Moeller, Jens et al.

Patent Trials and Appeals Board

Jan 9, 2020

14123723 - (D) (P.T.A.B. Jan. 9, 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.
14/123,723 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

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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

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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

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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

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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

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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