Ex Parte George et alDownload PDFPatent Trial and Appeal BoardMar 23, 201613085088 (P.T.A.B. Mar. 23, 2016) 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. 13/085,088 04/12/2011 Eapen George CFLAY.00587 1413 110933 7590 03/23/2016 Carstens & Cahoon, LLP PO Box 802334 Dallas, TX 75380 EXAMINER MCCLAIN-COLEMAN, TYNESHA L. ART UNIT PAPER NUMBER 1793 MAIL DATE DELIVERY MODE 03/23/2016 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 EAPEN GEORGE, PETER S. GIVEN JR., JULIE ANNE GROVER, LIA GUARDIOLA, GRACIELA WILD PADUA, and YI WANG1 ____________ Appeal 2014-006160 Application 13/085,088 Technology Center 1700 ____________ Before JEFFREY T. SMITH, BEVERLY A. FRANKLIN, and CHRISTOPHER C. KENNEDY, Administrative Patent Judges. KENNEDY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This is an appeal under 35 U.S.C. § 134(a) from a final rejection of claims 11, 12, and 14–24. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 According to the Appellants, the real party in interest is Frito-Lay North America, Inc. App. Br. 2. Appeal 2014-006160 Application 13/085,088 2 BACKGROUND The subject matter on appeal relates to a method for the encapsulation and delivery of bioactive components using a protein to extract and retain the flavor. Spec. ¶ 2; Claim 11. Claim 11 is reproduced below from page 20 (Claims Appendix) of the Appeal Brief: 11. An improved method for encapsulating flavors in which a prolamin is dissolved to form a prolamin solution, a flavor is mixed with the prolamin solution to form a mixed solution, and the mixed solution is dried to form a powder comprising prolamin-encapsulated flavor, wherein the improvements comprise: prior to said mixing step, dispersing an aqueous food in an alcohol solution by sonicating the solution, wherein said aqueous food comprises bioactive components, wherein said bioactive components comprise said flavor; and wherein said mixing step comprises combining said aqueous food with said prolamin solution, thereby initiating concentration of said bioactive components of said aqueous food, said prolamin-encapsulated flavor further comprising said bioactive components. ANALYSIS Claims 11, 12, and 14–24 are rejected under 35 U.S.C. § 103(a) as unpatentable over Stark et al. (US 5,021,248, issued June 4, 1991) in view of Sair et al. (US 4,230,687, issued Oct. 28, 1980) and Bates et al. (WO 2008/074072 A1, published June 26, 2008). The Examiner finds, inter alia, that Bates “discloses dispersing an aqueous food in an alcohol solution by sonicating the solution.” Final Act. 5; Ans. 4. The Examiner concludes that “it would have been obvious . . . to disperse the aqueous food in an alcohol solution by sonicating the solution in Appeal 2014-006160 Application 13/085,088 3 the method of Stark in view of Sair with the expectation of successfully preparing a functional product.” Id. The Examiner’s findings and conclusions concerning Bates are not supported by a preponderance of the evidence. As the Appellants point out, e.g., App. Br. 14, Bates teaches the extraction of chemicals from material such as oakwood using ultrasonic sonotrodes, see Bates ¶¶ 3, 7, 11, 30, 32– 34. While the Examiner apparently relies on Bates’s teachings concerning “aqueous penetration” in support of the finding that Bates teaches dispersing an aqueous food in an alcohol solution by sonication, see Ans. 7, Bates’s disclosure of “aqueous penetration” does not refer to dispersing aqueous food into alcohol; rather, it refers to penetrating a material such as oakwood with ultrasonic waves in order to extract chemicals from the wood. See Bates ¶¶ 3, 7, 11, 30, 32–34. Thus, Bates does not teach that the purpose of sonicating is to disperse an aqueous food, see Final Act. 5; it teaches that the purpose of sonicating is to penetrate wood and “dislodge components” from the wood, Bates ¶ 32. Because Bates (1) uses sonication to penetrate wood rather than to disperse flavors, (2) is focused on extraction rather than dispersal, and (3) is unrelated to encapsulation, the Examiner’s analysis does not persuasively explain why Bates would have motivated a person of ordinary skill in the art to disperse aqueous food in alcohol via sonication. Nor does the Examiner’s analysis adequately explain why a person of ordinary skill in the art would have been motivated to combine Bates with the unrelated encapsulation method of Stark to sonicate aqueous food prior to mixing with the prolamin solution. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; Appeal 2014-006160 Application 13/085,088 4 instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”). On the record before us, we must reverse the Examiner’s rejection of claim 11. Because the other claims on appeal depend from claim 11, and the Examiner’s rejection of those claims does not remedy the foregoing error, we likewise must reverse the Examiner’s rejection of claims 12 and 14–24. CONCLUSION We REVERSE the Examiner’s rejection of claims 11, 12, and 14–24. REVERSED Copy with citationCopy as parenthetical citation