Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 17-22,24-29,31,32, 37-40 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bouquerand(US 2008/0206325).
Regarding claims 17,18,19,27,28,31, Bouquerand teaches a non-spherical flavoring powdered microcapsule, comprising:
(i)an oil phase comprising a volatile active ingredient(paragraph 27,28)
ii) a water phase including a water-soluble carbohydrate carrier in the form of ocentyl-succinated starch(paragraph 70)
(iii)an emulsifier(paragraph 89)
(iv)a desiccant in the form of maltodextrin(paragraph 65)
Bouquerand teaches that the particle can have a number of shapes including rod-like, disk-like, or flat(paragraph 22) which are generally not round and would be expected to have a low coefficient of circularity of less than 0.6. Furthermore, it would have been obvious to adjust the shape of the particle depending on the intended use of the final product.
Bouquerand teaches that the particle can be a microcapsule(paragraph 34) in powdered form(paragraph 98) that is free flowing(paragraph 106).
Bouquerand teaches that the particle has a water content of about 4% and an oil content of 30%(table 1, example 1A). This equates to a weight ratio of oil phase to water of 7.5.
Bouquerand teaches that the volatile oil can be in the form of fish oil which inherently provides a flavor, i.e. is a flavoring microcapsule. Bouquerand further teaches the use of flavoring components at an amount of less than 30 wt%(paragraph 28). It would have been obvious to use a volatile flavor oil since flavor oils such as orange oil are commonly included in encapsulated products to provide a desired organoleptic effect.
Regarding the limitation that the “the volatile active ingredient comprises a perfume or flavor oil suitable to impart a desired organoleptic effect”, Bouquerand teaches that the encapsulation of the fish oil prevents an undesirable flavor, therefore the encapsulated fish oil has a “desired organoleptic effect”, i.e. prevention of an undesirable flavor(paragraph 18).
Furthermore, Bouquerand teaches that the composition can further include flavor components(paragraph 28) in order to cover up the unwanted taste of the fish oil. The flavor component(e.g. volatile flavor oil as stated above) therefore provides a desired organoleptic effect of masking the unpleasant taste of fish oil.
Bouquerand teaches that the oil is freely dispersed in the water phase before the final drying phase to form the powder particles(paragraph 103, oil droplets do not coalesce in the water phase). Specifically, Bouquerand teaches forming an emulsion by mixing of a gelatin, gum Arabic, and water(water phase) with fish oil such that the oil droplets do not coalesce in water([0103]). Based on this description, it appears that all the oil droplets are freely dispersed in water.
Furthermore, it is noted, that the limitation stating that the “oil is freely dispersed in the water phase” pertains to the method of making(oil can only be freely dispersed in the water phase in a liquid product before drying to form the final powder) and does not directly recite any clear structure to the final product.
“[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Therefore, absent evidence of criticality regarding the presently claimed process and given that Bouquerand meets the requirements of the claimed non-spherical flavoring powdered microcapsule, Bouquerand clearly meets the requirements of the present claims.
Bouquerand teaches that the particles can have a range of mean particles sizes from 20µm to 2200 µm(table 1) depending on the method of production. Bouquerand teaches an average particle size of 400 microns(example 6). One of ordinary skill in the art would expect an average particle size of 400 microns to have some particles above and below the average size. For example, a size of 500 microns as expected with a typical particle size distribution.
With particle sizes of 300-500 microns(average size of 400 microns), the composition would contain a fraction of particles of less than 500 microns, and a fraction of 500-800 microns as claimed. Furthermore, as particle size can be controlled via known methods in the art, it would have obvious to adjust the particle size depending on the nature of the encapsulated flavor.
Regarding claim 20, Bouquerand does not specifically teach wherein the powder composition has part of said oil freely dispersed in the water phase and another part of the oil is dispersed in an encapsulated form in the water phase. However, Bouquerand teaches using similar materials(flavor oils, water soluble carbohydrates) processed in similar fashion to the claimed invention(simple or complex coacervation(paragraph 42)). Therefore, one of ordinary skill in the art would expect the powdered composition of Bouquerand to have the same properties as the claimed invention.
Regarding claim 21, Bouquerand teaches that the encapsulated flavor oil is formed by simple or complex coacervation(paragraph 42).
Regarding claim 22, Bouquerand teaches that the flavor oil is dispersed in an encapsulated form in the water phase(paragraph 103, oil droplets encapsulated in gum Arabic and gelatin are dispersed in the water phase).
Regarding claim 24, Bouquerand teaches that the water-soluble carbohydrate carrier comprises ocentyl-succinated starch which is an emulsifying polymer with a molecular weight of 902 Daltons(paragraph 70).
Regarding claim 25, Bouquerand teaches that the composition can comprise maltodextrin with a DE of from 15 to 19 which is water-soluble starch hydrolysate with a molecular weight lower than 1500 Dalton(paragraph 65).
Regarding claim 26, Bouquerand teaches that the emulsifier can comprise gum Arabic(paragraph 39).
Regarding claim 29, Bouquerand teaches that the powdered microcapsule can comprise a flowing agent such as silicon dioxide(paragraph 108).
Regarding claim 32, Bouquerand does not specifically teach that method of forming the powdered composition as claimed. However, it is noted that “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Therefore, absent evidence of criticality regarding the presently claimed process and given that Bouquerand meets the requirements of the claimed non-spherical flavoring powdered microcapsule, Bouquerand clearly meets the requirements of the present claims.
Regarding claim 37, Bouquerand teaches that the particles can have a range of mean particles sizes from 20µm to 2200 µm(table 1) depending on the method of production. As particle size can be controlled via known methods in the art, it would have obvious to adjust the particle size and amount of each fraction depending on the nature of the encapsulated flavor.
Regarding claim 39, Bouquerand teaches that the powdered microcapsule is a coacervated microcapsule(para 21).
Regarding claim 39 and 40, Bouquerand teaches that the particles can have a range of mean particles sizes from 20µm to 2200 µm(table 1) depending on the method of production. Bouquerand teaches an average particle size of 400 microns(example 6). One of ordinary skill in the art would expect an average particle size of 400 microns to have some particles above and below the average size. For example, a size of 500 microns as expected with a typical particle size distribution.
With particle sizes of 300-500 microns(average size of 400 microns), the composition would contain a fraction of particles of less than 500 microns, and a fraction of 500-800 microns as claimed. Each fraction would have a different mesh size since each fraction has a different size range.
Furthermore, as particle size can be controlled via known methods in the art, it would have obvious to adjust the particle size depending on the nature of the encapsulated flavor. Therefore, each fraction would “exclude larger particle sizes” as it only has particle sizes in the intended size range.
Response to Arguments
Applicant's arguments filed 7/10/2025 have been fully considered but they are not persuasive.
The applicant argues that Bouquerand teaches away from large particles of 500-800 microns(see para 52). However, Bouquerand further teaches a free flowing powder with a larger average particle size range of 400 microns(example 6). Therefore, it is apparent that a larger particle size of 400 microns and produces a functional product, even if Bouquerand prefers a lower particle size.
The applicant argues that a particle size of 500-800 microns provides unexpected results in terms of high flavor load of 25%. However, Bouquerand already teaches an even higher flavor load of 35%(see table 1, example 6).
Furthermore, the present claims do not require two separate fractions, as in fractions that are not mixed together. The broadest, reasonable interpretation of the term “two distinct fractions” is that the composition has particle sizes from 500 to 800 microns and also particle sizes either lower than 500 microns and/or higher than 800 microns. As such, the claimed composition comprises a mixing of particle sizes and does not require the fractions to be separate.
Bouquerand teaches that the particles can have a range of mean particles sizes from 20µm to 2200 µm(table 1) depending on the method of production. Bouquerand teaches an average particle size of 400 microns(example 6). One of ordinary skill in the art would expect an average particle size of 400 microns to have some particles above and below the average size. For example, a size of 500 microns as expected with a typical particle size distribution.
With particle sizes of 300-500 microns(average size of 400 microns), the composition would contain a fraction of particles of less than 500 microns, and a fraction of 500-800 microns as claimed. Furthermore, as particle size can be controlled via known methods in the art, it would have obvious to adjust the particle size depending on the nature of the encapsulated flavor.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/KATHERINE D LEBLANC/ Primary Examiner, Art Unit 1791