Ex Parte White et al

Patent Trial and Appeal Board

Apr 14, 2016

11276553 (P.T.A.B. Apr. 14, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111276,553 0310612006
29052 7590 04/18/2016
SUTHERLAND ASBILL & BRENNAN LLP
999 PEACHTREE STREET, N.E.
Suite 2300
ATLANTA, GA 30309
FIRST NAMED INVENTOR
Newton R. White
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
25040.1464 3345
EXAMINER
MOORE, WALTER A
ART UNIT PAPER NUMBER
1793
NOTIFICATION DATE DELIVERY MODE
04/18/2016 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):
patent. docket@sutherland.com
pair_sutherland@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE
THE PA TENT TRIAL AND APPEAL BOARD
Ex parte NEWTON R. WHITE, 1
Kelly H. Sepcic, Gregg Carpenter, Lawrence B. Ziesel, and
Robert D. Hughes IV
Appeal2014-0026052
Application 11/276,553
Technology Center 1700
Before PETER F. KRATZ, MARK NAGUMO, and JAMES C. HOUSEL,
Administrative Patent Judges.
NAGUMO, Administrative Patent Judge.
DECISION ON APPEAL
Newton R. White, Kelly H. Sepcic, Gregg Carpenter,
Lawrence B. Ziesel, and Robert D. Hughes IV ("Coca-Cola") timely appeal
under 35 U.S.C. § 134(a) from the Final Rejection3 of claims 1, 4, 5, 9-22,
1 The real party in interest is listed as The Coca-Cola Company
("Coca-Cola"). (Appeal Brief, filed 28 May 2013 ("Br."), 2.)
2 Heard 12 April 2016. The Official Transcript, which was not available
when this Opinion was entered, will be made of record.
3 Office action mailed 23 October 2012 ("Final Rejection"; cited as "FR").
Appeal2014-002605
Application 11/276,553
and 24-29, which are all of the pending claims. We have jurisdiction.
35 U.S.C. § 6. We affirm.
OPINION
A. Introduction4
The subject matter on appeal relates to a method for dispensing a
beverage. As will be seen, a key limitation is storing a food-acid concentrate
separate from an acid-degradable concentrate, such that the food acid
concentrate cannot degrade the food acid-degradable concentrate during
storage.
Claim 21 is representative of the dispositive issues and reads:
Method for dispensing a selected beverage from a plurality of
selectable beverages comprising:
storing two or more non-sweetener beverage component
concentrates separately in two or more separate beverage
component storage containers to provide t\i:10 or more separately
stored non-sweetener beverage components, wherein
at least one of the two or more separately stored non-
sweetener beverage component concentrates comprises
a food acid concentrate and
at least one of the two or more separately stored non-
sweetener beverage component concentrates comprises
a food acid-degradable concentrate, and wherein
the at least one food acid concentrate and the at least one
food acid-degradable concentrate are stored separately
4 Application 11/276,553, Methods and apparatuses for making
compositions comprising an acid and an acid degradable component and/or
compositions comprising a plurality of selectable components,
filed 6 March 2006. We refer to the '"553 Specification," which we cite as
"Spec."
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Application 11/276,553
from each other prior to dispensing the selected
beverage, such that the food acid concentrate cannot
degrade the food acid-degradable concentrate during
storage;
receiving a request for the selected beverage; and
automatically and sequentially dispensing or
simultaneously dispensing, continuously in a
predetermined ratio for any volume of the beverage
dispensed, any combination of the two or more separately
stored non-sweetener beverage component concentrates
and a diluent into a container such that
the combination mixes and forms the selected beverage
comprising the combination of the two or more
separately stored non-sweetener beverage component
concentrates and the diluent.
(Claims App., Br. 30; some indentation, paragraphing, and emphasis added.)
Remaining independent claim 1 contains a comparable "wherein" clause
requiring separate storage of food acid concentrates and food acid-
degradable concentrates.
The Examiner maintains the following grounds of rejection5' 6 :
A. Claims 21, 22, and 24-29 stand rejected under
35 U.S.C. § 103(a) in view of the combined teachings of
Forsythe,7 Fisher,8 and Davis. 9
5 Examiner's Answer mailed 10 September 2013 ("Ans.").
6 A rejection of claims 1, 4, 5, 9-20, and 22 under 35 U.S.C. § 112(2) has
been withdrawn. (Ans. 17.)
7 David P. Forsythe, Beverage dispensing apparatus, U.S. Patent
No. 5,960,997 (1999).
8 Russel E. Fisher, System for dispensing flavored beverages, U.S. Patent
No. 2,880,912 (1959).
9 Charles W. Davis, Jr., et al., Method for increasing stability of liquid
beverage concentrate, U.S. Patent No. 4,830,870 (1989).
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Application 11/276,553
Al. Claim 28 stands rejected under 35 U.S.C. § 103(a) in view of
the combined teachings of Forsythe, Fisher, Davis, and
Boston. 10
B. Claims 1-5 and 9-20 stand rejected under 35 U.S.C. § 103(a)
in view of the combined teachings of Forsythe, Fisher,
Henley, 11 and either of Davis or Bourelle. 12
Bl. Claims 15-20 stand rejected under 35 U.S.C. § 103(a) in
view of the combined teachings of Forsythe, Fisher, Henley,
and either of Davis or Bourelle, and Boston.
B. Discussion
Findings of fact throughout this Opinion are supported by a
preponderance of the evidence of record.
During the examination of claims in an application for patent,
the PTO applies to the verbiage of the proposed claims the
broadest reasonable meaning of the words in their ordinary
usage as they would be understood by one of ordinary skill in
the art, taking into account whatever enlightenment by way
of definitions or otherwise that may be afforded by the
written description contained in the applicant's specification.
In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). Limitations are not to
be read from examples and preferred embodiments disclosed in the
Specification, and, indeed, the court has counseled the PTO "to avoid the
temptation to limit broad claim terms solely on the basis of specification
passages." In re Bigio, 381F.3d1320, 1325 (Fed. Cir. 2004).
10 Ronald P. Boston, Process for producing carbonated beverages, U.S.
Patent No. 4,695,468 (1987).
11 Terry L. Henley et al., Fluid dispensing apparatus, U.S. Patent
No. 3,827,467 (1974).
12 Joseph G. Bourelle, Beverage Package, U.S. Patent No. 3,305,368 (1967).
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Application 11/276,553
Initially, we find that although Coca-Cola presents arguments under
separate headings for rejections Al, B, and Bl, these arguments are not,
with one exception discussed infra, substantively distinct from the
arguments for the patentability of claim 21.
Coca-Cola urges the Examiner erred in construing the requirement of
the independent claims that the food acid concentrate and the food acid-
degradable concentrates must be stored separately. In particular, according
to Coca-Cola, "as used by the Appellants the terms 'separate' and
'separately' are clear: they mean 'completely separate'-if an acid was
present in the acid-degradable component storage, the acid would degrade
the acid-degradable component." (Br. 10, 11. 1-3.) "Appellants' [sic]
expressly claim, however," Coca-Cola continues, "that the acid and acid-
degradable components are stored such that they cannot react during
storage." (Id. at 11. 3-5.) According to Coca-Cola, however, "Davis
discloses citrus-flavored beverages that are prepared by dispensing
separately stored components. An acid-degradable citrus oil is stored with
acid as one component, and an acid-only component is stored separately as
another component." (Id. at 11, 11. 1--4.) Coca-Cola concludes that "Davis,
therefore, does not teach the complete separation of an acid from an acid-
degradable component." (Id. at 11. 8-9.) "Furthermore," Coca-Cola adds,
"Davis fails to teach or suggest a food acid concentrate, another element of
Appellants' claim 21." (Id. at 11. 21-22.)
The '553 Specification reveals that, "[a]s used herein, the term 'acid-
degradable component' means that the component is capable of reacting
with at least one acid." (Spec. 5, 11. 7-8.) In the words of the Specification,
such reactions may "cause a change in the taste of the beverage composition
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when both are mixed to form the beverage composition." (Id. at 11. 12-13.)
Examples of food acid-degradable beverage components suitable for the
invention are said to include "flavor oils, flavor chemicals, natural flavor
extracts, caramel, preservatives, caffeine, caloric sweeteners (e.g. natural
and artificial), non-caloric sweeteners (e.g. natural and artificial), vitamins,
and combinations thereof." (Id. at 6, 11. 24-26.) Among the beverage
flavors mentioned in the Specification are lemon-lime cola (id. at 17, 1. 13)
and "'Lime"' (id. at 1. 23).
Coca-Cola does not direct our attention to a definition in the
Specification for the term "food acid concentrate," nor do we find one. The
Specification does teach that examples of food acids include "phosphoric
acid, lactic acid, citric acid, fumaric acid, tartaric acid, malic acid, ascorbic
acid or combinations thereof." (Id. at 6, 11. 20-21; see also original
claim 13.) The Specification provides ranges for the ratio of the beverage
composition to the acid concentrate or to the acid-degradable component
ranging from about 1,000,000:1 to about 5:1. (Id. at 7, 1. 25, to 8, 1. 28.)
The Specification also teaches that "[ s Jui table diluents include, but are not
limited to, syrup, a caloric sweeteners, a non-caloric sweeteners, water,
carbonated water, and combinations thereof." (Id. at 11, 11. 6-8.)
The Examiner finds (FR 5), and Coca-Cola does not dispute, that
Davis discloses that "the citrus oil-containing component is prepared at a pH
of about 3.7 to about 4.6 and preferably at a pH of about 3.8 to about 4.2
with 4.1 being the optimum pH" (Davis, col. 2, 1. 66 to col. 3, 1.1 ). The
Examiner also finds (FR 5), and Coca-Cola does not dispute, that Davis
teaches further that "preparation of the citrus oil-containing component at a
pH of about 3.8 to about 4.2 results in a tremendous increase in flavor oil
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Application 11/276,553
stability as measured organoleptically and analytically as compared to a
typical 'single component' beverage concentrate wherein the acid and citrus
oil are packaged together." (Davis, col. 3, 11. 7-13.) In Examples 1and2,
cited by Coca-Cola (Br. 11 ), the pH of the acid-containing component (citric
acid) is 1.5. (Davis, col. 3, 11. 62-63; col. 4, 11. 24-25.)
The "complete separation" argument advanced by Coca-Cola is not
supported by definitions of the relevant terms in the '553 Specification. The
claims require that the food acid concentrate be stored separately from the
food acid-degradable concentrate "such that the food acid concentrate
cannot degrade the food acid-degradable concentrate." Under the broadest
reasonable interpretation in light of the supporting disclosure, the functional
"such that" limitation is met when food acid is separated from the food-acid
degradable concentrate to the extent that the food-acid degradable
concentrate is not degraded by the residual food acid. Coca-Cola's proffered
claim construction assumes that "food acid-degradable materials" are
degraded by the presence of any amount of food acid. This proposition is
contradicted by the teachings of Davis, which indicate that optimal stability
of various acid-degradable flavoring ingredients, such as lemon oil
emulsions (and aspartame, a preferred sweetener; Davis col. 3, 11. 19-39), is
obtained at mildly acidic pH.
The weight of the evidence is that the term "food acid-degradable
materials" would have been understood by persons having ordinary skill in
the art as materials that are degraded by food acids at concentrations similar
to that of the food acid concentrates. A person having ordinary skill in the
art would have expected, reasonably, that a material that does not undergo
significant (here, e.g., tastable) degradation at pH 4.1, would not be
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Application 11/276,553
degraded by the food acid that is present when stored at pH 4.1 under
ordinary storage conditions for ordinary storage periods. On the present
record, Coca-Cola's challenge that Davis does not disclose separate storage
of a food acid-degradable concentrate is not persuasive of harmful error in
the appealed rejections.
As for Coca-Cola's challenge (Br. 11, 11. 20-21) that Davis does not
disclose a food-acid concentrate, the separately stored citric acid solution
having a pH of 1.5 (Davis, col. 3, 11. 62-63 and col. 4, 11. 24-25) is a "food
acid concentrate." The acid concentration is higher than the potable
beverage, 13 and thus the characterization as a "concentrate" is apt.
Coca-Cola's additional arguments, e.g., that the Examiner erred by
improperly reading the open character of the transitional phrase "comprise"
into an subordinate closed limitation, are without merit, as they rely on the
improper interpretation of the term "acid-degradable material" discussed
supra.
Coca-Cola's argument that the Examiner's reliance on Bourelle's
teaching of carbonated water is flawed because, "[a]s is known to those of
ordinary skill in the art, carbonated water is not a food acid concentrate"
(Br. 17, 11. 18-19) is not supported by citation to reliable authority. While
we decline to take Official Notice of such a "fact," it has not escaped our
notice that the Specification lists carbonated water among "diluents." This
at least suggests that carbonated water is not regarded as a food acid. In the
13 Davis describes a lemonade made by blending the citrus oil component
and the acid-containing component at a ratio of 1: 1, and then diluting at a
volume-ratio of 5: 1 with water. (Davis, col. 4, 11. 26-33.)
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absence of evidence that the pH of carbonated water is sufficient to induce
acid-degradation of lemon oil emulsions such as those described by Davis,
we find the Examiner's reliance on Bourelle to be erroneous on the present
record. However, as Bourelle is cited as an alternative to Davis, for which
we find no harmful error, the Examiner's reliance on Bourelle was in this
case harmless.
Coca-Cola raises no other substantive criticisms of the appealed
rejections. We conclude that Coca-Cola has not demonstrated harmful error
in the appealed rejections.
C. Order
It is ORDERED that the rejection of claims 1, 4, 5, 9-22, and 24-29 is
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l.136(a).
AFFIRMED
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