Ex Parte Badolato Bönisch et al

Patent Trials and Appeals Board

Jun 24, 2019

14236538 - (D) (P.T.A.B. Jun. 24, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/236,538 05/02/2014
23117 7590 06/26/2019
NIXON & V ANDERHYE, PC
901 NORTH GLEBE ROAD, 11 TH FLOOR
ARLINGTON, VA 22203
FIRST NAMED INVENTOR
Gabriela Badolato Bonisch
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
GPK-4662-2798 5245
EXAMINER
DEES, NIKKI H
ART UNIT PAPER NUMBER
1791
NOTIFICATION DATE DELIVERY MODE
06/26/2019 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 GABRIELA BADOLATO BONISCH and HANSJOERG GRASS 1
Appeal 2018-008511
Application 14/236,538
Technology Center 1700
Before CATHERINE Q. TIMM, BEVERLY A. FRANKLIN, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.
FRANKLIN, Administrative Patent Judge.
DECISION ON APPEAL
1 Appellant identifies the real party in interest as DSM IP ASSETS B.V.
Appeal 2018-008511
Application 14/236,538
Appellants request our review under 35 U.S.C. § 134(a) of the Examiner's
decision rejecting claims 1, 2, 4--6, 10-11, 17-21 and 23-24. We have jurisdiction
over the appeal under 35 U.S.C. § 6(b ).
We AFFIRM.
STATEMENT OF THE CASE
Claim 1 is illustrative of Appellants' subject matter on appeal and is set forth
below:
1. An emulsion comprising:
1.5 to 4 wt%, based on the total weight of the emulsion, of at least one
carotenoid, and
3 to 57 wt%, based on the total weight of the emulsion, of an emulsifier
mixture comprising emulsifiers (a) and (b ), wherein:
emulsifier (a) comprises 80 to 98 wt-%, based on the total weight of the
emulsifier mixture, of at least one polyoxyethylene sorbitan monofatty acid ester,
and
emulsifier (b) comprises 2 to 20 wt-%, based on the total weight of the
emulsifier mixture, of at least one emulsifier other than polyoxyethylene sorbitan
mono fatty acid ester having a hydrophilic lipophilic balance (HLB) of from 6 to 7,
3 to 8 wt%, based on the total weight of the emulsion, of at least one
medium chain triglyglyceride oil, and
0 to 1 wt%, based on the total weight of the emulsion, of at least one
antioxidant, and
18 to 95.5 wt%, based on the total weight of the emulsion, of water,
wherein
(i) the at least one carotenoid and the polyoxyethlene sorbitan
monofatty acid ester is present in a ratio of carotenoid : polyoxyethylene sorbitan
monofatty acid ester of 1:5 to 1:6.5,
(ii) the emulsifier (b) is present in amount of 0.5 to 5 wt%, based
on the total weight of the emulsion, and
(iii) the amount of the least one emulsifier (a) is at least 4 times
higher than the amount of the least one emulsifier (b ), wherein
a liquid formulation comprising the emulsion exhibits a
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Appeal 2018-008511
Application 14/236,538
turbidity of less than 10 NTU for a 10 ppm carotenoid concentration as measured
using standard method EN27027(IS07027).
The Examiner relies on the following prior art references as evidence of
unpatentability:
Van Den Braak
Auweter
Leuenberger
US 6,251,441 Bl
US 2008/0207777 Al
US 2010/0136177 Al
THE REJECTIONS
Jun.26,2001
Aug. 28, 2008
Jun.3,2010
1. Claims 1, 2, 4---6, 10, 11 and 17-20 are rejected under pre-AIA 35 U.S.C.
§I03(a) as being unpatentable over Van Den Braak in view of Leuenberger.
2. Claims 21, 23, and 24 are rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Van Den Braak in view of Leuenberger and Auweter.
ANALYSIS
For purposes of this appeal, we address separately argued claims, and the
remaining claims stand or fall with the argued claims, consistent with 37 C.F.R.
§ 4I.37(c)(l)(iv) (2017). We accordingly address claim 1 in this appeal.
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 sustain each of the Examiner's
rejections on appeal for the reasons set forth in the Final Office Action and in the
Answer, which we adopt as our own in their entirety. We add the following for
emphasis only.
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Appeal 2018-008511
Application 14/236,538
Appellant argues that the "suitable oils" of Van Den Braak are rich in oleic
acid, and therefore Van Den Braak instructs persons of ordinary skill to use
emulsifiers rich in oleic acid residues and therefore one of ordinary skill would not
have utilized MCTs in the composition of Van Den Braak because MCTs would not
match the fatty acid profile of the emulsifier. Appeal Br. 9-10.
We agree with the Examiner's response made on pages 9-10 of the Answer.
Therein, the Examiner correctly notes that a reference is available for all it teaches,
not only the specific examples. It is well established that a reference is good for all
it fairly teaches a person having ordinary skill in the art, even when the teaching is a
cursory mention. E.g., In re Mills, 470 F.2d 649, 651 (CCPA 1972). The Examiner
points out that Van Den Braak does not limit the suitable oils to oils rich in oleic
acid, but teaches a number of oils as suitable for inclusion in their inventive
emulsion (col. 2, 11. 55-59), and teaches that the emulsifiers may be any emulsifier
suitable for consumption (col. 2, 11. 60-62). Ans. 10. The Examiner also states that
Leuenberger is relied upon to teach that MCTs are known to be used
interchangeably with the oils taught by Van Den Braak for carotenoid emulsions.
Ans. 5, 10; Leuenberger, ,r 28. We thus agree with the Examiner's conclusion that it
would have been obvious to have selected an MCT as taught by Leuenberger since
MCTs are taught to be used interchangeably with the oils of Van Den Braak, and
Van Den Braak generally teaches that the emulsifiers may be any emulsifier which
is suitable for consumption ( col. 2, 11. 60-62). Ans. 10.
Appellant next argues that the Examiner does not explain how or why a
person of ordinary skill would have believed Van Den Braak could have been
modified with an MCT. Appeal Br. 11. We are unpersuaded by this argument for
the reasons provided by the Examiner on page 11 of the Answer. Therein, the
Examiner explains that Leuenberger teaches that MCTs and the same vegetable oils
as taught by Van Den Braak are known to be used interchangeably in carotenoid
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Appeal 2018-008511
Application 14/236,538
containing emulsions. Ans. 5, 10, 11; Leuenberger, ,r 28. The Examiner correctly
concludes that it would have been obvious to have used an MCT as claimed in a
carotenoid emulsion over the combination of applied art where MCTs and vegetable
oils are known to be utilized in carotenoid emulsions. The Examiner also points out
that Appellants have not shown that the claimed MCTs provide an unexpected result
over the combination of prior art. Ans. 11.
Appellant also argues that the combination of Van Den Braak, Leuenberger
and Auweter does not teach a liquid formulation with a carotenoid content of 1-20
ppm and a turbidity as claimed. Appeal Br. 12. We agree with the Examiner's
stated response made on page 11 of the Answer. Therein, the Examiner states that
while Appellant states that the claimed subject matter is directed to
rectifying undesired turbidity when ready-to-use drinks are pasteurized, claim 1
recites only that "a liquid formulation comprising the emulsion exhibits a turbidity
of less than 10 NTU for a 10 ppm carotenoid concentration ... " Ans. 11. In other
words, the Examiner states that there is no requirement in claim 1 that the emulsion
be included in a pasteurized, ready-to-drink beverage. The Examiner reiterates that
Van Den Braak teaches that the disclosed emulsion provides an optically clear
formulation (Van Den Braak, claim 4 ). Ans. 11. The Examiner states that this
meets the limitation to the turbidity of less than 10 NTU for a 10 ppm carotenoid
concentration in the absence of a convincing showing that a composition comprising
the emulsion composition of Van Den Braak does not possess a turbidity as claimed.
Appellant argues that the examples in Van Den Braak show heating the mixture
comprising the emulsifiers, and because the emulsifier polvsorbate 80 would
undergo degradation by two mechanisms ( auto-oxidation and hydrolysis), the
resultant formulation would not have had a turbidity as claimed. Appeal Br. 12-13.
We are also unpersuaded by this line of argument for the reason provided by the
Examiner on page 12 of the Answer. Therein, the Examiner states that the fact that
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Appeal 2018-008511
Application 14/236,538
the examples in Van Den Braak show heating compositions comprising the
emulsifier blend to temperatures that may increase the turbidity of the resultant
solution does not negate the fact that Van Den Braak teaches that the disclosed
invention is particularly useful in the product of optically clear products (Van
Den Braak, col. 3, 11. 33-34, claim 4). We agree and note that no reply brief is of
record to address this point made by the Examiner.
Appellant then argues that the combination of Van Den Braak, Leuenberger
and Auweter does not teach a liquid formulation with a mixture of the recited
emulsifiers, even though Van Den Braak teaches that the secondary emulsifier has a
lower HLB than the first emulsifier. Appeal Br. 14--15.
We are not persuaded by this line of argument. As stated by the Examiner on
pages 12-13 of the Answer, Van Den Braak teaches a combination of emulsifiers
where the first emulsifier is taught to be a polyoxyethylene sorbitan monofatty acid
ester (e.g. Tween 80 [i.e. Polyoxyethylene (20) sorbitan monooleate](col. 2, 1. 66))
and the second emulsifier can be a polyglycerol ester of fatty acids (col. 3, 1. 8). The
Examiner states that this meets Appellant's claimed second emulsifier ( claim 6).
The Examiner states that because Van Den Braak teaches the ratio of emulsifiers
ranging from 20: 1 to 50: 1 ( col. 1 lines 62-64), which overlaps the claimed amounts
of emulsifiers (a) and (b) as claimed by Appellant, the claimed emulsifiers and
amounts are considered to be obvious. Ans.13. We agree, and note that when
claimed ranges overlap or lie inside ranges disclosed by the prior art for every
component in a claim, a prima facie case of obviousness is established. See In re
Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003); In re Geisler, 116 F.3d 1465, 1469-
70 (Fed. Cir. 1997).
Appellant argues that because Van Den Braak teaches that the mixture of
emulsifiers has an HLB of between 10 and 18, with the primary emulsifier having an
HLB of 12-16, this would not have cause a person of ordinary skill in the to select
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Application 14/236,538
an emulsifier other than polyoxyethylene sorbitan monofattv acid ester having an
HLB of from 6 to 7 because Van Den Braak' s mixture cannot have an HLB less than
10. Appeal Br. 15. We agree with the Examiner's stated reply in the record that the
second emulsifier taught by Van Den Braak is a polyglycerol ester of a fatty acid
( col. 3, 11. 3-10), which is the same second emulsifier as required by the instant
claims. The Examiner states that where Appellant claims the HLB of the second
emulsifier, but not the first, while Van Den Braak teaches the HLB of the
combination of emulsifiers, Appellant has not convincingly shown that the second
emulsifier of Van Den Braak (which is the same as the claimed polyglycerol ester of
a fatty acid) does not have an HLB as claimed. Ans. 13. Again we note that no
reply brief has been filed to address this point made by the Examiner.
DECISION
Each rejection is affirmed.
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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