Trials@uspto.gov
`571.272.7822
`
`Paper 38
`Date: October 13, 2020
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`RED DIAMOND, INC.,
`Petitioner,
`
`v.
`
`SOUTHERN VISIONS, LLP,
`Patent Owner.
`_______________
`
`PGR2019-00045
`Patent 10,071,852 B2
`_______________
`
`
`Before CHRISTOPHER L. CRUMBLEY, JEFFREY W. ABRAHAM, and
`CHRISTOPHER C. KENNEDY, Administrative Patent Judges.
`
`KENNEDY, Administrative Patent Judge.
`
`
`JUDGMENT
`Final Written Decision
`Granting In Part Patent Owner’s Revised Motion to Amend
`35 U.S.C. § 328(a)
`
`
`
`
`571.272.7822
`
`Paper 38
`Date: October 13, 2020
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`RED DIAMOND, INC.,
`Petitioner,
`
`v.
`
`SOUTHERN VISIONS, LLP,
`Patent Owner.
`_______________
`
`PGR2019-00045
`Patent 10,071,852 B2
`_______________
`
`
`Before CHRISTOPHER L. CRUMBLEY, JEFFREY W. ABRAHAM, and
`CHRISTOPHER C. KENNEDY, Administrative Patent Judges.
`
`KENNEDY, Administrative Patent Judge.
`
`
`JUDGMENT
`Final Written Decision
`Granting In Part Patent Owner’s Revised Motion to Amend
`35 U.S.C. § 328(a)
`
`
`
`
`
`PGR2019-00045
`Patent 10,071,852 B2
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`
`I. BACKGROUND
`Petitioner, Red Diamond, Inc., filed a Petition for post-grant review of
`claims 13, 18, and 19 of U.S. Patent No. 10,071,852 B2 (Ex. 1001). Paper 2
`(“Pet.”). Patent Owner, Southern Visions, LLP, filed a Preliminary
`Response. Paper 8. We instituted trial. Paper 9 (“DI”).
`Following institution, Patent Owner did not file a Patent Owner
`Response. Instead, Patent Owner filed a Motion to Amend requesting “on
`an unconditional basis” that we cancel challenged claims 13, 18, and 19, and
`enter proposed substitute claims 20–22. Paper 15 (“MTA”) at 2. Petitioner
`filed an opposition. Paper 24. Pursuant to Patent Owner’s request, see
`MTA at 2, we issued Preliminary Guidance, explaining that Petitioner had
`likely identified certain statutory and regulatory reasons for denying the
`Motion to Amend, but that Petitioner had not shown a reasonable likelihood
`that the proposed substitute claims were unpatentable. Paper 26 (“PG”) at 3,
`6, 11, 12.
`Patent Owner filed a Revised Motion to Amend requesting “that the
`Board cancel original claims 13, 18 & 19, unconditionally consider this
`Motion, and enter [proposed] claims 23–25.” Paper 27 (“Revised MTA”)
`at 1 (emphasis in original). Petitioner filed an Opposition to the Revised
`Motion to Amend. Paper 30 (“Opp.”). Patent Owner filed a Reply.
`Paper 32. Petitioner filed a Sur-reply. Paper 36.
`Oral argument was held on August 11, 2020. A copy of the transcript
`of that argument was entered into the record. Paper 37 (“Hearing Tr.”).
`We have jurisdiction under 35 U.S.C. § 6, and we issue this Final
`Written Decision under 35 U.S.C. § 328(a). For the reasons below, we grant
`Patent Owner’s Revised Motion to Amend with respect to Patent Owner’s
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`request that we cancel original challenged claims 13, 18, and 19, but we
`deny Patent Owner’s Revised Motion to Amend with respect to Patent
`Owner’s request that we enter proposed substitute claims 23–25.
`
`A. RELATED MATTERS
`The parties identify the following related matter: Southern Visions,
`LLP v. Red Diamond, Inc., No. 2:18-cv-02039-RDP (N.D. Ala.). Pet. 8;
`Paper 7 at 1.
`Patent Owner also identifies the following related patents and patent
`application: U.S. Patents No. 9,468,222; No. 9,468,330; No. 9,549,634;
`No. 9,725,232; No. 10,071,852; No. 10,093,480; No. 10,130,209; and U.S.
`Application No. 16/166,862. Paper 7 at 1.
`Subsequent to institution of this post-grant review, the Board
`instituted four inter partes reviews in which the same parties and similar
`subject matter—but different patents—are involved: IPR2019-01661,
`IPR2019-01662, IPR2019-01671, and IPR2020-00001.
`
`B.
`
`THE ’852 PATENT
`The ’852 patent relates to products for brewing sweetened beverages
`such as tea. Ex. 1001 at code (57). The ’852 patent states that prior art
`methods of brewing sweetened beverages, which include manually adding
`sugar to a beverage after it brews, result in “a lack of consistency from one
`batch of beverages to the next” because, for example, “one usually does not
`have a scale to weigh out” the sweetener, which results in variation of Brix
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`level1 among batches. Id. at 1:30–46. The ’852 patent aims “to provide an
`accurate and consistent way of brewing sweetened beverages.” Id. at 2:61–
`63. To that end, the ’852 patent discloses brewing products that “contain[]
`beverage materials [e.g., tea] and sweetener in a prescribed blended ratio.”
`Id. at 3:7–11.
`The ’852 patent attributes significance to the particle size of the
`sweetener. For example, the patent discloses that “[i]t has been found . . .
`that an advantageous size of particles of sweetener, particularly sugar, is that
`retained by US sieve numbers 3–35, although granule sizes larger than 3 will
`work as well.” Id. at 9:37–41; see also id. at 4:20–23 (“Preferably, the size
`of the granulated sugar particles used is in the range of U.S. mesh sieve nos.
`3–35; although, particles the size of U.S. mesh sieve nos. 3 or larger will
`work successfully in the present invention.”). According to the ’852 patent,
`“[t]he sweetener dissolves rapidly and more fully . . . when the granular size
`of the sweetener is generally U.S. Mesh sieve 35 or larger . . . as opposed to
`when the granular size of the sweetener is generally smaller than U.S. Mesh
`sieve 35.” Id. at 12:14–19.
`
`C.
`
`LEVEL OF ORDINARY SKILL IN THE ART
`In the Institution Decision, we determined that “a person of ordinary
`skill in the art would have had sufficient experience and/or education in the
`food industry to possess an understanding of (1) sugar particle size as it
`pertains to brewed beverages, (2) sugar particle size screening, and (3) the
`storage and use of sugar in commercial settings.” DI at 7–8. We also asked
`
`1 “One degree Brix is one gram of sucrose in 100 grams of solution . . . .
`Brewed sweetened tea has a typical Brix level of 10 to 11.” Ex. 1001, 1:35–
`43.
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`the parties to expressly discuss the level of ordinary skill in the art in
`remaining briefing if either party disagreed with our determination. Id. at 8.
`For purposes of this Final Written Decision, we maintain our
`determination from the Institution Decision because neither party disputes
`the level of ordinary skill identified in the Institution Decision, and because
`we continue to find that the stated level of ordinary skill is consistent with
`the record.
`
`II. MOTION TO AMEND
`
`A. ORIGINAL CHALLENGED CLAIMS
`As noted above, Patent Owner requests that we “unconditionally
`consider” the Revised Motion to Amend and cancel original claims 13, 18,
`and 19. Revised MTA at 1. Because Patent Owner has not indicated that
`our consideration of the Revised Motion to Amend is contingent on a
`determination that original challenged claims 13, 18, and 19 are
`unpatentable, we grant Patent Owner’s request to cancel original challenged
`claims 13, 18, and 19. See Lectrosonics, Inc. v. Zaxcom, Inc., IPR2018-
`01129, Paper 15 at 3 (PTAB Feb. 25, 2019) (precedential) (“A request to
`cancel claims will not be regarded as contingent.”).
`The remaining issue before us is whether to grant the Revised Motion
`to Amend as to proposed substitute claims 23–25.
`
`B.
`
`PROPOSED SUBSTITUTE CLAIMS
`Patent Owner moves to replace original claims 13, 18, and 19 with
`proposed substitute claims 23, 24, and 25, respectively. The proposed
`substitute claims, with underlining indicating language added to, and
`strikethrough indicating language removed from, the original claims, are
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`reproduced below. See Revised MTA at Appx. A (Listing of Proposed
`Substitute Claims).
`
`23. A beverage brewing product for producing a sweetened beverage
`comprising:
`at least one water permeable sieve for placement in a container;
`beverage tea particles and granulated sugar contained in said at
`least one sieve;
`wherein said granulated sugar includes particles having a size in
`the range of U.S. mesh sieve no. 35 or lower;
`at least 61 percent by weight of a total amount of granulated
`sugar in said at least one water permeable sieve is within the
`range of U.S. mesh sieve nos. 3-20;
`wherein said total amount of granulated sugar in said at least one
`water permeable sieve is in the range of 1.5 to 3 pounds; and
`said permeable sieve having openings being generally smaller
`than the size of the beverage tea particles and said sugar for the
`retention of said beverage tea particles and said sugar; so that
`said particles of said sugar are dissolved during steeping in water
`to produce a sweetened beverage.
`
`24. The A beverage brewing product of claim 13 for producing a
`sweetened beverage comprising:
`at least one water permeable sieve for placement in a container,
`wherein said at least one sieve is an open filter;
`tea particles and granulated sugar contained in said at least one
`sieve;
`wherein said granulated sugar includes particles having a size in
`the range of U.S. mesh sieve no. 35 or lower;
`at least 50 percent by weight of a total amount of granulated
`sugar is in the range of U.S. mesh sieve nos. 3-18;
`wherein said total amount of granulated sugar in said at least one
`water permeable sieve is in the range of 1.5 to 3.75 pounds; and
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`said permeable sieve having openings being generally smaller
`than the size of the tea particles and said sugar for the retention
`of said tea particles and said sugar; so that said particles of said
`sugar are dissolved during steeping in water to produce a
`sweetened beverage.
`
`25. The A beverage brewing product of claim 13 for producing a
`sweetened beverage comprising:
`at least one water permeable sieve for placement in a container,
`wherein said at least one sieve is formed from a material selected
`from a group consisting of polymer, cotton, and cellulose, and
`metal;
`tea particles and granulated sugar contained in said at least one
`sieve;
`wherein said granulated sugar includes particles having a size in
`the range of U.S. mesh sieve no. 35 or lower;
`at least 70 percent by weight of a total amount of granulated
`sugar is in the range of U.S. mesh sieve nos. 3-16;
`wherein said total amount of granulated sugar in said at least one
`water permeable sieve is in the range of 1.25 to 3 pounds; and
`said permeable sieve having openings being generally smaller
`than the size of the tea particles and said sugar for the retention
`of said tea particles and said sugar; so that said particles of said
`sugar are dissolved during steeping in water to produce a
`sweetened beverage.
`
`C.
`
`STATUTORY AND REGULATORY REQUIREMENTS
`Before we consider the patentability of the proposed substitute claims,
`we determine whether the Revised Motion to Amend meets the statutory and
`regulatory requirements set forth in 35 U.S.C. § 326(d) and 37 C.F.R.
`§ 42.221. See Lectrosonics, Paper 15 at 4.
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`Reasonable Number of Substitute Claims
`1.
`A motion to amend may, “[f]or each challenged claim, propose a
`reasonable number of substitute claims.” 35 U.S.C. § 326(d)(1)(B). “The
`presumption is that only one substitute claim would be needed to replace
`each challenged claim, and it may be rebutted by a demonstration of need.”
`37 C.F.R. § 42.221(a)(3).
`Patent Owner cancels three claims and proposes three replacements.
`See generally Revised MTA. Petitioner does not argue that the proposed
`number of substitute claims is unreasonable. See generally Opp. We
`determine that the number of proposed substitute claims is reasonable.
`
`Responsive to a Ground of Unpatentability
`2.
`“A motion to amend may be denied where . . . [t]he amendment does
`not respond to a ground of unpatentability involved in the trial.” 37 C.F.R.
`§ 42.221(a)(2)(i).
`Patent Owner argues that proposed substitute claims 23–25 “are
`responsive because each adds novel and nonobvious feature combinations
`that further address Petitioner’s arguments.” Revised MTA at 15.
`Each proposed substitute claim includes, inter alia, an amendment
`that narrows the sugar particle size recited in the corresponding original
`claim, and an amendment that specifies the total amount of granulated sugar
`used in the beverage brewing product. See Revised MTA at Appx. A. In the
`Institution Decision, we determined that Petitioner had shown a reasonable
`likelihood that the prior art taught or suggested the use of sugar that falls
`within the scope of the originally challenged claims. E.g., DI at 26–27. The
`proposed amendments are responsive to that preliminary determination and
`to the arguments for unpatentability presented in the Petition.
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`Petitioner does not contend otherwise. See generally Opp.
`On this record, we determine that the proposed amendments are
`responsive to a ground of unpatentability involved in the trial.
`
`Scope of Proposed Substitute Claims
`3.
`A motion to amend “may not enlarge the scope of the claims of the
`patent.” 35 U.S.C. § 326(d)(3); 37 C.F.R. § 42.221(a)(2)(ii). Although
`Patent Owner does not appear to separately address this requirement in the
`Revised Motion to Amend, see generally Revised MTA, we have reviewed
`the proposed substitute claims and determine that they do not enlarge the
`scope of the claims of the patent because they add limitations that render
`each proposed substitute claim narrower than original challenged claim 13.2
`Petitioner does not contend otherwise. See generally Opp.
`On this record, we determine that the Revised Motion to Amend
`satisfies this requirement.
`
`New Matter/Written Description
`4.
`A motion to amend “may not . . . introduce new matter.” 35 U.S.C.
`§ 326(d)(3); see 37 C.F.R. § 42.221(a)(2)(ii). “New matter is any addition to
`the claims without support in the original disclosure.” Lectrosonics,
`Paper 15 at 7 (citing TurboCare Div. of Demag Delaval Turbomachinery
`Corp. v. General Elec. Co., 264 F.3d 1111, 1118 (Fed. Cir. 2001)). “[T]he
`Board requires that a motion to amend set forth written description support
`
`
`2 Cf. Hunting Titan, Inc. v. Dynaenergetics Europe GmbH, IPR2018-00600,
`Paper 67 at 9, 12 (PTAB July 6, 2020) (precedential) (Board may, in some
`circumstances, provide information usually provided by a party when it is
`“readily identifiable and so persuasive that the Board should take it up in the
`interest of supporting the integrity of the patent system.”).
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`in the originally filed disclosure of the subject patent for each proposed
`substitute claim, and also set forth support in an earlier filed disclosure for
`each claim for which benefit of the filing date of the earlier filed disclosure
`is sought.” Id. (citing 37 C.F.R. §§ 42.121(b)(1) and (2)).3
`Proposed substitute claim 23 includes, inter alia, the following new
`limitation:
`at least 61 percent by weight of a total amount of granulated
`sugar in said at least one water permeable sieve is within the
`range of U.S. mesh sieve nos. 3-20.
`Consistent with the nomenclature of the Revised Motion to Amend, see
`Revised MTA at 7, we refer to this limitation as the “percentage+range
`limitation.”
`The percentage+range limitation is the only limitation in proposed
`substitute claim 23 that Petitioner alleges constitutes new matter. See Opp.
`at 4. We have reviewed Patent Owner’s identification of written description
`support for the other limitations of proposed substitute claim 23, see Revised
`MTA at 2–3, and we determine that, on the record before us, Patent Owner
`has adequately identified support for those limitations. However, as
`explained below, we agree with Petitioner that the percentage+range
`
`
`3 At the oral hearing, it became apparent that the parties dispute which party
`bears the burden of persuasion on the issue of new matter. E.g., Hearing
`Tr. 10. Board precedent “requires that a motion to amend set forth written
`description support in the originally filed disclosure.” Lectrosonics,
`Paper 15 at 7. Thus, Patent Owner has the burden of persuasion on this
`issue. In any event, the outcome of this case would be the same regardless
`of who bears the burden on the issue of new matter, because, as explained
`below, Petitioner’s arguments and evidence are adequate to establish that the
`disputed subject matter constitutes new matter.
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`limitation constitutes new matter and warrants denial of the Revised Motion
`to Amend with respect to entry of proposed substitute claim 23.
`As is evident from our reproduction of proposed substitute claim 23
`above, in terms of sugar particle size, originally challenged claim 13
`required only that the granulated sugar include particles “having a size in the
`range of U.S. mesh sieve no. 35 or lower.” Ex. 1001 at 14:27. That particle
`size limitation finds support, for example, in the original disclosure’s
`statement that, “[p]referably, the size of the granulated sugar particles used
`is in the range of U.S. mesh sieve nos. 3-35; although, particles the size of
`U.S. mesh sieve nos. 3 or larger will work successfully in the present
`invention.” Ex. 2040 ¶ 16. The percentage+range limitation of proposed
`substitute claim 23 modifies the original particle size limitation of claim 13
`by specifying that 61 percent by weight of the granulated sugar must be
`within the narrower range of U.S. mesh sieve nos. 3–20.
`Patent Owner cites ¶¶ 16, 26, 51, and 61 of the original disclosure as
`allegedly providing written description support for the percentage+range
`limitation. Revised MTA at 3. Consistent with Petitioner’s arguments, see
`generally Opp., we find that neither the paragraphs cited by Patent Owner,
`nor any other portion of the original disclosure, mentions U.S. mesh sieve
`no. 20 in any context. See generally Ex. 2040. The closest mesh sieve
`number to 20 mentioned by the original disclosure is mesh sieve no. 35,
`which is mentioned, for example, in paragraph 16. See, e.g., id. ¶ 16. Other
`than stating that granulated sugar is preferably “in the range of U.S. mesh
`sieve nos. 3–35,” id., apparently indicating a preference that up to 100% by
`weight of the sugar be within that range, paragraph 16 does not attribute any
`significance to any particular weight percentage of any particular sugar
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`particle size, much less does it specifically identify 61 wt% within a mesh
`sieve no. range of 3–20 as a desirable embodiment. See generally id.
`Paragraph 26, also cited by Patent Owner, is essentially the same in relevant
`part as paragraph 16. See id. ¶ 26.
`We also do not discern support for Patent Owner’s position in
`paragraphs 51 or 61. Paragraph 51 gives a general description of mesh sieve
`sizes, notes that typical grocery store sugar has a mesh sieve range of 45–
`120 and is “smaller than the size preferable for use in the present invention,”
`and repeats that sugar retained by mesh sieve nos. 3–35 is “an advantageous
`size of particles,” “although granule sizes larger than 3 will work as well.”
`See id. ¶ 51. Paragraph 51 thus discloses that sugar in the size range of mesh
`sieve nos. 45–120 is smaller than desirable, but that sugar in the size range
`of mesh sieve nos. 3–35 is desirable. Paragraph 61 states that “[t]he
`sweetener dissolves rapidly and more fully in the present invention when the
`granular size of the sweetener is generally U.S. Mesh sieve 35 or larger (i.e.
`lower mesh numbers) as opposed to when the granular size of the sweetener
`is generally smaller than U.S. Mesh sieve 35 (i.e. mesh sieve numbers above
`35).” Id. ¶ 61. We do not discern any disclosure in any of the cited
`paragraphs concerning a mesh size of 20 or an indication that any particular
`proportion of the sugar particles should be within a narrower size range than
`the range of 3–35 expressly disclosed by the written description. See
`generally id. ¶ 16, 26, 51, 61.
`Patent Owner also cites various disclosures in U.S. Patent Application
`No. 13/867,526, which is an application to which the ’852 patent claims
`priority. See Revised MTA at 2–3 (citing Ex. 2025). The cited paragraphs,
`however, reference only a mesh sieve range of 3–35 and, as above, do not
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`contemplate that any particular proportion of the sugar particles should be
`within a narrower size range. See Ex. 2025 ¶¶ 3, 10, 27, 28, 31, 32.
`As described above, we find that neither the original disclosure nor
`the ’526 application provides direct support for the percentage+range
`limitation. Patent Owner does not meaningfully contend otherwise. See
`Reply Br. at 1 (acknowledging that the original disclosure does not
`“expressly describe” the percentage+range limitation).
`Patent Owner is correct that claimed numerical ranges do not
`necessarily need to correspond exactly to ranges described in an original
`disclosure in order to be supported by the original disclosure. Revised MTA
`at 8; Vas-Cath v. Mahurkar, 935 F.2d 1555, 1566 (Fed. Cir. 1991) (citing
`Ralston Purina Co. v. Far-Mar-Co, Inc., 772 F.2d 1570, 1575 (Fed. Cir.
`1985), for the proposition that ranges found in applicant’s claims need not
`correspond exactly to those disclosed in the specification). Thus, the fact
`that the mesh sieve range of 3–20 recited by proposed substitute claim 23
`does not appear in the original disclosure is not, of itself, dispositive of
`whether it is supported by the original disclosure. However, it is well
`established that, to provide written description support, the original
`disclosure “must do more than merely disclose that which would render the
`claimed invention obvious.” ICU Med., Inc. v. Alaris Med. Sys., Inc., 558
`F.3d 1368, 1377 (Fed. Cir. 2009); Ariad Pharms., Inc. v. Eli Lilly & Co., 598
`F.3d 1336, 1352 (Fed. Cir. 2010) (en banc) (“[A] description that merely
`renders the invention obvious does not satisfy the [written description]
`requirement.”). The disclosure must “reasonably convey[] to those skilled in
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`the art that the inventor had possession of the claimed subject matter as of
`the filing date.” Id. at 1351.
`The most recent Federal Circuit case relevant to the issue of written
`description support for numerical ranges identified by the parties is General
`Hospital Corp. v. Sienna Biopharmaceuticals, Inc., 888 F.3d 1368, 1372
`(Fed. Cir. 2018).4 In that case, the Federal Circuit explained:
`The disclosure of a broad range of values does not by itself
`provide written description support for a particular value within
`that range. Instead, where a specification discloses a broad range
`of values and a value within that range is claimed, the disclosure
`must allow one skilled in the art to immediately discern the
`limitation at issue in the claims.
`Id. (emphasis added); cf. Atofina v. Great Lakes Chem. Corp., 441 F.3d 991,
`1000 (Fed. Cir. 2006) (“[T]he disclosure of a range is no more a disclosure
`of the end points of the range than it is of each of the intermediate points.”).
`The Federal Circuit has also stated that, “[i]n the absence of blazemarks”
`that point to a particular species or sub-genus, “simply describing a large
`genus of compounds is not sufficient to satisfy the written description
`requirement.” Fujikawa v. Wattanasin, 93 F.3d 1559, 1571 (Fed. Cir. 1996).
`We find those cases to be instructive because we discern no guidance
`in the original disclosure that points to the percentage+range limitation of
`proposed substitute claim 23. Nor do we find anything in the original
`disclosure that would “allow one skilled in the art to immediately discern”
`
`
`4 Despite the fact that Sienna was cited in (1) Petitioner’s opposition to
`Patent Owner’s original Motion to Amend, Paper 24 at 11; (2) the
`Preliminary Guidance issued by the Board, PG at 8; and (3) Petitioner’s
`opposition to Patent Owner’s Revised Motion to Amend, Opp. at 12, Patent
`Owner fails to cite or discuss Sienna, see generally Revised MTA; Reply.
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`the percentage+range limitation. See Sienna, 888 F.3d at 1372. Patent
`Owner has not persuasively identified any portion of the original disclosure
`that attributes any significance to any mesh sieve number range other than
`3–35, and Patent Owner has not persuasively identified any portion of the
`original disclosure that attributes any significance to having a particular
`proportion of particles (e.g., 61 wt%) falling within some narrower mesh
`sieve number range. See Ex. 1021 (Coffield Decl.) ¶¶ 23–24.
`Patent Owner argues that the original disclosure shows “that one of
`the Inventors’ discoveries is that larger refined sugar granules work better.”
`Revised MTA at 9–10. We agree with Patent Owner that the original
`disclosure expresses a preference for large particles, but the original
`disclosure repeatedly identifies mesh sieve numbers 3–35 as corresponding
`to the preferred large sugar particle size range. See, e.g., Ex. 2040 ¶ 16, ¶ 51
`(identifying mesh sieve nos. 45–120 as “smaller than the size preferable for
`use in the present invention” and mesh sieve nos. 3–35 as “an advantageous
`size of particles of sweetener”). Patent Owner does not persuasively identify
`any disclosure indicating that particles larger than the range of mesh sieve
`nos. 3–35 (e.g., 3–20 as recited by proposed substitute claim 23) are
`desirable. See, e.g., Reply Br. at 3 (acknowledging that the original
`disclosure teaches “using ‘large’ sugar in the 3–35 range”).
`In the Reply, Patent Owner asserts that “the Disclosures teach using
`sugar larger than Sugar in the Raw,” which “is at least 75% retained on mesh
`20.” Reply Br. at 3 (citing Ex. 2025 ¶ 31). Paragraph 31 of Exhibit 2025,
`cited by Patent Owner, discloses that “[o]ne reason the sugar works in the
`present invention is the granular size (retained by U.S. mesh sieve 3–35). It
`is like sugar in the raw, but bigger.” Ex. 2025 ¶ 31. That disclosure
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`suggests that mesh sieve nos. 3–35 yield sugar that is bigger than sugar in
`the raw, and—consistent with numerous other portions of the original
`disclosure—that mesh sieve nos. 3–35 provide a desirable sugar size. It
`provides no apparent suggestion to use sugar particles larger than the range
`of mesh sieve nos. 3–35, or to use a particular particle size distribution from
`some narrower subset of mesh sieve numbers within that range.
`Paragraph 31 and numerous other paragraphs throughout both the ’526
`Application and the original disclosure of the ’852 patent plainly and
`repeatedly point to a mesh sieve range of 3 to 35—not a range that would
`yield larger particles, such as 3–20 as recited by proposed substitute
`claim 23. E.g., Ex. 2040 ¶¶ 16, 26, 51, 61, 62, claim 2, claim 7, claim 14;
`Ex. 2025 ¶¶ 10, 25, 31, claim 5, claim 10, claim 14, claim 18, claim 34.
`Patent Owner also states that, “[b]ecause each of the
`percentage+range limitations [of proposed substitute claims 23–25] is well
`within the originally claimed range, each has written description support.”
`Revised MTA at 10–11. Patent Owner appears to be relying on a bright line
`rule that the disclosure of a broader numerical range necessarily provides
`support for a narrower one. See id. We do not agree that any such bright
`line rule exists. See Sienna, 888 F.3d at 1372; see also Ralston Purina, 772
`F.2d at 1575 (“Precisely how close the original description must come to
`comply with the description requirement of 35 U.S.C. § 112 must be
`determined on a case-by-case basis.”). Even accepting Patent Owner’s
`arguments that a person of ordinary skill generally “understands sugar
`particle size distributions” and that “a percentage is a good way to describe
`‘how much’ large sugar works,” Revised MTA at 10–11; Reply Br. at 2, that
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`PGR2019-00045
`Patent 10,071,852 B2
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`fails to show support in the original disclosure for the percentage+range
`limitation.
`Patent Owner also argues that the original disclosure describes
`“working embodiments because all embodiments necessarily include sugar
`size blends,” and that the inventors “knew that blends inherently disclosed as
`part of their invention worked!” Revised MTA at 11. That argument is
`unpersuasive because Patent Owner provides no citation to the original
`disclosure or other evidence that any working example described in the
`original disclosure or the disclosure of a parent application falls within the
`scope of proposed substitute claim 23. See id. Patent Owner’s assertion that
`the named inventors “knew” that particle size ranges other than mesh sieve
`nos. 3–35 would work is unpersuasive because it fails to show that the
`original disclosure itself “conveys to those skilled in the art that the inventor
`had possession of the claimed subject matter as of the filing date.” Ariad,
`598 F.3d at 1351. What may have been in the minds of the inventors is less
`probative than what actually appears in the original disclosure. Id. at 1352
`(“[I]t is the specification itself that must demonstrate possession.”).
`Patent Owner also argues that “the written description requirement
`may be satisfied through disclosure of function and minimal structure,” and
`that the original disclosure shows “that the structure of larger sugar . . .
`results in the function of producing sweet iced tea. From this disclosure, a
`POSA appreciates the Inventors’ knowledge that the percentage+range
`limitations worked.” Revised MTA at 11–12. That argument is not
`persuasive because, even accepting Patent Owner’s position concerning
`structure and function, the original disclosure teaches that sugar retained by
`mesh sieve nos. 3–35 has the structure (i.e., particle size) needed to
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`Patent 10,071,852 B2
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`optimally carry out the function (i.e., sweetening a beverage). E.g.,
`Ex. 2040 ¶ 16. We discern no suggestion in the original disclosure that
`some other range of mesh sieve numbers would be superior structure to
`carry out the function; nor do we discern any suggestion that a particular
`proportion (i.e., 61 wt%) of sugar particles should fall within some narrower
`size range.
`Patent Owner also argues that, because the art is generally predictable,
`“the level of detail required to show possession of the percentage+range
`limitations is low.” Revised MTA at 12. Even accepting that assertion as
`accurate, however, there still must be something in the original disclosure to
`indicate that the inventors were in possession of the recited subject matter as
`of the filing date. See Ariad, 598 F.3d at 1351. For the reasons discussed in
`this decision, on this record, we do not agree with Patent Owner that the
`original disclosure is adequate to show possession of the percentage+range
`limitation of proposed substitute claim 23.
`Patent Owner cites several cases in support of its position that the
`disclosed mesh sieve range of 3–35 is adequate to show possession of the
`percentage+range limitation of proposed substitute claim 23. See generally
`Revised MTA. Each cited case is distinguishable from the circumstances
`present here. In In re Wertheim, a claimed solids content range of “at least
`35%” (i.e., no upper boundary) was not supported by a disclosure of 25–
`60% solids and specific disclosed examples of 36% and 50%, but a claimed
`solids content range of “between 35% and 60%” was supported by those
`disclosures. 541 F.2d 257, 262–65 (CCPA 1976). Relevant to the outcome
`in Wertheim was that a specifically disclosed example (36%) differed from
`the lower end of the recited range (35–60%) by only 1%. Id. at 264–65
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`(“What those skilled in the art would expect from using 34% solids
`content . . . instead of 35% is a different matter from what those skilled in
`the art would expect from the next adjacent homolog of a compound whose
`properties are disclosed in the specification.”). The disclosed example
`(36%) was a blazemark pointing to 35%. The difference between proposed
`substitute claim 23 and the disclosure at issue in this case (i.e., mesh sieve
`no. 20 (recited by proposed substitute claim 23) vs. mesh sieve no. 35
`(original disclosure)) is more significant than was the difference in
`Wertheim. In any event, in Wertheim the CCPA expressly stated that it was
`not “creating a rule applicable to all description requirement cases involving
`ranges.” 541 F.2d at 264–65.
`In Union Oil Co. of California v. Atlantic Richfield Co., the Federal
`Circuit explaine
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