Ex Parte Mushock et al

Patent Trial and Appeal Board

Feb 8, 2017

13849009 (P.T.A.B. Feb. 8, 2017)

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.
13/849,009 03/22/2013 Steven Mushock 1507-28 CIP 4551
28249 7590 02/09/2017
DILWORTH & BARRESE, LLP
Dilworth & Barrese, LLP
1000 WOODBURY ROAD
SUITE 405
WOODBURY, NY 11797
EXAMINER
PATEL, RONAK C
ART UNIT PAPER NUMBER
1788
MAIL DATE DELIVERY MODE
02/09/2017 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 STEVEN MUSHOCK, KEITH McDERMOTT, and
JAMES G. CLOTHIER
____________

Appeal 2015-006114
Application 13/849,009
Technology Center 1700
____________

Before CATHERINE Q. TIMM, JAMES C. HOUSEL, and
MICHAEL G. McMANUS, Administrative Patent Judges.

HOUSEL, Administrative Patent Judge.

DECISION ON APPEAL1

Pursuant to 35 U.S.C. § 134(a), Appellants2 appeal from the
Examiner’s decision finally rejecting claims 1–5 and 10. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.

1 Our decision refers to the Specification (Spec.) filed March 22, 2013, the
Examiner’s Final Office Action (Final Act.) mailed July 30, 2014,
Appellants’ Appeal Brief (Br.) filed January 13, 2015, and the Examiner’s
Answer (Ans.) mailed April 2, 2015.
2 According to Appellants, the real party in interest is SYMRISE AG. Br. 3.
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STATEMENT OF THE CASE
The invention relates to particles having a high load of fragrance or
flavor oil. Spec. 1:9–10. Such particles can be used for perfuming or
flavoring consumer products such as deodorants and antiperspirants, laundry
detergents, cat litter, etc. Id. at 2:11–13. Appellants disclose one way to
lower the production cost of these particles is to raise the fragrance or flavor
oil content per particle to reduce the amount of particles needed to perfume
or flavor a consumer product. Id. at 2:14–19. Appellants further disclose
that an object of the invention is to develop particles which are easy to
prepare, having a high load of fragrance or flavor oil, and improved stability
against mechanical forces, chemical degradation, and oxidation. Id. at 2:26–
29.
Claim 1, reproduced below from the Claims Appendix to the Appeal
Brief, is illustrative of the subject matter on appeal.
1. A composition comprising free-flowing particles containing:
(a) 50 to 80 wt. % fragrance and/or flavour oil,
(b) 5 to 25 wt. % octenylsuccinated starch as a carrier material,
(c) 5 to 25 wt. % of one or more mono alkali metal phosphate salts as
a free-flow agent,
(d) 0 to 10 wt. % of one or more additional ingredients,
on condition that the amounts add to 100 wt. % and wherein the
weight percent values are based on the total dry weight of the
composition.

The Rejections
The Examiner maintains, and Appellants request review of, the
following grounds of rejection:
1. Claims 1–5 and 10 under 35 U.S.C. § 112, first paragraph (pre-
AIA), as failing to comply with the written description
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requirement;
2. Claims 1–5 and 10 under 35 U.S.C. § 103(a) as unpatentable over
Holzner3 in view of Katada4 and Trubiano;5 and
3. Claims 1–5 and 10 under 35 U.S.C. § 103(a) as unpatentable over
Holzner in view of Trubiano.
ANALYSIS
Rejection 1: § 112, first paragraph, written description
The Answer states that every ground of rejection set forth in the Final
Office Action is being maintained except for grounds specifically listed as
withdrawn. Ans. 2. The Final Office Action included this written
description rejection under § 112, first paragraph, in which certain claim
language was determined to lack support in the written description. Final
Act. 3. In particular, the Final Office Action found that the language,
“substantially free-flowing particles,” “octenylsuccinated starch as a carrier
material,” and “alkali metal phosphate salts as a free-flow agent,” lack
written description support as to the italicized terms. Id. The Examiner
provided no further explanation of the inadequacy of Appellants’ written
description as to these terms.

3 Holzner et al., US 2004/0022821 A1, published February 5, 2004
(“Holzner”).
4 Katada et al., US 2008/0292754 A1, published November 27, 2008
(“Katada”).
5 P. C. Trubiano and N. L. Lacourse, Emulsion-Stabilizing Starches: Use in
Flavor Encapsulation, in 370 FLAVOR ENCAPSULATION 45–54 (Sara J. Risch
et al. eds., 1988) (“Trubiano”). The Examiner indicates this publication was
downloaded from http://pubs.acs.org/doi/pdf/10.1021/bk-1988-0370.ch006
(Final Act. 4 and 7).
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Appellants contend that “octenylsuccinated starch as a carrier
material” and “alkali metal phosphate salts as a free-flowing agent” as used
in claim 1 find support in the written description. Br. 6. In this regard,
Appellants direct our attention to the Specification, page 13, for support for
the reference to the starch as a carrier material based on the description of
the use of octenylsuccinated starch to achieve the highest levels of loading
of fragrance or flavor oil. Id. Appellants argue that because the fragrance or
flavor oil is loaded on the starch, this description supports the functioning of
the starch as a carrier material. Id. In addition, Appellants direct our
attention to the Specification, pages 13 and 14, for support for the reference
to the alkali metal phosphate salts as a free-flowing agent based on the
description where the use of noticeably less than 5 wt. % of these salts
results in particles that are not free-flowing. Id. Appellants argue that this
description clearly indicates these salts function as an agent for free-flowing.
Id.
“[The written description] inquiry is a factual one and must be
assessed on a case-by-case basis.” Purdue Pharma L.P. v. Faulding, Inc.,
230 F.3d 1320, 1323 (Fed. Cir. 2000). “In order to satisfy the written
description requirement, the disclosure as originally filed does not have to
provide in haec verba support for the claimed subject matter at issue.” Id.
Nonetheless, the disclosure must convey with reasonable clarity to those
skilled in the art that the inventor was in possession of the invention. Id.,
(“Put another way, one skilled in the art, reading the original disclosure,
must immediately discern the limitation at issue in the claims.”).

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The Examiner bears the initial burden of presenting a prima facie case
in support of each rejection, and Appellants have the burden of presenting a
rebuttal to the prima facie case. In re Oetiker, 977 F.2d 1443, 1445 (Fed.
Cir. 1992). Appellants have the burden on appeal to the Board to identify a
reversible error in the Examiner’s position. See In re Kahn, 441 F.3d 977,
985–86 (Fed. Cir. 2006).
We begin by noting that though Appellants do not address the term
“substantially” in modifying “free-flowing particles,” claim 1 does not recite
this term. Therefore, this aspect of the Examiner’s rejection is moot.
We note also that the Examiner does not address Appellants’
arguments in either the Final Office Action or the Answer. Because the
Examiner did not explain the basis for the lack of written description support
nor address Appellants’ arguments in this regard, we cannot say that the
portions of the Specification to which Appellants direct attention do not
support the reference to the starch as a carrier material and the salts as a free-
flowing agent. Indeed, Appellants’ description of the fragrance or flavor oil
being loaded onto the starch provides apparent, though not ipsis verbis,
support for the recitation that the starch functions as a carrier for the
fragrance or flavor oil. Appellants’ description of the particles having less
than 5 wt. % salts as lacking the free-flow property also provides support,
though again not ipsis verbis support, for the recitation that the salts function
as free-flow agents.
Accordingly, the Examiner’s written description rejection is not
sustained.

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Rejection 2: § 103 obviousness over Holzner in view of Katada and
Trubiano

Appellants argue all the claims as a group. Consistent with 37 C.F.R.
§ 41.37(c)(iv) (2014), we select claim 1 to address Appellants’ arguments.
Claims 2–5 and 10 stand or fall with claim 1.
Having considered the respective positions advanced by the Examiner
and Appellants in light of this appeal record, we affirm the Examiner’s
rejection for the reasons well expressed in the Answer to the Appeal Brief,
which we adopt as our own. We highlight and address specific findings and
arguments for emphasis as follows.
The Examiner finds Holzner discloses microcapsules made by loading
up to 80 wt. %, preferably 50 wt. %, of a fragrance (perfuming material) or
flavoring material onto a polymeric carrier material, wherein the carrier
material may be a modified starch. Final Act. 4. In addition, the Examiner
finds Holzner may include monosodium phosphate additive in an amount
between 5–15 wt. %, which the Examiner finds inherently functions as a
free-flow agent. Id. However, the Examiner acknowledges that Holzner
fails to teach that the modified starch is octenylsuccinated starch and is used
in an amount of about 5–25 wt. %. Id. at 5. For these features, the
Examiner finds Katada discloses flavor capsules including a flavoring
ingredient and a modified starch, in particular, octenylsuccinated starch, in
an amount from 5–40 wt. %. Id. Moreover, the Examiner finds Trubiano
teaches octenylsuccinated starch offers excellent emulsifying properties,
flavor oil retention, and good oxidation resistance. Id. Therefore, the
Examiner concludes that it would have been obvious to have employed
octenylsuccinated starch as the modified starch in Holzner in an amount of
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5–40 wt. % as taught in Katada, because such modified starch offers
excellent emulsifying properties, flavor oil retention, and good oxidation
resistance as taught in Trubiano. Id.
Appellants argue that neither Holzner nor Katada has anything to do
with improved loading of fragrance or flavor oil. Br. 7. Instead, Appellants
assert that Holzner is directed to reducing the occurrence of, or reducing the
violence of, an explosion when the microcapsules become suspended in air.
Id. Appellants further assert that Katada is directed to protecting volatile
flavors in a food composition during storage by encapsulation using a
polymeric matrix selected from a multitude of agents, one of which being
octenylsuccinated starch. Id. Appellants urge that an ordinary artisan would
not be motivated by either Holzner or Katada to combine an
octenylsuccinated starch with mono alkali metal phosphate salt to achieve
the goal of high loading of fragrance or flavor oil without improper
hindsight use of Appellants’ disclosure. Id.
Appellants’ argument is not persuasive of reversible error in the
Examiner’s rejection. It is well settled that neither the particular motivation
nor the avowed purpose of an applicant controls. What matters is the
objective reach of the claim. If the claim extends to what is obvious, it is
unpatentable under § 103. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398
(2007); In re Kemps, 97 F.3d 1427, 1430 (Fed. Cir. 1996) (“[T]he
motivation in the prior art to combine the references does not have to be
identical to that of the applicant to establish obviousness.”).
“As long as some motivation or suggestion to combine the references
is provided by the prior art taken as a whole, the law does not require that
the references be combined for the reasons contemplated by the inventor.”
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In re Beattie, 974 F.2d 1309, 1312 (Fed. Cir. 1992); In re Dillon, 919 F.2d
688, 692–693 (Fed. Cir. 1990) (en banc), cert. denied, 500 US 904 (1991)
(“[W]here the prior art gives reason or motivation to make the claimed
[invention] . . . the burden (and opportunity) then falls on an applicant to
rebut that prima facie case. Such rebuttal or argument can consist of . . . any
other argument or presentation of evidence that is pertinent.”)
Here, the Examiner identified reasons for selecting octenylsuccinated
starch as the modified starch for use in Holzner—because such a modified
starch offers excellent emulsifying properties, flavor oil retention, and good
oxidation resistance as taught by Trubiano. Appellants do not contest this
motivation other than asserting that it is not the same as Appellants’ purpose
of improved loading. As indicated above, this argument is insufficient to
demonstrate error in the conclusion of obviousness.
Appellants also urge that the ordinary artisan also would not have
chosen modified starch from the list of compounds disclosed by Holzner
without improper hindsight. Br. 7. In this regard, Appellants note that when
considering both the list of possible polymeric carrier materials and the list
of possible fireproofing agents taught by Holzner, there are 221 possible
combinations. Id. at 8. To arrive at one requiring selecting and combining
modified starch with monosodium phosphate salt, Appellants argue,
involves improper hindsight. Id. Appellants argue that though disclosing
octenylsuccinated starch has good flavor oil retention, Trubiano does not
cure the above discussed deficiencies of Holzner and Katada. Id.
Appellants’ argument fails to persuade us of reversible error in the
Examiner’s rejection. We note that Appellants have not identified error in
any of the Examiner’s findings.
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Any judgment on obviousness is in a sense necessarily a
reconstruction based upon hindsight reasoning, but so long as it
takes into account only knowledge which was within the level
of ordinary skill at the time the claimed invention was made
and does not include knowledge gleaned only from applicant’s
disclosure, such a reconstruction is proper.

In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). Here, there is no
dispute that Holzner teaches both a modified starch as the polymeric carrier
material and monosodium phosphate salt as the fireproofing material, albeit
both are amongst a list of other possible polymeric carriers and fireproofers.
“[A] reference must be considered not only for what it expressly
teaches, but also for what it fairly suggests.” In re Baird, 16 F.3d 380, 383
(Fed. Cir. 1994), quoting In re Burckel, 592 F.2d 1175, 1179 (CCPA 1979).
Holzner discloses any of a variety of examples of polymeric carrier materials
may be used, specifically naming modified starches. In addition, Holzner
discloses any of a variety of examples of fireproofing materials may be used,
specifically naming monosodium phosphate. In both instances, the number
of alternatives within each listing is finite and relatively small. While
Appellants are correct that the total number of possible combinations of
these two materials exceeds 200, that does not negate Holzner’s suggestion
that each of these possible combinations would work with a reasonable
expectation of success. Appellants do not present persuasive technical
reasoning or evidence that this number of possible combinations is so
excessive as to lack a suggestion of each of the possibilities. Nor do
Appellants direct our attention to any disclosure in Holzner leading away
from the selection of modified starch and monosodium phosphate. Cf. Baird
supra (“A disclosure of millions of compounds does not render obvious a
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claim to three compounds, particularly when that disclosure indicates a
preference leading away from the claimed compounds.”). Moreover, Katada
and Trubiano both teach a preference for a specific modified starch,
octenylsuccinated starch, as a carrier for fragrance or flavor oils which, as
Trubiano teaches, offers excellent emulsifying properties, flavor oil
retention, and good oxidation resistance.
We are, therefore, satisfied that the Examiner’s rejection takes into
account only knowledge which was within the level of ordinary skill at the
time the claimed invention was made and does not include knowledge
gleaned only from applicant’s disclosure. Accordingly, we sustain the
Examiner’s obviousness rejection over the combination of Holzner, Katada,
and Trubiano.

Rejection 3: § 103 obviousness over Holzner in view of Trubiano
Appellants do not raise any substantively different arguments against
this rejection, instead relying on their previous argument that the ordinary
artisan would not have been motivated to combine Holzner and Trubiano to
derive greater fragrance loading. Br. 9. For the reasons given above, this
argument is not persuasive of reversible error. Therefore, we likewise
sustain this rejection.

DECISION
Upon consideration of the record, and for the reasons given above and
in the Final Office Action and the Answer, the decision of the Examiner
rejecting claims 1–5 and 10 under 35 U.S.C. § 103(a) as unpatentable over
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Holzner in view of Katada and Trubiano, or in view of Trubiano alone, is
affirmed. However, the rejection of claims 1–5 and 10 under 35 U.S.C.
§ 112, first paragraph (pre-AIA), as failing to comply with the written
description requirement is reversed.
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