NESTEC S.A.

Patent Trials and Appeals Board

Nov 19, 2021

2021000441 (P.T.A.B. Nov. 19, 2021)

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.
15/116,895 08/05/2016 Stephanie Michlig Gonzalez 3712036-02707 7240
29157 7590 11/19/2021
K&L Gates LLP-Nestec S.A.
P.O. Box 1135
Chicago, IL 60690
EXAMINER
BROWE, DAVID
ART UNIT PAPER NUMBER
1617
NOTIFICATION DATE DELIVERY MODE
11/19/2021 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):
USpatentmail@klgates.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________
Ex parte STEPHANIE MICHLIG GONZALEZ,
JENNY MEYLAN MERLINI, ADAM BURBRIDGE, and
JOHANNES LE COUTRE
____________
Appeal 2021-000441
Application 15/116,895
Technology Center 1600
____________
Before JOHN E. SCHNEIDER, DEBRA L. DENNETT, and
RACHEL H. TOWNSEND, Administrative Patent Judges.
DENNETT, Administrative Patent Judge.
DECISION ON APPEAL1
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 5, 13, 14, 18, 20, and 23 of Application

1 In our Decision, we refer to the Specification (“Spec.”) of Application No.
15/116,895 filed Aug. 5, 2016; the Final Office Action dated Feb. 26, 2020
(“Final Act.”); the Appeal Brief filed July 20, 2020 (“Appeal Br.”); the
Examiner’s Answer dated Aug. 26, 2020 (“Ans.”); and the Reply Brief filed
Oct. 21, 2020 (“Reply Br.”).
2 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant
identifies the real party in interest as SOCIÉTÉ DES PRODUITS NESTLÉ
S.A. Appeal Br. 2.
Appeal 2021-000441
Application 15/116,895
2
15/116,895, which constitute all the claims pending in this application. We
have jurisdiction under 35 U.S.C. § 6(b).
For the reasons set forth below, we AFFIRM.
The subject matter of the invention relates to methods and
compositions for using cinnamaldehyde and zinc for weight management.
Spec., ¶ 1. The applicant asserts that the combination of cinnamaldehyde
and zinc provides a synergistic effect on the pharmacological activity of
TRPA1, impacting energy expenditure and fat oxidation. Id., ¶¶ 7–8.
Claim 5, reproduced below from the Claims Appendix of the Appeal
Brief, represents the claimed subject matter:
1. A method for weight loss, the method comprising
administering a composition comprising zinc to an individual
on a weight loss program, the composition further comprising a
component selected from the group consisting of cinnamon
essential oil extract, isolated cinnamaldehyde, synthesized
cinnamaldehyde, and mixtures thereof, the composition is a
food product comprising cinnamaldehyde from the component
at a flavoring concentration from 31.87 ppm to 6191 ppm and
having a cinnamaldehyde:zinc ratio of 1:0.5 to 1:0.005 by
weight, and the food product is not a yogurt, dairy product, or
juice, and at least a portion of the zinc is selected from the
group consisting of zinc chloride, zinc sulfate, zinc lactate, zinc
citrate and mixtures thereof.
REFERENCES
The Examiner relies on the following prior art in rejecting the claims
as obvious under 35 U.S.C. § 103:
T. Handjieva-Darienska et al., Initial weight loss on an 800-
kcal diet as a predictor of weight loss success after 8 weeks: the
Diogenes study, 64 European J. Clin. Nutr. 994–99 (2010)
(hereinafter “Handjieva-Darienska”).

Appeal 2021-000441
Application 15/116,895
3
Anonymous, 6 Ways Cinnamon Can Aid Weight Loss, (2013),
http://idealbite.com/cinnamon-for-weight-loss (last visited Feb.
2, 2018) (hereinafter “Ideal Bite”).

Anonymous, Cinnamaldehyde from Cinnamon, (2008),
http://cinnamicaldehyde.com (last visited July 19, 2018)
(hereinafter “Dru Era”).

Anonymous, Oats (Includes foods for USDA’s Food
Distribution Program), FoodData Central (2019), http://fdc.nal.
usda.gov/fdc-app.html (last visited Feb. 2, 2020) (hereinafter
“USDA”).
REJECTIONS
The Examiner maintains the following rejections: (1) claims 5, 13, 14,
18, 20, and 23 on the ground of obviousness-type double patenting over
claims 13, 14, and 31 of co-pending Application No. 15/327,108; and (2)
claims 5, 13, 14, 18, 20, and 23 under 35 U.S.C. § 103 as being obvious over
Handjieva-Darlenska in view of Ideal Bite, Dru Era, and USDA. Final Act.
3–12.
DISCUSSION
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential),
(cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011))
(“[I]t has long been the Board’s practice to require an applicant to identify
the alleged error in the [E]xaminer’s rejections.”). After considering the
evidence presented in this Appeal and each of Appellant’s arguments, we are
not persuaded that Appellant identifies reversible error. Thus, we affirm the
Examiner’s rejections for the reasons expressed in the Final Office Action
and the Answer. We add the following primarily for emphasis.
Appeal 2021-000441
Application 15/116,895
4
Obviousness-type Double Patenting Rejection
Appellant does not challenge the obviousness-type double patenting
rejection of claims 5, 13, 14, 18, 20, and 23 over claims 13, 14, and 31 of
Application No. 15/327,108. We, therefore, summarily sustain this
rejection.
Obviousness over Handjieva-Darienska in view of Ideal Bite, Dru
Era, and USDA
The Examiner rejects claims 5, 13, 14, 18, 20, and 23 as obvious over
Handjieva-Darlenska in view of Ideal Bite, Dru Era, and USDA. Final Act.
3–12. Appellant argues claims 5, 14, 18, and 23 as a group. Appeal Br. 5–9.
We select claim 5 as representative. 37 C.F.R. § 41.37(c)(1)(iv). Claims 14,
18, and 23 stand or fall with claim 5. Appellant separately argues for
patentability of claims 13 and 20, which we address separately below.
Claim 5
The Examiner finds that Handjieva-Darlenska discloses a method for
promoting weight loss, Ideal Bite discloses that cinnamon can aid in weight
loss and can be mixed into oatmeal for such purposes, Dru Era discloses that
cinnamaldehyde in cinnamon serves as a flavoring agent in food, employed
at a concentration of about 9–4900 ppm, and USDA discloses that oats
contain about 3.97 mg zinc per 100 g serving. Final Act. 10; Ans. 4–6. The
Examiner finds that a 100 g serving of cinnamon-flavored oatmeal will
contain 0.9–490 mg cinnamaldehye and about 3.97 mg zinc, equivalent to a
cinnamaldehyde:zinc weight ratio of about 1:4.411 to 1:0.008. Final Act.
12. The Examiner finds that oats contain 49.14 mg chloride per 39 g oats.
Ans. 5. The Examiner determines that one of ordinary skill in the art would
have been motivated to combine the teachings to promote the degree of
weight loss achieved, and have a reasonable expectation of success in
Appeal 2021-000441
Application 15/116,895
5
producing the claimed invention, establishing a prima facie case of
obviousness. Final Act. 11–12.
Appellant argues that the skilled artisan would not have combined the
cited prior art. Appeal Br. 5–6; Reply Br. 2. Appellant also disputes that the
claimed zinc salts are inherent in the combination of references. Appeal Br.
6. Specifically, Appellant contends that “the Examiner attempts to establish
the inherency of the claimed zinc salts by asserting that dependent Claim 23
. . . recites ‘breakfast cereal’ which encompasses oatmeal, and thus oatmeal
as disclosed by Ideal Bite would allegedly have the claimed zinc salts
inherently.”3 Id. at 6. Appellant points out that claim 23 does not require a
breakfast cereal, and the Specification discloses that the claimed
composition can be made by adding zinc to other food components. Id. at
6–7. Appellant contends that these facts rebut the Examiner’s interpretation.
Id. at 7.
Appellant argues “that the fact that a certain result or characteristic
may occur or be present in the prior art is not sufficient to establish the
inherency of that result or characteristic.” Id. (citing Ex parte Levy, 17
USPQ2d 1461, 1464 (BPAI 1990)). Rather, “the examiner must provide a
basis in fact and/or technical reasoning to reasonably support the
determination that the allegedly inherent characteristic necessarily flows
from the teachings of the applied prior art.” Id.
Appellant argues that, should the Examiner establish a prima facie
case of obviousness, unexpected results rebut any alleged obviousness. Id.

3 Claim 23 depends from claim 5 and further recites “wherein the
composition is selected from the group consisting of a cereal bar, a breakfast
cereal, muesli, and a candy.” Appeal Br. 12.
Appeal 2021-000441
Application 15/116,895
6
at 7–8. Appellant identifies Example 3 in the Specification as setting forth
experimental data demonstrating an unexpected synergistic effect when
cinnamaldehyde and zinc are combined. Id. at 8.
Appellant’s arguments are unpersuasive.
First, “rejections 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. 2006). Appellant
argues that the skilled artisan would not have combined the cited references
(Appeal Br. 5–6), but fails to address the Examiner’s rationale for combining
the references—i.e., that cinnamon added to oatmeal would promote the
degree of weight loss achieved in a low-calorie diet (Final Act. 11–12).
Argument of counsel cannot take the place of evidence lacking in the record.
Estee Lauder Inc. v. L’Oreal, S.A., 129 F.3d 588, 595 (Fed. Cir. 1997).
Appellant fails to rebut the Examiner’s reasoning for combining the
references.
Moreover, “[e]vidence of a motivation to combine prior art references
‘may flow from the prior art references themselves, the knowledge of one of
ordinary skill in the art, or, in some cases, from the nature of the problem to
be solved.’” Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir.
2006) (quoting Brown & Williamson Tobacco Corp. v. Philip Morris Inc.,
229 F.3d 1120, 1125 (Fed. Cir. 2000). Here, the Examiner’s reasoning is
supported at least by the knowledge of one of ordinary skill in the art as
noted in Ideal Bite, i.e., that cinnamon can aid in weight loss and can be
added to foods or beverages for that purpose. See Ideal Bite 1, 3.
Second, we do not agree with Appellant that the Examiner relies on
claim 23 to establish inherency of zinc salts in the composition of claim 5.
Appeal 2021-000441
Application 15/116,895
7
See, e.g., Appeal Br. 6. The Examiner finds that it is common knowledge
that oatmeal contains both zinc and chloride, and thus comprises zinc
chloride. See Ans. 4–5. The obviousness inquiry “not only permits, but
requires, consideration of common knowledge and common sense.” DyStar
Textilfarben GmbH & Co. v. C.H. Patrick Co., 464 F.3d 1356, 1367 (Fed.
Cir. 2006); see KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007)
(eschewing “[r]igid preventative rules that deny factfinders recourse to
common sense”).
The Examiner finds and Appellant does not reasonably dispute that
oatmeal as a breakfast cereal contains zinc and chloride. Indeed, Appellant
only argues that the claims “do not require a breakfast cereal.” Appeal Br.
6. Inoatmeal prepared to be eaten by combining with a liquid, such as water
or milk, zinc and chloride will exist, at least in part, as ions, thus zinc
chloride is effectively present in the oatmeal. See Ans. 5. Claim 5 requires
zinc in the composition, but not that zinc is added to the composition in the
specific form of zinc chloride, zinc sulfate, zinc lactate, zinc citrate, or
mixtures thereof. See Appeal Br. 12 (Claims App.). Where “the claimed
and prior art products are identical or substantially identical, or are produced
by identical or substantially identical processes, the PTO can require an
applicant to prove that the prior art products do not necessarily
or inherently possess the characteristics of his claimed product.” In re Best,
562 F.2d 1252, 1255 (CCPA 1977); see also In re Spada, 911 F.2d 705,
708–09 (Fed. Cir. 1990) (“[W]hen 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.”). Appellant provides nothing
more than attorney argument that zinc chloride is not effectively present in
oatmeal. See Reply Br. 3.
Appeal 2021-000441
Application 15/116,895
8
Finally, we turn to Appellant’s argument that unexpected results rebut
a conclusion of obviousness. See Appeal Br. 7–8.
Appellant relies on Example 3 of the ’895 Application as
demonstrating a synergistic effect when cinnamaldehyde and zinc are
combined. Id. at 8. Specifically, Appellant argues that Example 3 shows
that the composition comprising “a cinnamaldehyde:zinc ratio of 1:0.5 to
1:0.005 by weight” and “at least a portion of the zinc is selected from the
group consisting of zinc chloride, zinc sulfate, zinc lactate, zinc citrate and
mixtures thereof” demonstrates an unexpected synergistic effect of
cinnamaldehyde and zinc not disclosed or suggested by the prior art. Id.
Example 3 concerns measurement of the in vitro activity of hTRPA1
expressed in CHO cells in response to exposure to 10 µM (1.3 ppm)
cinnamaldehyde, 0.3 μM (0.05 ppm) zinc, or a combination of 10 µM
cinnamaldehyde and 0.3 μM zinc. Spec. ¶ 71. The data in FIG. 10 result
from measuring the intracellular calcium concentration in CHO cells with a
fluorescent dye. Id. ¶ 43.
The burden of showing unexpected results falls on Appellant. In re
Klosak, 455 F.2d 1077, 1080 (CCPA 1972) (“the burden of showing
unexpected results rests on he who asserts them”). To be probative evidence
of non-obviousness, Appellant must at least establish: (1) that there actually
is a difference between the results obtained through the claimed invention
and those of the prior art, In re Klosak, 455 F.2d 1077, 59 CCPA 862
(1972); and (2) that the difference actually obtained would not have been
expected by one skilled in the art at the time of invention, Id.; In re
D’Ancicco, 439 F.2d 1244, 58 CCPA 1057 (1971). In re Freeman, 474 F.2d
1318, 1324 (CCPA 1973). In addition, unexpected results must also be
“commensurate in scope with the degree of protection sought by the claims
Appeal 2021-000441
Application 15/116,895
9
on appeal.” In re Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005); see also In
re Graselli, 713 F.2d 731, 743 (Fed. Cir. 1983) (“It is well settled ‘that
objective evidence of non-obviousness must be commensurate in scope with
the claims which the evidence is offered to support.’” (quoting In re Tiffin,
448 F.2d 791 (CCPA 1971))).
The composition of claim 5 comprises cinnamaldehyde in a flavoring
range of 31.87 ppm to 6191 ppm. Appeal Br. 12 (Claims App.). Example 3,
however, tests cinnamaldehyde at only 1.3 ppm, which is well outside the
claimed range. Compare id., with Spec. ¶ 71; see also Ans. 7. Example 3 is
therefore not commensurate in scope with claim 5, and cannot serve as
evidence of unexpected results to rebut obviousness of claim 5.
We sustain the rejection of claim 5 as obvious over the combination of
Handjieva-Darienska, Ideal Bite, Dru Era, and USDA.
Claims 14, 18, and 23
Because claims 14, 18, and 23 depend from claim 5 and are not
argued separately, we sustain the rejection of these claims for the reasons
stated supra.
Claim 13
Claim 13 depends from claim 5, and further recites “wherein the food
product comprises the cinnamaldehyde at a flavoring concentration from
31.87 ppm to 100 ppm.” Appeal Br. 12 (Claims App.).
Appellant argues “even if Dru Era allegedly discloses a concentration
of cinnamaldehyde in food products at about 9–4900 ppm . . . , the proposed
combination of the cited references still would not have arrived at the recited
composition with the recited cinnamaldehyde concentration in Claim 13.”
Id. at 9.
Appeal 2021-000441
Application 15/116,895
10
The claimed range (31.87 ppm to 100 ppm) falls within the range
disclosed by Dru Era, thus there is a presumption of obviousness of the
claim. “A prima facie case of obviousness typically exists when the ranges
of the claimed composition overlap the ranges disclosed in the prior art.” In
re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003); see also In re Malagari,
499 F.2d 1297, 1303 (CCPA 1974) (concluding that a claimed invention was
rendered prima facie obvious by a prior art reference whose disclosed range
(0.020-0.035% carbon) overlapped the claimed range (0.030-0.070%
carbon)). The presumption may be rebutted if Appellant shows: (1) the prior
art taught away from the claimed invention, In re Geisler, 116 F.3d 1465,
1471 (Fed. Cir. 1997); or (2) there are new and unexpected results relative to
the prior art, In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990). Here,
Appellant does neither.
We sustain the rejection of claim 13 as obvious over the combination
of Handjieva-Darienska, Ideal Bite, Dru Era, and USDA.
Claim 20
Claim 20 depends from claim 5, and further recites “wherein the
cinnamaldehyde:zinc ratio of the food product is 1:0.03 by weight.” Appeal
Br. 12 (Claims App.). As noted supra, the Examiner finds that the combined
references teach a cinnamaldehyde:zinc weight ratio of about 1:4.411 to
1:0.008. See Final Act. 12. Therefore, the cinnamaldehyde:zinc ratios
claimed falls within the range disclosed in the prior art. Neither teaching
away nor unexpected results are shown by Appellant, therefore we sustain
the rejection of claim 20 for these reasons in addition to the reasons
discussed in relation to claim 5.
Appeal 2021-000441
Application 15/116,895
11
DECISION SUMMARY
In summary:
Claims
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
5, 13, 14,
18, 20,
23

Obviousness-type
Double Patenting,
App. No. 15/327,108
claims 13, 14, 31
5, 13, 14,
18, 20, 23
5, 13, 14,
18, 20,
23
103
Handjieva-
Darienska, Ideal
Bite, Dru Era,
USDA
5, 13, 14,
18, 20, 23
Overall
Outcome
5, 13, 14,
18, 20, 23
TIME PERIOD FOR RESPONSE
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