DSM IP ASSETS B.V.

Patent Trials and Appeals Board

May 21, 2021

2020003545 (P.T.A.B. May. 21, 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.
14/889,049 11/04/2015 Karl Manfred VOELKER BHD-4662-3113 6045
23117 7590 05/21/2021
NIXON & VANDERHYE, PC
901 NORTH GLEBE ROAD, 11TH FLOOR
ARLINGTON, VA 22203
EXAMINER
GEORGE, PATRICIA ANN
ART UNIT PAPER NUMBER
1793
NOTIFICATION DATE DELIVERY MODE
05/21/2021 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):
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 KARL MANFRED VOELKER,
GABRIELA BADOLATO-BÖNISCH,
THOMAS LINDEMANN, ANDREA HITZFELD, and
STEFANIE KIRCHEN
____________

Appeal 2020-003545
Application 14/889,049
Technology Center 1700
____________
Before ADRIENE LEPIANE HANLON, BEVERLY A. FRANKLIN, and
GEORGE C. BEST, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 3, 7, 17, and 19 of Application
14/889,049. Final Act. (March 6, 2019). We have jurisdiction under
35 U.S.C. § 6.
For the reasons set forth below, we affirm.

1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant
identifies DSM IP Assets, B.V., as the real party in interest. Appeal Br. 2.
Appeal 2020-003545
Application 14/889,049
2
I. BACKGROUND
The ’049 Application describes a powder reverse vitamin E
formulation. Spec. 1. According to the Specification, the claimed
composition is not sticky and produces low turbidity solutions when used in
liquid formulations. Id. at 1–2.
The claimed powder particles comprise a spray dried emulsion of
vitamin E acetate, a maltodextrin, starch octenyl succinate (“OSA-starch”),
and polyoxyethylene sorbitan monofatty acid ester. Id. at 2. According to
Appellant, the spray drying process results in powder beadlets comprising an
OSA-starch coating. Appeal Br. 8. Inside the coating, the beadlets comprise
a maltodextrin matrix. Id. at 8. Lipophilic “inner phase particles” comprised
of the vitamin E acetate and the polyoxyethylene sorbitan monofatty acid
ester are disbursed through the matrix. Id. at 8–9.
Claim 1 is representative of the ’049 Application’s claims and is
reproduced below from the Appeal Brief’s Claims Appendix. We have
italicized the limitations that are of particular concern in this appeal.
1. A dry powderous composition comprising:
powder particles; and
less than 5 wt-% water, based on the total weight of the
powderous composition,
wherein the powder particles are comprised of a spray-
dried emulsion comprising:
(i) 5–25 wt-%, based on the total weight of the powderous
composition, of dl-α-tocopherol acetate,
(ii) 25–45 wt-%, based on the total weight of the powderous
composition, of at least one maltodextrin having a
dextrose equivalent (DE) of < 18,
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Application 14/889,049
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(iii) 25–45 wt-%, based on the total weight of the powderous
composition, of starch sodium octenyl succinate (OSA-
starch), and
(iv) 5–20 wt-%, based on the total weight of the powderous
composition, of at least one polyoxyethylene sorbitan
monofatty acid ester, and wherein
the powder particles comprise an inner phase having an
average particle size D[0.5] of 70 nm to 110 nm, and
wherein
the powderous composition forms a clear liquid beverage
formulation when dissolved in a liquid beverage such
that the clear liquid beverage formulation has a turbidity
of less than 10 NTU according to ISO7027 for a 30 ppm
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Application 14/889,049
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concentration of the dl-α -tocopherol acetate in the
formulation.
Appeal Br. 12 (emphasis added).
II. REJECTION
On appeal, the Examiner maintains2 the following rejection:
1. Claims 1, 3, 7, 17, and 19 are rejected under 35 U.S.C. § 103 as
unpatentable over the combination of Chen ’761,3 GPC,4 Lizio,5 Schmidt,6
Finnan,7 and Chen ’474.8 Final Act. 4.
III. DISCUSSION
Appellant argues for reversal of the rejection with respect to all of the
rejected claims as a group. We choose claim 1 is representative of the group.
37 C.F.R. § 41.37(c)(1)(iv). Thus, the pending claims 3, 7, 17, and 19 will
stand or fall with claim 1. Id.
Appellant argues that the rejection should be reversed for any of six
reasons. We address these arguments in turn.

2 The Examiner has withdrawn the rejection of claims 1, 3, 7, 17, and 19 as
indefinite under 35 U.S.C. § 112(b). Ans. 3.
3 EP 1 066 761 A2, published January 10, 2001.
4 Maltodextrin, Corn Syrup Solids Regulations, Grain Processing Corp.
(archived January 5, 2012) (available at http://bit.ly/GPCmaltodextrinregs)
(accessed May 14, 2021).
5 US 2008/0166416 A1, published July 10, 2008.
6 US 4,395,422, issued July 26, 1983.
7 US 5,120,761, issued June 9, 1992.
8 US 6,162,474, issued December 19, 2000.
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First, Appellant argues that the Examiner erred by finding that the
claim limitation “the powder particles comprise an inner phase having an
average particle size D[0.5] of 70 nm to 110 nm” to be directed to an
intended use of the powderous composition. Appeal Br. 7–9. According to
Appellant, this is reversible error because it means that the Examiner did not
give patentable weight to the inner phase size limitation. Id.
This argument is not persuasive.
In rejecting claim 1, the Examiner did state that the inner phase
particle size appears to be the result of an intended use. See Final Act. 4.
Rather than ignoring the limitation, however, the Examiner did find that the
prior art does describe or suggest a powderous composition having inner
phase particles of less than 150 nm. Id. at 7–8; Answer 15–16. Thus, the
Examiner did give patentable weight to the limitation.
Second, Appellant argues that Chen ’761 does not describe or suggest
a powderous composition comprising inner phase particles having the
claimed particle size. Appeal Br. 7–9.
This argument is not persuasive.
In rejecting claim 1, the Examiner did not rely upon Chen ’761 as
describing or suggesting this limitation. See Final Act. 7–8. Rather, the
Examiner found that Schmidt describes methods for making spray dried
vitamin E emulsion powders having particle sizes between 1 and 1000 nm.
Id. at 8. The Examiner further cites Finnan as evidence that the silica
included in Schmidt’s composition coats the droplets. Id. Based on these
findings, the Examiner determines that “the teaching of Schmidt’s particle
size of 1 to 1000 nm with a 0.5 to 2 wt% coating of silica encompasses the
claimed inner phase (i.e. layer under the silica coating) having a size of 70
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nm to 110 nm.” Id. Appellant does not argue that these findings are
erroneous. See Appeal Br. 7–11.
Third, Appellant argues that “[n]either Chen [’761] nor any of the
secondary references of record (whether or not evidenced by the Wikipedia
page) discloses or suggests that all of the specific components and amounts
and attributes as claimed herein may be combined in order to achieve the
improved properties for vitamin E formulations.” Appeal Br. 9.
This argument is not persuasive.
In rejecting claim 1, the Examiner found that each of the claim
limitations is described in one of the recited references. The Examiner also
explained why a person having ordinary skill in the art at the time of filing
would have been motivated to combine the references in the manner
described in the rejection to arrive at the claimed invention. Thus, the
Examiner has established a prima facie case of obviousness.
Fourth, Appellant argues that a person having ordinary skill in the art
would have recognized that Chen ’761 discloses mixtures of a maltodextrin
with sucrose and/or maltose and/or glucose. Appeal Br. 10. According to
Appellant a person having ordinary skill in the art would have recognized
that these mixtures have a DE value greater than 18 due to the high amount
of non-maltodextrin present. Id.
This argument is not persuasive.
As the Examiner found, Chen ’761 describes a composition
comprising between 0 wt% and 50 wt% maltodextrin. Final Act. 5; Chen
’761 ¶¶ 11–12. GPC evidences that maltodextrin as having a DE less than
20. GPC. Thus, Chen ’761 describes the use of a maltodextrin having a DE
in a range that encompasses the claimed range of less than 18. Thus, the
Examiner correctly found that the prior art describes or suggests the recited
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limitation. See In re Harris, 409 F.3d 1339, 1341 (Fed. Cir. 2005) (a prima
facie case of obviousness typically exists when the ranges of a claimed
composition overlap the ranges disclosed in the prior art); In re Peterson,
315 F.3d 1325, 1329 (Fed. Cir. 2003) (same) In re Boesch, 617 F.2d 272,
275 (CCPA 1980).
Fifth, Appellant argues that Chen ’761 describes a composition
comprising less than 2 wt% vitamin E, which is below the amount recited in
claim 1. Appeal Br. 10.
This argument is not persuasive.
As the Examiner found, Chen ’761’s claim 1 is directed to a
composition comprising between about 0.1 wt% and 15 wt% antioxidant.
Final Act. 5. The Examiner correctly further found that Chen ’761’s claim
14—which depends from claim 1—specifies that the antioxidant can be dl-
α-tocopherol (vitamin E). Id. Chen ’761, therefore, describes a composition
having a vitamin E within a range that overlaps the range recited in the ’049
Application’s claim 1. Thus, the Examiner correctly found that the prior art
describes or suggests the recited limitation. See, e.g., Peterson, 315 F.3d at
1329.
Sixth, to the extent the Appellant is arguing that the composition
encompassed by claim 1 achieves surprising or unexpected results,
Appellant has not pointed us to any evidence in the record demonstrating
these unexpected results. Thus, any such argument is insufficient.
In view of the foregoing, we affirm the rejection of claim 1. Thus we
also affirm the rejection of claims 3, 7, 17, and 19.
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IV. CONCLUSION
In summary:
Claims
Rejected
35
U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 3, 7, 17,
19 103
Chen ’761, GPC, Lizio,
Schmidt, Finnan, Chen
’474
1, 3, 7,
17, 19
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED