Rufina Shatkina et al.Download PDFPatent Trials and Appeals BoardDec 6, 20212020004097 (P.T.A.B. Dec. 6, 2021) Copy Citation 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 Appeal Br. 3. 2 Claim 2 is canceled and claims 7–20 are withdrawn from consideration.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) Copy with citationCopy as parenthetical citation