BPAI Board of Patent Appeals and Interferences Patent and Trademark Office (P.T.O.) *1 EX PARTE THE NUTRASWEET COMPANY Appeal No. 91-1067

Board of Patent Appeals and Interferences

Patent and Trademark Office (P.T.O.)



Appeal No. 91-1067

May 24, 1991

HEARD: May 6, 1991



 Request filed March 15, 1988, Control No. 90/001,471 and December 8, 1988, Control No. 90/001,661, by Carl G. Love on behalf of Holland Sweetener Company for the Reexamination of Patent No. 3,780,189 issued to Don Scott on December 18, 1973, based on application Serial No. 180,061 filed September 13, 1971 and a Continuation-in-Part of Serial No. 823,482 filed May 9, 1969, Abandoned. Sweetening Compositions and Method for Use Therein.



Henry J. Renk et al. for appellants



Carl G. Love et al. for requestor



Primary Examiner--Joseph Golian.



Before Serota






Goldstein and W. Smith






Saul I. Serota






Melvin Goldstein






William F. Smith






 This appeal is from the examiner's final rejection of claims 7, 10, 11, 12 and 17, which are all of the claims pending in the two applications which form the basis of the merged proceedings leading to this appeal. Illustrative claim 7 is reproduced below:

   7. A composition adapted for the sweetening of edible materials which comprises saccharin and L-aspartyl-L-phenylalanine methyl ester, wherein the ratio of saccharin to L-aspartyl-L-phenylalanine methyl ester is between about 1:5 to 5:1.

   References relied on by the examiner on appeal are:




Helgren    2,803,551  Aug. 20, 1957

Schlatter  3,492,131  Jan. 27, 1970


   Kamen, "Interaction of Sucrose and Calcium Cyclamate on Perceived Intensity of Sweetness," Food Research, 24, pp. 279-282 (1959).

   Rose, The Condensed Chemical Dictionary, New York, Reinhold Book Corp., p. 828 (1966).

   Skokuhin to Kagaku, "A Novel Method for the Utilization of Artificial Sweeteners," Food Science, 6(3), pp. 39-43 (1964).

   (English language translation only available)

   (referred to herein as Food Science)

   Yamane, "The effects of the combined use of synthetic sweeteners and mixed sweeteners," Sweeteners, pp. 216-217 (1966).

   (English language translation only available)

   (identified by the examiner as Kanmiryo)



 Additional references of record discussed in appellants' arguments are:

   Paul, Zeitschrift f. Unters d. Nahr. -u. Genuszmittel, 43, pp. 137-149  (1922).

   Cameron, "The Relative Sweetness of Various Sweet Compounds and of Their Mixtures," Canadian J. of Res., 23, Sec. E(5), pp. 139-166 (1945).

   Heiduschka et al. (Heiduschka), "Relationships Between Composition and Taste of a-Amino Acids," illegible book title, (1925).

   (17 Page English language translation)

   Stone et al. (Stone), "Measurement of the Relative Sweetness of Selected Sweeteners and Sweetener Mixtures," J. of Food Sci., 34, pp. 215-222 (1969).

   Hahn et al. (Hahn), "A Systematic Investigation of Gustatory Thresholds," Pflugers Archiv., 250, pp. 357-384 (1948).

    *2 (57 page English language translation)

   Taufel et al. (Taufel), "Studies of Natural and Artificial Sweeteners," Report from the German Institute of Nutritional Chemistry, pp. 264-273 (1925).



 All of the appealed claims have been finally rejected under 35 U.S.C. 103 as being unpatentable over the combined teachings of the six references listed above as being relied on by the examiner. We shall affirm this rejection.



 Initially, we note that the examiner's assertion that the claims stand or fall together appears on this record to be correct. Thus, we shall limit our discussion to claim 7. In re King, 801 F.2d 1324, 231 USPQ 136 (Fed.Cir.1986); In re Burckel, 592 F.2d 1175, 201 USPQ 67 (CCPA 1979).



 The references adduced by the examiner amount to copious evidence of obviousness, which if not outweighed by evidence of unobviousness, would support a legal conclusion of obviousness under 35 U.S.C. 103, i.e., a prima facie case of obviousness has been made out.



 Schlatter and The Condensed Chemical Dictionary are relied on only to illustrate that which is acknowledged in appellants' specification, that is, that the two synthetic sweeteners recited in the appealed claims were both known sweetening agents in the prior art. These reference teachings or the equivalent acknowledgements would themselves support a prima facie case of obviousness since it has long been held obvious to combine two known materials for their known function. In re Kerkhoven, 626 F.2d 846, 205 USPQ 1069 (CCPA 1980); In re Pinten, 459 F.2d 1053, 173 USPQ 801 (CCPA 1972); In re Lindner, 457 F.2d 506, 173 USPQ 356 (CCPA 1972); In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971); In re Crockett, 279 F.2d 274, 126 USPQ 186 (CCPA 1960). In the present case, however, there is additional evidence in the form of prior art disclosures which would have specifically motivated one of ordinary skill to make the claimed combination, with the expectation of accomplishing several highly desirable results. We shall discuss those additional teachings below.



 Helgren, Kamen, Food Science and Yamane, taken cumulatively, [FN1] amount to compelling evidence that it was very well known in the prior art to combine sweeteners, including synthetic sweeteners, with the expectation of obtaining greater than additive sweetness effects and possibly a more pleasing overall sweetness sensation. The economic benefits of the former result, i.e., the need to use a smaller total amount of sweetener to obtain a desired sweetness, are manifest. We shall briefly discuss the specific relevant teachings of these references below.



  *3 Helgren discloses a synergistic sweetness effect of up to 70% greater than the expected sweetness in combinations of cyclamate and saccharin. See column 4, lines 41 to 51. This disclosure is not expressly generalized to other combinations of sweeteners. However, an explanation of the observed effect is presented (column 1, lines 26 to 52) which is based on the "metallic, bitter, disagreeable and after-taste, attributable to saccharin in varying concentrations." We believe that one of ordinary skill in the relevant art, even without the more generalized prior art disclosures to be discussed below, would have found in this disclosure a suggestion to modify the disagreeable aspects of saccharin by combining it with various other sweeteners, including the dipeptide recited in appellants' claims, which it is our understanding had not yet been discovered at the time the Helgren disclosure was made.



 Kamen discloses, with respect to the combination of sucrose and a cyclamate,  "that if these two sweetening agents are both used in a product, the sweetness will probably be greater than would be expected on the basis of simple additivity" (page 282). This effect is at least speculatively generalized and two possible explanations are provided for it. One relies on the fact that different sweetness receptors may be differentially sensitive to different sweetening agents and the other is specifically related to sweetening agents which have a bitter taste. Cyclamate is the only one such sweetener expressly mentioned, but we do not believe appellants would deny that saccharin was known to share this property. We believe that at the time of this publication also the relevant dipeptide had not been invented or discovered but, once it was discovered (here evidenced by the Schlatter disclosure), and its lack of unpleasant after-taste characteristics was known (Schlatter, column 1, lines 54-59), one of ordinary skill in the relevant art would have recognized the applicability of the Kamen teachings and been motivated to combine the new sweetening agent with saccharin. Thus, one would have been led to the combinations recited in appellants' claims, even in the absence of any of the other three references here discussed together.



 The Food Science article is quite general. The only specific combination of two artificial sweeteners [FN2] for which quantitative results are presented is the combination of saccharin and Dulcin (4-ethoxyphenylurea). However, here again a basis for expecting greater than additive sweetness is explained generally, and the general statement is made with regard to artificial sweeteners "that when two or more types of sweetener are mixed, there is not a mere summation of the respective sweetnesses." It is set forth generally that "the sweetness obtained will be greater than this, and furthermore, a delicious sweetness is produced" (see the paragraph bridging pages 12 and 13 of the translation of record). The goal of all of the work reported in this article is to enable the use of a sufficient total quantity of artificial sweetener to obtain a sweetness "equivalent to a high sugar concentration" and at the same time to achieve "a sweetener which is free from bitterness but one which manifests a 'delicious sweetness'." (see page 8 of the translation). Taking into consideration the application date of the Schlatter patent, which discloses the dipeptide recited in appellants' claims, we consider that that dipeptide was not known at the time the Food Science disclosure was made. Thus, it is not surprising that that sweetener is not discussed in that publication. However, with respect to this reference also, the application of its teachings to the new dipeptide sweetener would have been palpably obvious to one of ordinary skill in the relevant art.



  *4 The Yamane compendium was published in July 1966, a date which we believe can explain the absence of dipeptide sweeteners from the disclosure. This reference may be considered to provide the most general teaching of all with regard to mixtures of sweeteners. The very first paragraph of the portion of the publication of record states the following:

   It has long been recognized from experience that when sweeteners are used together, the level of sweetness is increased synergistically, and in the case of synthetic sweeteners too, when these are used with each other, or when they are used along with sugar or some other such sweetener, the level of sweetness is considerably raised in comparison to the sum of the levels of sweetness when used individually.

Specifically illustrated, with quantitative results presented, are two and three-component mixtures of the most commonly used synthetic sweeteners at that time, as well as additional mixtures including natural sugar. Sweetening effects greater than the expected additive effect in amounts up to 87% are disclosed, i.e., high orders of synergy are demonstrated. This reference, when taken together only with appellants' acknowledgments as illustrated in the Schlatter and Dictionary publications, would have rendered appellants' claims clearly prima facie obvious to one of ordinary skill in the relevant art. When taken together additionally with the other three references in this group as well, as we believe appellants have interpreted the rejection and as we have already stated we consider to be the logical approach, the evidence in favor of obviousness is impressive.



 As countervailing evidence of unobviousness, appellants have relied on assertions and evidence purported to demonstrate that the increase in sweetness demonstrated by the claimed mixtures over and above the expected additive sweetness, i.e., the synergistic effect, is even greater than that demonstrated for the mixtures specifically disclosed in the prior art. With respect to some of the prior art disclosures, appellants also rely on assertions that the results actually disclosed were not entitled to the appellation "synergy." We shall discuss both of these issues below.



 As we have discussed above, the references provide abundant motivation to one of ordinary skill in the relevant art to combine the sweeteners recited in appellants' claims to obtain both desirable aesthetic and desirable economic results. The references also on their face at least strongly suggest that greater than strictly additive sweetening effects would result from the combination. Thus, in the present case, a demonstration that greater than additive effects were obtained is not in itself adequate evidence to outweigh the evidence of obviousness found in the references. In re Kollman, 595 F.2d 48, 201 USPQ 193 (CCPA 1979); In re Crockett, 279 F.2d 274, 126 USPQ 186 (CCPA 1960). It would at least be necessary to demonstrate that the improvements observed were greater to an unobvious extent than those which would have been expected from the reference teachings [FN3] and that those differences were of some significant, practical advantage. [FN4] Even if we assume arguendo that the greater than additive effects demonstrated by the references do not warrant the sobriquet "synergy" and the results demonstrated by appellants do, we still conclude that the evidence of unobviousness of record is inadequate to outweigh the evidence of obviousness.



  *5 As we have discussed above, the references lead to a general expectation of greater than additive sweetening effects for a mixture of synthetic sweeteners. The Helgren disclosure (which has not been challenged on the basis of recalculations by appellants) is, with regard to cyclamate-saccharin mixtures, that "a synergistic sweetness is obtained in the combination which is at least about 70% greater by actual comparison with sugar than would be expected from the summed sweetness of the components of the mixture" (column 4, lines 45-50). Actually, a greater than expected additive sweetness of as much as 140% is reported in some ranges (column 4, lines 71 to 75). It may be that one of ordinary skill in the relevant art would expect a slightly greater or slightly lesser effect from combining one non-bitter sweetener (the dipeptide) with one bitter sweetener (saccharin) than is disclosed for the combination of two bitter sweeteners. In view of the generalized teachings of record, however, it is fair to accept the Helgren disclosure as setting at least an approximate expectation.



 Thus, it may be said that appellants have not demonstrated even the result one would have been led to expect by the references. Furthermore, since the economic benefits of being able to use less total sweetener are readily apparent to one of ordinary skill in the relevant art, a slight improvement in this benefit would not be very weighty evidence of unobviousness. With regard specifically to the Balbirer declaration under 37 C.F.R. 1.132 (Appendix 20 to appellants' brief), the data presented therein with respect to the use of the claimed combination in commerce are clearly insufficient to indicate anything other than the expected economic advantages already discussed.



 We have above explained our conclusion that, even if appellants had in fact discredited all of the reference disclosures of synergism and had themselves established clearly and convincingly that the claimed compositions did in fact demonstrate synergism, the weight of the evidence would have supported the examiner's rejection for obviousness. In point of fact, however, we do not consider that appellants have successfully discredited all of the reference teachings and furthermore, we do not consider that appellants have provided clear and convincing evidence of anything greater than the expected result with regard to the claimed compositions. We shall explain these comments in further detail below.



 The principal arguments in support of appellants' position that the references only incorrectly set forth synergistic effects are found in the second supplemental declaration of Grant E. DuBois, which is Appendix 18 to the principal brief on appeal. As we have already indicated above, the Helgren disclosure has not been denigrated. With respect to Kamen, even applying appellants' retrospective analysis, fully half of the specific mixtures tested "arguably support a claim of synergism" (page 7). With respect to Yamane and Food Science, it appears that the declarant has carried out the retrospective analyses of the data by using sweetness intensity values for the individual sweeteners from different sources than the references being analyzed. This is clearly erroneous in view of the fact that the references (and here we have considered all of those relied on by appellants) abundantly illustrate that these values differ from taste panel to taste panel. This error is most clearly presented in item 20 at pages 14 and 15. Thus, giving it the maximum weight possible, appellants contradictory evidence is inadequate to rebut the teachings of the references on their face.



  *6 All of the data presented in the Scott patent appear to be based on the same error discussed immediately above. In Table 2, the potency values for sodium saccharin are presented with an asterisk to a footnote which appears to indicate that the values were not measured by the test panel but were taken from an earlier publication. As we have already indicated, in view of the great variation in values reported in the literature, calculations based on this type of derivation can be given very little weight. Furthermore, no evidence of statistical significance of the data presented has been made of record except comments which would tend to denigrate it. These comments occur in the first supplemental declaration of Grant E. DuBois (Appendix No. 18 to appellants' principal brief at page 10) and the declaration of B. Thomas Carr (Appendix No. 19 to appellants' principal brief at page 3). We note particularly that the Carr declaration sets forth the following:

   9. In order for me to draw a conclusion about whether the "upper bound" data for any single blend in Table 3 supports the '189 patent's claim of synergism, I would need additional experimental detail beyond what is set forth in the patent (e.g., what is meant by "10% precision").

Both declarations proceed to set forth what appears to be speculation based on no supporting statistical procedure that the patent's claim of synergism is supported by the data presented. This type of evidence can hardly be considered to amount to clear and convincing proof of any unobvious result.



 The first supplemental declaration of Grant E. DuBois also sets forth three additional tests. However, the results of these tests, even if they were considered to illustrate unexpected synergism, would of necessity be considered not commensurate in scope with the claims on appeal since the three mixtures represented are all within one very narrow area of the entire range claimed. [FN5] However, with respect to these additional tests and the results presented in the Scott patent, it must be emphasized that the bitterness effect discussed in many of the references of record and alluded to above has not been taken into account in any of appellants' discussions of their own test results. From the disclosures of the prior art taken as a whole, the bitterness effect could in fact have been expected to account for a significant amount of greater than additive sweetness, certainly the amounts demonstrated by appellants.



 For the reasons presented by the examiner as well as those emphasized above, the rejection of all of the claims on appeal is affirmed.



 No time period for taking any subsequent action in connection with this appeal may be extended under 37 CFR 1.136(a). See the final rule notice, 54 F.R. 29548 (July 13, 1989), 1105 O.G. 5 (August 1, 1989).






FN1. From the examiner's statement of the rejection, it may be that these four references were only relied upon individually. However, appellants have argued them cumulatively, and we consider this to be the candid approach since the determination of obviousness or unobviousness should be made in view of the most comprehensive body of evidence available, i.e., all of the references taken together. However, we would affirm the rejection based on any one of the references, which shall be discussed separately.



FN2. We note here, and shall discuss below, that appellants' claims are not actually limited to two-component sweetener mixtures.



FN3. In re Merck, 800 F.2d 1091, 231 USPQ 375 (Fed.Cir.1986); In re Longi,  759 F.2d 887, 225 USPQ 645 (Fed.Cir.1985); In re Kollman, supra.



FN4. In re Klosak, 455 F.2d 1077, 173 USPQ 14 (CCPA 1972); In re D'Ancicco,  439 F.2d 1244, 169 USPQ 303 (CCPA 1971).



FN5. Since appellants' claims are "comprising" claims, they are open to mixtures with additional synthetic and natural sugars. This further aggravates the lack of commensurateness in scope.


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