food
Fimited. Appeal Brief filed Mar. 6, 2015 (“App. Br.”), 3.
2 Non-Final Office Action mailed Apr. 9, 2014 (“Non-Final Act.”).
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Application 13/492,344
costs associated with the use of additional coffee beans to provide the flavor and
aroma extracts and difficulties in separating the Aspergillus oryzae from the
ground coffee beans. Id. ]Hf 10-11. The invention is said to overcome the
aforementioned drawbacks. Id. 1 55. More specifically, in the inventive method,
green coffee beans are directly infused with desirable aromas and flavors, thereby
eliminating the need to add extracted aroma and flavor components. Id.
Claims 1,3,4, and 6 stand rejected under 35 U.S.C. § 103(a) over the
following combinations of references:
1. Robison (US 1,313,209, iss. Aug. 12, 1919) in view of Gross (US
1,496,932, iss. June 10, 1924) and Boniello (US 4,867,992, iss. Sept. 19, 1989);
and
2. Wilder (US 2,027,801, iss. Jan. 14, 1936) in view of Boniello.3
Ground 1: Robison in view of Gross and Boniello
The Examiner finds Robison discloses a method for treating green
coffee berries by fermenting the coffee berries with mold, followed by
drying (refining) the coffee. Final Act. 3. The Examiner finds Robison does
not disclose using dried coffee berries or using yeast as the microorganism
in the fermentation process. Id. The Examiner relies on Gross and Boniello,
respectively, in finding one of ordinary skill in the art would have modified
Robison’s process to dry the coffee berries prior to fermentation and to use
yeast in place of mold in the fermentation process. Id. at 4.
Appellants contend the Examiner reversibly erred in finding Robison
discloses fermenting “coffee cherries having a coffee seed and coffee pulp” as
3 The Examiner has withdrawn the rejection of claim 4 under 35 U.S.C. § 112,
second paragraph (see Non-Final Act. 2—3), in view of the Amendment filed Mar.
6, 2015. Advisory Action mailed Mar. 19, 2015.
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Application 13/492,344
required by claim 1. Appellants agree that the term “coffee cherries” (as used in
appealed claim 1) and the term “coffee berries” generally are used by those of skill
in the art to mean an unroasted coffee bean including the surrounding pulp or
pericarp still intact. App. Br. 7—8; see also Spec. 178. Appellants argue, however,
that one of ordinary skill in the art would have understood the term “coffee
berries,” as used in Robison, as referring to green coffee beans free from pulp or
pericarp. App. Br. 8. In support of this argument, Appellants rely on the
Declaration under 37 C.F.R. § 1.132 of Mr. Toshihiro Nishiumi (“Nishiumi
Declaration” or “Decl.”). See App. Br. 7—10. Mr. Nishiumi testified that he
earned a master’s degree in chemical engineering from Osaka University and has
been involved in the development of raw material processing and extraction
technologies for coffee and tea beverages since April 2005 when he was assigned
to the Engineering & Process Development Division of Suntory Limited. Decl.
12. Mr. Nishiumi testified that he was assigned to the Research and Development
Department of Suntory Beverage & Food Limited (see note 1 supra) in April 2011.
Decl. 12. We find Mr. Nishiumi is qualified to testify as to the knowledge and
skill level of one of ordinary skill in the art of processing coffee cherries to obtain
roasted coffee beans and coffee beverages.
Mr. Nishiumi testified that based on his reading of Robison, “Robison
discloses only the treatment of green coffee beans, i.e., seeds, with mold. Robison
does not indicate that the coffee pulp of a dried coffee berry is fermented by
yeast.” Id. ^ 7. Mr. Nishiumi further testified that although Robison uses “the
term ‘coffee berries’ on page 1, col. 1, lines 21—42, a person of ordinary skill in the
art would read that term, as used therein, as meaning unroasted green coffee beans
free of pulp or pericarp.” Id. 1 8. Mr. Nishiumi testified that “Robison describes
coffee beans that are ‘so called green or [in an] unroasted condition.’ The entire
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Application 13/492,344
process described in Robison relates only to the inoculation of green coffee beans.
Thus, the term ‘coffee berries’, as used in Robison is contrary to the accepted
meaning of that term in the relevant art and industry.” Id.
In the Response to Argument section of the Examiner’s Answer (Second
Examiner’s Answer mailed Sept. 25, 2015 (“Ans.”), 6), the Examiner
acknowledges Appellants’ reliance on the Nishiumi Declaration in support of their
contention that Robison’s method treats unroasted green coffee beans, not “coffee
cherries having a coffee seed and coffee pulp” as required by claim 1. The
Examiner maintains, however, that Appellants’ argument is not persuasive because
Robison uses the term “coffee berries” which is known in the art to be synonymous
with “coffee cherries.” Id. at 5—6. We agree with Appellants that the Examiner
appears to misapprehend, or simply ignores, Mr. Nishiumi’s testimony regarding
the understanding of the ordinary artisan with respect to the meaning of the term
“coffee berries” as used in Robison. See Reply Brief filed Nov. 25, 2015 (“Reply
Br.”), 3^4. As indicated above, based on our review of Mr. Nishiumi’s education
and experience, we find Mr. Nishiumi is qualified to testily as to the knowledge
and skill level of one of ordinary skill in the art. The Examiner has not explained
why the evidence as a whole, taking into account Mr. Nishiumi’s testimony, is
insufficient to support a finding that one of ordinary skill in the art would have
understood the term “coffee berries,” as used in Robison, as referring to green
coffee beans free from pulp or pericarp.
Failure to meaningfully address submitted evidence is error. In re Sullivan,
498 F.3d 1345, 1353 (Fed. Cir. 2007). Accordingly, we do not sustain the
rejection of claims 1, 3, 4, and 6 as unpatentable over Robison, Gross, and
Boniello.
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Appeal 2016-001782
Application 13/492,344
Ground 2: Wilder in view of Boniello
Wilder discloses macerating partly-dried coffee cherries to loosen and
remove the outer hull, and then placing the macerated coffee cherries, in a moist
condition, in vats for fermentation to soften the gelatinous pulp and permit its
removal from the coffee seed. Wilder p. 3, col. 2,11. 3—9.
Boniello discloses a method of fermenting a coffee substrate with yeast for a
period of time effective to produce diacetyl (Boniello 3:15—17), which is a
compound that provides a natural buttery and/or winey flavor (id. at 2:39-46).
Boniello discloses that a suitable yeast is Saccharomyces uvarumin. Id. at 6:63—
66. Boniello discloses that “[sjuitable coffee substrates . . . include soluble solids
from green extract (aqueous green coffee solids), ground green coffee beans, [and]
coffee by products (pulp, coffee husks and mucilage).” Id. at 2:57—61.
The Examiner finds one of ordinary skill in the art at the time of the
invention would have modified Wilder’s method by incorporating yeast, such as
Saccharomyces uvarumin, during the fermentation process to produce a wine
flavor, as taught by Boniello. Final Act. 5.
Appellants contend Boniello relates to treatment of soluble coffee solids, not
dried coffee cherries, and teaches that “no[] more than 0.75% to 25% of coffee
solids should be used because ‘[t]oo high a concentration of coffee solids will
create an osmotic problem. . . App. Br. 8 (quoting Boniello 2:63—66).
Appellants argue, therefore, that the Examiner reversibly erred in rejecting the
claims based on Boniello, because it is nonanalogous art. Id. at 10; see also Decl.
19 (“Nothing in Boniello suggests the fermentation of coffee cherries. It relates to
coffee extract.”).
“Two separate tests define the scope of analogous prior art: (1) whether the
art is from the same field of endeavor, regardless of the problem addressed and, (2)
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Application 13/492,344
if the reference is not within the field of the inventor’s endeavor, whether the
reference still is reasonably pertinent to the particular problem with which the
inventor is involved.” In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011) (quoting
In reBigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004)).
The Examiner contends Boniello is analogous art because is reasonably
pertinent to the problem confronting the inventors, i.e., the fermentation of pulp by
yeasts. See Ans. 5, 8. The Examiner further contends Boniello’s disclosure of
using a solids content of 25% or less would not have dissuaded the ordinary artisan
from applying Boniello’s teachings to a process of treating coffee berries because
Boniello merely discloses this solids content as preferable, but not required.
Id. at 7 (further noting the claims do not limit the conditions for propagation or
fermentation because the dried coffee is added to a suspension of yeast without
indicating amounts or proportions); see also id. at 8—9 (explaining the motivation
to modify Wilder based on Boniello). Appellants have not explained persuasively
why the aforementioned findings by the Examiner with respect to Boniello fail to
support the Examiner’s finding that Boniello is analogous art. Compare Reply Br.
4 (arguing Boniello “relates only to the fermentation of coffee extract, and would
not have logically commended itself to processes involving dried whole coffee
cherries, as presently claimed”) with Boniello 2:57—61, 3:1—4 (disclosing that the
fermentation process can be used with coffee by products such as pulp, and
describing green extract merely as a preferred substrate).
Any additional arguments raised by Appellants in their appeal of the
rejection based on the combination of Wilder and Boniello have been fully
addressed by the Examiner, and are unpersuasive for the reasons stated in the Non-
Final Office Action and the Answer. Accordingly, we sustain the rejection of
claims 1,3,4, and 6 as unpatentable over Wilder and Boniello.
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Appeal 2016-001782
Application 13/492,344
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)(iv).
AFFIRMED
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