Ex Parte Verkoeijen et al

Patent Trial and Appeal Board

Mar 28, 2018

12812772 (P.T.A.B. Mar. 28, 2018)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/812,772 10/27/2010 Daniel Verkoeijen BHD-4804-0047 1047
23117 7590 03/30/2018
NIXON & VANDERHYE, PC
901 NORTH GLEBE ROAD, 11TH FLOOR
ARLINGTON, VA 22203
EXAMINER
WARDEN, JILL ALICE
ART UNIT PAPER NUMBER
1798
NOTIFICATION DATE DELIVERY MODE
03/30/2018 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 DANIEL VERKOEIJEN, RICHARD ZAMOLO, ARJEN SEIN,
and GERARDUS JOHANNES FRANCISCUS SMOLDERS1
Appeal 2017-003746
Application 12/812,772
Technology Center 1700
Before BEVERLY A. FRANKLIN, MARKNAGUMO, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
Opinion for the Board by FRANKLIN, Administrative Patent Judge.
Opinion concurring by NAGUMO, Administrative Patent Judge.
FRANKLIN, Administrative Patent Judge.
DECISION ON APPEAL
1 Appellants identify the real party in interest as DSM IP Asse Aop,
Appeal 2017-003746
Application 12/812,772
Appellants request our review under 35 U.S.C. § 134 of the Examiner’s
decision rejecting claims 1 and 2. We have jurisdiction over the appeal under 35
U.S.C. § 6(b).
STATEMENT OF THE CASE
Claim 1 is illustrative of Appellants’ subject matter on appeal and is set
forth below (reproduced from the Claims Appendix on page 10 of the Appeal
Brief):
1, A method for obtaining a spray-dried oil-in-water
emulsion which after redispersion in an aqueous medium has at least 75% by
volume of the redispersed oil droplets in a particle size which is smaller or equal
to the maximum particle size of the original oi-in-water emulsion and wherein at
least 95% of the particles of the oil-in-water emulsion before spray drying has a
particle size of < 1pm, wherein the method comprises the steps of:
(a) providing an oii-in-water emulsion comprising a nen-polar lipid and a lipidic
emulsifier in a weight ratio of the non-polar lipid to the lipidic emulsifier
from 10:1 to 60:1,
(b) adding a non-lipid carrier to sard oil-in-water emulsion and obtaining an oil-
in-water/carrier mixture, wherein the non-lipid earner is at ieast one
selected from the group consisting of starch, modified starch, maltodextrin,
giucose syrup, whey protein, soy protein, casein, gum, pectin, xantban,
carrageenan and oiigofruefoss,
ic) homogenizing the obtained oil-in-water/carrier mixture, and
(d) spray drying the obtained homogenized oil-in-water/carrier mixture to
thereby obtain a spray-dried oil-in-water emulsion, wherein
steps (a) and (b) are practiced by providing the oil-in-water emulsion and the
non-lipid carrier in amounts such that the resulting spray-dried oil-in-water
emulsion comprises from 5 wt.% to 60 wt.% of an oil phase, from 60 wt,%
to 95 wt.% of the non-lipid carrier and from 6 wt.% to 5 wt.% of water.
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Application 12/812,772
The Examiner relies on the following prior art references as evidence of
unpatentability:
Suzuki et al. US 3,873,720 Mar. 25, 1975
(hereafter “Suzuki”)
Buddemeyer et al. US 4,242,364 Dec. 30, 1980
(hereafter “Buddemeyer”)
Herslof et al. US 6,517,883 B1 Feb. 11, 2003
(hereafter “Herslof’)
THE REJECTIONS
1. Claim 1 is rejected under pre-AlA 35 U.S.C. § 103(a) as being
unpatentable over Buddemeyer in view of Suzuki.
2. Claim 2 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Buddemeyer in view of Suzuki, and further in view of
Herslof.
ANALYSIS
To the extent that Appellants have presented substantive arguments for the
separate patentability of any individual claim on appeal, we will address each
separately consistent with 37 C.F.R. § 41.37(c)(l)(vii).
Upon consideration of the evidence and each of the respective positions set
forth in the record, we find that the preponderance of evidence supports the
Examiner’s findings and conclusion that the subject matter of Appellants’ claims
is unpatentable over the applied art. Accordingly, we affirm each of the
Examiner’s rejections on appeal essentially for the reasons set forth in the Final
Office Action and in the Answer, and add the following for emphasis.
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Application 12/812,772
Rejection 1
The Examiner relies upon Buddemeyer for teaching certain claim elements
as discussed on pages 2—3 of the Answer. The Examiner states that Buddemeyer
is silent regarding providing an oil-in-water emulsion comprising a non-polar
lipid and lipidic emulsifier, then adding a non-lipid carrier to the oil-in-water
emulsion, in that order. Ans. 3.
The Examiner relies upon Suzuki, directed to making a stable, substantially
non-toxic, oil-in-water emulsion, for teaching an aqueous mixture of fat,
carbohydrate, and amino acid that is emulsified with the aid of long-chain fatty
acid and phospholipids. Ans. 4; Suzuki col. 1,11. 5—7. Suzuki discloses that the
long-chain fatty acid or its basic amino acid salt is useful to improve and enhance
the emulsifying ability of phospholipids. Suzuki col. 1,11. 60-62. The Examiner
finds that the emulsification is done at a pressure of more than 300 kg/cm2 to
obtain a stable nutrient fat emulsion in which the fat particles have an average
diameter of less than 0.5 microns. Ans. 4; Suzuki’s Abstract. The Examiner
finds that the emulsion in Suzuki is prepared in a conventional manner (fat,
phospholipids and long-chain fatty acids are dispersed in water). Ans. 4. The
Examiner finds that the aqueous dispersed solution is emulsified, carbohydrate
and amino acids are added to the emulsion, and the aqueous mixture thus
obtained is again emulsified to obtain the nutrient fat emulsion. Ans. 4; Suzuki,
col. 2,11. 38—45.
The Examiner concludes that it would have been obvious to have
modified Buddemeyer by adding water to the fat and emulsifier, followed by
adding the carbohydrate, as taught by Suzuki, to reduce the fat particle size and
stabilize the dried, non-dairy food composition of Buddemeyer because it is a
conventional method known in the emulsion art as shown by Suzuki. Ans. 4.
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Application 12/812,772
With regard to the ranges recited for the amounts of non-polar lipid,
lipid emulsifier, oil phase, non-lipid carrier, and water, the Examiner states
that the disclosed ranges of the non-polar lipid, a lipid emulsifier, oil phase,
non-lipid carrier and water found in Buddemeyer, and the fat particle size
of Suzuki, overlap with the ranges claimed for the respective components
and particle size, and are therefore obvious. Ans. 4.
In response to the Examiner’s rejection, on pages 6—9 of the Appeal Brief,
Appellants present several lines of arguments, including: (1) there is no
guidance in the applied art that suggests the claimed subject matter which
requires a specific order of process steps to ensure oil droplets having a small
particle size, (2) Buddemeyer is completely silent on the requirement of
redispersion, and (3) Suzuki does not refer to spray dried emulsions so there is
no reason to combine with Buddemeyer.
With regard to the argument that there is not any guidance in the applied art
which leads to the limitations of a specific order of process steps to ensure oil
droplets having a small particle size, the Examiner states that Suzuki teaches that
there are several processing steps known in the emulsion art. The Examiner points
out that the primary method in Suzuki adds the carbohydrate to the emulsion (as
Appellants claim), and Suzuki teaches the aqueous dispersed solution is
emulsified, and carbohydrate and amino acids are added to the emulsion. Ans. 7;
Suzuki, col. 2, 11. 38-45. The Examiner states that Suzuki’s method achieves the
small oil droplet size (as Appellants claim), and Suzuki’s objective is to obtain an
emulsion in which the fat particles have an average diameter of less than 0.5
microns. Ans. 7; Suzuki, Abstract.
The Examiner reiterates that, therefore, it would have been obvious to have
added water to the fat and emulsifier, then to have added the carbohydrate, as
taught by Suzuki, because it is a conventional method known in the emulsion art,
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Application 12/812,772
as shown by Suzuki, to reduce the fat particle size and stabilize the dried, non-dairy
food composition of Buddemeyer. Ans. 7.
We agree with the Examiner’s determination of obviousness. Moreover, we
note that Appellants do not adequately contest that Suzuki fails to teach the claimed
order of steps, but, instead, Appellants argue Suzuki teaches another possibility for
the order of process steps. App. Br. 8. Therefore, Appellants have not adequately
explained how the claimed order of steps is patentably distinguishable from the order
of steps recited by the prior art. Notably, no reply brief has been filed to address the
response made by the Examiner.
Regarding Appellants’ argument that Buddemeyer is silent on the
requirement of redispersion, we are unpersuaded of Examiner error for the reasons
presented in the Answer. The Examiner states that the claims are directed to a
method for obtaining a spray dried oil-in-water emulsion. Ans. 8. The Examiner
states the recitation regarding redispersion (lines 1—3 of claim 1) is not considered
an active method step. Ans. 8. The Examiner states that the applied art teaches the
method and ranges of components, and therefore the emulsion of the applied art is
considered capable of achieving this limitation (a spray-dried oil-in-water
emulsion which after redispersion in an aqueous medium has at least 75% by
volume of the redispersed oil droplets in a particle size which is smaller or equal
to the maximum particle size of the original oil-in-water emulsion). Appellants
have not adequately argued otherwise. We add that it is well established that, as held
by the predecessor of our reviewing court:
[I]t is elementary that the mere recitation of a newly discovered
function or property, inherently possessed by things in the prior art, does
not cause a claim drawn to those things to distinguish over the prior art.
Additionally, where the Patent Office has reason to believe that a
functional limitation asserted to be critical for establishing novelty in the
claimed subject matter may, in fact, be an inherent characteristic of the
prior art, it possesses the authority to require the applicant to prove that
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Application 12/812,772
the subject matter shown to be in the prior art does not possess the
characteristic relied on.
Whether the rejection is based on ‘inherency’ under 35 U.S.C.
§ 102, on ‘prima facie obviousness’ under 35 U.S.C. § 103, jointly or
alternatively, the burden of proof is the same, and its fairness is
evidenced by the PTO’s inability to manufacture products or to obtain
and compare prior art products. [Citation omitted].
In re Best, 562 F.2d 1252, 1254-55 (CCPA 1977) (footnote omitted); see also
In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990).
Regarding Appellants’ argument that Suzuki does not refer to spray dried
emulsions and, therefore, there is no reason to combine with Buddemeyer, we agree
with the Examiner’s stated response that Suzuki is being utilized as a general prior
art reference to making emulsions, and whether the emulsion is spray dried or
not, both Buddemeyer and Suzuki are nutrient emulsions and, thus, considered
analogous art. Ans. 8. Appellants have not persuaded us otherwise. We also note
that Appellants also have not provided evidence of criticality regarding the claimed
component ranges.
In view of the above, we affirm Rejection 1. Because Appellants essentially
rely upon the same arguments in Rejection 2 as relied upon for Rejection 1 (Appeal
Br. 8), we also affirm Rejection 2 for the same reasons.
DECISION
Each rejection is affirmed.
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Application 12/812,772
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv).
ORDER
AFFIRMED
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Application 12/812,772
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL
AND APPEAL BOARD
Ex parte DANIEL VERKOEIJEN, RICHARD ZAMOLO, ARJEN SEIN,
and GERARDUS JOHANNES FRANCISCUS SMOLDERS
Appeal 2017-003746
Application 12/812,772
Technology Center 1700
NAGUMO, Administrative Patent Judge, concurring.
Because Appellants have not come forward with credible evidence
and argument demonstrating harmful error in the appealed rejections, I
concur in the judgment.
In my view, Appellants have not shown that a person having ordinary
skill in the art would have considered the teachings of Buddenmeyer and of
Suzuki to be directed to such distinct subject matter that the teachings would
not have been combined in the manner proposed by the Examiner. Perhaps
equivalently, Appellants also have not shown that the reasons the references
select certain materials for certain purposes would not have resulted in a
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Application 12/812,772
reasonable expectation of transferring, successfully, the sequence of process
steps taught by Suzuki to the materials and goals taught by Buddenmeyer.
Our primary role is review of appealed rejections, not examination de
novo. As our reviewing court instructed, “[i]t is not the function of this
court to examine the claims in greater detail than argued by an appellant,
looking for nonobvious distinctions over the prior art.” In re Baxter
TravenolLabs., 952 F.2d 388, 391 (Fed. Cir. 1991)
I therefore concur in the decision to affirm.
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