Ex Parte Valianatos et al

Patent Trial and Appeal BoardAug 26, 2014

12538228 (P.T.A.B. Aug. 26, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte PETER J. VALIANATOS, RAJESH CHEBIYAM, JEREMY J. MANNING, MICHAEL L. STEINER, THOMAS H. WHITESIDES, and MICHAEL D. WALLS __________ Appeal 2012-011956 Application 12/538,2281 Technology Center 1700 ____________ Before TERRY J. OWENS, PETER F. KRATZ, and MICHAEL P. COLAIANNI, Administrative Patent Judges. COLAIANNI, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134 the final rejection of claims 1–14. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). We REVERSE. Appellants’ invention is directed to a method of making capsules, especially capsules intended for use in forming electrophoretic media (Spec. para. [005]). 1 This application is a continuation of application number 10/905,746, appeal number 2008-005785, which was decided June 30, 2009. Appeal 2012-011956 Application 12/538,228 2 Claim 1 is illustrative: 1. A process for encapsulating a water-immiscible phase in a protein coacervate, the process consisting of: forming a coacervate of the protein and a coacervating agent in an aqueous medium; and thereafter, emulsifying the water-immiscible phase in the aqueous medium comprising the coacervate under conditions effective to cause deposition of the coacervate around the water-immiscible phase, thereby forming capsules of the water- immiscible phase surrounded by capsule walls of the coacervate. Appellants appeal the following rejections: 1. Claims 1–7, 9–12, and 14 are rejected under 35 U.S.C. § 103(a) over Webber (US 2002/0180687 A1, published Dec. 5, 2002). 2. Claim 8 is rejected under 35 U.S.C. § 103(a) over Webber in view of Saeki et al. (US 3,855,146, patented Dec. 17, 1974). 3. Claim 13 is rejected under 35 U.S.C. § 103(a) over Webber in view of Pullen et al. (US 7,002,728 B2, patented Feb. 21, 2006). ISSUE Did the Examiner reversibly err concluding that Webber would have suggested the process as recited in claim 1 that consists of the steps of “forming a coacervate of a protein and a coacervating agent in an aqueous medium; and thereafter, emulsifying the water immiscible phase in the aqueous medium”? We decide this issue in the affirmative. FINDINGS OF FACT AND ANALYSES The Examiner’s findings and conclusions regarding Webber are located on pages 4–6 of the Answer. The Examiner finds that Webber does Appeal 2012-011956 Application 12/538,228 3 not disclose forming the coacervate and thereafter emulsifying the water- immiscible phase in the aqueous medium comprising the coacervate (Ans. 5). Regarding the closed transitional language “consisting of,” the Examiner finds that Webber would have rendered such a claim limitation obvious because, although Webber’s emulsifying step begins prior to the coacervate forming step, the emulsifying step continues after the coacervate is formed such that the emulsifying step occurs in the aqueous medium having the coacervate as required by claim 1 (Ans. 4–5). The Examiner concludes that it would have been obvious to modify the order of Webber’s process steps so that the gelatin and acacia (i.e., the coacervate) are first combined in the aqueous medium and then the water-immiscible phase is added along with stirring to form the emulsion because it has been held that selection of any order of process steps is prima facie obvious in the absence of new or unexpected results (Ans. 5). Appellants argue that Webber’s process differs from the claimed invention in more detail than simply the reversal of two steps because Webber’s water-immiscible phase is emulsified in an aqueous phase comprising only gelatin, whereas present claim 1 requires that the water- immiscible phase is emulsified in an aqueous phase comprising a coacervate of gelatin and acacia (App. Br. 15). The transitional phrase “consisting of” limits the claims to only the steps recited in claim 1. In re Gray, 53 F.2d 520, 521 (CCPA 1931) (“Claim 4 uses the term ‘consists’ and is therefore drawn to an alloy of silver an indium without other elements.”). Accordingly, claim 1 requires only two steps: (1) forming a coacervate of the protein and a coacervating agent in an aqueous medium and (2) emulsifying the water-immiscible phase in the Appeal 2012-011956 Application 12/538,228 4 aqueous medium comprising the coacervate around the water-immisicible phase. Claim 1 further requires that the step (2) emulsifying step occur after step (1). The coacervate is described in the Specification and recited in claim 1 as a mixture of a protein and a coacervating agent (Spec. para. [0050]). Webber’s steps of emulsifying a gelatin and water immiscible solution followed by continued emulsification and addition of acacia to the coacervate would not have rendered obvious the “consisting of” language of claim 1 because the emulsification of the gelatin and acacia coacervate which continues after the addition of the acacia is an additional step that is excluded from the claim. Specifically, Webber does not teach or suggest the steps of forming the coacervate of acacia and gelatin and thereafter the step of emulsifying the coacervate and water-immiscible phase. Webber does not form a coacervate of a protein and coacervating agent before emulsifying as required by claim 1. The Examiner finds that Webber, in view of the cited case law, would have rendered obvious reordering the steps of Webber so as to satisfy the process of claim 1. However, Webber’s process includes an emulsification step that begins prior to forming the coacervate and continues during forming the coacervate (i.e., when the acacia and gelatin are mixed). Accordingly, Webber does not teach and would not have suggested forming a coacervate without the preceding and additional emulsification step, which is excluded by the “consisting of” transitional language of the claim and the order of the steps recited in the claim. The Examiner has not explained why such a modification would have been obvious. Appeal 2012-011956 Application 12/538,228 5 On this record, we find that the Examiner has not satisfied the initial burden of establishing a prima facie case of obviousness. We reverse, the Examiner’s § 103 rejections. DECISION The Examiner’s decision is reversed. ORDER REVERSED cdc