Ex Parte Luo

Patent Trial and Appeal Board

Mar 20, 2017

11135149 (P.T.A.B. Mar. 20, 2017)

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.
11/135,149 05/23/2005 Shiuh Luo CDS0165US14 2947
23413 7590 03/22/2017
TANTOR TOT RTTRN T T P
EXAMINER
20 Church Street LOVE, TREVOR M
22nd Floor
Hartford, CT 06103 ART UNIT PAPER NUMBER
1611
NOTIFICATION DATE DELIVERY MODE
03/22/2017 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
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SHIUH LUO1
Appeal 2015-004865
Application 11/135,149
Technology Center 1600
Before FRANCISCO C. PRATS, MELANIE L. McCOLLUM, and
RICHARD J. SMITH, Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35U.S.C. § 134 involving claims to an
encapsulated composition. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 According to Appellant, the real party in interest is Intercontinental Great
Brands LLC. (Br. 2.)
Appeal 2015-004865
Application 11/135,149
STATEMENT OF THE CASE
Claims on Appeal
Claims 1, 3—6, 8, 37, 38, and 41—44 are on appeal.2 (Claims
Appendix, Br. 12—15.) Claim 1 is illustrative and reads as follows:
Claim 1: An encapsulated composition comprising:
(a) a core material comprising at least one surfactant having an HLB
of about 7 or more and selected from the group consisting of ceteareth-20,
polyoxyethylene sorbitan monostearate, polyoxyethylene sorbitan
monooleate, polyoxyethylene sorbitan laurate, polyoxyethylene sorbitan
tristearate, polyglyceryl laurate, glyceryl cocoate, acacia gum, and
combinations thereof;
(b) an exterior coating encapsulating the core comprising a material
selected from the group consisting of cellulose, cellulose derivatives,
starches, carbohydrates, gums, polyolefins, proteins, polyesters, waxes, vinyl
polymers, gelatin, zein and combinations thereof; and
(c) said encapsulated composition further comprising a tensile
strength modifying agent selected from one or more hydrogenated vegetable
oils; wherein the tensile strength of the encapsulated composition is at least
10,000 psi.
{Id. at 12.)
Examiner’s Rejection
Claims 1, 3—6, 8, 37, 38, and 41—44 stand rejected under pre-AIA
35 U.S.C. § 103(a) as unpatentable over Cherukuri3 and Abdel-Malik,4 as
evidenced by Emulsifiers with HLB Values.5 (Final Act. 3—13.)
2 Claims 45, 47, 48, 51, 52, and 55 are withdrawn from consideration as
drawn to non-elected inventions and species. (Final Act. dated Jan. 30,
2014, at 2.)
3 Cherukuri et al., US 4,981,698, issued Jan. 1, 1991 (“Cherukuri”).
4 Abdel-Malik et al., US 6,599,542 Bl, issued July 29, 2003 (“Abdel-
Malik”).
5 HLB Systems, HLB Values of Some Surfactants (2006) (“HLB Values”).
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Application 11/135,149
FINDINGS OF FACT
We adopt as our own the Examiner’s findings regarding the scope and
content of the prior art, and reasons to combine the cited references. The
following findings are included for emphasis and reference purposes.
FF 1. The Specification states that HLB stands for “hydrophilic-
lipophilic balance,” and that “[t]he HLB number increases with increasing
hydrophilicity.” (Spec. 138.)
FF 2. The Specification states that “[ejxamples of useful surfactants
include . . . sorbitan monostearate (Polysorbate 60).” {Id. at 140.)
FF 3. The Examiner finds that Cherukuri teaches an encapsulated
composition (e.g. a chewing gum) comprising a core that is coated, wherein
the core comprises an emulsifier (specifically polysorbates), that the
encapsulated particles are coated with ethyl cellulose, and that the
composition may further comprise components such as polyvinyl acetate as
part of the core. (Ans. 2—3, citing Cherukuri (entire document), particularly
col. 5,11. 54—55 and 61-65, col. 6,11. 49-52, col. 7,1. 56-col. 8,1. 20, col. 8,
11. 63—64, and claims 2 and 22.) Cherukuri states that the emulsifier may be
present “in an amount of from about 0.5% to about 20% by weight.”
(Cherukuri col. 8,11. 25—27.)
FF 4. Cherukuri teaches that softeners may be incorporated into the
chewing gum base, and “preferably in amounts of from about 3% to about
20% by weight of the final gum base composition.” (Cherukuri col. 12,11.
15-26.)
FF 5. The Examiner finds that Abdel-Malik teaches “a chewing gum
composition comprising ethyl cellulose, polyvinyl acetate, hydrogenated
vegetable oil and polysorbate 60,” and that “hydrogenated vegetable oil and
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Application 11/135,149
polysorbate 60 are useful in chewing gum compositions as softener
components.” (Ans. 3, citing Abdel-Malik (entire document), particularly
claims 1, 2, and 7.) See also Abdel-Malik col. 7,11. 33—38 (“[tjypical
softeners (i.e.[,] the term ‘softeners’ is used in its customary broad sense and
includes emulsifiers). . . include . . . hydrogenated vegetable oils . . . [and]
polysorbate 60 . . . and combination thereof.”).
FF 6. Abdel-Malik teaches that the softener (e.g., hydrogenated
vegetable oil) may be employed in an amount from about 3 to 35% by
weight, and preferably from about 10 to 20% by weight, of the gum base.
(Abdel-Malik col. 7,11. 43—45, claim 1.)
FF 7. HLB Values teaches that polysorbate 60 has an HLB value of
14.9. (HLB Values.)
FF 8. The Examiner finds that one of ordinary skill in the art would
have been motivated to utilize both hydrogenated vegetable oil and
polysorbate 60 as softeners in the invention of Cherukuri because
“Cherukuri teaches that softeners can be present and Abdel-Malik teaches
that hydrogenated vegetable oil and polysorbate 60 are both useful as
softeners for chewing gum compositions comprising ethylcellulose and
polyvinyl acetate.” (Ans. 3.)
FF 9. The Examiner finds that “the prior art renders obvious the
instantly claimed composition, comprising the same elements in the same
orientation, therefore, absent evidence to the contrary, the prior art would
also have the property of said tensile strength.” (Id. at 4.)
DISCUSSION
We adopt and agree with the Examiner’s findings, analysis, and
conclusions as set forth in the Final Action (Final Act. 2—7) and Answer
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Application 11/135,149
(Ans. 2—8). For the reasons of record and as discussed below, we discern no
error in the Examiner’s rejection of the appealed claims as obvious. We
address Appellant’s arguments below, and limit our consideration to claim 1
because the claims were not separately argued.
Issue
Whether a preponderance of the evidence of record supports the
Examiner’s conclusion of obviousness under 35 U.S.C. § 103(a).
Analysis
We note at the outset that Appellant’s arguments begin with a
discussion of each reference separately, and the contention that none of the
references individually discloses all of the claimed elements. (Br. 4—9.)
However, one cannot show nonobviousness by attacking references
individually where the Examiner bases the rejection on a combination of
references. In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986)
(citing In re Keller, 642 F.2d 413, 425 (CCPA 1981)). Moreover, the test
for obviousness is “what the combined teachings of the references would
have suggested to those of ordinary skill in the art.” Keller, 642 F.2d at 425
(citing cases).
Addition of hydrogenated vegetable oil
Appellant argues that it would not have been obvious to add
hydrogenated vegetable oil to the delivery system of Cherukuri. (Br. 10.) In
particular, Appellant takes issue with the Examiner’s reasoning that it would
have been obvious to add both a polysorbate and a hydrogenated vegetable
oil to the gum composition of Cherukuri because both are useful for the
same purpose, i.e., as softeners in chewing gum compositions. (Id.)
According to Appellant, “[t]he purpose of the claimed surfactants is different
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from the purpose of the tensile strength modifying agents,” and that “[t]he
purpose of claimed hydrogenated vegetable oil(s) is as a tensile strength
modifying agent.” (Id. )
We are not persuaded, ft is well settled that “the law does not require
that the references be combined for the reasons contemplated by the
inventor.” In re Beattie, 974 F.2d 1309, 1312 (Fed. Cir. 1992) (citing cases).
Moreover, Abdel-Malik specifically uses the term softeners to include
emulsifiers, and indicates that hydrogenated vegetable oils and polysorbate
60 may be used in combination. (FF 5.) Here, Cherukuri specifically
contemplates the inclusion of softeners in its composition (FF 4), and it
would have been obvious to include hydrogenated vegetable oil as a
softener, as well as polysorbate 60 as a polysorbate surfactant (FF 3, 5, and
8). Again, there is no requirement that the hydrogenated vegetable oil of
Abdel-Malik be combined with the Cherukuri composition for the same
reason as contemplated by Appellant. See Beattie, 974 F.2d at 1312; see
also In re Kahn, 411 F.3d 977, 988 (Fed. Cir. 2006).
Tensile Strength
Appellant argues that it would not have been obvious to modify the
tensile strength of Cherukuri, particularly to have a tensile strength of at
least 10,000 psi. (Br. 9-10.) In particular, Appellant argues that Cherukuri
prefers to use low molecular weight polyvinyl acetate “that would cause the
encapsulated composition to have a lower tensile strength than 10,000.”
(Id. ) Appellant also points to the data in US Patent Application No.
11/134,3686 and argues that the data shows that the presence of certain
6 US Patent Application 11/134,368, filed May 23, 2005 (“’368 Spec.”).
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amounts of fats and oils maintain or increase the tensile strength of a
delivery system. {Id. at 10.) According to Appellant, “[tjhese results are
unexpected because a person of skill in the art would expect the tensile
strength of the delivery system to decrease upon adding a fat and/or oil.”
(Id.)
We are not persuaded by Appellant’s arguments regarding low
molecular weight polyvinyl acetate, and the alleged “unexpected” nature of
the data in the ’368 Spec., because they are merely attorney arguments and
unsupported by evidence. See In re Pearson, 494 F.2d 1399, 1405 (CCPA
1974) (attorney argument in a brief cannot take the place of evidence); see
also In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997). Moreover, the data
referenced by Appellant includes a table (Table 1) showing four delivery
systems that include hydrogenated oil in amounts ranging from 0% to 15%,
all of which have a tensile strength in excess of 10,000 psi.7 However, that
range overlaps the range of the hydrogenated vegetable oil taught by Abdel-
Malik. (FF 6.) Accordingly, we agree with the Examiner that “the prior art
would also have the property of said tensile strength.” (FF 9.) In re
Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003) (“even a slight overlap in
range[s] establishes aprima facie case of obviousness”); see also In re
Spada, 911 F.2d 705, 708 (Fed. Cir. 1990) (“Products of identical
composition can not have mutually exclusive properties.”).
Amounts of hydrogenated vegetable oil
Appellant argues that the cited references do not suggest suitable
amounts of hydrogenated vegetable oil necessary to achieve a tensile
7’368 Spec. 36, Table 1.
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Application 11/135,149
strength of 10,000 psi. (Br. 10.) Appellant points again to the data in the
’368 Spec., and again argues that those results are unexpected. (Id.)
However, for the reasons set forth above, we find those arguments
unpersuasive.
Conclusion of Law
A preponderance of the evidence of record supports the Examiner’s
conclusion that claim 1 is obvious under 35 U.S.C. § 103(a). Claims 3—6, 8,
37, 38, and 41—44 fall with claim 1.
SUMMARY
We affirm the rejection of all claims on appeal.
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).
AFFIRMED
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