Fujihara, Hideki et al.

Patent Trials and Appeals Board

Aug 3, 2020

12514216 - (D) (P.T.A.B. Aug. 3, 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.
12/514,216 05/08/2009 Hideki Fujihara P20858US00 8698
38834 7590 08/03/2020
WESTERMAN, HATTORI, DANIELS & ADRIAN, LLP
8500 LEESBURG PIKE
SUITE 7500
TYSONS, VA 22182
EXAMINER
MORNHINWEG, JEFFREY P
ART UNIT PAPER NUMBER
1793
NOTIFICATION DATE DELIVERY MODE
08/03/2020 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):
patentmail@whda.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte HIDEKI FUJIHARA, KAZUHIRO OKUMA, TETSUO IIDA,
KEN IZUMORI, MASAAKI TOKUDA, and KAZUHIROFUKUDA
____________

Appeal 2019-000704
Application 12/514,216
Technology Center 1700
____________

Before ADRIENE LEPIANE HANLON, MONTÉ T. SQUIRE, and
MERRELL C. CASHION, JR., Administrative Patent Judges.

CASHION, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 25–32. We have jurisdiction under 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 MATSUTANI CHEMICAL
INDUSTRY CO., LTD. as the real party in interest. Appeal Br. 2.
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The invention is directed to a low calorie sweetener composition
comprising D-psicose as the main component in combination with specific
amounts of erythritol and/or a stevia sweetener. Spec. ¶¶ 1, 10, 19, 21. The
Specification discloses that D-psicose is a known rare sugar that is highly
soluble and has almost zero-kilocalorie energy even though it has a
sweetness level of 60 to 70 % of the sweetness level of sucrose. Id. ¶ 3.
However, when used as a sweetener for foods, D-psicose is used at a large
amount that results in the food getting too much heavy taste. Id. In
addition, the start of the sweetness of D-psicose is slow. Id. According to
the Specification, Appellant overcomes the disadvantages of D-psicose by
combining it with a sugar alcohol (erythritol) and/or a high intensity
sweetener (stevia sweetener). Id. ¶¶ 9, 10. The result of this combination of
sweeteners is a low calorie sweetener that gives a refreshing feel in the oral
cavity. Id. ¶ 9. Claim 25 is illustrative of the subject matter claimed and is
reproduced below:
25. A method of producing a D-psicose-containing
sweetener having a taste comparable to a taste of sucrose, the
method comprising:
combining D-psicose as a main component with at least
one selected from the group consisting of erythritol and a stevia
sweetener,
wherein the sweetener comprises 30 parts or more of
erythritol in relation to 100 parts of D-psicose, or the sweetener
comprises 0.05–1.5 parts of the stevia sweetener in relation to
100 parts of D-psicose, a total amount of the erythritol and the
stevia sweetener being less than 100 parts in relation to 100
parts of D-psicose, such that the taste of the D-psicose-
containing sweetener is comparable to the taste of sucrose.
Claim 29 recites a sweetener made by the method of claim 1.

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Appellant (see generally Appeal Br.) requests review of the following
rejections from the Examiner’s Final Office Action:
I. Claims 25, 26, 28–30, and 32 rejected under pre-AIA 35 U.S.C.
§ 103(a) as unpatentable over Nagata (JP 2005-213227, published August
11, 2005, and relying on an English machine translation dated November 21,
2011), Lee (US 2002/0160090 A1, published October 31, 2002), and
Yoshihara (Yoshihara, K., Shinohara, Y., Hirotsu, T., Izumori, K.,
“Bioconversion of D-Psicose to D-Tagatose and D-Talitol by Mucoraceae
Fungi,” Journal of Bioscience and Bioengineering, Vol. 101, No. 3, (2006)
219–222, available online as of May 20,2006 at http
://www.sciencedirect.com/science/article/ pii/S 1389172306705692).
II. Claims 25, 27–29, 31, and 32 rejected under pre-AIA 35 U.S.C.
§ 103(a) as unpatentable over Nagata, Yoshihara, and Andersen (US
6,432,464 B1, issued August 13, 2002).
OPINION2
Rejection I
After review of the positions the Appellant provides in the Appeal and
Reply Briefs and the Examiner provides in the Final Action and the Answer,
we REVERSE the Examiner’s prior art rejection of claims 25, 26, 28–30,
and 32 under pre-AIA 35 U.S.C. § 103(a) as unpatentable over Nagata, Lee
and Yoshihara for the reasons Appellant presents. We add the following for
emphasis.
Claim 25
This rejection addresses a claimed embodiment of producing a
D-psicose-containing sweetener comprising D-psicose as a main component

2 We limit our discussion to independent method claim 25 for both
rejections. We note that independent product claim 29 recites similar
limitations to those recited in claim 25. Therefore, our discussion applies
equally to that claim.
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combined with erythritol.
We refer to the Examiner’s Final Office Action for a complete
statement of the rejection of claim 25. Final Act. 2–4.
Appellant argues that Nagata is directed to a therapeutic composition
that uses sucrose and D-psicose in combination where D-psicose suppresses
the blood glucose increase that sucrose causes. Appeal Br. 9. Appellant
asserts that there is nothing in Nagata that concerns or deals with a taste of
the D-psicose or a taste of D-psicose-containing carbohydrates or
saccharides because the taste does not matter at all in the therapeutic
application. Id. at 8. According to Appellant, Nagata discloses that
D-psicose is sweet but teaches D-psicose is included in the sugar
composition for administration purposes. Id. Thus, Appellant contends that
Nagata is not directed to production of a D-psicose sweetener composition
as claimed. Id. at 8. Appellant also argues that the teachings of Lee and
Yoshihara do not cure the deficiencies of Nagata because, at best, they
establish that D-tagatose is a rare sugar which has been the focus of interest
as a potent non-caloric sweetener substitute for sucrose without showing
usefulness of D-psicose as a sucrose substitute at the time of the present
invention. Id. at 12.
We agree with Appellant that there is reversible error in the
Examiner’s determination of obviousness. The Examiner bears the initial
burden of presenting a prima facie case of obviousness. In re Oetiker, 977
F.2d 1443, 1445 (Fed. Cir. 1992). “[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.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
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2006), quoted with approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
418 (2007). The fact finder must be aware “of the distortion caused by
hindsight bias and must be cautious of arguments reliant upon ex post
reasoning.” KSR, 550 U.S. at 421 (citing Graham v. John Deere Co., 383
U.S. 1, 36 (1966) (“warning against a ‘temptation to read into the prior art
the teachings of the invention in issue’”)).
The Examiner contends that the combined teachings of Nagata and
Yoshihira disclose D-psicose and D-tagatose as equivalents as a non-caloric
sweetener substitute for sucrose in view of their structural similarities. Final
Act. 3; Ans. 13; Nagata ¶ 13; Yoshihira 219. We do not agree. Rather, we
agree with Appellant that Nagata focuses on the therapeutic use of D-psicose
to suppress the rapid increase of blood sugar/glucose level in a subject and is
not concerned with producing a sweetener comprising D-psicose and
erythritol having a taste comparable to a taste of sucrose. Appeal Br. 8–9;
Nagata ¶ 1.
We also agree with Appellant that Yoshihira and the additional cited
art do not disclose D-psicose as a sucrose substitute for sweeteners. Appeal
Br. 10–12. In fact, the Examiner misapprehends Yoshihira’s teaching of
bioconverting D-psicose to D-tagatose. Both Yoshihira and Appellant seek
to make D-psicose into a more useful sugar. Yoshihira achieves this through
a bioconversion process that chemically modifies D-psicose’s structure
(Yoshihira Figure 1, 219) while Appellant creates a specific mixture of
D-psicose with sucrose substitutes. The fact that Yoshihira uses a
bioconversion process to make D-tagatose, a recognized sweetener substitute
for sucrose, from D-psicose would suggest to one skilled in the art that the
structural dissimilarity between the two rare sugars is what results in the
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desirable characteristic of D-tagatose being a “potent noncaloric sweetener
substitute for sucrose.” Yoshihira 219. Thus, the Examiner has not
provided an adequate technical explanation of why the structural similarities
of D-psicose and D-tagatose would have led one skilled in the art to
conclude that D-psicose possesses the characteristic of being a “potent
noncaloric sweetener substitute for sucrose.”
With respect to the amounts of D-psicose and erythritol needed to
arrive at a sweetener composition having a taste comparable to a taste of
sucrose, the Examiner points to Nagata as teaching D-psicose as a main
component of a sweetener composition and Lee as teaching ranges that
would appear to encompass the claimed amount for D-psicose and erythritol
based on the Examiner’s alleged equivalence of D-psicose and D-tagatose.
Final Act. 3–4. However, the Examiner’s reliance on these references for
the stated proposition is misplaced.
The Examiner’s assertion that the D-psicose in Nagata’s sweetener
composition is the main component of the sweetener composition is based
on the assumption that “at least some other carbohydrates/sugars must
comprise the remainder of the mixture.” Ans. 10. However, Nagata
discloses that the amount of D-psicose used to achieve the desired
therapeutic effect is 0.1 to 50% by weight based on the carbohydrate amount
used in the product. Nagata ¶ 13. The Examiner has not explained
adequately why this disclosure in Nagata teaches D-psicose as a main
component of a sweetener composition. Nor does the Examiner direct us to
any portion of Nagata that discloses D-psicose as the main component of the
sweetener composition.
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Lee teaches ranges for the amounts of D-tagatose and erythritol for a
sweetener composition. Lee ¶¶ 13, 17, 18. As we discuss above, the
Examiner does not explain adequately why one skilled in the art would have
reasonably expected D-psicose to possess the desirable characteristic of
D-tagatose as a sweetener substitute for sucrose. In view of this, the
Examiner likewise fails to explain adequately why Lee’s range of amounts
specific for D-tagatose would be applicable to the less desired D-psicose rare
sugar. The Examiner also fails to point to any portion of Nagata or Lee that
would lead one skilled in the art to arrive at the requisite amounts of
D-psicose and erythritol that would result in a sweetener composition
comparable to sucrose.
Thus, the Examiner does not explain how one skilled in the art, absent
impermissible hindsight, would modify the sweetener composition of Nagata
to arrive at the claimed sweetener composition.
Accordingly, we reverse the Examiner’s prior art rejection of claims
25, 26, 28–30, and 32 under pre-AIA 35 U.S.C. § 103(a) as unpatentable
over Nagata, Lee and Yoshihara for the reasons Appellant presents and we
provide above.
Rejection II
After review of the positions the Appellant provides in the Appeal and
Reply Briefs and the Examiner provides in the Final Action and the Answer,
we REVERSE the Examiner’s prior art rejection of claims 25, 27–29, 31,
and 32 under pre-AIA 35 U.S.C. § 103(a) as unpatentable over Nagata,
Yoshihara, and Andersen for the reasons Appellant presents. We add the
following for emphasis.

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Claim 25
This rejection addresses a claimed embodiment of producing a
D-psicose-containing sweetener comprising D-psicose as a main component
combined with a stevia sweetener.
We refer to the Examiner’s Final Office Action for a complete
statement of the rejection of claim 25. Final Act. 5–7. The principal
difference between this rejection and the one discussed above is that the
Examiner replaces Lee with Andersen. The Examiner relies on Andersen to
establish that is known in the art to combine D-tagatose with a stevia
sweetener in the amounts that overlap the claimed amounts for D-psicose
and the stevia sweetener. Id. at 6. Other than this difference, the rejection
essentially mirrors the earlier discussed rejection. Compare Final Act. 2–4,
with Final Act. 5–7.
Appellant relies essentially on the same line of arguments presented
when discussing Rejection 1. Appeal Br. 15. We again agree with
Appellant that there is reversible error in the Examiner’s determination of
obviousness and reverse the Examiner’s prior art rejection of claims 25,
27–29, 31, and 32 under pre-AIA 35 U.S.C. § 103(a) as unpatentable over
Nagata, Yoshihara, and Andersen for the reasons Appellant presents and we
provide above when discussing the previous rejection.
We need not reach the evidentiary data presented in the Declaration of
Tetsuo Iida under 37 C.F.R. § 1.132, entered into the record on July 24,
2017, because the Examiner has not established a prima facie case of
obviousness.

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CONCLUSION
In summary:

Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
25, 26,
28–30, 32
103(a) Nagata, Lee,
Yoshihara
25, 26,
28–30, 32
25, 27–29,
31, 32
103(a) Nagata, Yoshihara,
Andersen
25, 27–29,
31, 32
Overall
Outcome
25–32

REVERSED