GIVAUDAN SA

Patent Trials and Appeals Board

Sep 2, 2021

2020006064 (P.T.A.B. Sep. 2, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
15/515,857 03/30/2017 Emmanuel AUSSANT 102790-418 1024
27389 7590 09/02/2021
PARFOMAK, ANDREW N.
NORRIS MCLAUGHLIN, PA
7 Times Square, 21st Floor
NEW YORK, NY 10036-6524
EXAMINER
PIPIC, ALMA
ART UNIT PAPER NUMBER
1617
NOTIFICATION DATE DELIVERY MODE
09/02/2021 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):
anparfomak@norris-law.com
jkelly@norris-law.com
nmanfredi@norris-law.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EMMANUEL AUSSANT, ADDI FADEL,
IAN MICHAEL HARRISON, CHRISTIAN QUELLET,
EWELINA BURAKOWSKA-MEISE, WOLFGANG DENUELL, and
THOMAS SOLTYS

Appeal 2020-006064
Application 15/515,857
Technology Center 1600
Before TAWEN CHANG, TIMOTHY G. MAJORS, and
JAMIE T. WISZ, Administrative Patent Judges.

WISZ, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 3, 5–8, 11–15, 17, and 18. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies Givaudan, SA as the real party in
interest. Appeal Br. 1.
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CLAIMED SUBJECT MATTER
The Specification describes “encapsulated perfume compositions,
comprising one or more core-shell capsules, wherein the core contains a
perfume and the shell contains a polyurea resin (‘polyurea capsules’).”
Spec. 1. According to the Specification, “by employing
hydroxyethylcellulose as a dispersing aid, it was possible to form, in a
straightforward manner, an encapsulated perfume composition, in the form
of a slurry in which polyurea capsules were stably dispersed, and which
possessed an acceptable viscosity.” Id. at 2.
Claim 1, the only independent claim, is illustrative of the claimed
subject matter and is reproduced below:
1. An encapsulated perfume composition in the form of an
aqueous slurry comprising one or more core-shell capsules,
each having a core and a shell, dispersed in an aqueous
dispersing medium, wherein the core contains a perfume and
the shell contains a polyurea resin, and wherein the one or
more core-shell capsules are in the form of a suspension,
which upon visual inspection, shows no sign of phase
separation such as creaming, settling, precipitation or
coagulation when stored for a period of 2 weeks at a
temperature of 50°C, the suspension having a viscosity of up
to 3000 centipoise, when measured on a rheometer using
rotating disks at a shear rate of 21 s-1 at a temperature of
25°C, and wherein the aqueous dispersing medium contains
a hydroxyethyl cellulose dispersing aid which is present in
an amount of 0.05%wt. to 1.0%wt. based on the total weight
of the slurry.
Appeal Br. 24 (Claims App.).
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REJECTIONS
The Examiner rejected claim 18 under 35 U.S.C. § 112 as failing to
comply with the written description requirement.
The Examiner rejected claims 1, 3, 5–8, 11–15, 17, and 18 under 35
U.S.C. § 103 as being unpatentable over Lei2 and Dihora.3
ISSUES AND ANALYSIS
Rejection of claim 18 under 35 U.S.C. § 112(a)
The Examiner rejected claim 18 as failing to comply with the written
description requirement. Final Act. 3. Claim 18 recites the composition of
claim 1, wherein the composition excludes solvents in the aqueous
dispersing medium. Appeal Br. 26. The Examiner finds that the
Specification does not describe embodiments where solvent is present or
absent from the aqueous dispersing phase. Final Act. 3.
Appellant cites to page 4, lines 14–15 of the Specification which
state that, “[t]he hydrophobic phase may also include suitable solvents,
although, in a preferred aspect of the present invention, no solvents are
employed,” for support. Id. However, the Examiner finds that this sentence
does not provide sufficient support for a limitation that requires excluding
solvents from the aqueous dispersing medium. Id. The Examiner also finds
that the application supports excluding solvents from the hydrophobic phase
and the core of the capsule but does not describe embodiments where
solvent is present or absent from the aqueous dispersing phase. Id.

2 Lei et al., US 2011/0071064 A1, published Mar. 24, 2011 (“Lei”)
3 Dihora et al., US 2011/0268778 A1, published Nov. 3, 2011 (“Dihora”).
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Appellant does not respond to this rejection in the Appeal Brief. See Appeal
Br. 1–23.
Appellant has not provided any express argument responding to the
Examiner’s rejection and, on this record, has not therefore demonstrated
error in the Examiner’s finding that the Specification lacks an adequate
written description for the subject matter of claim 18. Therefore, we affirm
the Examiner’s rejection of claim 18 as lacking written description support.
Rejection of claims 1, 3, 5–8, 11–15, 17, and 18 under 35 U.S.C. § 103 as
being unpatentable over Lei and Dihora
The Examiner finds that Lei teaches products for washing and
cleaning surfaces that comprise micro-encapsulated benefit agents including
polyurea microcapsules. Final Act. 4 (citing Lei, Abstract). The Examiner
also finds that Lei teaches preparation of polyurea capsules of encapsulated
fragrance in example 4 and the resulting composition is described as a slurry.
Id. (citing Lei ¶¶ 128, 178). The Examiner further finds that example 17
describes methods of making slurry compositions comprising dispersants
and capsule slurries of example 4 and that these compositions were
measured to have viscosities of 986 cp and 17 cp. Id. (citing Lei ¶¶ 155–
157). The Examiner finds that Lei teaches incorporating carboxymethyl
cellulose as a suspending agent in a slurry. Id. at 5 (citing Lei ¶¶ 31, 32).
The Examiner acknowledges that Lei does not teach a hydroxyethyl
cellulose dispersing aid but finds that this limitation is suggested by Dihora.
Id. at 5. The Examiner finds that Dihora teaches compositions comprising
encapsulated benefit agents such as perfumes, wherein the compositions
comprise suspending agents at a concentration effective for suspending
water-insoluble materials at concentration ranges from about 0.1 to 10%. Id.
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(citing Dihora, Abstract, ¶¶ 8, 56, 176). The Examiner also finds that Dihora
discloses suspending agents including hydroxyethyl cellulose,
carboxymethyl cellulose, and polyvinyl alcohol. Id. (citing Dihora ¶ 177).
According to the Examiner, it would have been obvious to a person of
ordinary skill in the art “to have formulated a stable slurry by combining
Lei’s capsules from example 4 with the suspending agent carboxymethyl
cellulose in a concentration of 0.1 to 5%, with a reasonable expectation of
success because Lei teaches formulating a slurry with carboxymethyl
cellulose as a suspending agent in a concentration of 0.1 to 5%.” Id. at 5
(citing Lei ¶¶ 31, 32). The Examiner further finds that a person of ordinary
skill in the art “would have been motivated to use a suspending agent [in
Lei’s compositions] because the purpose of Lei is to form a stable slurry
composition[,] and [Lei] teaches that suspending agents are useful for
forming a stable slurry composition.” Id. The Examiner concludes that “[i]t
would have been further obvious to have modified Lei by replacing
carboxymethyl cellulose with hydroxyethyl cellulose, with a reasonable
expectation of success in obtaining a microcapsule suspension because it
was known from Dihora that carboxymethyl cellulose and hydroxyethyl
cellulose are equally suitable as suspending agents in aqueous suspensions
of microcapsules.” Id.
Regarding the viscosity limitations, the Examiner finds that the
compositions of Example 17 are described as having viscosities of 17 cp and
986 cp. Id. at 6. According to the Examiner, it would have been obvious to
an ordinarily skilled artisan “to have formulated [the] composition in
example 4 as a flowable slurry of capsules, with a reasonable expectation of
success because Lei teaches that a slurry of capsules has to be flowable in
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order to be usable and describes 17 cp and 986 cp as suitable viscosities.”
Id.
The Examiner also finds that, while Lei does not describe the effect of
storage conditions of 2 weeks at a temperature of 50ºC on the capsule
slurries, “since the prior art slurries are structurally identical to the claimed
slurries, it would have been obvious to a person of ordinary skill in the art to
conclude that the prior art slurries would have had the same properties as
presently claimed slurries when placed under identical conditions.” Id. at 7.
Appellant argues that example 4 of Lei does not disclose the claimed
stability properties of the capsule slurry after 2 weeks at 50ºC. Appeal
Br. 11. According to Appellant, Lei is “completely silent” on how to achieve
these stability requirements and the Examiner is impermissibly picking and
choosing amongst Lei’s teachings. Id. Appellant also argues that Lei does
not disclose hydroxyethyl cellulose and does not include a reasonable
suggestion to use carboxyethyl cellulose absent an impermissible hindsight
reconstruction. Id. at 14.
With regard to viscosity, Appellant argues that Lei requires “a
‘[synergistic]’ mixture of two dispersants, specifically a polyvinyl alcohol
(PVA, Mowiol 3-83) with an anionic dispersant Morwet D-425 (a
naphthalene sulfate)” and that both “were shown to be necessary to form a
stable free-flowing slurry with very low viscosity.” Appeal Br. 15.
Appellant contends that a “skilled artisan, seeking to provide stable, low
viscosity slurries would not ‘break’ the synergistic [combination] of a
polyvinyl alcohol (PVA, Mowiol 3-83) with an anionic dispersant Morwet
D-425 (a naphthalene sulfate) as such would be expected to defeat the
success of Lei's compositions.” Id. Appellant concludes that, “no
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consideration of Lei even with ancillary consideration of Dihora, motivate a
skilled artisan to abandon Lei’s teaching of a necessary and synergistic
composition of dispersants and to seek a different material, with any
[reasonable] expectation of success.” Id. at 17.
Appellant further contends that “nothing in Dihora suggests the
selection of hydroxyethyl cellulose for the production of [a] stable
suspension of microcapsules without leading to an undesired increase in
viscosity” and that Dihora also does not discuss polyurea containing shells
of microencapsulated materials. Id. at 17–18. According to Appellant, the
skilled artisan would need to engage in undue experimentation to optimize
any formulation that possessed the claimed properties. Id. at 18.
Appellant also asserts that their Specification “demonstrate[s] the
surprising nature of using hydroxyethyl cellulose in forming aqueous slurries
containing encapsulated materials wherein the encapsulating shell includes a
polyurea resin.” Id. at 19–20. According to Appellant, the properties of the
claimed aqueous slurries were unexpected as shown in Table 8. Id. at 20–21.
According to Appellant, “[s]urprisingly, only with hydroxyethyl cellulose
(entry B) - but not with any of the modified starches or acrylate copolymers
(entries A, C, G and G) - was phase separation avoided, to the degree recited
in the claims.” Id. at 22.
We find that the Examiner has the better position. Lei discloses
compositions including micro-encapsulated benefit agents that may include
perfumes. Lei, Abstract, ¶ 50. Lei also discloses that a dispersant can be
used to make the formulation stable. Id. ¶ 27 (“The emulsifier or dispersant
can be used alone and together in the invention as long as stable capsule
formulation is obtained.”). Lei discloses the use of a “wide range of
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dispersant[s]” including carboxymethyl cellulose and also discloses that the
dispersant concentration can range from 0.1% to 5%, preferably from 0.25%
to 2%. Id. ¶¶ 31, 32. Example 4 of Lei discloses the preparation of a
polyurea capsule with a full fragrance and describes the composition as a
“capsule slurry.” Id. ¶¶ 127, 128. Lei also teaches that “[o]ne of the key
physical characteristic[s] of a suspension such as a capsule slurry is its
viscosity. For the capsule slurry to be usable, it has to be flowable.” Id.
¶ 155. Example 17 of Lei discloses the generation of capsule slurries with
dispersants using the procedures of Example 4, wherein such slurries had
viscosities of 986 cp and 17 cp. Id. ¶¶ 156–157.
Dihora discloses compositions comprising encapsulated benefit agents
for perfume delivery. Dihora, Abstract. Dihora also discloses that its
compositions comprise suspending agents at a concentration effective for
suspending water-insoluble materials, in a range from about 0.1 to 10%. Id.
¶ 176. Dihora discloses use of suspending agents such as carboxymethyl
cellulose, hydroxyethyl cellulose, and polyvinyl alcohol. Id. ¶ 177.
We agree with the Examiner that it would have been obvious to a
person of ordinary skill at the time of the invention to have formulated a
stable slurry using the methods described in Examples 4 and 17 of Lei along
with a dispersant/suspending agent such as carboxymethyl cellulose in a
concentration of 0.1–5%, preferably 0.25–2%. See Lei ¶¶ 31, 32, 127–128,
155–157. It also would have been obvious to substitute the carboxymethyl
cellulose of Lei with the hydroxyethyl cellulose disclosed in Dihora with a
reasonable expectation of success because carboxymethyl cellulose and
hydroxyethyl cellulose were both described as suitable suspending agents in
Dihora. Dihora ¶¶ 176–177. It is obvious to those skilled in the art to
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substitute one known equivalent for another. See In re Omeprazole Patent
Litigation, 483 F.3d 1364, 1374 (Fed. Cir. 2007) (“[T]his court finds no . . .
error in [the] conclusion that it would have been obvious to one skilled in the
art to substitute one ARC [alkaline reactive compound] for another.”).
Appellant argues that Lei does not disclose the use of hydroxyethyl
cellulose; however, this disclosure is supplied by Dihora. Appellant also
argues that Dihora does not discuss polyurea containing shells of
microencapsulated materials; however, this disclosure is supplied by Lei.
Appeal Br. 13, 18, 19. “Non-obviousness cannot be established by attacking
references individually where the rejection is based upon the teachings of a
combination of references. [The reference] must be read, not in isolation,
but for what it fairly teaches in combination with the prior art as a
whole.” In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Based on the disclosures of Lei and Dihora discussed above, we are
not persuaded that the Examiner used impermissible hindsight. “Any
judgment on obviousness is in a sense necessarily a reconstruction based
upon hindsight reasoning, but so long as it takes into account only
knowledge which was within the level of ordinary skill at the time the
claimed invention was made and does not include knowledge gleaned only
from applicant’s disclosure, such a reconstruction is proper.” In re
McLaughlin, 443 F.2d 1392, 1395, 170 USPQ 209, 212 (CCPA 1971). Lei
discloses the formulation of stable polyurea capsule slurries and the use of
dispersants such as carboxymethyl cellulose and polyvinyl alcohol to
produce desired viscosities. Dihora also discloses encapsulated benefit
agents and the use of dispersants/suspending agents including hyrdroxyethyl
cellulose, carboxymethyl cellulose, and polyvinyl alcohol. Here, the use of
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hydroxyethyl cellulose as a dispersant in the compositions of Lei is no
“more than the predictable use of prior art elements according to their
established functions.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417
(2007).
Appellant also argues that Lei does not disclose the claimed stability
properties after 2 weeks at 50ºC. Appeal Br. 11. However, we agree with
the Examiner that, because the properties of Lei’s composition, in
combination with the use of hydroxyethyl cellulose disclosed in Dihora,
includes all the structural claim limitations, it is presumed to have the same
claimed stability properties. “From the standpoint of patent law, a
compound and all of its properties are inseparable; they are one and the same
thing.” In re Papesch, 315 F.2d 381, 391 (CCPA 1963). After a prima facie
case is made out, the burden shifts to the applicant to show a difference
between the prior art compositions and the claimed compositions. The
Patent Office lacks the resources to do comparisons. In re Best, 562 F.2d
1252, 1255. Appellant has not provided any reasons why the compositions
suggested by the prior art would not possess the claimed stability properties,
but merely argues that such properties are not explicitly disclosed.
Appellant also appears to argue that Lei teaches away from using
anything other than the “synergistic” combination of polyvinyl alcohol
(PVA, Mowiol 3–83) with an anionic dispersant Morwet D–425 (a
naphthalene sulfate) because such combination is taught to be effective in
Example 17 of Lei. See Appeal Br. 15. We disagree. While Example 17 of
Lei demonstrates a synergistic effect when combining two different
polymeric dispersants (Morwet D–425 and Mowiol 3–83), the disclosure of
Lei is not limited to using just these two dispersants. In fact, Lei teaches that
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a “wide range” of dispersants can be used, including carboxymethyl
cellulose (which, as discussed above, could be substituted with hydroxyethyl
cellulose based on the teachings of Dihora). A teaching away requires a
reference to actually criticize, discredit, or otherwise discourage the claimed
solution. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (“The prior
art’s mere disclosure of more than one alternative does not constitute a
teaching away from any of these alternatives because such disclosure does
not criticize, discredit, or otherwise discourage the solution claimed.”).
With respect to Appellant’s asserted evidence of unexpected results,
we find that Appellant has not compared their results to the closest prior art.
“To be particularly probative, evidence of unexpected results must establish
that there is a difference between the results obtained and those of the closest
prior art, and that the difference would not have been expected by one of
ordinary skill in the art at the time of the invention.” Bristol-Myers Squibb
Co. v. Teva Pharm. USA, Inc., 752 F.3d 967, 977 (Fed. Cir. 2014). In this
case, Lei teaches polyurea capsules with fragrance including the dispersants
0.5% Morwet D–425 (a naphthalene sulfonate) and Mowiol 3–83 (a
polyvinyl alcohol). Lei ¶¶ 127–128, 155–157. Appellant has not shown
how their results compare to the compositions disclosed in Lei, which were
shown to have viscosities falling within the claimed range of less than 3000
centipoise.
We also agree with the Examiner that the data presented by Appellant
is not commensurate in scope with the claims. “The evidence presented to
rebut a prima facie case of obviousness must be commensurate in scope with
the claims to which it pertains.” In re Dill, 604 F.2d 1356, 1361 (CCPA
1979). First, the slurries in Table 8 vary by type of dispersant used as well
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as by wt % of dispersant. Spec. 35. Thus, it is not clear whether the
resulting viscosity is based on the type of dispersant or on the concentration
of such dispersant. Further, claim 1 recites that the dispersant is present in
an amount from 0.05 to 1.0% wt. Here, Appellant presents data to show
unexpected results for only a single wt % (0.4 wt %). Id. This one data
point is not enough to show that any alleged unexpected results would occur
for other compositions falling within the scope of the claims.
Therefore, for the reasons above, we affirm the Examiner’s rejection
of claim 1 as being obvious over Lei and Dihora. Claims 3, 5–8, 11–15, 17,
and 18 are not argued separately apart from the independent claim, and,
therefore, fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv).
CONCLUSION
For the reasons described herein and those already of record, we
affirm the Examiner’s rejection of claims 1, 3, 5–8, 11–15, 17, and 18.

DECISION SUMMARY
In summary:

Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
18 112(a) Written Description 18
1, 3, 5–8,
11–15, 17,
18
103 Lei, Dihora 1, 3, 5–8,
11–15, 17,
18

Overall
Outcome
1, 3, 5–8,
11–15, 17,
18

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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED