Rufina Shatkina et al.

Patent Trials and Appeals Board

Dec 6, 2021

2020004097 (P.T.A.B. Dec. 6, 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.
13/482,335 05/29/2012 Rufina Shatkina Shatkin-RPA1 6779
7590 12/06/2021
Alexander Shatkin
436 South 940 West
Orem, UT 84058
EXAMINER
MOORE, WALTER A
ART UNIT PAPER NUMBER
3619
MAIL DATE DELIVERY MODE
12/06/2021 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte RUFINA SHATKINA and SHLIMA SHATKINA
__________

Appeal 2020-004097
Application 13/482,335
Technology Center 3600
____________

Before MICHAEL C. ASTORINO, BRADLEY B. BAYAT, and
AMEE A. SHAH, Administrative Patent Judges.

BAYAT, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1, 3–6, and 21.2
We AFFIRM-IN-PART and enter a NEW GROUND OF
REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b).3

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as “Alexander Shatkin.”
Appeal Br. 3.
2 Claim 2 is canceled and claims 7–20 are withdrawn from consideration.
Id., Claims App.
3 We have jurisdiction under 35 U.S.C. § 6(b). An oral hearing was held on
March 12, 2021.
Appeal 2020-004097
Application 13/482,335

2
STATEMENT OF THE CASE
Claimed Subject Matter
Appellant’s claimed invention relates to a composition “for
controlling weight by suppressing appetite, inducing a feeling of satiety, and
suppressing cravings for sweets and other food products. In particular, the
invention relates to the use of a composition comprising chocolate combined
with selected medicinal plant extracts.” Spec. 1:16–19. Claims 1 and 21,
reproduced below with added bracketed notations, are the only independent
claims on appeal.
1. A chocolate based composition comprising
[(a)] a chocolate based composition between 6 and 24 grams;
[(b)] a chocolate ingredient is about 20% to 99.9% by weight
or volume;
wherein the chocolate ingredient is at least one ingredient
selected from the group consisting of dark, milk, white,
sugar free and organic, and combinations thereof;
[(c)] at least one plant extract or powder ingredient;
wherein the plant extract or powder is derived
from at least one selected from the group consisting of
Achyranthes, Irvingia gabonensis, and Adansonia digitata
L.; and
[(d)] the chocolate based composition is an end user consumer
ready product.

21. A composition for suppressing appetite consisting of
[(a)] a chocolate based composition between 2 and 30 grams;
[(b)] a chocolate ingredient is about 20% to 99.9% by weight
or volume;
wherein the chocolate ingredient is at least one
ingredient selected from the group consisting of dark,
milk, white, sugar free and organic, and combinations
thereof;
[(c)] at least one plant extract or powder ingredient;
Appeal 2020-004097
Application 13/482,335

3
wherein the plant extract or powder is derived from at
least one selected from the group consisting of
Achyranthes, Irvingia gabonensis, and Adansonia digitata
L.; and
[(d)] the plant extract or powder comprises about .1 % to 20%
by weight or volume of the composition.

(Appeal Br., Claims App.)

Rejections
I. Claims 1, 6, and 21 are rejected under 35 U.S.C. § 102(b) as being
anticipated by McKee et al. (US 2006/0134294 A1, pub. June 22,
2006) (“McKee”).
II. Claims 1, 6, and 21 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over McKee.
III. Claim 3 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over McKee and Kumar (S. Vijaya Kumar et al., Anti-
inflammatory activity of roots of Achyranthes aspera, 47 Pharm.
Biology 10, 973–75 (2009)).
IV. Claims 1, 4, 6, and 21 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over McKee and Oben (US 2010/0098793 A1,
pub. Apr. 22, 2010).
V. Claims 1, 5, 6, and 21 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over McKee and Besco (Elena Besco et al., The
use of photochemiluminescence for the measurement of the
integral antioxidant capacity of baobab products, 102 Food
Chemistry 1352–56 (2007)).
Appeal 2020-004097
Application 13/482,335

4
ANALYSIS
Rejections I and II
Independent claim 1 and dependent claim 6
In contesting the rejections of claim 1 as being anticipated and in the
alternative obvious over McKee, Appellant contends that “McKee relies on
Tagatose and a secondary sweetener which is preferably Lo Han Guo.”
Appeal Br. 11; see also Reply Br. 3–6. Appellant asserts that “the Examiner
is clearly wrong and McKee does require a particular set of sweeteners
which includes the use of tagatose, preferably mixed with either Lo Han Guo
or other sweeteners from paragraphs 31-40.” Appeal Br. 12. Appellant
argues “the Examiner believes that McKee does not rely on sweeteners,”
however, “[t]he present invention relies on a specific set of nutraceuticals
and does not require any specific set of sweeteners, or any sweeteners at all.”
Id. at 13.
The Examiner responds that Appellant’s “arguments are not
commensurate in scope with the claims.” Ans. 15; see also Ans. 30.
We are unpersuaded by Appellant’s arguments.
McKee’s chocolate based composition includes “a sweetening agent
containing a combination of tagatose and Lo Han Guo.” McKee ¶ 10.
McKee describes this “novel sweetening blend usable with the base
chocolate composition of the invention compris[ing] from 75-90% wt Lo
Han Guo extract and from 10-25% tagatose.” Id. ¶ 36. Claim 1 recites “[a]
chocolate based composition comprising” elements (a)–(d). See Claim 1
supra. As the Examiner correctly observes “[t]he transitional term
‘comprising’ . . . is inclusive or open-ended and does not exclude additional,
Appeal 2020-004097
Application 13/482,335

5
unrecited elements or method steps.” Georgia-Pacific Corp. v. U.S. Gypsum
Co., 195 F.3d 1322, 1327 (Fed. Cir. 1999); see also Ans. 30. “A drafter uses
the term ‘comprising’ to mean ‘I claim at least what follows and potentially
more.’” Vehicular Techs. Corp. v. Titan Wheel Int'l, Inc., 212 F.3d 1377,
1383 (Fed. Cir. 2000). Because claim 1 recites an open ended transitional
term, under the broadest reasonable interpretation, any additional unrecited
elements (e.g., sweeteners) are not excluded from the scope of the claim.
See Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501 (Fed. Cir. 1997)
(“‘Comprising’ is a term of art used in claim language which means that the
named elements are essential, but other elements may be added and still
form a construct within the scope of the claim.”) (emphasis added).
During oral hearing, Appellant acknowledged that “in Claim 1, you
could add things because it’s comprising. So you could pretty much add
anything here. Like sugar, you could add sugar here.” Tr. 6. Therefore, the
inclusion of sweeteners in McKee’s chocolate based composition does not
negate anticipation of claim 1 nor render claim 1 non-obvious over McKee.
Accordingly, we sustain the rejections of claim 1 as being anticipated and in
the alternative obvious over McKee. We also sustain the rejections of
dependent claim 6 (Final Act. 3, 6), which are not argued separately, for the
same reasons.
Rejection III
Dependent claim 3
We are not persuaded the Examiner erred in rejecting claim 3 as
unpatentable over McKee and Kumar because it is not obvious to add
nutraceuticals simply because they have a health benefit. Appeal Br. 27.
Appeal 2020-004097
Application 13/482,335

6
We agree with the Examiner that Appellant’s “argument fails to address the
findings of fact and reasoning to combine the references.” Ans. 41.
According to the Examiner:
McKee discloses “Various other dried or powdered
nutraceuticals could be substituted for the cherry concentrate in
the” exemplary embodiment (para 0057). McKee discloses
extract that reduces inflammation (p. 5, para 0054). McKee
discloses the nutraceutical Achyranthes (para 0047). However,
McKee does not disclose Achyranthes aspera. Kumar discloses
anti-inflammatory activity of extracts of Achyranthes aspera
(Abstract). As such, it is prima facie obvious to substitute
McKee's extract that reduces inflammation with Achyranthes
aspera because it is an extract known to have the same function
(see rejections for more detailed discussion).

Id. Appellant’s general allegations do not specifically point out the errors in
the Examiner’s rejection of claim 3. See Ans. 41–42. Accordingly, we
sustain the rejection of claim 3 as unpatentable over McKee and Kumar.
Rejection IV
Independent claim 1 and dependent claims 4 and 6
In contesting the rejection of claims 1, 4, 6 as unpatentable over
McKee and Oben, Appellant contends that “[t]he use of artificial sweeteners
and the chocolate to mask the flavor in McKee[‘s] product is a principal
difference between the two inventions.” Appeal Br. 28. In particular,
Appellant argues:
The purpose of each invention is very different; the
McKee invention is developed specifically to mask the
unpleasant flavors of nutraceuticals that often have very bitter
tastes and as such present a barrier to consumption. The present
invention is intended to be a desirable food product, that could
be consumed as a snack and perceived to be the same as eating
Appeal 2020-004097
Application 13/482,335

7
standard chocolate but has the added advantage of suppressing
appetite and helping weight management. The psychology
around the two inventions is very different. McKee’s invention
is purely about masking the flavor of unpleasant but essential
nutraceuticals whilst the present invention builds on research
showing the positive psychology around eating an indulgent
snack that has the added benefit of helping to control appetite.
Id. at 29.
The Examiner is unpersuaded by Appellant’s arguments. First, the
Examiner responds that Appellant’s “argument is not commensurate in
scope with the claimed invention . . . [because t]he claims require no
particular sensory property.” Ans. 43. The Examiner also states that
Appellant’s arguments fails to address the combined teachings of the prior
art as proffered in the rejection of record. Id.
We agree with the Examiner because, as discussed above, the scope of
claim 1 does not exclude the use of sweeteners as part of the claimed
composition. Therefore, we sustain the rejection of claims 1, 4, and 6 as
unpatentable over McKee and Oben.
Rejection V
Independent claim 1 and dependent claims 5 and 6
Alleging error in the rejection of claims 1, 5, 6 as unpatentable over
McKee and Besco, Appellant argues that although “Besco believes
Adansonia digitata extract will be a good addition to foods and food
supplements simply because of the high antioxidant capacity in Adansonia
digitata. However, nowhere in Besco does it mention that it is obvious to
place it in any food, especially in a small piece of chocolate.” Appeal
Br. 29. Appellant also argues that, unlike the claimed invention, McKee
“relies on his particular sweeteners in his sweetening blend.” Id.
Appeal 2020-004097
Application 13/482,335

8
The Examiner is unpersuaded by Appellant’s argument that “Besco
does not disclose Adansonia Digitata extract in chocolate” because the
rejection of record is based on the combined teachings of McKee and Besco.
Ans. 44 (“One cannot show nonobviousness by attacking references
individually where the rejections are based on combinations of
references.”).4 Regarding Appellant’s sweetener argument, the Examiner
responds: “The claims do not require and do not exclude sweeteners.
Therefore, the prior art teaching of sweeteners is immaterial to the
patentability of the claimed invention.” Id. at 45.
We are not persuaded of Examiner error because Appellant’s
argument against Besco fails to address the rejection of record and the
reasoning advanced in reaching the conclusion of obviousness. See Ans. 44.
And as discussed, because the scope of claim 1 does not exclude sweeteners,
McKee’s reliance on a sweetener for its product does not render claim 1
non-obvious. Therefore, we sustain the rejection of claim 1 and dependent
claims 5 and 6, which are not argued separately.
Rejections I, II, IV, and V
Independent claim 21
We do not reach the merits of the §§ 102 and 103 rejections of claim
21 because without a discernable claim construction, an analysis of the
claims under the prior art cannot be performed. Enzo Biochem, Inc. v.
Applera Corp., 599 F.3d 1325, 1332 (Fed. Cir. 2010) (“[A] claim cannot be
both indefinite and anticipated.”). Before a proper review of those rejections

4 Citing “In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re
Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).”
Appeal 2020-004097
Application 13/482,335

9
can be made, the subject matter encompassed by the claims on appeal must
be reasonably understood without resort to speculation. As discussed below,
because claim 21 fails to satisfy the requirements under 35 U.S.C. § 112(b),
we are constrained to reverse, pro forma, the Examiner’s prior art rejections
as to claim 21. See In re Steele, 305 F.2d 859, 862 (CCPA 1962) (A prior
art rejection cannot be sustained if the hypothetical person of ordinary skill
in the art would have to make speculative assumptions concerning the
meaning of claim language).
It should be understood that our decision to reverse the rejections of
claim 21 is based solely on the indefiniteness of the claim, and does not
reflect on the merits of the underlying rejections.
New Ground of Rejection under 35 U.S.C. § 112, second paragraph
Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a new
ground of rejection as to independent claim 21.
A claim is properly rejected as indefinite under 35 U.S.C. § 112,
second paragraph, if, after applying the broadest reasonable interpretation in
light of the specification, the metes and bounds of a claim are not clear
because the claim “contains words or phrases whose meaning is unclear.” In
re Packard, 751 F.3d 1307, 1310, 1314 (Fed. Cir. 2014) (per curiam)
(approving, for pre-issuance claims, the standard from MPEP § 2173.05(e));
see also Ex parte McAward, Appeal 2015-006416, 2017 WL 3669566, at *5
(PTAB Aug. 25, 2017) (precedential) (adopting the approach for assessing
indefiniteness approved by the Federal Circuit in Packard). The claims,
when read in light of the specification, must “reasonably apprise those
skilled in the art both of the utilization and scope of the invention” using
Appeal 2020-004097
Application 13/482,335

10
language “as precise as the subject matter permits.” Packard, 751 F.3d at
1313.
Claim 21 recites “[a] composition for suppressing appetite consisting
of” elements (a)–(d), which defines the claim scope as closed to the
inclusion of elements other than those recited. See MPEP § 2111.03
(“Transitional Phrases”). Claim 21 recites “a chocolate ingredient is about
20% to 99.9% by weight or volume” and “the plant extract or powder
comprises about .1% to 20% by weight or volume of the composition.”
Claim 21 supra. At the upper end, a chocolate ingredient 99.9% by weight
combined with .1% plant extract by weight would equal 100%. However,
on the lower end, a chocolate ingredient at about 20% by weight with
maximum 20% plant extract by weight would only equal 40% by weight. In
other words, it is unclear what the other 60% by weight would entail because
no other ingredient can be included as part of the claim. During oral
hearing, Appellant acknowledged this lack of clarity. See Tr. 17
(“Definitely I see the point that you’re making. Because you really can’t
add anything in”). According to Appellant, the “Specification of the
invention shows that the ingredients can be more than 20 percent. But in the
claims, they limit it to 20 percent, so maybe that’s where it comes from,
because the specification says it can be more, but the claims, maybe they just
kind of never really adjusted it to -- maybe just a clerical [error].” Id. at 17–
18. Because the scope of claim 21 is unclear, we determine that it is not
reasonably possible to interpret this claim with sufficient clarity to satisfy 35
U.S.C. § 112, second paragraph. See Packard, 751 F.3d 1313. Accordingly,
we enter a new ground of rejection as to claim 21 as indefinite.
Appeal 2020-004097
Application 13/482,335

11
NEW GROUND OF REJECTION
This Decision contains a new grounds 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 grounds 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
proceeding 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. . . .

DECISION SUMMARY
Claims
Rejected
35
U.S.C. §
Reference(s)/
Basis
Affirmed Reversed
Pro
Forma
New
Ground
1, 6, 21 102(b) McKee 1, 6 21
1, 6, 21 103(a) McKee 1, 6 21
3 103(a) McKee, Kumar 3
1, 4, 6, 21 103(a) McKee, Oben 1, 4, 6 21
1, 5, 6, 21 103(a) McKee, Besco 1, 5, 6 21
21 112(b) Indefiniteness 21
Overall
Outcome
1, 3–6 21 21
Appeal 2020-004097
Application 13/482,335

12
No time 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).
AFFIRMED-IN-PART
37 C.F.R. § 41.50(b)