Ex Parte Tonyes et al

Patent Trial and Appeal Board

Jan 22, 2018

13602897 (P.T.A.B. Jan. 22, 2018)

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.
13/602,897 09/04/2012 Henry Tonyes 1410-102610-US 3939
48940 7590 01/22/2018
FITCH EVEN TAB IN & FLANNERY, LLP
120 SOUTH LASALLE STREET
SUITE 1600
CHICAGO, IL 60603-3406
EXAMINER
DICUS, TAMRA
ART UNIT PAPER NUMBER
1791
MAIL DATE DELIVERY MODE
01/22/2018 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 HENRY TONYES, ANNESA SEEMUNGAL,
DAVID BRESNAHAN, and RICHARD DESANTO
Appeal 2017-004283
Application 13/602,897
Technology Center 1700
Before LINDA M. GAUDETTE, CHRISTOPHER C. KENNEDY,
and MERRELL C. CASHION, JR., Administrative Patent Judges.
CASHION, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2017-004283
Application 13/602,897
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from the non-final rejection
of claims 10-29. We have jurisdiction under 35 U.S.C. § 6.
Claim 10 illustrates the invention:
10. A stabilized liquid coffee concentrate comprising:
a liquid coffee concentrate base having about 5 to about
60 percent coffee solids and including an amount of furfuryl
mercaptan, the liquid concentrate base having one pH prior to
thermal treatment at about 285 to about 295°F for about 60 to
about 180 seconds and another pH, about 0.5 to about 1.5 pH
units lower, immediately after the thermal treatment,
about 0.1 to about 0.16 grams of an edible alkali source
per percent of coffee solids in the concentrate base,
a pH between about 4.7 and about 5.3 for at least about
12 months of room temperature storage after the thermal
treatment, and
a variance of the furfuryl mercaptan of up to about 4
percent from immediately after the thermal treatment to about
26 weeks of storage.
Appellants1 (App. Br. 4—5) request review of the following rejections
from the Examiner’s Non-Final Office Action dated November 4, 2014:
I. Claims 10—12, 14—22, 24—27, and 29 rejected under 35 U.S.C.
§ 103(a) as unpatentable over Huynh-Ba (US 2011/0027436 Al, published
February 3, 2011), Bradbury (US 6,054,162, issued April 25, 2000), and
Katsumura (US 2008/0167481 Al, published July 10, 2008).2
1 Kraft Foods Group Brands LLC, a subsidiary of KFG Management
Services LLC, is identified as the real party in interest. App. Br. 3.
2 The Examiner’s statement of rejection in the appealed action omits claims
21, 22 and 27. Non-Final Act. 2. However, the Examiner addresses these
claims in the discussion of the prior art. Id. at 2, 8. Therefore, we consider
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II. Claims 13 and 16 rejected under 35 U.S.C. § 103(a) as
unpatentable over Huynh-Ba, Bradbury, Katsumura, and Smits (US
7,767,246 B2, issued August 3, 2010).
III. Claims 23 and 28 rejected under 35 U.S.C. § 103(a) as
unpatentable over Huynh-Ba, Bradbury, Katsumura, and Zaunbrecher (EP 0
043 667 Al, published January 13, 1982).
OPINION
Without reaching the merits of these rejections, we reverse the
Examiner’s prior art rejections of claims 10—29 under 35 U.S.C. § 103.
We enter the following NEW GROUNDS OF REJECTION pursuant
to our authority under 37 C.F.R. § 41.50(b).
Independent claims 10, 20, and 25 (as well as their respective
dependent claims) are directed to a stabilized liquid coffee concentrate that
has substantially consistent acidity and flavor profile for an extended storage
period. Spec. 1—2, 8, 22. To achieve this, the claims require the
stabilized liquid coffee concentrate to have (a) “a pH between about 4.7 and
about 5.3 for at least about 12 months of room temperature storage after the
thermal treatment” and (b) “a variance of the furfuryl mercaptan of up to
about 4 percent from immediately after the thermal treatment to about 26
weeks of storage.”
the omission of these claims to be harmless error. The statement of rejection
now reflects all claims addressed by the Examiner.
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REJECTIONS UNDER § 112, first paragraph - Written Description3
Claims 10-29 are rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement.
Our reviewing court stated in In re Kaslow, 707 F.2d 1366, 1375 (Fed.
Cir. 1983):
The test for determining compliance with the written
description requirement is whether the disclosure of the
application as originally filed reasonably conveys to the artisan
that the inventor had possession at that time of the later claimed
subject matter, rather than the presence or absence of literal
support in the specification for the claim language.
See also AriadPharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed.
Cir. 2010). “This inquiry ... is a question of fact. . . . [T]he level of detail
required [in the Specification as originally filed] to satisfy the written
description requirement varies depending on the nature and scope of the
claims and on the complexity and predictability of the relevant technology.”
Id. Whether the written description requirement is complied with is a
question of fact, judged from the perspective of one of ordinary skill in the
art as of the relevant filing date. See Vas-Cath Inc. v. Mahurkar, 935 F.2d
1555, 1563-64 (Fed. Cir. 1991).
The Specification does not provide adequate written description for
the claim language “a variance of the furfuryl mercaptan of up to about 4
percent from immediately after the thermal treatment to about 26 weeks of
storage.”
3 We cite to the pre-AIA versions of 35 U.S.C. § 112 because the effective
filing date for the application from which this appeal is taken is before the
effective date of the AIA legislation of March 16, 2013.
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We find no language in the claims or disclosure in the written
description in the Specification which describes the meaning of this phrase
in a manner that allows one skilled in the art to reasonably ascertain whether
Appellants had possession at the time of the invention of the subject matter
of independent claims 10, 20, and 25.
Based on our review, the Specification does not describe (1) the
parameters or conditions for determining a variance/variation or (2) a
variance of the furfuryl mercaptan of up to about 4 percent.
Regarding (1), the Specification does not describe how a variance is
measured. For example, is the variance measured as a percent by weight of
furfuryl mercaptan initially added or a percent by weight based on the total
liquid concentrate? While paragraphs 47—50 (Tables 5 and 6, inclusive) of
the Specification describe data readings for measured amounts of
components as being in jig/Kg of sample, we find no description of how the
measured amounts of the components are used to arrive at a particular
variation percentage.
With respect to (2), Appellants argued in a response filed May 31,
2013 with respect to this limitation, added by amendment, that paragraph 47
(Table 5) of the Specification, provides descriptive support for a furfuryl
mercaptan variation of up to about 4%. However, Table 5 is directed to
variation percentages based on total average aroma counts without
identifying the aroma component or components for which the aroma counts
are measured. Spec. H 46, 48. On the other hand, Table 6 is specifically
directed to variation percentages based on aroma counts of furfuryl
mercaptan and shows support for a variation percentage of about 3%. Spec.
1122, 50 and original claim 19. We have reviewed the Specification, as
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originally filed, but do not find support for the claimed furfuryl mercaptan
variation of up to 4%.
In light of these circumstances, on this record, the Specification, as
originally filed, does not show that Appellants were in possession of the
scope of the subject matter described in claims 10—29.
REJECTION UNDER § 112, second paragraph- Indefiniteness
Claims 10—29 are rejected under 35 U.S.C. § 112, second paragraph,
as indefinite for failing to particularly point out and distinctly claim the
subject matter which the applicant regards as his invention.
The text of 35 U.S.C. § 112, second paragraph, requires “[t]he
specification shall conclude with one or more claims particularly pointing
out and distinctly claiming the subject matter which the applicant regards as
his invention.” “As the statutory language of ‘particularity] ’ and
‘distinctness]’ indicates, claims are required to be cast in clear—as opposed
to ambiguous, vague, indefinite—terms.” In re Packard, 751 F.3d 1307,
1313 (Fed. Cir. 2014). Claims are in compliance with 35 U.S.C. § 112,
second paragraph, if “the claims, read in light of the specification,
reasonably apprise those skilled in the art both of the utilization and scope of
the invention, and if the language is as precise as the subject matter permits.”
Hybritech Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1385 (Fed.
Cir. 1986) (citing Shatterproof Glass Corp. v. Libbey-Owens Ford Co., 758
F.2d 613, 624 (Fed. Cir. 1985)). Thus, the test for determining
indefmiteness may be formulated as whether the claims “set out and
circumscribe a particular area with a reasonable degree of precision and
particularity.” In re Moore, 439 F.2d 1232, 1235 (CCPA 1971). With
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regard to the reasonableness standard, one must consider the language in the
context of the circumstances. Packard, 751 F.3d at 1313. Language is an
imprecise method of drawing boundaries delineating patent rights, thus
unreasonable precision cannot be demanded. Id. On the other hand, the
claims must notify the public of what they are excluded from making and
using. Id. For this reason, while exact precision is not required, an applicant
is required to use language as precise as the subject matter reasonably
permits. Id.
After careful review of the record before us, we determine that the
Specification does not provide guidance as to what the above-noted
language means. That is, we find the above-noted phrases in the claims do
not reasonably apprise those skilled in the art both of the utilization and
scope of the invention.
a. Storage at 12 months and 26 weeks
According to the Specification, the requirement for at least about 12
months of room temperature storage is associated with a thermal treatment
that seeks to artificially drive the naturally occurring acid generating
reactions in the liquid coffee concentrate to completion followed by addition
of a small amount of an edible alkali source in an amount effective to
increase the pH of the liquid coffee concentrate to form a stabilized liquid
coffee concentrate. Spec. 121. On the other hand, the requirement for the
26 weeks storage period is associated with the presence of furfuryl
mercaptan in the stabilized liquid coffee concentrate. Id. 122. While the
Specification states the belief that the levels of furfuryl mercaptan may be
related to aroma and souring of the coffee over time and that high levels of
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this compound can be undesirable in a liquid coffee beverage (id), it is not
clear how the two claimed storage periods are interrelated from the
standpoint of the impact of the claimed thermal treatment on the levels of
furfuryl mercaptan.
Further, the claim language specifies that the storage period of 12
months is at room temperature but does not specify a temperature at which
the storage for the time period of 26 weeks occurs. While the Specification
discloses an exemplary ambient temperature of 90 °F (id) for the 26-week
storage period (the only ambient temperature disclosed in the Specification),
one skilled in the art would not be apprised of the temperature for the 26-
week storage period from the claim language. In fact, one skilled in the art
reading the claim language would reasonably understand that the 26-week
storage period is also at room temperature. This, in turn, would also lead
one skilled in the art to understand that the 26-week storage period is
encompassed by the 12 month storage period, which would appear contrary
to the disclosure of different temperatures for each storage period. Spec. Tflf
21-22.
b. “Variance of the furfuryl mercaptan of up to about 4 percent ”
As set forth in the written description rejection, the Specification does
not provide guidance as to what the language “variance of the furfuryl
mercaptan of up to about 4 percent” means. Absent this guidance, we are
unable to determine the metes and bounds of the subject matter of
independent claims 10, 20, and 25, and of their respective dependent claims.
For the foregoing reasons, the scope of the claimed invention cannot
be determined.
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Accordingly, on this record, claims 10—29 are indefinite for the
reasons given above.
REJECTIONS UNDER §103
Having determined that the subject matter of claims 10—29 is
indefinite, we are unable to determine the propriety of the prior art rejections
of these claims. The review of the prior art rejections of claims 10—29 under
35 U.S.C. § 103 would require considerable speculation as to the scope of
the claims. Such speculation would not be appropriate. See In re Steele, 305
F.2d 859, 862 (CCPA 1962). We, therefore, procedurally reverse the prior
art rejections of claims 10—29 under 35 U.S.C. § 103. We emphasize that
this is a technical reversal of the rejections under 35 U.S.C. § 103, and not a
reversal based upon the merits of the rejections.
ORDER
The Examiner’s prior art rejections of claims 10—29 under 35 U.S.C.
§103 are reversed.
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b) (2012), which states that “[a] new ground of rejection
. . . shall not be considered final for judicial review.”
WITHIN TWO MONTHS FROM THE DATE OF THE DECISION,
Appellants 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
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to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the prosecution
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.
37 C.F.R. § 41.50(b) (2012).
REVERSED
37 C.F.R, $ 41.50(b)
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