Givaudan, S.A.Download PDFPatent Trials and Appeals BoardMar 24, 20212020003104 (P.T.A.B. Mar. 24, 2021) Copy Citation 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. 15/554,172 08/28/2017 Mary Amanda MCKEE GIV.P30709 7667 23575 7590 03/24/2021 CURATOLO SIDOTI CO., LPA 24500 CENTER RIDGE ROAD, SUITE 280 CLEVELAND, OH 44145 EXAMINER TRAN, LIEN THUY ART UNIT PAPER NUMBER 1793 NOTIFICATION DATE DELIVERY MODE 03/24/2021 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): docket@patentandtm.com pair@patentandtm.com sidoti@patentandtm.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte MARY AMANDA MCKEE, STEPHEN FENIMORE, and KIM PAR TOH ____________ Appeal 2020-003104 Application 15/554,172 Technology Center 1700 ____________ Before BEVERLY A. FRANKLIN, JEFFREY R. SNAY, and JANE E. INGLESE, Administrative Patent Judges. INGLESE, Administrative Patent Judge. DECISION ON APPEAL Appellant1 requests review under 35 U.S.C. § 134(a) of the Examiner’s final rejection of claims 1–20.2 We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the word “Appellant” to refer to the “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies Givaudan S.A. as the real party in interest. Appeal Brief filed December 30, 2019 (“Appeal Br.”), 3. 2 Final Office Action entered November 1, 2019 (“Final Act.”), 1. Appeal 2020-003104 Application 15/554,172 2 CLAIMED SUBJECT MATTER Appellant claims a topical flavor composition. Appeal Br. 5–7. Claim 1, the sole pending independent claim, illustrates the subject matter on appeal, and reads as follows: 1. A topical flavor composition comprising at least one hydrophilic flavor compound and at least one lipophilic flavor compound, the flavor composition being a water-in-oil emulsion having a continuous non-aqueous phase and a disperse aqueous phase, the at least one lipophilic flavor compound dissolved or dispersed in the continuous phase and the at least one hydrophilic flavor compound dissolved or dispersed in the disperse phase. Appeal Br. 24 (Claims Appendix) (emphasis and spacing added). REJECTION The Examiner maintains the rejection of claim 1–20 under 35 U.S.C. § 103 as unpatentable over Ervin et al. (US 2012/0053251 Al, published March 1, 2012) in the Examiner’s Answer entered March 5, 2020 (“Ans.”). FACTUAL FINDINGS AND ANALYSIS Upon consideration of the evidence relied upon in this appeal and each of Appellant’s contentions, we reverse the Examiner’s rejection of claims 1–20 under 35 U.S.C. § 103 for reasons set forth in the Appeal and Reply Briefs, and below. We need address claim 1 only, which requires the recited topical flavor composition to be a water-in-oil emulsion having a continuous non- aqueous phase and a disperse aqueous phase, and requires the composition to comprise at least one lipophilic flavor compound dissolved or dispersed in Appeal 2020-003104 Application 15/554,172 3 the continuous phase, and at least one hydrophilic flavor compound dissolved or dispersed in the disperse phase. The Examiner finds that Ervin discloses fat emulsions comprising water-soluble flavorings and oil-soluble flavorings. Final Act. 2. The Examiner finds that Ervin’s fat emulsions “would encompass both oil-in- water or water-in-oil emulsions,” and the Examiner finds that paragraphs 203 and 206 of Ervin also explicitly disclose both type of emulsions. Ans. 5–7 (citing Ervin ¶¶ 203, 206). The Examiner finds that “Ervin clearly discloses both types of emulsion; therefore, the reference would have readily suggested to one skilled to make a water-in-oil emulsion when desiring such emulsion.” Ans. 7. On the record before us, however, the Examiner does not provide a sufficient factual basis to establish that Ervin discloses or would have suggested a topical flavor composition comprising at least one lipophilic flavor compound dissolved or dispersed in the continuous, non-aqueous phase of a water-in-oil emulsion, and at least one hydrophilic flavor compound dissolved or dispersed in the disperse, aqueous phase of the emulsion, as required by claim 1, for reasons expressed by Appellant (Appeal Br. 10–15) and discussed below. Ervin discloses that “[t]he embodiments [of Ervin’s invention] relate to fat emulsion structures based on both an aqueous and non-aqueous glycerin component as the primary aqueous component in which the fat emulsion can create a wide range of viscosities that mimic fat structures similar to cream, or all the way to hardened fat structures like Trans Fat.” Ervin ¶ 3. Throughout the reference, Ervin repeatedly and consistently refers to Ervin’s inventive emulsions as “fat emulsions.” Ervin ¶¶ 18–22, Appeal 2020-003104 Application 15/554,172 4 27–34, 49–55, 67, 68, 78, 79, 81, 85–87, 149–151, 154–157, 161, 166, 176, 185, 186–192, 194, 197–210. Although Ervin does not explicitly define the term “fat emulsion,” one of ordinary skill in the art nonetheless would have understood that a “fat emulsion” is “[a] combination of liquid, lipid, and an emulsifying system suitable for intravenous use because the lipid has been broken into small droplets that can be suspended in water.” See, e.g., The Free Medical Dictionary (accessed March 17, 2020), https://medical- dictionary.thefreedictionary.com/fat+emulsion. One of ordinary skill in the art, therefore, would have understood that the term “fat emulsions” refers to oil-in-water emulsions. Ervin uses the term “fat emulsions” consistent with the ordinary meaning of this term. For example, Ervin refers to “oil droplet size within fat emulsion systems,” and indicates that “reduction of oil droplet size results in improved fat emulsion stability.” Ervin ¶¶ 206, 207. Ervin also discusses “improving stability in fat emulsions by improvement in adhesiveness and reducing oil droplet size within an emulsion.” Ervin ¶ 206. One of ordinary skill in the art would have understood that Ervin’s reference to “oil droplets” within “fat emulsions” indicates that “fat emulsions” are oil-in-water emulsions, because droplets are necessarily discontinuous, and fat droplets, therefore, form the disperse phase of a fat emulsion (an oil-in-water emulsion), with water forming the continuous phase. As Appellant points out (Appeal Br. 11), Ervin also repeatedly and explicitly describes the fat emulsions of Ervin’s invention as oil-in-water emulsions. For example, Ervin describes producing Ervin’s fat emulsions Appeal 2020-003104 Application 15/554,172 5 by mixing water with a fiber component, thickening components, and a flavor component; adding oil components and an emulsifier to the mixture; mixing the components until homogeneous; heating the mixture while continuously mixing vigorously “to completely emulsify the oil in water composition and create the final fat emulsion composition.” Ervin ¶ 67. Ervin indicates that “[t]he emulsifier agent acts as the binding agent keeping the mixture of the oil in water emulsion together and helps make the final fat composition structure.” Ervin ¶ 89. Ervin further explains that “[w]hile not intending on being bound by any theory of operation, the inventors have found that by creating an oil in water emulsion and adding the additional components, a fat emulsion composition with a fat continuous phase is created that can have varied viscosities based on the amount of water within the composition.” Ervin ¶ 148. Although the Examiner finds that paragraph 203 of Ervin discloses both oil-in-water and water-in-oil emulsions (Ans. 5), the Examiner does not appear to consider the relied-upon disclosure in the context of Ervin’s disclosures as a whole, for reasons that follow. We first point out that Ervin lists the HLB numbers of numerous emulsifiers in paragraphs 90 to 147, and states in paragraph 96 that lecithin has an HLB number of 4, which is significantly lower than the HLB numbers of the vast majority of other emulsifiers listed. Paragraph 203 of Erving then indicates that “[t]he fat emulsions created within the present invention require an emulsifier similar in HLB value to lecithin for many of the viscosities.” This paragraph continues by stating: “Generally, low HLB emulsifiers are used when the fat emulsion structure has a predominant oil phase and a less dominant water phase and this reverses to the necessity for Appeal 2020-003104 Application 15/554,172 6 a higher HLB number emulsifier as the fat emulsion has a predominant water phase and a less dominant oil phase.” Ervin ¶ 203. This sentence in paragraph 203 thus discusses conventional use of emulsifiers in the art, indicating that low HLB emulsifiers are conventionally used with water-in- oil emulsions, while higher number HLB emulsifiers are conventionally used with oil-in-water emulsions. This sentence does not discuss the emulsifiers used in Ervin’s inventive fat emulsions. The following paragraph of Ervin (paragraph 204) goes on to discuss such emulsifiers, stating that: “One of the preferred properties of the fat emulsions described above is that the embodiments can provide pourable fat emulsion structures and medium viscosity spoonable fat structures as well as more viscous scoopable fat structures that use HLB number emulsifiers much lower in the scale, when compared to traditional fat emulsions that have a predominate water phase, and when compared to oil/fat phase.” Ervin ¶ 204. This paragraph thus indicates that Ervin’s inventive fat emulsions utilize emulsifiers having HLB numbers much lower than those of emulsifiers used in “traditional” fat emulsions having a predominate water phase, which one of ordinary skill in the art would have understood to refer to convention oil-in-water emulsions. Taken together, paragraphs 203 and 204 of Ervin thus indicate that conventionally, low HLB emulsifiers are used in water in oil emulsions, and higher HLB emulsifiers are used in oil-in-water emulsions, but, contrary to this convention, Ervin’s inventive fat emulsions use low HLB emulsifiers. These disclosures do not indicate that Ervin’s inventive fat emulsions are water-in-oil emulsions, contrary to the Examiner’s finding. Appeal 2020-003104 Application 15/554,172 7 Similarly, the sentence in paragraph 206 of Ervin relied upon by the Examiner also discusses conventional practice in the art, indicating that: “Protein also can provide stability in oil/fat in water emulsions or water in oil/fat emulsions that can be created in the preferred embodiments.” Paragraph 206 goes on to state that “[p]rotein has the characteristic of improving stability in fat emulsions by improvement in adhesiveness and reducing oil droplet size within an emulsion. The improved adhesiveness and reduction of oil droplet size results in improved fat emulsion stability.” Paragraph 206 further states that: “Animal based proteins and vegetable based proteins can be used within the current fat emulsion invention to improve stability and improve taste, texture and mouth feel. A property of the fat emulsions described herein is that lower levels of protein would be required to create the same improved stability characteristics because the water phase has been stabilized by the dietary fiber and starch, thickening agent components. This is an advantage when compared to other fat emulsion structures because protein can be an expensive component when used to stabilize the structure.” Paragraph 206 thus indicates that protein is known to stabilize both oil-in-water emulsions and water-in-oil emulsions, and paragraph 206 then discusses the known effect of protein on fat emulsions in particular. In so discussing fat emulsions, Ervin refers to “oil droplet size” in “fat emulsions,” which indicates that “fat emulsions” are oil-in-water emulsions, as discussed above. Paragraph 206 then discusses how protein can be used within the fat emulsions of Ervin’s invention. Although the first sentence of paragraph 206 does state that “[p]rotein can provide stability in oil/fat in water emulsions or water in oil/fat Appeal 2020-003104 Application 15/554,172 8 emulsions that can be created in the preferred embodiments,” we find no teaching in the entirety of Ervin’s remaining disclosures that indicates or would have suggested that Ervin’s inventive fat emulsions are water-in-oil emulsions. Significantly, the Examiner also does not identify any such disclosure in Ervin, instead relying only on Ervin’s paragraphs 203 and 206 for such disclosure. Ans. 5–7. The “preferred embodiments” indicated in paragraph 206 of Ervin thus appear to refer to the preferred conventional practice in the art, rather than preferred embodiments of Ervin’s invention, particularly because this sentence is a general statement about protein’s effect on emulsion stability, and when describing Ervin’s invention later in the paragraph, Ervin explicitly refers to “the current fat emulsion invention.” Nonetheless, as discussed above, the Examiner finds that “Ervin clearly discloses” both water-in-oil and oil-in-water emulsions, and, therefore, “would have readily suggested to one skilled to make a water-in- oil emulsion when desiring such emulsion.” Ans. 7. Contrary to the Examiner’s findings, however, one of ordinary skill in the art reasonably would have understood Ervin’s disclosures as a whole to indicate that while water-in-oil and oil-in-water emulsions are both known in the art, Ervin’s inventive fat emulsions are oil-in-water emulsions that advantageously have a wide range of viscosities so as to provide pourable, spoonable, and scoopable fat structures. In re Wesslau, 353 F.2d 238, 241 (CCPA 1965) (“it is impermissible within the framework of section 103 to pick and choose from any one reference only so much of it as will support a given position to the exclusion of other parts necessary to the full appreciation of what such reference fairly suggests to one skilled in the art.”). Appeal 2020-003104 Application 15/554,172 9 The Examiner does not articulate reasoning having rational underpinning that explains why Ervin’s disclosures as a whole—which describe the advantageous properties of fat emulsions explicitly disclosed as being oil-in-water emulsions—would have led one of ordinary skill in the art to produce a water-in-oil emulsion comprising at least one lipophilic flavor compound dissolved or dispersed in the oil phase, and at least one hydrophilic flavor compound dissolved or dispersed in the aqueous phase. Simply because the ordinarily skilled artisan could have produced a water- in-oil emulsion in view of Ervin’s disclosures, in the absence of a reason to actually have made a water-in-oil emulsion comprising at least one lipophilic flavor compound dissolved or dispersed in the oil phase, and at least one hydrophilic flavor compound dissolved or dispersed in the aqueous phase, making such an emulsion would not have been legally obvious, because “obviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of the prior art to arrive at the claimed invention.” Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015); see also In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984) (“The mere fact that the prior art could be so modified would not have made the modification obvious unless the prior art suggested the desirability of the modification.”). On the record before us, the Examiner does not articulate such a reason or motivation. The Examiner, therefore, does not provide a sufficient factual basis to establish that Ervin discloses or would have suggested a topical flavor composition comprising at least one lipophilic flavor compound dissolved or dispersed in the continuous, non-aqueous phase of a water-in-oil emulsion, and at least one hydrophilic flavor compound Appeal 2020-003104 Application 15/554,172 10 dissolved or dispersed in the disperse, aqueous phase of the emulsion, as required by claim 1. We, accordingly, do not sustain the Examiner’s rejection of claim 1, and claims 2–20, which each depend from claim 1, under 35 U.S.C. § 103. CONCLUSION Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–20 103 Ervin 1–20 REVERSED Copy with citationCopy as parenthetical citation