Ex Parte Chen et al

Board of Patent Appeals and Interferences

Sep 5, 2012

09726880 (B.P.A.I. Sep. 5, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte CHYI-CHENG CHEN and BRUNO LEUENBERGER
__________

Appeal 2012-008653
Application 09/726,880
Technology Center 1600
__________

Before LORA M. GREEN, FRANCISCO C. PRATS, and
JACQUELINE WRIGHT BONILLA, Administrative Patent Judges.

BONILLA, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims directed to a
vitamin powder composition. The Examiner has rejected the claims as
obvious. We have jurisdiction under 35 U.S.C. § 6(b). We reverse.

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STATEMENT OF THE CASE
The Specification describes a powder composition of one or more fat-
soluble vitamins, such as vitamin E, A, K, and D3 and relevant esters. (Spec.
1, 9-10.) Droplets of the vitamins are dispersed in a matrix of a natural
polysaccharide gum (e.g., gum arabic), protein (e.g., gelatine), or mixture of
such gums or proteins, having an emulsifying capacity (id. at 4, 8, 9). The
droplets have an average diameter of about 80 to 120 nm. As stated in the
Specification, the powder “composition may contain only vitamin and
matrix components in percentages that add up to 100%” (id. at 11).
Alternatively, the powder may comprise additional components, such as
“weighting agents” and/or “emulsifiers and emulsion stabilizers,” which
“may be used to stabilize the emulsion droplets” (id. at 17). The
Specification describes adding powders to beverages, but also states that
“powder compositions of this invention may also be added to cosmetics” (id.
at 20).
Claims 3-14, 17, 28-31, and 33-36 are on appeal. Independent claims
36 and 29 are representative, and read as follows (emphasis added):
36. A powder composition consisting of at least one fat-soluble
vitamin dispersed in a matrix consisting of an emulsion-forming
composition selected from the group consisting of a natural
polysaccharide gum, a mixture of polysaccharide gums, a protein, a
mixture of proteins, and mixtures thereof, wherein the fat-soluble
vitamin is present in the powder composition in the form of solid
droplets having an average diameter of about 80 to about 120
nanometers (nm) and wherein the fat-soluble vitamin is present in the
powder composition in the amount of from about 10% to about 30%
by weight and wherein the composition has a moisture content of
about 1 to 4% by weight.
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29. A powder composition consisting of at least one fat-soluble
vitamin dispersed in a matrix of an emulsion-forming composition
selected from the group consisting of a natural polysaccharide gum, a
mixture of polysaccharide gums, a protein, a mixture of proteins, and
mixtures thereof, wherein the fat-soluble vitamin is present in the
powder composition in the form of solid droplets, wherein the powder
composition is produced by a process comprising:
(a) …;
(b) …;
(c) emulsifying the crude emulsion at a temperature of from
about 5° C to about 75° C at a pressure of from about 10,000 psi
(about 680 bar) to about 60,000 psi (about 4080 bar), to obtain an
emulsion in which the droplets have an average diameter of about 80
to about 120 nm; and
(d) ….
The claims stand rejected as follows:
• claims 3-14, 17, 28-31, and 33-36 under 35 U.S.C. § 103(a) as
obvious over either Auweter
1
in view of Lorant,
2
or Auweter and Stein
3
in
view of Lorant; and
• claim 36 under 35 U.S.C. § 103(a) as obvious over either Auweter
in view of Lorant and Cannalonga,
4
or Auweter and Stein in view of Lorant
and Cannalonga.

1
Auweter (U.S. Pat. No. 5,968,251, issued Oct. 19, 1999).
2
Lorant (U.S. Pat. No. 5,952,395, issued Sep. 14, 1999).
3
Stein et al. (EP 0 937 412 A1, published Aug. 25, 1999).
4
Cannalonga (U.S. Pat. No. 2,756,177, issued Jul. 24, 1956).
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Issue
Does the Examiner establish that it would have been prima facie
obvious to prepare a powder composition consisting of fat-soluble vitamin
droplets dispersed in a matrix consisting of a natural polysaccharide gum, a
mixture of polysaccharide gums, a protein, a mixture of proteins, or mixtures
thereof, where the vitamin droplets have an average diameter of about 80 to
about 120 nm, in view of cited references?
Principles of Law
The Examiner bears the initial burden, on review of the prior art or on
any other ground, of presenting a prima facie case of unpatentability. In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). If the Examiner fails to
establish a prima facie case of unpatentability in the first instance, the
rejection is improper and must be reversed. Id.; In re Rijckaert, 9 F.3d 1531,
1532 (Fed. Cir. 1993).
The claim phrase “consisting of” is a “closed” transition phrase that is
“understood to exclude any elements, steps, or ingredients not specified in
the claim.” AFG Indus., Inc. v. Cardinal IG Co., 239 F.3d 1239, 1244–45
(Fed. Cir. 2001); see also Norian Corp. v. Stryker Corp., 363 F.3d 1321,
1331-32 (Fed. Cir. 2004) (holding that a bone repair kit “consisting of”
claimed chemicals was infringed by a bone repair kit including a spatula in
addition to the claimed chemicals because the presence of the spatula was
unrelated to the claimed invention); MPEP 2111.03 (“Transitional Phrases”).
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Claim 36
As noted above, independent claim 36 (and therefore dependent
claims 3-14, 17, and 28) recite “a powder composition consisting of at least
one fat-soluble vitamin dispersed in a matrix consisting of an emulsion-
forming composition selected from the group consisting of a natural
polysaccharide gum, a mixture of polysaccharide gums, a protein, a mixture
of proteins, and mixtures thereof ….” (Claim 36 (emphasis added).) In
other words, the powder composition includes one or more fat-soluble
vitamins dispersed in a matrix that is a natural polysaccharide gum, a
mixture of polysaccharide gums, a protein, a mixture of proteins, or mixtures
thereof. By virtue of the “consisting of” language, however, the recited
powder composition may not include other components relevant to the
powder, such as “emulsifiers and emulsion stabilizers … used to stabilize
the emulsion droplets” (Spec. 17), that are not natural polysaccharide gums,
proteins, or mixtures of one or both. AFG, 239 F.3d at 1244–45; see also
Norian, 363 F.3d at 1331 (stating that “while „consisting of‟ limits the
claimed invention, it does not limit aspects unrelated to the invention”).
The Examiner finds that Auweter and/or Stein describes the powder
composition of claim 36, except that neither reference discloses the recited
solid droplet diameter of about 80 to about 120 nm (Ans. 5). Specifically,
the Examiner notes that “Auweter teaches particles of 200 nm size (col. 3, L
51-56),” and that Stein “does not readily envisage the claimed particle size
of 80-120 nm” (id). Likewise, the Examiner does not indicate that
Cannalonga describes smaller diameter droplets, or otherwise propose that
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this reference teaches or suggest anything about fat-soluble vitamin droplet
diameter size (Ans. 9, 16).
Regarding the smaller droplet diameter, the Examiner states that
“Lorant teaches gelled ultrafine oil-in-water emulsions having a particle size
of 50 nm to 1000 nm (abstract),” as well as “nanoparticle sizes in the range
of 30-200 nm (col. 4, 1 34-43)” (id. at 5)
5
The Examiner finds that “Lorant
teaches that the smaller particle size, lesser the surface tension and higher
the stability (see col. 1, l 26-32),” and that “reducing the particle size of the
oily phase can reduces the need for high concentrations of emulsifying
agents and suggests a particle size of 50-1000 nm” (id. at 6, 14, 16). Thus,
according to the Examiner, it would have been obvious for one of ordinary
skill to prepare the vitamin powders of Auweter and/or Stein having droplets
with a diameter as low as 30-200 nm (id. at 6).
Appellants assert, among other things, that “Auweter and Stein do not
suggest formulations having the claimed droplet size having an average
diameter of about 80 to about 120 nm, which … have optical clarity and
which appear transparent and/or translucent in an otherwise clear solution”
(App. Br. 10). Appellants refer to a declaration by Hermann Stein (an
inventor of the Stein reference), where Mr. Stein states that “[d]uring the
research that led to the invention disclosed in Stein, my co-inventors and I,
using the knowledge available at the time, attempted to produce the smallest
possible particle size,” and “[a]s Example 5 shows, at the time, at best we
could produce particle sizes of about 196 nm.” (Id. at 13 (citing Stein

5
We assume “(col. 4, 1 34-43)” in the last line of page 5 of the Answer
intends to refer to Lorant, col. 6, ll. 34-43.
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Declaration (submitted with Response dated March 28, 2005), ¶¶ 6-7).)
Appellants also submit declaration evidence supporting the statement that
“the processes of Stein and Auweter would produce carotenoid particle sizes
in a comparable range of about 200 nm,” not 80-120 nm. (App. Br. 15
(citing Leuenberger Declaration (submitted November 12, 2009), ¶ 30; see
also ¶¶ 27-29).) The Examiner does not dispute this evidence, but relies on
Lorant for teaching one skilled in the art to make and use smaller diameter
droplets.
Appellants correctly point out, however, that Lorant teaches “that
ultrafine specific oil in water emulsions in which the mean size of the
globules forming in the fatty phase is between 50 and 1000 nm is still fragile
and still poses a number of stability problems” (Reply Br. 6). As stated by
Appellants, “[t]o overcome these disadvantages, Lorant is directed to a new
class of thickening or gelling polymers which make it possible to produce
emulsions obtained by phase inversion, which are stable” (id. (citing Lorant,
col. 2, ll. 36-38)). Appellants note that Lorant discloses the use of a specific
polymer, i.e., a cross-linked poly(2-acrylamido-2-methylpropanesulphonic
acid) for stabilizing the emulsions (id. (citing Lorant, col. 3, ll. 10-11)).
We likewise find that Lorant teaches the use of a cross-linked polymer
for the purpose of producing “ʻ ultrafine‟ specific O/W emulsions” that “are
stable in all the viscosity ranges” (Lorant, col. 1, 42-49; col. 2, ll. 36-44).
The Examiner appears to acknowledge this point when stating that “Lorant
teaches that ultrafine particle oil-in-water emulsion pose stability problems,
become extremely fluid, require specific oils to avoid separation and also
bluish in appearance,” and “[t]herefore in order to overcome the problems,
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Lorant suggests adding a gelling polymer to the aqueous phase and further
suggests incorporating cosmetically active agents (see entire col. 2)” (Ans.
5). Nonetheless, the Examiner emphasizes that “Lorant teaches that the
smaller particle size, lesser the surface tension and higher the stability (see
col. 1, l 26-32)” (id. at 6).
In this regard, we see that Lorant states in column 1 that “[t]o solve
the problems of stability of conventional O/W emulsions it has been
proposed to produce so-called ‘ultrafine’ specific O/W emulsions in which
the mean size of the globules forming the fatty phase is within well-
determined limits, namely between 50 and 1000 nm,” which may be
obtained using known techniques (Lorant, col. 1, ll. 42-66) (emphasis
added).
Immediately thereafter in column 2, however, Lorant further explains
that “[e]mulsions of these types are fragile and still pose a number of
stability problems.” (Lorant, col. 2, ll. 1-35). Such problems include that
“the production of ultrafine emulsions makes it necessary to employ very
specific oils and emulsifying agents in specified conditions,” and that “the
extreme fluidity of these emulsions limits their use to a very restricted
viscosity range and to very specific cosmetic or dermatological fields” (id. at
ll. 6-13).
The overall point of Lorant‟s teachings is to solve such stability
problems. In this regard, Lorant states that they “surprisingly discovered a
new class of thickening or gelling polymers which make it possible to
produce emulsions obtained by phase inversion, which are stable in all the
viscosity ranges.” (Id. at ll. 36-39.) Lorant then describes the specific
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polymers in columns 3-16, i.e., crosslinked poly(2-acrylamido-2-
methylpropanesulphonic acid) polymers.
Thus, while we agree with the Examiner that one skilled in the art
might have been motivated to prepare a vitamin powder of Auweter, Stein,
and/or Cannalonga having vitamin droplets with a diameter as low as 30-200
in light of Lorant, Lorant teaches or suggests also including a specific
crosslinked polymer for the purpose of overcoming stability problems
associated with the “ultrafine” powder. Moreover, in light of the described
stability problems, Lorant as a whole teaches away from preparing
“ultrafine” O/W emulsions in the absence of the specific crosslinked
polymer, i.e., poly(2-acrylamido-2-methylpropanesulphonic acid) polymer,
described in Lorant (see cols. 3-16).
The Examiner‟s Answer does not sufficiently address these points. In
addition, the Answer does not address the “consisting of” language in claim
36, or that such language precludes including a relevant component that is
not a fat-soluble vitamin, a natural polysaccharide gum, a mixture of
polysaccharide gums, a protein, a mixture of proteins, or mixtures thereof, in
the recited powder. Likewise, the Examiner does not assert that “natural
polysaccharide gum” or “protein” in claim 36 encompasses a stabilizing
crosslinked polymer disclosed in Lorant, or that Lorant suggests the use of a
natural polysaccharide gum, protein, or mixtures thereof, to solve the
stability problems described in Lorant when making and using “ultrafine”
particles. Thus, the Examiner does not establish by a preponderance of the
evidence that claim 36 (and corresponding dependent claims) are obvious
over Auweter and/or Stein in view of Lorant and/or Cannalonga.
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Claim 29
Independent claim 29 (and therefore dependent claims 30-35) recite a
“powder composition consisting of at least one fat-soluble vitamin dispersed
in a matrix of an emulsion-forming composition selected from the group
consisting of a natural polysaccharide gum, a mixture of polysaccharide
gums, a protein, a mixture of proteins, and mixtures thereof.” (Claim 29
(emphasis added).) Based on the italicized language in the claim language
quoted above, and in light of the Specification, we interpret claim 29
similarly to claim 36 in that the recited powder composition excludes any
relevant component that is not a fat-soluble vitamin, a natural polysaccharide
gum, a mixture of polysaccharide gums, a protein, a mixture of proteins, or
mixtures thereof.
Moreover, (c) in claim 29 (a product-by-process element) recites
emulsifying at certain temperatures and pressures “to obtain an emulsion in
which the droplets have an average diameter of about 80 to about 120 nm.”
In other words, the powder composition of claim 29 comprises droplets
having a diameter of about 80-120 nm. As such, the analysis above
regarding claim 36 applies to claim 29 as well.
Again, the Examiner has not established by a preponderance of the
evidence that an ordinary artisan would have used any technique to prepare
any “ultrafine” droplets unless the composition in question included a
stabilizing crosslinked polymer as described in Lorant. The Examiner does
not establish that one skilled in the art would have been motivated in light of
Lorant and/or other cited references to prepare the powdered composition of
claim 29 comprising vitamin droplets having an average diameter of 80-120
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nm, where the composition excludes stabilizers that are not natural
polysaccharide gums, proteins or mixtures thereof (as recited in claim 29).
Moreover, the Examiner does not suggest that relevant polymers disclosed in
Lorant qualify as a natural gum and/or protein. Thus, the Examiner does not
establish by a preponderance of the evidence that claim 29 (and
corresponding dependent claims) are obvious over Auweter and/or Stein in
view of Lorant.
Conclusion of Law
The Examiner does not establish that it would have been prima facie
obvious to prepare a powder composition consisting of fat-soluble vitamin
droplets dispersed in a matrix consisting of a natural polysaccharide gum, a
mixture of polysaccharide gums, a protein, a mixture of proteins, or mixtures
thereof, where the vitamin droplets have an average diameter of about 80 to
about 120 nm, in view of cited references.
SUMMARY
We reverse the obviousness rejection of claims 3-14, 17, 28-31, and
33-36 over either Auweter in view of Lorant, or Auweter and Stein in view
of Lorant. We also reverse the obviousness rejection of claim 36 over either
Auweter in view of Lorant and Cannalonga, or Auweter and Stein in view of
Lorant and Cannalonga.

REVERSED

cdc