Ex Parte Gadient et al

Patent Trials and Appeals Board

Jan 31, 2019

13976696 - (D) (P.T.A.B. Jan. 31, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/976,696 11/04/2013
23117 7590 02/04/2019
NIXON & V ANDERHYE, PC
901 NORTH GLEBE ROAD, 11 TH FLOOR
ARLINGTON, VA 22203
FIRST NAMED INVENTOR
Martin Gadient
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
GPK-4662-2579 3032
EXAMINER
KARPINSKI, LUKE E
ART UNIT PAPER NUMBER
1616
NOTIFICATION DATE DELIVERY MODE
02/04/2019 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):
PTOMAIL@nixonvan.com
pair_nixon@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARTIN GADIENT, THOMAS LINDEMANN,
MISCHA SCHW ANINGER, KARL MANFRED VOELKER,
KAI URBAN, and STEPANIE KIRCHEN
Appeal2018-005058
Application 13/976,696
Technology Center 1600
Before JEFFREYN. FREDMAN, MICHAEL J. FITZPATRICK, and
DAVID COTTA, Administrative Patent Judges.
FITZPATRICK, Administrative Patent Judge.
DECISION ON APPEAL
Martin Gadient, Thomas Lindemann, Mischa Schwaninger, Karl
Manfred Voelker, Kai Urban, and Stefanie Kirchen ("Appellants") 1 appeal
under 35 U.S.C. § 134(a) from the Examiner's final decision rejecting
claims 1--4 and 13-16. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 The real party in interest is identified as DSM IP Assets B.V. Appeal
Br. 3.
Appeal2018-005058
Application 13/976,696
STATEMENT OF THE CASE
The Specification
The claimed invention "relates to improved vitamin E formulations as
well as to the production of such formulations." Spec. 1 :3--4. In particular,
it relates to "powderous" formulations of vitamin E. Id. at 1: 16.
The specification explains that "[ d]ust explosions are a huge risk in
any processes wherein powders are used," including vitamin E production.
Id. at 1 :21; see also id. at 1: 16-17 ("Vitamin E formulations in powderous
forms do have explosion hazard due to the small particle size of the
powder.").
The specification states that there was "a need for powderous
formulations [ of vitamin E] with low explosion hazard," and that the
inventors "found that powderous vitamin E formulations comprising one or
more specific compounds and a carrier material do have a low risk of
explosion." Id. at 1:21-22, 2:1-2.
The Rejected Claims
Claims 1--4 and 13-16 stand rejected. Final Act. 1. 2 Independent
claim 13 is representative and reproduced below.
13. A powderous formulation comprising:
(i) at least 40 wt-%, based on the total weight of the
powderous formulation, of a porous particulate carrier material,
(ii) at least 50 wt-%, based on the total weight of the
powderous formulation, of vitamin E coated onto the porous
particulate carrier material, and
2 Claims 5-11 were cancelled, and claim 12 was withdrawn from
consideration. Appeal Br. 24; Final Act. 1.
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Application 13/976,696
(iii) 0.5 wt-%- 8 wt-%, based on the total weight of the
powderous formulation, of sodium chloride as an auxiliary
compound having an average particle size ( d 0.5) in the
formulation of 54 µm to 100 µm, wherein
the powderous formulation has a minimum ignition
energy (MIE) value according to EN 13821:2002 of30-I00
mJ.
Appeal Br. 24.
Whereas claim 13 recites "sodium chloride as an auxiliary
compound," claim 1 permits any one of a Markush group of possible
auxiliary compounds. Id. at 22-23. Otherwise, the claims are identical.
The Appealed Rejection
The following rejection is before us for review: claims 1--4 and 13-16
under 35 U.S.C. § 103 as unpatentable over Deshpande, 3 Trubiano, 4 Batra, 5
Spectrum, 6 Barton, 7 and Nagy. 8
DISCUSSION
The preamble of each of independent claims 1 and 13 recites: "A
powderous formulation." The claims go on to recite the components of the
powderous formulation and specify amounts of components "based on the
total weight of the powderous formulation." We determine that the
3 US 9,247,765 B2, issued Feb. 2, 2016 ("Deshpande").
4 US 6,086,917, issued July 11, 2000 ("Trubiano").
5 US 2001/0014352 Al, published Aug. 16, 2001 ("Batra").
6 Material Safety Data Sheet, SPECTRUM 1-6 (2008),
www.spectrumchemical.com/MSDS/V3151.pdf ("Spectrum").
7 John Barton, Dust Explosion Prevention and Protection, INST. CHEM.
ENGINEERS 50-57, 60-61 (2002) ("Barton").
8 John Nagy & Harry C. Verakis, Development and Control of Dust
Explosions~ TECHNOLOGY AND ENGINEERING 51---61 (June 1983) ("Nagy").
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Appeal2018-005058
Application 13/976,696
preambles of claims 1 and 13 should be construed as limiting. See Eaton
Corp. v. Rockwell Int'! Corp., 323 F.3d 1332, 1339 (Fed. Cir. 2003) ("When
limitations in the body of the claim rely upon and derive antecedent basis
from the preamble, then the preamble may act as a necessary component of
the claimed invention.").
The Examiner correctly treated the preamble as limiting and found
that "Deshpande teaches beadlets which reads on a powder (abstract) for
tableting (col. 16)." Final Act. 4.
Appellants argue against the rejection, in part, because the asserted
combination does not teach a "powderous formulation." More specifically,
Appellants argue that Deshpande "relates to a formulation suitable for
making a tablet ( e.g., a compressed formulation)." Appeal Br. 10 ( citing
Deshpande 5:12-18).
First, absent further evidence or explanation, the record does not
support the Examiner's position that Deshpande' s beadlets read on a powder
as Deshpande itself distinguishes between beadlets and powder ( as well as
granules). See, e.g., Deshpande 2: 1 7-20 ("Some options like spray dried
powders, granules or gelatin beadlets work only with select products, and do
not necessarily function well under tabletting systems."), 2:33-37 ("Such
oily products are difficult to use except in the smallest of doses in dry
delivery forms such as tablets without the use of specialized technologies to
convert them to powders, granules or beadlets.").
In addition to asserting that beadlets read on powder, the Examiner
cited column 16 of Deshpande (see Appeal Br. 10), which does discuss a
"powder." The relevant portion of Deshpande column 16 states:
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Appeal2018-005058
Application 13/976,696
The beadlets of present invention (Examples 1--4) 32 g were
mixed with dicalcium phosphate 40 g, microcrystalline
cellulose 20 g, sodium starch glycolate 2 g, hydroxypropyl
cellulose 3 g, aerosil 1 g and talcum 1 g. After uniform
blending the powder mixture was compressed into tablets of
500 mg weight with hardness of 10 kg/ cm2 .
Deshpande 16:27-32. This passage, which is part of "Example 9 ," teaches a
powder as an intermediate step, after the production of beadlets and prior to
the production of tablets.
Appellants' claims encompass powderous formulations regardless of
whether they are a temporary or intermediate substance or a final product.
However, the Examiner's bare citation to column 16 without explanation is
insufficient. This is particularly so as the Examiner offered a different ( and
unsupported) explanation for how the prior art allegedly taught a
"powderous formulation," i.e., that "Deshpande teaches beadlets which
reads on a powder." Final Act. 4.
The Examiner, in the Answer, ultimately did discuss the concept of
reading the "powderous formulation" limitation onto an intermediate
substance, stating:
[O]ne of ordinary skill in the art is well aware that tablets are
most commonly made by preparing a powder mixture of the
desired components and then compressing said powder mixture
into a tablet. Therefore any reference drawn to a tablet
formulation reads on a powder formulation as well.
Ans. 3. However, the first sentence does not cite to any evidence in support.
Further, even assuming the first sentence is true, the conclusion set forth in
the second sentence would not follow it. It is too broad of a conclusion.
Further, claim 1 requires that "at least 50 wt-%, based on the total
weight of the powderous formulation, of vitamin E coated onto the porous
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Application 13/976,696
particulate carrier material." Although Deshpande teaches beadlets that may
comprise up to 50 wt% of lipophilic nutrient such as vitamin E (see
Deshpande 6: 1-2), as discussed above, the beadlets are not a powderous
composition. And, although Deshpande discloses blending a mixture of
beadlets and additional ingredients into a "powder mixture" (see id. at
16:27-32) the Examiner does not establish that 50% of this entire
composition is composed of vitamin E. Nor does the Examiner provide
adequate evidence or reasoning to increase the amount of vitamin E to result
in 50% of the entire composition. See Ans. 3 ("It is common in the
nutraceutical field to produce vitamin tablets that contain only one vitamin,
therefore it would have been obvious to one of ordinary skill in the art to
produce the powder and tablets of Deshpande with 50% vitamin E as the
only lipophilic nutrient." (no citations provided)).
DECISION
For the reasons discussed, we reverse the Examiner's rejections.
REVERSED
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