2020000863 (P.T.A.B. Dec. 23, 2020)

Salvatore Celeste

Patent Trials and Appeals BoardDec 23, 2020

2020000863 (P.T.A.B. Dec. 23, 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. 12/947,552 11/16/2010 Salvatore Albert Celeste IFF0176US.P1 2146 23679 7590 12/23/2020 Licata & Tyrrell P.C. 66 East Main Street Marlton, NJ 08053 EXAMINER WILLIAMS, LELA ART UNIT PAPER NUMBER 1792 MAIL DATE DELIVERY MODE 12/23/2020 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 SALVATORE ALBERT CELESTE Appeal 2020-000863 Application 12/947,552 Technology Center 1700 Before TERRY J. OWENS, LINDA M. GAUDETTE, and RAE LYNN P. GUEST, Administrative Patent Judges. OWENS, 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, 5–10, and 12–17. See Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM IN PART AND ENTER A NEW GROUND OF REJECTION. 1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as The Additive Advantage, LLC. Appeal Br. 1. Appeal 2020-000863 Application 12/947,552 2 CLAIMED SUBJECT MATTER The claims are directed to a microencapsulated delivery system. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A composition comprising a substrate having adhered thereto in a systematic printed pattern one or more microcapsules comprising one or more polymers encapsulating one or more agents to be delivered, such that said one or more agents to be delivered are released upon dissolution of the microcapsules following exposure to a solvent, and wherein the systematic printed pattern comprises one or more negative spaces between the one or more microcapsules to permit the solvent to contact or flow through the substrate unimpeded by the microcapsules. REFERENCE The prior art relied upon by the Examiner is: Name Reference Date Robinson WO 00/57713 A1 Oct. 5, 2000 REJECTIONS Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis 1, 5–10, 12–17 103 Robinson OPINION Rejection under 35 U.S.C. § 103 Claims 1, 10, 12, and 14 Robinson discloses a tea bag having thereon flavorant-containing microcapsules applied from a suspension by a dosing process such as metered printing using an engraved metering roller such as that used in gravure printing (pp. 3–5). The suspension is distributed into discrete doses in the metering roller’s engraved patterns and then transferred from the Appeal 2020-000863 Application 12/947,552 3 metering roller to a printing roller which applies the discrete doses to the tea bag (p. 7). The Examiner finds that “the very nature of ‘metered printing’ would naturally form a printed area which comprises ‘one or more negative spaces between the one or more microcapsules’ since ‘printing’ would not supply a solid coating or overlay, but a series of close individual particles upon the surface area” (Ans. 4). The Appellant argues that “[w]hile the Examiner asserts that the very nature of ‘metered printing,’ as taught by Robinson, would naturally form a printed area with the required negative spaces (Ex. Ans., page 4, 1st paragraph), the Examiner does not provide any intrinsic or extrinsic evidence to support this conclusion” (Reply Br. 2). The Appellant merely points out that the Examiner does not provide intrinsic or extrinsic evidence to support the Examiner’s finding. The Appellant does not argue that the Examiner’s finding is wrong. Robinson’s disclosure that the suspension is applied in discrete doses from a roller’s engraved patterns (p. 7) supports the Examiner’s finding that there is space between the discrete doses through which the suspension’s solvent can flow unimpeded by the microcapsules. Thus, we conclude that the Examiner has established a prima facie case of obviousness of the claim 1 composition and claim 10 method which the Appellant has not effectively rebutted. Claims 12 and 14 depend, respectively, from claims 1 and 10, and require that the systematic printed pattern comprises an image or logo. The Appellant argues that “[n]owhere is there an explicit or implicit teaching or suggestion by Robinson of a systematic printed pattern as described in the instant specification, let alone a systematic printed pattern Appeal 2020-000863 Application 12/947,552 4 comprising an image or logo as recited in instant claims 12-14.” (Appeal Br. 11). “[D]uring examination proceedings, claims are given their broadest reasonable interpretation consistent with the specification.” In re Translogic Tech. Inc., 504 F.3d 1249, 1256 (Fed. Cir. 2007) (quoting In re Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000)). The Appellant’s Specification states that “the microcapsules can be affixed in systematic or random patterns covering all or a portion of one or more surfaces of the substrate” (Spec. 13:18–20). Thus, the broadest reasonable interpretation of the Appellant’s claim term “systematic printed pattern” consistent with the Specification is that it is a non-random pattern. Robinson’s disclosure of “control of the capsule size and their distribution over the bag” (p. 5) indicates lack of randomness of the printing pattern. Robinson’s printing pattern, therefore, appears to be “systematic” according to the broadest reasonable interpretation of that term consistent with the Appellant’s Specification. Robinson’s disclosure of “control of the capsule size and their distribution over the bag” (p. 5) indicates that the distribution can have a desired pattern. The pattern necessarily can be an image of an article having the shape of the pattern or can be a logo, perhaps a fanciful one, for any organization or product. Also, the image or logo merely is printed matter. “Printed matter may very well constitute structural limitations upon which patentability can be predicated.” In re Royka, 490 F.2d 981, 985 (CCPA 1974). However, “[w]here the printed matter is not functionally related to the substrate, the printed matter will not distinguish the invention from the prior art in terms of patentability.” In re Gulak, 703 F.2d 1381, 1385 (Fed. Appeal 2020-000863 Application 12/947,552 5 Cir. 1983), quoted in In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004). The particular shape of the Appellant’s microcapsule pattern as an image or logo is not related to the functioning of the Appellant’s substrate (which, like Robinson’s substrate, can be a tea bag (Spec. 2)). Hence we are not persuaded of reversible error in the rejection of claims 12 and 14. Claims 9 and 13 Independent claim 9 and its dependent claim 13 require separating the microcapsules from solution and printing the microcapsules to a substrate. The Examiner concludes that “‘[s]election of any order of performing process steps is prima facie obvious in the absence of new or unexpected results’ (MPEP 2144.04)” (Final Rej. 4). The Examiner does not establish that Robinson would have provided one of ordinary skill in the art with an apparent reason to separate the microcapsules from the suspension and print the microcapsules to the tea bag. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (establishing a prima facie case of obviousness requires an apparent reason to modify the prior art as proposed by the Examiner). Instead, the Examiner merely relies upon a per se rule of obviousness. As stated by the Federal Circuit in In re Ochiai, 71 F.3d 1565, 1572 (Fed. Cir. 1995), “reliance on per se rules of obviousness is legally incorrect and must cease.” We therefore reverse the rejection of claims 9 and 13. Claims 15–17 Claims 15–17, which depend, respectively, from claims 1, 9, and 10, recite that the microcapsules do not require a threshold temperature for Appeal 2020-000863 Application 12/947,552 6 dissolution of the microcapsules and release of the one or more agents to be delivered. The Examiner finds that Robinson’s disclosure that “[p]referably the capsule is soluble in water within a predetermined temperature range” (p. 3) would have indicated to one of ordinary skill in the art that not requiring a threshold temperature for dissolution is a non-preferred embodiment (Final Rej. 4). Robinson discloses: “Preferably the capsule is soluble in water within a predetermined temperature range. Alternatively the flavour is encapsulated by a capsule that is frangible within a pre-determined temperature range so that the flavour is released when infused in fluid within or above that particular temperature range” (p. 3). Thus, both Robinson’s preferred and alternative embodiments require a threshold temperature for dissolution of the microcapsules. Accordingly, we reverse the rejection of claims 15–17. New Ground of Rejection Claims 1, 5–10, and 12–17 are rejected under 35 U.S.C. § 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor regards as the invention. The independent claims (1, 9, and 10) require “one or more negative spaces between the one or more microcapsules.” Those claims and, consequently, their dependent claims (5–8 and 12–17), are unclear as to how there can be one or more negative spaces between one microcapsule. CONCLUSION The Examiner’s decision to reject claims 1, 5–10, and 12–17 is AFFIRMED IN PART; 37 C.F.R. § 41.50(b). Appeal 2020-000863 Application 12/947,552 7 DECISION SUMMARY Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed New Grounds 1, 5–10, 12–17 103 Robinson 1, 5–8, 10, 12, 14 9, 13, 15– 17 1, 5–10, 12–17 112(b) Indefiniteness 1, 5–10, 12–17 Overall Outcome 1, 5–8, 10, 12, 14 9, 13, 15– 17 1, 5–10, 12–17 RESPONSE In addition to affirming the Examiner’s rejection(s) of one or more claims, this decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b) which provides that "[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review." 37 C.F.R. § 41.50(b) also provides that the appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record. AFFIRMED IN PART; 37 C.F.R. § 41.50(b)