Mark Gorris

Patent Trials and Appeals Board

Feb 4, 2020

12639882 - (D) (P.T.A.B. Feb. 4, 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.
12/639,882 12/16/2009 Mark Gorris 157/1721US(1) 7655
22822 7590 02/04/2020
LEWIS RICE LLC
ATTN: BOX IP DEPT.
600 WASHINGTON AVE.
SUITE 2500
ST LOUIS, MO 63101
EXAMINER
GEORGE, PATRICIA ANN
ART UNIT PAPER NUMBER
1793
NOTIFICATION DATE DELIVERY MODE
02/04/2020 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):
IPDEPT@LEWISRICE.COM
KDAMMAN@LEWISRICE.COM
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MARK GORRIS
____________

Appeal 2018-004209
Application 12/639,882
Technology Center 1700
____________

Before CATHERINE Q. TIMM, JEFFREY R. SNAY, and
MICHAEL G. MCMANUS, Administrative Patent Judges.

SNAY, 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 rejecting claims 21–38. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42.
Appeal 2018-004209
Application 12/639,882

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BACKGROUND
According to Appellant, cinnamon may provide health benefits when
ingested in an amount constituting a medicinal dose, which Appellant
defines as “at least 1 gram consumed in a single instance.” Spec. 14. The
subject matter on appeal relates to a food product containing a medicinal
dose of cinnamon. Id. at 11. Sole independent claim 21 is illustrative and
reproduced from the Claims Appendix of the Appeal Brief as follows:

21. A chewable consumable comprising:
a medicinal dose of cinnamon, said medicinal dose
comprising at least 1 gram and at least 2.5% of the total mass of
said chewable consumable;
a fruit additive chosen from the group consisting of: fruit
extract, fruit rind and combinations thereof, said fruit additive
comprising at least 2.5% of the total mass of said chewable
consumable;
a grain; and
an unrefined sweetener;
wherein said chewable consumable is formed by said
unrefined sweetener binding said cinnamon, said fruit additive,
and said grain together without use of additional fat or
chain proteins in said binding;
wherein said chewable consumable comprises between about
16 to about 35 grams.
Appeal Br. 31 (Claims Appendix).
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REJECTIONS
I. Claims 21, 24–27, 29–31, and 34–38 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Nair,2 Su,3 Kifaru,4 and Parthasarath.5
II. Claims 22, 23, and 28 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Nair, Su, Kifaru, Parthasarath, and Prosise.6
III. Claim 32 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Nair, Su, Kifaru, Parthasarath, and Smidt.7
IV. Claim 33 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Nair, Su, Kifaru, Parthasarath, and Cleveland.8

OPINION
Appellant presents arguments addressing the Examiner’s rejection of
claim 21, and does not separately argue any other claim. See Appeal Br. 29
(“Because all other currently pending claims in this case depend from claim
21, it is not necessary at this time for Appellant to address Examiner’s
rejection of the dependent claims under 35 U.S.C. § 103(a).”). Accordingly,
each rejection on appeal stands or falls with the rejection of claim 21.

2 US 2009/0004334 A1, published January 1, 2009.
3 Lan Su et al., Total phenolic contents, chelating capacities, and radical-
scavenging properties of black peppercorn, nutmeg, rosehip, cinnamon and
oregano leaf, 100 Food Chemistry (2007) 990-997.
4 http://www.kifaruforums.net/archive/index-php/t-6034.html (accessed by
the Examiner on October 17, 2016).
5 Chemistry of Spices, ed. Villupanoor A. Parthasarathy et al., CABI
International 2008.
6 US 2002/0012722 A1, published January 31, 2002.
7 US 2007/0212433 A1, published September 13, 2007.
8 US 2010/0113598 A1, published May 6, 2010.
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Application 12/639,882

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With regard to claim 21, and relevant to Appellant’s arguments on
appeal, the Examiner finds Nair discloses chewable nutritional food
products, such as nutrient bars and cookies, which include a medicinal dose
of cinnamon. Final Act. 6. The Examiner finds Nair is silent with regard to
use of sweetener as a binder for the food product, but that Kifaru teaches use
of honey alone for binding a nutritional composition. Id. at 8. With regard
to the recited cinnamon concentration, the Examiner finds Nair teaches
providing cinnamon “for a host of benefits” and discloses a concentration
range that overlaps that of claim 21. Ans. 16 (citing Nair ¶¶ 9, 25).
Appellant contends that while Nair discloses a concentration range for
an admixture of ingredients which includes cinnamon, no such concentration
range is disclosed for cinnamon alone. Appeal Br. 22 (citing Nair ¶ 25).
Appellant further argues that one skilled in the art would not have selected a
cinnamon concentration within the recited range “because one of ordinary
skill in the art would understand that, due to the strong flavoring profile of
cinnamon, cinnamon should not be added at such high percentages.” Id. at
23. See also Reply Br. ii.
Appellant’s arguments are not persuasive of reversible error. Nair
states that the disclosed nutritional supplement can be formulated from four
ingredients: soy, curcumin, at least one sweetener, and at least one so-called
“additional ingredient.” Nair ¶ 25. Nair identifies cinnamon as a suitable
such additional ingredient, and teaches that the additional ingredient may be
provided at about 0.1 to about 20 wt %. Id. The fact that Nair also discloses
use of a cinnamon-containing admixture as a preferred additional ingredient
(id.) is not apposite to Nair’s alternative teaching of at least one additional
ingredient, e.g. cinnamon.
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Nor does Appellant persuasively argue that the claimed cinnamon
concentrations would be beyond that which one skilled in the art would have
considered in a nutritional product. Appellant presents no credible evidence
in support of that contention. Conversely, the Examiner correctly finds that
Nair identifies certain health benefits attributed to cinnamon. See Nair ¶ 9
(“Cinnamon . . . might provide a natural remedy against adult onset type II
diabetes, lowering ‘bad’ LDL cholesterol, anti-blood clotting action,
boosting brain function and alertness, treating colds and flu, and acting as a
mild stimulant.”). Consistent with the disclosed health benefits, Nair states
that ingredients such as cinnamon may be added “to provide pleasant taste,
composition solubility, composition stability, and/or additional nutritional
benefits.” Id. ¶ 48. Regardless of whether one of ordinary skill in the art
would have understood Nair as disclosing cinnamon at a concentration as
high as 20 wt. %, there is no dispute that Nair expressly identifies cinnamon
as an ingredient intended to provide health benefits. As such, a
preponderance of the evidence supports the finding that one of ordinary skill
in the art would have had a reason to maximize the amount of cinnamon
contained in the product. Appellant has not provided evidence that the
recited concentration range would have exceeded that which would have
been considered with a reasonable expectation of success for the known
purpose of providing maximum health benefits.
Appellant also argues that Nair’s mention of “bakery items,” as
cookies or nutrition bars, likely would have included eggs or oils that are
precluded by the claim. Appeal Br. 25. Nair makes no mention of eggs or
oils in the disclosed food products. Moreover, Kifaru provides evidence that
it was known to use honey for binding nutritional bars, without use of eggs
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or oils. In short, Appellant does not present persuasive evidence that any of
the chewable consumable products listed in Nair necessarily would have
included eggs or oils.
For the foregoing reasons, the Examiner’s rejection of claim 21 is
sustained. Because Appellant does not separately argue any of claims 22–
38, the Examiner’s rejections of these claims are sustained for the same
reasons given in connection with claim 21.

CONCLUSION
The Examiner’s decision rejecting claims 21–38 is affirmed.

DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
21, 24–27,
29–31, 34–
38
103(a) Nair, Su, Kifaru,
Parthasarath
21, 24–27,
29–31, 34–
38

22, 23, 28 103(a) Nair, Su, Kifaru,
Parthasarath,
Prosise
22, 23, 28
32 103(a) Nair, Su, Kifaru,
Parthasarath, Smidt
32
33 103(a) Nair, Su, Kifaru,
Parthasarath,
Cleveland
33
Overall
Outcome
21–38

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Application 12/639,882

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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED