Ex Parte Kohane et al

Patent Trial and Appeal Board

Dec 17, 2014

11846212 (P.T.A.B. Dec. 17, 2014)

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.
11/846,212 08/28/2007 Daniel S. Kohane 006943.03673 1016
66811 7590 12/18/2014
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
12/18/2014 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 DANIEL S. KOHANE, YEO YOON, PETER GIVEN, and
ROBERT S. LANGER
____________

Appeal 2013-004024
Application 11/846,212
Technology Center 1700
____________

Before BRADLEY R. GARRIS, CHUNG K. PAK, and GEORGE C. BEST,
Administrative Patent Judges.

PAK, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal1 under 35 U.S.C. § 134(a) from the Examiner’s
decision2 finally rejecting claims 1‒3, 7‒29, 31, 32, and 34‒36, which are all of the
claims pending in the above-identified application. We have jurisdiction under 35
U.S.C. § 6(b).
We REVERSE.
The subject matter on appeal is directed to:
[complex coacervate] delivery systems for lipophilic nutrients which
may be incorporated into food and beverage products such as, for

1 Appeal Brief filed June 27, 2012 at 3.
2 Final Rejection mailed February 7, 2012 at 3 and the Examiner’s Answer mailed
November 21, 2012 (“Ans.”) at 4‒5.
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Application 11/846,212

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example, a ready-to-drink acidic beverage. By encapsulating the
lipophilic nutrient, any negative effects (e.g., oxidation, off flavor,
unpleasant aroma, etc.) can be reduced. Controlled release of the
encapsulated lipophilic nutrient in the lower gastrointestinal tract
reduces aftertaste, and also enhances bioavailability and overall
physiological efficacy of the lipophilic nutrient.
(Spec. 5, ¶ 14.) The term “complex coacervate” is defined as “a particle having a
shell comprising at least two oppositely charged polymers (that is, cationic
polymer of at least one type and anionic polymers of at least one type) which
substantially encapsulates a core material.” (Spec. 6, ¶ 15.) The term “polymers”
is defined as including “not only traditional polymers, but also oligomers and the
like.”3 (Id.) The core material is made of at least one lipophilic nutrient, such as
fish oil. (Spec. 3, ¶ 9 and 5, ¶ 14.) Details of the appealed subject matter are

3 Upon return of this application to the Examiner, both the Examiner and
Appellants are advised to determine whether the terms “complex coacervate” and
“polymers” in the claims on appeal meet the definiteness requirement of 35 U.S.C.
§ 112, second paragraph, in light of the definitions for such terms at page 6 of the
Specification. We note that the definition for “complex coacervate,” for example,
includes the term “polymers” defined to include “not only traditional polymers, but
also oligomers and the like” and the term “substantially encapsulate” which terms
include relative expressions. (Spec. 6 ¶ 15, (emphasis added).) According to
Seattle Box Co. v. Industrial Crating & Packing, Inc., 731 F.2d 818, 826 (Fed. Cir.
1984), “[d]efiniteness problems arise when words of degree [such as “like” and
“substantially,”] are used in a claim . . . . When a word of degree is used the
[Examiner] must determine whether the patent’s specification provides some
standard for measuring that degree [to ascertain the definiteness of the claim
scope].” See also Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2124
(2014). (“The fact that [the patent holder] can articulate a definition supported by
the specification . . . does not end the inquiry. Even if a claim term’s definition can
be reduced to words, the claim is still indefinite if a person of ordinary skill in the
art cannot translate the definition into meaningfully precise claim scope.”).
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recited in illustrative independent claim 1,4 which is reproduced below from the
Claims Appendix of the Appeal Brief:
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 lipophilic nutrient;
wherein the complex coacervate delivery system upon
ingestion, at one or more pH values within the range of pH 6.0 and
above, releases the lipophilic nutrient in the lower gastrointestinal
tract.
(App. Br. 16 (emphasis added).)
Appellants seek review of the following grounds of rejection maintained by the
Examiner in the Examiner’s Answer:5
1. Claims 1‒3, 7‒29, 31, 32, 34, and 36 under 35 U.S.C.§ 103(a) as
unpatentable over the disclosure of McClements;6 and
2. Claim 35 under 35 U.S.C. § 103(a) as unpatentable over the combined
disclosures of McClements and Benoit.7 (App. Br. 11.)

4 Independent claims 24, 25, 26, 27, 31, and 34 also require a single shell
containing at least on cationic polymer, such as gelatin, and a least one anionic
polymer, such as gum acacia, which encapsulates a core made of at least one
lipophilic nutrient.
5 The Examiner has withdrawn the rejection of claims 1‒3, 7‒29, 31, 32, and 34‒
36 under 35 U.S.C. § 112, second paragraph, as being indefinite set forth in the
Final Rejection. (Ans. 7.)
6 US 2007/0104849 A1 published in the name of McClements et al. on May 10,
2007 (“McClements”).
7 US 6,183,783 B1issued to Benoit et al. on February 6, 2001(“Benoit”).
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Upon consideration of the evidence on this record, we concur with Appellants
that the Examiner has not carried the burden of establishing a prima facie case of
obviousness regarding the subject matter recited in the above claims within the
meaning of 35 U.S.C. § 103(a). In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir.
1992) (“[T]he examiner bears the initial burden, on review of the prior art or on
any other ground, of presenting a prima facie case of unpatentability.”) In
particular, the Examiner has not established that McClements8 would have
suggested using a single shell (layer) containing at least on cationic polymer, such
as gelatin, and a least one anionic polymer, such as gum acacia, for encapsulating a
core made of at least one lipophilic nutrient as required by the claims on appeal for
the reasons set forth in the Appeal Brief and the Reply Brief. As explained by
Appellants, McClements is directed to employing any combination of emulsifier
and polymeric components leading to the formation of multiple layers (multiple
shells) over a core material, with each shell or layer having a net charge opposite to
a previously incorporated shell or layer, whereas the claims are limited to
employing a single shell (a single layer) containing at least two oppositely charged
polymers for encapsulating a core material. (App. Br. 13; see also McClements,
¶¶ 12, 13, 19, 23, 35.) Indeed, contrary to the Examiner’s finding at page 3 of the
Answer, ¶ 40 of McClements teaches employing multiple (two) layers (multiple
shells) with an outer layer having a net charge opposite to an inner layer, rather
than a single layer (single shell) containing at least one cationic polymer and at
least one anionic polymer.
In response to Appellants’ argument regarding this factual error relating to
McClements, the Examiner alternatively argues that the term “single shell” recited

8 The Examiner only relies upon Benoit’s disclosure to show the particular
copolymer recited in dependent claim 35. (Ans. 6.)
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in the claims on appeal is broad enough to include the multiple layers taught by
McClements. (Ans.7–8.) However, as discussed supra, the Specification
identifies a layer that encapsulates a core as a shell. In re Morris, 127 F.3d 1048,
1054 (Fed. Cir. 1997) (“[I]t would be unreasonable for the PTO to ignore any
interpretive guidance afforded by the applicant’s written description.”). The
claims also recite a single shell containing at least on cationic polymer and a least
one anionic polymer for a core. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed.
Cir. 2005) (en banc)(“[T]he context of the surrounding words of the claim also
must be considered in determining the ordinary and customary meaning of those
terms.”). Thus, the weight of the evidence supports Appellants’ interpretation that
the term “single shell” as used in the claims on appeal is a single layer that
surrounds or encapsulates a core. It would be unreasonable for the Examiner to
interpret the term “single shell” used in the context of encapsulating a core as
including multiple layers or shells surrounding or encapsulating a core more than
once, for such interpretation is not consistent with the express language of the
claims and the Specification.
Accordingly, on this record, we concur with Appellants that the Examiner
has erred in determining that McClements alone, or in combination with Benoit,
would have suggested the subject matter recited in the claims on appeal within the
meaning of 35 U.S.C. § 103(a).
ORDER
Upon consideration of the record, and for the reasons given above and in the
Appeal Brief and the Reply Brief, it is

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ORDERED that the decision of the Examiner to reject the claims on appeal
under 35 U.S.C. §103(a) is REVERSED.
REVERSED

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