Ex Parte Kyle et al

Board of Patent Appeals and Interferences

Jul 17, 2012

11187802 (B.P.A.I. Jul. 17, 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.
11/187,802 07/22/2005 David R. Kyle D-43804-01 8336
7590 07/17/2012
Rupert B. Hurley Jr.
Sealed Air Corporation
P.O. Box 464
Duncan, SC 29334
EXAMINER
KASHNIKOW, ERIK
ART UNIT PAPER NUMBER
1782
MAIL DATE DELIVERY MODE
07/17/2012 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 DAVID R. KYLE, STEVEN T. CALVERT,
HILLARY CRAWFORD, DAVID HERNDON,
and MILISSA SMITH
____________

Appeal 2011-001464
Application 11/187,802
Technology Center 1700
____________

Before BEVERLY A. FRANKLIN, LINDA M. GAUDETTE, and
KAREN M. HASTINGS, Administrative Patent Judges.

GAUDETTE, Administrative Patent Judge.

DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s decision1
finally rejecting claims 1, 2, 4-15, and 17-26, the only claims pending in the
Application.2 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

1 Final Office Action mailed Apr. 28, 2009 (“Final”)
2 Appeal Brief filed Dec. 28, 2009 (“Br.”)
Appeal 2011-001464
Application 11/187,802

2

The invention relates “to thermoplastic laminates, and methods of using
[the] same especially to package and heat or cook a food product to deliver
enhanced flavor, aroma, and/or color to the food product.” (Spec.3 1:9-11.)
Appellants request review of the following grounds of rejection (Br. 6):
1. claims 1, 2, 4, 6-11, 13-15, 17, 19, 21, and 22 under 35 35 U.S.C.
§102(a) as anticipated by Koenig (DE 102 44 088 A1, published Apr. 1, 2004, US
2006/0003058 used as a translation) (Ans.4 4-6);
2. claim 5 under 35 U.S.C. §103(a) as unpatentable over Koenig in view
of Matsumoto (US 4,973,486, issued Nov. 27, 1990) (Ans. 6);
3. claims 12, 13, 18, and 23-26 under 35 U.S.C. §103(a) as unpatentable
over Koenig in view of Barmore (US 2001/0008658 A1, published Jul. 19, 2001)
(Ans. 6-8); and
4. claim 20 under 35 U.S.C. §103(a) as unpatentable over Koenig in
view of Barmore in further view of Lee (US 4,408,000, issued Oct. 4, 1983) (Ans.
8-9).
Appellants present separate arguments in support of patentability of
dependent claims 5 and 7. Appellants’ arguments in support of patentability of the
remaining claims subject to the above-enumerated first, third and fourth grounds of
rejection are based on limitations common to the independent claims (see italicized
claim language infra), i.e., claims 1, 10, and 14. (See Br. 7-14 and 22-26.) For
reference, independent claim 1 is reproduced below from the Claims Appendix to
the Appeal Brief (emphasis added):

3 Specification filed Jul. 22, 2005
4 Examiner’s Answer mailed May 27, 2010
Appeal 2011-001464
Application 11/187,802

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1. A laminate comprising:
(A) a substrate layer; and
(B) an additive delivery layer comprising:
(i) a water-insoluble thermoplastic polymer, and
(ii) water-soluble granules consisting essentially of at least one
member selected from the group consisting of colorant, flavorant, and
odorant.
The first issue we consider is: did the Examiner reversibly err in finding that
the water soluble granules, as claimed in claims 1, 10, and 14, read on Koenig’s
pulverulent organic filler having a transferable food additive absorbed therein?
Koenig’s organic filler is in the form of a particle (¶ [0011]) and is
preferably a natural material “such as carrageenan, agar, soybean proteins, ground
carob bean[, etc.]” (¶ [0010]). “The transferable food additive is preferably liquid
under standard industrial conditions.” (¶ [0012].) The transferable food additive is
a colorant, flavorant or odorant. (¶ [0009].) In one method of integrating the food
additive into the filler,
[a] weighed-out amount of the pulverulent organic filler is
placed in an internal mixer. Rotation of the mixing blade of the mixer
fluidizes the powder bed. A metering pump is used to introduce the
liquid colorant, odorant, flavoring, and/or decorative medium, by slow
metering, into the filler powder until a prescribed concentration, based
on the organic filler, has been reached. The dynamic mixing
procedure causes the liquid additive to be absorbed by the filler
without clumping of the filler powder.
(¶ [0026].) Koenig embeds the “powdered organic filler . . . containing a food
additive” in a thermoplastic polymer material to form the inner layer (i.e., the layer
facing the food) of a tube-shaped food wrapper. (Abstract.) Transfer of the food
additive to a food occurs as follows:
Appeal 2011-001464
Application 11/187,802

4

Once the food casings have been stuffed with emulsion,
sausage mixture, or meat mixture, the organic filler which comprises
the stored colorant, odorant, flavoring, and/or decorative media
dissolves at least partially—this process being initiated via a scalding
or steaming process--and transfers it stored materials to the surface of
the contents.
(¶ [0023].)
Appellants’ Specification states that “[t]he color, aroma, and flavor granules
. . . refer to additives that modify the flavor, aroma, and color of a food
composition.” (Spec. 12:3-4.) Appellants’ Specification defines the term
“granule” as including “agglomerates as well as single particles . . . of a flavorant,
odorant, and/or colorant” (Spec. 11:4-6), and “fine additive particles such as
powders” (id. at 10-11).
[The] water-soluble granules are accessible to infusion by moisture
(i.e., moisture permeable), as well as being soluble in the moisture,
during elevated heat processing of a food product which is packaged
in the laminate with the coating against the food product. Water-
soluble granules that are partly or fully dissolved while in contact with
a moisture-containing food product transfer additive to the food
product.
(Spec. 13:12-17.)
Appellants contend the claim phrase “consisting essentially of” precludes the
presence of the pulverulent organic filler because it would materially affect the
basic and novel characteristics of the water soluble granules. (Br. 8.) Appellants
maintain the novel property of the granules is that the colorant, flavorant, and/or
odorant are present as solids. (See id. at 10-11.) Appellants argue Koenig’s food
additives do not have this property because they must be in liquid form for
absorption into the pulverulent organic filler. (Id. at 11 (“Koenig et al has no
teaching or suggestion of solid additive granules other than liquid food additive
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Application 11/187,802

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absorbed into pulverulent organic filler. Thus, Koenig et al has no disclosure of a
granule consisting essentially of a colorant, flavorant, and/or odorant.”).)
Although Koenig’s food additives are initially in liquid form, Appellants
have not persuasively explained why these additives, once absorbed by Koenig’s
filler, are not properly viewed as water soluble granules as claimed, since these
additives are now in the form of colorant, flavorant or odorant particles (see
Koenig ¶ [0026] and Abstract supra). We further agree with the Examiner’s
unrefuted finding that the basic and novel characteristic of Appellants’ invention is
“to impart a color, flavor or odor to the food” (Ans. 9; cf. Spec. 12:3-4 supra), and
that Koenig’s filler would not materially change this characteristic of the invention
(compare Spec. 13:12-17 with Koenig ¶ [0026]; see Ans. 9-10 (noting that Koenig
uses at least one filler which, itself, is a known flavorant)). Koenig’s particles
function in the same manner as Appellants’, i.e., they dissolve with elevated heat
and moisture to transfer the same types of additives to a food product.5
In sum, for the reasons expressed in the Answer and above, we are not
persuaded the Examiner reversibly erred in finding that the water soluble granules,
as claimed in claims 1, 10, and 14, read on Koenig’s pulverulent organic filler
having a transferable food additive absorbed therein.
The second issue we consider is: did the Examiner reversibly err in finding
that Koenig teaches a laminate “wherein the granules are present in the additive
delivery layer at a level of from about 50 to about 85 weight percent, based on total
weight of the additive delivery layer” as recited in claim 7?

5 See In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990) (“[W]hen the PTO shows
sound basis for believing that the products of the applicant and the prior art are the
same, the applicant has the burden of showing that they are not.”).

Appeal 2011-001464
Application 11/187,802

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The Examiner’s rejection of claim 7 is based on a finding that Koenig’s food
additive is present in “a range of 0.75-90%, which covers App[ell]ant’s range.”
(Ans. 4.) This finding is insufficient to support a rejection under 35 U.S.C.
§102(a). See Atofina v. Great Lakes Chem. Corp., 441 F.3d 991, 1000 (Fed. Cir.
2006) (explaining that the disclosure of a broad range is not a disclosure of a
narrow species within that range). Accordingly, we do not sustain the rejection of
claim 7.
The third issue we consider is: did the Examiner rely on improper hindsight
reasoning in determining it would have been obvious to have used a particle size of
“about 10 to about 500 microns” (appealed claim 5) for Koenig’s pulverulent
organic filler having a transferable food additive absorbed therein?
The Examiner finds Koenig is “silent regarding the food additive particle
size.” (Ans. 6.) The Examiner finds Matsumoto teaches food additives having
particle sizes of 3-200 µm. (Id. (citing Matsumoto col. 2, ll. 23-30).) The
Examiner determines one of ordinary skill in the art would have been motivated to
use a particle size for Koenig’s pulverulent organic filler having a transferable food
additive absorbed therein within the range recited in appealed claim 5 “because the
invention of Matsumoto et al. offers the prevention of against decomposition of the
original taste and flavor.” (Id. (citing Matsumoto, col. 1, ll. 55-60).)
As correctly pointed out by Appellants, Matsumoto’s additives are intended
to be directly eaten upon addition to a food and not added to a food wrapper where
they are later dissipated into the food product upon cooking. (Br. 22.) The particle
size of “about 3-200 µm” is identified as suitable for this type of additive use. (See
Matsumoto col. 2, ll. 13-27.) However, Matsumoto also states that where “the
food additive is in the form of a powder, its particle size is not specifically
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Application 11/187,802

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limited.” (Col. 2, ll. 25-26.) The decomposition of taste and flavor which
Matsumoto seeks to avoid results from prior art granulation processes (see
Matsumoto BACKGROUND OF THE INVENTION) and we find no support for
the Examiner’s contention that a particle size of 3-200 µm would avoid such
decomposition.
During examination, the Examiner bears the initial burden of establishing a
prima facie case of obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir.
1992). The prima facie case is a procedural tool, and requires that the examiner
initially produce evidence sufficient to support a ruling of obviousness; thereafter
the burden shifts to the applicant to come forward with evidence or argument in
rebuttal. In re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984).
Appellants have persuasively argued that the Examiner failed to meet the
burden to establish it would have been obvious to have used a particle size of
“about 10 to about 500 microns” for Koenig’s pulverulent organic filler having a
transferable food additive absorbed therein. Accordingly, we do not sustain the
rejection of claim 5.
ORDER
We AFFIRM the rejections of claims 1, 2, 4, 6, 8-11, 13-15, 17, 19, 21, and
22 under 35 35 U.S.C. §102(a) as anticipated by Koenig; claims 12, 13, 18, and 23-
26 under 35 U.S.C. §103(a) as unpatentable over Koenig in view of Barmore; and
claim 20 under 35 U.S.C. §103(a) as unpatentable over Koenig in view of Barmore
in further view of Lee.
We REVERSE the rejections of claim 7 under 35 35 U.S.C. §102(a) as
anticipated by Koenig and claim 5 under 35 U.S.C. §103(a) as unpatentable over
Koenig in view of Matsumoto.
Appeal 2011-001464
Application 11/187,802

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No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a)(1).
AFFIRMED-IN-PART

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