GIVAUDAN SA et al.

Patent Trials and Appeals Board

Sep 7, 2021

2020006441 (P.T.A.B. Sep. 7, 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.
16/149,759 10/02/2018 Stephane BONE 102790-443 8532
27389 7590 09/07/2021
PARFOMAK, ANDREW N.
NORRIS MCLAUGHLIN, PA
7 Times Square, 21st Floor
NEW YORK, NY 10036-6524
EXAMINER
LOVE, TREVOR M
ART UNIT PAPER NUMBER
1611
NOTIFICATION DATE DELIVERY MODE
09/07/2021 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 STEPHANE BONE, CÉDRIC GEFFROY,
SANDRINE LE TIRILLY, PATRICK PERRIN, CLAIRE VAUTRIN,
CÈCILE MONTEUX, and NADÉGE PANTOUSTIER
____________

Appeal 2020-006441
Application 16/149,759
Technology Center 1600
____________

Before DONALD E. ADAMS, JENNIFER MEYER CHAGNON, and
RACHEL H. TOWNSEND, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from Examiner’s
decision to reject claims 14, 16–18, 21, 22, and 24 (Final Act.2 2).3 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 the real party in interest as “Givuadan
SA (Vernier, CH), L’Universite Pierre et Marie Curie (Paris, FR) and Le
Centre National de la Recherche Scientifique (Paris, FR)” (Appellant’s April
21, 2020, Appeal Brief (Appeal Br.) 2).
2 Examiner’s April 17, 2020, Final Office Action.
3 Claims 19 and 20 stand withdrawn from consideration (Final Act. 2).
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STATEMENT OF THE CASE
Appellant’s disclosure relates to the “encapsulation of beneficial
agents, in particular fragrances” (Spec. 1). Appellant’s independent claim
14 is reproduced below:
14. A method of encapsulation of a fragrance composition,
a) dispersing the fragrance composition as liquid droplets
in an external phase comprising an aqueous medium having a
pH of less than about 6 to form a dispersed phase of the
fragrance composition droplets; and
b) causing the formation around the liquid droplets of a
sequential series of at least two layers,
wherein the first layer is a poly(methacrylic acid)
polymer having a molecular weight of from 1,000 to
10,000,000 Daltons, and the second layer is a poly(pyrrolidone)
polymer, and wherein additional layers are layers alternating
layers of a poly( methacrylic acid) polymer and a
poly(pyrrolidone) polymer.
(Appeal Br. 24.)
Claims 14, 16–18, 21, 22, and 24 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Kvitnitsky4 and
Sukhishvili.5
ISSUE
Does the preponderance of evidence relied upon by Examiner support
a conclusion of obviousness?
FACTUAL FINDINGS (FF)
FF 1. Kvitnitsky:
[R]elates to methods of microencapsulation of active
ingredients such as agents having biological activity, odor

4 Kvitnitsky et al., US 2006/0051425 A1, published Mar. 9, 2006.
5 Sukhishvili et al., US 2005/0163714 A1, published July 28, 2005.
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agents and color agents for topical applications. The
microcapsules obtained according to the provided methods are
single-layer or multi-layer, preferably double-layer,
microcapsules, that maintain the original activity of the
encapsulated agents and enable controlled release of the active
ingredient only when applied topically.
(Kvitnitsky ¶ 2; see id. ¶ 110 (Kvitnitsky discloses that its active ingredient
can be a fragrance); Final Act. 3.)
FF 2. Kvitnitsky discloses that
fragrances, perfumes and other volatile materials [typically]
suffer from instability under specific conditions such as pH of
the formulation or they crossreact with other ingredients of the
formulation. For these reasons, it is necessary to encapsulate
this type of ingredients. The microcapsules of the invention
containing a fragrance have been developed specifically in
order to solve the above-mentioned problems.
(Kvitnitsky ¶ 111; see Final Act. 3.)
FF 3. Examiner finds that Kvitnitsky’s “microcapsules are formed by
creating an oil phase with the active . . . [agent], then combining said oil
phase with an aqueous phase at a pH of about 3 . . . . The aqueous phase of
Kvitnitsky can further comprise a stabilizer such as sodium lauryl sulfate”
(Final Act. 3 (citing Kvitnitsky ¶¶ 143–147)).
FF 4. Examiner finds that Kvitnitsky “does not directly indicate that
[its] . . . core is coated with both . . . poly(methacrylic acid) and
poly(pyrrolidone),” as required by Appellant’s claimed invention (Final
Act. 3).
FF 5. Sukhishvili discloses
Micro-, and nano-scale capsules comprising neutral
(uncharged) polymeric layers, layers associated by hydrogen
bonding and methods for making such capsules. The capsules
of the invention are layered upon a core particle using a layer-
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by layer-technique. The capsule walls of the capsules of the
invention give a tailored response to external stimuli.
(Sukhishvili, Abstr.; see also id. ¶ 2.)
FF 6. Sukhishvili discloses that its capsules
are prepared as follows. First, a solution of a first uncharged
polymer to be adsorbed is contacted with the core particle’s
surface, and bonding of the polymer with the core particle’s
surface forms a first polymer layer. Next, a solution of the
second polymer, of different identity than the first polymer, is
contacted with the first layer, forming hydrogen bonds between
the polymer layers, and forming a layered film. The process of
contacting the surface with a solution of the first polymer and
then a solution of the second polymer can be repeated until a
film, of the desired thickness and number of layers, is formed
around the core particle thereby forming a capsule of the
invention. The surface of the growing capsules can be rinsed
between applications to remove excess or non-bonded polymer.
If more than two polymers are used to form the capsule, a
solution of the additional polymers can be contacted with the
growing film at any point of the process.
(Sukhishvili ¶ 40; see also id. ¶¶ 55–56, 82 (Sukhishvili discloses that its
core particles may be perfumes); Final Act. 3–4 (Examiner finds that
Sukhishvili discloses “a coating composition onto a core, wherein the core
can comprise fragrances/perfumes”).)
FF 7. Examiner finds that Sukhishvili’s “coating comprising alternating
layers of poly(methacrylic acid) and poly(pyrrolidone) . . ., wherein the
methacrylic acid has a MW of 150,000” (Final Act. 4 (citing Sukhishvili
¶¶ 40, 100)).
ANALYSIS
Based on the combination of Kvitnitsky and Sukhishvili, Examiner
concludes that, at the time Appellant’s invention was made, it would have
been prima facie obvious “to utilize the coating of Sukhishvili on the core of
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Kvitnitsky,” because “Sukhishvili teaches that by using . . . [its] layer by
layer technique on a core the coating allows for the tailored response of the
composition to external stimuli” (Final Act. 4; see FF 1–7).
Kvitnitsky, Sukhishvili, and Appellant’s claimed invention are all
related to the encapsulation of fragrance compositions (see Ans.6 3–4).
Stated differently, Kvitnitsky and Sukhishvili are not only in the same field
of endeavor as Appellant, they are reasonably pertinent to the particular
problem which Appellant was involved. Thus, we are not persuaded by
Appellant’s intimation that Kvitnitsky and Sukhishvili are non-analogous art
(see Appeal Br. 7 (Appellant “herein argues that a skilled artisan would, ab
initio, not have considered Kvitnitsky due to the fundamentally different
nature of the process practiced by Kvitnitsky and also argues, that the
combination of Kvitnitsky with Suk[h]ishvili would never have been even
made.”)). See In re Clay, 966 F.2d 656, 658–59 (Fed. Cir. 1992)
(Discussing the criteria for determining whether prior art is analogous).
Kvitnitsky’s “microcapsules are formed by creating an oil phase with
the active . . . [agent], then combining said oil phase with an aqueous phase
at a pH of about 3” (FF 3). Stated differently, Kvitnitsky disperses a
fragrance composition as liquid droplets in an external phase comprising an
aqueous medium having a pH of less than about 6 to form a dispersed phase
of the fragrance composition droplets, as is required by Appellant’s claimed
invention. Therefore, we are not persuaded by Appellant’s contentions
regarding Kvitnitsky’s use of an organic solvent, which is not excluded from
Appellant’s claimed invention (see Appeal Br. 7–10).

6 Examiner’s June 2, 2020, Answer.
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Because Appellant and Kvitnitsky both disperse a fragrance
composition as liquid droplets in an external phase comprising an aqueous
medium having a pH of less than about 6, we are not persuaded by
Appellant’s contention that, in contrast to its claimed invention, Kvitnitsky’s
“active ingredient is not dispersed in an aqueous medium with a pH of 6
maximum” (id. at 9; see also id. at 18).
Appellant’s counsel contends that
in order to be operative Kvitnitsky also needs very particular
polymer combinations to make this process work. Thus . . . the
absence of PVP is not inadvertent in Kvitnisky’s recitation of
useful polymeric materials for forming his “shell” is quite
deliberate - a skilled artisan considered Kvitnitsky’s
specification would invariably understand that if it worked in
the Kvitnitsky process, it would certainly would have been
included in Kvitnitsky’s recitation of useful polymers. But this
also illustrates that it is not an obvious ‘cross-pollination’ from
Sukhishvili, which, again, is directed to an entirely different
process.
(Appeal Br. 10–11; see id. at 11–12; id. at 19.) We are not persuaded by the
unsupported contentions of Appellant’s counsel or the conclusions
Appellant’s counsel drew from these unsupported contentions (see id. at 12
(Appellant’s counsel contends that “[t]hus, any skilled artisan considering
Kvitni[t]sky would not combine it with the supposed teachings of the
Sukhishvili reference”)). See In re Pearson, 494 F.2d 1399, 1405 (CCPA
1974) (“Attorney’s argument in a brief cannot take the place of evidence.”).
Through the repetitive use of the term “comprising,” Appellant’s
claimed invention is open to include any number of additional features,
steps, ingredients, etc. Therefore, we are not persuaded by Appellant’s
contention that “there is no way to meet the limitations of the presently
claimed invention,” because the combination of Kvitnitsky and Sukhishvili
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suggest the use of an ingredient that Appellant’s claimed “process does not
mandate the necessity of” (id. at 10).
As Examiner explains, Appellant’s claimed process includes, inter
alia,
“causing the formation around the liquid droplets of a
sequential series of at least two layers”. . . . [Appellant’s
claims, however,] give no specific restrictions on how one is to
cause the formation around the liquid droplets. Therefore, this
“causing” can include incorporating the liquid droplets of
Kvitnitsky into a porous inorganic particle as taught
in . . . Sukhishvili, followed by coating and removing (or not
removing) the porous inorganic particle . . ., thereby achieving
the formation of sequential layers around the liquid droplets.
(Ans. 4 (citing Sukhishvili ¶¶ 78, 82).) We find no error in Examiner’s
reasoning. Simply stated, because Appellant’s claimed invention does not
exclude liquid droplets present in, or on, a porous inorganic particle that is
coated with sequential layers of polymer, the combination of Kvitnitsky and
Sukhishvili suggests Appellant’s claimed invention. Thus, we are not
persuaded by Appellant’s contention “that the full scope of the presently
claimed invention, particularly the limitations of claim 14, are not properly
considered obvious from the combined Kvitnitsky and Sukhishvili
references” or Appellant’s reliance on the definition of the term “droplet”
(Appeal Br. 12; see also id. at 12–18; see also id. at 20–21).
Consistent with Examiner’s interpretation of the “causing” step of
Appellant’s claimed invention, Appellant’s Specification discloses that
“[t]he invention provides in a first aspect core-shell capsules comprising a
fragrance-containing core and a shell formed around said core, wherein the
shell is formed of polycarboxylic acid having a molecular weight of 1000 to
10 000 000 Daltons” (Spec. 2:11–13; see also id. at 3:8–9 (Appellant
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discloses that its polycarboxylic acid may be polymethacrylic acid)). Thus,
although Appellant directs attention to another portion of its Specification,
for an asserted disclosure of a process that does not require core particles,
for the reasons discussed above, Appellant has not distinguished its claimed
invention from the combination of prior art relied upon by Examiner (see
Appeal Br. 15–16; cf. FF 1–7).
CONCLUSION
The preponderance of evidence relied upon by Examiner supports a
conclusion of obviousness.
The rejection of claims 14, 16–18, 21, 22, and 24 under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Kvitnitsky and Sukhishvili
is affirmed. Claims 16–18, 21, 22, and 24 are not separately argued and fall
with claim 14.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
14, 16–18,
21, 22, 24
103(a) Kvitnitsky,
Sukhishvili
14, 16–18,
21, 22, 24

TIME PERIOD FOR RESPONSE
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) (2019).

AFFIRMED