FLIPN'SWEET, LLC

Patent Trials and Appeals Board

May 26, 2021

2020006721 (P.T.A.B. May. 26, 2021)

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.
15/683,751 08/22/2017 Ori Hofmekler P-588551-US1 1023
49443 7590 05/26/2021
Pearl Cohen Zedek Latzer Baratz LLP
7 Times Square, 19th Floor
New York, NY 10036
EXAMINER
GEORGE, PATRICIA ANN
ART UNIT PAPER NUMBER
1793
NOTIFICATION DATE DELIVERY MODE
05/26/2021 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):
Arch-USPTO@PearlCohen.com
USPTO@PearlCohen.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
_________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte ORI HOFMEKLER
__________

Appeal 2020-006721
Application 15/683,751
Technology Center 1700
___________

Before ADRIENE LEPIANE HANLON, DONNA M. PRAISS, and
N. WHITNEY WILSON, Administrative Patent Judges.

HANLON, Administrative Patent Judge.

DECISION ON REHEARING

The Appellant requests rehearing of a DECISION ON APPEAL dated
March 2, 2021.1 In that Decision, we affirmed the following grounds of rejection:
(1) claims 1, 2, and 20–22 under 35 U.S.C. § 103 as unpatentable over
Prakash in view of Naeye, Oku, Dharmananda, Stier, and Bartnick;
(2) claim 3 under 35 U.S.C. § 103 as unpatentable over Prakash in view
of Naeye, Oku, Dharmananda, Stier, and Bartnick, further in view of Gao;
(3) claim 20 under 35 U.S.C. § 103 as unpatentable over Prakash in view
of Naeye, Oku, Dharmananda, Stier, and Bartnick, further in view of SSG; and

1 Hereinafter “Decision.”
Appeal 2020-006721
Application 15/683,751

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(4) claims 23 and 24 under 35 U.S.C. § 103 as unpatentable over Prakash
in view of Naeye, Oku, Dharmananda, Stier, and Bartnick, further in view of Zhou.
A request for rehearing must state with particularity the points believed to
have been misapprehended or overlooked by the Board. 37 C.F.R. § 41.52(a)(1).
Discussion
Independent claim 1 recites,
A low calorie sugar substitute baking/confection composition
comprising:
a digestion resistant soluble fiber having glucosyl moieties
and/or fructosyl moieties, and present in an amount of about 90% to
99.5% by weight of the composition;
a flavor masking agent comprising a rice bran extract; a vanilla
extract; and a Luo Han Guo extract, wherein the Luo Han Guo extract
comprises between 40% and 99% mogrosides, and the flavor masking
agent is present in an amount of about 0.1% to 7% by weight of the
composition; and
at least one fruit extract.
Supp. Appeal Br. 3 (emphasis added).
The Examiner found that the weight ratio of the high-potency sweetener to
sweet taste improving composition(s) in Prakash “may, for example, range from
between 10,000:1 and 1:10,000 [Prakash ¶ 862], which imparts from 0.001 to
99.999 %.” Final Act. 8.
On appeal, the Appellant argued that
[t]he range is extremely broad and essentially limitless. Undeterred,
the Office proposes that a skilled artisan, without guidance, obtains
the recited 90% to about 99.5% of digestion resistant soluble fiber as
recited in the claims. . . . Noting that Prakash does not mention
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digestion resistant soluble fiber, the Office cites to Naeye, but this is
to no avail.[2]
Appeal Br. 7.
On rehearing, the Appellant clarifies its argument as follows:
The ratio [disclosed in Prakash] is of high-potency sweetener
(according to the Decision’s analysis this is Lou Han Guo) to sweet
tasting compositions (carbohydrates, flavor masking agent, and
protein or protein hydrolysate).
This ratio is not a percentage for any single ingredient but
rather a ratio of two components within Prakash. The ratio does not
parcel out each category or single ingredient within the sweet tasting
compositions such that digestion resistant soluble fiber, flavor
masking agent, or “various fruit extracts” are individually quantified.
Request 14–15 (emphasis added).
We now understand the Appellant’s argument on appeal. According to the
teachings of Prakash, Luo Han Guo extract is a high-potency sweetener and
digestion resistant soluble fiber, vanilla extract, soluble rice protein, and fruit
extract3 are sweet taste improving compositions. See Decision 4–5. The Examiner
found Prakash discloses that the weight ratio of high-potency sweetener to sweet
taste improving composition(s) may range, for example, from between 10,000:1
and 1:10,000 (i.e., from 99.99 wt.% to 0.001 wt.% high-potency sweetener and

2 As explained in the Decision, “Prakash discloses that carbohydrates include
oligosaccharides, and Naeye discloses that oligosaccharides are non-digestible
dietary compounds.” Decision 6.
3 The Decision refers to “various fruit extracts” which include the mango extract
disclosed in paragraph 95 of Prakash. See Decision 5; see also Final Act. 9
(identifying the fruit extracts disclosed in Prakash as “mango extract, cinnamon,
citrus, coconut, ginger, almond, grape skin extract, and grape seed extract”).
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Application 15/683,751

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from 0.001 wt.% to 99.99 wt.% sweet taste improving composition(s)).4 Final Act.
4; Prakash ¶ 862.
Consistent with the Appellant’s argument, the Examiner does not direct us to
any portion of Prakash describing the amounts (or ratios) of individual sweet taste
improving compositions, including digestion resistant soluble fiber, in the
disclosed sweetener composition. See Request 15. Thus, on this record, the
Examiner has failed to show that Prakash teaches a sweetener composition
comprising an amount of digestion resistant soluble fiber within the range recited
in claim 1. The Examiner’s reliance on the remaining prior art of record does not
cure that deficiency in the obviousness rejection of claim 1.5
The obviousness rejections on appeal are not sustained.

4 We note that Prakash also discloses progressively narrower ranges. For example,
Prakash discloses that the weight ratio of high-potency sweetener to sweet taste
improving composition(s) may range from about 15:1 to about 1:15 (i.e., from
about 93.75 wt.% to 6.25 wt.% high-potency sweetener and from about 6.25 wt.%
to 93.75 wt.% sweet taste improving composition(s)). Prakash ¶ 862.
5 The Examiner also finds Naeye discloses a composition comprising 90 to 94
wt.% digestion resistant soluble fiber. Final Act. 6 (citing Naeye, col. 12, ll. 15+).
The composition referred to by the Examiner is inulin, a dietary fiber, “in the form
of RaftilineTM ST which is a fine white powder which contains about 90 to about
94% by weight of inulin, up to about 4% by weight of glucose and fructose, and
about 4 to 9% by weight of sucrose.” Naeye, col. 12, ll. 19–23. The Examiner
does not explain why one of ordinary skill in the art would have modified the
carbohydrate amount in Prakash’s low calorie sweetener composition, as recited in
claim 1, based on the amount of inulin in “RaftilineTM ST.” Likewise, the
Examiner does not explain why one of ordinary skill in the art would have
modified the carbohydrate amount in Prakash’s sweetener composition, as recited
in claim 1, based on the amounts of vanilla disclosed in Stier and Bartnick and the
amount of fruit extract disclosed in Zhou. See Final Act. 8–9, 13; Ans. 35.
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Conclusion
The Appellant’s Request for Rehearing is granted.
Outcome of Decision on Rehearing:

Claim(s) 35 U.S.C. § Reference(s)/Basis Denied Granted
1, 2, 20–22 103 Prakash, Naeye,
Oku,
Dharmananda,
Stier, Bartnick
1, 2, 20–22
3 103 Prakash, Naeye,
Oku,
Dharmananda,
Stier, Bartnick,
Gao
3
20 103 Prakash, Naeye,
Oku,
Dharmananda,
Stier, Bartnick,
SSG
20
23, 24 103 Prakash, Naeye,
Oku,
Dharmananda,
Stier, Bartnick,
Zhou
23, 24
Overall
Outcome
1–3, 20–24

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Final Outcome of Appeal after Rehearing:

Claim(s) 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2, 20–22 103 Prakash, Naeye,
Oku,
Dharmananda,
Stier, Bartnick
1, 2, 20–22
3 103 Prakash, Naeye,
Oku,
Dharmananda,
Stier, Bartnick,
Gao
3
20 103 Prakash, Naeye,
Oku,
Dharmananda,
Stier, Bartnick,
SSG
20
23, 24 103 Prakash, Naeye,
Oku,
Dharmananda,
Stier, Bartnick,
Zhou
23, 24
Overall
Outcome
1–3, 20–24

GRANTED