FLIPN'SWEET, LLCDownload PDFPatent Trials and Appeals BoardMay 26, 20212020006721 (P.T.A.B. May. 26, 2021) Copy Citation 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 2 (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 Appeal 2020-006721 Application 15/683,751 3 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”). Appeal 2020-006721 Application 15/683,751 4 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. Appeal 2020-006721 Application 15/683,751 5 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 Appeal 2020-006721 Application 15/683,751 6 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 Copy with citationCopy as parenthetical citation