Ex Parte Ungureanu et alDownload PDFPatent Trial and Appeal BoardFeb 4, 201612669393 (P.T.A.B. Feb. 4, 2016) 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. 12/669,393 01/15/2010 Ioana Maria Ungureanu GIV.P30312 3724 23575 7590 02/04/2016 CURATOLO SIDOTI CO., LPA 24500 CENTER RIDGE ROAD, SUITE 280 CLEVELAND, OH 44145 EXAMINER RICCI, CRAIG D ART UNIT PAPER NUMBER 1628 MAIL DATE DELIVERY MODE 02/04/2016 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 IOANA MARIA UNGUREAUNU, NICOLE ERNA IRENE BRUNE, JAY PATRICK SLACK, KIMBERLEY GRAY, CHRISTOPHER TODD SIMONS, and JENNY ELLEN EVANS PENNIMPEDE1 ________________ Appeal 2013-007641 Application 12/669,393 Technology Center 1600 ________________ Before DONALD E. ADAMS, JEFFREY N. FREDMAN, and JOHN G. NEW, Administrative Patent Judges. NEW, Administrative Patent Judge. DECISION ON APPEAL 1Appellants state the real party-in-interest is Givaudin S.A. App. Br. 3. Appeal 2013-007641 Application 12/669,393 2 SUMMARY Appellants file this appeal under 35 U.S.C. § 134(a) from the Examiner’s Final Rejection of claims 4, 5, 7, and 15 as unpatentable under 35 U.S.C. § 103(a) as being obvious over the combination of Noda et al (JP 356068612 A, June 9, 1981)2 (“Noda”), Eda et al. (JP 5606812 A, June 9, 1981) 3 (the “Derwent Summary”), and Kiel et al (US 2003/0077321, April 24, 2003). We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. NATURE OF THE CLAIMED INVENTION Appellants’ invention is directed to compounds that block off-notes in consumables and methods of blocking off-notes in consumables including off-notes provided by sweeteners such as stevioside, swingle extract, glyccerhizin, perillartine, naringin dihydrochal-cone, neohesperidine dihydrochalcone, mogroside V, rubusoside, rubus extract, and rebaudioside A, and artificial sweeteners such as aspartame, saccharin, acesulfame K (Acesulfame potassium), sucralose and cyclamate. Abstract. 2 Based on the STN Summary “Novel Antiallergenic Agent” (Accession Number 1981-538635). 3 Based on STN Summary “Antiallergenic Agents for Treating Rheumatism, Auto-immune Disease, etc. Contain Cyclohexane Carboxylic Acids” (Accession Number 1981-54184D). Appeal 2013-007641 Application 12/669,393 3 REPRESENTATIVE CLAIM Claim 4 is the sole independent claim on appeal and recites: 4. A food additive or food product flavor composition comprising an off-note providing consumable ingredient comprising one or more of artificial sweetener, beverage, chewing gum, or nutraceutical and one or more off-note blocking compounds comprising one or more of cis-4- propylcyclohexanecarboxylic acid, cis-4- tertbutylcyclohexanecarboxylic acid, cis-4- propylbicyclo[2.2.2]octane-I-carboxylic acid, cis-4- secbutylcyclohexanecarboxylic acid, cis-4-(4-methylpentyl) cyclohexanecarboxylic acid, cis-4- benzylcyclohexanecarboxylic acid, or cis-4- phenylcyclohexanecarboxylic acid. App. Br. 20. ISSUE Did Examiner err in finding the combined cited prior art teaches or suggests the limitations of claims 4 and 5? ANALYSIS Appellants admit Noda teaches at least one of the off-note blocking compounds identified in independent claims 4 and 5, but argue that the compounds are identified by Noda only as anti-allergic agents having various medicinal and therapeutic properties and health benefits. App. Br. 11. Appellants also contend Kiel, which teaches formation of a tannate salt complex for incorporation into medicinal dosages, fails to cure the deficiencies of Noda. Id. According to Appellants, neither Noda nor Kiel teach or suggest that the claimed compounds have off-note blocking Appeal 2013-007641 Application 12/669,393 4 properties or can be added to a food additive or food product flavor composition to mask or block the undesirable off-notes of consumable ingredients such as artificial sweeteners, beverages, chewing gums, or nutraceuticals. Id. Appellants argue further that, because Noda teaches using the compounds only for their anti-allergic and other medicinal properties, and does not teach the compounds have off-note blocking or suppressing properties, the ordinary skilled person would have no reason to combine the teachings of Noda with Kiel. App. Br. 11. Appellants additionally dispute the Examiner’s finding that the language of the preamble to the claim, i.e., “A food additive or food product flavor composition” is not limiting on the body of the claim. App. Br. 13. Specifically, Appellants contend the preamble language provides information indispensable to understanding the invention recited by claims 4 and 5, viz., that the flavor composition or consumable is a food additive or food product flavor composition or consumable, as contrasted to the pharmaceutical composition taught by Noda. Id. at 14. Appellants contend this description would aid one of ordinary skill in the art in precisely understanding what is being covered by the limitations of claims 4 and 5 and, therefore, the preamble language imports a limitation into the claim which carries patentable weight to the scope of claims 4 and 5. Id. The Examiner finds Noda teaches anti-allergy formulations comprising a cyclohexanecarboxylic acid and, specifically, cis-4- propylcyclohexanecarboxylic acid, formulated as a capsule and further comprising lactose, cornstarch, crystalline cellulose and magnesium stearate. Ans. 5 (citing Noda Abstract; see also Derwent Summary (disclosing a Appeal 2013-007641 Application 12/669,393 5 compound of formula (I) wherein R is, for example, n-Propyl)). Id. The Examiner finds Noda teaches “[a] compound of the formula [wherein] R is C1–l0 alkyl … made into capsules … [comprising as] a carrier for preparation ... a saccharide such as glucose, sucrose, or lactose, a cellulose derivative such as methylcellulose or crystallized cellulose, or starch”). Id. (quoting Noda at 2). Consequently, the Examiner finds, Noda teaches a composition consisting of an anti-allergy capsule comprising cis-4-propylcyclohexane- carboxylic acid and glucose, sucrose or lactose. App. Br. 5–6. However, the Examiner finds Noda does not teach the limitation of claim 4 reciting “one or more of artificial sweetener, beverage, chewing gum, or nutraceutical.” Id. at 6. The Examiner finds Kiel teaches excipients commonly used in the formulation of capsules include “sweetening agents such as sucrose, saccharin sodium, sucralose and Magnasweet,” which are recognized in the art as artificial sweeteners. App. Br. 6 (quoting Kiel ¶ 74). The Examiner therefore concludes it would have been obvious to substitute an artificial sweetening agent commonly used as an excipient in the formulation of capsules (i.e., sucralose, as taught by Kiel) in place of another known sweetening agent commonly used as an excipient in the formulation of capsules (i.e., sucrose, as taught by Nada) with a reasonable expectation of success. App. Br. 6. We agree with the Examiner. Claim 4 recites a composition comprising: (1) an off-note providing consumable ingredient comprising one or more of artificial sweetener….; and (2) and one or more off-note blocking compounds comprising one or more of cis-4- Appeal 2013-007641 Application 12/669,393 6 propylcyclohexanecarboxylic acid ….” Noda teaches a composition consisting of cis-4-propylcyclohexanecarboxylic and a carrier for preparation, [the latter comprising a] saccharide such as glucose, sucrose, or lactose, a cellulose derivative such as methylcellulose or crystallized cellulose, or starch.” Noda 1–2. Kiel teaches The excipients commonly used in the formulations are as follows: Microcrystalline cellulose (Avicel), lactose, Mannitol and Di-Pac (compressible sugar) as diluents; magnesium aluminum silicate, xanthan gum, polyvinylpyrrolidone and cellulose compounds as anti-clumping agents; starch hydroxypropyl methylcellulose (HPMC E-10) and xanthan gum as binders; sweetening agents such as sucrose, saccharin sodium, Sucralose and Magnasweet. Kiel ¶ 74 (emphases added). Kiel thus teaches a number of the same excipients taught by Noda, and further teaches that artificial sweeteners, such as saccharin or sucralose are functionally equivalent as sweetening agents. We consequently agree with the Examiner’s conclusion that it would have been obvious to a person of ordinary skill in the art to substitute the artificial sweetener of Kiel for the natural sweeteners (i.e., sucrose, lactose) taught by Noda. “A combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 401 (2007). That the prior art has a different reason to combine the compounds of Noda and Kiel is of no moment as long as there is a sufficient reason to make the combination. See In re Kemps, 97 F.3d 1427, 1430 (Fed. Cir. 1996) (“[T]he motivation in the prior art to combine the references does not have to be identical to that of the applicant to establish obviousness.”). Appeal 2013-007641 Application 12/669,393 7 We are not persuaded by Appellants’ argument that the language of the preamble is a limitation on the claim. “[A] claim preamble has the import that the claim as a whole suggests for it.” Bell Communications Research, Inc. v. Vitalink Communications Corp., 55 F.3d 615, 620 (Fed. Cir. 1995). In instances where a patentee uses the claim preamble to recite structural limitations of his claimed invention, the PTO and courts give effect to that usage. Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997) (citing Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868 F.2d 1251, 1257 (Fed. Cir. 1989). Conversely, where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention, the preamble is not a claim limitation. Id. (citing Bell Communications, 55 F.3d at 620; Kropa v. Robie, 187 F.2d 150 (1951). In the instant appeal, the body of claim 4 recites a structurally complete composition, viz., “an off-note providing consumable ingredient comprising one or more of artificial sweetener, beverage, chewing gum, or nutraceutical and one or more off-note blocking compounds comprising one or more of cis-4-propylcyclohexanecarboxylic acid ….” The language of the preamble recites an intended use or purpose of the composition, i.e., as “[a] food additive or food product flavor composition.” Consequently, the preamble does not limit the composition recited in the body of the claims. Nor are we persuaded by Appellants’ arguments to the contrary. Appellants contend that it is only by the preamble language “food additive or food product” that it can be known that the subject matter defined by the claims is a flavor composition or consumable used in connection with a food additive or food product, and not a pharmaceutical as taught by Noda. See Appeal 2013-007641 Application 12/669,393 8 App. Br. 14. We agree with the Examiner, however, that the language of the preamble recites nothing more than the intended use of the invention that is completely described in the body of the claim. We consequently affirm the Examiner’s rejection. DECISION The Examiner’s rejection of claims 4 and 5 as unpatentable under 35 U.S.C. § 103(a) is affirmed. Claims 7 and 15 are not separately argued and fall with claims 5 and 4 respectively. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation