Ex Parte Given

Patent Trial and Appeal Board

Mar 25, 2015

11846236 (P.T.A.B. Mar. 25, 2015)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/846,236 08/28/2007 Peter Given 006943.03682 1062
66811 7590 03/25/2015
BANNER & WITCOFF, LTD.
and ATTORNEYS FOR CLIENT NO. 006943
10 SOUTH WACKER DR.
SUITE 3000
CHICAGO, IL 60606
EXAMINER
DUBOIS, PHILIP A
ART UNIT PAPER NUMBER
1791
MAIL DATE DELIVERY MODE
03/25/2015 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 PETER GIVEN
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Appeal 2013-004202
Application 11/846,236
Technology Center 1700
____________
Before MARK NAGUMO, GEORGE C. BEST, and
WESLEY B. DERRICK, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 1‒3, 7‒25, and 27‒31 of
Application 11/846,236 under 35 U.S.C. § 103(a) as obvious. Final Act.
(February 7, 2012). The Examiner also rejected these claims under 35
U.S.C. § 112, ¶ 2 as indefinite. Id. Appellant1 seeks reversal of these
rejections pursuant to 35 U.S.C. § 134(a). We have jurisdiction under 35
U.S.C. § 6(b).
For the reasons set forth below, we REVERSE.

1 PepsiCo, Inc., is identified as the real party in interest. App. Br. 3.
Appeal 2013-004202
Application 11/846,236
2
BACKGROUND
The ’236 Application describes compositions for the delivery of
water-insoluble flavorants via acidic aqueous systems. Spec. ¶ 1. The
flavorants are encapsulated in a single-shell complex coacervate delivery
system comprising at least one food grade cationic polymer and at least one
food-grade anionic polymer. Id. at ¶¶ 12‒13.
Claim 1 is representative of the ’236 Application’s claims and is
reproduced below:
1. A complex coacervate delivery system comprising an
aqueous dispersion of complex coacervates, including at
least single shell complex coacervates:
wherein the single shell complex coacervates consist
essentially of:
a single shell comprising at least one food-grade
cationic polymer and at least one food-grade anionic
polymer; and
a core comprising at least one water-insoluble
flavorant;
wherein upon ingestion, at one or more pH values within
the range of pH 6.0 and above, the complex coacervate
delivery system releases at least a substantial portion of
the flavorant in the mouth.
App. Br. 15 (Claims App’x).
Appeal 2013-004202
Application 11/846,236
3
REJECTION
On appeal, the Examiner maintains2 the following rejection:
Claims 1‒3, 7‒25, and 27‒31 are rejected under 35 U.S.C. § 103(a) as
unpatentable over McClements.3 Final Act. 3.
DISCUSSION
Appellant argues that the § 103 rejection over McClements should be
reversed because McClements “fails to teach each and every element of
Appellants’ [sic] novel aqueous dispersion of complex coacervates. App.
Br. 11‒12. In particular, Appellant argues that McClements does not
describe or suggest (1) a single-shell complex coacervate formed from (2) at
least one cationic polymer and at least one anionic polymer. Id. at 12.
We reverse for the reasons set forth in Appellant’s Appeal and Reply
Briefs. We add the following for clarity.
The Examiner found that McClements describes the formation of a
complex coacervate with a single-layer shell comprised of anionic and
cationic polymers. Ans. 3 (citing McClements ¶¶ 16, 18, 20, 40). In
response to Appellant’s arguments, however, the Examiner argues:
[N]either neither the claims nor the specification limit the
number of layers that the “single shell” set forth in the claimed
invention may have. Thus, applicant’s argument that the
references fail to show certain features of applicant’s invention,
it is noted that the features upon which applicant relies (i.e., a
shell with a single layer) are not recited in the rejected claim(s).

2 The Examiner has withdrawn the rejection of claims 1‒3, 7‒25, and 27‒31
under 35 U.S.C. § 112, ¶ 2. Ans. 6.
3 US 2007/0104849 A1, published May 10, 2007.
Appeal 2013-004202
Application 11/846,236
4
Although the claims are interpreted in light of the specification,
limitations from the specification are not read into the claims.
Ans. 6‒7.
We disagree with the Examiner’s argument. During prosecution, a
claim’s terms are given their broadest reasonable interpretation consistent
with the Specification as it would have been understood by a person of
ordinary skill in the art at the time of the invention. In view of Appellant’s
Specification, it is clear that an interpretation of the term “single shell” that
encompasses a single shell having multiple layers would be unreasonably
broad.
We also conclude that the Examiner’s construction of the phrase
“consisting essentially of” as having the same meaning as “comprising” is
unreasonable to the extent that it would permit the claim to encompass
multi-layer shells. Appellant’s Specification emphasizes the importance of a
single-layer shell. Thus, the number of layers in a shell is an essential
characteristic of the claimed invention.
In view of the proper claim construction, the Examiner erred in
finding that McClements describes or suggests the formation of a complex
coacervate meeting the claim limitations because the claims require a single-
layer shell comprised of anionic and cationic polymers. The portion of
McClements relied upon by the Examiner expressly describes its
composition as “compris[ing] a plurality of component layers of any food-
grade material about an oil/fat component, each layer comprising a net
charge opposite that of at least a portion of an adjacent such material.”
McClements ¶ 23. The Examiner does not direct us to a description of a
single-layer shell coacervate.
Appeal 2013-004202
Application 11/846,236
5
CONCLUSION
For the reasons set forth above, we reverse the rejection of claims 1‒3,
7‒25, and 27‒31 of the ’236 Application.
REVERSED

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