Moeller, Jens et al.Download PDFPatent Trials and Appeals BoardJan 9, 202014123723 - (D) (P.T.A.B. Jan. 9, 2020) Copy Citation 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. 14/123,723 12/03/2013 Jens Moeller 030427-0179 8035 22428 7590 01/09/2020 FOLEY & LARDNER LLP 3000 K STREET N.W. SUITE 600 WASHINGTON, DC 20007-5109 EXAMINER MORNHINWEG, JEFFREY P ART UNIT PAPER NUMBER 1793 NOTIFICATION DATE DELIVERY MODE 01/09/2020 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): ipdocketing@foley.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte JENS MOELLER, BJOERN MADSEN, and DORTHE LAURIDSEN ____________ Appeal 2018-008708 Application 14/123,723 Technology Center 1700 ____________ Before ADRIENE LEPIANE HANLON, CHRISTOPHER C. KENNEDY, and MERRELL C. CASHION, JR., Administrative Patent Judges. CASHION, 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 18, 19, 21–34, and 36–38. We have jurisdiction under 35 U.S.C. § 6(b). An oral hearing was held on December 17, 2019.2 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Chr. Hansen Natural Colors A/S. Appeal Br. 3. 2 A written transcript of the oral hearing will be entered into the record when the transcript is made available. Appeal 2018-008708 Application 14/123,723 2 We REVERSE. The invention relates to a composition for coloring foods such as cheese. Appeal Br. 5. Claim 18 is illustrative of the subject matter claimed and is reproduced below: 18. A liquid coloring composition comprising: (a) an oil-in-water emulsion comprising a carotenoid dissolved in an oil phase, wherein the oil phase is emulsified in an aqueous phase using a suitable emulsifier and wherein the oil phase is present in an amount of between 5% (w/w) to 40% (w/w) of the oil-in-water emulsion; and (b) a formulation of water dispersible carotenoid particles encapsulated with a suitable hydrocolloid, wherein the hydrocolloid is present in an amount of at least 0.5% (w/w) of the formulation; wherein the ratio of (a):(b) is from 1:10 to 10:1, the carotenoid content of each of (a) and (b) is at least 1% (w/w) of the resulting liquid coloring composition, and the total carotenoid content of (a) and (b) is up to 15% (w/w) of the resulting liquid coloring composition. Appellant requests review of the Examiner’s decision to reject claims 18, 19, 21–34, and 36–38 under 35 U.S.C. § 103(a) as unpatentable over Johnson (GB 2 248 170 A, published April 1, 1992) and Schlegel (WO 2007/090610 A2, published August 16, 2007). Appeal Br. 9; Final Act. 2. OPINION After review of the positions the Appellant provides in the Appeal and Reply Briefs and the Examiner provides in the Final Action and the Answer, we REVERSE the Examiner’s prior art rejection of claims 18, 19, 21–34, and 36–38 under 35 U.S.C. § 103(a) for the reasons the Appellant presents. We add the following for emphasis. Appeal 2018-008708 Application 14/123,723 3 Claim 18 We refer to the Examiner’s Final Action for a complete statement of the rejection of this claim. Final Act. 3–5. The dispositive issue is whether Schlegel discloses a formulation of water dispersible carotenoid particles encapsulated with a suitable hydrocolloid as recited in the claims.3 The Examiner finds that Schlegel teaches this formulation because Schlegel discloses a wet milling process for homogenizing a fat soluble carotene or the solution or dispersion of the fat soluble carotene using hydrocolloid and carotenoid contents within the claimed range for those components. Final Act. 3; Schlegel 2, 3, 13, 16, 19. According to the Examiner, the Specification, like Schlegel, uses a wet milling process to make the claimed water dispersible carotenoid particles encapsulated with a suitable hydrocolloid. Final Act. 3; Spec. 4, 8. The Examiner asserts that Schlegel’s wet milling process and Appellant’s disclosed wet milling process are “identical or substantially identical processes” and, thus, the components in Schlegel are likewise considered to be encapsulated. Ans. 10–11. Appellant argues that the Examiner’s reliance on Schlegel’s wet milling process is misplaced because Schlegel does not provide sufficient information about the wet milling process to determine whether it would result in the claimed encapsulated carotene particles. Appeal Br. 12; Schlegel 15–20; Spec. 4. Appellant additionally argues that the record does 3 We limit our discussion to claim 18 with the understanding that it applies to all rejected claims. Appeal 2018-008708 Application 14/123,723 4 not establish that the particles resulting from Schlegel’s wet milling process would inherently be carotenoid particles encapsulated with a hydrocolloid as claimed. Appeal Br. 12–13. Appellant’s arguments point to reversible error in the Examiner’s determination of obviousness. The Examiner contends that Schlegel’s wet milling of β-carotene and a hydrocolloid (modified starch) to form a homogenized solution (Ans. 10; Schlegel 2, 16, 19) and Appellant’s disclosed wet milling process where “a fraction containing water-dispersible, encapsulated particles of carotenoid is produced by milling the carotenoid particles either in dry form or as a water suspension with a hydrocolloid” (Ans. 10; Spec. 8) are identical or substantially identical processes to result in the same product, water dispersible carotenoid particles encapsulated with a suitable hydrocolloid. However, we agree with Appellant that the Examiner has not provided an adequate analysis in support of this contention. The Specification discloses specific steps for the preparation of a milled fraction comprising β-carotene crystals mixed into a water phase having a non-modified starch to form a suspension that is then milled to form the water dispersible carotenoid particles encapsulated with a suitable hydrocolloid. Spec. 8, 11.4 As Appellant notes, Schlegel does not describe or recognize the impact on the color of Schlegel’s disclosed formulation options and provides 4 While independent claim 26, directed to the method of preparing a liquid coloring composition, does not expressly recite the use of carotenoid crystals to make the encapsulated particles, it is clear from the noted disclosure that crystals are necessary to arrive at these particles. Appeal 2018-008708 Application 14/123,723 5 no guidance that would have led a person of ordinary skill in the field to arrive at a composition using β-carotene crystals. Appeal Br. 19 (citing Koehler Declaration5 ¶ 9 [sic]). The Examiner has not directed us to any portion of Schlegel that teaches forming a milled fraction comprising β- carotene crystals mixed into a water phase having a non-modified starch. The Examiner has not explained adequately how Schlegel’s homogenization step using a wet milling process results in carotenoid particles encapsulated with a hydrocolloid, as claimed. Thus, the Examiner has not established sufficiently that Schlegel’s wet milling process and Appellant’s disclosed wet milling process are identical or substantially identical so as to produce the claimed carotenoid particles encapsulated with a hydrocolloid. Therefore, the Examiner has not established a prima facie case of obviousness. Accordingly, on this record, we reverse the Examiner’s prior art rejection of claims 18, 19, 21–34, and 36–38 under 35 U.S.C. § 103(a) for the reasons Appellant presents and we provide above. Because the Examiner did not present a prima facie case of obviousness, we do not reach Appellant’s evidence of unexpected results. 5 The Declaration under 37 C.F.R § 1.132 by Klaus Koehler was submitted on August 23, 2017 and entered into the record by the Examiner in the Final Office Action dated October 30, 2017. Appeal 2018-008708 Application 14/123,723 6 CONCLUSION In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 18, 19, 21–34, 36–38 103(a) Johnson, Schlegel 18, 19, 21–34, 36–38 REVERSED Copy with citationCopy as parenthetical citation