Ex Parte Badolato Boenisch et al

Patent Trials and Appeals Board

Jul 9, 2019

14436249 - (D) (P.T.A.B. Jul. 9, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/436,249 04/16/2015
23117 7590 07/11/2019
NIXON & V ANDERHYE, PC
901 NORTH GLEBE ROAD, 11 TH FLOOR
ARLINGTON, VA 22203
FIRST NAMED INVENTOR
Gabriela Badolato Boenisch
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.
BHD-4662-3009 8142
EXAMINER
ALAWADI, SARAH
ART UNIT PAPER NUMBER
1619
NOTIFICATION DATE DELIVERY MODE
07/11/2019 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 BOENISCH
and BERND SCHLEGEL 1
Appeal2018-008070
Application 14/436,249
Technology Center 1600
Before JEFFREY N. FREDMAN, JOHN G. NEW, and JAMIE T. WISZ,
Administrative Patent Judges.
NEW, Administrative Patent Judge.
DECISION ON APPEAL
1 Appellants identify DSM IP Assets B.V. as the real party-in-interest. App.
Br. 2.
Appeal2018-008070
Application 14/436,249
SUMMARY
Appellants file this appeal under 35 U.S.C. § I34(a) from the
Examiner's Non-Final Rejection of claims 1-5, 7-13, 26, and 27.
Specifically, claims 1-5, 7-12, 26, and 27 stand rejected as unpatentable
under 35 U.S.C. § I03(a) as being obvious over Connolly et al.
(W02007/150047 Al, December 27, 2007) ("Connolly") and Kowalski et al.
(US 6,093,348, June 25, 2000) ("Kowalski").
Claim 13 stands rejected as unpatentable under 35 U.S.C. § I03(a) as
being obvious over Connolly, Kowalski, and Deshpande (US 2010/0112188
Al, May 6, 2010) ("Deshpande").
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
NATURE OF THE CLAIMED INVENTION
Appellants' claimed invention is directed to beadlets comprising at
least one carotenoid and matrix material, and to the production of such
beadlets and to their compositions.
REPRESENTATIVE CLAIM
Claim 1 is representative of the claims on appeal and recites:
1. Beadlets comprising a mixture of:
(i) 55 wt-% to 75 wt-%, based on the total weight of the
beadlets, of a matrix material, and
(ii) 25 wt-% to 45 wt-%, based on the total weight of the
beadlets, of carotenoid particles comprised of at least one
carotenoid within the matrix material, wherein the matrix
material comprises at least one unsaturated (non-
hydrogenated),
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Application 14/436,249
partially saturated (partially hydrogenated) or fully saturated
(fully hydrogenated) wax and/or fat having a melting point
of from 40 °C to 85 °C, and wherein
the beadlets have an average particle diameter of 50 µm to 1000
µm, and wherein
the carotenoid particles within the matrix material of the beadlets
have[] a particle size (d0.9) of below 30 µm.
App. Br. 9.
ISSUES AND ANALYSES
We adopt the Examiner's findings, reasoning, and conclusion that the
claims are obvious over the combined cited prior art. We address the
arguments raised by Appellant below.
A. Rejection of claims 1-5, 7-12, 26, and 27
Issue
Appellants argue these claims together. App. Br. 6. Appellants argue
that the Examiner erred in finding that independent claim 1 is obvious over
the teachings of Connolly and Kowalski, because Connolly teaches a
physical coating of the labile component, and not a mixture with the wax
material. Id.
Analysis
The Examiner finds that Connolly teaches compositions which
comprise labile compounds including beta-carotene, a first encapsulant, and
a second encapsulant, wherein the second encapsulant comprises a prill
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Appeal2018-008070
Application 14/436,249
coating which can comprise stearic acid. Final Act. 4 ( citing Connolly
claims 1, 24, 34).
The Examiner finds that Connolly teaches that the prill coating can be
mixed with the first encapsulant that can include carotenoids (beta-carotene).
Final Act. 4 (citing Connolly 9, 11. 9-15; 25, 11. 7-15; 31). The Examiner
further finds that, in some embodiments, Connolly teaches that the second
encapsulant that comprises the prill materials, including stearic acid, can be
a matrix in which first encapsulant ( e.g., beta-carotene) is entrapped. Id.
(citing Connolly 17, 11. 1---6; 2211. 29-30).
The Examiner finds that Connolly teaches that its compositions can
take the form of a bead, with particle sizes ranging from 10-3,000 microns.
Final Act. 4 (citing Connolly 59; 8, 11. 10-11, 11. 15-16; claim 57).
The Examiner finds that Connolly does not expressly teach that the
carotenoid (beta-carotene) has a particle size of less than 30 microns. Final
Act. 5. However, the Examiner finds that Kowalski teaches making beta-
carotene powdered compositions with excellent stability and bioavailability.
Id. (citing Kowalski Abstr., col. 2 11. 5-12; cols. 2-3 11. 64--12). The
Examiner finds that Kowalski teaches that sub-micron particle sizes are
better for bioavailability than are coarse sizes, and that, to minimize the
exposure time of beta-carotene to heat, it is advantageous to use milled
particles in which 90% of the particles are less than 30 microns in diameter.
Id. (citing Kowalski col. 1, 11. 55-65; cols. 2-3, 11. 64--12; col. 5, 11. 50-61).
The Examiner concludes that it would have been prima facie obvious
to a person of ordinary skill in the art to employ Kowalski's beta-carotene
milled particles of less than 30 microns in the compositions taught by
Connolly to provide increased stability and bioavailability for the beta-
carotene. Final Act. 6.
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Appeal2018-008070
Application 14/436,249
Appellants argue that Connolly fails to teach beadlet compositions
comprised of a mixture of the matrix material ( e.g., stearic acid) and a
carotenoid that may be spray dried to form beadlets having an average
particle diameter of 50 µm to 1000 µm, and that are formed of the matrix
material with the carotenoid being inside the beadlets (i.e., dispersed in the
matrix material) and having particle size (d0.9) of below 30 µm. App. Br. 6.
Instead, argue Appellants, Connolly teaches that stearic acid is employed as
a coating on the beadlet. Id. According to Appellants, a person of ordinary
skill in the art would therefore not have arrived at Appellants' claimed
invention, even with knowledge of Kowalski's carotenoid particles having a
particle size ( d0.9) of below 30 µms. Id.
Appellants argue that the Examiner mistakenly relies upon Connolly
as suggesting providing a mixture of carotene particles within a matrix of
wax and/or fat having a melting point of from 40°C to 85°C, as recited in the
claims. App. Br. 6 (citing Connolly 17, 11. 1---6, 22, 11. 29-30). However,
Appellants assert, all that the cited passages reveal is a practice, common in
the contemporaneous art, of encapsulating a "core material" within a
polymeric "shell" via a "hot melt encapsulation technique" and that certain
oils may be employed as the prill material. Id. at 6-7 (citing Connolly 17, 11.
1---6, 22, 11. 29-30).
Appellants contend that, although Connolly teaches mixtures of
individual prill-coating components, there is no suggestion of mixing beta-
carotene with a matrix material to form beadlets. App. Br. 7. Therefore,
Appellants argue, a person of ordinary skill in this art would not have found
it obvious to substitute the matrix material taught by Kowalski with the
coating material taught by Connolly with any reasonable expectation of
arriving at Appellants' claimed invention. Id.
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Application 14/436,249
The Examiner responds that Connolly teaches that the first
encapsulant can form a coating but, in alternative embodiments, can be a
matrix in which a labile compound ( e.g., beta-carotene) is entrapped. Ans. 4
( citing Connolly 16). The Examiner also notes that Connolly teaches that
that a second encapsulant ( which comprises the stearic acid prill) can be a
matrix in which the first encapsulant is entrapped. Id. at 5 ( citing Connolly
22). The Examiner further finds that Connolly teaches preferred
embodiments in which the first encapsulant comprises the labile compound
which is taught to include beta-carotene (a carotenoid), and the second
encapsulant is described as the prill coating, in which the prill is stearic acid.
Id. (citing Connolly 23, 10, claims 24 and 33). The Examiner notes that the
compositions taught by Connolly take the form of a bead. Id. ( citing
Connolly 8, 11. 14--15, claim 59). The Examiner therefore determines that
Connolly teaches that the carotenoid (i.e., beta-carotene) particles can be
within the steric acid matrix (prill) as recited in the claims.
We are not persuaded by Appellants' arguments, and we adopt the
Examiner's reasoning, findings, and conclusion. Connolly expressly
teaches:
The first encapsulant can form a continuous coating on the
composition compnsmg the labile compound ( 100%
encapsulation) or alternatively, form a non-continuous coating
( e.g., at a level that provides substantial coverage of the labile
compound, for example, coverage at 80%, 90%, 95%, or 99% ).
In other embodiments, the first encapsulant can be a matrix in
which the labile compound is entrapped.
Connolly 16, 11. 1-5 (emphasis added). With respect to the labile compound
in the passage quoted, Connolly teaches: "In still other embodiments, the
labile compound comprises an antioxidant selected from the group
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Application 14/436,249
consisting of lycopene, lutein, zeaxanthin, alpha-lipoic acid, coenzymeQ,
beta-carotene and mixtures thereof." Id. at 4, 11. 29-31 (emphasis added).
In an analysis of obviousness under Section 103, "all disclosures of
the prior art, including unpreferred embodiments, must be considered." In
re Lamberti, 545 F.2d 747, 750 (C.C.P.A. 1976). Consequently, we agree
with the Examiner that Connolly suggests the limitation of claim 1 reciting:
"carotenoid particles comprised of at least one carotenoid within the matrix
material." We therefore affirm the Examiner's rejection of the claims.
B. Rejection of claim 13
Appellants argue claim 13 separately. App. Br. 7-8. Appellants
argue that Deshpande fails to cure the alleged deficiencies of Connolly and
Kowalski as argued with respect to claims 1-5, 7-12, 26, and 27. Id. at 8.
We have explained supra why we are not persuaded by Appellants'
argument with respect to the latter claims. For the same reasons, we affirm
the Examiner's rejection of claim 13.
DECISION
The Examiner's rejection of claims 1-5, 7-13, 26, and 27 as
unpatentable under 35 U.S.C. § 103(a) is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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