Ex Parte Sexton et alDownload PDFPatent Trial and Appeal BoardFeb 28, 201812673274 (P.T.A.B. Feb. 28, 2018) Copy Citation 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. 12/673,274 03/03/2010 Noel Sexton 5204-100368 7185 28289 7590 03/02/2018 THE WEBB LAW FIRM, P.C. ONE GATEWAY CENTER 420 FT. DUQUESNE BLVD, SUITE 1200 PITTSBURGH, PA 15222 EXAMINER MUKHOPADHYAY, BHASKAR ART UNIT PAPER NUMBER 1793 NOTIFICATION DATE DELIVERY MODE 03/02/2018 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): patents @ webblaw. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte NOEL SEXTON, KIERAN DWANE, JOHN LANGTON, AINE CURTIN, and FRANK O'SULLIVAN Appeal 2017-005479 Application 12/673,274 Technology Center 1700 Before CATHERINE Q. TIMM, GEORGE C. BEST, and JENNIFER R. GUPTA, Administrative Patent Judges. GUPTA, Administrative Patent Judge. DECISION ON APPEAL1 Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner’s decision rejecting claims 1—21, 39, and 40.3 We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 In this Decision, we refer to the Specification filed February 12, 2010 (“Spec.”), the Non-Final Office Action mailed March 11, 2016 (“Non-Final Act.”), the Appeal Brief filed July 15, 2016 (“Appeal Br.”), the Examiner’s Answer in response to the Appeal Brief mailed January 26, 2017 (“Ans.”), and the Reply Brief filed February 15, 2017 (“Reply Br.”). 2 Appellants identify the real party in interest as Cybercolors Ltd. Appeal Br. 3. 3 Claims 22—27, 29-31, and 33 are withdrawn from consideration by the Examiner pursuant to 37 C.F.R. § 1.142(b) as drawn to a non-elected invention. Non-Final Office Action mailed February 28, 2013, 2. Appeal 2017-005479 Application 12/673,274 The subject matter of the claims on appeal relates to a coloring composition that colors a curd fraction of milk while leaving the whey fraction uncolored. Spec. 19. Claim 1, reproduced below from the Claims Appendix of the Appeal Brief, with some added formatting, is illustrative of the claims on appeal. 1. A cheese curd colouring composition for selectively colouring a curd fraction of milk while leaving a whey fraction uncoloured comprising an oil-in-water emulsion comprising: a combination of an oil phase comprising an amount of paprika and a carotenoid effective to color cheese curd, and a fat, and an aqueous phase comprising a caseinate, wherein the composition is free of gelatin, wherein the composition does not colour the whey fraction of milk, wherein the composition comprises: about 0.1 to about 15 percent weight per weight paprika; about 0.1 to about 15 percent weight per weight carotenoid; greater than 0 percent and up to about 20 percent weight per weight fat; and about 1 to about 20 percent weight per weight caseinate. Appeal Br. 21 (Claims App.; some indentation and paragraphing added). DISCUSSION The Examiner maintains the rejection of claims 1—16, 18—21, 39 and 40 under 35 U.S.C. § 103(a) as unpatentable over Schlipalius (US 6,132,790, issued October 17, 2000) and Smith (WO 01/08511 Al, published February 8, 2001) in view of evidence provided by Talbott (WO 99/07233, 2 Appeal 2017-005479 Application 12/673,274 published February 18, 1999) and Runge et al. (US 2003/0031706 Al, published February 13, 2003) (“Runge”). Ans. 2—7. The Examiner also maintains the rejection of claim 17 under 35 U.S.C. § 103(a) as unpatentable over Schlipalius and Smith, and further in view of Timothy, Synthetic Vitamin E May Have an Edge over Natural Vitamin E, Life enhancement (June 2008), http://www.life-enhancement.com/magazine/article/1965- synthetic-vitamin-e-may-have-an-edge-over-natural-vitamin-e (“Timothy”). Appellants argue the claims as a group, including separately rejected claim 17. Appeal Br. 9-19. Thus, we select claim 1 as representative of the rejected claims, and the remaining claims on appeal will stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(l)(iv). Upon consideration of the evidence on this record and each of Appellants’ contentions, we find that the preponderance of evidence supports the Examiner’s conclusion that the subject matter of Appellants’ claims is unpatentable over the applied prior art. We sustain the Examiner's § 103(a) rejections essentially for the reasons set out by the Examiner in the Non-Final Office Action and Answer. We add the following. Schlipalius teaches a carotenoid composition comprising a carotenoid in an oil solvent, a dispersion of a water dispersible matrix and a stabilizer, and an emulsifier. Schlipalius, Abstract. Schlipalius also teaches that carotenoids are used for coloring food products. Id. 1:16—22. According to Schlipalius, its composition comprises up to 7.5% by weight of a carotenoid, preferably a carotenoid such as beta-carotene, oleo resin paprika, and mixtures thereof (id. 3:10—19), and 1% to 30% by weight of a stabilizer, such as caseinates, and a stabilizer (id. 3:51—58). Schlipalius also provides 3 Appeal 2017-005479 Application 12/673,274 an example of an emulsion that includes 18.0 % w/w stabilizer, 3.75 % w/w carotenoid, and 8.75 % w/w oil. Id. 5:14—35 (Example 3). The Examiner finds that the recitation “for selectively colouring a curd fraction of milk while leaving a whey fraction uncolored,” in claim 1 ’s preamble is an intended use. Non-Final Act. 5. The Examiner finds that because the ingredients in Schlipalius’s composition are identical to the ingredients in claim 1 ’s composition, Schlipalius’s composition would be capable of performing claim 1 ’s intended use. Id. The Examiner cites Talbott and Runge as further evidence that Schlipalius’s composition would be capable of selectively coloring a curd fraction of milk while leaving a whey fraction uncolored. Id. at 4 (citing Talbott 5,11. 25—35, 6,11. 1—3; Runge 1129, 37). Appellants argue that the recitation in the body of claim 1 that “the composition does not colour the whey fraction of milk” “gives life and meaning” to claim 1 ’s preamble statement “for selectively colouring a curd fraction of milk while leaving a whey fraction uncolored,” and thus, should be given patentable weight. Appeal Br. 9—10. Appellants also argue that the cited references are silent as to a selective coloring composition that would leave whey uncolored. Id. at 10. Appellants’ arguments are not persuasive of reversible error. “In general, a preamble limits the invention if it recites essential structure or steps, or if it is ‘necessary to give life, meaning, and vitality’ to the claim.” Catalina Mktg. Int'l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (quoting Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999)). “Conversely, a preamble is not limiting ‘where a patentee defines a structurally complete invention in the claim body and 4 Appeal 2017-005479 Application 12/673,274 uses the preamble only to state a purpose or intended use for the invention.”’ Catalina, 289 F.3d at 808 (quoting Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997)). Here, the body of claim 1 completely describes claim 1 ’s coloring composition, and the disputed preamble phrase (e.g., for selectively colouring a curd fraction of milk while leaving a whey fraction uncoloured”) does not recite essential structure, but merely states a purpose or intended use of the composition. Accordingly, we are not persuaded that the Examiner erred by not treating claim 1 ’s preamble as limiting. Appellants argue that Schlipalius does not disclose or suggest a composition comprising paprika and a carotenoid, together with a fat and caseinate, let alone the specific ranges, as recited in claim 1. Appeal Br. 11. Thus, Appellants argue that even if the teachings of Schlipalius and Smith were combined, the resulting composition would include either paprika or another carotenoid, not paprika and another carotenoid, as required claim 1. Id. at 13. Appellants’ arguments are not persuasive of reversible error. Although a reference “discloses a multitude of effective combinations does not render any particular formulation less obvious.” Merck & Co. v. Biocraft Labs., 874 F.2d 804, 807 (Fed. Cir. 1989) (citing In re Corkill, 771 F.2d 1496, 1500 (Fed. Cir. 1985) (obviousness rejection of claims affirmed in light of prior art teaching that “hydrated zeolites will work” in detergent formulations, even though “the inventors selected the zeolites of the claims from among ‘thousands' of compounds”)). Schlipalius’s Example 3 discloses an emulsion that includes 18.0 % w/w stabilizer, 3.75 % w/w carotenoid, and 8.75 % w/w oil. Schlipalius 5:14—35. Schlipalius further discloses that its emulsion comprises up to 7.5% by weight of a carotenoid, 5 Appeal 2017-005479 Application 12/673,274 preferably a carotenoid such as beta-carotene, oleo resin paprika, and mixtures thereof {id. 3:10—19), and 1% to 30% by weight of a stabilizer, such as caseinates, and a stabilizer {id. 3:51—58). Based on Schlipalius’s disclosure, it would have been obvious, and within the skill of one of ordinary skill in the art, to prepare a carotenoid composition in an emulsion comprising oleo resin paprika, a carotenoid other than paprika, a fat, and caseinate in amounts overlapping the specific ranges recited in claim 1. Because we are not persuaded that the Examiner erred in finding that Schlipalius teaches or suggests claim l’s composition, we also are not persuaded that the Examiner erred in finding that Schlipalius’s composition would intrinsically color a curd fraction of milk and leave a whey fraction uncolored. In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (Once the examiner presents evidence or reasoning tending to show inherency, the burden of production shifts to Appellant). Appellants have failed to direct us to sufficient evidence to establish that Schlipalius’s composition would not selectively color a cheese curd fraction as recited in claim 1. Appellants’ arguments and evidence regarding Talbott and Runge are not persuasive. Appeal Br. 15. The Examiner principally relies on Schlipalius and Smith, alone or in combination with Timothy in rejecting claims 1—21, 39, and 40. Non-Final Act. 3—9. Talbott and Runge merely provide further evidence to support the Examiner’s inherency position that Schlipalius’s composition would selectively color a cheese curd fraction. Id. at 4. As discussed above, we are not persuaded that the Examiner erred in finding that Schlipalius teaches claim 1 ’s composition, and that Schlipalius’s composition would necessarily color a curd fraction of milk and leave a whey fraction uncolored. 6 Appeal 2017-005479 Application 12/673,274 Appellants argue that the Declaration under 37 C.F.R. § 1.132 executed by Noel Sexton on January 30, 2014 (“the Sexton Declaration”), along with experimental evidence provided in Appellants’ Specification, demonstrates that claim 1 ’s composition exhibits unexpected results, and solves a long-felt, but unmet need in the industry. Appeal Br. 15—19 (citing Decl. 7—29, particularly 7—9, 20, and 26). We have considered the Sexton Declaration as well as the experimental evidence Appellants’ directed us to in their Specification (i.e., Spec. 11 104—107 (Example 5, Table 11), but do not find such evidence persuasive. Neither the Sexton Declaration nor Example 5 in Appellants’ Specification provides a comparison with the closest prior art, i.e., Schlipalius. Nor have Appellants provided evidence that the results they cite are, in fact, unexpected or surprising. Moreover, Appellants have not provided sufficient objective evidence of a persistent need that was recognized by those of ordinary skill in the art that went unsatisfied prior to Appellants’ claimed invention. See In re Gershon, 372 F.2d 535, 538 (CCPA 1967); In re Cavanagh, 436 F.2d 491, 496 (CCPA 1971). In fact, Appellants’ evidence indicates that there were “several viable solutions on the market” prior to 2013 for removing or limiting color in whey products. Wisconsin and Smari, Innovating for Success, Dairy Pipeline, (2013), https://www.cdr.wisc.edu/sites/default/files/pipelines/2013/pipeline_2013_v ol25_02.pdf (Attachment to the Sexton Declaration), at 9. Thus, Appellants’ evidence of long-felt need is insufficient. Accordingly, based on the totality of the appeal record, including due consideration of Appellants’ arguments and evidence, we determine that the preponderance of the evidence weighs most heavily in favor of obviousness 7 Appeal 2017-005479 Application 12/673,274 of the subject matter recited in claims 1—21, 39, and 40 within the meaning of 35 U.S.C. § 103(a). DECISION For the above reasons, the rejections of claims 1—21, 39, and 40 are affirmed. 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 8 Copy with citationCopy as parenthetical citation