Ex Parte Yan et al

Patent Trial and Appeal Board

May 15, 2018

12522826 (P.T.A.B. May. 15, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/522,826 03/25/2010
23117 7590 05/17/2018
NIXON & V ANDERHYE, PC
901 NORTH GLEBE ROAD, 11 TH FLOOR
ARLINGTON, VA 22203
FIRST NAMED INVENTOR
Cuie Yan
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.
10001-027US 1 3552
EXAMINER
SHOMER, ISAAC
ART UNIT PAPER NUMBER
1612
NOTIFICATION DATE DELIVERY MODE
05/1712018 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 CUIE YAN, WEI ZHANG, YULAI JIN,
LESEK ALEXA DEMONT, and COLIN JAMES BARROW
Appeal2017-006535
Application 12/522,826 1
Technology Center 1600
Before ULRIKE W. JENKS, ELIZABETH A. LA VIER, and
DEVON ZASTROW NEWMAN, Administrative Patent Judges.
LA VIER, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellants seek review of the
Examiner's rejections of claims 1, 8, 24, 35-37, 43, 47, 48, 51, 205, and
206. We have jurisdiction under 35 U.S.C. § 6(b ). For the reasons set forth
below, we REVERSE.
BACKGROUND
The Specification describes microcapsules with shells made from
materials other than animal byproducts. Spec. 2: 18-19. "[T]he shell
1 Appellants state the real party in interest is DSM Nutritional Products AG.
Br. 3.
Appeal2017-006535
Application 12/522,826
materials can be complex coacervates formed from two or more oppositely
charged polymers." Id. 7:16-17.
Claim 1 is illustrative:
A microcapsule, comprising: an agglomeration of primary
microcapsules and a loading substance, each individual primary
microcapsule having a primary shell, wherein the loading
substance is encapsulated by the primary shell, wherein the
agglomeration is encapsulated by an outer shell, and wherein
the primary shell and the outer shell both comprise a complex
coacervate of a first protein and a second polymer,
wherein the first protein is pea protein or soy protein; and the
second polymer is selected from the group consisting of agar,
gellan gum, gum arabic, casein, cereal prolamine, pectin,
alginate, carrageenan, xanthan gum, canola protein, dilutan
gum, locus bean gum, and welan gum; and
wherein the primary and outer shells are thermally crosslinked.
Br. 12 (Claims Appendix).
REJECTIONS MAINTAINED ON APPEAL
1. Claims 1, 35-37, 43, 47, 48, 51, 205, and 206 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Yan2 and Burgess. 3 Ans.
2.
2. Claim 8 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Yan, Burgess, and Chourpa. 4 Ans. 5---6.
2 Yan et al., US 2005/0067726 Al, published Mar. 31, 2005.
3 Diane J. Burgess, Complex Coacervation: Microcapsule Formation, in
MACROMOLECULAR COMPLEXES IN CHEMISTRY & BIOLOGY 285 (Dubin/Bock/
Davis/Schulz/Thies eds., 1994).
4 Chourpa et al., Conformational Modifications of a Gliadin and Globulin
Proteins upon Complex Coacervates Formation with Gum Arabic as Studied
by Raman Microspectroscopy, 7 BIOMACROMOLECULES 2616 (2006).
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Application 12/522,826
3. Claim 24 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Yan, Burgess, Chourpa, and Mellema. 5 Ans. 7.
DISCUSSION
As to illustrative claim 1, the Examiner finds that Yan teaches multi-
shelled microcapsules in which a loading substance can be encapsulated, and
for which the shells can comprise complex coacervates formed from a
positively charged component "A" and a negatively charged component
"B." Final Action 3--4 (citing Yan Fig. 2, i-fi-15, 32). Further, "[v]arious
proteins and polysaccharides that may be used for the 'A' and 'B'
components are taught as of Yan, paragraphs 0032 and 0033. Yan teaches
that the 'B' component may be gum Arabic, alginate, carrageenan, pectin, or
carboxymethylcellulose, as of Yan, paragraph 0033." Id. at 4. 6 Because
Yan describes crosslinking using chemical agents rather than thermal
crosslinking, the Examiner turns to Burgess, which "teaches that coacervate
microcapsules can be stabilized using crosslinking agents or heat." Id. at 4--
5 (citing Burgess 293). The Examiner concludes that it would have been a
"simple substitution" to use heat (as taught in Burgess) to crosslink the
complex coacervates of Yan. Id. at 5.
Appellants argue, inter alia, that the Examiner's substitution analysis
amounts to an "oversimplification" (Br. 8), pointing to their Specification as
evidence of the variables involved in making microcapsules and the
5 Mellema, WO 2004/054702 Al, published July 1, 2004.
6 Although not cited by the Examiner in the Answer or Final Action, claim 6
of Yan expressly includes soy proteins among a list of polymer components
for the complex coacervate of the claimed microcapsules.
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Application 12/522,826
differences between soy and vegetable proteins as compared to gelatin 7 (see
id. (citing Spec. 23:19--32)). Appellants further note that, far from teaching
heating, Yan instead describes cooling its protein mixture to allow the outer
shell(s) to form. Id. at 8 (citing Yan i-fi-166-68). The Examiner does not
dispute that Yan teaches cooling, but instead responds that Yan "also teaches
heating to a temperature above room temperature." Ans. 11 (discussing Yan
i165).
Appellants have the better position. The Examiner is correct that Yan
teaches both heating and cooling, but the heating in Yan (preferably to about
50° C.) represents an initial, pre-mixing condition. See Yan i165. After
mixing to form the microcapsules (and possible addition of more polymer
components) (id. i1 66), the temperature is lowered in a controlled fashion
(preferably to about 5° C.) to allow for outer shell formation. Id. i167. Only
"[a]t this stage" does Yan teach that a (chemical) cross-linker may be added
"to further increase the rigidity of the microcapsules." Id. i168. The
Examiner has not persuaded us that Yan's initial heating of its aqueous
solution has any bearing on whether the end products of that process are
amenable to thermal crosslinking. To the contrary, as Yan recommends the
use of cooling to near-freezing temperatures to facilitate outer shell
formation, we find the ordinarily skilled artisan would have believed it
counter-intuitive to then tum up the heat. Or, as Appellants put it, "one of
ordinary skill could not have reasonably predicted exposing the complex
coacervate to temperatures sufficient to crosslink the polymers would not
7 Both Yan and Burgess contemplate crosslinking complex coacervates
comprising gelatin. See Yan i-fi-132-36; Burgess 293.
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Application 12/522,826
disrupt the non-covalent interactions that make up the complex coacervate,
and thus disrupt the microcapsule structure itself." Br. 8-9.
We are not persuaded that Burgess fills this gap. As Appellants argue
(see Br. 9) and the Examiner acknowledges (see Final Action 5), Burgess
takes a negative view of both chemical and thermal crosslinking, as both
"may be harmful to the encapsulant materials, such as thermo- and
chemically labile drugs and live cells" (Burgess 293). Although the
Examiner is correct (see Final Action 6) that "[a] known or obvious
composition does not become patentable simply because it has been
described as somewhat inferior to some other product for the same use," In
re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994), the problem here is not just
with Burgess, but with Yan as well.
We find that the preponderance of the evidence, especially in light of
the above-highlighted teachings of Yan and Burgess, does not favor a
finding of obviousness. Accordingly, we cannot sustain any of the
Examiner's rejections, which all rely similarly on Yan and Burgess.
CONCLUSION
The rejections of claims 1, 8, 24, 35-37, 43, 47, 48, 51, 205, and 206
under 35 U.S.C. § 103(a) are reversed.
REVERSED
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