Givaudan, S.A.Download PDFPatent Trials and Appeals BoardDec 31, 20202020001666 (P.T.A.B. Dec. 31, 2020) Copy Citation 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. 14/902,496 12/31/2015 Aloysius Lambertus DOORN GIV.P30514 3827 23575 7590 12/31/2020 CURATOLO SIDOTI CO., LPA 24500 CENTER RIDGE ROAD, SUITE 280 CLEVELAND, OH 44145 EXAMINER PRAKASH, SUBBALAKSHMI ART UNIT PAPER NUMBER 1793 NOTIFICATION DATE DELIVERY MODE 12/31/2020 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): docket@patentandtm.com pair@patentandtm.com sidoti@patentandtm.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte ALOYSIUS LAMBERTUS DOORN, MICHAEL CHANEY, JOSHUA ANDREW HAGEN, DAVID SIEGEL, NATALIA NIKOLOVA, and STEPHEN FENIMORE ____________ Appeal 2020-001666 Application 14/902,496 Technology Center 1700 ____________ Before MICHAEL P. COLAIANNI, MONTÉ T. SQUIRE, and JANE E. INGLESE, Administrative Patent Judges. INGLESE, Administrative Patent Judge. DECISION ON APPEAL Appellant1 requests review under 35 U.S.C. § 134(a) of the Examiner’s final rejection of claims 1–7 and 9–18.2 We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the word “Appellant” to refer to the “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies Givaudan S.A. as the real party in interest. Appeal Brief filed August 12, 2019 (“Appeal Br.”) at 3. 2 Final Office Action entered February 25, 2019 (“Final Act.”) at 1. Appeal 2020-001666 Application 14/902,496 2 CLAIMED SUBJECT MATTER Appellant claims an active-containing microparticle adapted to release the active in a desired end-use (independent claim 1), and a method of providing appropriately-releasable active in a consumable composition environment subject to water and/or heating (independent claim 11). Appeal Br. 5–6. Claims 1 and 11 illustrate the subject matter on appeal, and read as follows: 1. An active-containing microparticle adapted to release the active in a desired end-use, comprising (a) an active-containing core, optionally formed on an inner core, comprising a continuous hydrophilic medium in which at least one active is dissolved or is dispersed as particles; (b) an active-free barrier layer, surrounding completely the core; and (c) surrounding the barrier layer, a layer of polymeric material having a solubility in water at 25°C of 0.1 % by weight maximum; the barrier layer consisting of a material suitable for use as the continuous hydrophilic medium of the core, and which is solid in the conditions of the desired end-use, selected from long chain polysaccharides, short chain polysaccharides, substituted polysaccharides, modified starches, emulsifying gums, protein hydrocolloids and substituted polysaccharide hydrogels. 11. A method of providing appropriately-releasable active in a consumable composition environment subject to water and/or heating, comprising adding to the consumable composition active in microparticle form, the microparticle, comprising (a) an active-containing core, optionally formed on an inner core, comprising a continuous hydrophilic Appeal 2020-001666 Application 14/902,496 3 medium in which at least one active is dissolved or dispersed particles; (b) an active-free barrier layer, surrounding completely the core; and (c) surrounding the barrier layer a layer of polymeric material having a solubility in water at 25°C of 0.1 % by weight maximum; the barrier layer consisting of a material suitable for use as the continuous hydrophilic medium of the core, and which remains solid when subject to water and/or heating, selected from long chain polysaccharides, short chain polysaccharides, substituted polysaccharides, modified starches, emulsifying gums, protein hydrocolloids and substituted polysaccharide hydrogels. Appeal Br. 20–21 (Claims Appendix) (emphasis added). REJECTIONS The Examiner maintains the following rejections in the Examiner’s Answer entered November 29, 2019 (“Ans.”): I. Claims 1, 2, 5–7, and 9–11 under 35 U.S.C. § 103 as unpatentable over Uhlemann3 in view of So;4 and II. Claims 3, 4, and 12–18 under 35 U.S.C. § 103 as unpatentable over Uhlemann in view of So and Burger.5 FACTUAL FINDINGS AND ANALYSIS Upon consideration of the evidence relied upon in this appeal and each of Appellant’s contentions, we reverse the Examiner’s rejections of 3 US 2001/0021404 A1, published September 12, 2001. 4 US 6,174,554 B1, issued January 16, 2001. 5 US 2007/0031582 A1, published February 8, 2007. Appeal 2020-001666 Application 14/902,496 4 claims 1–7 and 9–18 under 35 U.S.C. § 103, for the reasons set forth in the Appeal and Reply Briefs, and below. Independent claims 1 and 11 both recite, in part, a microparticle comprising a core comprising a continuous hydrophilic medium in which at least one active is dissolved or dispersed as particles, an active-free barrier layer that completely surrounds the core and consists of a material suitable for use as the continuous hydrophilic medium of the core, and a layer of polymeric material that surrounds the barrier layer. The Examiner finds that Uhlemann discloses granules (microparticles) comprising a core comprising tomato flavor (active) dissolved in a matrix of gum arabic and maltodextrin (hydrophilic medium), a lipid layer (active-free barrier layer), and a layer of modified cellulose (polymeric material). Final Act. 2 (citing Uhlemann ¶¶ 13, 21, 42, Example 1). The Examiner finds that “Uhlemann does not specifically disclose an inner barrier layer that is not a lipid.” Final Act. 2. The Examiner finds, however, that So discloses encapsulating an oil- based flavor (active) with a continuous hydrophilic material (core), and coating the encapsulated oil-based flavor with fat, gum, maltodextrin, or mixtures thereof, to delay release of the oil-based flavor. Final Act. 2 (citing So col. 1, ll. 35–44). The Examiner finds that So thus “discloses interchangeably using fat and hydrophilic materials or combinations thereof in forming a coating to provide delayed release of an active.” Final Act. 3 (citing So col. 2, ll. 61–62). The Examiner finds that Table 2 of So “compares the properties of a hydrophilic polysaccharide (carrageenan, hydrophilic) coating layer versus lipid coating layer (Capol 173), for a fat based flavor in terms of surface oil content; and the disclosure further Appeal 2020-001666 Application 14/902,496 5 reports the polysaccharide barrier as being more effective in delaying loss of volatile flavor compounds.” Final Act. 4 (citing So col. 4, ll. 61–65). In view of these disclosures in So, the Examiner concludes that “[i]t would have been obvious to one of ordinary skill in the art to have modified a particle in Uhlemann with a polysaccharide layer in place of a fat layer, as disclosed in So, to obtain desired controlled release properties with a reasonable expectation of successfully preventing loss of volatile compounds form the flavor in the core.” Final Act. 4. On the record before us, however, for reasons express by Appellant (Appeal Br. 8–13) and discussed below, the Examiner does not establish that the relied-upon disclosures of Uhlemann and So would have suggested a microparticle comprising an active-free barrier layer that completely surrounds a core and consists of a material suitable for use as a continuous hydrophilic medium for the core, as required by claims 1 and 11. Uhlemann discloses protecting substances that decompose in a warm, aqueous environment and are readily volatile, such as flavorings, to prevent release of the flavorings during heating and during a hold time at high temperatures, and to allow release of the flavorings in a controlled manner during cooling. Uhlemann ¶¶ 12, 19. Uhlemann discloses achieving this protection against heat and release during cooling by bonding the flavoring to a hydrophilic carrier to form a solid core, applying a layer of hydrophobic material to the core, applying a modified cellulose coating to the hydrophobic material layer that forms a thermoreversible gel, and applying a second layer of hydrophobic material to the modified cellulose coating. Uhlemann ¶¶ 13, 22, 25, 31, and 34. Uhlemann discloses that the “inner Appeal 2020-001666 Application 14/902,496 6 hydrophobic layer is necessary to prevent migration of hydrophilic substances from the core.” Uhlemann ¶ 34. So discloses a dry food product comprising a polysaccharide- encapsulated oil-based flavor having “an edible coating thereon in an amount effective to delay release of the flavor during storage” under household conditions. So col. 1, ll. 37–40; col. 2, ll. 26–28. So discloses that the “edible coating preferably comprises a lipid, a gum, such as carrageenan gum, or mixtures thereof.” So col. 1, ll. 41–42. So discloses that “[p]referably, the flavor is released within about ten seconds in hot (i.e., 60 to 80° C) water.” So col. 2, ll. 25–26. As discussed above, the Examiner’s conclusion that it would have been obvious to substitute Uhlemann’s (inner) hydrophobic layer with a hydrophilic layer as disclosed in So is based on So’s disclosure of “interchangeably using fat and hydrophilic materials or combinations thereof in forming a coating to provide delayed release of an active.” Final Act. 2 (citing So col. 1, ll. 35–44). Although So does disclose that lipids and gums may be used interchangeably to form a coating on a polysaccharide- encapsulated oil-based flavor to delay release of the flavor during storage under household conditions, on the record before us, the Examiner does not provide objective evidence establishing the art-recognized equivalence of using lipids and gums to form an inner layer as disclosed in Uhlemann that is applied to a hydrophilic core to prevent migration of hydrophilic substances from the core. See In re Christensen, 82 F.2d 715, 716 (CCPA 1936); see also Graver Tank & Mfg. Co. v. Linde Air Prods. Co., 339 U.S. 605, 609 (1950) (“In determining equivalents, things equal to the same thing may not be equal to each other . . . . Consideration must be given to the Appeal 2020-001666 Application 14/902,496 7 purpose for which an ingredient is used in a patent . . . and the function which it is intended to perform.”); see also MPEP § 2144.06(II) (“In order to rely on equivalence as a rationale supporting an obviousness rejection, the equivalency must be recognized in the prior art, and cannot be based on applicant’s disclosure or the mere fact that the components at issue are functional or mechanical equivalents.”) (citing In re Ruff, 256 F.2d 590 (CCPA 1958)). As Appellant argues (Appeal Br. 9), and as discussed above, Uhlemann explicitly discloses that an “inner hydrophobic layer is necessary to prevent migration of hydrophilic substances from the core.” Uhlemann ¶ 34. The Examiner does not address this disclosure in Uhlemann and explain why, despite this explicit disclosure of the necessity of forming Uhlemann’s inner layer of a hydrophobic material to prevent migration of hydrophilic substances from Uhlemann’s core, one of ordinary skill in the art nonetheless would have considered forming Uhlemann’s inner layer of a hydrophilic gum to be interchangeable with forming the inner layer of a hydrophobic material. And although the Examiner asserts that Table 2 of So “reports the polysaccharide barrier as being more effective in delaying loss of volatile flavor compounds” (Final Act. 4 (citing So col. 4, ll. 61–65), So goes on to indicate that the results of the subject experiments “also showed that sample D (i.e., the lipid coating) had delayed flavor release under heating.” So col. 5, ll. 1–3. In view of this disclosure, the Examiner does not explain why one of ordinary skill in the art reasonably would have used a hydrophilic polysaccharide to form Uhlemann’s inner layer, rather than a hydrophobic Appeal 2020-001666 Application 14/902,496 8 lipid, when Uhlemann’s objective is to protect substances from release during heat treatment. On the record before us, therefore, the Examiner does not provide sound technical reasoning supported by objective evidence establishing that one of ordinary skill in the art reasonably would have expected that a hydrophilic gum as discussed in So could be substituted for Uhlemann’s hydrophobic inner layer to produce a microparticle that would successfully protect a volatile flavoring from loss during heating at high temperatures, particularly in view of So’s disclosure that flavor is preferably released from the gum coating on So’s product within about ten seconds of heating in hot water. In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984) (“The mere fact that the prior art could be so modified would not have made the modification obvious unless the prior art suggested the desirability of the modification.”); see also Belden v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“[O]bviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of the prior art to arrive at the claimed invention.”). We, accordingly, do not sustain the Examiner’s rejection of claims 1 and 11, and rejections of claims 2–7, 9, 10, and 12–18 , which each depend from either claim 1 or claim 11, under § 103.6 6 The Examiner does not rely on Burger for any disclosure that remedies the deficiencies of the Examiner’s reliance on Uhlemann and So. Final Act. 5– 7. Appeal 2020-001666 Application 14/902,496 9 CONCLUSION Claims Rejected 35 U.S.C. § Reference(s)/ Basis Affirmed Reversed 1, 2, 5–7, 9–11 103 Uhlemann, So 1, 2, 5–7, 9–11 3, 4, 2–18 103 Uhlemann, So, Burger 3, 4, 12–18 Overall Outcome 1–7, 9–18 REVERSED Copy with citationCopy as parenthetical citation