Ex Parte Imison et alDownload PDFPatent Trial and Appeal BoardMay 30, 201411943758 (P.T.A.B. May. 30, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARKOFFICE 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. 11/943,758 11/21/2007 Thomas Philip Imison 9610-90955-US 4050 109813 7590 05/30/2014 Fitch, Even, Tabin & Flannery, LLP 120 South LaSalle Street Suite 1600 Chicago, IL 60603-3406 EXAMINER ANDERSON, JERRY W ART UNIT PAPER NUMBER 1791 MAIL DATE DELIVERY MODE 05/30/2014 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte THOMAS PHILIP IMISON, PHILIP JAMES OXFORD, STEFANO CERIALI, and BARY LYN ZELLER ____________ Appeal 2013-000654 Application 11/943,758 Technology Center 1700 ____________ Before BRADLEY R. GARRIS, CHUNG K. PAK, and CHARLES F. WARREN, Administrative Patent Judges. PAK, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal1 under 35 U.S.C. § 134(a) from the Examiner’s rejection2 of claims 1, 2, 5, 6, 8 through 10, 12, 13, 15 through 18, 21, 22, and 24 through 29, all of the claims pending in the above-identified application. An oral hearing was held on May 15, 2014. 1 Appeal Brief filed June 14, 2012 (“Br.”) at 3. 2 Although the action appealed from was a non-final rejection, we have jurisdiction pursuant to 35 U.S.C. §§ 6 and 134 because the claims have been twice presented and rejected. See Ex parte Lemoine, 46 USPQ2d 1420, 1423 (BPAI 1994). Appeal 2013-000654 Application 11/943,758 2 We REVERSE. STATEMENT OF THE CASE The subject matter on appeal is directed to “soluble foaming compositions comprising an entrapped supercritical fluid [useful for food items, such as cappuccino, milk shakes, and certain soups], and methods for making the same.” (Spec. 1, ¶¶ [0001] and [0003].) Details of the appealed subject matter are recited in representative claims 1, 10, 17, and 26 reproduced below from the Claims Appendix of the Appeal Brief: 1. A method for preparing a foaming composition comprising: contacting a continuous flow of a supercritical fluid with a particulate ingredient having a glass transition temperature above ambient temperature at a temperature above the glass transition temperature of the particulate ingredient, wherein the supercritical fluid is carbon dioxide, nitrous oxide, or a halogenated hydrocarbon, wherein the supercritical fluid has a critical temperature of at least about 10°C, and wherein the particulate ingredient comprises a plurality of internal voids; holding the particulate ingredient at the temperature above the glass transition temperature of the particulate ingredient for a period of time effective to allow transfer of the supercritical fluid into the plurality of internal voids of the particulate ingredient; reducing the temperature to below the glass transition temperature of the particulate ingredient, thereby entrapping at least a portion of the supercritical fluid in the plurality of internal voids of the particulate ingredient; and further reducing the temperature to below the critical temperature such that the entrapped supercritical fluid forms a mixture of gas and liquefied gas in the plurality of internal voids of the particulate ingredient. 10. A foaming composition comprising: Appeal 2013-000654 Application 11/943,758 3 a particulate ingredient having a glass transition temperature above ambient temperature and having a plurality of internal voids containing a mixture of gas and liquefied gas entrapped in the internal voids. 17. A foaming composition prepared by a method comprising: contacting a continuous flow of a supercritical fluid with a particulate ingredient having a glass transition temperature above ambient temperature at a temperature above the glass transition temperature of the particulate ingredient, wherein the supercritical fluid is carbon dioxide, nitrous oxide, or a halogenated hydrocarbon, wherein the supercritical fluid has a critical temperature of at least about 10°C, and wherein the particulate ingredient comprises a plurality of internal voids; holding the particulate ingredient at the temperature above the glass transition temperature of the particulate ingredient for a period of time effective to allow transfer of the supercritical fluid into the plurality of internal voids of the particulate ingredient; reducing the temperature to below the glass transition temperature of the particulate ingredient, thereby entrapping at least a portion of the supercritical fluid in the plurality of internal voids of the particulate ingredient; and further reducing the temperature to below the critical temperature such that the entrapped supercritical fluid forms a mixture of gas and liquefied gas in the plurality of internal voids of the particulate ingredient. 26. A method for preparing a foaming composition comprising: contacting a continuous flow of supercritical carbon dioxide with a particulate ingredient having a glass transition temperature above ambient temperature at a temperature above the glass transition temperature of the particulate ingredient, wherein the particulate ingredient comprises a plurality of internal voids; Appeal 2013-000654 Application 11/943,758 4 holding the particulate ingredient at the temperature above the glass transition temperature of the particulate ingredient for a period of time effective to allow transfer of the supercritical carbon dioxide into the plurality of internal voids of the particulate ingredient; reducing the temperature to below the glass transition temperature of the particulate ingredient, thereby entrapping at least a portion of the supercritical carbon dioxide in the plurality of internal voids of the particulate ingredient; and further reducing the temperature to below the critical temperature such that the entrapped supercritical fluid forms a mixture of gas and liquefied gas in the plurality of internal voids of the particulate ingredient. (See App. Br. 31-34 (emphasis added).) Appellants seek review of the following grounds of rejection maintained in the Examiner’s Answer mailed August 10, 2012 (“Ans.”): 1. Claims 27 through 29 under 35 U.S.C. § 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which Applicants regard as their invention; 2. Claims 1, 2, 5, 6, 9, 10, 12, 13, 15, 17, 18, 21, 22, and 25 through 29 under 35 U.S.C. § 103(a) as unpatentable over U.S. Patent 6,713,113 B2 issued to Bisperink et al. on March 20, 2004 (“Bisperink”), as evidenced by the CO2 phase diagram;3 3 According to page 13 of the Appeal Brief, the CO2 phase diagram relied upon by the Examiner is provided as Exhibit A to the Evidence Appendix. The prior art status of this CO2 phase diagram of record is unclear because the Examiner has not provided any evidence relating to the publication date of the CO2 phase diagram in the Answer or Office actions. However, neither Appellants nor the Examiner question the prior art status of the CO2 phase diagram. (Compare Ans. in its entirety with App. Br. in its entirety.) Accordingly, we will treat it as “prior art” Appeal 2013-000654 Application 11/943,758 5 3. Claims 8 and 24 under 35 U.S.C. § 103(a) as unpatentable over Bisperink as applied to claims 1, 2, 5, 6, 9, 10, 12, 13, 15, 17, 18, 21, 22, and 25 through 29 above, and further in view of U.S. Patent 4,282,263 issued to Barnes et al. on August 4, 1981(“Barnes”) and U.S. Patent 5,750,178 issued to Cheng et al. on May 12, 1998 (“Cheng”); and 4. Claim 16 under 35 U.S.C. § 103(a) as unpatentable over Bisperink, as applied to claims 1, 2, 5, 6, 9, 10, 12, 13, 15, 17, 18, 21, 22, and 25 through 29 above, and further in view of U.S. Patent Application Publication 2006/0040033 A1 published in the name of Zeller on February 23, 2006 (“Zeller ’033”) and U.S. Patent Application Publication 2006/0040034 A1 published in the name of Zeller et al. on February 23, 2006 (“Zeller ’034”). DISCUSSION I. 35 U.S.C. § 112, Second Paragraph We reverse the Examiner’s rejection of claims 27 through 29 under 35 U.S.C. § 112, second paragraph, as being indefinite. Although the Examiner criticizes a limitation relating to contacting a continuous flow of a supercritical “effective to inhibit particle agglomeration” in claims 27 through 29, the Examiner has not demonstrated that a person of ordinary skill in the art would not have understood the scope of such limitation. (Ans. 3-5.) Notwithstanding the Examiner’s arguments to the contrary, the claim language in question does not recite the indefinite size of particle agglomeration. Rather, it only requires inhibition of some particle agglomeration of any size. The fact that the claims are broadly written does not mean that they are indefinite. See, e.g., In re Gardner, 427 F.2d 786, 788 (CCPA 1970) (“Breadth is not indefiniteness.”) for the purpose of resolving the issues raised by Appellants and the Examiner in this case. Appeal 2013-000654 Application 11/943,758 6 II. 35 U.S.C. § 103 We also reverse the Examiner’s rejections of the claims on appeal under 35 U.S.C. § 103(a) as unpatentable over the applied prior art. In particular, Appellants have identified reversible error in the Examiner’s finding that Bisperink inherently teaches or would have suggested forming a mixture of gas and liquefied gas in the plurality of internal voids of a particulate ingredient as required by independent claims 1, 10, 17, and 26. Although the Examiner correctly finds that Bisperink teaches employing, inter alia, nitrogen, carbon dioxide, and/or air,4 the Examiner fails to recognize that Bisperink teaches or suggests using techniques and/or conditions suitable for entrapping nitrogen, carbon dioxide, and/or air in the form of gas only in voids of a powdered soluble foaming ingredient. (Bisperink col. 1, l. 60 to col. 2, l. 30 and col 3, l. 55 to col. 4, l. 25.) As correctly argued by Appellants, Bisperink teaches employing liquid for the purpose of dissolving the powdered soluble foaming ingredient to release the gas entrapped in the powdered soluble foaming ingredient, thus implying that the presence of the liquid in the voids of the powdered soluble foaming ingredient is undesirable due to its solvating properties. (App. Br. 16-21 and Bisperink, col. 1, ll. 60-65 and the Rule 132 Declaration of record executed by Thomas Philip Imison on November 9, 2009 (“First Imison Declaration”) at 4, ¶ 13.) Consistent with these teachings of Bisperink, the Supplemental Rule 132 Declaration of record executed by Thomas Philip Imison on August 23, 2010 (“Supplemental Imison Declaration”) further 4 Although Bisperink prefers an inert gas, such as nitrogen, it still teaches carbon dioxide gas as one of the gases which can be entrapped in a powdered soluble foaming ingredient. (Bisperink col. 3, l. 55 to col. 4, l. 25.) It is well settled that a reference may be relied upon for all that it would have reasonably suggested to one of ordinary skill in the art, including non-preferred embodiments. Merck & Co., Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989). Appeal 2013-000654 Application 11/943,758 7 shows entrapping carbon dioxide in the form of gas only in the powdered soluble foaming ingredient via employing Bisperink’s method with carbon dioxide gas. (Supplemental Imison Declaration 5-6, ¶¶ 13 and 14.) Thus, on this record, the Examiner has not shown that Bisperink’s method necessarily or inherently entraps gas and liquid in its powdered soluble foaming ingredient. In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (“ Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.”) Nor has the Examiner shown that one of ordinary skill in the art would have been led to entrap liquid, in addition to gas, in Bisperink’s powdered soluble foaming ingredient. Accordingly, we find that Appellants have identified reversible error in the Examiner’s finding that Bisperink inherently teaches or would have suggested forming a powdered soluble foaming ingredient having entrapped nitrogen, carbon dioxide and/or air in the form of liquid and gas within the meaning of 35 U.S.C. § 103(a). ORDER Upon consideration of the record, and for the reasons given above and in the Appeal Brief, it is ORDERED that the decision of the Examiner to reject claims 27 through 29 under 35 U.S.C. § 112, second paragraph, is REVERSED; and FURTHER ORDERED that the decision of the Examiner to reject claims 1, 2, 5, 6, 8 through 10, 12, 13, 15 through 18, 21, 22, and 24 through 29 under 35 U.S.C. § 103(a), is REVERSED. REVERSED bar Copy with citationCopy as parenthetical citation