CAVIAROLI, S.L.

Patent Trials and Appeals Board

Feb 7, 2022

2021001190 (P.T.A.B. Feb. 7, 2022)

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. 15/577,296 11/27/2017 Ramon RAMON REAL DURC056.002APC 2559 20995 7590 02/07/2022 KNOBBE MARTENS OLSON & BEAR LLP 2040 MAIN STREET FOURTEENTH FLOOR IRVINE, CA 92614 EXAMINER LI, CHANGQING ART UNIT PAPER NUMBER 1793 NOTIFICATION DATE DELIVERY MODE 02/07/2022 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): efiling@knobbe.com jayna.cartee@knobbe.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte RAMON RAMON REAL and RAMON MARIA RAMON FERRES ____________ Appeal 2021-001190 Application 15/577,296 Technology Center 1700 ____________ Before JEFFREY B. ROBERTSON, JEFFREY R. SNAY, and JANE E. INGLESE, Administrative Patent Judges. INGLESE, Administrative Patent Judge. DECISION ON APPEAL The Appellant1 requests review under 35 U.S.C. § 134(a) of the Examiner’s final rejection of claims 1-4 and 6-14.2 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM IN PART. 1 “Appellant” refers to the “applicant” as defined in 37 C.F.R. § 1.42. The Appellant identifies CAVIAROLI, S.L. as the real party in interest. Appeal Brief filed August 25, 2020 (“Appeal Br.”), 3. 2 Final Office Action entered April 7, 2020 (“Final Act.”), 1. Appeal 2021-001190 Application 15/577,296 2 CLAIMED SUBJECT MATTER The Appellant claims a method for producing biphasic spherical capsules. Appeal Br. 4. Claim 1, the sole pending independent claim, illustrates the subject matter on appeal, and reads as follows: 1. A method for producing biphasic spherical capsules comprising at an outer portion thereof a film of calcium alginate and comprising in their interior two liquid substances each of said substances forming a separate continuous phase wherein the method comprises: preparing an aqueous non-calcium alginate solution in which the concentration of alginate is within the range 0.05% to 5% by weight of the solution; preparing the two liquid substances that will form the separate continuous phases in which one of said substances comprises a source of calcium ions or magnesium ions; applying the substance that comprises the source of calcium ions or magnesium ions through an outer tube, and applying the other of the two liquid substances through an inner tube, wherein the outer and inner tubes are concentric to form drop or drops; introducing the drop or drops formed in step (c) into an aqueous non-calcium alginate solution, in which the outer layer of the drop or drops reacts with the non-calcium alginate in the aqueous non-calcium alginate solution forming at least one capsule containing both phases; collecting, washing, draining, and packing of the at least one capsule formed in step (d), wherein the method is a reverse spherification, and wherein the at least one capsule has a diameter in the range of 5 mm to 50 mm. Appeal Br. 12 (Claims Appendix) (emphasis added). Appeal 2021-001190 Application 15/577,296 3 REFERENCES Name Reference Date Mangos et al. US 2009/0291168 A1 Nov. 26, 2009 Izydorzak et al. GB 2480361 A Nov. 16, 2011 Garstecki et al. GB 2486945 A July 4, 2012 My Last Bite, Reverse Spherification” Adventures in Molecular Cooking (2008) https://mylastbite.wordpress.com/2008/12/22/adventures-in- molecular-cooking-2/ (last visited Feb. 1, 2022) Whelehan, Microencapsulation Using Vibrating Technology, J. Microencapsul, 669−88 (2011) REJECTIONS The Examiner maintains the following rejections in the Examiner’s Answer entered September 18, 2020 (“Ans.”): I. claims 1-4, 6-11, 13, and 14 under 35 U.S.C. § 103 as unpatentable over Mangos in view of Whelehan and My Last Bite; II. claims 7-11, 13, and 14 under 35 U.S.C. § 103 as unpatentable over Mangos in view of Whelehan; III. claims 7-11, 13, and 14 under 35 U.S.C. § 103 as unpatentable over Garstecki; and IV. claim 12 under 35 U.S.C. § 103 as unpatentable over Garstecki in view of Izydorzak. FACTUAL FINDINGS AND ANALYSIS Upon consideration of the evidence relied upon in this appeal and each of the Appellant’s contentions, we reverse the Examiner’s rejection of claims 1-4, 6-11, 13, and 14 under 35 U.S.C. § 103 as unpatentable over Mangos in view of Whelehan and My Last Bite (Rejection I), and rejection of claims 7-11, 13, and 14 under 35 U.S.C. § 103 as unpatentable over Mangos in view of Whelehan (Rejection II), for reasons set forth in the Appeal 2021-001190 Application 15/577,296 4 Appeal and Reply Briefs, and below; and we affirm the Examiner’s rejection of claims 7-11, 13, and 14 under 35 U.S.C. § 103 as unpatentable over Garstecki (Rejection III), and rejection of claim 12 under 35 U.S.C. § 103 as unpatentable over Garstecki in view of Izydorzak (Rejection IV), for reasons set forth in the Final Action, the Answer, and below. We review appealed rejections for reversible error based on the arguments and evidence the Appellant provides for each issue the Appellant identifies. 37 C.F.R. § 41.37(c)(1)(iv); Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (explaining that even if the Examiner had failed to make a prima facie case, “it has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections”)). Rejection I We turn first to the Examiner’s rejection of claims 1-4, 6-11, 13, and 14 under 35 U.S.C. § 103 as unpatentable over Mangos in view of Whelehan and My Last Bite. The Examiner finds that Mangos discloses a method for producing spherical capsules that includes all the steps recited in claim 1, except that Mangos discloses a direct spherification process involving application of an alginate solution to the outer tube of concentric tubes and using a calcium solution as a receiving solution, while claim 1 recites a reverse spherification process that involves application of a calcium solution to an outer tube of concentric tubes and using alginate as the receiving solution. Final Act. 3-4 (citing Mangos ¶¶ 43, 47, 61, 81, 82, 88, 89, 90, 92, 93, 112, 113, 116, 133). The Examiner relies on My Last Bite for suggesting modification of Appeal 2021-001190 Application 15/577,296 5 Mangos’ method to utilize a reverse, rather than direct, spherification process. Final Act. 6 (citing My Last Bite ¶¶ 7, 8). The Examiner further finds that Mangos discloses that capsules produced using Mangos’ method have a diameter of 1.6 mm when the capsules are still wet following their formation, which decreases to a diameter of 1.05 mm after the capsules are dried, both of which are outside the capsule diameter range of 5 mm to 50 mm recited in claim 1. Final Act. 4 (citing Mangos ¶ 116). The Examiner finds, however, that “Mangos teaches that depending on the applications, the size or magnitudes of the capsules can be manipulated through varying the molecular weight of the alginate.” Id. (citing Mangos ¶ 86). In view of this disclosure in Mangos, the Examiner determines that it would have been obvious to one of ordinary skill in the art to vary “the molecular weight of the alginate to obtain capsules with size commensurate with their application.” Id. The Examiner concludes that the capsule diameter recited in claim 1, therefore, is merely an “obvious variant[] of the prior art.” Final Act. 5. The Examiner also determines that a “change in size/proportion is prima facie obvious.” Id. (citing MPEP § 2144.04(IV)(A); In re Rinehart, 531 F.2d 1048 (CCPA 1976); In re Rose, 220 F.2d 459 (CCPA 1955); In Gardner v. TEC Syst., Inc., 725 F.2d 1338 (Fed. Cir. 1984)). To further support the Examiner’s conclusion of the obviousness of the capsule diameter recited in claim 1, the Examiner finds that Whelehan discloses that the diameter of capsules produced using concentric inner and outer tubes depends on the diameter of the outer tube, the flow rate of liquid in the outer tube, the diameter of inner tube, and the flow rate of liquid in the inner tube. Final Act. 5-6 (citing Whelehan p. 680). In view of these Appeal 2021-001190 Application 15/577,296 6 disclosures in Whelehan, the Examiner determines that it would have been obvious to one of ordinary skill in the art to optimize the diameters of both the outer and inner tubes used in Mangos’ method, as well as the flow rates of liquid through both tubes, “to achieve a capsule with desired size.” Final Act. 6. The Examiner again concludes that the capsule diameter recited in claim 1, therefore, is merely an “obvious variant[] of the prior art.” Id. On the record before us, however, the Examiner does not provide a sufficient factual basis to establish that when optimizing the alginate molecular weight, the diameters of both the outer and inner tubes, and the flow rates of liquid through both tubes used in Mangos’ method, one of ordinary skill reasonably would have arrived at a capsule diameter as recited in claim 1. Mangos discloses that wet capsules produced using a concentric nozzle system have a diameter of 1.6 mm, and, after drying, a diameter of 1.05 mm. Mangos ¶¶ 43, 116; see also ¶ 91 (disclosing that “the inventive . . . . spherical shaped microscapules [have] a diameter of between approximately 200 and approximately 1500 μm.”). Similarly, Whelehan discloses using a concentric nozzle system to produce capsules having diameters of approximately 600 and 750 microns. Whelehan p. 680 (Fig. 9), p. 681 (Fig. 10). Mangos and Whelehan thus disclose methods of using concentric nozzle systems to produce capsules having diameters approximately four to five-fold less than the lowest value of the diameter range recited in claim 1 (5 mm). Although the Examiner asserts that one of ordinary skill in the art would have optimized the alginate molecular weight, the diameters of the outer and inner tubes, and the flow rates of liquid through both tubes, when Appeal 2021-001190 Application 15/577,296 7 conducting Mangos’ method, in order to produce capsules “with a desired size,” the Examiner does not provide an explanation supported by objective evidence as to why one of ordinary skill in the art reasonably would have arrived through such optimization at a capsule diameter differing significantly from the capsule diameters disclosed in both Mangos and Whelehan. The Examiner does not, for example, identify any disclosure in either Mangos or Whelehan that indicates or would have suggested that increasing the capsule diameter by at least four to five fold over the diameters disclosed in the references would provide any benefit, or render the capsules useful for any particular application or purpose. Nor does the Examiner identify any disclosure in Mangos indicating that the advantageous properties of the capsules described in the reference-heat stability, instantaneous release characteristics, and resistance to sheer forces-would be maintained if the capsule diameter were increased over four to five fold. Mangos ¶¶ 25, 26, 27. The Examiner, therefore, does not provide a sufficient factual basis to establish that when optimizing the alginate molecular weight, the diameters of the outer and inner tubes, and the flow rates of liquid through both tubes in Mangos’ method, one of ordinary skill reasonably would have arrived at a capsule diameter as recited in claim 1. In re Sebek, 465 F.2d 904, 907 (CCPA 1972) (“[W]hile it may ordinarily be the case that the determination of optimum values for the parameters of a prior art process would be at least prima facie obvious, that conclusion depends upon what the prior art discloses with respect to those parameters. Where, as here, the prior art disclosure suggests the outer limits of the range of suitable values, and that the optimum resides within that range, and where there are indications Appeal 2021-001190 Application 15/577,296 8 elsewhere that in fact the optimum should be sought within that range, the determination of optimum values outside that range may not be obvious.”). Although the also Examiner relies on authority cited in MPEP § 2144.04(IV)(A) for the proposition that a “change in size/proportion is prima facie obvious,” none of the opinions discussed in this section of the MPEP establishes a per se rule that any change in size or proportion relative to the prior art is prima facie obvious. Rinehart, 531 F.2d at 1053-1054; Rose, 220 F.2d at 463-464; Gardner, 725 F.2d at 1349. And the factual situations involved in each of the opinions differs significantly from the factual situation of the present case. Id. The Examiner, consequently, does not establish a reasonable basis to rely on the rationales used by the courts in the cited opinions in the present case. MPEP § 2144.04 (“[I] the facts in a prior legal decision are sufficiently similar to those in an application under examination, the examiner may use the rationale used by the court.”). The Examiner, therefore, does not meet the Examiner’s burden of establishing the prima facie obviousness of the capsule diameter range recited in claim 1. We, accordingly, do not sustain the Examiner’s rejection of claims 1-4, 6-11, 13, and 14 under 35 U.S.C. § 103. Rejection II We turn now to the Examiner’s rejection of claims 7-11, 13, and 14 under 35 U.S.C. § 103 as unpatentable over Mangos in view of Whelehan. We need address claim 73 only, which recites a “spherical capsule obtained by a method according to claim 1, wherein the diameter of said capsule is in the range from 10 mm to 50 mm.” 3 Claim 1 recites “forming at least one capsule . . . [that] has a diameter in the range of 5 mm to 50 mm.” Claim 14 recites a “spherical capsule Appeal 2021-001190 Application 15/577,296 9 The Examiner relies on Mangos and Whelehan for the same disclosures the Examiner relies on in rejecting claim 1 (discussed above), and concludes that the capsule diameter range recited in claim 7 is an “obvious variant[] of the prior art,” for the same reasons the Examiner concludes that the capsule diameter range recited in claim 1 is an obvious variant of the prior art (also discussed above). Final Act. 7-9. We do not sustain the Examiner’s rejection of claim 7, and rejection of claims 8-11, 13, and 14, which each depend from claim 7, as obvious over Mangos in view of Whelehan because the Examiner does not provide a sufficient factual basis to establish that a combination of the relied-upon disclosures of Mangos and Whelehan would have led one of ordinary skill in the art to produce biphasic spherical capsules having a film of calcium alginate at an outer portion, two liquid substances that each form a separate continuous phase in the capsule interior-and a diameter as recited in claim 7-for the same reasons discussed above in our analysis of the Examiner’s rejection of claim 1. obtained by a method according to claim 1, wherein the diameter of said capsule is up to 50 mm.” Considering claims 1 and 14 together, we interpret “up to 50 mm” recited in claim 14 to encompass capsules having a diameter of 5 mm to 50 mm. AK Steel Corp. v. Sollac & Ugine, 344 F.3d 1234, 1242 (Fed. Cir. 2003) (“Under the doctrine of claim differentiation, dependent claims are presumed to be of narrower scope than the independent claims from which they depend.”) (first citing RF Del., Inc. v. Pac. Keystone Techs., Inc., 326 F.3d 1255, 1264 (Fed. Cir. 2003); then citing 35 U.S.C. § 112, ¶ 4 (2000)). We note that this interpretation of claim 14 renders claims 13 and 14 duplicative (claim 13 recites a “spherical capsule obtained by a method according to claim 1, wherein the diameter of said capsule is in the range from 5 mm to 50 mm.”). Appeal 2021-001190 Application 15/577,296 10 Rejection III We turn now to the Examiner’s rejection of claims 7-11, 13, and 14 under 35 U.S.C. § 103 as unpatentable over Garstecki. The Appellant does not present arguments directed to any particular claim subject to this rejection. Appeal Br. 10-11. We, therefore, select claim 7 as representative. 37 C.F.R. § 41.37(c)(1)(iv). The Examiner finds that Garstecki discloses a method for producing capsules that differs from the method recited in claim 1, but finds that Garsteck nonetheless discloses that capsules produced using Garstecki’s method have compositional and structural features that are “materially indistinguishable from the capsule resulting from the process of claim 1,” rendering the subject matter of product-by-process claim 7 prima facie obvious. Final Act. 9-10 (citing Garstecki Fig. 2; pp. 4-5). The Appellant argues that Garstecki teaches capsules that are dried, but, in contrast, “the capsules resulting from the process of claim 1 are not dried.” Appeal Br. 10. The Appellant argues that claim 1 recites a step involving “. . . collecting, washing, draining, and packing . . . the capsules,” and “[i]f a drying step were present before the packing step, then this step would be recited in the claim.” Id. The Appellant argues that, “[h]owever, as a drying step is not recited before the packing step, it will be appreciate[d] by the skilled person that the capsules are indeed not dried before packing.” Id. The Appellant argues that, therefore, “the capsules of Garstecki will be materially distinct from the capsules resulting from the process of claim 1.” Id. Contrary to the Appellant’s arguments, however, claim 1 does not exclude additional, unrecited steps-including a drying step before the Appeal 2021-001190 Application 15/577,296 11 recited packing step-due to the “comprises” transition between the preamble and the body of the claim. Gillette Co. v. Energizer Holdings, Inc. 405 F.3d 1367, 1371-1372 (Fed. Cir. 2005) (“The word ‘comprising’ transitioning from the preamble to the body signals that the entire claim is presumptively open-ended.”); In re Affinity Labs of Tex., LLC, 856 F.3d 902, 907 (Fed. Cir. 2017) (explaining that use of the term “comprising” “signals that the breadth of [the method claim] allows for additional steps interleaved between the recited steps,” and that the Board did not err in concluding that the claim does not prohibit additional, intervening steps between those recited). The Appellant’s arguments, therefore, do not identify reversible error in the Examiner’s determination that capsules produced using Garstecki’s method are “materially indistinguishable” from a capsule as recited in claim 7. In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985) (“[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself.”). Nor do the Appellant’s arguments meet the Appellant’s burden of showing an unobvious difference between capsules produced using Garstecki’s method and a capsule as recited in claim 7. In re Marosi, 710 F.2d 799, 803 (Fed. Cir. 1983) (“Where a product-by-process claim is rejected over a prior art product that appears to be identical, although produced by a different process, the burden is upon the applicants to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product.”). The Appellant’s arguments, for example, do not point to any objective evidence establishing that capsules produced using Garstecki’s method would not have the structural and Appeal 2021-001190 Application 15/577,296 12 compositional features recited in claim 1, including a diameter within the recited range. We, accordingly, sustain the Examiner’s rejection of claims 7-11, 13, and 14 under 35 U.S.C. § 103 as unpatentable over Garstecki. Rejection IV Finally, we turn to the Examiner’s rejection of claim 12 under 35 U.S.C. § 103 as unpatentable over Garstecki in view of Izydorzak. Claim 12 recites “[t]he spherical capsule according to claim 7, wherein the substances that form the separate continuous phases are vinegar-oil, soy sauce-sesame oil, mustard-olive oil, honey-olive oil or coffee-chocolate.” As discussed above, claim 7 depends from claim 1 and recites a “spherical capsule obtained by a method according to claim 1, wherein the diameter of said capsule is in the range from 10 mm to 50 mm.” The Examiner’s finds that Garstecki discloses a method for producing capsules having compositional and structural features that are “materially indistinguishable from the capsule resulting from the process of claim 1,” but finds that Garstecki does not disclose that substances forming the separate continuous phases of Garstecki’s capsules may be vinegar-oil, soy sauce-sesame oil, mustard-olive oil, honey-olive oil, or coffee-chocolate. Final Act. 9-10 (citing Garstecki Fig. 2, pp. 4-5). The Examiner finds, however, that Izydorzak discloses spherical capsules comprising an alginate shell and a core that includes two separate continuous liquid phases, which may be vinegar and soybean oil. Final Act. 10 (citing Izydorzak pp. 3-4, 8-9; Figs. 1, 2). In view of these disclosures in Izydorzak, the Examiner concludes that it would have been obvious to one of ordinary skill in the art to utilize Appeal 2021-001190 Application 15/577,296 13 Garstecki’s method to encapsulate vinegar and oil in a calcium alginate film because “vinegar-oil is an art-recognized substance that is suitable for being encapsulated by the calcium alginate film,” and “[t]he selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination.” Final Act. 11. The Appellant argues that Izydorzak teaches capsules that are dried, and, therefore, “it would be appreciated by one skilled in the art that the capsules of Izydorzak, like those of Garstecki, will be materially distinct from the capsules resulting from the process of claim 1.” Appeal Br. 10. The Appellant argues that “[a]s such, one skilled in the art would not have been motivated by the combination of Garstecki and lzydorzak to arrive at the present claims with any reasonable expectation of success.” Id. As discussed above, however, claim 1 does not exclude a drying step. The Appellant’s arguments, therefore, do not identify reversible error in the Examiner’s finding that Izydorzak evidences that vinegar and oil are recognized in the art as suitable substances for encapsulation in a calcium alginate film using Garstecki’s method. As such, one of ordinary skill in the art reasonably would have expected that Garstecki’s method could be successfully used to produce capsules having a calcium alginate shell and a core including two separate continuous liquid phases of vinegar and soybean oil, as recited in claim 12. In re Kubin, 561 F.3d 1351, 1360 (Fed. Cir. 2009) (“Obviousness does not require absolute predictability of success . . . all that is required is a reasonable expectation of success.”) (emphasis omitted, citing In re O’Farrell, 853 F.2d 894, 903-04 (Fed. Cir. 1988)). We, accordingly, sustain the Examiner’s rejection of claim 12 under 35 U.S.C. § 103 as unpatentable over Garstecki in view of Izydorzak. Appeal 2021-001190 Application 15/577,296 14 DECISION SUMMARY Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-4, 6-11, 13, 14 103 Mangos, Whelehan, My Last Bite 1-4, 6-11, 13, 14 7-11, 13, 14 103 Mangos, Whelehan 7-11, 13, 14 7-11, 13, 14 103 Garstecki 7-11, 13, 14 12 103 Garstecki, Izydorzak 12 Overall Outcome 7−14 1−4, 6 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED IN PART