Givaudan, S.A.

Patent Trials and Appeals Board

Mar 24, 2021

2020003104 (P.T.A.B. Mar. 24, 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.
15/554,172 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