In the intricate realm of patent law, where innovation and legal intricacies collide, lies a phenomenon that governs the fate of inventions which few outsiders understand. It's the US Patent Office's unwavering dedication to interpreting claim terms in their broadest sense—an innocuous-sounding practice that sets off a chain reaction, with far-reaching implications. Like a series of falling dominoes, this ripple effect of the broadest claim interpretation reverberates through multiple stage of patent examination, shaping downstream analyses and leading to unexpected outcomes to the untrained eye. In this blog post, we provide an example that exposes the subtle yet substantial consequences of this often underestimated approach with tentacles reaching beyond mere claim interpretation.
Specifically, Appeal 2022-002522, Application 15/519,929, illustrates an example where the broadest reasonable interpretation (BRI) impacts the analogous arts test. The invention here relates to flavored beverages, and more particularly to citrus-flavored beverages. The applicant is Givaudan (www.givaudan.com). Claim 1 on appeal is reproduced below:
1. A citrus-flavoured beverage comprising a beverage base, citrus flavour and a citrus flavour-enhancing proportion of a mega-fatty complex.
This was actually the second appeal on this case. The first resulted in a reversal (as the prior art was found to teach away from the combination), but the examiner came back with a new primary reference in combination with the same secondary reference, resulting in a second trip to the PTAB. In the second round, the examiner rejected the application based on a combination of JSCOOKS (Jewish Plum Soup with Sour Cream) which discloses a soup containing plums, water, and lemon, a citrus flavor, and Yamaguchi. Yamaguchi discloses that a mega fatty acid complex is a body taste improver for food products, and discloses such complexes are added to soups.
The first issue in the case was whether, under BRI, the claimed “beverage” was broad enough to include soup. The examiner had interpreted “beverage” as “a liquid to be consumed.” The PTAB noted that this was consistent with the dictionary, which defined “beverage” as “a drinkable liquid.” The Applicant’s appeal brief did not push back on the interpretation issue, and only in the reply brief was a short reference (that did not cite to the specification) provided:
As an initial matter, the comparison of "soups" to "beverages" is not commensurate in scope with Appellant's claims which pertain to a citrus-flavored beverage, nor is it commensurate in scope with JSCOOKS which relates to Jewish plum soup with sour cream.
The PTAB was thus relatively free to decide this issue in favor of the examiner. However, once “beverage “ was interpreted broad enough to include plum soup with sour cream, the Applicant’s non-analogous art argument was in trouble.
Specifically, the Applicant’s primary argument was that the prior art was non-analogous. The non-analogous art test aims to determine whether prior art references considered during examination are sufficiently related to the claimed invention. It requires a showing of a similarity of sorts between the prior art and the claimed invention in order for the reference to be available for combining with other relevant prior art. The non-analogous art test determines whether the the reference is within the field of the inventor’s endeavor, and if not whether it is reasonably pertinent to the problem solved by the inventor. If either is true, then the prior art is analogous and available for use in an obviousness rejection.
The Applicant summarized their argument (that prior art dealing with soup was non-analogous to citrus beverages) as follows (citations omitted).
In the present case, JSCOOKS is a recipe for making Jewish plum soup with sour cream. In contrast, Appellant's invention relates to citrus-flavored beverages and a means of obtaining a more natural and better-tasting citrus beverage. Appellant's Specification further discloses that citrus-flavoured beverages (particularly orange, lemon and lime) are among the most popular beverage flavours, and that it has long been a goal of the beverage industry to produce a citrus-flavoured beverage with more of the natural sweetness and juiciness of the fruit (orange/lemon/lime) itself. Citrus flavour comes naturally from a small group of particular fruits in the Citrus genus, and their distinct flavour results from the presence of a number of organic acids, notably citric acid, whereas plums belong to the Prunus genus and do not contain citric acid or associated flavor. Citrus-flavored beverages and plum soup are not from the same field of endeavor. In addition, a recipe for Jewish plum soup would not have logically commended itself to methods of preparing a more natural and better-tasting citrus beverage.
To analyze this issue, the PTAB first explained how BRI is also part of the non-analogous arts test. In identifying the field of endeavor, one consults the structure and function of the claimed invention as perceived by one of ordinary skill in the art with reference to the specification. More importantly, this inquiry considers the claimed terms under BRI. Here, since the PTAB agreed with the examiner that the term beverage was not expressly defined in the specification and was properly interpreted as drinkable liquid, Jewish plum soup is included in such drinkable liquids because it possible to drink a pureed soup like Jewish plum soup. Whether anyone would actually do so was beside the point.
The PTAB also bootstrapped their approach by considering the specification for the additional claim terms related to the beverage base. With the term beverage being again broadly interpreted, the Specification provided a list of normal ingredients, with some of them overlapping ingredients in the plum soup. This only reinforced the PTAB’s conclusion, as summarized by the PTAB below, conveniently ignoring the sour cream aspect of the soup:
Although the term “beverage” is not expressly defined in the Specification, claim 1 further recites the presence of a “beverage base,” which is expressly defined in the Specification as “a combination of the normal ingredients used to prepare a citrus beverage, apart from the citrus flavour and mega-fatty complex.” With reference to the “normal ingredients,” the Specification further states “[t]hese are standard ingredients used in art-recognised quantities, and include water, sugars and other sweetening agents, surfactants and suspending agents, thickeners, rheology modifiers, dyestuffs and colouring matters.”
JSCOOKS discloses a Jewish plum soup that includes water, sugar, plums, and lemon juice. JSCOOKS. The water, sugar, and plums are combined, the mixture is heated, and then pureed “until smooth using an immersion blender, standard blender, or food processor.” The lemon juice is added and then the soup is refrigerated until cold.
Thus, because JSCOOKS discloses a smooth liquid, which would be drinkable, and includes similar ingredients as defined by the Specification for the beverage base, we are of the view that JSCOOKS is in the same field of endeavor as Appellant. In this regard, Appellant’s argument that plums are from a different genus than citrus fruits, is not persuasive, because as previously discussed, JSCOOKS discloses adding lemon juice, which is a citrus flavor.
So, when looking for a refreshing beverage at your next summer BBQ, grab a cool glass of Jewish plum soup with sour cream! Your guests will all agree that it is a great citrus beverage. And remember that BRI can create ripple effects that spread to arguments beyond mere claim interpretation.