Givaudan, S.A.

Patent Trials and Appeals Board

Dec 31, 2020

2020001666 (P.T.A.B. Dec. 31, 2020)

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.
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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
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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.
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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
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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
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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
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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
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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.
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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