Ex Parte Valianatos et al

Board of Patent Appeals and Interferences

Jun 30, 2009

10905746 (B.P.A.I. Jun. 30, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte PETER J. VALIANATOS, RAJESH CHEBIYAM, JEREMY J.
MANNING, MICHAEL L. STEINER, THOMAS H. WHITESIDES, and
MICHAEL D. WALLS
____________

Appeal 2008-005785
Application 10/905,746
Technology Center 1700
____________

Decided:1 June 30, 2009
____________

Before TERRY J. OWENS, PETER F. KRATZ, and MICHAEL P.
COLAIANNI, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner's final rejection of claims 1 through 10 and 28 through 31. Claim

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the Decided Date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

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Application 10/905,746

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11, the other claim pending in this application, stands withdrawn from
consideration by the Examiner. We have jurisdiction pursuant to 35 U.S.C.
§ 6.
We AFFIRM.

STATEMENT OF THE CASE
The subject matter on appeal is directed to a process for encapsulating a
water-immiscible phase in a protein coacervate.
Claim 1 is illustrative:
1. A process for encapsulating a water-immiscible phase in a protein
coacervate, the process comprising:

forming a coacervate of the protein and a coacervating agent in an
aqueous medium; and

emulsifying the water-immiscible phase in the aqueous medium
comprising the coacervate under conditions effective to cause deposition of
the coacervate around the water-immiscible phase, thereby forming capsules
of the water-immiscible phase surrounded by capsule walls of the coacervate.

As evidence of unpatentability of the claimed subject matter, the
Examiner relies upon the following references:
Green US 2,800,457 Jul. 23, 1957
Saeki US 3,855,146 Dec. 17, 1974
Webber US 2002/0180687 A1 Dec. 5, 2002
Pullen US 7,002,728 B2 Feb. 21, 2006

Appellants appeal the following rejections of the Examiner:
1) Claims 1-7, 9, 10, 28, 29, and 31 under 35 U.S.C. § 102(b) as
anticipated by the disclosure of Webber;
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2) Claim 8 under 35 U.S.C. § 103(a) as unpatentable over the
disclosure of Webber in view of the disclosure of Saeki; and
3) Claim 30 under 35 U.S.C. § 103(a) as unpatentable over the
disclosure of Webber as applied to the claims above, and further in view of
the disclosure of Pullen.

REJECTION (1): The rejection of claims 1-7, 9, 10, 28, 29, and 31 under
35 U.S.C. § 102(b) as anticipated by the disclosure of Webber

Appellants argue features recited in claim 1. Accordingly, we address
Appellants’ arguments with respect to claim 1 only. See 37 C.F.R. §
41.37(c)(1)(vii)(2008).
The Examiner determines that
[Claim 1 does] not require the sequential execution of coacervate
formation and emulsification due to the claim recitation of the
transition phase "comprising" in the preamble and the body of the
claim. Claim one merely requires emulsification of the water
immiscible phase in the aqueous medium comprising the
coacervate. Simply because appellants have recited coacervation
formation prior to recitation of the emulsification, the scope of
the claim does not require sequential execution of the process
steps. Thus, the claims do not preclude coacervation formation
post the start of emulsification, which is exactly the process
described in Webber. Furthermore, the appealed claims read on
the prior art process because they do not preclude emulsification
prior to formation of the coacervate and subsequent continued
emulsification.
(Ans. 7). Appellants argue that
In the present case, claim 1 requires a process comprising (a)
forming a coacervate of the protein and a coacervating agent in
an aqueous medium; and (b) emulsifying the water-immiscible
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phase in the aqueous medium comprising the coacervate. The
italicized language shows that the coacervation step (a) must
precede the emulsification step (b) or the aqueous medium would
not contain the coacervate.
(Reply Br. 5-6). Appellants also argue that "as discussed in Paragraph 46 of
this application, the reduction in the proportion of undersized capsules
achieved by the present process is surprising, since it is directly contrary to
what would be expected from commonly accepted fluid mechanics theory."
(i.e., unexpected results) (App. Br. 15).

ISSUE
Have Appellants shown reversible error in the Examiner's
determination that the claimed subject matter does not exclude an
emulsification step prior to a coacervate forming step? We decide this issue
in the negative.

FINDINGS OF FACT (FF)
1. Appellants do not dispute Examiner's finding that Webber teaches all of
the features recited in claim 1, except for the Examiner's finding that
Webber teaches the feature "emulsifying the water-immiscible phase in
the aqueous medium comprising the coacervate" recited in claim 1.
(Compare Ans. 4 with App. Br. 11-16 and Reply Br. 5-6).
2. Appellants do not specifically dispute the Examiner's finding that
[w]herein the addition of the acacia and stirring constitutes
maintenance of the emulsion and formation of the coacervate. It
is necessary that post addition of acacia the emulsion is
maintained, otherwise encapsulation would not occur. Since,
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Webber discloses that encapsulation indeed does occur, it is clear
that the emulsification step continues post addition of acacia.
(Compare Ans. 7-8 with App. Br. 11-16 and Reply Br. 5-6). In this regard,
Webber teaches dissolving, inter alia, gelatin in deionized water and
subsequently stirring to form an emulsion. (Webber, ¶ [0070]). An acacia
solution is then added to the emulsion while stirring continues. (Webber, ¶
[0071]).

PRINCIPLES OF LAW
The term “comprising” is open-ended and does not exclude additional,
unrecited elements. In re Baxter, 656 F.2d 679, 686-87 (CCPA 1981).
Evidence of secondary considerations, such as unexpected results, is
irrelevant to and cannot overcome a 35 U.S.C. § 102 rejection. In re Wiggins,
488 F.2d 538, 543 (CCPA 1973).

ANALYSIS AND CONCLUSION
Appellants do not dispute Examiner's finding that Webber teaches all of
the features recited in claim 1, except for the Examiner's finding that Webber
teaches the feature "emulsifying the water-immiscible phase in the aqueous
medium comprising the coacervate" recited in claim 1. (FF 1).
Specifically, Appellants argue that
In the present case, claim 1 requires a process comprising (a)
forming a coacervate of the protein and a coacervating agent in
an aqueous medium; and (b) emulsifying the water-immiscible
phase in the aqueous medium comprising the coacervate. The
italicized language shows that the coacervation step (a) must
precede the emulsification step (b) or the aqueous medium would
not contain the coacervate.
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(Reply Br. 5-6). We do not agree.

Appellants, by virtue of employing the transitional term "comprising" in
the preamble of claim 1, permit the inclusion of other unrecited steps, such as
an emulsification step prior to a coacervation step.
Webber teaches dissolving, inter alia, gelatin (coacervate of the
protein) in deionized water and subsequently stirring to form an emulsion (i.e.,
the emulsifying step begins). (FF 2). An acacia (coacervating agent) solution
is then added to the emulsion while stirring continues. (FF 2). In this regard,
Appellants do not specifically dispute the Examiner's finding that
[w]herein the addition of the acacia and stirring constitutes
maintenance of the emulsion and formation of the coacervate. It
is necessary post addition of acacia the emulsion is maintained,
otherwise encapsulation would not occur. Since Webber
discloses that encapsulation indeed does occur, it is clear that the
emulsification step continues post addition of acacia.

(FF 2). In other words, although the emulsifying step begins prior to the
coacervate forming step, the emulsifying step continues after the coacervate is
formed such that the emulsifying step occurs in the aqueous medium having
the coacervate as required by claim 1. Thus, we concur with the Examiner
that claim 1 does not exclude an emulsification step prior to a coacervate
forming step.2
With respect to Appellants' evidence of unexpected results, we find this
evidence to be irrelevant since a § 102 rejection cannot be overcome by such
evidence. Wiggins, 488 F.2d at 543.

2 We note that a discussion of Green, which Webber incorporates by
reference, is unnecessary to resolve the issue raised.
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Thus, it follows that Appellants have not shown reversible error in the
Examiner's determination that the claimed subject matter does not exclude an
emulsification step prior to a coacervate forming step.
Accordingly, based on the Factual Findings and legal conclusions set
forth in the Answer and above, we affirm the Examiner's rejection of claims
1-7, 9, 10, 28, 29, and 31 under 35 U.S.C. § 102(b) as anticipated by the
disclosure of Webber.

Rejections (2) and (3): The § 103(a) rejections of claim 8 over the disclosure
of Webber in view of the disclosure of Saeki; and claim 30 over the disclosure
of Webber as applied to the claims above, and further in view of the
disclosure of Pullen

With respect to rejection (2), Appellants do not dispute the Examiner's
factual findings regarding Webber and Saeki. (Compare Ans. 5 with App. Br.
11-16 and Reply Br. 5-6). Nor do Appellants dispute the Examiner's reason to
combine these references. (Compare Ans. 5 with App. Br. 11-16 and Reply
Br. 5-6). Appellants argue "[t]his rejection should be overturned for the same
reasons as the earlier 35 USC 102(b) rejection of claim 1 based on Webber
alone, as discussed above. There is nothing in Saeki which overcomes the
deficiencies in Webber discussed above." (App. Br. 15).
With respect to rejection (3), Appellants do not dispute the Examiner's
factual findings regarding Webber and Pullen. (Compare Ans. 5-6 with App.
Br. 11-16 and Reply Br. 5-6). Nor do Appellants dispute the Examiner's
reason to combine these references. (Compare Ans. 5-6 with App. Br. 11-16
and Reply Br. 5-6).
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Appellants argue "this rejection should be overturned for the same
reasons as the earlier 35 USC 102(b) rejection of claim 1 based on Webber
alone, as discussed above. There is nothing in Pullen which overcomes the
deficiencies in Webber discussed above." (App. Br. 16).
ISSUES
The issues are: (1) Have Appellants shown reversible error in either of
the Examiner's determinations that the claimed subject matter does not
exclude an emulsification step prior to a coacervate forming step? (2) If not,
then would either of the combinations of the Examiner’s applied prior art
considered anew in light of Appellants' evidence have been indicative of non-
obviousness? We decide these issues in the negative.

ADDITIONAL PRINCIPLES OF LAW
"Moreover, an applicant relying on comparative tests to rebut a prima
facie case of obviousness must compare his claimed invention to the closest
prior art." De Blauwe, 736 F.2d at 705. Any showing of unexpected results
must be commensurate in scope with the claimed range. In re Peterson, 315
F.3d 1325, 1329-31 (Fed. Cir. 2003).

ADDITONAL FINDINGS OF FACT (FF)
3. Appellants do not dispute the Examiner's factual findings regarding
Webber and Saeki. (Compare Ans. 5 with App. Br. 11-16 and Reply
Br. 5-6). Nor do Appellants dispute the Examiner's reason to combine
these references. (Compare Ans. 5 with App. Br. 11-16 and Reply Br.
5-6).
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4. Appellants do not dispute the Examiner's factual findings regarding
Webber and Pullen. (Compare Ans. 5-6 with App. Br. 11-16 and Reply
Br. 5-6). Nor do Appellants dispute the Examiner's reason for
combining these references. (Compare Ans. 5-6 with App. Br. 11-16
and Reply Br. 5-6).
5. Appellants allege that [Para 46] of the Specification demonstrates
surprising results (i.e., unexpected results). (App. Br. 15). While this
paragraph of the Specification is limited to a specific stirring rate to
produce a desired capsule size and amount of fines, the claims are not
limited to such specific stirring rate. Indeed, claim 8 states that "at least
part of the emulsification/capsule formation step is conducted at a
temperature below about 35°C" and claim 30 states that the solid
particles comprise copper chromite. In addition, Appellants provide no
test data showing that the closest prior art does not also produce the
same mean capsule size, and amount of fines.

ANALYSES AND CONCLUSIONS

ISSUE (1): Have Appellants shown reversible error in either of the
Examiner's determinations that the claimed subject matter does not exclude an
emulsification step prior to a coacervate forming step?

With respect to rejections (2) and (3), Appellants refer to their
arguments made in connection with rejection (1). (App. Br. 15 and 16). We
are unpersuaded by these arguments for the reasons explained above.
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Thus, it follows that Appellants have not shown reversible error in
either of the Examiner's determinations that the claimed subject matter does
not exclude an emulsification step prior to a coacervate forming step.

ISSUE (2): Since Appellants have not shown reversible error in either of the
Examiner's determinations that the claimed subject matter does not exclude an
emulsification step prior to a coacervate forming step, then would either of the
combinations of the Examiner’s applied prior art considered anew in light of
Appellants' evidence have been indicative of non-obviousness?

With respect to rejections (2) and (3), Appellants contend that the
claimed subject matter imparts surprising results. (App. Br. 15). In other
words, Appellants allege unexpected results. Specifically, Appellants rely on
[Para 46] of the Specification, which states that
The reduction in the proportion of fines achieved by the preformed
coacervation process is surprising, since it is directly contrary to what
would be expected from commonly accepted fluid mechanics theory.
The preformed coacervate phase used in this process has of course a
substantially higher viscosity than the protein-only aqueous phase used
in the prior art processes discussed above, and fluid mechanics theory
predicts that this increased viscosity will result in a more efficient
transfer of shear from the impeller used for the vigorous stirring of the
reaction mixture, thus resulting in an increased proportion of fines at
the same stirring rate, or production of the same sized capsules at a
lower stirring rate. However, empirically it has been found that the
exact opposite occurs; a substantially increased stirring rate (about 30-
35 percent greater) is needed in the present process to produce the same
mean capsule size, and substantially fewer fines are produced.

We determine that this paragraph of the Specification is not persuasive
of unobviousness because Appellants have not alleged any unexpected
advantages attributable to the features recited in claim 8 or 30.
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In this regard, Appellants have not demonstrated that their showing is
commensurate in scope with the claims. Peterson, 315 F.3d at 1329-31.
While this paragraph of the Specification is limited to a specific stirring rate,
the claims are not limited to such specific stirring rate. (FF 5). Indeed, claim
8 states that "at least part of the emulsification/capsule formation step is
conducted at a temperature below about 35°" and claim 30 states that the solid
particles comprise copper chromite. (FF 5).
In addition, Appellants, in alleging unexpected results, have provided
no comparative test with the closest prior art. De Blauwe, 736 F.2d at 705.
For example, Appellants provide no test data showing that the closest prior art
does not also produce the same mean capsule size and amount of fines. (FF
5).
Thus, it follows that neither of the combinations of the Examiner’s
applied prior art considered anew in light of Appellants' evidence would have
been indicative of non-obviousness.
Accordingly, based on the factual findings set forth in the Answer and
above, we determine that the preponderance of evidence weighs most heavily
in favor of obviousness of the subject matter defined by claims 8 and 30
within the meaning of 35 U.S.C. § 103.

ORDER
In summary, all of the rejections made by the Examiner are sustained.
Accordingly, the decision of the Examiner is affirmed.

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TIME PERIOD
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)(v)(2008).

AFFIRMED

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