Hongwei Liu et al.

Patent Trials and Appeals Board

Mar 2, 2020

12155067 - (D) (P.T.A.B. Mar. 2, 2020)

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.
12/155,067 05/29/2008 Hongwei Liu 1021238-000837 1821
145992 7590 03/02/2020
ALCS Law Dept. - Product and IP c/o
BUCHANAN, INGERSOLL & ROONEY PC
POST OFFICE BOX 1404
ALEXANDRIA, VA 22313-1404
EXAMINER
CHAWLA, JYOTI
ART UNIT PAPER NUMBER
1792
NOTIFICATION DATE DELIVERY MODE
03/02/2020 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):
ADIPDOC1@BIPC.com
jane.fallgren@bipc.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte HONGWEI LIU, GEORGIOS D. KARLES, and
SHUZHONG ZHUANG

Appeal 2018-009048
Application 12/155,067
Technology Center 1700
____________

Before JEFFREY T. SMITH, JAMES C. HOUSEL, and
MICHELLE N. ANKENBRAND, Administrative Patent Judges.

SMITH Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 7, 9, 14, 15, and 17–32. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as Philip
Morris USA, Inc. (Appeal Br. 2.)
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Application 12/155,067

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STATEMENT OF THE CASE
Appellant’s invention is generally directed to a method for making
wax capsules including immersing a concentric nozzle of a coextruder in a
container of a hot alcohol. (Spec. ¶ 9.) Suitable hot alcohols include,
methanol, ethanol, propanol, and combinations thereof. (Spec. ¶ 20.)
Claim 21 illustrates the subject matter on appeal and is reproduced
below (italics added identifying key limitations):
21. A method for forming capsules containing an
encapsulated core material comprising:
coextruding a core material of liquid hydrophilic
substance and a molten wax by passage through a concentric
nozzle having an inner nozzle through which the liquid
hydrophilic core material passes and an outer nozzle through
which the molten wax passes;
immersing said concentric nozzle in a container of a
heated liquid, said heated liquid consisting of methanol,
ethanol, propanol, and combinations thereof, possessing a
decreasing temperature gradient which runs vertically from an
upper portion to a bottom portion of the container;
controlling said temperature of said heated liquid in said
upper portion of said container to a temperature of 2°C to 5°C
hotter than the melting point of said molten wax by heating an
inner surface and/or an outer surface of an upper portion of said
container;
passing the coextruded core material and molten wax
from said concentric nozzle immersed in said upper portion of
said heated liquid vertically downward through said liquid
consisting of methanol, ethanol, propanol, and combinations
thereof beginning at the upper portion to the lower portion to
form discrete capsules wherein said molten wax is gradually
solidified and coats said hydrophilic core material; and
collecting said discrete capsules from the bottom portion
of said heated liquid possessing said decreasing temperature
gradient.

(Appeal Br. Claims Appendix 2–3.)
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The following rejection is presented for our review: 2
Claims 7, 9, 14, 15, and 17–32 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Suzuki (EP 0 595 263 A1, pub. May 4, 1994), in
combination with Miyano (US 3,856,699, iss. Dec. 24, 1974), Somerville
(US 3,389,194, iss. June 18, 1968), Arens (US 3,423,489, iss. Jan. 21, 1969)
and Jensen (US 3,265,629, iss. Aug. 9, 1966).
OPINION
After review of Appellant’s and the Examiner’s respective positions,
we REVERSE the Examiner’s rejection under 35 U.S.C. § 103(a). The
Examiner has reproduced the rejection on appeal in the Examiner’s Answer.
(Ans. 4–10.)
The Examiner finds Suzuki teaches a method of forming a core
material containing capsules comprising coating a core material with a
molten wax to form capsules having a coating and contacting the capsules
with alcohol to solidify the coating. (Final Act. 2; Suzuki 3, ll. 35–50; 4, ll.
18–20.) The Examiner finds Miyano teaches heating an aqueous hardening
solution with alcohol retards the solidification of waxy material and results
in uniform capsule formation. (Final Act. 3; Miyano Col. 2, ll. 12–16.) The
Examiner determines it would have been obvious to form uniform hardened
seamless capsules by introducing wax capsules into a medium that has been
heated. (Final Act. 3–4.) The Examiner finds Somerville teaches a method
of mass producing spherical particles where the hot melt encapsulant is
hardened by suspending in a stream of carrier fluid (Final Act. 4; Somerville
Col. 2, l. 70–Col. 3, l. 9.) The Examiner does not find that Somerville

2 The complete statement of the rejection on appeal appears in the Final
Office Action. (Final Act. 2–11.)
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discloses specific types of carrier fluids. The Examiner finds Arens teaches
immersing a container in a cooling bath to cause gradual cooling or in a
warm bath to cause gradual heating was known to persons of ordinary skill
in the art. (Final Act. 5; Arens Col. 1, ll. 40–45.) The Examiner determines
it would have been obvious to a person of ordinary skill in the art to utilize a
gradual cooling of the hardening medium to gradually create a seamless
solidified capsule at the end of the solidification column. (Final Act. 5–6.)
Regarding the claim requirement for the hardening solution to be
composed of an alcohol, the Examiner states:
Regarding the limitation of alcohol being ethanol, methanol,
propanol or combination thereof (claims 21 and 22), Suzuki
teaches wherein said heated alcohol is selected from alcohols,
but the reference is silent regarding alcohol being selected from
the group consisting of ethanol, methanol, propanol, and
combinations thereof. However, ethanol, methanol etc., are
well known in the art for ease of use and availability. Further,
it was known that waxes are less soluble in alcohols as
compared to water as taught by Jensen (Column 4, lines 50-60),
where additives like methanol and ethanol to aid solidification
of lipid capsules is disclosed. Therefore, it would have been a
matter of routine determination for one of ordinary skill in the
art at the time of the invention to modify Suzuki and utilize
ethanol or methanol as solidifying medium. One of ordinary
skill would have been motivated to choose an alcohol as
claimed at least for ease of availability or cost of an alcohol and
its effectiveness in achieving hardening of waxes.

Regarding the limitation of temperature of hardening medium
being about 2°C to 5°C hotter than the melting point of said
wax, Suzuki as applied to claim 21, teaches a method wherein
the temperature at the upper level of the heated alcohol is about
2°C to 5°C hotter than the melting point of said wax (See
Example 1 of Miyano). Thus, heating the hardening medium to
2–5°C higher than the melting temperature of wax was known
in the art as taught by Miyano. Therefore, one of ordinary skill
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would have been motivated to increase the temperature of
hardening medium as claimed for the known purpose of making
smooth seamless wax capsules. The limitation of type of
alcohol has already been discussed in view of Jensen in claim
21.
(Final Act. 5–6.)
Appellant argues Suzuki utilizes an aqueous solution, for
encapsulating a hydrophilic core with a wax shell, not methanol, ethanol, or
propyl alcohol as the claimed invention requires. (Appeal Br. 9.) Appellant
argues Miyano, Somerville, Arens, and Jensen do not overcome the
teachings of Suzuki because none of the references describe or suggest using
a liquid consisting of methanol, ethanol, or propyl alcohol in a method of
encapsulating a hydrophilic core with a wax shell. (Appeal Br. 9–19.)
The dispositive issue on appeal is:
Did the Examiner err in determining that Suzuki in combination with
Miyano, Somerville, Arens, and Jensen describe or suggest a method of
forming a core material containing capsules comprising passing the
coextruded core material and molten wax in a heated liquid consisting of
methanol, ethanol, propanol, and combinations thereof to solidify the
coating as independent claim 21 requires?3
Implicit in our review of the Examiner’s obviousness analysis is that
the claim must first have been correctly construed to define the scope and
meaning of each contested limitation. See Gechter v. Davidson, 116 F.3d
1454, 1460 n.3 (Fed. Cir. 1997). During examination of a patent
application, a claim is given its broadest reasonable construction consistent

3 Independent claims 21, 26, and 32 all require the same heated liquid. We
will limit our discussion to independent claim 21.
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with the specification. In re Prater, 415 F.2d 1393, 1404–05 (CCPA
1969). “[T]he words of a claim ‘are generally given their ordinary and
customary meaning.’” Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed.
Cir. 2005) (en banc) (internal citations omitted). “We have cautioned
against reading limitations into a claim from the preferred embodiment
described in the specification, even it is the only embodiment described,
absent clear disclaimer in the specification.” In re American Academy of
Science Tech. Center, 367 F.3d 1359, 1369 (Fed. Cir. 2004). “It is the
applicants’ burden to precisely define the invention, not the PTO’s.” In re
Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997).
The Specification discloses capsules containing an encapsulated core
material are formed by passing the coextruded core material and molten wax
from a concentric nozzle through a hot alcohol solvent. (Spec. ¶ 17.) The
Specification states:
Suitable hot alcohols include, without limitation,
methanol, ethanol, propanol, combinations thereof, and the like.
In a most preferred embodiment, ethanol is used.
(Spec. ¶ 20.)
Independent claim 21 states “said heated liquid consisting of
methanol, ethanol, propanol, and combinations thereof.” (Emphasis added.)
Thus, the claimed invention requires that the heated liquid must have at least
one of methanol, ethanol, and propanol or mixtures thereof. Abbott Labs. v.
Baxter Pharmaceutical Products Inc., 334 F.3d 1274, 1280 (Fed. Cir. 2003).
The Examiner has not identified teachings in Suzuki, Arens,
Somerville, Miyano, and Jensen, taken alone or in combination that suggests
using a liquid consisting of methanol, ethanol, or propanol in a method of
encapsulating a hydrophilic core with a wax shell as required by independent
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claim 21. Miyano describes an aqueous heating solution that can comprise
polyvinyl alcohol; however, there is no description of other suitable
alcohols. (See Miyano col. 2.) Jensen describes a colloidal dispersion of a
gelable hydrophilic colloid, e.g., gelatin, agar-agar and albumin, which is
prepared by utilizing a phase separation material that may comprise
methanol, ethanol, or propanol. (Jensen col. 4, ll. 38–58.) The Examiner
has not adequately explained how the teachings of Jensen that are directed to
hydrophilic colloids are relevant to the use for waxes that Suzuki requires.
The Examiner’s conclusory statement, reproduced above, that “ethanol,
methanol etc., are well known in the art for ease of use and availability” is
insufficient evidence to establish the obviousness of the claimed subject
matter. Thus, the Examiner has not adequately explained how the teachings
of Suzuki, Arens, Somerville, Miyano, and Jensen, taken alone or in
combination would have suggested using a liquid consisting of methanol,
ethanol, or propyl alcohol in a method encapsulating a hydrophilic core with
a wax shell, as independent claim 21 requires.
Accordingly, for these reasons we do not sustain the appealed
rejection.

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CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
7, 9, 14, 15,
17–32
103(a) Suzuki, Miyano,
Somerville, Arens,
Jensen
7, 9, 14,
15, 17–32

REVERSED