Ex Parte West et al

Patent Trial and Appeal Board

Jun 28, 2016

12548127 (P.T.A.B. Jun. 28, 2016)

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.
12/548,127 08/26/2009 Leslie George West 9610-96792-US 6522
109813 7590 06/28/2016
Fitch, Even, Tabin & Flannery, LLP
120 South LaSalle Street
Suite 1600
Chicago, IL 60603-3406
EXAMINER
GWARTNEY, ELIZABETH A
ART UNIT PAPER NUMBER
1791
MAIL DATE DELIVERY MODE
06/28/2016 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 LESLIE GEORGE WEST, DOMINIC VELLUCCI,
NAM-CHEOL KIM, GEORGE WILLIAM HAAS,
and ORLANDO HERRERA-GOMEZ
____________

Appeal 2014-007066
Application 12/548,127
Technology Center 1700
____________
Before PETER F. KRATZ, CHRISTOPHER L. OGDEN, and
MONTÉ T. SQUIRE, Administrative Patent Judges.
SQUIRE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants1 appeal the Examiner’s final rejection of claims 1–4 and 6.
35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6(b).
For the reasons set forth below, we REVERSE.

1 Appellants identify Kraft Foods Global Brands LLC as the Real Party in
Interest. App. Br. 3.
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Application 12/548,127
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The Claimed Invention
Appellants’ disclosure is directed to a sweetener derived from a heat-
processed, powdered extract of luo han guo, which is a fruit native to certain
regions of Southern Asia and China. Sub. Spec. ¶¶ 2, 3, 5, 9, 12; App. Br. 3.
Claim 1 is representative of the claims on appeal and is reproduced below
from the Claims Appendix to the Appeal Brief (App. Br. 23):
1. A natural sweetener from a heat-processed extract
of luo han guo, the luo han guo exposed to heat which
creates the heat-processed extract with flavor/odor
components selected from the group consisting of
saturated aldehydes, unsaturated aldehydes, methyl
ketones, butyl-crotonate and color/taste components
comprising phenolics, the flavor/odor components and the
color/taste components in the natural sweetener in
amounts more than in a fresh, non-heat-processed extract,
the natural sweetener from the heat-processed extract of
luo han guo comprising:
at least about 30 percent mogroside V on a dry basis
as determined using HPLC;
at least one flavor/ odor component selected from
the group consisting of saturated aldehydes, unsaturated
aldehydes, methyl ketones, butyl-crotonate and
combinations thereof, but not more than about 50 ppm of
the at least one flavor/ odor component of the heat-
processed extract; and
at least one color/taste component including
phenolics, but not more than about 10 mg/ gram of the
color/ taste component of the heat-processed extract.
The References
The Examiner relies on the following prior art in rejecting the claims
on appeal:
Shi et al., US 2009/0162511 A1 June 25, 2009
(hereinafter “Shi”)

Appeal 2014-007066
Application 12/548,127
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Sun et al., CN 1011007042 A Aug. 1, 2007
(hereinafter “Sun”)
The Rejections
On appeal, the Examiner maintains the following rejections:
1. Claims 1–4 and 6 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Shi.
2. Claims 1–4 and 6 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Sun.
OPINION
Rejection 1
Appellants argue that the Examiner’s rejection of claim 1 should be
reversed because: (1) Shi does not disclose that the “luo han guo fruit
extracts are heat processed”; (2) the Examiner’s finding that Shi’s luo han
guo extract is “substantially similar to the claimed sweetener” is erroneous;
and because (3) the “extracts of Shi . . . do not inherently disclose the
claimed compositions which include residual components created by intense
heat treatment.” App. Br. 11.
The Examiner bears the initial burden of establishing a prima facie
case of obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
The Examiner finds that Shi teaches all of claim 1’s limitations. Ans. 3, 4
(citing Shi, Abstract, ¶¶ 10, 25, Example 2).
In particular, the Examiner finds that Shi discloses a natural sweetener
composition comprising luo han guo fruit extract with 40–45% mogroside-
V, and that the fruit extract is de-colored by separation and purification
techniques to remove its bitter taste. Ans. 4 (citing Shi, Abstract, ¶¶ 10, 25,
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Example 2). The Examiner finds further that the sweetener Shi discloses is
“substantially similar to that presently claimed,” i.e., the “sweetener is clean
tasting and only comprises residual amounts of undesired and objectionable
components.” Id. The Examiner also finds that because “it is generally
known that fresh fruits may comprise aldehyde and phenolic compounds,
intrinsically the sweetener composition [disclosed by Shi] would comprise
the claimed flavor/odor components and the color/taste component, i.e.
phenolic compounds, in the claimed amounts.” Id.
We are not persuaded that the record contains sufficient evidence for
the Examiner’s findings (Ans. 4) to constitute a sound basis for believing
that Shi’s sweetener composition is “substantially similar to that presently
claimed” and that it inherently “comprise[s] the claimed flavor/odor
components and the color/taste component . . . in the claimed amounts.” For
a claim limitation to be found inherently present in the cited prior art
reference, the limitation must be either (a) necessarily present, or (b) the
natural result of the combination of elements explicitly disclosed by the prior
art. Par Pharmaceutical, Inc. v. TWI Pharmaceuticals, Inc., 773 F.3d 1186,
1195–96 (Fed. Cir. 2014).
The Examiner does not identify sufficient reasons to conclude that the
claimed residual components created by the heat treatment process are
necessarily present in the prior art sweetener in the claimed amounts, or the
natural result of the combination of elements explicitly disclosed by the prior
art. As noted by Appellants (App. Br. 13), the Examiner does not point to
any teachings in Shi that disclose or suggest the claimed component
limitations. The portions of Shi that the Examiner relies upon in the Answer
as support for showing a basis for inherency refer to fresh luo han guo fruit
and describe soaking fresh luo han guo fruit in hot water to generate a liquid
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extract, concentrating the liquid extract, and spray drying the concentrated
extract to form a powder. See Shi, Abstract, ¶¶ 9, 10, 14, 25, Example 2.
None of these cited portions, however, teach, suggest, or mention the
flavor/odor components and taste/color components, as required by the
claims.
The portions of Shi the Examiner cites also do not constitute a sound
basis to believe that Shi’s sweetener composition is “identical or
substantially identical” to Appellants’ claimed composition. In re Best, 562
F.2d 1252, 1255 (CCPA 1977). The Examiner’s conclusory assertions that
“it is generally known that fresh fruits may comprise aldehyde and phenolic
compounds” and that the “sweetener is clean tasting and only comprises
residual amounts of undesired and objectionable components” (Ans. 4),
without more, are insufficient basis to support a conclusion that the prior art
and claimed compositions are substantially identical and support a prima
case face of obviousness. In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)
(“rejections on obviousness grounds cannot be sustained by mere conclusory
statements”).
Moreover, as noted by Appellants (App. Br. 13) and contrary to the
Examiner’s findings, the preponderance of record evidence seems to suggest
that the claimed sweetener and prior art sweetener are, in fact, not
substantially identical because they are not produced by identical or
substantially identical processes. See, e.g., Dr. West Declaration of
February 1, 2012, ¶¶ 8, 9, 13, 14 (explaining that the extracts described in
the cited prior art references would not include residual products created by
heat and any of the reaction by-products at the levels described in the
claimed sweetener because the prior art references do not use heat-processed
luo han guo or expose the fruit to severe heat treatment). The Examiner has
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failed to direct us to a sufficient basis in the record to support a contrary
finding or otherwise establish a prima facie case. Oetiker, 977 F.2d at 1445.
Accordingly, we reverse the Examiner’s rejection of claim 1 under 35
U.S.C. § 103(a) as unpatentable over Shi. Because claims 2–4 and 6 depend
from claim 1, we also reverse the Examiner’s rejection of these claims.
Rejection 2
For this rejection, the Examiner finds that Sun teaches all of claim 1’s
limitations. Ans. 4, 5 (citing Sun, p. 2, ¶ 57 (Abstract); p. 4, Spec. (Prior
art)). The Examiner makes similar findings regarding the teachings of the
prior art and relies on essentially the same obviousness analysis as
previously discussed above for Rejection 1. See id. In response, Appellants
rely on the same arguments and errors in the Examiner’s analysis identified
above in response to Rejection 1. App. Br. 11–19.
Accordingly, for the reasons discussed above for reversing the
Examiner’s rejection of claims 1–4 and 6 under 35 U.S.C. § 103(a) as
unpatentable over Shi, we also reverse the Examiner’s rejection of claims 1–
4 and 6 under 35 U.S.C. § 103(a) as unpatentable over Sun.
DECISION/ORDER
The Examiner’s rejections of claims 1–4 and 6 are reversed.
It is ordered that the Examiner’s decision is reversed.

REVERSED