10564635 (P.T.A.B. Aug. 9, 2016)

Ex Parte Funda et al

Patent Trial and Appeal BoardAug 9, 2016

10564635 (P.T.A.B. Aug. 9, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 10/564,635 01/13/2006 23117 7590 08/11/2016 NIXON & V ANDERHYE, PC 901 NORTH GLEBE ROAD, 11 TH FLOOR ARLINGTON, VA 22203 FIRST NAMED INVENTOR ElgerFunda 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 4662-121 2120 EXAMINER GREENE, NAN A ART UNIT PAPER NUMBER 1619 NOTIFICATION DATE DELIVERY MODE 08/11/2016 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): 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 ELGER FUNDA and TORS TEN HUBER Appeal2014-008091 Application 10/564,635 Technology Center 1600 Before DEMETRA J. MILLS, MELANIE L. McCOLLUM, and JACQUELINE T. HARLOW, Administrative Patent Judges. MILLS, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. Â§ 134. The Examiner has rejected the claims for obviousness. We have jurisdiction under 35 U.S.C. Â§ 6(b). STATEMENT OF CASE The Appellants' Specification is directed to stable, powderous formulations comprising a fat-soluble active ingredient such as a fat-soluble vitamin, and a milk protein such as a caseinate. They can be used as additives for feed, food, beverages and cosmetics. (Abstract) The following claims are representative. 1. Powderous formulations comprising a fat-soluble vitamin in a matrix of a milk protein composition, wherein the milk protein has a degree of hydrolysis of 3.5% to 25% and the milk 1 Appeal2014-008091 Application 10/564,635 protein composition additionally contains a plant protein or a plant protein hydrolysate, and wherein the milk protein is thermally cross-linked with a reducing sugar or a reducing sugar derivative selected from a desoxy sugar or an amino sugar wherein the cross-linking of the milk protein is achieved by submitting the powderous formulations to heat treatment. 16. Food, beverages, animal feeds, cosmetics or drugs comprising a formulation according to claim 1. Cited References Cho et al us 4,025,659 May 24, 1977 Schneider et al us 5,356,636 Oct. 18, 1994 Kodera et al US 6,455,273 B 1 Sept. 24, 2002 Hahnlein et al. US 6,531,157 Bl Mar 11. 2003 Sakurai et al. JP 4,503,8348 Dec. 4, 1970 Tamotsu et al JP 2002-145,771-A May 22, 2002 uoxastakis Lupzn .)eea rroreins: Elsevier, Novel Macromolecules in Food Systems, pp. 7-38; of record (2000). Grounds of Rejection 1. Claims 1-5 and 7-21 are rejected under 35 U.S.C. Â§103(a) as being unpatentable over Sakurai, in view of Tamotsu, Cho, Kodera, Hahnlein and Schneider. 1 2. Claims 1-5 and 7-21 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being 1 We note that during an Appeals Conference on May 12, 2014, the Examiner indicated that he would consider allowing subject matter commensurate in scope with Example 3 of the application as filed. 2 Appeal2014-008091 Application 10/564,635 2-13. unpatentable over claims 1-18 of copending Application No. 13/887,608 (hereafter '608) in view ofTamotsu, Cho, and Doxastakis. FINDINGS OF FACT The Examiner's findings of fact are set forth in the Answer at pages PRINCIPLES OF LAW In making our determination, we apply the preponderance of the evidence standard. See, e.g., Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings before the Office). The Board "determines the scope of claims in patent applications not solely on the basis of the claim language, but upon giving claims their broadest reasonable construction 'in light of the specification as it would be interpreted by one of ordinary skill in the art."' Phillips v. A WH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (quoting In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). "The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). "An appellant may attempt to overcome an examiner's obviousness rejection on appeal to the Board by submitting ... evidence of secondary considerations of non-obviousness. Ex Parte Frye, 94 U.S.P.Q.2d 1072, 1075 (BP AI 2010) (precedential). "It is well established that the objective evidence of nonobviousness must be commensurate in scope with the claims." In re Lindner, 457 F.2d 506, 508 (CCPA 1972). "Commensurate in scope" means that the evidence provides a reasonable basis for concluding that the untested embodiments encompassed by the claims would behave in 3 Appeal2014-008091 Application 10/564,635 the same manner as the tested embodiment(s). See, In re Lindner, 457 F.2d 506, 508 (CCPA 1972) ("Here, only one mixture of ingredients was tested. . . . The claims, however, are much broader in scope, ... and we have to agree with the Patent Office that there is no 'adequate basis for reasonably concluding that the great number and variety of compositions included by the claims would behave in the same manner as the [single] tested composition."') (bracketed material in original). Rejection 1 We agree with the Examiner's fact finding, statement of the rejection and responses to Appellants' arguments as set forth in the Answer. We find that the Examiner has provided evidence to support a prima facie case of obviousness. We provide the following additional comment to the Examiner's argument set forth in the Final Rejection and Answer. We select claim 16 as representative claim as Appellants do not argue individual claims separately in the Brief. The Examiner finds that Sakurai teaches each element claimed except Sakurai teaches the use of sodium caseinate only and does not teach the use of a combination of hydrolyzed casein with a plant protein, such as soy. Ans. 4. Cho is relied on for the disclosure of the use of soy and caseinate in a food product, a coffee whitener composition. The combination of soy and caseinate prevents oil separation and feathering. Cho, Abstract, Ans. 4-5. Tomatsu is relied for its disclosure of the desirability of including a casein 5- 20% hydrolysate in a fat soluble vitamin. Ans. 4. Kodera is relied on for the disclosure of hydrolyzed casein and soy protein to eliminate bitterness and improve stability. Kodera col. 2 and 4, Ans. 5. Hahnlein is relied on for the disclosure of features of the dependent claims. Ans. 5-6. 4 Appeal2014-008091 Application 10/564,635 The Examiner concludes that: It would have been prima facie obvious to one of ordinary skill in the art at the time the claimed invention was made to produce a powderous formulation of a fat-soluble vitamin in a protein matrix comprising casein having a degree of hydrolysis of 3 .5% to 25% and a plant protein (hydrolysate ), wherein the milk protein is thermally cross-linked with a reducing sugar or a reducing sugar derivative selected from a desoxy sugar or an amino sugar wherein the cross- linking of the milk protein is achieved by submitting the dry powder to heat treatment, as suggested by SAKURAI and TAMOTSU in view of CHO, KODERA and HAHNLEIN, and produce the instantly claimed invention because fat-soluble vitamins are an important part of animal (e.g. human) nutrition and providing said vitamins in a cross-linked protein matrix would have enhanced the stability of the product and provided for easier handling, and the combination of a milk protein and plant protein would have provided for enhance functional properties such as solubility of hot water as discussed by CHO at column 1. Ans. 6-7. Appellants present several arguments in the Brief with respect to the Examiner's prima facie case, which the Examiner has addressed in the response to arguments section of the Answer. We agree with the Examiner's responses with respect to the prima facie case. Appellants proffer evidence of purportedly unexpected results, presented in the Declaration under 37 CPR 1.132 of Elger Manuel Funda, dated March 23, 2011, in rebuttal to the Examiner's obviousness rejection. The Table from page 3 of the Declaration is reproduced below. 5 Appeal2014-008091 Application 10/564,635 t''~-~Â·=:~==Â·:Â·;::Â·::~-=~~~--:.-.-~-1 .. Â·Â·Â·",~~---Â·-Â·-Â·-Â·---~-Â·-Â·--Â·-=------.. Â·:Â·Â·Â·-'"Â·:-Â·-.._.._.._.._.._.._.._'f ........ '_ ................... : ....................... ...-.-..... --..-.-----------TÂ·------Â·Â·Â·Â·Â·-Â·--------: ~ i1_:. .. ~,;.11ui:.~u~ ':a:tusun~:s: ! Y~-.:alTI::i:U: ... ~.cosn:~l~Â·s I ~Â·Â·$,i{n'f.B:O: /\-t::r~nW:ni ~ .~Â·~(>:!