Ex Parte Sasame et al

Patent Trial and Appeal Board

Mar 27, 2017

13203465 (P.T.A.B. Mar. 27, 2017)

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
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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/203,465 11/03/2011 Masami Sasame 091959-0111 7623
22428 7590 03/29/2017
Foley & Lardner LLP
3000 K STREET N.W.
SUITE 600
WASHINGTON, DC 20007-5109
EXAMINER
DICUS, TAMRA
ART UNIT PAPER NUMBER
1791
NOTIFICATION DATE DELIVERY MODE
03/29/2017 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
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MASAMI SASAME,
KEISUKE NUMATA, FUYUKI FUJIHARA,
and KAZUNOBU TSURU
Appeal 2015-002621
Application 13/203,465
Technology Center 1700
Before ADRIENE LEPIANE HANLON, TERRY J. OWENS, and
JAMES C. HOUSEL, Administrative Patent Judges.
HANLON, Administrative Patent Judge.
DECISION ON APPEAL
A. STATEMENT OF THE CASE
The Appellants filed an appeal under 35 U.S.C. § 134 from an
Examiner’s decision rejecting claims 1—4. A hearing was held on March 14,
2017. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
Representative claim 1 is reproduced below from the Claims
Appendix of the Appeal Brief dated July 2, 2014 (“App. Br.”). The
limitation at issue is italicized.
1. A green tea beverage packed in a container, wherein:
Appeal 2015-002621
Application 13/203,465
the green tea beverage includes at least 50% or more by
mass of a liquid extraction of green tea,
a total concentration of glucose, fructose, sucrose,
cellobiose, and maltose is 100 ppm to 300 ppm,
a ratio of (i) a total concentration of sucrose, cellobiose,
and maltose, to (ii) a total concentration of glucose and
fructose, is 10 to 28, and
a concentration of catechins is 150 ppm to 600 ppm.
App. Br. 26.
The claims on appeal stand rejected as follows:
(1) claims 1—4 under 35 U.S.C. § 103(a) as unpatentable over
Satake et al.1 in view of Wild et al.2 and Ekanayake et al.;3 and
(2) claims 1—4 under 35 U.S.C. § 103(a) as unpatentable over
Satake in view of Xiong et al.4 and Ekanayake.
B. DISCUSSION
The Examiner finds Satake discloses a method of making a packaged
non-tea beverage comprising a purified green tea extract. Ans. 3,9. The
Examiner finds the beverage comprises an amount of 0.005% to 20% by
mass of sweetener and the sweetener comprises a mixture of glucose in an
1 WO 2007/132562 Al (“Satake”). The Examiner relies on US
2009/0117252 Al, published May 7, 2009, as an English language
equivalent to WO 2007/132562 Al. See Examiner’s Answer dated
November 6, 2014 (“Ans.”), at 2, 9. The Appellants do not object. See App.
Br. 4, n. 1. Therefore, in this Decision on Appeal, we rely on US
2009/0117252 Al as evidence of the disclosure of WO 2007/132562 Al.
2 US 7,087,259 B2, issued August 8, 2006 (“Wild”).
3 US 5,879,733, issued March 9, 1999 (“Ekanayake”).
4 US 6,299,925 Bl, issued October 9, 2001 (“Xiong”).
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Appeal 2015-002621
Application 13/203,465
amount of 0.001% to 15% by mass in the beverage and sucrose in an amount
of 0.001% to 10% by mass in the beverage. Ans. 4, 11.
The Examiner finds that “[w]hile other saccharides are not taught
(monosaccharaide [sic] fructose, or discaccharides [sic] cellobiose and
maltose), nor is the ratio of 10 to 28 as claimed, these are well known
saccharides and thus would be obvious to include to affect the degree of
sweetness.” Ans. 5, 12. The Examiner also finds:
Satake’s ratio of sucrose (disaccharides) to glucose
(monosaccharaides [sic]) of 0.0001 [(0.001/10)] to 1,500
[(15/0.001)] falls within the cited range of 10 to 28[5] and thus
including other well known saccharaides [sic] not taught by
Satake are obvious to include for the same reasons. Satake
teaches the mixtures of saccharaides [sic], thus to include others
not mentioned again is obvious as they are known to affect the
degree of sweetness.
Ans. 5, 12. The Examiner explains that “discovering an optimum value of a
result effective variable involves only routine skill in the art.” Ans. 8, 14.5 6
The claims on appeal recite a ratio of (i) a total concentration of
sucrose, cellobiose, and maltose, to (ii) a total concentration of glucose and
fructose, is 10 to 28. App. Br. 26. The Appellants argue:
[T]he Examiner’s purported motivation (to “affect the degree of
sweetness”) does not even address the claim limitation. The
claim limitation is not directed to the amount of saccharides,
but rather to the ratio of (i) a total concentration of sucrose,
cellobiose, and maltose, to (ii) a total concentration of glucose
5 The Appellants correctly point out that a range of 0.0001 to 1,500 does not
fall within the claimed range of 10 to 28. App. Br. 12.
6 The Examiner also finds that “[i]t would have been obvious to one of
ordinary skill in the art to optimize the sweetener as a result effective
variable to provide a desired energy-replenishing function to occur in an
individual body.” Ans. 9, 15 (emphasis added).
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Application 13/203,465
and fructose. Even if it were known that adjusting the overall
amount of sugars in a beverage affects the sweetness of the
beverage (which is true), it was not known that adjusting the
ratio of (i) total concentration of sucrose, cellobiose, and
maltose, to (ii) a total concentration of glucose and fructose,
would have an effect on the aroma and taste of a green tea
beverage. Because the Examiner has not established that the
ratio of (i) a total concentration of sucrose, cellobiose, and
maltose, to (ii) a total concentration of glucose and fructose was
a known result-effective variable, the characterization of this
ratio as optimizable using routine experimentation is improper.
App. Br. 10.
The Appellants’ argument is persuasive of reversible error. We
interpret the green tea beverage recited in claim 1 as requiring some amount
of each of glucose, fructose, sucrose, cellobiose, and maltose, wherein “a
ratio of (i) a total concentration of sucrose, cellobiose, and maltose, to (ii) a
total concentration of glucose and fructose, is 10 to 28.” App. Br. 26.
Similarly, we interpret the methods recited in claims 3 and 4 as requiring
some amount of each of glucose, fructose, sucrose, cellobiose, and maltose
in a green tea beverage, whereby a ratio of (i) a total concentration of
sucrose, cellobiose, and maltose, to (ii) a total concentration of glucose and
fructose, is adjusted to 10 to 28. See App. Br. 26.
The Examiner finds the beverage disclosed in Satake does not include
glucose, fructose, sucrose, cellobiose, and maltose. To the extent that it
would have been obvious to one of ordinary skill in the art to add known
sweeteners to Satake’s beverage,7 the claims on appeal also recite that a ratio
7 The Examiner finds “[i]t is well known and established in the prior art that
sugar is a result effective variable as it increases sweetness; i.e. the more you
add, the sweeter, the less you add, the less sweet, which is a matter of taste.”
Ans. 19.
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Appeal 2015-002621
Application 13/203,465
of (i) a total concentration of sucrose, cellobiose, and maltose, to (ii) a total
concentration of glucose and fructose, is 10 to 28. App. Br. 26. The
Examiner has failed to show that Satake’s beverage, modified with the
additional sweeteners fructose, cellobiose and maltose, would necessarily
have a ratio as claimed. Moreover, the Examiner has failed to show that the
claimed ratio would have been obvious to one of ordinary skill in the art.
We recognize that optimizing a result effective variable is within the level of
ordinary skill in the art. See In re Boesch, 617 F.2d 272, 276 (CCPA 1980)
(“discovery of an optimum value of a result effective variable in a known
process is ordinarily within the skill of the art”). The Examiner, however,
has failed to show that the claimed ratio of (i) a total concentration of
sucrose, cellobiose, and maltose, to (ii) a total concentration of glucose and
fructose, was known to be a result effective variable at the time of the
Appellants’ invention. See In re Antonie, 559 F.2d 618, 620 (CCPA 1977)
(optimizing a parameter not recognized to be a result effective variable
would not have been obvious).
For the reasons set forth above, the § 103(a) rejections on appeal are
not sustained.
C. DECISION
The Examiner’s decision is reversed.
REVERSED
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