Fabio Campanile et al.

Patent Trials and Appeals Board

Nov 26, 2019

13748021 - (D) (P.T.A.B. Nov. 26, 2019)

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.
13/748,021 01/23/2013 Fabio CAMPANILE GIV.P30483A 1014
23575 7590 11/26/2019
CURATOLO SIDOTI CO., LPA
24500 CENTER RIDGE ROAD, SUITE 280
CLEVELAND, OH 44145
EXAMINER
COX, STEPHANIE A
ART UNIT PAPER NUMBER
1791
NOTIFICATION DATE DELIVERY MODE
11/26/2019 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):
docket@patentandtm.com
pair@patentandtm.com
sidoti@patentandtm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte FABIO CAMPANILE, HANS RUDOLPH GYGAX,
HARRY RENES, and SOPHIE DAVODEAU
__________

Appeal 2019-001825
Application 13/748,021
Technology Center 1700
____________

Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and
DEBRA L. DENNETT, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL

Appellant1 appeals under 35 U.S.C. § 134(a) the final rejections of
claims 1, 5–8, 10–17, 19, 20, and 22–28. Claims 2–4, 9, 18, and 21 are
canceled. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Givaudan
S.A. (Appeal Br. 3).
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STATEMENT OF THE CASE
Appellant’s invention is directed to aroma enhancement of
compositions in which the composition’s aroma is an important factor (Spec.
1:10–11). Such compositions include those to which perfume is normally
added, such as cleaning products and cosmetics (id. at 1:13–15). Suitable
compositions for aroma enhancement are said to also include foodstuffs and
beverages (id. at 1:16–17). According to the Specification, the addition of
2,4-nonadiene2 to these compositions enhances the perception of each
composition’s aroma (id. at 1:24–25; 2:1).
Claims 1, 5, 6, and 8 are illustrative (emphasis added):
1. A method of enhancing the aroma of a non-consumable
aroma composition comprising fragrant materials, comprising
the addition to the composition of an aroma-enhancing quantity
of 2,4-nonadiene, in which the 2,4-nonadiene is present in the
composition in a concentration of from 1 ppb to 10 ppm.
5. A non-consumable aroma-providing composition
comprising fragrant materials and an aroma-enhancing quantity
of 2,4-nonadiene, in which the 2,4-nonadiene is present in the
composition in a concentration of from 1 ppb to 10 ppm.
6. An aroma-enhancing composition comprised in a
consumable composition, comprising base components of the
consumable composition, at least one aroma ingredient and an
aroma-enhancing quantity of 2,4-nonadiene, in which the 2,4-
nonadiene is present in the composition in a concentration of
from 1 ppb to 10 ppm.
8. A method of enhancing the aroma of an aroma
composition comprised in a consumable composition
comprising base components of the consumable composition,
the method comprising the addition to the consumable
composition of an aroma-enhancing quantity of 2,4-nonadiene,

2 Specifically, the trans, trans isomer of 2,4-nonadiene.
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in which the 2,4-nonadiene is present in the composition in a
concentration of from 1 ppb to 10 ppm.
AppealBr. 22. (Claim App.) (emphasis added).
Appellant appeals the following rejections:
1. Claim 6 is rejected under 35 U.S.C. § 103(a) as unpatentable
over K. Umano et al., Analysis of Headspace Volatiles from
Overheated Beef Fat, J. Agric. Food Chem. 35(1) 14–18 (1987)
(“Umano”) (Final Act. 3).
2. Claims 1, 5–8, 10–17, 19, 20, and 22–28 are rejected under 35
U.S.C. § 103(a) as unpatentable over Tatsuro et al. (JP 2002-180080
A; published June 26, 2002, and relying on a machine translation)
(“Tatsuro”) (Final Act. 4–8).
FINDINGS OF FACT & ANALYSIS
After review of the respective positions provided by Appellant and the
Examiner, we REVERSE the Examiner’s prior art rejections of claims 1, 5–
8, 10–17, 19, 20, and 22–28 under 35 U.S.C. § 103(a) for the reasons
presented by Appellant. We add the following.
A. Rejection of claim 6 as unpatentable over Umano
The Examiner’s findings and conclusions regarding Umano are
located on page 3 of the Final Office Action.
The Examiner finds that Umano’s beef fat renders obvious each
limitation of the aroma-enhancing composition recited in independent claim
6, except that Umano does not disclose that 2,4-nonadiene is present therein
in the requisite amount (Final Act. 3). The Examiner, however, concludes
that determining this amount would have only involved “routine
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experimentation that is well within the ordinary skill in the art” (id.). The
Examiner determines that “[i]t would have been obvious for one of ordinary
skill in the art” at the time of the invention was made to have adjusted “the
amount of 2,4-non[a]diene[,] depending on the desired aroma strength of the
composition” (id.).
Appellant argues, inter alia, that “Umano is completely silent about
aroma enhancement” and “any possible use for 2,4-nonadiene” (Appeal Br.
11). Appellant further argues that Umano fails to provide one of ordinary
skill in the art, at the time the invention was made, any reason to: (i) “single
out and select 2,4-nonadiene from among the 87 volatile compounds Umano
identified in headspace extract of overheated beef fat and,” or (ii) “use it in
an aroma-providing or aroma-enhancing composition, in any amount” (id. at
12; see also Umano Abstract, Table 1, Fig. 1). Appellant asserts that the
peak area % of 2,4-nonadiene extracted from Umano’s overheated beef fat is
less than 0.02%, “which the ordinary skilled person would [have]
consider[ed] unlikely to affect aroma perception” (Appeal Br. 11; see also
Umano Table 1). Thus, Appellant essentially argues that Umano’s teachings
would not have motivated one of ordinary skill in the art to derive an aroma-
enhancing quantity of 2,4-nonadiene (Appeal Br. 10).
The Examiner responds by asserting that beef “fat is known to have
some sort of aroma” (Ans. 9). The Examiner argues that the instantly
claimed subject matter encompasses Umano’s beef fat because claim 6
“does not specify any type or amount of aroma” for the recited consumable
composition (id.). With respect to Appellant’s contention that Umano’s 2,4-
nonadiene is present only in trace amounts, the Examiner replies that
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“[A]ppellant has not shown that the claimed concentration is critical” (id. at
10).
It is well understood that “[r]ejections on obviousness grounds cannot
be sustained by mere conclusory statements; instead, there must be some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). The
fact that a reference may be modified to reflect features of the claimed
invention does not make the modification, and hence the claimed invention,
obvious unless the prior art suggested the desirability of such modification.
In re Mills, 916 F.2d 680, 682 (Fed. Cir. 1990).
In this instance, the Examiner has not provided adequate reasoning to
explain why one of ordinary skill in the art would have specifically selected
2,4-nonadiene from among the 87 volatile compounds that Umano identified
in the headspace extract of overheated beef fat. Furthermore, even assuming
that Umano would have provided sufficient motivation to select 2,4-
nonadiene, the Examiner has not adequately explained why a person of skill
in the art would have varied the amount of 2,4-nonadiene from a mere trace
to enhance Umano’s beef fat’s aroma. Therefore, the Examiner’s conclusion
that Umano’s teachings would have motivated the ordinarily skilled artisan
to adjust the amount of 2,4-nondiene, depending on the desired aroma
strength of the beef fat, is not supported by the preponderance of the
evidence. Rather, the preponderance of the evidence supports Appellant’s
position that Umano would not have provided any reason to select an aroma-
enhancing quantity of 2,4-nonadiene as claimed.
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B. Rejection of claims 1, 5–8, 10–17, 19, 20, and 22–28 as unpatentable
over Tatsuro
The Examiner’s findings and conclusions regarding Tatsuro are
located on pages 4–8 of the Final Office Action.
The Examiner finds that Tatsuro’s addition of fragrant flavor
components comprising 2,4-nonadiene to pasta discloses or suggests each
limitation of: (i) the methods of enhancing the aroma of an aroma
composition recited in independent claims 1 and 8; and (ii) the aroma-
providing and aroma-enhancing compositions recited in independent claims
5 and 6, respectively (Final Act. 4–6).
The Examiner finds that although Tatsuro does not explicitly disclose
the claimed amount of 2,4-nonadiene, Tatsuro teaches that “the flavor
components can be in an amount of 0.03 ppm to 200 ppm” (id. at 4 (citing
Tatsuro ¶ 12)). The Examiner concludes that “one of ordinary skill in the art
at the time the invention was made would have considered the invention to
have been obvious because the compositional proportions taught by Tatsuro
overlap the instantly claimed proportions” of 1 ppb to 10 ppm (Final Act. 4).
The Examiner determines that “[i]t would have been obvious for one of
ordinary skill in the art” at the time of the invention was made to have
adjusted “the amount of 2,4-non[a]diene[,] depending on the desired aroma
strength of the composition” (id. at 5).
Appellant argues, inter alia, that “Tatsuro discloses a multi-
component product,” which cannot disclose or suggest the claimed aroma-
enhancing quantity of 2,4-nonadiene by itself (Appeal Br. 14; see also Reply
Br. 7). Appellant asserts that Tatsuro’s flavoring agent actually “comprises
(1) one or more kinds of aliphatic aldehydes[,] (2) one or more kinds of
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aliphatic hydrocarbons, and (3) one or more kinds of substituted furans”
(Appeal Br. 14). In particular, Appellant contends that
Tatsuro’s disclosure of 2,4-nonadiene is submerged deep in a
laundry list of compounds in three chemical classes, where
Tatsuro is silent on any reason to select 2,4-nonadiene as a
flavoring agent from the hundreds of other compounds listed in
the broad class of aliphatic hydrocarbons of general formula II:
R[2]H where R[2] is a 3–10[C] straight-chain or branched alkyl
chain or alkenyl group.
(Reply Br. 6; see also Tatsuro ¶¶ 5–11; Abstract). Appellant further argues
that Tatsuro’s multi-component product cannot teach or suggest the claimed
“aroma-enhancing quantity of 2,4-nonadiene . . . in a concentration of from
1 ppb to 10 ppm” because the Examiner’s relied upon disclosure “is directed
to the amount of the flavors, and not the amount of 2,4-nonadiene by itself,
used per 1 kg of pasta raw materials” (Reply Br. 7 (citing Tatsuro ¶ 12)).
Appellant’s arguments are persuasive.
The Examiner has not provided any findings showing that 0.03–200
ppm of Tatsuro’s multi-component flavoring agent specifically contains a
aliphatic hydrocarbon in a concentration range, which overlaps the claimed
concentration range for 2,4-nonadiene (see Final Act. 4 (citing Tatsuro ¶
12)). We find Tatsuro discloses that the preferred weight ratio range for
each component in the multi-component flavoring agent is 20–45:40–70:1–
10 for aliphatic aldehyde(s):aliphatic hydrocarbon(s):substituted furan(s),
respectively (Tatsuro ¶ 11). Even assuming that Tatsuro’s teachings allow
for the calculation of a weight range of an aliphatic hydrocarbon, which
overlaps the claimed concentration range for 2,4-nonadiene, the Examiner
has failed to provide any reasoning supported by adequate facts to explain
why a person of ordinary skill in the art would have selected 2,4-nonadiene
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from the hundreds of aliphatic hydrocarbons listed therein (see Tatsuro ¶ 9).
See In re Baird, 16 F.3d 380, 382 (Fed. Cir. 1992) (holding that “[t]he fact
that a claimed species may be encompassed by a prior art genus, is not by
itself, sufficient to establish a prima facie case of obviousness.”).
Thus, the Examiner has not established a prima facie case of
obviousness based upon articulated reasoning with rational underpinnings.
See KSR, 550 U.S. at 418.
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
6 103(a) Umano

6
1, 5–8, 10–17,
19, 20, 22–28
103(a)

Tatsuro

1, 5–8, 10–
17, 19, 20,
22–28
Overall
Outcome
1, 5–8, 10–
17, 19, 20,
22–28
REVERSED