Ex Parte GROVER et al

Patent Trial and Appeal Board

Mar 23, 2016

12360387 (P.T.A.B. Mar. 23, 2016)

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.
12/360,387 01/27/2009 Julie Anne GROVER CFLAY.80489 6249
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 JULIE ANNE GROVER, KEVIN ARTHUR HEITFELD,
JAMES DEAN OXLEY, and JOSEPH THOMAS PERSYN1
____________

Appeal 2015-000247
Application 12/360,387
Technology Center 1700
____________

Before JEFFREY T. SMITH, BEVERLY A. FRANKLIN, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.

KENNEDY, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1–3, 5–8, 10, 12–14, and 23–25. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

BACKGROUND
The subject matter on appeal relates to a method for the encapsulation
of flavor using a natural ingredient, such as a prolamin, to retain the flavor.

1 According to the Appellants, the real party in interest is Frito-Lay North
America, Inc. App. Br. 2.
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Spec. ¶ 2; Claims 1, 23. Claims 1 and 23 are reproduced below from pages
16 and 18 (Claims Appendix) of the Appeal Brief:
1. A method for encapsulating flavor comprising the sequential
steps of:
dissolving at least one prolamin in a solvent, thereby forming a
prolamin solution of dissolved prolamin, wherein the prolamin
solution comprises a viscosity of at least approximately 4.0cP;
adding a flavoring to said prolamin solution;
mixing said flavoring under high shear to thoroughly dissolve
said flavoring within said prolamin solution; and
drying said solution of said dissolved prolamin and said
dissolved flavoring using spinning disk atomization, thereby
forming a prolamin-encapsulated flavoring powder comprising
spherical beads and wherein said prolamin-encapsulated
flavoring comprise a particle size distribution of approximately
1 to approximately 250 microns and between about 15% and
about 75% by weight flavoring.
23. A method for encapsulating flavor comprising the sequential
steps of:
dissolving a prolamin in a solvent, thereby forming a prolamin
solution of dissolved prolamin;
dispersing a flavor within said solvent comprising said dissolved
prolamin; and
drying said solvent comprising said dissolved prolamin and said
dispersed flavor, thereby producing a powder of encapsulated
flavoring, said powder comprising between about 15% to about
75% flavoring.

EVIDENCE RELIED ON BY THE EXAMINER
Stark et al. US 5,021,248 June 4, 1991
Mathiowitz et al. US 2001/0042932 A1 Nov. 22, 2001
Andersen et al. US 2004/0146599 A1 July 29, 2004
Persyn et al. US 2007/0053990 A1 Mar. 8, 2007
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Sjöblom WO 01/19345 A1 Mar. 22, 2001

REJECTIONS ON APPEAL
1. Claims 1–3, 5–8, 12–14, and 25 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Persyn in view of Stark, Mathiowitz, and
Sjöblom.
2. Claim 10 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Persyn in view of Stark, Mathiowitz, and Sjöblom, further in view of
Andersen.
3. Claims 23 and 24 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Persyn in view of Stark.

ANALYSIS
The Appellants present separate arguments only for claims 1, 23, and
24. We therefore limit our discussion to those claims. Claims 2, 3, 5–8, 12–
14, and 25 stand or fall with claim 1 (Rejection 1). See 37 C.F.R.
§ 41.37(c)(1)(iv). Claim 10 (Rejection 2) depends from claim 1 and is not
argued separately, so it likewise stands or falls with claim 1.
After review of the cited evidence in the appeal record and the
opposing positions of the Appellants and the Examiner, we determine that
the Appellants have not identified reversible error in the Examiner’s
rejections. We therefore affirm the rejections for reasons set forth in the
Examiner’s Answer. See generally Ans. 2–10. We add the following for
emphasis and completeness.

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Claim 1
The Examiner finds that Persyn teaches a method of encapsulating
pharmaceutically active agents comprising each element of claim 1 except
(1) the use of prolamin as the encapsulant, (2) the encapsulation of flavors,
rather than pharmaceutically active agents, (3) a viscosity of at least 4.0 cP
for the solution of encapsulant, and (4) the use of high shear mixing. Ans.
3–5. Concerning the first and second of those elements, the Examiner finds
that Stark teaches a method similar to that of Persyn in which the
encapsulant is a prolamin and the active agent is a flavoring. Id. at 4. The
Examiner concludes that it would have been obvious to combine the
teachings of Persyn and Stark because
Stark and Persyn similarly teach utilizing biodegradable
polymers as encapsulating material, dissolving the biodegradable
substance in solvents such as ethanol, methanol, and/or acetone,
and encapsulating pharmaceutically active agents . . . , and
Persyn teaches preparing microparticles with other agents and
matrix materials which is interpreted to include flavors and
prolamins . . . .
Id. at 4.
Concerning the claimed viscosity of 4.0 cP, the Examiner finds that
Mathiowitz teaches a similar method for preparing microparticles, including
the use of a prolamin solution with a viscosity of at least 4.0 cP. Id. at 4–5.
The Examiner further finds that Mathiowitz teaches modifying the viscosity
of the prolamin solution to control particle size, and the Examiner concludes
that it would have been obvious to combine Mathiowitz with Persyn and
Stark “in order to produce the desired product and the size of the final
product.” Id. at 5. Concerning the use of high shear mixing, the Examiner
finds that Persyn implicitly teaches high shear mixing and that Sjöblom,
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which also relates to a method of making microparticles, discloses the use of
high shear mixing for purposes of deagglomeration. Id.
The Appellants first argue that a person of ordinary skill in the art
“would be led [by Persyn and Stark] in a different direction than what is in
Appellant’s claims” because Stark teaches that encapsulation takes place
during a precipitation step, whereas Persyn teaches that encapsulation takes
place during a drying step. App. Br. 6. The Appellants rely on the Affidavit
of Joseph T. Persyn (a named inventor on the application subject to this
appeal), which explains certain differences between the methods of Stark
and Persyn, for support. Id. (citing Persyn Aff. ¶ 5).
We do not find the Appellants’ argument to be persuasive. As the
Examiner explains, Persyn and Stark teach similar methods of encapsulating
active agents. The methods of both Persyn and Stark comprise dissolving
the encapsulant in a solution and then dispersing the active agent (drug,
flavoring, etc.) in the solution. Compare Persyn ¶¶ 55–56 with Stark at
6:21–25, 7:43–55. Stark expressly teaches that its method can utilize a
prolamin as the encapsulant, and that it can be used to encapsulate both
drugs and flavors. E.g., Stark at 4:20–21, 7:43–46. Persyn focuses on the
encapsulation of drugs, but it expressly teaches that “microspheres may be
produced comprising core materials other than pharmacologically active
agents.” Persyn ¶ 61 (emphasis added). Persyn does not exclude the
possibility of encapsulating flavors. Id. While the Appellants identify
differences in the methods of Persyn and Stark (e.g., when encapsulation
occurs), their arguments fail to establish—or even to suggest—that those
differences would have dissuaded a person of ordinary skill from making the
modifications proposed by the Examiner.
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The Examiner’s rejection involves the substitution of one known
encapsulant for another, where both encapsulants are known to be successful
when used in similar methods of encapsulation to achieve similar goals.
E.g., Persyn Aff. ¶ 5 (“[T]he goals of Persyn and Stark are similar in terms
of teaching encapsulation methods . . . .”). The rejection further proposes
the use of a flavoring as an active agent, where the references teach that a
variety of active agents (including drugs and flavorings) may successfully be
used with the disclosed methods. Simple substitutions and the use of known
elements for established functions typically do not result in nonobvious
subject matter. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).
The mere fact that the encapsulation may occur at different points in Persyn
and Stark does not persuade us otherwise. Cf. In re Fulton, 391 F.3d 1195,
1201 (Fed. Cir. 2004) (“The prior art’s mere disclosure of more than one
alternative does not constitute a teaching away from any of the[] [disclosed]
alternatives . . . .”).
We have given weight to the Persyn Affidavit insofar as it reflects
factual differences between the Appellants’ invention and the prior art. The
Affiants’ opinion on the ultimate legal issue is not evidence in the case. In
re Chilowsky, 306 F.2d 908, 916 (CCPA 1962). While some weight ought
to be given to a persuasively supported statement of one skilled in the art on
what was not obvious to him, In re Lindell, 385 F.2d 453, 456 (CCPA
1967), In re Weber, 341 F.2d 143 (CCPA 1965), here, despite the Affiants’
contrary assertions, the legitimate inferences from the art of record are too
strong to be affected by the weight to which the affidavit is entitled. See
Yorkey v. Diab, 601 F.3d 1279, 1284 (Fed. Cir. 2010) (factfinder has
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discretion to give more weight to one item of evidence over another unless
no reasonable trier of fact could have done so).
The Appellants also argue that it is “improper to so easily reach the
conclusion that pharmaceutical agents are interchangeable with flavors in
every method or circumstance.” App. Br. 7. We do not find that argument
persuasive. The Examiner’s rationale does not require a conclusion that
“pharmaceutical agents are interchangeable with flavors in every method or
circumstance.” See id. (emphasis added). As explained above, Stark
expressly teaches that both drugs and flavorings are suitable agents to be
used with its encapsulation method. Stark at 7:43–46. The method of
Persyn likewise is not limited to drugs. Persyn ¶ 61. Neither the
Appellants’ arguments nor the Persyn Affidavit provide a persuasive
explanation as to why those teachings would not have provided a person of
ordinary skill in the art with a reasonable expectation of success in using the
method of Persyn as modified by Stark to encapsulate both drugs and
flavorings. The fact that drugs and flavorings may have different
compositions and different properties, see App. Br. 7, does not negate the
plain teachings of the references that the disclosed methods are suitable for a
variety of active agents, including both drugs and flavorings.
To the extent that the Appellants’ arguments focus primarily on Stark,
e.g., App. Br. 7 (quoting the Persyn Affidavit and focusing on the
encapsulation method of Stark), we note that those arguments cannot
establish reversible error in the Examiner’s rejection because the proposed
encapsulation method—that of Persyn as modified by Stark—is different
from that of Stark alone. See In re Keller, 642 F.2d 413, 426 (CCPA 1981)
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(“[O]ne cannot show non-obviousness by attacking references individually
where, as here, the rejections are based on combinations of references.”).
The Appellants next argue that the high shear mixing recited by
claim 1 would not have been obvious to a person of ordinary skill in the art.
We disagree. As the Examiner finds, high shear mixing was a known
technique at the time of the invention, and it was known to be an effective
technique in combination with methods and goals similar to those disclosed
by Persyn and Stark. E.g., Sjöblom at 13:4–5. A person of ordinary skill in
the art would have had sufficient skill to determine an appropriate method of
mixing, including the use of high shear mixing as taught by Sjöblom. We
are therefore not persuaded by the Appellants’ arguments concerning high
shear mixing. See KSR, 550 U.S. at 417 (use of known technique to improve
known method in an expected way typically does not result in nonobvious
subject matter).
In view of the arguments presented, we affirm the rejection of claim 1.

Claim 23
The Appellants separately argue independent claim 23, see App. Br.
9–13, which is reproduced above. Claim 23 is similar to, but broader than,
claim 1. For instance, claim 23 does not include the viscosity limitation, it is
not limited to high shear mixing, and it does not specify the method by
which the solution is dried (i.e., spinning disk atomization).
The Examiner finds that claim 23 would have been obvious in view of
Persyn and Stark for the reasons set forth above. Ans. 5–6.
The Appellants present essentially the same arguments discussed
above. App. Br. 9–13. As explained above, we are not persuaded by those
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arguments. We further note that Stark teaches (1) a method of encapsulating
a flavor, e.g., Abstract, 7:43–36; (2) dissolving a prolamin in a solvent to
form a prolamin solution of dissolved prolamin, e.g., 4:20–21, 28–30, 6:21–
25, 7:14–15; (3) dispersing a flavor within the solvent comprising the
dissolved prolamin, e.g., 7:43–55 (“The material to be encapsulated is
dissolved in either the aqueous or organic phase as dictated by the solubility
of the material.”); (4) drying the solvent to produce a powder, e.g., 7:58–62
(“The suspension may be . . . reduced to a dry powder, using standard
techniques such as flash drying, lyophilization or spray drying.”), and (5) the
powder comprising 15% to 75% flavoring, e.g., 7:62–66 (“[T]he material
from the precipitator . . . can be concentrated to between about 20 and 40%
by weight by evaporation and/or ultrafiltration.”).
The Appellants’ arguments do not persuade us of reversible error in
the Examiner’s conclusion that claim 23 would have been obvious over the
cited prior art.

Claim 24
The Appellants separately argue dependent claim 24, see App. Br. 13–
14, which depends from claim 23 and further recites “wherein said powder
comprises about 55% flavoring.” The Appellants argue that the prior art
does not “teach[], disclose[], or suggest[] that the resulting encapsulated
powder could comprise a flavoring presence as high as about 55% . . . .” Id.
We disagree. As the Examiner explains, Persyn teaches a variety of
ranges of active agent concentrations, including ranges that encompass 55%.
Ans. 5; see also Persyn ¶ 59. A person of ordinary skill in the art would
have had sufficient skill to select an appropriate level of flavoring, including
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55% flavoring, which falls within the range recited by Persyn. The
Appellants do not address the Examiner’s findings on that point and,
therefore, fail to show reversible error in the rejection.

CONCLUSION
We AFFIRM the Examiner’s rejection of claims 1–3, 5–8, 10, 12–14,
and 23–25.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED