Katharina Reichelt et al.

Patent Trials and Appeals Board

Sep 26, 2019

12871303 - (D) (P.T.A.B. Sep. 26, 2019)

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.
12/871,303 08/30/2010 Katharina Reichelt 085158-536103 1514
30678 7590 09/26/2019
POLSINELLI PC
(DC OFFICE)
1000 Louisiana Street
Suite 6400
HOUSTON, TX 77002
EXAMINER
WEBB, WALTER E
ART UNIT PAPER NUMBER
1612
NOTIFICATION DATE DELIVERY MODE
09/26/2019 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):
patentdocketing@polsinelli.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte KATHARINA REICHELT, JAKOB PETER LEY,
PETRA HOFFMANN-LÜCKE, MARIA BLINGS,
SUSANNE PAETZ, and THOMAS RIESS

__________

Appeal 2018-000173
Application 12/871,303
Technology Center 1600
__________

Before FRANCISCO C. PRATS, JEFFREY N. FREDMAN, and
TIMOTHY G. MAJORS, Administrative Patent Judges.

MAJORS, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 submits this appeal under 35 U.S.C. § 134 involving
claims to a flavoring mixture. The Examiner rejected the claims as obvious.
We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 Appellant identifies the Real Party in Interest as Symrise AG. Appeal Br.
2.
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STATEMENT OF THE CASE
Appellant’s invention “relates to a flavoring mixture comprising one
or more sweet-tasting substances as well as phyllodulcin.” Spec. 1:25–26.
As the Specification explains, “the object of the invention was to provide
orally-consumable, sweet-tasting products which have a reduced amount of
sugar and/or sweetener compared to products with a comparable sweetness
sensation.” Id. at 4:8–11. According to the Specification, with “the
flavoring mixture according to the invention . . ., a surprising synergistic
[sweetness sensation] effect is present.” Id. at 8:19–25.
Claims 1, 4–7, 25, and 28–34 are on appeal. Independent claim 1 is
illustrative, and reads:
1. A flavoring mixture comprising:
(i) sucrose;
(ii) an extract of hydrangea dulcis obtained from a
solvent comprising ethanol, the extract comprising from
0.5 to 30 wt.% of phyllodulcin and/or a salt thereof and
from 0.01 to 30 wt.% of hydrangenol and/or a salt thereof,
wherein the weight percent of the phyllodulcin and
hydrangenol and/or salts thereof is based on the dry weight
of the extract; and
wherein a ratio of a sucrose equivalence of a
concentration of the sucrose of group (i) to a sucrose
equivalence of a concentration of the phyllodulcin of
group (ii) is ≥ 4, and the flavoring mixture synergistically
enhances the sweetness of an aqueous composition
comprising the flavoring mixture in comparison to an
otherwise identical aqueous composition without the
extract of hydrangea dulcis.

Appeal Br. 19 (Claims App.).
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The other independent claim, claim 25, is similar to claim 1, but does
not recite that the extract is obtained from a solvent comprising ethanol.
Appeal Br. 19. Claim 25 also differs from claim 1 because claim 25 recites
at least one additional substance be included in the flavoring mixture, such
as hesperetin and/or phloretin. Id.
The claims stand rejected2 as follows:
Claims 1, 4–7, 25, 28, 29, 33, and 34 under 35 U.S.C. § 103(a) as
obvious over Sakai.3 Final Act. 4–7.4
Claims 30–32 under 35 U.S.C. § 103(a) as obvious over Sakai in
further view of Rezk5 and Buchholz.6 Final Act. 7–8.
This is the second appeal to the Board related to U.S. Application No.
12/871,303. In an earlier appeal, the Board reversed the Examiner’s
rejection of the then-pending claims as anticipated by Sakai, and entered a
new ground of rejection of those claims for obviousness. See Ex parte
Reichelt, Appeal No. 2014-000308 (PTAB Mar. 15, 2016).

2 The Examiner withdrew a new matter rejection under 35 U.S.C. § 112, first
paragraph. See Adv. Act. dated Jan. 25, 2017.
3 Sakai et al., US 7,332,522 B2, issued Feb. 19, 2008.
4 The Examiner also identifies claims 18–21 as subject to this rejection, but
those claims had already been canceled and, thus, are not subject to the
rejection on appeal. See Amdt. dated Aug. 31, 2016.
5 Bashir M. Rezk et al., The antioxidant activity of phloretin: the disclosure
of a new antioxidant pharmacophore in flavonoids, 295 Biochemical and
Biophysical Research Communications 9–13 (2002). The Examiner uses the
name “Bashir” to describe this reference. Final Act. 7.
6 Buchholz et al., US 2006/0188591 A1, published Aug. 24, 2006.
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DISCUSSION
The issue on appeal is whether a preponderance of the evidence on
this record supports the Examiner’s conclusion of obviousness.
Claim 1
The Examiner finds that Sakai teaches a composition comprising
0.0366% of phyllodulcin and 20% sucrose. Final Act. 4. (citing Sakai
19:36–54 (Example 6). Citing, in substantial part, to the Board’s discussion
from the earlier appeal, the Examiner finds that a composition, such as
disclosed in Sakai’s Example 6, would provide a sucrose equivalence ratio
of approximately 1.85. Final Act. 4–5.7 Again citing the Board’s earlier
decision, the Examiner further concludes that even higher sucrose
equivalence ratios, such as ≥ 4 in claim 1 as amended, would have been
obvious based on optimization of Sakai absent evidence of unexpected
results (or other objective indicia) from Appellant. Id. at 5–6.
Concerning other limitations of claim 1, the Examiner finds:
In regard to the amended phrase “an extract of hydrangea
dulcis [obtained from a solvent comprising ethanol] comprising

7 Independent claim 1 from the earlier appeal required a sucrose equivalence
ratio of ≥ 2, which the Board found was close to the ratio of 1.85 derivable
from the amount of sucrose and phyllodulcin in Sakai’s Example 6
(pertaining to a feed for animals). See Reichelt, slip op. at 10–11. Based on
arguments and evidence advanced by Appellant previously, the Board noted
a sucrose equivalence range for pure phyllodulcin (300–800) and a sucrose
equivalence value for sucrose of 1. Id. at 5. And the Board accepted the
method urged by Appellant for calculating a ratio of sucrose equivalence:
(wt% sucrose x 1 / wt% phyllodulcin x 300). Id. at 10–11. Neither
Appellant nor the Examiner suggest that this method is inapplicable to the
claims as amended. Accordingly, we apply that same method here for
calculating the sucrose equivalence ratio.
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from 0.5 to 30 wt.% of phyllodulcin and/or a salt thereof and
from 0.01 to 30 wt% of hydrangenol and/or salt thereof, wherein
the w[e]ight percent of the phyllodulcin and hydrangenol and/or
salts thereof is based on the dry weight of the extract”, it is noted
that the phrase merely identifies a source of extract. The amount
of phyllodulcin is controlled by the sucrose equivalence ratio.
Final Act. 6. The Examiner, thus, questions whether the extract as claimed
must include the recited amounts of both phyllodulcin and hydrangenol, and
further posits that the type of solvent used for obtaining the extract (i.e., the
solvent comprising ethanol) does not result in any structural difference in the
claimed flavoring mixture. See Ans. 3 (“It is not apparent the ‘flavoring
mixture’ comprises hydrangenol.”); Adv. Act. 2 (asserting “that the
patentability of a product does not depend on its method of production”)
(citing In re Thorpe, 777 F.2d 695, 698 (Fed. Cir. 1985)).
In any event, the Examiner finds that Sakai describes preparing
extracts of hydrangea dulcis, just as the pending claims recite hydrangea
dulcis as the extract’s source, and that, based on the Specification, such
extracts “should preferably contain” amounts of phyllodulcin and
hydrangenol within the claimed ranges. Final Act. 6 (citing Spec. 9:52–
10:10). Moreover, according to the Examiner, “the prior art compositions
are taught to comprise both phyllodulcin and hydrangenol (see Claim 1 at
col. 24; col. 5, lines 56–57) . . . [and] also that Sakai teaches ethanol
extraction at col. 10 lines 35–40.” Final Act. 6. Hence, the Examiner
concludes, the subject matter of claim 1 would have been obvious. Id. at 7.
Appellant makes essentially three arguments. First, Appellant
contends, the rejection fails to account for an extract of hydrangea dulcis as
claimed—particularly that the extract must include both phyllodulcin and
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hydrangenol. Appeal Br. 8–9 (“Sakai does not use an extract of hydrangea
dulcis that includes a combination of both phyllodulcin and hydrangenol.”).
According to Appellant, Sakai uses only purified phyllodulcin or
hydrangenol, not an extract that includes both. Id. at 9. Second, Appellant
contends the optimization theory advanced in the rejection is flawed.
According to Appellant, the claims have been amended “to provide for a
sucrose equivalence ratio of ≥ 4, which is more than double the ratio of
Example 6 of Sakai,” and further that “[i]t is improper to find that the
claimed sucrose equivalence would be obvious to derive by optimizing the
amount of phyllodulcin in Sakai.” Id. at 12 (“One would not optimize the
amount of phyllodulcin in Sakai for enhancing sweetness because Sakai is
directed to improving liver function (not enhancing sweetness). Sakai does
not mention sweetness nor does it consider sucrose equivalence . . . .”).
Third, Appellant contends they have presented evidence of unexpected
results: namely improved stability with ethanol-based extracts versus pure
phyllodulcin, and an unexpected sweetness enhancement that is provided
when sucrose is used in combination with certain amounts of the extract.
Appeal Br. 10–11, 14–17. According to Appellant, the Examiner simply
dismisses this evidence rather than considering the rejection anew in light of
the entire record. Id. at 17.
For the reasons explained below, we reverse the rejection on appeal.
At the outset, we emphasize that the claims now on appeal are not the
same as the claims at issue in the earlier appeal. The claims now specify
that part (i) of the mixture is sucrose, and that part (ii) is an extract of
hydrangea dulcis that includes both phyllodulcin and hydrangenol in the
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recited concentration ranges. Appeal Br. 19. Furthermore, the amended
claims now require a sucrose equivalence ratio ≥ 4, doubling the ≥ 2 ratio of
the earlier claims that we found was close to the 1.85 ratio derivable from
one of Sakai’s example compositions. See Reichelt, slip op. at 9–11. And
the amended claims now also recite a functional property that is provided by
the claimed flavoring mixture—“the flavoring mixture synergistically
enhances the sweetness of an aqueous composition . . . in comparison to an
otherwise identical aqueous composition without the extract of hydrangea
dulcis.” Appeal Br. 19; see also id. at 21 (claim 25). We consider the
Examiner’s findings, and the new arguments and evidence against the claims
as amended and, accordingly, cannot simply rely on discussion set forth in
the Board’s decision from three years ago.
On this record, we disagree with the Examiner’s position that it is
unclear that the present claims require the extract in the flavoring mixture
include both phyllodulcin and hydrangenol. See, e.g., Ans. 3. That is
apparent from a plain reading of the claims. The Examiner cites disclosure
in Sakai that suggest phyllodulcin and hydrangenol might be used in
combination, but Sakai does not clearly describe use of an extract that
includes both of those compounds within the ranges recited in the claims.8

8 Appellant is correct that Sakai does not “use” (i.e., exemplify) both
phyllodulcin and hydrangenol in its compositions, and Appellant is also
correct that Sakai exemplifies purified/isolated compounds. Appeal Br. 8–9;
Sakai 17:20–18:24 (Example 1 (isolation process for phyllodulcin), Example
2 (isolation process for hydrangenol); Sakai 19:37–20:10 (Example 6 (use of
isolated phyllodulcin in feed composition), Example 7 (use of isolated
hydrangenol in feed composition))). Of course, the teachings of the prior art
are not limited to the art’s working examples. Merck & Co. v. Biocraft
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See Sakai, claim 1 (“[A] therapeutically effective amount of at least one
member selected from the group consisting of phyllodulcin, hydrangenol,
and thunberginol A, . . .”).
The Examiner’s invocation of Appellant’s Specification as evidencing
that extracts of hydrangea dulcis (in Sakai) will include the required
amounts of both compounds does not demonstrate that the claim elements
are met. Final Act. 6; Ans. 3. The Specification discloses that the extracts
used for the invention “should” contain certain concentration ranges of
phyllodulcin and hydrangenol, but those ranges are broader than what is
claimed. See Spec. 10:3–10 (disclosing a phyllodulcin range in extracts
from 0.1% to 50%, and a hydrangenol range from 0.01% to 50%).
Accordingly, even if we read “should” as “necessarily will” as the Examiner
appears to do, the Specification evidences that extracts of hydrangea dulcis
may include less than 0.5% or more than 30% of phyllodulcin, and more
than 30% hydrangenol—amounts outside the claimed ranges. In short, the
Specification does not reveal that all extracts of hydrangea dulcis will
include the narrower concentrations of phyllodulcin and hydrangenol that
are claimed.

Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (explaining that “all
disclosures of the prior art, including unpreferred embodiments, must be
considered”) (citation and internal quotation marks omitted). And, Sakai
does elsewhere suggest that a Compound (I), which may include
phyllodulcin or hydrangenol, might be provided as part of a mixture or be
isolated. See Sakai 11:3–7 (“[C]ompound (I) . . . may be used in the form of
a mixture of the extract, however, it may also be isolated as needed.”).
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Moving on, even if we agreed with the position that Sakai taught or
suggested the use of extracts of hydrangea dulcis including both
phyllodulcin and hydrangenol in its compositions, the rejection is for other
reasons flawed. Appellant persuades us that the optimization theory
advanced in the rejection lacks adequate support. Appeal Br. 12–14. Sakai
is not concerned with sweetness or sweetness enhancement, and does not
suggest that sucrose and extracts of hydrangea dulcis be used together for
that purpose, nor does Sakai disclose any particular relationship between the
amounts of sucrose and phyllodulcin that should be used. To the contrary,
as Appellant points out, Sakai broadly concerns use of phyllodulcin or
possibly other compounds extracted from hydrangea dulcis to improve liver
functioning. Id. at 12–13.
Arriving at a sucrose equivalence ratio of ≥ 4 (as claimed) with
Sakai’s cited compositions requires a number of assumptions about how
those compositions should be changed. Starting with Sakai’s Example 6
(which is the focus of the rejection), the sucrose amount stays the same at
20%, numerous other admixed materials in the feed are also present in
essentially the same concentrations, and only the amount of phyllodulcin
changes.9 Effectively, under those circumstances and to arrive at the
claimed ratio, the amount of phyllodulcin (0.0366 wt %) in Example 6

9 Consistent with the claims, Sakai’s Example 6 would also require
modification so that an extract is used and that extract must include both
phyllodulcin and hydrangenol in the recited amounts. For simplicity,
however, we focus on the amount of phyllodulcin here for purposes of
illustrating and calculating the modification needed to derive a sucrose
equivalence ratio in the amount claimed.
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would have to be cut more than half (i.e., to about 0.0166 wt %). Then, we
calculate a sucrose equivalence ratio: ((20% x 1)/(0.0166% x 300) = 4).
Sakai, however, never actually describes using phyllodulcin in such low
amounts. The only compound Sakai describes being used in such low
concentrations is isolated Thunberginol A (e.g., at concentrations of
0.013%), and Sakai does not provide any results relative to the ability of
those compositions to improve liver function. See Sakai 21:1–36 (Examples
11 and 12), 22:16–33 (no data for Examples 11 and 12). And, Sakai is silent
on any specific relationship between sucrose and phyllodulcin (or any of the
other compounds encompassed in Sakai’s “compound (I)”).
It is true, as the Board noted in the earlier appeal, Sakai elsewhere
discloses that “compound (I)” (which encompasses multiple agents, one of
which is phyllodulcin) may be provided in amounts from 0.001 to 100% if it
is an “amount to give a content which enables the food and drink or the feed
to exhibit liver function protecting or improving activity.” Sakai 13:47–56.
The Board also did reason previously that a phyllodulcin concentration of
Sakai was, thus, an optimizable variable. But, as Appellant highlights, to the
extent Sakai’s phyllodulcin is optimizable or result-effective, its recognized
optimization and effect pertains to liver function only. Appeal Br. 13
(“[T]here is no evidence of record showing that optimization for liver
protective function relates to optimization of sweetness enhancement.”).
The range of hypothetical concentrations in Sakai is also exceptionally
broad, and the record is wanting for evidence that lower amounts of
phyllodulcin (e.g., 0.017%) as part of a composition having enough sucrose
content from which we might derive a sucrose equivalence ratio that is
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claimed, would provide a liver protection function. See Genetics Inst., LLC
v. Novartis Vaccines & Diagnostics, Inc., 655 F.3d 1291, 1306 (Fed. Cir.
2011) (reasoning that disclosure of very broad ranges may not invite routine
optimization).
Sakai may well have recognized phyllodulcin content as a variable
that affects a composition’s properties, yet Appellant persuades us that those
properties have no relevance to the properties of the mixture claimed here.
It is only by chance that, via potential optimization for liver-protecting
function, one might modify Sakai’s compositions to arrive at the claimed
favoring mixture. There is minimal, if any, evidentiary basis here to
conclude that the ordinarily skilled person would reasonably expect that
such a composition would provide the recited synergistic sweetness
enhancement. Given the number of variables at issue, the vast breadth of
concentrations in Sakai, and the wholly different purposes (liver function
versus sweetness enhancement) for which Sakai and claimed compositions
use extracts of hydrangea dulcis, we determine that the record lacks a
sufficient basis to conclude that a composition having a sucrose equivalence
ratio ≥ 4 would have been made through routine optimization of the cited
art.
In short, upon considering the evidence of record, there is no apparent
teaching in Sakai (or other evidence cited) to demonstrate a sufficient reason
to modify Sakai’s compositions by adjusting phyllodulcin amounts relative
to the amounts of sucrose, nor to provide a reasonable expectation of success
that, in so doing, one would form a flavoring mixture that “synergistically
enhances” a composition’s sweetness as claimed. A prima facie case for
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obviousness requires “a reason that would have prompted a person of
ordinary skill in the relevant field to combine the elements in the way the
claimed new invention does.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
418 (2007). Even supposing a synergistic sweetness enhancement is
inherent once the appropriate amounts (and ratio) of sucrose and
phyllodulcin are used together, we still consider the extent to which the
functional recitation of the claims would have been expected based on the
evidence of record. Cf. Honeywell International Inc. v. Mexichem Amanco
Holding S.A., 865 F.3d 1348, 1355 (Fed. Cir. 2017) (“What is important
regarding properties that may be inherent, but unknown, is whether they are
unexpected.”). There is insufficient evidence cited here from which we can
conclude that the claimed sweetness enhancing property would have been
expected in the compositions taught or suggested in Sakai. As noted above,
to the extent Sakai suggests administering phyllodulcin, it is for its purported
ability to improve liver function. See Sakai, Abst., 22:16–33 (results
showing lower GPT activity as an indication of liver function disorder with
administration of certain feeds containing phyllodulcin and other
compounds).
We need not further address Appellant’s argument on objective
indicia of nonobviousness. Appeal Br. 14–17. For clarity, however, insofar
as the Examiner suggests the Board considered but rejected such argument
incident to the earlier appeal (see, e.g., Ans. 7–8), that is not accurate. The
rejection previously appealed was for anticipation, not obviousness.
Reichelt, slip op. at 7–10. The particular arguments and evidence now
advanced by Appellant concerning objective indicia of nonobviousness were
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not specifically part of the earlier appeal and the claims have also been
substantially amended as explained above.
For the above reasons, we reverse the rejection of claim 1.
Claims 4–7, 25, 28–34
For the reasons above, we also reverse the rejection of the claims that
depend directly or indirectly from claim 1. In re Fritch, 972 F.2d 1260,
1266 (Fed. Cir. 1992) (“[D]ependent claims are nonobvious if the
independent claims from which they depend are nonobvious.”). For claims
30–32, the Examiner has not shown that Rezk and Buchholz make up for
Sakai’s deficiencies on this record as noted above. For substantially the
same reasons as discussed for claim 1, we also reverse the rejection of
independent claim 25 and its dependent claims (claims 33 and 34).
SUMMARY
We reverse the rejections for obviousness on appeal.
Claim(s) Rejected Basis Affirmed Reversed
1, 4–7, 25, 28, 29,
33, 34
§ 103 Sakai 1, 4–7, 25, 28,
29, 33, 34
30–32 § 103 Sakai,
Rezk, Buchholz
30–32
Overall Outcome 1, 4–7, 25, 28–
34

REVERSED