Ex Parte Guisinger et al

Board of Patent Appeals and Interferences

Sep 7, 2012

12109991 (B.P.A.I. Sep. 7, 2012)

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.
12/109,991 04/25/2008 Robert E. Guisinger GIV.P30255 4591
23575 7590 09/07/2012
CURATOLO SIDOTI CO., LPA
24500 CENTER RIDGE ROAD, SUITE 280
CLEVELAND, OH 44145
EXAMINER
POURBOHLOUL, SARIRA CAMILLA
ART UNIT PAPER NUMBER
1765
MAIL DATE DELIVERY MODE
09/07/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte ROBERT E. GUISINGER
and ROBERT B. WIELAND
________________

Appeal 2011-009207
Application 12/109,991
Technology Center 1700
________________

Before CATHERINE Q. TIMM, JEFFREY T. SMITH, and
GEORGE C. BEST, Administrative Patent Judges.

BEST, Administrative Patent Judge.

DECISION ON APPEAL

The Examiner finally rejected claims 1-11 of Application 12/109,991
under 35 U.S.C. § 102(b) as anticipated. Appellants seek reversal of this
rejection 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.
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Application 12/109,991

3
Background
The ’991 application describes a method for making microcapsules
comprising a shell and a solid core of waxy material. Spec. 1. According to
the Specification, the microcapsules produced by the claimed process more
effectively retain active ingredients such as flavors or fragrances within the
microcapsule than do prior art microcapsules. Id.
The ’991 application’s method may be generally described as follows:
First, the waxy material is dispersed in a hydrophobic medium in which it is
insoluble. Id. Next, the mixture of the hydrophobic medium and wax is
dispersed into an aqueous solution containing a capsule-wall forming
material to create an oil-in-water emulsion. Id. Then the capsule wall is
formed on the emulsified droplets to create capsules that contain the water-
immiscible medium and the wax particles. Id. After the capsules are formed,
they are heated to a temperature that is above the wax’s melting point and
then cooled to a temperature below the wax’s melting point. Id. The post-
encapsulation heating and cooling allows the wax to reform as
microcrystalline particles inside the capsules. Id. at 3-4. The ’991 application
asserts that due to this unitary interior structure, the capsules have an
improved ability to retain active ingredients such as flavors or fragrances. Id.
at 4.
Claim 1 of the ’991 application is the only independent claim and is
reproduced below:
1. A process of preparation of microcapsules comprising a
shell and a core that comprises a waxy solid, comprising
(a) dispersing particles of waxy solid material in a water-
immiscible liquid in which the waxy solid material is
insoluble;
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(b) emulsifying the resulting dispersion into an aqueous
solution of a capsule wall-forming material to form an
emulsion of droplets;
(c) forming a coating of the capsule wall-forming material
on the emulsified droplets containing the dispersed waxy
solid particles to provide capsules;
(d) heating the capsules to a temperature above the melting
point of the waxy solid material; and
(e) cooling the capsules to a temperature below the melting
point of the waxy solid material.
App. Br. 23.
Rejection
The Examiner finally rejected claims 1-11 of the ’991 application
under 35 U.S.C. § 102(b) as anticipated by U.S. Patent No. 6,231,873 B1
(“Noda,” issued May 15, 2001).
Discussion
Appellants have focused on limitations recited in claim 1 without
offering any substantive arguments in support of the separate patentability of
any other claim. App. Br. 21-22. Therefore, we confine our discussion to
claim 1. Claims 2-11 stand or fall with claim 1. See 37 C.F.R.
§ 41.37(c)(1)(vii).
Noda describes a method for making soft, fine, gelatin microcapsules
containing a liquid and/or solid hydrophobic component. Noda col. 1, ll. 12-
35. These microcapsules are intended for use in external treatment agents
such as cosmetics. Id. The method described in Noda comprises producing
an oil-in-water emulsion of the hydrophobic material in a heated aqueous
solution of the capsule film-forming material. Id. at col. 19, ll. 34-44. The
emulsion is cooled, and the capsule films are gelled. Id. The capsule films
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Application 12/109,991

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then can be hardened, producing an end product that can be used in various
product formulations. Id.
Appellants argue that Noda does not anticipate the ’991 application’s
claims because Noda does not describe steps (d) and (e) of claim 1. App. Br.
11. These steps require that the microcapsules, once hardened, are heated
above the melting point of their solid or semi-solid wax interiors and then
cooled to a temperature below the interiors’ melting point. Id.
The Examiner found that Noda describes steps (d) and (e) of claim 1
in Examples 3-1 through 3-8. Ans. 3-4. In these examples, microcapsules
produced by Noda’s method are incorporated into various formulations, such
as lotions, creams, and lipsticks. Noda col. 28, l. 21-col. 33, l. 21. In each of
these examples, the formulation was prepared by adding a microcapsule
containing a hydrophobic component to purified water, which was then
heated to 70°C. E.g., id. at col. 28, ll. 56-63. The heated aqueous phase
suspension of microcapsules was added to a heated oil phase mixture of the
remaining ingredients to produce a water-in-oil emulsion. Id. This emulsion
was then cooled to produce the final product. Id.
Appellants argue that Examples 3-1 through 3-8 do not describe every
step in the claimed method because the material incorporated in the
microcapsules in each of these Examples is not a waxy solid. App. Br. 17-
19. In each of the examples, the content of the capsules is described as “the
oil component.” See Noda col. 28, l. 21-col. 33, l. 21.
The Examiner responds that Noda describes a wide range of materials
that may be incorporated into microcapsules using the methods it describes.
Ans. 7. Included in these materials are a number of solid waxes, such as
beeswax and jojoba wax. Id. (citing Noda col. 10, ll. 24-43). Therefore,
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argues the Examiner, “one would immediately envisage applying the post-
encapsulation heating step of Example 3-1 . . . to all the microcapsules of the
broad disclosure including the ones with a waxy core.” Id. at 8.
We cannot sustain the Examiner’s finding that Noda anticipates claim
1 of the ’991 application. To anticipate under 35 U.S.C. § 102, a prior art
reference must not only disclose all elements of the claim within the four
corners of the document, but must also disclose those elements arranged as
in the claim. In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990). As our
discussion of Appellants’ arguments demonstrates, Noda does not meet this
standard. Appellants assert that none of Noda’s formulations which are
specifically described as exposing the capsules to a post-encapsulation
heating and cooling process include capsules that have a solid wax
component. App. Br. 17-19.1
Furthermore, several of Noda’s exemplary formulations do include
capsules containing solid wax components. See, e.g., col. 25, l. 52-col. 27,
l. 8. Noda, however, does not describe the product formulation process, e.g.,
making a cream, used in these examples in sufficient detail for us to
determine whether the capsules in these formulations were exposed to a
post-encapsulation heating and cooling process as required by claim 1 of the
’991 application. The Examiner does not make—and the record before us

1 The Examiner does not challenge this assertion, even though several of the
capsules described in Examples 3-1 to 3-8 of Noda contain ingredients—
e.g., estrone (Example 3-3), pyridoxyl dipalmitate (Example 3-6),
ergocalciferol (Example 3-7), and ascorbyl dipalmitate (Example 3-7)—that
are solid at room temperature. We are unable to make findings of fact
regarding either the solubility of these compounds in the other components
of the hydrophobic interiors of Noda’s capsules or the melting point of the
mixtures present inside the capsules. Thus, we do not impose a new ground
of rejection on this basis.
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would not support—a finding that post-encapsulation heating and cooling
processes like those described in Examples 3-1 through 3-8 are an inherent
part of formulating creams, lipsticks, or other cosmetic products. Therefore,
we cannot find that Noda’s examples which definitely do contain a solid
wax component in the capsule interior anticipate claim 1 of the ’991
application.
Thus, the Examiner’s finding that Noda anticipates claim 1 of the ’991
application is not supported by a preponderance of the evidence.
Conclusion
For the foregoing reasons, we cannot sustain the Examiner’s rejection
of claims 1-11 of the ’991 application as anticipated.

REVERSED

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