International Flavors & Fragrances Inc.Download PDFPatent Trials and Appeals BoardOct 13, 20212021000709 (P.T.A.B. Oct. 13, 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. 13/967,800 08/15/2013 Yabin Lei IFF-303 CIP 8097 23679 7590 10/13/2021 Licata & Tyrrell P.C. 66 East Main Street Marlton, NJ 08053 EXAMINER PHAN, DOAN THI-THUC ART UNIT PAPER NUMBER 1613 NOTIFICATION DATE DELIVERY MODE 10/13/2021 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): PTOactions@licataandtyrrell.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte YABIN LEI, LI XU, CAROL JOYCE, and LEWIS MICHAEL POPPLEWELL Appeal 2021-000709 Application 13/967,800 Technology Center 1600 ____________ Before RICHARD M. LEBOVITZ, TIMOTHY G. MAJORS, and JAMIE T. WISZ, Administrative Patent Judges. LEBOVITZ, Administrative Patent Judge. DECISION ON APPEAL The Examiner rejected claims 1, 8, 11–15, 21, and 22 under 35 U.S.C. § 103 as obvious. Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject the claims. We have jurisdiction under 35 U.S.C. § 6(b) to decide this appeal. We AFFIRM-IN-PART. 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 International Flavors & Fragrances Inc. Appeal Br. 1. Appeal 2021-000709 Application 13/967,800 2 STATEMENT OF THE CASE Claims 1, 8, 11–15, 21, and 22 stand rejected by the Examiner in the Final Office Action as follows: Claims 1, 8, 12, 13, and 22 under 35 U.S.C. § 103 as obvious in view of Kiritani et al. (US 4,021,595, issued May 3, 1977) (“Kiritani”), Vautrin (WO 2011/161265 A2, published Dec. 29, 2011) (“Vautrin”), and Benoff et al. (US 5,705,174, published Jan. 6, 1998) (“Benoff”). Final Act. 4–5. Claim 11 under 35 U.S.C. § 103 as obvious in view of Kiritani, Vautrin, Benoff, and Kleban et al. (US 2002/0079599 A1, published June 27, 2002) (“Kleban”). Final Act. 10. Claims 14 and 15 under 35 U.S.C. § 103 as obvious in view of Kiritani, Vautrin, Benoff, and Guisinger (WO 2008/031241 A1, published Mar. 20, 2008) (“Guisinger”). Final Act. 11–12. Claim 21 under 35 U.S.C. § 103 as obvious in view of Kiritani, Vautrin, Benoff, and Wang et al. (US 2005/0161843 A1, published July 28, 2005) (“Wang”). Final Act. 13. Claim 1, the only independent claim on review, is reproduced below (indentations added for clarity): 1. A method for preparing a polyurea capsule composition comprising: (a) preparing an oil phase comprising an active material and a polyisocyanate; (b) preparing a surfactant solution; (c) emulsifying the oil phase into the surfactant solution to form a fragrance emulsion; (d) adding a cross-linking agent to the fragrance emulsion to form a capsule slurry; and (e) curing the capsule slurry, wherein the active material is a fragrance oil present at a level of about 5% to about 80% of the capsule composition; Appeal 2021-000709 Application 13/967,800 3 the polyisocyanate, added at a level of about 0.1 % to about 10% by weight of the capsule composition, consists of a trimethylol propane-adduct of xylylene diisocyanate; the surfactant is added at a level of about 0.1 % to about 5% by weight of the capsule composition; the cross-linking agent, added at a level of about 0.1 % to about 5% by weight of capsule composition, is bis (3-aminopropyl) amine, bis(hexanethylene) triamine, triethylenetetramine, N,N'-bis(3-aminopropyl) -l, 3- propanediamine, branched polyethylenimine, chitosan, nisin, or a combination thereof; an encapsulating polymer is formed by the polymerization reaction between the polyisocyanate and the cross-linking agent; and the encapsulating polymer encapsulates the active material. A Reply Brief was filed by Appellant on November 6, 2020. The Reply Brief does not comply with 37 C.F.R § 41.41. For example, new arguments are presented in the Reply Brief2 that were not made in the Appeal Brief. 37 C.F.R § 41.41(b)(2) specifically states: Any argument raised in the reply brief which was not raised in the appeal brief, or is not responsive to an argument raised in the examiner’s answer, including any designated new ground of rejection, will not be considered by the Board for purposes of the present appeal, unless good cause is shown. 2 New argument 1: “Appellants have demonstrated that the claimed cross- linking agents achieve a microcapsule with excellent stability as evidenced by virtually no leakage of fragrance in a fabric softener after 6 days at 50°C. See Table 1 at page 48 of the specification.” Reply Br. 3. New argument 2: “In particular, neither 20°C nor below 25 °C constitute a teaching of 22 °C and according to The International Union of Pure and Applied Chemistry (IUPAC), standard ambient temperature is defined as 25°C (77°F, 298.15 K).” Reply Br. 4. Appeal 2021-000709 Application 13/967,800 4 Appellant made no attempt to show good cause. We do not, thus, consider Appellant’s arguments raised for the first time in its Reply. REJECTION BASED ON KIRITANI, VAUTRIN, AND BENOFF The method of claim 1 comprises five steps, a–e, which result in making a polyurea capsule encapsulating a fragrance oil. An oil phase comprising a fragrance and polyisocyanate is emulsified with a surfactant (steps a–c), a cross-linking agent is added (step d), and then the polyisocyanate and cross-linking agent are cured to form a polyurea capsule encapsulating the fragrance (step e). The cross-linking agent is selected from a group of seven cross-linking agents, several of which are polyamines. The claim requires specific amounts of each of the components used to make the polyurea shell. The Examiner found that Kiritani describes making a polyurea capsule and encapsulating a fragrance in it, prepared by the same general steps recited in claim 1. Final Act. 5. The Examiner found, however, that Kiritani does not describe the claimed cross-linking agents nor the claimed amounts of fragrance, polyisocyanate, surfactant, and cross-linking agent. Id. The Examiner found that Kiritani describes using a polyamine as a cross-linking agent for a polyisocyanate, but not the specific cross-linking agent which is claimed. However, the Examiner found that Vautrin also describes making polyurea capsules by the same general process as claimed and describes using one of the polyamine cross-linking agents recited in claim 1. Final Act. 5–6. The Examiner determined it would have been obvious to one of ordinary skill in the art to use Vautrin’s cross-linking agent in Kiritani’s method as “mere[ ] simple substitution of one known Appeal 2021-000709 Application 13/967,800 5 polyamine known for their suitability as a crosslinking agent in the preparation of polyurea capsule for another to obtain predictable results of a crosslinker for polymerizing the perfume emulsion to form a capsule slurry.” Id. at 6. The Examiner also found that Benoff also describes making a polyurea capsule using a cross-linking agent that falls within the scope of claim 1. Id. at 7. To meet the specific percentage of components in claim 1, the Examiner further cited Benoff’s disclosure of concentrations of fragrance, polyisocyanate, cross-linking agent, and surfactant which overlap or lie inside the claimed ranges. Final Act. 8–9. The Examiner found it obvious to optimize the concentrations disclosed in Benoff to achieve the claimed amounts. The Examiner also found that Vautrin describes amounts of fragrance which encompass the claimed amounts, making the claimed amounts of fragrance obvious for the same reason. Id. To support the Examiner’s finding of obviousness, the Examiner further cited In re Aller, 220 F.2d 454, 456 (CCPA 1955) for its holding that “[w]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” Id. at 9. Is there a reason to combine the cited publications? Appellant contends that the Examiner “does not set forth any motivation or rationale for particularly combining the teachings of Kiritani with Vautrin and Benoff.” Appeal Br. 8. Appellant states that “the rejection of record does not identify any reason or advantage to replacing the Appeal 2021-000709 Application 13/967,800 6 crosslinking agents disclosed by Kiritani with those of either Vautrin or Benoff.” Id. at 9. Appellant argues: [T]here is no analysis presented in the rejection as to whether replacing the crosslinking agents disclosed by Kiritani with those of Vautrin or Benoff would alter the size, strength or permeability of the microcapsules of Kiritani to improve upon any one of these inventive aspects of the Kiritani microcapsules. Id. This argument does not persuade us that the Examiner erred in rejecting claim 1 as obvious. As explained by the Examiner, Kiritani produces a polyurea capsule using a cross-linking agent, but not one of the claimed cross-linking agents. The Examiner expressly stated in the Final Office Action that the reason to use a cross-linking agent in Vautrin and Benoff in Kiritani’s method is because of these agents’ known suitability for preparing a polyurea capsule. Final Act. 6. In other words, a cross-linking agent in the scope of claim 1 had been used in Vautrin and Benoff to polymerize polyisocyanate to make a polyurea shell, the same process described in Kiritani. Vautrin 7:19–9:11; Benoff 3:66–4:35. The Examiner reasoned that to reach the claimed method, one of ordinary skill in the art would simply have to substitute one known cross-linking agent for another. Final Act. 6. The Examiner’s reasoning is based on the finding that the cross-linking agents in Vautrin and Benoff have the same function as those in Kiritani and are therefore equivalent, providing a reasonable expectation that they would successfully and predictably produce the polyurea capsule of claim 1. Id. The Examiner has the initial burden of presenting a prima facie case of unpatentability. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). This Appeal 2021-000709 Application 13/967,800 7 burden was met by the Examiner’s finding that the cross-linking agents in Vautrin and Benoff are suitable in Kiritani’s method to predictably produce a polyurea capsule. “Express suggestion to substitute one equivalent for another need not be present to render such substitution obvious.” In re Fout, 675 F.2d 297, 301 (CCPA 1982); see also In re Mayne, 104 F.3d 1339, 1340 (Fed. Cir. 1997) (“Because the [A]pplicants merely substituted one element known in the art for a known equivalent, this court affirms [the rejection for obviousness].”) KSR Intern. Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (“[W]hen a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result.”). Appellant does not provide objective evidence that utilizing a polyamine cross-linking agent described in Vautrin and Benoff would not be reasonably expected to produce an effective polyurea capsule for encapsulating a fragrance as required by claim 1. Contrary to Appellant’s argument that there must be an improvement in the properties of Kiritani’s capsule (Appeal Br. 9), even the use of a component that is “inferior” to some other component for the same use is considered to be obvious. “A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). “[J]ust because better alternatives exist in the prior art does not mean that an inferior combination is inapt for obviousness purposes.” In re Mouttet, 686 F.3d 1322, 1334 (Fed. Cir. 2012). A “finding that the prior art as a whole suggests the desirability of a particular combination need not be supported by a finding that the prior art suggests Appeal 2021-000709 Application 13/967,800 8 that the combination claimed by the patent applicant is the preferred, or most desirable, combination.” In re Fulton, 391 F.3d 1195, 1200 (Fed. Cir. 2004). See also Apple Inc. v. Samsung Elec. Co., 816 F.3d 788, 801–802 (Fed. Cir. 2016). Consequently, we are not persuaded that, to establish obviousness, an improvement in Kiritani’s capsule must be conferred by the cross-linking agents described in Vautrin and Benoff. Appellant also has not provided persuasive rebuttal arguments that the Examiner erred in finding it obvious to optimize the amounts of the components described in Benoff to meet the amounts recited in claim 1. It is well established that, when there is a range disclosed in the prior art, and the claimed invention overlaps or falls within that range, as there is here, there is a presumption of obviousness. In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003); Iron Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317, 1322 (Fed. Cir. 2004). Appellant did not provide evidence that this presumption, as explained in Peterson and Iron Grip, is inapplicable to the obviousness of claim 1. For the foregoing reasons, the obviousness rejection of claim 1 is affirmed. Claims 8, 13, and 22 fall with claim 1 because separate arguments for their patentability were not provided. 37 C.F.R. § 41.37(c)(1)(iv). Claim 12 Claim 12 depends from claim 1 and further recites “wherein the step of adding the cross-linking agent to the fragrance emulsion is at a temperature of 22°C.” Appeal 2021-000709 Application 13/967,800 9 The Examiner found that Kiritani describes adding a “polyamine crosslinking agent is added to the emulsion at a temperature below 25°C.” Final Act. 9. Appellant admits that “Kiritani teaches that ‘the temperature of the system was maintained below 25°C,” but argues that Kiritani does teach or suggest the claimed temperature of 22°C. Appeal Br. 9. Appellant’s argument does not persuade us that the Examiner erred. The temperature of 22°C is “below 25°C” described by Kiritani as the temperature at which the cross-linking agent is added. Kiritani 7: 60–66. 22°C is below 25°C and therefore the claimed value falls within the disclosed range, making it obvious. See Peterson. Appellant has not provided evidence of the criticality of the claimed value. [The] law is replete with cases in which the difference between the claimed invention and the prior art is some range or other variable within the claims…in such a situation, the applicant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range. In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990). The obviousness rejection of claim 12 is affirmed. REJECTION BASED ON KIRITANI, VAUTRIN, BENOFF, AND GUISINGER Claim 15 Claims 14 and 15 are further rejected based on Guisinger. Appellant only provided separate arguments for claim 15. Claim 15 depends from claim 14 (“method of claim 1, further comprising the step of washing the cured capsule slurry with water”) and further recites “comprising the step of Appeal 2021-000709 Application 13/967,800 10 adding a salt to the cured capsule slurry before washing the capsule slurry with water.” The Examiner found, citing Example 2 of Guisinger, that “Guisinger teaches that it would be advantageous to add calcium chloride solution to a capsule slurry aid in finalizing crosslinking and strengthening the walls and followed by the washing of the capsule slurry with water aid in removing any residual calcium chloride.” Final Act. 12. Appellant argues that the capsules described by Guisinger are not made of polyurea and are not cured before adding the salt to the cured capsule as required by claim 15. Appeal Br. 11. The Examiner responds that “Guisinger teaches that the benefit of adding calcium chloride (a salt) to a capsule slurry is to aid in finalizing the crosslinking and strengthened the walls,” and thus would “aid in finalizing the crosslinking and strengthened the walls of the capsules in the capsule slurry of Kiritani, Vautrin and Benoff.” Ans. 18. We reverse the rejection claim 15. The Examiner did not provide evidence that calcium chloride would aid in the cross-linking of the polyurea capsule of Kiritani. Example 2 of Guisinger discloses preparing capsules made of sodium alginate. Guisinger 4:20–5:3. The Examiner did not provide evidence that sodium alginate has the same structure of the polyurea capsule of Kiritani or that the calcium salt would cross-link and strengthen the walls of the polyurea capsule made from the polyisocyanate and polyamine cross- linker when it is used with a different capsular material in Guisinger. The Examiner therefore did not meet the burden of establishing the obviousness of claim 15 based on Kiritani, Vautrin, Benoff, and Guisinger. Appeal 2021-000709 Application 13/967,800 11 REJECTION BASED ON KIRITANI, VAUTRIN, BENOFF, AND WANG Claim 21 Claim 21 depends from claim 1 and further recites that the “surfactant is a mixture of polystyrene sulfonate and carboxymethyl cellulose.” The Examiner found that Wang describes “the conventional step for forming the microcapsule is curing the encapsulating material associated with the micro particles to form the microcapsules” and that “the surfactants can be sulfonated polystyrene and carboxymethyl cellulose ([0030], [0084] and [0085]).” Final Act. 13. Appellant argues that Wang does not “teach or suggest the mixture of surfactants as presently claimed.” Appeal Br. 12. Appellant acknowledges that Wang describes the surfactants individually in a list, but not as a mixture. Id. The Examiner responded: As cited in the standing 103 rejection, paragraph [0030] of Wang suggested that anionic polymer mixture can be used as the surfactants/stabilizers, which the claimed mixture of polystyrene sulfonate and carboxymethylcellulose is also an anionic polymer mixture. Furthermore, Wang also suggested different combination of stabilizers can be used (see Wang, paragraph [0122]), thereby Wang provided reasonable guidance that other different combinations of surfactants/stabilizers can be selected from a list of known surfactants/stabilizers typically used in the method for producing polyurea capsules. Ans. 19–20. Appellant responds that “nothing in the teachings of Wang would have guided the skilled artisan to particularly select the combination of Appeal 2021-000709 Application 13/967,800 12 polystyrene sulfonate and carboxymethylcellulose as presently claimed.” Reply Br. 5.3 We agree with Appellant that, in paragraph 30, Wang discloses “an anionic polymer mixture comprising a mixture of a first sulfonated polystyrene polymer and a second sulfonated polystyrene polymer,” which is not the same mixture as claimed. However, in paragraph 122, cited by the Examiner, Wang further discloses that “the size of microcapsules can be easily controlled by the process of the invention using different combination of stabilizers in the aqueous phase.” The surfactants disclosed by Wang are characterized by Wang as “stabilizers.” Wang ¶ 30. Thus, Wang does not limit the mixture of the surfactant stabilizers to the mixture recited in paragraph 30, but provides a broader suggestion of using mixtures of stabilizers. Consequently, we conclude that the preponderance of the evidence supports the Examiner’s position that claim 21 would have been obvious to one of ordinary skill in the art in view of Kiritani, Vautrin, Benoff, and Wang. SUMMARY The obviousness rejections of claim 1, 12, and 21 are affirmed. Claims 8, 11, 13, and 14 were not argued separately and fall with claim 1. The obviousness rejection of claim 15 is reversed. 3 We have considered the Reply Brief for the limited purpose of the response to the Examiner’s argument regarding claim 21 in the Answer. Appeal 2021-000709 Application 13/967,800 13 CONCLUSION In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 8, 12, 13, 22 103 Kiritani, Vautrin, Benoff 1, 8, 12, 13, 22 11 103 Kiritani, Vautrin, Benoff, Kleban 11 14, 15 103 Kiritani, Vautrin, Benoff, Guisinger 14 15 21 103 Kiritani, Vautrin, Benoff, Wang 21 Overall Outcome 1, 8, 11–14, 21, 22 15 TIME PERIOD No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED-IN-PART Copy with citationCopy as parenthetical citation