Upfield US Inc.

Patent Trials and Appeals Board

Sep 30, 2020

14582483 - (D) (P.T.A.B. Sep. 30, 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.
14/582,483 12/24/2014 Cornelia Sophia Maartje van den BERG 039676.00053 7322
68543 7590 09/30/2020
Arent Fox LLP - Los Angeles
555 West Fifth Street
48th Floor
Los Angeles, CA 90013
EXAMINER
PRAKASH, SUBBALAKSHMI
ART UNIT PAPER NUMBER
1793
NOTIFICATION DATE DELIVERY MODE
09/30/2020 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):
patentdocket@arentfox.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CORNELIA SOPHIA MAARTJE VAN DEN BERG,
ECKHARD FLOTER, GERRIT JAN W. GOUDAPPEL,
JOHANNES JOZEF M. JANSSEN, XAVIER YVES LAUTESLAGER,
GAUTAM SATYAMURTHY NIVARTHY, and
FRANK EMILE WUBBOLTS
Appeal 2019–005376
Application 14/582,483
Technology Center 1700
BEFORE ROMULO H. DELMENDO, BEVERLY A. FRANKLIN, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.
FRANKLIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 22–32. We have jurisdiction under
35 U.S.C. § 6(b).

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Unilever. Appeal
Br. 3.
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We AFFIRM.
CLAIMED SUBJECT MATTER
Claim 22 is illustrative of Appellant’s subject matter on appeal
and is set forth below:
22. A process for the preparation of an edible dispersion
comprising a) oil and structuring agent and b) an aqueous phase,
comprising forming the dispersion by mixing i) oil, ii) solid
structuring agent particles comprising edible fat having a
microporous structure of submicron size particles, and iii) the
aqueous phase, wherein the solid structuring agent particles were
made by (I) preparing a homogeneous mixture of A) structuring
agent and B) liquefied gas or supercritical gas, at a pressure of 5-
40 MPa and (II) expanding the mixture through an orifice, in
which the structuring agent was solidified, said edible dispersion
comprising a water-in oil emulsion.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Weidner et al. US 6,056,791 May 2, 2000
van den Berg et al. US 8,025,913 B2 Sept. 27, 2011
van den Berg et al. US 8,940,355 B2 Jan. 27, 2015
N. Garti et al., “Stabilization of Water-in-Oil Emulsions by
Submicrocrystalline α-Form Fat Particles” JAOCS, vol. 75, no. 12 (1998).

P. Munuklu et al., “Particle formation of an edible fat (rapeseed70) using
the supercritical melt micronization (ScMM) process”, J. of Supercritical
Fluids, 40 pp 433–442 (2007).
THE REJECTIONS
1. Claims 22–32 are rejected under pre-AIA 35 USC § 103(a) as
being unpatentable over Garti in view of Weidner as evidenced by a review
in Munuklu, both cited by the applicants in an IDS filed 8/5/2016.
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2. Claims 22–32 are rejected on the ground of nonstatutory double
patenting as being unpatentable over claims 1–30 of U.S. Patent No.
8,025,913 B2 and claims 1–38 of US Patent No. 8,940,355 B2.2
OPINION
We review the appealed rejections for error based upon the issues
Appellant identifies, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential)
(cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)
(“[I]t has long been the Board’s practice to require an applicant to identify
the alleged error in the examiner’s rejections.”). After considering the
argued claims and each of Appellant’s arguments, we are not persuaded of
reversible error in the appealed rejections.
Appellant does not make separate arguments in support of
patentability of any particular claim or claim grouping. Accordingly, the
claims subject to each ground of rejection will stand or fall with claim 22.
See 37 C.F.R. § 41.37(c)(iv).
We refer to pages 3–6 of the Answer regarding the Examiner’s
statement of the rejection for Rejection 1.
Beginning on page 5 of the Appeal Brief, Appellant states that the
Examiner asserts (Final Act. 7) that a process for making the structuring
agent particles is not considered in determining patentability because the
claimed method is applicable to making a water-in-oil emulsion with
structuring particles made by any other method. Appellant argues that the
method of making the structuring agent particles recited in the “wherein”

2 This rejection is summarily affirmed as Appellant states a terminal
disclaimed will be filed upon indication of allowability. Appeal Br. 9.
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clause of claim 22 should be accorded full weight. Implicit in the
Examiner’s position is that this aspect of the claim is a product-by-process
limitation for an ingredient that is used in the claimed process rather than
additional process steps defining the claimed process for preparing an edible
dispersion, Hence, it is the product itself, which is used in the claimed
process as an ingredient for preparing an edible dispersion, that must be
shown to be different to impart a meaningful difference in terms of the
claimed process relative to the prior art process. “Where a product-by-
process claim is rejected over a prior art product that appears to be identical,
although produced by a different process, the burden is upon the applicants
to come forward with evidence establishing an unobvious difference
between the claimed product and the prior art product.” Cf. In re Marosi,
710 F.2d 799, 803 (Fed. Cir. 1983); In re Thorpe, 777 F.2d 695, 697 (Fed.
Cir. 1985) (“If the product in a product-by-process claim is the same as or
obvious from a product of the prior art, the claim is unpatentable even
though the prior product was made by a different process.”). In the instant
case, Appellant has not come forward with such evidence so we are
unpersuaded by this line of argument.
Appellant next argues that aside from the above-mentioned issue, the
claims still recite that the particles have a microporous structure
of submicron particles, and that the Examiner has not established that Garti’s
particles have a microporous structure of submicron particles or what is
exactly their flash cooling process. Appeal Br. 6–7.
Appellant also argues that the rejection combines Garti with Weidner
but that this combination is based on hindsight from Appellant’s disclosure.
Appellant argues that Weidner discloses a process for preparing particles or
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powders, but asserts that the Examiner points to no teaching that it should be
used in the present process wherein particles stabilize an emulsion. Appeal
Br. 8.
Appellant also argues that Garti produces solid fat in oil whereas
Weidner produces particles or powders. Appeal Br. 8. Appellant argues that
it is not seen how these references could be combined without negating the
Garti process, asserting that Weidmar teaches a process wherein the solid
particles produced are free of solvent (Weidner, col. 7, l. 27). Id.
We are unpersuaded by the aforementioned arguments. As stated by
the Examiner on page 8 of the Answer, Garti discloses submicron sized
particles of a solid structuring agent (Garti, p. 1828, col. 1), and further
discloses that submicron particles (less than 0.1 micron), with narrow size
distribution and as spherical as possible in shape, would need to be obtained
in the oil phase in order to achieve good anchoring, with good wetting, at the
water interface in making a water-in-oil emulsion with such particles (Garti,
p. 1828, col. 1). Ans. 8. We agree.
The Examiner further states that Garti discloses a flash cooling step in
making such particles (Garti, p. 1829), which is known to be achieved by
various methods. Ans. 8. The Examiner states that alternative methods for
making microparticles of edible fat wherein submicron particles with narrow
size distribution are obtained are taught in Weidner. Ans. 8. The Examiner
states that Weidner teaches a method wherein liquefied gas or supercritical
fluids, such as carbon dioxide in a melt of a fat or fat derivative, is expanded
through an orifice under suitable conditions to obtain particles with desired
properties. The Examiner states that Weidner further discloses that having a
gas stream along with a sprayed liquid stream of supercritical gas and fat/fat-
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derivative produces smaller particles than those obtained with the sprayed
liquid stream alone (Weidmar, col. 8 ll. 3–16, working examples 4 and 8).
Ans. 8–9. We agree.
Regarding Appellant’s aforementioned argument that combining the
disclosures in Garti and Weidner is based on hindsight reasoning, we are
unpersuaded by this line of argument. We refer in part to the Examiner’s
response made on pages 9–10 of the Answer. Therein, the Examiner
explains that Garti discloses submicron sized particles of a solid structuring
agent (page 1828 column 1), and further discloses that submicron particles
(less than 0.1 micrometer), having narrow size distribution, and being as
spherical as possible in shape, would need to be obtained in the oil phase in
order to achieve good anchoring, with good wetting, at the water interface in
making a water-in-oil emulsion with such particles. The Examiner states that
Garti thus recognizes the criticality of obtaining submicron sized particles
with narrow size distribution and being spherical in shape for application as
a structuring agent in water-in-oil emulsions. The Examiner reiterates that
alternative methods to make microparticles of edible fat wherein submicron
particles having narrow size distribution and a range of morphological
characteristics are obtained, are taught by Weidner. Ans. 10. The Examiner
states that Weidner teaches the suitability of the method for use in
particulating temperature sensitive materials. Ans. 10. Weidner teaches that
in conventional processes, the use of considerable heating is
disadvantageous. Weidner, col. 1, ll. 20–25.
Regarding Appellant’s aforementioned argument that Weidner
discloses solid particles that are “free of solvent” (Weidmer, col. 7, l. 27),
the Examiner explains that this particular teaching is in connection with the
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advantages of Weidner’s process, in that unlike a conventional
process involving the use of solvents, a process of producing particles from
gas saturated solutions (PGSS) does not require a step of solvent recovery
and disposal. Ans. 11.

CONCLUSION
We affirm the Examiner’s decision.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
22–32 103(a) Garti, Weidner,
Munuklu
22–32
22–32 Nonstatutory
Double Patenting
22–32
Overall
Outcome
22–32
TIME PERIOD FOR RESPONSE
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)(1)(iv).
AFFIRMED