CAVIAROLI, S.L.

Patent Trials and Appeals Board

Feb 16, 2022

2021001192 (P.T.A.B. Feb. 16, 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. 15/577,272 11/27/2017 Ramon RAMON REAL DURC056.001APC 2957 20995 7590 02/16/2022 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 02/16/2022 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 2021-001192 Application 15/577,272 Technology Center 1700 ____________ Before JEFFREY B. ROBERTSON, LILAN REN, 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 1-8, 10-19, and 22-24.2 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 24, 2020 (“Appeal Br.”), 3. 2 Final Office Action entered March 30, 2020 (“Final Act.”), 1. Appeal 2021-001192 Application 15/577,272 2 CLAIMED SUBJECT MATTER Claim 1 illustrates the subject matter on appeal, and reads as follows: 1. A method for the preparation of spherical capsules of a hydrophobic substance, wherein the method comprises: preparing an aqueous solution of non-calcium alginate in which the concentration of alginate is in the range of 0.05% to 5% per cent by weight of the solution; pumping a composition consisting of the hydrophobic substance to be encapsulated through an inner tube and the aqueous solution of non-calcium alginate through an outer tube, wherein the inner and outer tubes are concentric tubes with a diameter ratio of the outer to the inner tube in the range of 1.2 to 3, thereby forming drops; introducing the drops into an aqueous solution containing calcium ions to form the capsules; washing, draining and packaging the capsules wherein the capsules have a diameter in the range of 4 mm to 25 mm. Appeal Br. 12 (Claims Appendix) (emphasis added). REJECTIONS The Examiner maintains the following rejections in the Examiner’s Answer entered September 18, 2020 (“Ans.”): I. Claims 1-8, 10-19, and 22-24 under 35 U.S.C. § 103 as unpatentable over Mangos3 in view of Whelehan;4 II. Claims 1, 2, 5-8, 22, and 23 under 35 U.S.C. § 103 as unpatentable over Schokker5 in view of Chan6 and Mangos; 3 Mangos et al., US 2009/0291168 A1, published November 26, 2009. 4 Whelehan et al., Microencapsulation Using Vibrating Technology, 28(8) J. Microencapsulation, 669-688 (2011). 5 Schokker et al., WO 2009/022909 A1, published February 19, 2009 6 Chan, Preparation of Ca-alginate Beads Containing High Oil Content: Influence of Process Variables on Encapsulation Efficiency and Bead Properties, 84 Carbohydrate Polymers, 1267-1275 (2014). Appeal 2021-001192 Application 15/577,272 3 III. Claim 10 under 35 U.S.C. § 103 as unpatentable over Schokker in view of Chan, Mangos, and What is Sodium Alginate;7 IV. Claims 11-19 under 35 U.S.C. § 103 as unpatentable over Schokker in view of Chan and Mangos; and V. Claim 24 under 35 U.S.C. § 103 as unpatentable over Schokker in view of Chan, Mangos, and Whelehan. 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 1-8, 10-19, and 22-24 under 35 U.S.C. § 103 as unpatentable over Mangos in view of Whelehan (Rejection I) for reasons set forth in the Appeal Brief and below, and we affirm the Examiner’s rejections of claims 1, 2, 5-8, 10-19, 22, 23, and 24 under 35 U.S.C. § 103 as unpatentable over Schokker in view of Chan and additional prior art references (Rejections II- V) 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”)). 7 What is Sodium Alginate? http://www.visitchem.com/what-is-sodium- alginate, last visited December 2021. Appeal 2021-001192 Application 15/577,272 4 Rejection I We turn first to the Examiner’s rejection of claims 1-8, 10-19, and 22-24 under 35 U.S.C. § 103 as unpatentable over Mangos in view of Whelehan. The Examiner finds that Mangos discloses a method for producing spherical capsules that includes the steps recited in claim 1, but 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 4 mm to 25 mm recited in claim 1. Final Act. 3, 5 (citing Mangos ¶¶ 43, 47, 61, 81, 82, 88, 89, 90, 92, 93, 112, 113, 116, 133). 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.” Final Act 5 (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.” Id. 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 Appeal 2021-001192 Application 15/577,272 5 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. 6 (citing Whelehan p. 680). In view of these 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 preferable 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 Appeal 2021-001192 Application 15/577,272 6 approximately four-fold less than the lowest value of the diameter range recited in claim 1 (4 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 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 approximately four-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 approximately four-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 Appeal 2021-001192 Application 15/577,272 7 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 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 1-8, 10-19, and 22-24 under 35 U.S.C. § 103 as unpatentable over Mangos in view of Whelehan. Rejections II-V We turn now to the Examiner’s rejections of claims 1, 2, 5-8, 10-19 Appeal 2021-001192 Application 15/577,272 8 22, 23, and 24 under 35 U.S.C. § 103 as unpatentable over Schokker in view of Chan and numerous additional prior art references. The Appellant does not present arguments directed specifically to any of the rejections, or to any particular claim subject to these rejections. Appeal Br. 9-10. Instead, the Appellant discusses Schokker and Chan. Id. We, accordingly, select claim 1 as representative, and claims 2, 5-8, 10-19 22, 23, and 24 stand or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(iv). Schokker discloses a method of encapsulating an oil-in-water emulsion in an alginate shell that involves co-extruding an aqueous alginate solution and the oil-in-water emulsion using a co-axial nozzle (concentric tubes) so that the alginate solution forms an outer layer surrounding the emulsion, and allowing the co-extrudate to fall as discrete droplets into a solution containing divalent calcium ions. Schokker pp. 3, ll. 6-13; 9, ll. 4- 27; 10, ll. 1-5, 17-21; 11, ll. 3-20. Schokker discloses that the alginate solution forms a gel upon exposure to calcium ions in the receiving solution, encapsulating the emulsion in an alginate shell. Id. p. 11, ll. 9-16. Schokker discloses that the resulting capsules have a diameter of about 0.5 to about 20 mm. Id. p. 12, ll. 11-12. As the Examiner finds (Final Act. 10), although Schokker discloses encapsulating an oil-in-water emulsion, Schokker does not disclose encapsulating a hydrophobic substance. Chan, however, discloses encapsulating an oil in calcium-alginate “to produce oil loaded, Ca-alginate beads.” Chan p. 1267. Chan discloses that so encapsulating an oil facilitates the oil’s handling, transportation, and incorporation into other components, masks the oil’s taste and smell, and protects the oil from evaporation or oxidation. Id. Appeal 2021-001192 Application 15/577,272 9 In view of these disclosures in Chan, the Examiner concludes that it would have been obvious to one of ordinary skill in the art to use Schokker’s method to encapsulate an oil “for easier handling, taste/smell masking, [and] protection from evaporation or oxidation.” Final Act. 10. The Appellant argues that the method of claim 1 excludes encapsulating an emulsion by reciting “a composition consisting of the hydrophobic substance to be encapsulated . . . ,” and neither Schokker nor Chan would have suggested “this aspect” of the method of claim 1. Appeal Br. 9. The Appellant argues that “Schokker teaches encapsulating oil-in- water emulsions,” while “Chan specifically discloses an alginate-oil emulsion.” Id. (citing Schokker Abstr.; Chan Abstr.). The Appellant’s arguments do not identify reversible error in the Examiner’s rejection of claim 1 because the arguments do not address the rejection as presented by the Examiner. Rather, the Appellant’s arguments are based on Schokker and Chan individually, and do not address the Examiner’s proposed combination of the relied-upon discloses of the references. As discussed above, the Examiner acknowledges that Schokker discloses encapsulating an oil-in-water emulsion and does not disclose encapsulating an oil (hydrophobic substance). As also discussed above, Chan discloses encapsulating an oil in alginate to produce oil loaded, Ca- alginate beads. Although Chan’s encapsulation method differs from Schokker’s method, the Examiner does not propose using Chan’s method to encapsulate an oil. Rather, the Examiner proposes encapsulating an oil in an alginate shell using Schokker’s method to achieve the advantages resulting from encapsulating an oil disclosed in Chan- facilitating the oil’s handling, Appeal 2021-001192 Application 15/577,272 10 transportation, and incorporation into other components, masking the oil’s taste and smell, and protecting the oil from evaporation or oxidation. Thus, although Chan discloses encapsulating an oil in alginate by first mixing the oil with an aqueous alginate solution to form an emulsion, extruding the emulsion, and dripping the extrudate into a calcium bath to gel the alginate, the Examiner’s proposed combination of Schokker and Chan does not propose using Chan’s method to encapsulate an oil. Rather, the Examiner proposes co-extruding an aqueous alginate solution and an oil under conditions in which the alginate solution forms an outer layer surrounding the oil, and allowing the co-extrudate to fall as discrete droplets into a solution containing divalent calcium ions-as disclosed in Schokker- to encapsulate the oil in an alginate shell. The Appellant argues that Chan “teaches away from” the method of claim 1 because Chan teaches that increasing the amount of oil above 50% in the substance encapsulated negatively affected the encapsulation efficiency. Appeal Br. 9 (citing Chan § 3.1, second paragraph). The Appellant argues that one of ordinary skill in the art, therefore, “would not have expected to be reasonably successful” in generating spherical capsules using a composition consisting of a single hydrophobic substance as recited in claim 1. Appeal Br. 9. Again, however, the Appellant’s arguments do not address the rejection of claim 1 as presented by the Examiner. As discussed above, the Examiner does not propose using Chan’s method to encapsulate an oil in alginate, and instead proposes encapsulating an oil in an alginate shell using Schokker’s method to achieve the advantages disclosed in Chan of encapsulating an oil in alginate. The Appellant does not identify any Appeal 2021-001192 Application 15/577,272 11 disclosure in Chan that criticizes, discredits, or otherwise would have discouraged one of ordinary skill in the art from encapsulating an oil in an alginate shell using the encapsulation method disclosed in Schokker, and we find no such disclosure in Chan. Contrary to the Appellant’s arguments, Chan, therefore, does not teach away from the method of claim 1. Meiresonne v. Google, Inc., 849 F.3d 1379, 1382 (Fed. Cir. 2017) (“A reference that ‘merely expresses a general preference for an alternative invention but does not criticize, discredit, or otherwise discourage investigation into’ the claimed invention does not teach away.” (quoting Galderma Labs., L.P. v. Tolmar, Inc., 737 F.3d 731, 738 (Fed. Cir. 2013)). In view of Schokker’s disclosure of using a co-axial nozzle (concentric tubes) to co-extrude an aqueous alginate solution and an oil-in- water emulsion so that the alginate solution forms an outer layer surrounding the emulsion, and gelling the alginate by exposing the co-extrudate to a solution containing divalent calcium ions, in order to effectively encapsulate the oil-in-water emulsion in an alginate shell, one of ordinary skill in the art reasonably would have expected that such a method could be successfully used to encapsulate an oil in an alginate shell. 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.”). Notably, we find no objective evidence to the contrary on the record before us. The Appellant’s arguments, therefore, do not identify reversible error in the Examiner’s rejection of claim 1. We, accordingly, sustain the Examiner’s rejections of claims 1, 2, 5-8, 10-19 22, 23, and 24 under 35 U.S.C. § 103. Appeal 2021-001192 Application 15/577,272 12 DECISION SUMMARY Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-8, 10-19, 22-24 103 Mangos, Whelehan 1-8, 10-19, 22-24 1, 2, 5-8, 22, 23 103 Schokker, Chan, Mangos 1, 2, 5-8, 22, 23 10 103 Schokker, Chan, Mangos, What is Sodium Alginate 10 11-19 103 Schokker, Chan, Mangos 11-19 24 103 Schokker, Chan, Mangos, Whelehan 24 Overall Outcome 1, 2, 5-8, 10-19, 22-24 3, 4 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED IN PART