PEPSICO, INC.

Patent Trials and Appeals Board

Feb 24, 2022

2021004627 (P.T.A.B. Feb. 24, 2022)

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. 15/761,389 03/19/2018 Damian BROWNE 3711.8930002 1253 134769 7590 02/24/2022 Sterne, Kessler, Goldstein & Fox P.L.L.C. 1100 New York Avenue, N.W. Washington, DC 20005 EXAMINER HEGGESTAD, HELEN F ART UNIT PAPER NUMBER 1793 NOTIFICATION DATE DELIVERY MODE 02/24/2022 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): ajgardel@sternekessler.com e-office@sternekessler.com tdurkin@sternekessler.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte DAMIAN BROWNE, YUAN FANG, and NAIJIE ZHANG ____________ Appeal 2021-004627 Application 15/761,389 Technology Center 1700 ____________ Before MICHAEL P. COLAIANNI, DEBRA L. DENNETT, and LILAN REN, Administrative Patent Judges. COLAIANNI, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING This is in response to Appellant’s1 Request filed January 31, 2022, for rehearing of our Decision dated December 1, 2021. Appellant argues that the Board misapprehended the nature of Appellant’s invention in its statement on page 1 of the Decision that the invention is directed to “a sweetening composition comprising a stevioside composition and rebaudioside D.” (Req. 4). Appellant argues the claims are directed to a stevioside/rebaudioside D complex, which according to 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as PepsiCo, Inc. Appeal Br. 3. Appeal 2021-004627 Application 15/761,389 2 Appellant is a new chemical entity that results from non-covalent bonding interaction between rebaudioside D and stevioside after the reactants are reacted under the conditions described in Appellant’s application (Req. 4). Appellant argues that NMR spectral data in its Specification describes a new complex is formed (Req. 5). Appellant argues they are not required to define the word complex in the Specification because it is well understood in the art (Req. 5). Appellant argues the Board erred in its construction of the claims a “composition comprising.” (Req. 6). Appellant contends that the claim is directed to the complex itself, not a composition comprising rebaudioside D and stevioside or to a claim reciting the complex and other materials (Req. 6). The Board did not construe claim 70 or any other claim as comprising a mixture of rebaudioside D and stevioside. Rather, the Board construed claim 70 and the other claims as directed to a complex of rebaudioside D and stevioside (Decision 5-6). Our Decision demonstrates a search of the record, applied prior art and Appellant’s Specification to determine whether similar processes are used by Appellant and the prior art in order to conclude that the recited rebaudioside D and stevioside complex would have been expected to form using the prior art process (i.e., Prakash2) (Decision 6). Our opening statement on page 1 of the Decision was not meant as a formal claim construction as argued by Appellant. Rather the statement was made to put the complex recited in context with the disclosure as a sweetening composition made from stevioside and rebaudioside D. 2 Prakash et al., US 2015/0017284 A1, iss. Jan. 15, 2015. Appeal 2021-004627 Application 15/761,389 3 Appellant contends that the claim does not include the complex with other materials (Req. 6). Appellant’s Specification describes that “a” refers “to one or to more than one (i.e., to at least one) of the grammatical object of the article.” (Spec. ¶ 115). Accordingly, “A … complex” in claim 70 does not exclude more than one complex. The Federal Circuit has stated that “a” generally means “one or more” in open-ended claims. Altiris, Inc. v. Symantec Corp., 318 F.3d 1363, 1373 (Fed. Cir. 2003). Our determination that claim 70 is open-ended comports not only with legal precedent, but also the Specification’s disclosure where “a” is defined as including one or more. Paragraphs 232 through 233 of the Specification describe that rebaudiosides A, C, and M may be added to the rebaudioside D/stevioside solution and the addition of these other rebaudiosides does not affect rebaudioside D’s solubility. Paragraphs 235 through 236 disclose that stevioside is only able to complex with rebaudioside D and not rebaudiosides A, B, M, and C. In other words, the complex stays intact and is not affected by these additional materials. Claim 70 as read in light of the Specification does not exclude other materials in addition to the complex. Appellant argues the Decision to affirm the Examiner’s § 103 rejection based on the process taught by the prior art defies the plain language of 35 U.S.C. §103 (Req. 7). Appellant argues the reliance on the prior art method as the basis for determining whether the prior art teaches the complex contravenes the language of § 103 that states “[p]atentability shall not be negated by the manner in which the invention was made.” (Req. 7). Contrary to Appellant’s argument, the portion of § 103 that states “[p]atentability shall not be negated by the manner in which the invention Appeal 2021-004627 Application 15/761,389 4 was made” was added by Congress to abolish the Supreme Court’s “flash of creative genius” test. Graham v. John Deere Co., 383 US 1, 15 (1966). The cited portion of § 103 was not implemented to address the factual situation presented in this appeal. Appellant argues the Board engaged in hindsight in concluding that the prior art taught or suggested the complex of claim 70 (Req. 8). Appellant argues that none of the prior art references discuss complex formation or even mention the word complex (Req. 8). The Board did not engage in hindsight. Rather, the Examiner’s rejection and the Decision are based on the similarity of Prakash’s process to the process disclosed by Appellant that is said to achieve the claimed complex. The Board cited In re Best, 562 F.2d 1252, 1255 (CCPA 1977) and determined that the Examiner explained how Prakash’s process falls within the parameter ranges disclosed by Appellant as necessary to form the complex (Decision 5-7; Non-Final Act. 4-6). Based on these findings, the Examiner determined and we agreed that the preponderance of the evidence supported the conclusion that Prakash as modified by Markosyan ’3663 and CN ’3254 would have been expected to form the stevioside/rebaudioside D complex recited in claim 70 (Decision 8). Appellant contends the analysis based on Best is improperly premised on the inherency of the resulting complex (Req. 12). Appellant contends that the Board’s reasoning based on Best is improper and inconsistent with § 103 (Req. 12). Appellant argues that the rejection over Prakash should have been made under § 102 (Req. 12). 3 Markosyan, WO 2013/036366 A1, pub. Mar. 14, 2013 (“Markosyan ’366”) 4 CN 102894325, pub. Jan. 30, 2013 (“CN ’325”). Appeal 2021-004627 Application 15/761,389 5 Appellant’s arguments are contrary to the court’s holding in Best: “[w]here . . . 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.” Best, 562 F.2d at 1255. The court went on to state: “whether the rejection is based on ‘inherency’ under 35 U.S.C. § 102 . . . [or] obviousness under 35 U.S.C. § 103, jointly or alternatively, the burden of proof is the same and its fairness is evidenced by the PTO’s inability to manufacture products or obtain and compare prior art products.” Best, 562 F.2d at 1255 (emphasis added). In other words, inherency may be part of a § 103 rejection. See also In re Napier, 55 F.3d 610, 613 (Fed. Cir. 1995) (“The inherent teaching of a prior art reference, a question of fact, arises both in the context of anticipation and obviousness.”). Appellant’s arguments regarding alleged differences between Prakash’s process and Appellant’s process were not raised to the same degree as in the Request (Req. 12-19; Appeal Br. 20-23). Unlike in the Appeal Brief, Appellant for the first time argues differences between Appellant’s disclosed process and Prakash’s process (i.e., stoichiometry, temperature, pressure, reaction time) (Req. 12-19). Even though the Examiner’s rejection in the Non-Final action was based upon the similarity in Appellant’s and Prakash’s process, these arguments were not raised with the specificity now presented. Appellant admits not addressing the Examiner’s citation to Best, which is based on the similarity in Appellant’s and Prakash’s process (Req. 11; Non-Final Act. 4-5). Appellant had the opportunity to and chose not to raise these arguments in response to the Appeal 2021-004627 Application 15/761,389 6 Examiner’s rejection. Therefore, we find Appellant untimely and improperly raises these highly specific arguments for the first time in the Request for Rehearing. We will not consider these untimely arguments. 37 C.F.R. § 41.52. We will address Appellant’s argument that Prakash’s process differs from Appellant’s process in that Prakash’s process uses a mixture of rebaudiosides A, M, D, and C, and stevioside (Req. 15-16). Appellant argues that paragraph 232 of the Specification indicates that the rebaudiosides A, C, B, and M were added individually to the stevioside/rebaudioside D solutions at 70°C (Req. 16). We have reviewed paragraph 232 again and we agree that it discloses that rebaudiosides A, C, B, and M are added after stevioside/rebaudioside D complex formation. However, paragraphs 217 through 222 of the Specification teaches an embodiment where a mixture of rebaudioside D and a “rebaudioside A composition” is heated. The “rebaudioside A composition” includes 30 wt.% stevioside (Spec. ¶ 217). Accordingly, a mixture of rebaudioside D, rebaudioside A, and stevioside is heated to temperatures of 21°C, 45°C, and 65°C (Spec. ¶ 221). The Specification discloses that rebaudioside D/stevioside complex formation forms at temperatures from about 18°C to 75°C and may include temperatures above 75°C (Spec. ¶ 124). A clear solution results indicating the complete dissolution of rebaudiosides A and D and the stevioside, and the complex formation of rebaudioside D and stevioside (Spec. ¶¶ 228, 236). Appellant shows that rebaudiosides A, B, M, and C do not form a complex with stevioside (Spec. ¶¶ 235-236). Rather, only rebaudioside D forms a complex with stevioside (Spec. ¶ 236). In other words, Appellant’s Specification supports that the mixture of rebaudioside Appeal 2021-004627 Application 15/761,389 7 A, stevioside and rebaudioside D would have resulted in forming a rebaudioside D/stevioside complex mixed with rebaudioside A (Spec. ¶ 222). Therefore, we do not find Prakash’s use of a mixture of rebaudiosides as a distinction from Appellant’s process. Regarding the complexation temperature, Appellant argues the Specification discloses that a suitable complexing temperature is “‘about’ 75°C” (Req. 13). Appellant argues the Specification defines “about” as including ±10% (Req. 13). Appellant contends the complexing temperature may be at most 82.5°C (Req. 13). Appellant contends the Board’s finding that higher complexing temperatures may be used is contrary to the substantial disclosure in Appellant’s Specification (Req. 14). Appellant does not address the fact that the Specification in paragraph 124 discloses the temperature for complexing may be “at least about 75°C.” Even giving the term about the meaning of ±10%, that would mean the phrase “at least about 75°C” would include at least 67.5°C to at least 82.5°C. Appellant never addresses the meaning of the phrase “at least” in the context of the complexing temperature range recited in the Specification (Req. 14). Appellant argues lack of a reasonable expectation of success that Prakash’s process would form a stevioside/rebaudioside D complex (Req. 10). Appellant argues the Examiner’s contention that Prakash’s heating would have resulted in complexation is not supported by the references of record or fundamental thermodynamic principles, like Le Chatelier’s principle (Req. 10). Although Appellant argued lack of reasonable expectation of success in the principal Brief, Appellant’s arguments regarding what Le Chatelier’s principle would have led a person skilled in the art to expect from the reaction chemistry are new and untimely raised. Appeal 2021-004627 Application 15/761,389 8 Cf. Appeal Br. 23; Req. 10-11. New arguments in rehearing requests are only permitted in certain exceptions delineated in 37 C.F.R. § 41.52 and none of those exceptions apply to the present posture of this appeal. We decline to consider these arguments. Regarding the evidence of allegedly unexpected results, Appellant argues the Board erred in not considering the evidence (Req. 20). Appellant argues the relevance of the evidence was explained by Appellant in the Brief (Req. 20). Contrary to Appellant’s argument, we have considered the evidence and determined that Appellant has not explained the relevancy of the evidence (Decision 8-9). Appellant’s mere citation of Examples 8 and 11 and an allegation of “80-fold” improved solubility does not explain how the data sets in Examples 8 and 11 that include multiple examples support such a conclusion (Appeal Br. 24). Appellant attempts to explain now the relevancy of Examples 8 and 11 referred to in the Appeal Brief but these arguments are untimely. (Req. 20-23); 37 C.F.R. § 41.52. Appellant further argues that the solubility property of the stevioside/rebaudioside D complex is a property of the complex and does not need to be recited in the claim (Req. 22). Although a property that is allegedly unexpected does not need to be recited in the claim, we note that claim 70 is broad in terms of ratio of materials present in the complex. In fact, there are no ratios of rebaudioside D to stevioside recited in claim 70. The Specification describes that various rebaudioside D to stevioside ratios may be used ranging from 1:1 to 12:1 at the broadest range (Spec. ¶¶ 123, 156-158). The Specification exemplifies ratios of rebaudioside D to stevioside of 1:2 to 1:12 (Spec. ¶¶ 42-44). The limited showing in the Specification examples do not support that the Appeal 2021-004627 Application 15/761,389 9 enhanced solubility argued by Appellant would be achieved over the entire scope of the claim. For this reason, recitation of the property (i.e., solubility) in the claim would have tailored the compositions to those that achieve the particular property. In this case, there is no recitation of solubility in the claim and so the claim is not limited in the manner Appellant argues. Appellant argues that the complex is per se unexpected (Req. 23). Appellant does not direct us to where the Specification discloses that the complex is unexpected. The Specification discloses synergy between rebaudioside D and stevioside in providing better solubility (Spec. ¶ 112). Such disclosure of synergy in solubility is countered by Prakash’s disclosure of having improved water solubility for a mixture of rebaudiosides, which includes rebaudioside D, and stevioside (Prakash ¶ 652). Appellant has not shown the results are unexpected as compared to Prakash’s improved water solubility for the mixture of rebaudiosides and stevioside as stated on page 9 of the Decision. Appellant’s evidence is not commensurate in scope with the breadth of claim 70. Appellant may argue that CN ’325 is closer prior art than Prakash, and Appellant had compared the evidence to CN ’325’s disclosure (Req. 24). However, Prakash heats the mixture of rebaudiosides and stevioside, which, in our view, makes it closer prior art in the context of the disclosed process for forming the complex (Spec. ¶ 124; Appeal Br. 24). Appellant’s untimely analysis and argument are insufficient to establish unexpected results. For the above reasons, we adhere to Decision to affirm the Examiner. We deny Appellant’s rehearing request. Appeal 2021-004627 Application 15/761,389 10 No period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). DENIED