Ex Parte Yang

Board of Patent Appeals and Interferences

Oct 15, 2009

10091149 (B.P.A.I. Oct. 15, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte BAOKANG YANG
____________

Appeal 2009-001002
Application 10/091,149
Technology Center 1700
____________

Decided: October 15, 2009
____________

Before CATHERINE Q. TIMM, JEFFREY T. SMITH, and
LINDA M. GAUDETTE, Administrative Patent Judges.

GAUDETTE, Administrative Patent Judge.

DECISION ON APPEAL

Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision finally rejecting claims 1-8, 10-22, and 24 (Final Office Action,
Appeal 2009-001002
Application 10/091,149

mailed May 30, 2006), the only claims pending in the application. (Br. 1.)1
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
STATEMENT OF THE CASE
Claim 1, the sole independent claim, and dependent claim 21 are
illustrative of the subject matter on appeal, and are reproduced from the
Claims Appendix to the Appeal Brief:
1. A clear fruit-juice based beverage composition comprising:

(a) a source of protein in an amount from about 0.5 to about 10
wt % of the composition, wherein the protein source is a combination of
whey protein isolate and whey protein hydrolysate;

(b) a source of carbohydrate in an amount from about 1 to about
30 wt % of the composition;

(c) a source of edible acids in an amount from about 0.01 to
about 3 wt % of the composition; and

(d) a source of fruit juices in an amount from about 5 to about
40 wt % of the composition.

21. The composition of claim 1 further comprising from about 0.5
wt % to about 4% of the composition of at least one fiber selected from the
group consisting of polydextrose, inulin, and arabinogalactan

The Examiner relies on the following evidence to establish
unpatentability (Examiner’s Answer (“Ans.”), mailed May 8, 2008, 3):
Liebrecht US 6,106,874 Aug. 22, 2000

1 “Appeal Brief” or “Br.” refers to the Appeal Brief filed Jan. 22, 2008, with
the exception of sections VI and VII, which were replaced by corrected
sections VI and VII in a Response to Notification of Non-Compliant Appeal
Brief, filed Mar. 19, 2008.
2
Appeal 2009-001002
Application 10/091,149

Harada (as translated) JP 04311378 Nov. 4, 1992
Burke GB 2 335 134 A Sep. 15, 1999
Appellant requests review of the following grounds of rejection (Br.
3):
1. claims 1-8, 10-20, 22, and 24 under 35 U.S.C. § 103(a) as
unpatentable over Liebrecht in view of Burke2; and
2. claim 21 under 35 U.S.C. § 103(a) as unpatentable over
Liebrecht in view of Burke, and further in view of Harada.
Appellant has not presented separate arguments as to any particular
claim or group of claims. Accordingly, we decide the appeal of all claims
subject to the first ground of rejection on the basis of claim 1.
We have fully considered Appellant’s arguments, but are not
convinced of reversible error for the reasons expressed in the Examiner’s
Answer (see Ans. 6-11, Response to Argument). We note that Appellant has
not filed a Reply Brief addressing any of the Examiner’s assertions in the
Response to Argument section of the Answer. We add the following
discussion primarily to underscore the pertinent case law.
Rejection of claims 1-8, 10-20, 22, and 24 under 35 U.S.C. § 103(a)
as unpatentable over Liebrecht in view of Burke

The first issue before us is whether Appellant has shown that the
Examiner failed to establish a prima facie case of obviousness because
“there is no suggestion or motivation in Burke or Liebrecht” to include whey

2 The Examiner incorrectly identifies claim 23 as subject to this ground of
rejection. (Ans. 3.) However, claim 23 has been canceled. (Br. 3, ¶ IV;
Ans. 2, ¶¶ (3) and (4).)
3
Appeal 2009-001002
Application 10/091,149

protein hydrolysate in Liebrecht’s beverage. (Br. 4 (citing Uniroyal, Inc. v.
Rudkin-Wiley Corp., 837 F.2d 1044, 1051 (Fed. Cir. 1988)).)
Appellant concedes that “Burke and Liebrecht [disclose] nutritional
beverages based on fruit juice, carbohydrate and protein.” (Br. 3.)
Liebrecht’s beverage contains whey protein isolate. (Liebrecht, col. 7, l. 47.)
Burke discloses that “[w]hey protein hydrolysate is highly refined . . . and
. . . more easily digested by the user than . . . conventional whey protein
isolates.” (Burke 3, ll. 21-23.)
In KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398 (2007), the Supreme
Court expressly rejected a rigid approach to the “teaching, suggestion, or
motivation” (TSM) test. Id. at 419-20. The Court reiterated that
“motivation may be found implicitly in the prior art” and that there is not “a
rigid test that requires an actual teaching to combine before concluding that
one of ordinary skill in the art would know to combine references.” Id at
421-22 (quoting Alza Corp. v. Mylan Labs. Inc., 464 F.3d 1286, 1291 (Fed.
Cir. 2006)). The Court also rejected the idea that obviousness under § 103
can never be based on a showing that a combination was obvious to try,
stating:
[w]hen there is a design need or market pressure to solve a
problem and there are a finite number of identified, predictable
solutions, a person of ordinary skill has good reason to pursue
the known options within his or her technical grasp. If this
leads to the anticipated success, it is likely the product not of
innovation but of ordinary skill and common sense.

KSR, 550 U.S. at 421.
In our view, the Examiner properly followed the guidelines set forth
in KSR for identifying a motivation to combine the applied prior art.
4
Appeal 2009-001002
Application 10/091,149

Specifically, the Examiner’s proposed motivation to modify Liebrecht’s
beverage to include whey protein hydrolysates was reasonably based on
Burke’s disclosed advantages of hydrolysates over conventional whey
protein isolates and the use thereof in a fruit-juice based beverage. (See Ans.
4-5.) Appellant’s general assertion that neither reference suggests the
desirability of the combination (Br. 4) is not sufficient to show error in the
Examiner’s finding of a motivation to combine.
The second issue before us is whether Appellant has shown that the
Examiner failed to establish a prima facie case of obviousness because there
would have been no reasonable expectation of success without undue
experimentation (Br. 4) in obtaining a clear, palatable beverage without
protein precipitate upon addition of whey protein hydrolysate to Liebrecht’s
beverage.
According to Liebrecht, whey protein concentrate can be incorporated
into a calcium supplemented fruit juice-based beverage “without negatively
impacting [its] clarity.” (Liebrecht, col. 4, ll. 20-25.) Liebrecht’s beverage
is described as “essentially free of sediment (clear or transparent).”
(Liebrecht, col. 1, ll. 53-55.)
According to Burke, it is generally known that “the addition of a whey
protein hydrolysate to a conventional fruit juice beverage does not produce
an acceptable product because dissolved solids which precipitate on storage
are introduced.” (Burke, p. 3, ll. 23-26.) However, Burke is said to have
discovered “that a carbohydrate level of 2 to 6 g/100 ml . . . produces a much
improved organoleptically and physically acceptable product.” (Burke, p. 3,
28-31.) (Ans. 6.) According to Burke, a beverage containing “a soluble
whey protein hydolysate [sic] in an amount of 5 to 20 g/l . . . provides a
5
Appeal 2009-001002
Application 10/091,149

significant proportion of the recommended daily intake of protein.” (Burke,
p. 3, ll. 18-21.)
Liebrecht’s beverage preferably has a total carbohydrate content of
“no greater than 135 grams per liter.” (Liebrecht, col. 8, ll. 4-8.) Liebrecht
states that the fruit juice typically contributes from 30 to 120 g/L and “[a]ny
supplemental carbohydrates will typically be added in a quantity of from
about 15 to about 90 grams per liter.” (Liebrecht, col. 8, ll. 1-4 and 8-10.)
Burke discloses that the carbohydrate source is preferably dextrose
monohydrate or glucose. (Burke p. 5, ll. 18-21.)
Liebrecht states that “[t]he carbohydrate component of the
formulation may be any nutritionally acceptable blend of carbohydrates such
as sucrose, glucose, fructose, corn syrup solids and maltodextrin.”
(Liebrecht, col. 8, ll. 12-15.)
Burke specifically discloses a “combination of orange juice, whey
protein hydrolysate and carbohydrate [which] yields a beverage product with
excellent organoleptic and physical properties.” (Burke, p. 5, ll. 28-30.)
Liebrecht discloses that “[f]ruit juices useful in the inventive beverage
include citrus juices and non-citrus juices. The citrus juices include juices
from orange.” (Liebrecht, col. 5, ll. 55-57.)
A prima facie case of obviousness exists where the prior art and
claimed ranges overlap, as well as in those cases where the claimed range
and the prior art range, though not overlapping, are sufficiently close that
one skilled in the art would have expected them to have the same properties.
See, e.g., In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003); In re
Geisler, 116 F.3d 1465, 1469 (Fed. Cir. 1997); In re Woodruff, 919 F.2d
6
Appeal 2009-001002
Application 10/091,149

1575, 1578 (Fed. Cir. 1990); Titanium Metals Corp. v. Banner, 778 F.2d
775, 783 (Fed. Cir. 1985).
When patentability is predicated upon a change in a condition of a
prior art composition, such as a change in concentration or the like, the
burden is on Appellant to establish with objective evidence that the change
is critical, i.e. it leads to a new unexpected result. See In re Woodruff, 919
F.2d at 1578; In re Aller, 220 F.2d 454, 456 (CCPA 1955).
Where . . . the claimed and prior art products are identical
or substantially identical, or are produced by identical or
substantially identical processes, the PTO can require an
applicant to prove that the prior art products do not necessarily
or inherently possess the characteristics of his claimed product.
Whether the rejection is based on ‘inherency’ under 35 U.S.C.
§ 102, on ‘prima facie obviousness under 35 U.S.C. § 103,
jointly or alternatively, the burden of proof is the same, and its
fairness is evidenced by the PTO's inability to manufacture
products or to obtain and compare prior art products.

In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (citations omitted). See also,
In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990).
Appellant does not dispute the Examiner’s finding that Liebrecht
discloses the invention as claimed in appealed claim 1 with the exception of
whey protein hydrolysates. (Ans. 3-4; see Br. 3-5.) Burke discloses a
similar type of beverage containing whey protein hydrolysate that has
“excellent organoleptic and physical properties” (Burke, p. 5, ll. 28-30), but
does not specifically state that the beverage is clear as required by appealed
claim 1. However, we find that the facts and reasons relied on by the
Examiner are sufficient under In re Best and In re Spada to establish that the
addition of whey protein hydrolysate to Liebrecht’s clear beverage,
7
Appeal 2009-001002
Application 10/091,149

containing fruit-juice, whey protein isolate and carbohydrate (Liebrecht,
col. 5, ll. 55-57), would inherently result in a clear fruit-juice based beverage
composition as claimed. In particular, the Examiner found that (1) Liebrecht
discloses a clear beverage without precipitation (Ans. 9 (citing Liebrecht ,
col. 1, l. 6)), (2) Burke teaches that “whey protein hydrolysate did not
precipitate out when 2-6 g/100mL of carbohydrates was used” (Ans. 9
(citing Burke, p. 3, ll. 17-30)), and (3) the amount of carbohydrate present in
Liebrecht’s beverage overlaps that of Burke’s beverage. (See Ans. 9 (citing
Liebrecht, col. 5, l. 8, col. 8, l. 4 and col. 10, ll. 20-25).)
In order to overcome the Examiner’s prima facie case of obviousness,
Appellant must do more than simply make unsupported arguments such as
“[n]either reference teaches or suggests that the addition of protein
hydrolysates will illicit a clear beverage and not cause the problems of
precipitation when added to a composition, as described and claimed in the
present invention” (Br. 4). Appellant does suggest that whey protein
hydrolysate could precipitate out in Liebrecht’s beverage upon interaction
with the numerous ingredients contained in the beverage. (See Br. 4 and 6.)
However, this argument is unpersuasive given Burke’s teaching that
precipitation is prevented by controlling the amount and nature of the
carbohydrate. (Burke, p. 3, l. 28.) Appellant has not proffered evidence
which shows that it would not have been within the level of skill of the
ordinary artisan, given Burke’s disclosure, to select the appropriate type and
amount of carbohydrate for use in Liebrecht’s beverage so as to prevent
precipitation of the whey protein hydrolysate.
Because Appellant has not attempted to prove that the Examiner’s
proposed prior art combination does not necessarily or inherently possess the
8
Appeal 2009-001002
Application 10/091,149

characteristics of the claimed beverage, Appellant has not shown reversible
error in the Examiner’s obviousness determination. The rejection of claims
1-8, 10-20, 22, and 24 under 35 U.S.C. § 103(a) as unpatentable over
Liebrecht in view of Burke is sustained.
Rejection of claim 21 under 35 U.S.C. § 103(a) as unpatentable over
Liebrecht in view of Burke, and further in view of Harada
Appellant’s arguments in traversing the rejection of claim 21 raise
similar issues to those addressed above. Specifically, we consider whether
Appellant has shown that the Examiner failed to establish proper motivation
to combine the references in the manner claimed and whether the
Examiner’s findings are sufficient to establish that one of ordinary skill in
the art would have known how to add inulin as taught by Harada to the
Liebrecht/Burke beverage composition. (See Br. 6.)
Harada is directed to the addition of polyfructan, an inulin-type
polysaccharide, to liquid compositions to provide low-viscosity hardly
digestive water-soluble dietary fibers. (Harada [0001].) Exemplified liquid
compositions include fruit-juice beverages, carbonated beverages, and liquid
nutritional supplements. (Harada [0013].) The polyfructan is said to impart
health benefits to the composition without having an adverse effect on taste.
(See, e.g., Harada [0007] and [0009].)
Appellant’s argument regarding motivation to combine is limited to a
contention that “[t]here is no [] teaching or suggestion in Liebrecht, Burke or
Harada, to combine these references.” (Br. 6.) As explained above, this
argument is inconsistent with the guidelines set forth in KSR for application
of the TSM test.
9
Appeal 2009-001002
Application 10/091,149

Appellant also contends that Harada “deals with fiber
supplementation,” that “fiber supplements are generally carbohydrates” and
that “the combined references would not teach or suggest how to make a
clear, palatable beverage, without precipitate of the protein.” (Br. 6.)
Appellant’s argument is unpersuasive because it fails to address the basis for
the Examiner’s rejection, which is that “it would have been obvious . . . to
incorporate the inulin of [Harada] into the invention of Liebrecht et al, in
view of [Burke], since all are directed to beverage compositions, since
Liebrecht et al already taught a beverage to be used for patients” (Ans. 10).
Appellant has not provided evidence which establishes that the addition of
inulin alone would effect the clarity of the Liebrecht/Burke beverage
composition.
Because Appellant has not shown that the Examiner reversibly erred,
the rejection of claim 21 under 35 U.S.C. § 103(a) as unpatentable over
Liebrecht in view of Burke, and further in view of Harada is sustained.

CONCLUSION
Appellant has not identified reversible error in the Examiner’s
obviousness determination. The decision of the Examiner rejecting claims
1-8, 10-22, and 24 is affirmed.

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).

AFFIRMED

10
Appeal 2009-001002
Application 10/091,149

ssl

NESTLE HEALTHCARE NUTRITION
12 VREELAND ROAD, 2ND FLOOR, BOX 697
FLORHAM PARK, NJ 07932

11