Hallie N. Rich et al.

Patent Trials and Appeals Board

Jan 24, 2020

15001302 - (D) (P.T.A.B. Jan. 24, 2020)

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.
15/001,302 01/20/2016 Hallie N. Rich 1805-3-PCT US CIP 1054
31554 7590 01/24/2020
Carter, DeLuca & Farrell LLP
576 Broad Hollow Road
MELVILLE, NY 11747
EXAMINER
EBRAHIM, NABILA G
ART UNIT PAPER NUMBER
1618
NOTIFICATION DATE DELIVERY MODE
01/24/2020 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@carterdeluca.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte HALLIE N. RICH and MICHELLE G. CANNON
__________

Appeal 2018-002853
Application 15/001,3021
Technology Center 1600
__________

Before RICHARD M. LEBOVITZ, JEFFREY N. FREDMAN, and
RACHEL H. TOWNSEND, Administrative Patent Judges.

TOWNSEND, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a
composition comprising a powder and a method involving that powder,
which have been rejected as obvious. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.
STATEMENT OF THE CASE
“[M]any dietary supplements have a flavor and/or mouthfeel, which
make them unpalatable. Additionally, some dietary supplements leave an

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 Rich
Vitamins LLC. (Appeal Br. 1.)
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unpleasant aftertaste in the mouth.” (Spec. ¶ 3.) Appellant’s invention is
directed at “a rapidly dissolving orally administrable palatable powder.” (Id.
¶ 6.)
Claims 1–16 are on appeal. Claim 1 is representative and reads as
follows:
1. A composition comprising a powder including:
at least one bulking agent;
at least one soluble fiber selected from the group
consisting of resistant maltodextrin, oligosaccharides, inulin,
gums, polydextrose, and combinations thereof;
at least one sweetening ingredient; and
at least one active ingredient selected from the group
consisting of Vitamin A, Vitamin C, Vitamin D, Vitamin E,
Thiamin, Riboflavin, Niacin, Vitamin B6, Folate, Vitamin B12,
Pantothenic Acid, Biotin, Chromium, Copper, Iodine, Iron,
Manganese, Molybdenum, Selenium, Zinc, Boron, omega-3
fatty acids, coenzyme Q10, calcium, probiotics, and
combinations thereof,
wherein the powder dissolves in the mouth upon contact
with saliva.
(Appeal Br. 13.)

The prior art relied upon by the Examiner is:
Name Reference Date
Cherukuri US 5895664 Apr. 20, 1999
Gendrot US 2005/0019391 A1 Jan. 27, 2005
Kabaradjian WO 2009/112156 A1 Sept. 17, 2009
Nayak US 2006/0028260 A1 Dec. 21, 2006

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The following grounds of rejection by the Examiner are before us on
review:
Claims 1–10 under 35 U.S.C. § 103(a) as unpatentable over
Cherukuri, Gendrot, Kabaradjian, and Nayak.
Claims 11 and 12 under 35 U.S.C. § 103(a) as unpatentable over
Gendrot, Kabaradjian, and Nayak.
Claims 13–16 under 35 U.S.C. § 103(a) as unpatentable over
Kabaradjian, Cherukuri, Gendrot, and Nayak.
DISCUSSION
The Examiner explains that claim 1 is directed to a composition that
comprises a powder that includes the claimed components. (Ans. 2.) The
Examiner finds that Cherukuri teaches a flowable comestible powder that
can form a compacted tablet. (Final 15; Ans. 3.)
The Examiner explains that the powder in Cherukuri includes an
active agent that can be a multi-vitamin mixture, as well as polyol carriers,
and sweeteners. (Final 4.) The Examiner finds that Cherukuri teaches that
when the powder is compacted into a tablet, the tablet composed of the
powder dissolves in the mouth on contact with saliva within seconds, but
does not specify the number of seconds required for dissolution. (Id. at 4–
5.) The Examiner notes further that prior to compacting, the powder must
necessarily be comestible because there are no steps taken to change the
nature of the powder composition prior to compacting it. (Ans. 3.)
The Examiner finds that Gendrot teaches an orodispersible
composition similar to the type of orodispersible composition in Cherukuri,
where the composition is in the form of particles until compressed to make a
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tablet, and that the disintegration time for the composition is noted to be
approximately 10 seconds. (Final 5.)
The Examiner notes that neither reference explicitly teaches using the
powder as the dosage form. (Id. at 6.) However, the Examiner finds that
such a dosage form for oral dosage fast disintegrating compositions is well
known in the art, citing Kabaradjian. (Ans. 3; Final 6.) The Examiner
concludes that it would have been obvious to one of ordinary skill in the art
to use the composition of Cherukuri in the form of a powder so that children
and the elderly would be able to easily swallow the dosage form. (Final
Action 6.)
The Examiner recognizes that none of the foregoing references
teaches the soluble fiber required by the claim. (Id.) However, the
Examiner explains that Nayak teaches a quick dissolving soluble fiber
composition in the form of a powder which can be added to foods or
beverages and that the composition does not alter the taste or texture of the
food or beverage to which it was added. (Final 7; Ans. 7, 8.) The Examiner
notes that Nayak discloses these non-digestible soluble fibers promote a
number of health benefits including reducing blood glucose and insulin
levels, reducing levels of blood triglycerides and serum cholesterol, and
retaining levels of HDL cholesterol to help to maintain good colon health.
(Final 7.) The Examiner determines that it would have been obvious to one
of ordinary skill in the art to have added Nayak’s quick dissolving soluble
fiber to the composition of Cherukuri to achieve composition that would
provide the health benefits noted by Nayak and that it would have been
expected that the Nayak soluble fiber composition would not cause
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unwanted taste in the Cherukuri composition given that it is taught in Nayak
not to affect taste when added to foods. (Final 7; Ans. 7.)
We agree with the Examiner’s factual findings and conclusion that the
composition recited in claim 1 would have been obvious from the relied
upon references. Appellant argues the Examiner’s rejection is in error
because it relies on impermissible hindsight and “the Examiner has failed to
articulate any logical reason why the skilled artisan reviewing Cherukuri
and/or Gendrot’s tablets would decide that a powder should be developed.”
(Appeal Br. 8–9.) Appellant contends that (1) Cherukuri is focused on the
desirability of a tablet form and does not include a soluble fiber (Appeal Br.
6–7), (2) nearly 18% of the particles of Cherukuri as “depicted in the tablest
at column 23 . . . [are] larger than 40 mesh,” which is larger than the
powders of the recited claims and “the large number of larger particles
obtained by Cherukuri would have a pronounced [negative] effect on
mouthfeel if a powder produced with these larger particles was ingested
directly without tableting” where “one of the desired features of the recited
powders is their improved mouthfeel” (Appeal Br. 6). Appellant then argues
that Gendrot, like Cherukuri, is concerned with tablets not powders. (Id.)
Appellant argues that Kabaradjian does not disclose the use of its antacid
powder in the delivery of some other active ingredient. (Id.) Finally,
Appellant argues that Nayak’s powder is not directly consumed without
addition to another food or beverage formulation and thus “Nayak fails to
disclose or suggest a rapidly dissolving orally administrable powder.” (Id. at
8.) We do not find Appellant’s arguments persuasive.
In particular, first, we agree with the Examiner that the composition
does not have to be a powder, but rather comprises a powder. It is not
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disputed that Cherukuri’s tableted formulation is prepared from a powder
formulation. And in any event, we also agree with the Examiner that dosage
formulations in the form of a powder were well-known at the time of the
invention as evidenced by Kabaradjian. (Kabaradjian 7–8.) As the
Examiner explained, and Appellant does not contest, both Cherukuri and
Gendrot teach creating powders with various active ingredients that are then
compacted to a tablet, establishing that the powders used to form the tablet
are necessarily comestible given that neither reference teaches doing
anything other than compacting the powders into a tablet to form the
comestible tablet. (See, e.g., Cherukuri 15:14–20; Gendrot ¶¶ 66–69.)
That both Cherukuri and Gendrot teach compacting their powder
formulations to make tablets does not establish non-obviousness of the
claimed powder. The obviousness analysis “can take account of the
inferences and creative steps that a person of ordinary skill in the art would
employ.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). As the
Examiner explained, one of ordinary skill in the art would have found it
obvious and within their skill to make the comestible powder the dosage unit
for administration rather than the end product tablet taught by Cherukuri and
Gendrot in order to provide a formulation that would be easily administered
to the elderly, children, and those having dysphagia. (Ans. 3.)
That Kabaradjian does not disclose anywhere “the use of its antacid in
the delivery of some other active ingredient” (Appeal Br. 7) is not persuasive
that a powder formulation for delivery of compositions like that of
Cherukuri or Gendrot would not have been obvious. Cherukuri teaches
forming powders for antacid compositions that can then be compacted, as
well as multi-vitamin compositions. (Cherukuri 19 (Example X), 22
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(Example XIV).) Thus, Cherukuri teaches that the same types of delivery of
comestible powder is contemplated for antacids as it is for multivitamins.
Kabaradjian further teaches its powder composition includes the same types
of carriers as Cherukuri (e.g. the polyols mannitol and sorbitol) as well as
including disintegrants. (Kabaradjian 8.) Moreover, like Cherukuri,
Kabaradjian teaches that the antacid powder once formulated can optionally
be pressed into tablets. (Id.) Consequently, we find Kabaradjian’s teaching,
though specifically directed to an antacid formulation, would have been
understood by one of ordinary skill in the art, in light of Cherukuri, to be
applicable to a multivitamin composition.
Regarding the addition of soluble fibers to the powder composition,
we agree with the Examiner that one of ordinary skill in the art would have
found such an addition obvious to the composition of Cherukuri with a
reasonable expectation of success. In particular, Cherukuri teaches
preparation of a multi-vitamin flowable, compactible microparticulate
powder. (Cherukuri column 22 (Example XIV).) Nayak teaches that
soluble fibers provide numerous health benefits. (Nayak ¶ 5.) Thus, we
agree with the Examiner that given the health benefits that Nayak teaches for
the soluble fiber, one of ordinary skill in the art would have had a reason to
include the soluble fiber powder taught by Nayak in the multi-vitamin
formula of Cherukuri.
Nayak further teaches formulation of such soluble fibers in powder
that is rapidly dispersible in media, such as water, and that has a good
“mouth feel” and does not alter the taste of the food or beverage it is added
to. (Id. at Abs., ¶¶ 10–12.) We conclude that one of ordinary skill in the art
would have expected that addition of this powder form of the fibers to the
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multi-vitamin powder of Cherukuri would likewise “not cause unwanted
taste” and would still maintain its rapid dispersability. (See Ans. 7.)
In light of the foregoing, we disagree with Appellant that the
Examiner has “failed to provide any reasoned explanation for combining
these references” (Appeal Br. 9) or the assertion that the Examiner’s
rejection relies on impermissible hindsight (id. at 8).
Consequently, we affirm the Examiner’s rejection of claim 1 under
35 U.S.C. § 103(a) as unpatentable over Cherukuri, Gendrot, Kabaradjian,
and Nayak.
Claims 2–10 have not been argued separately and therefore fall with
claim 1. 37 C.F.R. § 41.37(c)(1)(iv).

Claims 11 and 12
Claim 11, like claim 1 is directed to a composition comprising a
powder that includes various ingredients. However, unlike claim 1, it
specifies ranges that the ingredients must fall within, and also does not
specify any group from which the at least one active ingredient must be
selected. Rather, any active ingredient under the sun is contemplated.
Because of this the Examiner did not feel it was necessary to include the
teachings of Cherukuri to make out a prima facie case of obviousness. The
rejection relies instead only on the teachings of Gendrot, Kabaradjian, and
Nayak.
Appellant argues the rejection is in error because “Gendrot’s
preference for tablets” would not motivate one of ordinary skill in the art to
look to Kabaradjian’s antacid or Nayak’s fiber supplements. (Appeal Br.
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10.) We do not find Appellant’s argument persuasive for the reasons
discussed above.
Consequently, we affirm the Examiner’s rejection of claim 11 under
35 U.S.C. § 103(a) as unpatentable over Gendrot, Kabaradjian, and Nayak.
Claim 12 has not been argued separately and therefore falls with claim
11. 37 C.F.R. § 41.37(c)(1)(iv).

Claims 13–16
Claim 13 is directed to a method of preparing a dietary supplement by
dry blending a mixture of ingredients as recited in claim 1 and then
introducing that powder into the mouth of a consumer, allowing the powder
to dissolve. The Examiner applies the same references as was used to reject
claim 1, noting in particular that Kabaradjian teaches orally administration
of its composition in the form of powders or rapidly disintegrating tables
among other forms. (Final 10.) The Examiner also explains that
Kabaradjian teaches the method includes mixing the ingredients together
with excipients to form a blend and that the composition disintegrates
rapidly in the oral cavity. (Id.)
Appellant’s argument as to why the Examiner’s rejection of claim 13
is in error is the same as that argued for claim 1. (Appeal Br. 11) In
particular, Appellant states:
The skilled artisan, reviewing Cherukuri’s and Gendrot’s
preference for tablets, would not be motivated to apply their
teachings to Kabaradjian’s antacid in formulating the recited
powders for the administration of the recited vitamins. The
skilled artisan, looking to form a powder for administration,
would not look to Nayak’s laxative/fiber supplements, which
are dissolved instantaneously in the food/beverage to which
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they are added and are not directly consumed without addition
to the food/beverage.
(Id.) For the reasons discussed with respect to claim 1, we do not find
Appellant’s argument persuasive.
Consequently, we affirm the Examiner’s rejection of claim 13 under
35 U.S.C. § 103(a) as unpatentable over Kabaradjian, Cherukuri, Gendrot,
and Nayak.
Claims 14–16 has not been argued separately and therefore falls with
claim 13. 37 C.F.R. § 41.37(c)(1)(iv).

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–10 103(a) Cherukuri, Gendrot,
Kabaradjian, Nayak
1–10
11, 12 103(a) Gendrot, Kabaradjian,
Nayak
11, 12
13–16 103(a) Kabaradjian, Cherukuri,
Gendrot, Nayak
13–16
Overall
Outcome
1–16

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).

AFFIRMED