Francisco Ruette

Patent Trials and Appeals Board

Jul 20, 2020

13576560 - (D) (P.T.A.B. Jul. 20, 2020)

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.
13/576,560 08/01/2012 Francisco Ruette ARLP-10202/08 5902
25006 7590 07/20/2020
DINSMORE & SHOHL LLP
900 WILSHIRE DRIVE
SUITE 300
TROY, MI 48084
EXAMINER
DICUS, TAMRA
ART UNIT PAPER NUMBER
1791
NOTIFICATION DATE DELIVERY MODE
07/20/2020 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):
MichiganPatTM@dinsmore.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte FRANCISCO RUETTE

Appeal 2019-006772
Application 13/576,560
Technology Center 1700
____________

Before ROMULO H. DELMENDO, MICHAEL P. COLAIANNI, and
MICHAEL G. MCMANUS, Administrative Patent Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL
The Appellant1 appeals under 35 U.S.C. § 134(a) from the Primary
Examiner’s final decision to reject claims 1, 2, 4, 7, 9–11, and 17.2 Oral
arguments were heard from the Appellant’s representative on July 10, 2020.
We have jurisdiction under 35 U.S.C. § 6(b).
We reverse, but enter new grounds of rejection under 35 U.S.C. § 112,
¶ 2. 37 C.F.R. § 41.50(b).

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42—the Inventor (Application Data Sheet filed August 1,
2012 at 1). The Appellant identifies “Acquafibra, Inc.” as the real party in
interest (Appeal Brief filed March 4, 2019 (“Appeal Br.”) at 2).
2 See Appeal Br. 5–20; Reply Brief filed September 11, 2019 (“Reply Br.”)
at 1–5; Final Office Action entered September 5, 2018 (“Final Act.”) at 6–
20; Examiner’s Answer entered July 11, 2019 (“Ans.”) at 3–20.
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I. BACKGROUND
The subject matter on appeal relates to a beverage and to a process for
its manufacture (Specification filed August 1, 2012 (“Spec.”) at 1, ll. 1–13).
Claims 1 and 2, the sole independent claims on appeal, are reproduced from
the Claims Appendix to the Appeal Brief, as follows:
1. A process to obtain a beverage enriched with fibers
and vitamins with added fruit flavors, said process consisting of:
placing 200 to 300 liters of water in a mixture tank;
adding soluble fiber to the mixture tank and mixing the
mixture with a tri-blender;
sending the mixture to a preparation tank;
repeating said step of placing 200 to 300 liters of water in
a mixture tank, said step of adding soluble fiber to the mixture
tank and mixing with a tri-blender, and said step of sending the
mixture to a preparation tank until a desired amount of said
soluble fiber is dissolved in the mixture;
placing an additional 200 to 300 liters of water in said
mixture tank;
a combination of potassium sorbate and sodium benzoate
to the mixture tank;
sending the mixture to said preparation tank;
placing 200 to 300 liters of water in the mixture tank;
adding fruit concentrate to the mixture tank and sending
the mixture to said preparation tank;
adding water to adjust the final volume of water;
pasteurizing the mixture, thereby creating a beverage;
sending the beverage to a storage tank;
bottling and packaging the beverage;
palleting and storing the beverage; and
distributing the beverage.
2. A beverage consisting of with percentages by
weight: fruit juices 65 to 80° brix from 0.25 to 0.3%; soluble
fiber from 2.2 to 3.1%; a combination of potassium sorbate and
sodium benzoate from 0.01 to 0.03%; tropical fruits aroma from
0.003 to 0.06%; citric acid from 0.1 to 0.3%; niacin from 0.001
to 0.002%; folic acid from 0.000010 to 0.000020%; water from
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95 to 99%; a combination of aspartame and sodium saccharin
from 0.003 to 0.004%; acesulfame potassium from 0.003 to
0.004%; pantothenic acid from 0.00032 to 0.00042%; and
pyridoxine from 0.000095 to 0.000100%.
(Appeal Br. 21 (emphases added)).
II. REJECTIONS ON APPEAL
On appeal, the Examiner maintains two rejections under pre-AIA 35
U.S.C. § 103(a),3 as follows:
A. Claims 1, 7, 9–11, and 174 as unpatentable over Nunes et al.5
(“Nunes”) in view of Voigt et al.6 (“Weisser”), and further in
view of Johnson;7 and
B. Claims 2 and 4 as unpatentable over Nunes in view of Johnson.
(Ans. 3–20; Adv. Act. 3–7 (not paginated); Final Act. 6–20).

3 In the Final Office Action, claims 2 and 6–22 were rejected under 35
U.S.C. § 112, ¶ 2, and claims 12–16 and 18–22 were rejected under 35
U.S.C. § 112, ¶ 4 (Final Act. 4–6). These rejections were withdrawn after
claim 2 was amended and claims 6, 8, 12–16, and 18–22 were canceled
(Advisory Action entered December 14, 2018 (“Adv. Act.”) at 1 (not
paginated); Amendment filed December 5, 2018).
4 In the Examiner’s Answer, claims 6, 8, 12–16, and 18–22 were
inadvertently included in the statement of the rejection (Ans. 3; Adv. Act. 3).
5 US 2003/0203097 A1, published October 30, 2003.
6 Tobias Voigt, Thomas Rädler, & Horst Weisser, Technische Universität
München: Standard Specification for Data Acquisition Systems in Beverage
Bottling Plants, (October 2000) (translation).
7 US 2006/0040001 A1, published February 23, 2006.
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III. DISCUSSION
1. The Examiner’s Position
With respect to claim 1, the Examiner finds that Nunes describes a
process for manufacturing a beverage enriched with fibers and vitamins and
provided with added fruit flavors (Ans. 4; Final Act. 7). Specifically, the
Examiner finds that Nunes discloses some of the limitations recited in claim
1 but acknowledges that the prior art differs from the claimed subject matter,
as follows:
(i) the lack of a disclosure of “the exact steps involving water and
their respective amounts” (Ans. 4; Final Act. 7);
(ii) the lack of a disclosure of preservatives—i.e., potassium
sorbate and sodium benzoate (Ans. 5; Final Act. 8);
(iii) the lack of a disclosure regarding “a tri-blender, or amounts of
water, or repeating steps” (Ans. 5; Final Act. 8);
(iv) the disclosure of the addition of milk, particles, or fruit juices,
that would be excluded by the claim language “consisting of” (id.);
(v) the lack of a disclosure of pasteurization (Ans. 7; Final Act.
10); and
(vi) the lack of a disclosure that the fibers used in the prior art are
“soluble” (Ans. 8; Final Act. 11).
Regarding difference (i), the Examiner concludes that “it would have
been obvious to have modified the amounts of water and the steps to mix,
dissolve, and dilute the mixture to provide desired end products such as
beverages from carbonated beverages, to juices, the [sic] increase the water
to scale up the compositions for commercialization” (Ans. 4; Final Act. 7).
Regarding difference (iii), the Examiner concludes:
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[B]ecause Nunes teaches the general steps of mixing ingredients
with mixers/blenders, tanks, for bottling packaging, it would
have been obvious to one having ordinary skill in the art to mix
the ingredients until dissolution and optimize the process by
using tri-blenders by increasing the blades to make it three
blades, storing in tanks, and repeating the steps to dissolve the
solutes in the solution and to thoroughly mix it to yield a
homogenous beverage and to get it ready for packaging and
further distribution for commercialization. As stated above a
repetitive continuous process that accomplishes the same result,
storing, packaging, and distributing for commercialization, and
the process of incorporation of ingredients for making a beverage
is not inventive, "Merely operating the process in a continuous
manner does not render the combination inventive in the absence
of a showing of unexpected beneficial results," and merely
carrying out prior process in continuous manner is obvious. Fact
that specific step is essentially different from that of prior method
does not mean that patentably new combination of steps is
presented. Ex parte Beeber et al., 123 USPQ 221 (Bd. Pat. App.
& Int. 1959).
(Ans. 5; Final Act. 8) (emphasis added).
Regarding difference (iv), the Examiner asserts that “it would have
been [obvious] to remove any ingredients (such as milk or particles or fruit
juices) as it is directly related to taste and such ingredients are known and
have an expected function in the food art” (Ans. 5; Final Act. 8). According
to the Examiner, “the addition or elimination of common ingredients, or
treating them in ways which differ from the former practice, do not amount
to invention” (Ans. 6; Final Act. 9). This rationale is repeated with respect
to claim 2 (Ans. 15; Final Act. 18).
The remaining differences above are less relevant to our disposition of
the Examiner’s stated rejections, and, therefore, we do not discuss them.
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2. The Appellant’s Contentions
Regarding the difference (i) between Nunes and the subject matter
recited in claim 1, the Appellant contends that the Examiner’s obviousness
conclusion is based on “an unsupported and conclusory statement” because
the “the significant changes in process between claim 1 and that of Nunes
involves [sic] far more than commercial scale up differences” (Appeal Br.
10).
The Appellant also argues that “there is no motivation within Nunes
to modify its process to include the claimed steps of solubilizing the fiber
alone and separately from preservatives and fruit concentrate as per the
second through fourth steps of claim 1” (id.) According to the Appellant,
the Examiner’s rationales for modifying the prior art process lack a
sufficient underpinning to support the obviousness conclusion (id. at 10–11).
With respect to claim 2, the Appellant argues, inter alia, that the claim
recites the transitional phrase “consisting of” and, therefore, “excludes any
component not expressly specified in the claim itself” (id. at 18). The
Appellant points out that Nunes, for example, requires protein (id.).
3. Opinion
We concur with the Appellant that the Examiner’s rejections are not
well-founded. Our reasons follow.
Nunes describes an acidic composition, which is particularly useful as
a food or beverage composition, comprising a protein and from about 0.8%
to about 5% of a fiber component, wherein the composition comprises
particles having a median particle size of about 1 micron or less and the pH
is from about 3 to about 5 (Nunes ¶¶ 2, 6–9). According to Nunes, the fiber
component stabilizes the protein (i.e., prevent the protein from curdling or
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coagulating) under acidic conditions and is selected from various
hydrophilic colloidal compounds such as inulin (id. ¶¶ 42–43). With respect
to the process of making the composition, Nunes teaches forming a first
mixture of the protein component and the fiber component, together with
optional components, under high shear and preferably aqueous conditions
and then forming a second mixture by slowly mixing an acidic component
with the first mixture under high shear and preferably aqueous conditions
(id. ¶¶ 56–69, 141–142).
Johnson discloses nutritional compositions, such as a beverage or
solid nutritional bar, for treating and preventing osteoporosis (Johnson
Abstr.). As the Examiner correctly finds, Johnson teaches that “[t]he
combination of dried fruit solids (e.g., dried plum solids) and soluble
indigestible oligosaccharides (e.g., fructooligosaccharides) have been found
to be surprisingly more effective in affecting bone mineral density” (id.).
Weisser discloses a standard specification for data acquisition systems
used in beverage bottling plants (Weisser 3). In “Picture 2” (Section 2.2),
Weisser shows a general depiction of a “Model of Bottling Plant” that
includes various bottling operations (id. at 6).
Although the Examiner concludes that it would have been obvious to
a person having ordinary skill in the art to modify Nunes’s process in the
manner claimed by the Appellant as a matter of optimization (e.g., Ans. 5),
the Examiner’s factual findings are insufficient to support such a conclusion
as the conclusion is based largely on conclusory statements rather than
factual evidence. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)
(To facilitate review, th[e obviousness] analysis should be made explicit.”);
In re NuVasive, Inc., 842 F.3d 1376, 1383 (Fed. Cir. 2016) (“‘[C]onclusory
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statements’ alone are insufficient and, instead, the finding must be supported
by a ‘reasoned explanation.’” (internal citation omitted)); In re Applied
Materials, Inc., 692 F.3d 1289, 1295–97 (Fed. Cir. 2012) (obviousness
conclusion based on a theory of optimization of a variable requires a
showing that the variable is result-effective).
Therefore, we do not sustain the Examiner’s stated rejection as
maintained against claim 1 (and claims 7, 9–11, and 17 dependent thereon).
As for claim 2, the Examiner concludes that “it would have been
obvious to one having ordinary skill in the art to remove any ingredients
(such as milk or particles) as it is directly related to taste and such
ingredients are known and have an expected function in the food art” (Ans.
15). That reasoning is flawed because Nunes is focused on protein-based
compositions and solving a problem with curdling or coagulating in such
compositions containing proteins under acidic environments using particular
fiber components, as we found above (Nunes ¶¶ 2, 6–9, 42, 47). Thus,
regardless of whether Nunes and Johnson teach soluble fibers, we discern no
basis to conclude that a person having ordinary skill in the art would have
been prompted to remove Nunes’s protein—a key component in Nunes’s
composition—while retaining the fiber component, which is disclosed as
stabilizing the protein from curdling or coagulation. In re Ratti, 270 F.2d
810, 813 (CCPA 1959) (“Th[e] suggested combination of references would
require a substantial reconstruction and redesign of the elements shown in
[the prior art reference] as well as a change in the basic principles under
which the [prior art reference’s] construction was designed to operate.”).
Therefore, we also do not sustain the rejection as maintained against
claim 2 (and claim 4 dependent thereon).
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IV. NEW GROUNDS OF REJECTION
Claims 1, 2, 4, 7, 9–11, and 17 are rejected under 35 U.S.C. § 112,
¶ 2, as indefinite.
“[T]he purpose of the definiteness requirement is to ensure that the
claims delineate the scope of the invention using language that adequately
notifies the public of the patentee’s right to exclude.” Datamize, LLC v.
Plumtree Software, Inc., 417 F.3d 1342, 1347 (Fed. Cir. 2005).
Independent claims 1 and 2 recite “soluble fiber” (Appeal Br. 21).
But neither the claims nor the remainder of the Specification contain any
description or enlightenment as to what degree of solubility would be
required for a fiber material to be considered a “soluble fiber.” This
ambiguity or uncertainty is particularly pronounced because the term
“soluble” is a relative term that has previously been defined in the art to
have a meaning that is different than that argued by the Appellant.
Specifically, Johnson teaches that “soluble, indigestible oligosaccharides for
use in the compositions and methods of [Johnson’s] invention are generally
categorized in the chemical and nutrition arts as soluble fiber” (Johnson
¶ 37 (emphases added)). According to Johnson, the term “soluble” refers to
an oligosaccharide component or fiber source that is at least 60% soluble as
determined by American Association of Cereal Chemists (AACC) Method
32-07 and encompasses, e.g., pectin and inulin (id. ¶¶ 37, 150 (Example 2,
“Low pH Smoothie”)).
By contrast, the current Specification does not provide any indication
how the term “soluble” should be interpreted. Indeed, it appears that the
term “soluble” is not limited to 100% solubility, as argued, because the
Specification itself indicates that the presence of some “non-soluble fibers”
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is contemplated (Spec. 1, ll. 4–13). Although mathematical precision may
not be required to satisfy the definiteness requirement, the Specification
lacks sufficient disclosure reasonably informing one of ordinary skill in the
art as to the degree of non-solubility that may be tolerated. Datamize, 417
F.3d at 1350.
And, to the extent that the Appellant intends the term “soluble” to
mean 100% solubility, claims 1 and 2 (and claims 4, 7, 9–11, and 17
dependent thereon) are indefinite for failing to particularly point out and
distinctly claim what the Appellant regards as the invention. In re Zletz, 893
F.2d 319, 322 (Fed. Cir. 1989) (“[I]f the claims do not ‘particularly point[ ]
out and distinctly claim[ ]’, in the words of section 112, that which
examination shows the applicant is entitled to claim as his invention, the
appropriate PTO action is to reject the claims for that reason.”).
Claim 2 (and claim 4 dependent thereon) are further indefinite
because the range of amounts recited for the “soluble fiber” (“from 2.2 to
3.1%”) is inconsistent with the range of amounts recited for water (“from 95
to 99%”). For example, it does not appear to be possible for the claimed
beverage to contain 99% by weight of water when the minimum soluble
fiber content is 2.2% by weight. Therefore, it is unclear whether claim 2
encompasses compositions having water contents within the fully-recited
range or, alternatively, soluble fiber contents in the fully-recited range.
For these reasons, we hold that claims 1, 2, 4, 7, 9–11, and 17 do not
comply with the definiteness requirement of 35 U.S.C. § 112, ¶ 2.

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V. CONCLUSION
In summary:
Claims
Rejected
Basis References/Basis Affirmed Reversed New
Ground
1, 7, 9–11,
17
§ 103(a) Nunes, Weisser,
Johnson
1, 7, 9–11,
17

2, 4 § 103(a) Nunes, Johnson 2, 4
1, 2, 4, 7, 9–
11, 17
§ 112,
¶ 2
Indefiniteness 1, 2, 4, 7,
9–11, 17
Overall
Outcome
1, 2, 4, 7,
9–11, 17
1, 2, 4, 7,
9–11, 17

VI. FINALITY AND RESPONSE
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the prosecution
will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
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REVERSED; 37 C.F.R. § 41.50(b)