2020003437 (P.T.A.B. May. 10, 2021)

Symrise AG

Patent Trials and Appeals BoardMay 10, 2021

2020003437 (P.T.A.B. May. 10, 2021)

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. 15/900,940 02/21/2018 Sylvia Barnekow 1507-95 DIV 1514 28249 7590 05/10/2021 DILWORTH & BARRESE, LLP 1000 WOODBURY ROAD SUITE 405 WOODBURY, NY 11797 EXAMINER BEKKER, KELLY JO ART UNIT PAPER NUMBER 1791 NOTIFICATION DATE DELIVERY MODE 05/10/2021 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): usptomail@dilworthbarrese.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte SYLVIA BARNEKOW, MARTINA BATALIA, and LNGO LINDNER Appeal 2020-003437 Application 15/900,940 Technology Center 1700 Before TERRY J. OWENS, DEBRA L. DENNETT, and LILAN REN, Administrative Patent Judges. OWENS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the Examiner’s decision to reject claims 1–4 and 16–21. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE 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. The Appellant identifies the real party in interest as Symrise AG (Appeal Br. 3). Appeal 2020-003437 Application 15/900,940 2 CLAIMED SUBJECT MATTER The claims are directed to a solid preparation ready for consumption. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A solid preparation ready for consumption, where a surface has discrete, separate edible particles of about 0.1 to about 30 mm non- uniformly covering the surface via a fixing system and fixed by the fixing system forming mobile capillary bridge bonds transformed upon cooling and vitrification into solid bridges having a glass transition temperature between about 45 and about 85°C, wherein the amount of edible particles and fixing system together is about 1 to about 10 wt% of the solid preparation. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Barber US 2005/0095328 A1 May 5, 2005 Moore US 2009/0155423 A1 June 18, 2009 Jensen US 2013/0216677 A1 Aug. 22, 2013 Gouin WO 2007/010396 A2 Jan. 25, 2007 REJECTIONS Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis 1–4, 16–21 103 Jensen 1–4, 16–21 103 Moore, Gouin, Barber OPINION Under 37 C.F.R. § 41.50(b), we enter the following new rejection: Claims 1–4 and 16–21 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 he inventors regard as the invention. We need address only the independent claims, i.e., claims 1 and 20. Those claims require discrete, separate particles non-uniformly covering a Appeal 2020-003437 Application 15/900,940 3 surface via a fixing system and fixed by the fixing system forming mobile capillary bridge bonds transformed upon cooling and vitrification into solid bridges. The Appellant’s Specification does not define “mobile capillary bridge bond” or “solid bridge.” The Specification states that to make the solid preparation, a fixing system melt is sprayed using one or more nozzles, and “the edible particles are led through the resultant aerosol or the fine droplets that form, are wetted there and are led onto the solid preparation ready for consumption” (Spec. 4: 19–22). The Specification does not describe the structure that results when edible particles are led through sprayed fixing system melt and then, after being wetted by the fixing system melt, are led onto a solid preparation. The Appellant’s Example 1 states that “[t]he resultant aerosol or fine droplets that form are sprayed into a fluidized bed of edible particles” (Spec. 10: 19–20) and “[t]he edible particles wetted with the fixing system are led with a temperature-controlled air stream onto the solid preparation” (Spec. 10: 21–22). Thus, the Specification indicates that particles that have been sprayed with fixing system in a fluidized bed are blown by air out of the fluidized bed onto the solid preparation, but that disclosure would not have indicated to one of ordinary skill in the art the meaning of the claim term “mobile capillary bridge bond.” Also, those disclosures and the Specification’s statements that “the resultant product is cooled until the melt solidifies to a glass” (Spec. 5: 1) and “[a]s a result of a temperature gradient of sufficient magnitude, the fixing system cools down, with formation of a glass matrix, and thus fixes the edible particles on the solid preparation permanently” (Spec. 11:14–16), would not have rendered Appeal 2020-003437 Application 15/900,940 4 clear to one of ordinary skill in the art the meaning of the claim term “solid bridge.” In some instances it is possible to make a reasonable, conditional interpretation of claims adequate for the purpose of resolving patentability issues to avoid piecemeal appellate review. In the interest of administrative and judicial economy, this course is appropriate wherever reasonably possible. See Ex parte Saceman, 27 USPQ2d 1472, 1474 (BPAI 1993); Ex parte Ionescu, 222 USPQ 537, 540 (Bd. App. 1984). In other instances, however, it may be impossible to determine whether claimed subject matter is anticipated by or would have been obvious over references because the claims are so indefinite that considerable speculation and assumptions would be required regarding the meaning of terms employed in the claims with respect to the scope of the claims. See In re Steele, 305 F.2d 859, 862 (CCPA 1962). For the reason discussed above, we consider the Appellants’ claims to be sufficiently indefinite that application of the prior art to the claims is not possible. On this basis, we do not sustain the rejection under 35 U.S.C. § 103. This reversal is not a reversal on the merits of the rejection but, rather, is a procedural reversal predicated upon the indefiniteness of the claims. CONCLUSION The Examiner’s decision to reject claims 1–4 and 16–21 is REVERSED; 37 C.F.R. § 41.50(b). Appeal 2020-003437 Application 15/900,940 5 DECISION SUMMARY Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed New Grounds 1–4, 16– 21 103 Jensen 1–4, 16– 21 1–4, 16– 21 103 Moore, Gouin, Barber 1–4, 16– 21 1–4, 16– 21 112(b) Indefiniteness 1–4, 16– 21 Overall Outcome 1–4, 16– 21 1–4, 16– 21 REVERSED; 37 C.F.R. § 41.50(b)