GIVAUDAN SADownload PDFPatent Trials and Appeals BoardOct 12, 20212020005371 (P.T.A.B. Oct. 12, 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. 15/202,047 07/05/2016 Eva Christina Maria BINGGELI GIV.P30305 8943 23575 7590 10/12/2021 CURATOLO SIDOTI CO., LPA 24500 CENTER RIDGE ROAD, SUITE 280 CLEVELAND, OH 44145 EXAMINER BADR, HAMID R ART UNIT PAPER NUMBER 1791 NOTIFICATION DATE DELIVERY MODE 10/12/2021 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): 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 EVA CHRISTINA MARIA BINGGELI, THOMAS KIRSCH, and SURENDRA RAMCHANDRA OTIV Appeal 2020-005371 Application 15/202,047 Technology Center 1700 Before CATHERINE Q. TIMM, CHRISTOPHER C. KENNEDY, and SHELDON M. MCGEE, Administrative Patent Judges. TIMM, 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 13, 15, 16, 20–22, and 27–29. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. We also enter a new ground of rejection under 37 C.F.R. § 41.50(b) against claims 20–22. 1 Appellant, i.e., “applicant” as defined in 37 C.F.R. § 1.42(a), identifies the real party in interest as Givaudan SA. Appeal Br. 3. Appeal 2020-005371 Application 15/202,047 2 CLAIMED SUBJECT MATTER The claims are directed to an ingestible composition comprising a vanilla extract (see, e.g., claim 13), a flavoring composition comprising a vanilla extract (see, e.g., claim 20), and a composition comprising dried and comminuted green ripe vanilla beans (see, e.g., claim 27). Claims 13 and 20 recite steps for making the vanilla extract. The process involves preparing dried vanilla beans, incubating with beta-glucosidase enzyme to convert glucovanillin to vanillin, and extracting with a solvent. Claims 13, 20; Spec. 1:12–14. Claim 13, reproduced below, is illustrative of the claimed compositions comprising a vanilla extract: 13. An ingestible composition comprising a vanilla extract produced by a process comprising the steps of: a) preparing dried vanilla beans by comminuting green ripe vanilla beans and incubating them at a drying temperature of about 65°C to about 120°C for about 5 to about 24 hours in an environment where moisture can escape until a moisture content of less than 10% is reached, b) incubating the dried vanilla beans, or an extract thereof, with one or more beta-glucosidase enzyme provided as an additive, to convert glucovanillin to vanillin, and c) extracting the dried vanilla beans or the incubated vanilla beans with a solvent before or after step b). Appeal Br. 13 (Claims Appendix). Claim 27, reproduced below, is illustrative of the claimed composition comprising dried and comminuted green ripe vanilla beans: 27. A composition comprising dried and comminuted green ripe vanilla beans having a moisture content of less than 10% before any extraction or enzymatic treatment steps. Appeal 2020-005371 Application 15/202,047 3 Appeal Br. 14 (Claims Appendix). REJECTIONS The Examiner maintains the following rejections. Claims 13, 15, and 16 are rejected under pre-AIA 35 U.S.C. § 102(b) as being anticipated by Bartnick (US 2005/0074519 A1, published April 7, 2005). Final Act. 2. Claims 20–22 are rejected under pre-AIA 35 U.S.C. § 102(b) as being anticipated by Singer (US 5,202,146, published April 13, 1993). Final Act. 3. Claims 27–29 are rejected under pre-AIA 35 U.S.C. § 103(a) as unpatentable over Bartnick. Final Act. 3. OPINION Claims 13, 15, and 16 In the arguments against the Examiner’s rejection of claims 13, 15, and 16 as anticipated by Bartnick, Appellant does not argue any claim apart from the others. Appeal Br. 7–10. We select claim 13 as representative for resolving the issue on appeal. The Examiner’s finding of anticipation is based on the fact that Bartnick teaches an ingestible composition (ice cream) comprising vanilla extract produced with a step of adding beta-glucosidase before extraction. Final Act. 2; Ans. 5–6. Appellant’s arguments hinge on purported differences between Appellant’s drying step and Bartnick’s drying/curing step, and on evidence they submit to show that the product is, indeed, different. Appeal Br. 8–10. Appeal 2020-005371 Application 15/202,047 4 The question is whether the difference in processing translates to a patentable difference in the product. Claim 13 is in product-by-process format. “If the product in a product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985). And “when the PTO shows sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990) (citation omitted). The Examiner has provided a sound basis for believing that the products of Appellant and Bartnick are the same or substantially the same. As found by the Examiner (Final Act. 2; Ans. 6), Bartnick discloses an ingestible composition (ice cream) containing natural vanilla extract produced by enzymatic treatment. See, e.g., Bartnick Examples 4 and 7. In fact, there is no dispute that, as found by the Examiner, Bartnick describes producing vanilla extract in a process including an enzymatic reaction using beta-glucosidase (Claim 13’s step (b)) and extracting with a solvent (Claim 13’s step (c)). Compare Final Act. 2, and Ans. 5, with Appeal Br. 7–10, and Reply Br. 2–3; Bartnick ¶¶ 7, 21, 42 (Example 4), 46 (Example 7). Prima facie, the product, natural vanilla extract, is the same or substantially the same. Thus, the question becomes whether Appellant has met the burden of showing that, in fact, the products are patentably different. We agree with the Examiner that the evidence is insufficient to show that the products are patentably different. First, the starting materials and processing undertaken by Bartnick is substantially similar to Appellant’s starting materials and processing, Appeal 2020-005371 Application 15/202,047 5 although not exactly the same. Bartnick starts with cured vanilla beans, comminutes the vanilla beans, incubates with beta-glucosidase enzyme, and extracts with a solvent. See, e.g., Bartnick ¶¶ 30–33 and Examples 4 and 7 at ¶¶ 42, 46. Cured vanilla beans, as acknowledged by Appellant, undergo a drying step. Appeal Br. 8; Bartnick ¶ 17 (“fermented vanilla beans are beans (‘cured vanilla beans’) that have been allowed to dry, typically in the sun, for a time sufficient for the enzymes naturally present to ferment the beans.”). Bartnick explains that curing involves “killing” the beans by heat (e.g.[,] 20 seconds in boiling water or 48 hours in an oven) or freezing, wrapping the beans in blankets, heating them in the sun and allowing them to sweat followed by drying and conditioning. Bartnick ¶ 2. During this curing process, enzymes naturally present in the beans (glycosidases, proteases and oxidases) ferment the beans, which shrink by up to 400% and turn their characteristic brown color. Id. Thus, curing involves drying, i.e., a step of reducing the moisture content of the beans. It is reasonable to conclude that the Bartnick’s product would be substantially the same as vanilla extracts encompassed by claim 13. Second, Appellant’s evidence is insufficient to show a patentable difference in the vanilla extract composition. According to Appellant, “the claimed method results in a vanilla extract having i) a higher vanillin content, ii) a different 13C/12C isotope ratio, and iii) an improved sensory profile having a more complex vanilla aroma without off-notes, as compared to the vanilla extract disclosed in Bartnick.” Appeal Br. 9. As to a higher vanillin content, Appellant relies on a comparison of Examples 1 and 2 with the comparative method of Example 3. Appeal Br. 9. Appeal 2020-005371 Application 15/202,047 6 Example 3 does not use cured vanilla beans as does Bartnick. Compare Spec. 15:1–8, with Bartnick ¶¶ 30–33; Examples 4 and 7. Thus, the comparison fails because it does not compare Appellant’s vanilla extract to that made by the process of Bartnick. Also, we agree with the Examiner that compositional differences may also be the result of variation in the natural raw materials rather than the processing steps of claim 13. Ans. 7. As evidenced by Appellant’s data, the starting vanilla concentration within the vanilla bean affects the concentration of vanillin in the end product extract. The starting beans of Example 1 had a vanillin concentration of 0.9% and the process resulted in a concentration2 of vanillin in the 10 fold vanilla extract of 3.0% (w/w) as measured by high performance liquid chromatography. Spec. 13:13–25. The starting beans of Example 2 had a vanillin concentration 0.4% (w/w) and the end product extract had a concentration of 3.28% (w/w). Spec. 14:17–27. The starting beans of Example 3 had a higher concentration of vanillin (1.9% (w/w)) and this translated into a vanillin concentration in the product of 3.2% (w/w). Spec. 15:10–21. Thus, although less vanillin was converted in Example 3, i.e., the reaction yield was lower, the end product had comparable concentrations of vanillin as Examples 1 and 2 (3.2% versus 3.0% and 3.28%). The evidence supports the Examiner’s finding that variation in the natural raw materials, a parameter not limited by claim 13, affects the composition of the end product extract. As such, we are not persuaded that the difference in drying limits the composition of the end 2 Appellant uses the word “yield” but is reporting % (w/w), which is a measure of concentration rather than a measure of reaction yield. Appeal 2020-005371 Application 15/202,047 7 product extract in a manner that distinguishes Appellant’s extract composition from those described by Bartnick. As to Appellant’s evidence that the claimed method results in a vanilla extract having a different 13C/12C ratio (Appeal Br. 10), Appellant has not provided the level of objective evidence necessary to support that conclusion. As a first matter, there is a dispute between the Examiner and Appellant with regard to the significance of the 13C/12C ratio to the compositional characteristics of the vanilla extract. Compare Appeal Br. 10, and Reply Br. 3–4, with Ans. 8. In this regard, Appellant relies on statements made in the Kirsch Declaration submitted on October 9, 2018. Appeal Br. 10. The Examiner relies on disclosures in the research article referred to as Gassenmeier.3 Ans. 8. After reviewing the cited evidence, we determine that the 13C/12C ratio reflects compositional differences in the vanilla extract. Kirsch declares that “[a]ssessing the isotope ratio 13C/12C of vanillin (the ‘δ13C value’) is a widely used analytical tool to differentiate different vanillin compositions” and “[n]otably, the δ13C value is significantly modulated by the post- harvesting processing steps of the green ripe vanilla beans.” Kirsch Decl. ¶ 11. Gassenmeier is supportive of this last statement as it states that the 13C/12C ratio “seems to be significantly modulated by post-harvest processing.” Gassenmeier Conclusions ¶ 1. More specifically, Gassenmeier indicates that enzymatic curing produces δ13C values that are more negative 3 Gassenmeier, K., Binggeli, E., Kirsch, T. and Otiv, S. (2013), Modulation of the 13C/12C ratio of vanillin from vanilla beans during curing, Flavour Fragr. J., 28: 25–29. https://doi.org/10.1002/ffj.3122. Appeal 2020-005371 Application 15/202,047 8 than traditional curing and the data suggests that the less negative values in traditional extracts are due to an isotope discriminating degradation of vanillin in the traditional process. Gassenmeier Abst. A preponderance of the evidence supports a determination that degradation of vanillin reflects a compositional difference in the end product extract. Even though we find that the 13C/12C ratio is relevant to the question of whether Bartnick’s teaches vanillin extracts that are the same or substantially the same as Appellant’s claimed extracts, we determine that Appellant has not provided evidence, commensurate in scope with claim 13, that shows vanilla extracts within their claim scope are, in fact, different. According to Appellant “[e]xperimental testing discussed in the Kirsch Declaration evidences that the vanillin obtained by the claimed method has a different composition than vanillin obtained by the method disclosed in Bartnick.” Appeal Br. 10. However, the Kirsch Declaration merely states “[a] study was conducted under my direction, for the purpose of comparing the δ13C value of vanillin obtained by the claimed method versus the δ13C value of vanillin obtained by the methods disclosed in R1–R3,” i.e., the methods disclosed in US 5,705,205 (“R1”), US 2,835,591 (“R2”) and US 2005/0074520 (“R3”).4 Kirsch Decl. ¶¶ 5, 11. After that statement, Kirsch declares that “[t]he δ13C value for the product obtained by the claimed method was -21.6 to -22.2%” and “[i]n contrast, the δ13C values for the 4 Appellant states that “R3” is a continuation application of the presently cited Bartnick application and these references contain identical disclosures. Reply Br. 4. In fact, R3 (US 2005/0074520) is a continuation-in-part of the application 10/677,138 from which both Bartnick and US 2005/0074520 stem, but our cursory review supports Appellant’s statement that their disclosures are the same or substantially the same. Appeal 2020-005371 Application 15/202,047 9 product obtained by the traditional methods disclosed in R1-R3 was -19.2 to -21.2%. Kirsch Decl. ¶ 11. The problem is that Kirsch does not detail what specific processes within R1–R3 were followed or how many experiments were conducted. Bartnick has many examples and it is unclear which Kirsch followed. Thus, we are unable to adequately review the comparison or give it weight. Moreover, the range of vanilla extracts within the scope of claim 13 is large and there is no persuasive evidence that 13C/12C ratios of the entire scope of extracts of the R1–R3 references are outside of the scope of the claim. Claim 13 does not recite any 13C/12C ratios. Vanilla bean curing can vary widely and enzyme-catalyzed transformation can change the 13C/12C ratio. Gassenmeier Intro. ¶¶ 10–11. Claim 13 does not limit the starting vanilla bean type and many process parameters remain unlimited. For this additional reason, Kirsch’s declarations concerning 13C/12C ratios do not persuade us that there is a patentable difference in composition. Turning to the sensory evaluation of Examples 4, although we agree with Appellant that sensory evaluations by trained panelists should be given weight in determining whether the evaluated vanilla extracts have different compositions (Reply Br. 4–5; Kirsch Dec. ¶ 12), we do not find Appellant’s evaluation probative of a difference between Appellant’s extracts and Bartnick’s. This is because none of Bartnick’s extracts were evaluated. The evaluation compared the extract of Examples 1 and 2 to the comparative extract of Example 3. The extract of Example 3 is produced from uncured vanilla beans. Bartnick teaches using cured vanilla beans. Lastly, Appellant’s own Specification discloses that their drying and enzymatic treatment results in “a vanilla extract having a complex well- Appeal 2020-005371 Application 15/202,047 10 balanced vanilla aroma similar to that formed by traditionally curing beans, which includes a low concentration of phenolic notes, and is lacking in off- notes, in particular fatty acid and green off-notes.” Spec. 5:23–28. The similarity in aroma is some evidence of similarity in the compositions. After considering the evidence as a whole, we determine a preponderance of the evidence supports the Examiner’s determination that claim 13 encompasses vanilla extracts of the same or substantially similar composition to vanilla extracts described by Bartnick. Thus, we sustain the Examiner’s rejection of claims 13, 15, and 16 as anticipated by Bartnick. Claims 20–22 Anticipation by Singer Claims 20–22 are rejected under pre-AIA 35 U.S.C. § 102(b) as being anticipated by Singer (US 5,202,146). Final Act. 3. The Examiner cites to Example 2 of Singer as describing a flavoring composition comprising natural vanilla that can be used in frozen desserts. Id. Appellant points out that Singer does not disclose any method of forming vanilla extract. Appeal Br. 11. The Examiner responds that the claim is directed to a product and the method is irrelevant. Ans. 9. The question here is whether the mere naming of natural vanilla extract supports a finding of anticipation for the genus of vanilla extracts made by the process recited in claim 20. Given Appellant’s Specification states that extracts by their process are similar in aroma to those formed by traditional processes, we determine the mere naming of using natural vanilla suffices here. As stated in the Specification: Appeal 2020-005371 Application 15/202,047 11 Applicant has discovered that when green uncured beans are first dried quickly and only afterwards treated enzymatically in an enzymatic process of about 10 to 48 h, for 25 example 16 to 24 hours, a vanilla extract having a complex well-balanced vanilla aroma similar to that formed by traditionally curing beans, which includes a low concentration of phenolic notes, and is lacking in off-notes, in particular fatty acid and green off- notes, can be provided. Spec. 5:23–28. New Ground of Rejection over Bartnick We enter a new ground of rejection: Claims 20–22 are rejected under 35 U.S.C. § 102(b) as anticipated or, in the alternative, under 35 U.S.C. § 103(a) as obvious over Bartnick. Bartnick discloses a sufficiently specific natural vanilla extract that anticipates or renders obvious the vanilla extract produced by the method of claim 20. And it is used as a flavorant in ice cream. Our reasons supporting this finding of anticipation and a conclusion of obvious as supported by the reasoning we provided above in relation to the rejection of claim 13. Claims 27–29 The Examiner rejects claims 27–29 under pre-AIA 35 U.S.C. § 103(a) as unpatentable over Bartnick. Final Act. 3. Claim 27 is directed to “[a] composition comprising dried and comminuted green ripe vanilla beans having a moisture content of less than 10% before any extraction or enzymatic treatment steps.” As found by the Examiner, Bartnick teaches a vanilla powder made by grinding dried vanilla beans. Final Act. 3; Bartnick ¶ 3. The Examiner acknowledges that Bartnick does not teach that the dried and comminuted Appeal 2020-005371 Application 15/202,047 12 vanilla beans are green ripe vanilla beans. Id. According to the Examiner, “[o]nce the art recognizes the use of vanilla powder produced by grinding dried beans to a powder, the manipulation of green vanilla beans for any application including enzymatic processing or solvent extraction would have been well within one’s ordinary skill in the art.” Final Act. 3–4. Further according to the Examiner, “[d]rying vanilla beans to less than 10% moisture to affect the yield of the extract does not produce a vanilla extract which is different from other vanilla extracts that have been [produced] enzymatically by the action of beta-glucosidase as clearly set forth by Bartnick.” Ans. 10. Appellant contends that it “is not relevant whether one of ordinary skill in the art would have been motivated to grind dried green ripe vanilla beans, as Bartnick fails to disclose or suggest any type of vanilla bean that has a moisture content of less than 10% before any extraction or enzymatic treatment steps, as recited in claim 27,” Appeal Br. 11, and “[t]o the extent that the Office relies on the theory of routine optimization, the Office has failed to show that one of ordinary skill in the art would have recognized that decreasing the moisture content of less than 10% before any extraction or enzymatic treatment steps was recognized as a result-effective variable, namely, a variable known to affect a particular result.” Reply Br. 5–6. Appellant’s argument is not persuasive because the act of drying, by definition, reduces the moisture content of the thing being dried and the moisture content is the result effective variable of drying. To make vanilla powder by grinding dried vanilla beans requires a step of drying to some lower moisture level. Bartnick ¶ 3. Bartnick does not disclose the moisture level end point of the drying step and, thus, the ordinary artisan would have Appeal 2020-005371 Application 15/202,047 13 to perform routine experimentation to determine the workable or optimal levels of drying for the vanilla powder. Bartnick discloses the general condition of drying to some lesser moisture level and this teaching supports a conclusion of obviousness. See In re Aller, 220 F.2d 454, 456 (CCPA 1955) (“Normally, it is to be expected that a change in temperature, or in concentration, or both, would be an unpatentable modification. . . . [W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.”). Appellant provides no persuasive evidence that drying Bartnick’s vanilla powder to moisture contents of 10% or less would have been non- routine or that they obtain unexpected properties as compared to other drying levels. Thus, we sustain the Examiner’s rejection of claims 27–29 as obvious over Bartnick. CONCLUSION The Examiner’s decision to reject claims 13, 15, 16, 20–22, and 27– 29 is affirmed. We enter new grounds of rejection against claims 20–22. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed New Ground 13, 15, 16 102(b) Bartnick 13, 15, 16 20–22 102(b) Singer 20–22 20–22 102(b) Bartnick 20–22 20–22 103(a) Bartnick 20–22 27–29 103(a) Bartnick 27–29 Appeal 2020-005371 Application 15/202,047 14 Overall Outcome 13, 15, 16, 20– 22, 27– 29 20–22 TIME PERIOD FOR 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. . . . Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure § 1214.01. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED; 37 C.F.R. § 41.50(b) Copy with citationCopy as parenthetical citation