Ex Parte Myers et al

Patent Trial and Appeal Board

Sep 12, 2016

11957036 (P.T.A.B. Sep. 12, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111957,036 12/14/2007
23409 7590 09/14/2016
MICHAEL BEST & FRIEDRICH LLP (Mke)
100 E WISCONSIN A VENUE
Suite 3300
MILWAUKEE, WI 53202
FIRST NAMED INVENTOR
Gale D. Myers
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.
085516-9119-01 8573
EXAMINER
KING, FELICIA C
ART UNIT PAPER NUMBER
1793
NOTIFICATION DATE DELIVERY MODE
09/14/2016 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):
mkeipdocket@michaelbest.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GALE D. MYERS JEFFREY R. PLODZIEN, and LEO H. OTTO
Appeal2015-000189
Application 11/957,036
Technology Center 1700
Before RICHARD M. LEBOVITZ, KAREN M. HASTINGS, and
JENNIFER R. GUPTA, Administrative Patent Judges.
LEBOVITZ, Administrative Patent Judge.
DECISION ON APPEAL
This appeal involves claims directed to a dispersion for imparting
pearlescence to a food product. The Examiner finally rejected the claims as
obvious under 35 U.S.C. § 103(a). We have jurisdiction under 35 U.S.C.
§ 134. The Examiner's rejections are affirmed.
STATEMENT OF CASE
Appellants appeal from the Examiner's final rejection of claims 1-3
and 5--42. Claims 1, 15, 18, and 39 are independent claims. The remaining
claims depend from claims 1, 15, 18, and 39. Each of the claims comprise a
dispersion with alcohol, a pearlescent pigment, a cellulose derivative, and a
wax. Claim 1 is representative and reads as follows:
Appeal2015-000189
Application 11/957,036
1. A method of imparting pearlescence to a food product, the
method comprising:
applying a dispersion to a food product using confectionary
panning without applying a subcoat to the food product,
wherein the dispersion comprises food grade alcohol in an
amount from about 50% to about 95% by weight of the
dispersion, a pearlescent pigment, a cellulose derivative in an
amount sufficient to enhance viscosity of the dispersion and
impart a barrier coat to the food product, and a wax in an
amount from about 1 % to about 30% by weight of the
dispersion.
The claims stand finally rejected1 by the Examiner as follows:
1. Claims 1-3, 5-9, 13-21, 23-25, 27, and 29--42 under 35 U.S.C.
§ 103(a) as obvious in view of Steffenino et al. (US 6,902,609 B2, issued
June 7, 2005) ("Steffenino"), Uhlemann et al. (US Pub. App. 2001/0021404
Al, published Sept. 13, 2001) ("Uhlemann"), Kelley et al. (US 5,662,732,
issued Sept. 2, 1997) ("Kelley"), Rieckmann et al. (US 3,456,050, issued
July 15, 1969) ("Rieckmann"), and Tuji (US 3,477,864, issued Nov. 11,
1969).
2. Claims 10 and 11under35 U.S.C. § 103(a) as obvious in view of
Steffenino, Uhlemann, Kelley, Rieckmann, Tuji, and Patil (US 3,635,735,
issued Jan. 18, 1972).
3. Claim 12 under 35 U.S.C. § 103(a) as obvious in view of
Steffenino, Uhlemann, Kelley, Rieckmann, Tuji, and Gruber (US Pub. Pat.
App. 2004/0247675 Al, published Dec. 9, 2004).
1 The rejections under 35 U.S.C. § 112 were withdrawn by the Examiner in
the Answer. Answer 24. The obviousness rejection of claim 26 was also
withdrawn because the claim is canceled.
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Application 11/957,036
4. Claims 22 and 28 under 35 U.S.C. § 103(a) as obvious in view of
Steffenino, Uhlemann, Kelley, Rieckmann, Tuji, and Kelley.
5. Claims 1-3, 5, 7, 8, 13, 14, 18-21, 24, 25, 27, 29-31, 35, 36, and
39 under 35 U.S.C. § 103(a) as obvious in view of Grillo et al. (US
5,470,581, issued Nov. 28, 1995) ("Grillo"), Uhlemann, Kelley, and
Schweinfurth (US Pub. App. 2005/0147724 Al, published July 7, 2005).
6. Claim 6 under 35 U.S.C. § 103(a) as obvious in view of Grillo,
Uhlemann, Kelley, Schweinfurth, and Rieckmann.
7. Claim 12 under 35 U.S.C. § 103(a) as obvious in view of Grillo,
Uhlemann, Kelley, Schweinfurth, and Gruber.
9. Claim 13 under 35 U.S.C. § 103(a) as obvious in view of Grillo,
Uhlemann, Kelley, Schweinfurth, and Shastry et al. (International Patent
Application Pub. No. WO 2004/080193 Al, published Sept. 23, 2004)
("Shastry").
OBVIOUSNESS IN VIEW OF STEFFENINO
Rejection 1
Claim 1 is directed to a method of imparting pearlescence to a food
product. The method comprises "applying a dispersion to a food product
using confectionary panning without applying a subcoat to the food
product." The dispersion has the following components:
(1) food grade alcohol in an amount from about 50% to about 95% by
weight of the dispersion,
(2) a pearlescent pigment,
(3) a cellulose derivative in an amount sufficient to enhance viscosity
of the dispersion and impart a barrier coat to the food product, and
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Application 11/957,036
( 4) a wax in an amount from about 1 % to about 3 0% by weight of the
dispersion.
Steffenino teaches"film coating systems for use on oral dosage forms
such as compressed tablets and orally-ingestible substrates" (Abstract). The
Examiner found Steffenino describes a dispersion with (2) pigment,
(3) cellulose, and (4) wax. Final Rej. 4--5. The Examiner acknowledged
that Steffenino does not teach the recited wax concentration or alcohol in the
dispersion. Id. at 4. However, citing Kelley and Rieckmann, the Examiner
found that it was known to add wax to coatings, including in the amounts
recited in the claims, to impart gloss and reduce stickiness "allowing the
coated food to flow better." Id. at 5. The Examiner also found that
Steffenino doesn't describe a food grade alcohol in its dispersion, but found
that it would have been obvious to have added one "to attain a moisture
proof barrier to the tablet, a tablet that can dissolve in water, and has attain a
smooth and glossy surface" as taught by Tuji. Id.
Appellants contend that the Examiner used "impermissible hindsight
analysis to reject the claims over the cited references." Appeal Br. 10.
Appellants state that Steffenino "only once generically recite a wax among a
laundry list of possible 'auxiliary' ingredients and nowhere disclose the
claimed amount of wax." Id. Appellants state that Rieckmann discloses an
amount of wax, but "Rieckmann's disclosed coatings are very different in
composition and effect compared to the polymer-based pearlescent film
coatings disclosed by Steffenino." Id. Appellants argue:
Rieckmann indicates that the 0.1-10% included in its sugar
coating compositions served instead to eliminate "stickiness"
upon drying between coating steps. Rieckmann at col. 4 11. 43-
50. Indeed, the dragees produced using Rieckmann's sugar-
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Application 11/957,036
coating composition containing 0.1-10% wax still required
conventional waxing on top of the sugar coating to achieve a
polished finish. Id. at col. 6 11. 16-18; see also id. at col. 2 11. 4-
5.
Reply Br. 4.
Appellants' arguments do not persuade us that the Examiner erred in
rejecting the claims as obvious.
Steffenino teaches that its orally ingestible powder mixture of, inter
alia, pigment and cellulose derivative "may also include supplemental or
auxiliary ingredients typically found in film coatings." Steffenino, col. 4, 11.
25-27. Steffenino teaches that "powders may further include a flow aid
such as talc, fumed silica, bentonite, edible hydrogenated vegetable oils,
hydrogenated vegetable oil and waxes, etc and/or a surfactant such as a
polysorbate, polyethylene oxide, or stearic acid." Id. at col. 4, 11. 35-39
(emphasis added). Steffenino thus provides an explicit reason to use wax as
a "flow aid." Consequently, Steffenino's disclosure of wax is more than just
a "generic" disclosure as asserted by Appellants (Appeal Br. 10), but it is a
specific statement of wax's purpose in Steffenino's powder.
It is true that Steffenino does not disclose how much of the wax to
utilize in the powder as a flow aid. However, in view of Steffenino' s
disclosure that wax may be used as a flow aid in its powder, the skilled
worker would have routinely added such amounts to achieve this stated
purpose. The "law is replete with cases in which the difference between the
claimed invention and the prior art is some range or other variable within the
claims ... in such a situation, the applicant must show that the particular
range is critical, generally by showing that the claimed range achieves
unexpected results relative to the prior art range." In re Woodruff, 919 F.2d
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Application 11/957,036
1575, 1578 (Fed. Cir. 1990). Appellants have not provided evidence that the
claimed amount of "wax in an amount from about 1 % to about 30% by
weight of the dispersion" produces unexpected results, rather than simply
being a product of routine optimization.
To meet the claimed amount of wax, the Examiner also relied upon
Rieckmann's disclosure of providing wax in the amount of 0.01-10% to
prevent stickiness, which overlaps with claimed range of 1 % to about 30%
by weight. Final Rej. 5; Rieckmann, col. 4, 11. 42-50. Appellants
distinguish Rieckmann as being a sugar coating and not a film coating as in
Steffenino (Appeal Br. 10) and also as being present to eliminate
"stickiness" - "the dragees produced using Rieckmann's sugar-coating
composition containing 0 .1-10% wax still required conventional waxing on
top of the sugar coating to achieve a polished finish" (Reply Br. 4).
The Examiner explicitly relied upon Rieckmann for its teaching to
include wax "to reduce the stickiness of the coating in regards to the sticking
of the coated food pieces to each other or to containers [col. 4, lines 42-50]
thereby allowing the coated food to flow better." Final Rej. 5. Appellants
have not provided sufficient evidence that Steffenino's coating is sufficiently
different from Rieckmann's coating that wax would not impart this property.
Appellants characterize Rieckmann' s coating as a sugar coating and
Steffenino' s as a film, but do not explain how these alleged compositional
differences would affect the property of the wax when added to Steffenino' s
coating in the stated amounts.
The Examiner also mentioned the addition of wax to "impart gloss."
Final Rej. 5. Rieckmann also teaches waxing the dragree, but this a different
step from adding wax to prevent sticking. Rieckmann, col. 6, 11. 16-18. We
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Application 11/957,036
do not find it necessary to rely on this disclosure because adding wax as a
flow aid and to reduce stickiness is sufficient to establish that the claimed
amount of wax would have been obvious to one of ordinary skill in the art.
Appellants cited Leo Pharm. v. Rea, 726 F.3d 1346 (Fed. Cir. 2013) to
support their argument that the Examiner should be reversed because of the
numerous choices to be made. Appeal Br. 11; Reply Br. 4--5. However, in
this case, the Examiner identified only two choices to be made: 1) the
amount of wax to include; and 2) the presence of an alcohol. We addressed
above the obviousness of choosing the wax content. The Examiner gave an
explicit rationale for including alcohol. Final Rej. 5. Appellants did not
identify a defect in this reasoning, and we find none. In Leo, there was
evidence that the inventors had recognized and solved a stability problem.
Leo, 726 F.3d at 1353. Appellants, here, describe the advantages of
providing "a multifunctional component that is able to apply a pigment and a
barrier coat, enhance viscosity, and apply a gloss agent, all in a single step"
(Appeal Br. 10). However, the pigment and barrier properties are described
in Steffenino. Steffenino, Abstract; col. 2, 11. 42--4 7. Steffenino also
contains cellulose derivatives (Final Rej. 4) which the Application describes
as imparting a barrier and increasing viscosity. '036 App. i-fi-122, 23. While
Steffenino does not expressly describe a gloss agent, it teaches the presence
of wax and cellulose derivatives, each of which the '036 application
characterizes as a gloss agents. Id. i-f 18. Consequently, the properties relied
upon by Appellants are described or would have been possessed by
Steffenino' s coating by virtue of the presence of the same components.
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Application 11/957,036
Claim 15
Claim 15 is directed to a dispersion with the same components as in
claim 1, although the claim recites specific waxes and the specific cellulose
derivative hydroxypropyl cellulose. The claim also recites that the
dispersion is "ready-to-use for application to the food product." The
Examiner rejected the claim based on Steffenino and the additionally cited
publications as for claim 1. Final Rej. 8. Appellants contend that the
Examiner did not address the "ready-to-use" limitation. Appeal Br. 12.
The Examiner responded that it "was clear from the prior art
references that the coatings were formulated and were used upon being
formulated and it therefore would have been obvious that the formulation of
Steffenino as modified by Rieckmann and Tuji was a formulation that was in
a form that it would have been readily used or applied to a comestible
product." Answer 28. The Examiner's position is supported by a
preponderance of the evidence because Steffenino describes a film coating
composition which is applied to substrates as a spray ("suspension is stirred
at low speed, preferably 350 rpm or less, for 45 minutes and is then ready for
spraying onto substrates") and thus would be ready for use without addition
of further components. Steffenino, col. 7, 11. 6-9.
Claim 39
Claim 39 is directed to method of imparting pearlescence to a food
product. A dispersion is applied in the following amounts:
1) a food grade alcohol in an amount from about 50% to about 95%
by weight of the dispersion,
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Application 11/957,036
2) a pearlescent pigment in an amount from about 1 % to about 30%
by weight of the dispersion,
3) a cellulose derivative in an amount from about 6% to about 14% by
weight of the dispersion, and
4) a wax in an amount from about 2% to about 15% by weight of the
dispersion
The Examiner found that Steffenino teaches overlapping amount of 2)
the pigment and 3) the cellulose derivative. Final Rej. 14. The Examiner
relied on the same teaching as in claim 1 for 4) the wax and 1) alcohol
content. Id. at 14--15.
Appellants contend:
The difference between the claimed range of about 6% to about
14% [of cellulose derivative] and the range of25-70%
disclosed in Steffenino is not trivial and one of ordinary skill in
the art would have had to have some motivation for so
drastically reducing the amount of the very film-forming agent
used to produce Steffenino's disclosed film coatings
Appeal Br. 14.
The Examiner responded that Steffenino is not limited to the range of
about 25% to about 70% by weight: "Jn most embodiments, the amount of
cellulosic polymer included in the powder mixtures of the present invention
is from about 25 to about 70% by weight." Steffenino, col. 3, 11. 5-7
(emphasis added). The Examiner further cited Uhlemann as teaching that
modified celluloses can be selected to achieve the desired viscosity and
barrier properties. Final Rej. 5; Answer 29. Uhlemann describes its
modified celluloses in a shell layer. Uhlemann, Abstract; i-f 13. Uhlemann
specifically teaches amounts of the cellulose derivative within the claimed
amounts.
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Application 11/957,036
Said modified celluloses are prepared in a concentration
between 0% and 25%, preferably between 1 % and 15%, in the
spray solution. Preferably, for the application of coatings,
modified celluloses with a degree of etherification, which give
the spray solution only a low viscosity, are chosen.
Uhlemann if 3 7.
The encapsulated substances according to the present invention
can comprise 1 to 50% by weight, preferably 2 to 20% by
weight, most preferably 5 to 10% by weight, of modified
cellulose. The amount of cellulose in each case determines the
layer thickness and controls the release rates for the substances:
the higher the cellulose content, the slower the release.
Id. if 29.
Appellants contend that the amount of cellulose derivative is not a
result-effective variable and there is no overlap between the claimed amount
and that of Steffenino. Appeal Br. 14. Appellants distinguish Uhlemann in
a footnote in the Reply Brief, stating that "There is no disclosure or
discussion to suggest that the viscosity of a dispersion relates to, varies with,
or depends on the amount of a cellulose derivative in the dispersion." Reply
Br. 6 (fn. 1 ). However, Uhlemann, as discussed above, provides evidence
that utilizing a modified cellulose in an outer layer in amounts which
encompass the claimed amounts was known in the prior art. For this reason,
we conclude that there is a factual basis for selecting amounts outside the
range described in Steffenino.
Summary
For the foregoing reasons, we conclude that the Appellants did not
demonstrate error in the Examiner's obviousness rejection of claims 1, 15,
and 39. We thus affirm the rejection based on Steffenino. Dependent claims
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Application 11/957,036
2, 3, 5-14, 16-25, 27-38, and 40-42 fall with claims 1, 15, and 39 because
separate reasons for their patentability were not provided, and Appellants
relied on the same unpersuasive arguments for Rejections 2--4 that they did
for claim 1. 37 C.F.R. § 41.37(c)(iv).
OBVIOUSNESS BASED ON GRILLO
The Examiner found that Grillo describes applying a dispersion to
food substrates where the dispersion comprises a pigment, cellulose, and a
flow aid which can be wax, corresponding to three of the four components
of claim 1. Final Rej. 18. The Examiner found that Grillo teaches that the
flow aid can be present in an amount of 0% to 20%, meeting the limitation
of "wax in an amount from about 1 % to about 30% by weight of the
dispersion." Id. The Examiner found that Grillo does not describe the
presence of alcohol nor a pigment that is pearlescent as required by claim 1.
Id. at 19. However, the Examiner found that Schweinfurth teaches both
these elements. Id. The Examiner determined it would have been obvious
to one of ordinary skill in the art to apply Schweinfurth's teachings to Grillo
"to modify the pigment of Grillo for the Schweinfurth pigment in order to
impart higher luster and tinting strengthening .... Further it would have
been obvious to substitute the water of Grillo for the ethanol of
Schweinfurth in order to utilize the advantage of coating a wider array of
food items." Id.
Appellants contend that Grillo "makes only a single cursory reference
to wax as a possible flow aid among a laundry list of possible ingredients."
Appeal Br. 16.
Appellants' argument does not persuade that the Examiner erred.
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Application 11/957,036
Grillo expressly teaches that its suspension can comprise a flow aid ("In
some cases, a secondary film former, a detackifier, and/or a flow aid are
added to the mix." Grillo, col. 1, 11. 64---66. ). Grillo teaches a list of seven
possible flow aids:
The flow aid may be [1] silicates, such as [2] talc, [3] fumed
silicas, or [3] bentonite, or [4] lubricating aids such as [5] edible
hydrogenated vegetable oils (stearines), or [6] hydrogenated
vegetable oils and [7] waxes.
Id. at col. 2, 11. 18-21. In view of the small size of the list, the evidence does
not support Appellants contention that the mention of wax is "cursory."
Grillo also teaches that the flow aid is present in an amount of "flow
aid 0% to 20%, with a preferred range of 0% to 10%" (id. at col. 2, 11. 52-
53), which overlaps with the claimed range of "from about 1 % to about 30%
by weight of the dispersion." Thus, unlike the rejection based on Steffenino,
Grillo has an express disclosure of an overlapping amount of wax. It is well-
established that, when there is a range disclosed in the prior art, and the
claimed invention overlaps or falls within that range, there is a presumption
of obviousness. In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003); Iron
Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317, 1322 (Fed. Cir. 2004).
In such situations, "the applicant must show that the particular range is
critical, generally by showing that the claimed range achieves unexpected
results relative to the prior art range." Woodruff, 919 F.2d at 1578.
Appellants has have not provided evidence that the claimed range is critical
or achieves unexpected results.
Claim 39 comprises, inter alia, "a cellulose derivative in an amount
from about 6% to about 14% by weight of the dispersion." The Examiner
found this limitation obvious in view of Grillo's disclosure of"4% to 90%
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by weight of the non-water ingredients of the aqueous coating suspension."
Grillo, col. 2, 11. 28-30; Final Rej. 23.2 Appellants did not identify an error
in the Examiner's determination. Appeal Br. 18.
For the foregoing reasons, we affirm the rejection of claims 1 and 39.
Appellants did not provide separate arguments for the patentability of the
remaining claims and relied on the same arguments for claim 1 in traversing
Rejections 6-9. Appeal Br. 17-19. Consequently, claims 2, 3, 5-8, 12-14,
18-21, 24, 25, 27, 29-31, 35, and 36 fall with claims 1 and 39.
37 C.F.R. § 41.37(c)(iv).
TIME PERIOD
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
2 The Examiner identified the incorrect line numbers where this disclosure is
found in Grillo. We have corrected it here.
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