The Coca-Cola Company et al.

Patent Trials and Appeals Board

Aug 24, 2020

14615888 - (D) (P.T.A.B. Aug. 24, 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.
14/615,888 02/06/2015 Indra Prakash 12600.105081 CON 7910
121055 7590 08/24/2020
King & Spalding
1180 Peachtree Street
Atlanta, GA 30309
EXAMINER
WONG, LESLIE A
ART UNIT PAPER NUMBER
1793
NOTIFICATION DATE DELIVERY MODE
08/24/2020 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):
atlipdocketing@kslaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte INDRA PRAKASH, AVETIK MARKOSYAN,
VENKATA SAI PRAKASH CHATURVEDULA, MARY CAMPBELL,
RAFAEL SAN MIGUEL, SIDDHARTHA PURKAYASTHA, and
MARQUITA JOHNSON
Appeal 2019-005610
Application 14/615,888
Technology Center 1700
Before KAREN M. HASTINGS, JAMES C. HOUSEL, and
BRIAN D. RANGE, Administrative Patent Judges.
RANGE, 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 to reject claims 25, 27, 29, 30, 40, 45–48, 59–62, and
64–66. 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. Appellant identifies the real party in interest as The Coca-
Cola Company and PureCircle Limited. Appeal Br. 3.
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CLAIMED SUBJECT MATTER2
Appellant describes the invention as relating to sweetened
compositions containing one or more steviol glycoside, such as
Rebaudioside X (“Reb X”). Spec. 1:9–15. Claim 25 is illustrative, and we
reproduce it below:
25. An enhanced water beverage comprising a sweetener
composition comprising Reb X as the sole sweetener, wherein
Reb X has the following formula:

and Reb X is present in a concentration from about 200 ppm to
about 600 ppm.

Appeal Br. 24 (Claims App.). Claim 25 expresses the Reb X formula by
using of a graphic depiction of the molecule.

2 In this Decision, we refer to the Non-Final Office Action dated May 29,
2018 (“Non-Final Act.”), the Appeal Brief filed March 29, 2019 (“Appeal
Br.”), the Examiner’s Answer dated May 17, 2019 (“Ans.”), and the Reply
Brief filed July 17, 2019 (“Reply Br.”).
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REFERENCES
The Examiner relies upon the prior art below in rejecting the claims
on appeal:
Name Reference Date
Prakash et al.
(“Prakash”)
US 2007/0116823 A1 May 24, 2007
Morita et al.
(“Morita”)
WO 2010/038911 A1 April 8, 2010

REJECTIONS
The Examiner maintains the following rejections on appeal:
A. Claims 25, 27, 29, 30, 40, 45–48, 59–62, and 64–66 on the ground of
nonstatutory double patenting as being unpatentable over the claims
of U.S. Patent No. 9,169,285. Ans. 3.
B. Claims 25, 27, 29, 30, 40, 45–48, 59–62, and 64–66 under 35 U.S.C.
§ 103 as obvious over Morita in view of Prakash. Id.

OPINION
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 examiner’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
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Examiner’s rejections for the reasons expressed in the Non-Final Office
Action and the Answer. We add the following primarily for emphasis.
Rejection A, obviousness-type double patenting. Appellant does not
dispute this rejection. We summarily affirm the rejection. Ex parte Frye, 94
USPQ2d at 1075.
Rejection B, obviousness. The Examiner rejects claims 25, 27, 29, 30,
40, 45–48, 59–62, and 64–66 under 35 U.S.C. § 103 as obvious over Morita
in view of Prakash. Non-Final Act. 3. Appellant argues all claims as a group.
See Appeal Br. 17–18. Therefore, consistent with the provisions of 37 C.F.R.
§ 41.37(c)(1)(iv) (2013), we limit our discussion to claim 25, and all other
claims on appeal stand or fall together with claim 25.
The Examiner finds that Morita teaches the steviol glycoside
“Rebaudioside M (i.e., Rebaudioside X”) as a “stevia sweetener” in a
beverage. Non-Final Act. 4 (citing Morita). The Examiner finds that Morita
does not teach Reb X as the sole sweetener of a beverage. Id. at 4.
The Examiner finds that Prakash teaches formulating beverages using
individual steviol glycosides of high purity, at concentrations from 50 ppm
to about 500 ppm. Id. The Examiner finds that Prakash teaches combinations
of steviol glycosides in beverage formulations. Id. The Examiner determines
that it would have been obvious to use the amounts taught in Prakash with
Morita. Id. The Examiner determines that “Applicant is using a known
sweetener for its art-recognized function to obtain no more than expected
results. . . . Once the art has recognized a sweetener[,] the manipulation of
amounts would be expected and would be considered, at most,
optimization.” Id. at 4–5.
As Appellant states (Appeal Br. 11), the ultimate determination of
obviousness is a question of law based on underlying factual findings
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including the factors enumerated by Graham v. John Deere Co., 383 U.S. 1,
17–18 (1966): (1) the scope and content of the prior art; (2) and differences
between the claimed subject matter and the prior art; (3) the level of ordinary
skill in the art; and (4) objective evidence of non-obviousness such as, for
example, unexpected results.
With respect to factors (1) and (2), Appellant argues that the
references are different than the claimed invention because Morita discloses,
at most, 6.7 ppm of Reb X in solution. Appeal Br. 14. Appellant further
argues that Morita’s example beverages do not include Reb X. Id. at 15.
Appellant argues that Prakash does not teach Reb X and that, when utilizing,
for example, Reb A, Prakash adds a “sweet taste improving composition” to
avoid an undesirable taste of Reb A alone. Id. at 15. These arguments, by
themselves, are unpersuasive because they address the Morita and Prakash
references individually rather than addressing the references’ combined
teachings and the Examiner’s rationale for combining the references’
teachings. See In re Keller, 642 F.2d 413, 426 (CCPA 1981). We, however,
consider these arguments concerning the scope of the art and differences
between the art and the claims when making an overall obviousness
determination below.
With respect to factor (3), Appellant argues that a person of ordinary
skill in the art is a formulation chemist with an advanced degree in chemistry
and is knowledgeable in the sweetener arts. Appeal Br. 15–16. The
Examiner does not dispute this point. Appellant argues that the sweetener art
is unpredictable. Id. at 16–17. Appellant does not, however, present evidence
with respect to this point.
In view of factors (1) to (3), Appellant argues that a person of skill in
the art would not have been motivated to reach a beverage using Reb X as a
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sole sweetener at 200 to 600 ppm. Appeal Br. 17–18. Appellant again
emphasizes that Morita teaches, at most 6.7 ppm Reb X and that Morita’s
examples use formulations that do not include Reb X in its beverages. Id. at
17. Appellant also emphasizes that Prakash’s beverages with 400 ppm or
500 ppm Reb A as a sole sweetener have high sweetness linger. Id. We
consider this argument when balancing all Graham factors below.
With respect to factor (4), Appellant argues unexpected results.
Appeal Br. 18–20; Reply Br. 5–10. A party asserting unexpected results as
evidence of nonobviousness has the burden of proving that the results are
unexpected. In re Geisler, 116 F.3d 1465, 1469–70 (Fed. Cir. 1997). The
evidence of unexpected results also must also be reasonably commensurate
with the scope of the claims. In re Peterson, 315 F.3d 1325, 1330–31 (Fed.
Cir. 2003) (explaining that applicant may overcome a prima facie case of
obviousness by showing unexpected results but the showing of unexpected
results “must be commensurate in scope with the claims which the evidence
is offered to support” (internal quotes and citation omitted)). “If an applicant
demonstrates that an embodiment has an unexpected result and provides an
adequate basis to support the conclusion that other embodiments falling
within the claim will behave in the same manner, this will generally
establish that the evidence is commensurate with scope of the claims.” In re
Huai-Hung Kao, 639 F.3d 1057, 1068 (Fed. Cir. 2011).
To support the existence of unexpected results, Appellant relies upon
data from the March 29, 2018, Declaration of Dr. Indra Prakash (“Prakash
Declaration”) and data from the Specification. Id. According to Dr. Prakash,
the Prakash Declaration’s data shows “that the enhanced water beverage
sweetened with 200 ppm Reb X had significantly greater Sweetness in
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Mouth and Overall Maximum Sweetness compared to the enhanced water
beverage sweetened with 200 ppm Reb A.” Prakash Declaration ¶ 13.
According to Appellant, the Specification’s data shows at Examples 2
and 4 that the beverages with 500 ppm Reb X as a sole sweetener have less
or no off-tastes as compared to Reb A-sweetened beverages. Appeal Br. 18–
22; see also Spec. 123:11–17 (Example 2); 128:17–129:16 (Example 4).
Appellant argues that Example 9 shows that a 250 ppm Reb X beverage had
less bitterness, less astringency, and less bitter lingering as compared to Reb
A. Appeal Br. 19–20.
Appellant’s proferred evidence here adds little to the overall
obviousness analysis for at least two reasons. First, we agree with the
Examiner that the evidence is not reasonably commensurate in scope with
claim 25. Ans. 5. In particular, claim 25 is open to any kind of beverage so
long as the beverage has Reb X as a sole sweetener at 200 ppm to 600 ppm.
Appellant has not established a basis for expecting that use of Reb X would
benefit any enhanced water beverage, for example, both coffee and
lemonade flavored beverages. Second, Appellant does not present evidence
that the use of Reb X is unexpected. At best, Appellant establishes some
superiority of Reb X over Reb A under some conditions and if certain taste
qualities are preferred; superiority alone, however, is not sufficient to show
that the result is unexpected. Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348,
1371 (Fed. Cir. 2007) (“[A]ny superior property must be unexpected to be
considered as evidence of non-obviousness.”).
After balancing all facts relating to the underlying Graham factors,
Appellant’s arguments do not identify error in the Examiner’s obviousness
conclusion. Morita teaches that Reb X is useful as a sweetener. Non-Final
Act. 4. Morita describes its invention as “Steviol Glycoside of the formula I
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to X” (Morita ¶ 10), and Appellant and the Examiner agree that formula VIII
corresponds to Reb X. Non-Final Act. 4; Appeal Br. 13–14. Morita states
that its steviol glycosides “have structures in which more glucoses are added
than ST or RA and therefore provide a Stevia sweetener having an excellent
strong taste.” Morita ¶ 5. The preponderance of the evidence, thus, supports
the Examiner’s finding that the only distinction between Morita and claim
25 is use of Reb X as a sole sweetener in a beverage at 200 to 600 ppm.
Non-Final Act. 4.
Prakash does not address Reb X in particular, but it does teach use of
other steviol glycosides (steviol glycosides which are among those also
taught by Morita) for use as a sweetener in a ppm range that overlaps 200 to
600 ppm. Non-Final Act. 4–5; Prakash ¶ 886 (teaching rebaudioside A from
100 ppm to 3,000 ppm). Prakash teaches use of its sweetener in a beverage.
Prakash ¶¶ 41, 884–885. Prakash further teaches that a person of ordinary
skill in the art “can readily discern the appropriate amount of sweetener to
put in a sweetened composition.” Id. at ¶ 885. Based on the teachings of
Morita and Prakash, the preponderance of the evidence supports the
Examiner’s position that use and manipulation of a known steviol glycoside
is conventional in the art and that adjustment of a sweetener composition is
known in the art. Ans. 5.
As Appellant argues (Appeal Br. 15; Reply Br. 2–5), Prakash teaches
use of a “sweet taste improving composition” alongside the steviol glycoside
in at least some embodiments. Prakash Abstract, ¶ 80. Prakash teaches, for
example, embodiments comprising “at least one natural and/or synthetic
high-potency sweetener, at least one sweet-taste improving composition, and
at least one functional ingredient [i.e., a hydration product].” Id. ¶ 19. The
preponderance of the evidence, however, does not establish that all of
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Prakash’s “sweet taste improving compositions” are sweeteners within the
scope of claim 25. Rather, the sweet taste improving composition can be, for
example, “polyols, amino acids and their corresponding salts, polyamino
acids and their corresponding salts.” Id. Thus, Prakash teaches embodiments
where no additional sweetener must necessarily be included with the steviol
glycoside. Prakash ¶ 80; see also In re Lamberti, 545 F.2d 747, 750 (CCPA
1976) (“all disclosures of the prior art, including unpreferred embodiments,
must be considered”).
Appellant also argues that the Examiner applies an incorrect claim
construction because claim 25 requires that Reb X is “the sole sweetener.”
Reply Br. 3. But even if Appellant is correct in this regard, Prakash, as we
explain above, suggests that a steviol glycoside could be a sole sweetener
(where included “sweet taste improving compositions” are not necessarily a
sweetener). Prakash ¶ 80. This argument, therefore, does not identify
harmful error.
Appellant further argues that Morita suggests that Reb X negatively
impacts beverage taste. Appeal Br. 17; Reply Br. 4. In particular, Appellant
relies on Morita’s Example 6, Table 10 to argue “Morita indicates that the
RA-B Crystals, which contain no Reb X, had better sensory properties in
five of six categories than RA-B extract[] which contained some level of
Reb X.” Appeal Br. 17. But Morita Table 10 also indicates, for example, that
RA-C crystals—which include Reb X—have good properties. Morita ¶ 37;
see also Morita ¶ 29 (indicating that Crystals RA-C comprise, among other
things, composition VIII where VIII is Reb X). Moreover, Table 10
indicates that taste may be measured in many different ways: sweetness
quality, taste remaining in the mouth, astringency, delicate taste, refreshing
feeling, and sweetness running out. Each of these measurements involves
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some subjectivity. A person of skill in the art would recognize that different
sweeteners may present different advantages and disadvantages; the
existence of potential disadvantages, however, does not negate obviousness.
Cf. Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006) (“a
given course of action often has simultaneous advantages and disadvantages,
and this does not necessarily obviate motivation to combine”). On balance,
each of the formulations of Morita Table 10 comprise a wide variety of
components such that a person of skill in the art would not be dissuaded
from pursuing any particular component as a sweetener (including Reb X)
based on the data.
Because Appellant’s arguments do not identify harmful error, we
sustain the Examiner’s rejection.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
25, 27, 29,
30, 40, 45–
48, 59–62,
64–66
nonstatutory
double
patenting
U.S. Patent No.
9,169,285
25, 27, 29,
30, 40, 45–
48, 59–62,
64–66

25, 27, 29,
30, 40, 45–
48, 59–62,
64–66
103 Morita, Prakash 25, 27, 29,
30, 40, 45–
48, 59–62,
64–66

Overall
Outcome
25, 27, 29,
30, 40, 45–
48, 59–62,
64–66

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11
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). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED