Ex Parte Funda et al

Patent Trial and Appeal Board

Oct 24, 2018

14123017 (P.T.A.B. Oct. 24, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/123,017 03/24/2014
23117 7590 10/26/2018
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.
BHD-4662-2739 9659
EXAMINER
ZHANG, YANZHI
ART UNIT PAPER NUMBER
1617
NOTIFICATION DATE DELIVERY MODE
10/26/2018 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, ALEXANDRA TELEKI,
LEONARDUS GERARDUS BERNARDUS BREMER,
PIERRE ELEMANS, and ADRIAAN WILLEM MEESEN
Appeal2017-010613
Application 14/123,017
Technology Center 3700
Before DONALD E. ADAMS, ERIC B. GRIMES, and JOHN G. NEW,
Administrative Patent Judges.
GRIMES, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a process
for producing an extrudate, which have been rejected as obvious. We have
jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
STATEMENT OF THE CASE
"The present invention relates to a process for the production of
extruded formulations(= extrudates) comprising emulsion droplets." Spec.
1 :3--4. "One way to formulate fat soluble compounds are dried emulsions."
Id. at 1: 12. "Extrusion processes ( and extruders) are well known in the field
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Application 14/123,017
of formulations .... The main advantages of using the extrusion technology
is that high viscous solutions can be formulated and less water can be used
for the dispersion, which then requires less drying," compared to other
emulsification technologies. Id. at 1 :22-29.
"The goal of the present invention was to find a way to improve ( also
simplify) the production of extrudates comprising oil-in-water emulsion
droplets, which comprise fat soluble compound( s ), such as for example oils
or vitamins." Id. at 2:4--6. "Surprisingly it was found out that when the
emulsification is carried out inside the extruder, the process as well as the
obtained extrudates are improved." Id. at 2:8-10.
Claims 1-3 and 5-12 are on appeal. Claim 1 is illustrative and reads
as follows ( emphasis added to the disputed limitation):
1. A process for producing an extrudate, wherein the
process compnses:
(a) adding ingredients comprised of at least one fat soluble
compound, at least one emulsifier and water into an
extruder,
(b) operating the extruder so as to emulsify the ingredients in
the extruder and thereby form oil-in-water emulsion
droplets of the at least one fat soluble compound; and
thereafter,
( c) extruding the emulsified ingredients from the extruder to
thereby form an extrudate comprised of the oil-in-water
emulsion droplets of the at least one fat soluble
compound.
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Application 14/123,017
The claims stand rejected as follows:
Claims 1-3, 5-9, and 12 under 35 U.S.C. § I03(a) as obvious based
on Erdmann 1 and Doi2 (Non-Final Action3 3) and
Claims 10 and 11 under 35 U.S.C. § I03(a) as obvious based on
Erdmann, Doi, and Quellet4 (Non-Final Action 6).
DISCUSSION
The Examiner has rejected claims 1-3, 5-9, and 12 as obvious based
on Erdmann and Doi, and has rejected claims 10 and 11 as obvious based on
Erdmann, Doi, and Quellet. The same issue is dispositive for both rejections.
The Examiner finds that Erdmann discloses a "process comprising
emulsifying [a] fat in water with an emulsifier to form an emulsion ... and
extruding the emulsion together with a solid matrix to obtain a solid
product." Non-Final Action 3. The Examiner finds that "[ w ]hile Erdmann
does not explicitly disclose forming emulsion inside the extruder, this
deficiency is cured by Doi." Id. at 4.
The Examiner finds that Doi discloses a "method for producing
aqueous biodegradable polyester dispersion." Id. "Doi discloses that the step
of mixing and kneading may be performed using a screw extruder ( col. 4,
lines 35-38, implying inside the extruder ... )." Id. The Examiner concludes
that it would have been obvious "to combine the teachings of Erdmann and
Doi to emulsify the ingredients inside the extruder ... because the method of
Doi is advantageous in practical use." Id. The Examiner also reasons that
1 US 2008/0317916 Al, published Dec. 25, 2008.
2 US 6,716,911 B2, issued Apr. 6, 2004.
3 Office Action mailed July 22, 2016.
4 US 2001/0008635 Al, published July 19, 2001.
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Application 14/123,017
"[t]he combination of these teachings would have been no more than
applying a known technique to a known method ready for improvement to
yield predictable results." Id. at 4--5.
We agree with the Examiner that the cited references support a prima
facie case of obviousness. Erdmann discloses "a process for preparing a
nutritional composition including protein, fat and carbohydrate which
process comprises emulsifying the fat in water with an emulsifier to form an
emulsion ... and extruding the emulsion together with a solid matrix
comprising the protein and the carbohydrate." Erdmann ,r 5. "Any suitable
extruder may be used." Id. ,r 27.
As the Examiner noted, Erdmann's process includes forming an
emulsion before extruding, rather than "operating the extruder so as to
emulsify the ingredients in the extruder," as recited in claim 1. Doi,
however, discloses "a method for producing an aqueous biodegradable
polyester dispersion, the method comprising the step of mixing and kneading
a molten biodegradable polyester, an aqueous emulsifier solution ... and
other additives according to necessity to thereby yield an aqueous
dispersion." Doi 1 :53-60.
Doi states that "the step of mixing and kneading may be performed
using a screw extruder." Id. at 4:35-37.
For example, when a corotating twin screw extruder or
grinder extruder is used, the biodegradable polyester is
continuously fed to the extruder through its hopper, and
separately the aqueous emulsifier solution is injected into the
extruder through a supply port disposed at any position other
than the point where the resin is melted. Then the biodegradable
polyester is melted, is mixed and kneaded with the aqueous
emulsifier solution, ... and thereby continuously yields an
aqueous dispersion of the biodegradable polyester.
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Application 14/123,017
Id. at 7:39--49. Doi also describes its aqueous dispersion as an emulsion. See,
e.g., id. at 12: 12.
Doi describes its method of making dispersions or emulsions as "very
advantageous in practical use." Id. at 18:4--5. Thus, it would have been
obvious to modify Erdmann's method of making emulsions to include Doi's
step of emulsifying the ingredients in the extruder in order to gain the
practical advantages of Doi's method; specifically, avoiding a separate step
of forming an emulsion before adding the components of the emulsion into
the extruder.
Appellants argue that "[t]he Examiner's reliance on Doi et al to
allegedly teach forming an emulsion inside the extruder is misplaced.
Specifically, Doi et al teaches to form an aqueous biodegradable polyester
dispersion by kneading (e.g., in an extruder) a molten biodegradeable [sic]
polyester and an aqueous emulsifier solution." Appeal Br. 6-7 ( citing Doi at
6:54--56). Appellants conclude that
neither Erdman[ n] et al nor Doi et al teach or suggest that the
individual components of the emulsion are supplied to the
extruder so that the actual emulsion of such individual
components is formed inside the extruder. Instead, both
Erdman[ n] et al and Doi et al teach the state of the art - that is,
that an aqueous emulsion is pre-made and it is this pre-made
emulsion which is then added to the extruder to be mixed with
the matrix material.
Id. at 7.
This argument is unpersuasive, because it is not consistent with the
evidence provided by Doi. The disclosure of Doi cited by Appellants states
that "[ t ]he biodegradable polyester must be melted and the aqueous
emulsifier solution must be prepared before performing the method of the
present invention." Doi 6:54--56. Doi, however, also states that "[t]he
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Application 14/123,017
biodegradable polymer is melted by heating ... using a drum, an
emulsification equipment, or an extruder." Id. at 6:60-64 (emphasis added).
This description is consistent with Doi's description of using a screw
extruder to form its desired dispersion/emulsion by feeding polyester and
aqueous emulsifier solution separately into the extruder, then melting the
polyester and mixing/kneading it with the aqueous emulsifier to form the
aqueous dispersion/emulsion. See id. at 7:39-49. See also id. at 11:50 to
12: 18 (Example 1 ), which describes feeding pellets of a biodegradable
polyester (poly(butylene succinate)) into an extruder and "[ c ]oncurrently"
injecting an aqueous solution of an emulsifier (partially saponified
poly(vinyl alcohol)); the example also describes different temperatures for
the "resin pellet supply portion," the "resin melting portion," and the portion
"between the emulsifier aqueous solution supply portion to the outlet."
Based on Doi's description of its process, we disagree with
Appellants' position that "Doi et al teach the state of the art - that is, that an
aqueous emulsion is pre-made and it is this pre-made emulsion which is then
added to the extruder to be mixed with the matrix material." Appeal Br. 7.
Rather, Doi teaches separately adding a biodegradable polyester and an
aqueous emulsifier solution to an extruder, and operating the extruder to
emulsify the ingredients.
We therefore affirm the rejection of claim 1 under 35 U.S.C. § 103(a)
based on Erdmann and Doi. Claims 2, 3, 5-9, and 12 fall with claim 1
because they were not argued separately. 37 C.F.R. § 4I.37(c)(l)(iv). We
also affirm the rejection of claims 10 and 11 because Appellants have
waived arguments based on Quellet. Appeal Br. 10. See 37 C.F.R.
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§ 4I.37(c)(l)(iv) (Appeal Brief must contain "[t]he arguments of appellant
with respect to each ground of rejection, and the basis therefor").
SUMMARY
We affirm both of the rejections on appeal.
TIME PERIOD FOR RESPONSE
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
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