Ex Parte Chanamai

Patent Trial and Appeal Board

Nov 29, 2016

11539391 (P.T.A.B. Nov. 29, 2016)

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.
11/539,391 10/06/2006 Ratjika Chanamai 0101372/0532491 3600
26874 7590 12/01/2016
FROST RROWN TODD T T C EXAMINER
3300 Great American Tower TURNER, FELICIA C
301 East Fourth Street
CINCINNATI, OH 45202 ART UNIT PAPER NUMBER
1793
NOTIFICATION DATE DELIVERY MODE
12/01/2016 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):
patents @ fbtlaw. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RATJIKA CHANAMAI
Appeal 2015-004257
Application 11/539,391
Technology Center 1700
Before TERRY J. OWENS, BEVERLY A. FRANKLIN, and
JENNIFER R. GUPTA, Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1—5, 7, 9, 11—19, 34, 36, 37 and 40. We have jurisdiction
under 35 U.S.C. § 6(b).
The Invention
The Appellant claims a microemulsion composition and a method and
concentrate for preparing the composition. Claim 1 is illustrative:
1. A composition used to incorporate lipophilic water-insoluble
materials into food and beverage products, consisting
essentially of:
(a) an oil phase comprising said water-insoluble material
and a low HLB nonionic emulsifier having an HLB of from
about 1 to about 5 selected from glycerol esters of fatty acids,
Appeal 2015-004257
Application 11/539,591
monoglycerides, diglycerides, ethoxylated monoglycerides,
polyglycerol esters of fatty acids, sorbitan esters of fatty acids,
sucrose esters of fatty acids, and mixtures thereof;
(b) an aqueous phase; and
(c) a food grade emulsifier system consisting of:
(i) a high HLB nonionic emulsifier having an HLB
of from about 9 to about 17 selected from acetic acid
esters of mono and diglycerides, lactic acid esters of
mono and diglycerides, succinic acid esters of mono and
diglycerides, diacetyl tartaric esters of mono and
diglycerides, polyoxyethylenesorbitan esters,
polyglycerol esters of fatty acids, sucrose esters of fatty
acids, and mixtures thereof; and
(ii) a medium HLB nonionic emulsifier having an
HLB of from about 6 to about 8 selected from
monoglycerides, diglycerides, ethoxylated
monoglycerides, sorbitan esters of fatty acids, phosphoric
acid esters of mono and di-glycerides, polyglycerol esters
of fatty acids, sucrose esters of fatty acids, and mixtures
thereof;
wherein said oil phase is dispersed as particles having an
average diameter of from about 1 to about 300 nm, within said
aqueous phase; wherein said composition is a microemulsion, is
transparent, thermodynamically stable, and has a low interfacial
tension; and wherein said low, medium and high HLB
emulsifiers act to form the microemulsion.
Jean-Louis Salager, FIRP Booklet # E300-A, Surfactants Types and Uses 1—
49 (Laboratorio FIRP, Venezuela 2002) (hereinafter Salager).
The References
Wolf
Van Den Braak
Corbella
Constantinides
US 4,835,002 May 30, 1989
US 6,509,044 B2 Jan. 21, 2003
US 2003/0220406 A1 Nov. 27, 2003
WO 94/08605 A1 Apr. 28, 1994
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Application 11/539,591
Clyde E. Stauffer, Chapter 8 - Emulsifiers for the Food Industry, in Bailey’s
Industrial Oil and Fat Products 229—67 (6th ed., John Wiley & Sons 2005)
(hereinafter Bailey).
The Rejections
The claims stand rejected under 35 U.S.C. § 103 as follows:
claims 1—5, 7, 9, 11—15, 17—19, 34, 36, 37 and 40 over Constantinides in
view of Wolf, Van Den Braak, Bailey and Salager, claim 16 over
Constantinides in view of Wolf, Van Den Braak, Bailey, Salager and
Corbella, claims 1—3, 5, 9, 11—14, 17 and 18 over Wolf in view of
Constantinides, Van Den Braak and Bailey, and claim 16 over Wolf in view
of Constantinides, Van Den Braak, Bailey and Corbella.1
OPINION
We reverse the rejections. We need address only the independent
claims (1,19 and 34). Oil-in-water microemulsion composition claim 1 and
method claim 19 require a composition comprising an oil phase containing a
water-insoluble material and a low (about 1 to about 5) hydrophilic-
lipophilic balance (HLB) nonionic emulsifier, and a food grade emulsifier
system consisting of a high (about 9 to about 17) HLB nonionic emulsifier
and a medium (about 6 to about 8) HLB nonionic emulsifier. Oil-in-water
microemulsion concentrate composition claim 34 requires about 1 to
about 10 % of a food grade low (about 1 to about 5) HLB nonionic
emulsifier, about 1 to about 10 % of a food grade medium (about 6 to
about 8) HLB nonionic emulsifier, and about 65 to about 95 % of a food
grade high (about 9 to about 17) HLB nonionic emulsifier.
1 A rejection of claims 17, 18, 36 and 37 under 35 U.S.C. § 112, first
paragraph is withdrawn in the Examiner’s Answer (Ans. 19).
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Application 11/539,591
Constantinides discloses a water-in-oil emulsion comprising a low
HLB surfactant-containing lipophilic phase and a high HLB surfactant (p. 5,
11. 3—13). The low HLB surfactant can be a blend of surfactants having HLB
values of about 2.5 to 6 (which includes values within the Appellant’s low
and medium HLB emulsifier HLB ranges) (p. 7,11. 25—28; p. 8,11. 24—27).
“Suitably, the blend of low and high HLB surfactants will have an HLB
value in the range of from about 7 to about 15” (p. 9,11. 8—9).
In the rejection in which Constantinides is the primary reference, the
Examiner relies upon Wolf (col. 5,11. 30-34) only as evidence that
Constantinides’s polyoxyethylene-sorbitan fatty acid esters (polysorbates)
(p. 8,11. 29-34) are nonionic and can be high HLB or low HLB surfactants
(Ans. 3).
The Examiner relies upon Van Den Braak for a disclosure of sucrose
stearate as an emulsifier (col. 6,1. 50) which, the Examiner finds, is a
medium HLB emulsifier (Ans. 3^4).2 The Appellant provides evidence that
sucrose stearates can have HLB values from about 1 to about 16 and,
therefore, can be low HLB, medium HLB or high HLB emulsifiers
(App. Br. 10—11). In response, the Examiner points out that Van Den
Braak’s claim 1 recites an emulsifier mixture comprising a primary
surfactant and a lower-HLB cosurfactant and having an HLB of 10 to 18
(Ans. 21), and finds that “Van Den Braak does steer the sucrose stearate to
be a medium HLB emulsifier since it discloses sucrose stearate as a co-
2 The Examiner finds that Van Den Braak “discloses the suitability of
tertiary microemulsions having low HLB, possible medium HLB, and high
HLB surfactants [col. 3, lines 6-13]” (Ans. 4), but the Examiner provides no
explanation as to how that portion of Van Den Braak discloses or would
have suggested, to one of ordinary skill in the art, such a combination.
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Application 11/539,591
surfactant and that the co-surfactant has a lower HLB than the primary
surfactant and that the blend of primary and co-surfactant has an HLB of 10
to 18” (Ans. 23).
Van Den Braak discloses high HLB emulsifiers having a preferred
HLB of 12—16, most preferably 15, and discloses suitable emulsifier mixture
components but not their HLB values (col. 2,1. 65 — col. 3,1. 13). Van Den
Braak’s emulsion mixture HLB values below 12 appear to be achievable by
combining emulsifiers having HLB values below the preferred range. The
Examiner does not point out in Van Den Braak a disclosure which would
have suggested, to one of ordinary skill in the art, including a medium HLB
emulsifier in the mixture.
Bailey discloses that surfactants having HLBs of 8—10 are not good
emulsion stabilizers but are good wetting agents (pp. 239, 243).
The Examiner finds that Bailey discloses that “[t]he addition of a
medium HLB allows the dispersion of water on a solid surface e.g. wetting
solid cocoa particles [pg. 244]” (Ans. 4).
That portion of Bailey discloses that “[t]he addition of lecithin aids
the wetting of solid cocoa particles by this oil [cocoa butter]”. The
Examiner does not establish that this disclosure would have led one of
ordinary skill in the art to include a medium HLB surfactant in
Constantinides’s surfactant mixture.3
In the rejections wherein Wolf is the primary reference, the Examiner
finds that Wolf discloses a microemulsion which “can contain one or more
lipophilic surfactants and one or more hydrophilic surfactants [col. 6,
3 The Examiner relies upon Salager only for a disclosure of advantages of
nonionic surfactants relative to cationic and ionic surfactants (Ans. 4).
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Application 11/539,591
lines 10-15]” (Ans. 12), “lipophilic surfactants have HLB values of 2 to 6
[col. 7, lines 30-33]” (id.), and “the hydrophilic surfactants have HLB values
of 6 to 20 [col. 7, lines 34-35]” (Ans. 12-13).
Those portions of Wolf disclose:
The combination of surfactants that may be used in this
regard would thus include
(a) one or more hydrophilic surfactants
(b) one or more lipophilic and one or more hydrophilic
surfactants
(c) one or more amphoteric surfactants, alone, or with
an (a) or (b) set of surfactants, [col. 6,11. 10-16]
A preferred commercial method for forming the
microemulsions is to:
(a) separately dissolve a lipophilic surfactant i.e., one
having a HLB value of about 2 to 6, in the oil,
(b) separately dissolve a hydrophilic surfactant i.e., one
having a HLB value of about 6 to 20, in the water,
(c) then mix (a) and (b), and then
(d) add enough of the alcohol [col. 4,11. 11—22] to
achieve the microemulsion stage, as evidenced by the clarity, to
the naked eye, of the resulting system. Prior to the addition of
the full amount of alcohol needed to achieve such clarity, the
mixture of (a) and (b) will have a cloudy or turbid appearance.
[col. 7,11. 30-42]
The Appellant argues that the term “consisting of’ in claim 1 excludes
Wolfs alcohol from the food grade emulsifier system (App. Br. 16). The
Examiner responds that “the polyol in Wolf could have been considered to
be a part of the ‘aqueous phase’ in the formation of a microemulsion”
(Ans. 27).
The Appellant’s claim term “consisting of’ limits the food grade
emulsifier system to its recited components. See Mannesmann Demag Corp.
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Application 11/539,591
v. Engineered Metal Prod., 793 F.2d 1279, 1282 (Fed. Cir. 1986) (“The
district court correctly observed that the phrase ‘consisting of’ appears in
clause (a), not the preamble of the claim, and thus limits only the element set
forth in clause (a).”). Wolfs disclosure that the mixture remains cloudy or
turbid until a sufficient amount of alcohol has been added to the mixture
(col. 7,11. 39-42) indicates that the alcohol is part of the emulsifier system
and, therefore, is excluded by the Appellant’s “consisting of’ claim term.
Thus, the record indicates that the rejections are based upon
impermissible hindsight in view of the Appellant’s disclosure. See In re
Warner, 379 F.2d 1011, 1017 (CCPA 1967) (“A rejection based on section
103 clearly must rest on a factual basis, and these facts must be interpreted
without hindsight reconstruction of the invention from the prior art”).
Accordingly, we reverse the rejections.
DECISION/ORDER
The rejections under 35 U.S.C. § 103 of claims 1—5, 7, 9, 11—15, 17—
19, 34, 36, 37 and 40 over Constantinides in view of Wolf, Van Den Braak,
Bailey and Salager, claim 16 over Constantinides in view of Wolf, Van Den
Braak, Bailey, Salager and Corbella, claims 1—3, 5, 9, 11—14, 17 and 18 over
Wolf in view of Constantinides, Van Den Braak and Bailey, and claim 16
over Wolf in view of Constantinides, Van Den Braak, Bailey and Corbella
are reversed.
It is ordered that the Examiner’s decision is reversed.
REVERSED
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