LYCORED LTD.

Patent Trials and Appeals Board

Mar 25, 2020

14422947 - (D) (P.T.A.B. Mar. 25, 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.
14/422,947 02/20/2015 Ehud Zach GPK-6278-6 1037
23117 7590 03/25/2020
NIXON & VANDERHYE, PC
901 NORTH GLEBE ROAD, 11TH FLOOR
ARLINGTON, VA 22203
EXAMINER
DEES, NIKKI H
ART UNIT PAPER NUMBER
1791
NOTIFICATION DATE DELIVERY MODE
03/25/2020 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):
PTOMAIL@nixonvan.com
pair_nixon@firsttofile.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EHUD ZACH, BELA BRAGHINSKY, TANYA SEDLOV,
and MORRIS ZELKHA
Appeal 2019-003737
Application 14/422,947
Technology Center 1700
Before JEFFREY B. ROBERTSON, MONTÉ T. SQUIRE, and
BRIAN D. RANGE, Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–15. 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 “LYCORED
LTD., a corporation of Israel.” Appeal Br. 3.
Appeal 2019-003737
Application 14/422,947

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CLAIMED SUBJECT MATTER2
Appellant describes the invention as relating to a water-dispersible
formulation comprising carotenoids such as ß-carotene and the use of the
formulation to color food and beverage products. Spec. 1. The Specification
explains that ß-carotene may be used for a yellow to orange color, but
ß-carotene has low chemical stability such that the hue changes, for
example, by pasteurization. Id. Appellant thus seeks a dispersion that
achieves desired hue, reproducibility of the hue from batch to batch, and
preservation of hue when the food or beverage is subjected to harsh
treatment such as pasteurization. Id. at 3. Claim 1 (with formatting modified
for readability) is illustrative:
1. A water-dispersible colorant formulation
comprising a mixture of
(a) a solid-in-liquid dispersion of one or more
carotenoids with
(b) a liquid-in-liquid dispersion of one or more
carotenoids,
wherein the average particle size in said solid-in-liquid
dispersion is less than about 600 nm,
wherein the average droplet size of the liquid-in-liquid
dispersion is less than about 200 nm, and
wherein the carotenoids are selected from the group
consisting of ß-carotene and lutein.
Appeal Br. 18 (Claims App’x). There are three other independent claims on
appeal (claims 10, 13, and 15), and each of those claims also requires both a

2 In this Decision, we refer to the Final Office Action dated March 12, 2018
(“Final Act.”), the Appeal Brief filed December 20, 2018 (“Appeal Br.”),
and the Examiner’s Answer dated February 7, 2019 (“Ans.”).
Appeal 2019-003737
Application 14/422,947

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solid-in-liquid dispersion and liquid-in-liquid dispersion with specified
particle sizes.
REFERENCES
The Examiner relies upon the prior art below in rejecting the claims
on appeal:
Name
Lüddecke et al.
(“Lüddecke”)
Voelker
Reference
US 5,895,659

US 2008/0193539 A1
Date
Apr. 20, 1999

Aug. 14, 2008
D. Horn & E. Lüddecke, Preparation and Characterization of Nano-Sized
Carotenoid Hydrosols, Fine Particles Sci. and Tech. 761–775 (1996)
(“Horn”).

REJECTIONS
The Examiner maintains the following rejections on appeal:
A. Claims 1, 3, 5, 12, and 14 under 35 U.S.C. § 103 as obvious over
Horn. Ans. 3.
B. Claims 2, 3, and 6–15 under 35 U.S.C. § 103 as obvious over Horn in
view of Lüddecke. Id. at 4–5.
C. Claims 4, 6–9, 12, and 14 under 35 U.S.C. § 103 as obvious over
Horn in view of Voelker. Id. at 9.
OPINION
The Examiner has the initial burden of establishing a prima facie case
of obviousness under 35 U.S.C. § 103. In re Oetiker, 977 F.2d 1443, 1445
(Fed. Cir. 1992) (“[T]he examiner bears the initial burden, on review of the
prior art or on any other ground, of presenting a prima facie case of
unpatentability.”). To establish a prima facie case of obviousness, the
Examiner must show that each and every limitation of the claim is described
Appeal 2019-003737
Application 14/422,947

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or suggested by the prior art or would have been obvious based on the
knowledge of those of ordinary skill in the art or the inferences and creative
steps a person of ordinary skill in the art would have employed. In re Fine,
837 F.2d 1071, 1074 (Fed. Cir. 1988); KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 418 (2007).
To resolve the issues before us on appeal, we focus on the Examiner’s
findings and determinations that relate to the error Appellant identifies. The
Examiner finds that Horn teaches carotenoids including ß-carotene, teaches
particles in the 10–100 nm size range, and teaches that crystalline
dispersions (solid in liquid) creates red color shifts while precipitates and
“solubilizates” (liquid in liquid) create blue color shifts. Ans. 3. The
Examiner determines that “where it is known that different preparations of
carotenoids affect different portions of the color spectrum, it would have
been obvious to have combined a solid in liquid dispersion with a liquid in
liquid dispersion to impart the desired color and shade strength to the
material being colored.” Id. at 4.
Appellant argues that Horn does not teach or suggest a mixture of
both a liquid-in-liquid dispersion and a solid-in-liquid dispersion as required
by each of the independent claims on appeal. Appeal Br. 10–14. This
argument identifies reversible error. We agree with Appellant that Horn does
not teach or suggest mixing liquid-in-liquid or solid-in-liquid dispersions. Id.
at 14. The Examiner reasons that a person of skill in the art would create
such a mixture in order to adjust color (Ans. 4, 11–12), but the Examiner
does not provide evidence or an articulated basis to support this reasoning.
In particular, the record before us lacks evidence or reasoning as to why a
person of skill in the art would have known that the liquid-in-liquid and
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Application 14/422,947

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solid-in-liquid dispersions could be combined to adjust color and as to why a
person of skill in the art would have known that such a combination would
have had a reasonable expectation of success.
We, therefore, do not sustain the Examiner’s rejection of the
independent claims 1, 10, 13, and 15. Because the Examiner’s treatment of
the dependent claims does not cure this error, we also do not sustain the
rejection of those claims.
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 3, 5, 12,
14
103 Horn 1, 3, 5, 12,
14
2, 3, 6–15 103 Horn, Lüddecke 2, 3, 6–15
4, 6–9, 12,
14
103 Horn, Voelker 4, 6–9, 12,
14
Overall
Outcome
1–15

REVERSED