Ex Parte Andersen et al

Patent Trial and Appeal Board

May 31, 2016

10543721 (P.T.A.B. May. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
10/543,721 0712712005 Lone Andersen
24126 7590 06/02/2016
ST ONGE STEW ARD JOHNSTON & REENS, LLC
986 BEDFORD STREET
STAMFORD, CT 06905-5619
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
05198-P0018A 2513
EXAMINER
DEES, NIKKI H
ART UNIT PAPER NUMBER
1791
NOTIFICATION DATE DELIVERY MODE
06/02/2016 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):
patentpto@ssjr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte LONE ANDERSEN, HELLE WITTORFF, and VIBEKE NISSEN
Appeal2014-008514
Application 10/543,721
Technology Center 1700
Before PETER F. KRATZ, JEFFREY T. SMITH, and JAMES C. HOUSEL,
Administrative Patent Judges.
KRATZ, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner's final rejection of claims 1---6, 12, 13, 16-19, 22, 23, 26-28, 30-
33, 37-39, 41, 44, and 47-50. We have jurisdiction pursuant to 35 U.S.C. §
6.
Appellants' claimed invention is directed to a chewing gum tablet and
a method of manufacturing same. The tablet incudes compressed gum base
containing granulates in at least one module, wherein the granulates include
at least one biodegradable polymer.
Claim 1 is illustrative and reproduced below:
1. Chewing gum tablet comprising at least two individual
coherent chewing gum modules,
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Application 10/543,721
at least one of said chewing gum modules comprising
compressed gum base granules,
wherein said compressed gum base granules comprise at
least one biodegradable polymer,
wherein said chewing gum tablet comprises at least two
different polymers and
wherein the chewing gum tablet comprises a gum base
content of at least 15% by weight of the tablet.
The Examiner relies on the following prior art references as evidence
in rejecting the appealed claims:
Beringer
Pellico
Li
us 4, 139,589
us 4,564,519
us 6,153,231
Feb. 13, 1979
Jan. 14, 1986
Nov. 28, 2000
Bonnie Alter, Chewing Gum Goes Organic and Biodegradable (2009)
h1112;li~~YWJI~-~J:mgg~L9-Q_migr~-~-n_:JQQ_difh~~yj_ng::g11m::_g_Q~-~=-QfE9--Tiif.-and­
biode gradab le .html.
Douglas P. Fritz, Using Confectionery Equipment to Manufacture Chewing
r; h II h ' -r l'"h 0 • vum, ~5ttp:11v\1\T..f\"l~tree~5l1gger~com/_gree:r1=i·ooG/c~5evv1n_g=g_l1m=gc>es=c>rgan1c=
and-biodegradable. html.
Parrafin, wax, Princeton University, https://www.princeton.edu/-
achaney /tmve/wiki 1 OOk/terms/wax.html.
The Examiner maintains the following grounds of rejection: 1
Claims 1--6, 12, 13, 16-19, 22, 23, 26-28, 30-33, 37-39, 41, 44, and
47-50 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over
Beringer in view of Li.
1 The Examiner withdrew an anticipation rejection and several obviousness
rejections pertaining to certain dependent claims (Ans. 6).
2
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Claims 13, 16, 17, and 26 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Beringer in view of Li and Pellico.
Claims 1---6, 12, 13, 16-19, 22, 23, 26-28, 30-33, 37-39, 41, 44, and
47-50 stand provisionally rejected on the ground of non-statutory
obviousness-type double patenting over claims 1, 3, 5, 6, 8-11, 14--16, 19-
23, 25, and 28-30 of co-pending U.S. Application No. 10/543,791 in view of
certain other prior art references as set forth in the Non-Final Office Action
in two separately stated rejections (i-fi-f 52, 54).2
Claims 1---6, 12, 13, 16-19, 22, 23, 26-28, 30-33, 37-39, 41, 44, and
47-50 stand provisionally rejected on the ground of non-statutory
obviousness-type double patenting claims over claims 1, 2, 4--15, 17-30,
32-37, 39--42, 44, 46--49, 51-53, and 55-73 of co-pending U.S. Application
No. 10/520,786 alone or in view of certain other prior art references as set
forth in the Non-Final Office Action in three separately stated rejections (i-fi-f
56-58). 3
As for the provisional obviousness type double patenting (ODP)
rejections, Appellants do not present arguments respecting these rejections
in the Appeal Brief. Accordingly, we affirm the ODP rejections.
Concerning the rejections under 35 U.S.C. § 103(a) and after review
of the opposing positions articulated by Appellants in the Briefs and the
2 The provisional non-statutory obviousness-type double patenting
rejections of certain claim of this application over the claims of U.S.
Application No. 11/197,583 in view of certain prior art references as set
forth in the Non-Final Office Action in two separately stated rejections are
moot in view of the current abandoned status of U.S. Application No.
11/197,583 (i1i153, 54).
3 See Ans. 2.
3
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Application 10/543,721
Examiner in the Non-Final Otlice Action and in the Answer taking into
account the evidence of obviousness adduced by the Examiner in light of the
countervailing Declaration evidence proffered by Appellants, we determine
that Appellants' arguments and evidence are insufficient to outweigh the
evidence of obviousness adduced by the Examiner. Thus, Appellants have
not identified reversible error in the Examiner's obviousness rejection. In re
Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011).
Accordingly, we affirm the stated obviousness rejections for
substantially the fact findings and the reasons set forth by the Examiner in
the non-Final Office Action4 and in the Examiner's Answer. We offer the
following for emphasis only.
Concerning the first stated obviousness rejection, Appellants argue the
rejected claims together as a group and present substantially the same
argument with respect to independent claims 1 and 50. Accordingly, we
select claim 1 as the representative claim on which we focus in deciding this
appeal as to this rejection.
As more fully set forth in the Examiner's Answer and in the non-Final
Rejection, the Examiner has determined that Beringer teaches or suggests a
chewing gum tablet including at least two coherent modules (three-layer
tablet or multi-zone tablet) wherein the multi-layer tablet can be
manufactured using gum base-containing granulate according to the Figure
10 embodiment including a middle layer containing chewing gum base
granules and outer layers comprising a sweetener and wherein the multi-
zone tablet according to Example 12 (see Figure 11 embodiment) comprises
4 Electronically delivered August 16, 2013.
4
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a gum base granulate that is mixed with a tablet based granulate (Ans. 2--4,
6-25; Non-Final Office Action 8-10; see Beringer; abstract; col. 1, 11. 7-12;
col. 2, 11. 3---62, col. 3, 11. 40-44, col. 6, 1. 30-col. 7, 1. 26; col. 7, 1. 46-col.
9, 1. 26; Examples 1-12; Figs. 1, 10, 11). The Examiner has determined that
each of these embodiments taught or suggested by Beringer provide for a
tablet structure that corresponds to Appellants' tablet structure having at
least two separately cohered chewing gum modules5 with at least one
module comprising compressed gum base containing chewing gum granules
as required by representative claim 1 (id.).
As for the at least 15 weight percent gum base content of the tablet as
required by claim 1, the Examiner has determined/ calculated that the
Examples of Beringer are directed to multi-layered gum tablet compositions
that provide for a tablet gum base content that corresponds to the claimed
amount; hence the Examiner has determined that the use of an amount of
gum base in the tablets of Beringer that corresponds to the claimed amount
would have been taught or suggested by Beringer to one of ordinary skill in
the art (Ans. 3, 8-15). 6
5 The claim term "module" is not defined in the subject Specification in a
manner so as to exclude a zone of the multi-zone tablet of Example 12, such
as a zone comprising gum granulate. While the claim term "module" may
be comprised of a layer, it is not limited thereto (Spec. 48, 11. 1-3).
Moreover, the Specification describes chewing modules that "may typically
be made on the basis of compressed gum base granulates" (Spec. 21, 11. 4--
5). Appellants disclose that "[g]um base granulates may be manufactured
according to conventional methods" (Spec. 21, 11. 25-26).
6 Appellants do not dispute the Examiner's calculation concerning the 24%
by weight chicle (gum base) content of the Example 1 tablet of Beringer
(Non-final Office Action 4; Ans. 3; see generally App. Br.).
5
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Concerning the claim 1 requirement that the compressed gum base
includes at least one biodegradable polymer and that the gum tablet includes
at least two different polymers, the Examiner further relies on Li for
teaching or suggesting the use of at least one biodegradable polymer which
may be combined with other polymers as at least part of a gum base for a
granulated, compressed chewing gum product and maintains that one of
ordinary skill in the art would have been led to employ biodegradable
polymers as a gum base ingredient as an addition to or substitute for the
natural gum base chicle component that is used in the chewing gum of
Beringer with a reasonable expectation of success in providing a suitable
tableted chewing gum product with increased biodegradability (Ans. 3--4; Li,
col. 2, 11. 10-13; col. 6, 11. 58---61).
In light of the above and for reasons more fully set forth by the
Examiner in the Answer, a principal argument raised by Appellants-that is,
that Beringer does not teach or suggest a chewing gum tablet having
elements (1) and (iv) of appealed claim 1; that is "at least two individual
coherent chewing gum modules, at least one of which comprises
compressed gum base-containing chewing gum granules", wherein "the
chewing gum tablet comprises a gum base content of at least 15% by weight
of the tablet"-lacks persuasive merit (App. Br. 24--25).
In particular and concerning the Examiner's application of the Figure
11 (Example 12) embodiment of Beringer to these claimed features,
Appellants argues that this multi-zone tablet of Beringer comprises a single
module, rather than a tablet comprising at least two individual coherent
chewing gum modules as required by representative claim 1 (App. Br. 45-
48). However, Appellants have not established that one of ordinary skill in
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the art would interpret the claim term "module" when read in light of the
subject specification to exclude irregularly arranged and cohered chewing
gum granules of a tablet as being separate modules such as would be
expected to be found in the multi-zone tablet of the Figure 11 (Example 12)
embodiment of Beringer as maintained by the Examiner (Ans. 24--25).
Consequently and for reasons expressed above and in the Answer,
Appellants' arguments are not persuasive of substantive error in the
Examiner's obviousness rejection given our claim construction of the claim
term "module".
Even if we found, arguendo, that the multi-zone tablet of the Figure
11 (Example 12) embodiment of Beringer only includes a single module as
contended by Appellants in their claim construction argument, this claim
construction argument is unavailing as to the Examiner's further application
of Beringer to the claimed subject matter (in combination with Li) based on
the multi-layer tablet taught and suggested therein in the Figure 10
embodiment, which tablet includes at least two modules (layers). 7
Concerning the Examiner's alternative application of Beringer based
on the Figure 10 embodiment and while unnecessary to the Examiner's
obviousness determination in light of the Example 12 (Figure 11) disclosure
of Beringer discussed above, Appellants' argument, as contended to be
buttressed by the Declaration evidence, is not persuasive of reversible error
in the Examiner's alternative application of the Figure 10 embodiment in the
obviousness rejection for reasons as articulated by the Examiner (Ans. 2--4,
6-24 ). In particular, much of Appellants' argument and Declaration
7 The claim term "module" may comprise a layer (Spec. 48, 11. 1-3).
7
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evidence centers on Appellants' position that the Examiner misinterprets
Beringer as to the chewing gum formulation that the Examiner has
determined one of ordinary skill in the art would have employed in forming
a multi-layer chewing gum tablet in accordance with the Figure 10
embodiment; that is, a chewing gum formula as is exemplified in the
examples of Beringer, which as determined by the Examiner would have
included at least 15 weight percent gum base content for the chewing gum
tablet, as would have been recognized by one of ordinary skill in the art as
being applicable for formulating the gum composition for the Figure 10
embodiment tablet manufacture of Beringer according to the Examiner (see
generally App. Br. and Reply Br.).
Significantly and notwithstanding the multiple Declarations furnished
by Appellants and the lengthy presentation as to how Appellants believe one
of ordinary skill in the art would have interpreted Beringer, Appellants have
not directed our attention in the Appeal Brief to any test results or other
evidence that indicates why one of ordinary skill in the art would have
manufactured tablets according to the Figure 10 embodiment of Beringer in
a manner such that the multi-layer tablets would have been restricted to a
gum base content that is less than 15 weight percent; that is, a gum base
content weight percent that lies outside the 15 % or more weight percent
limitation of representative claim 1 particularly given the example
compositions of Beringer that include gum base weight percent within the
claimed weight percent range of gum base as determined by the Examiner. 8
8 Appellants define "gum base" as a term that "refers in general to the water-
insoluble part of the chewing gum which typically constitutes 10 to 90% by
weight including the range of 15-50% by weight of the total chewing gum
8
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With regard to the latter limitation, Appellants do not persuasively
articulate why one of ordinary skill in the art would not have included any of
the known biodegradable polymers ( elastomers) as part of the gum base of
Beringer for its Figure 10 embodiment in light of the additional teachings of
Li with respect to employing such polymers in a chewing gum for reasons
set forth by the Examiner (Ans. 3--4, 8-24; Li, col. 1, 11. 33-54; col. 2, 11. 8-
15; col. 3, 11. 22--44). In particular, we observe that representative claim 1 is
not limited as to any particular biodegradable polymer(s) and/or the amount
of the gum base that comprises biodegradable polymers.9 For reasons set
forth above and for reasons articulated by the Examiner, the cited
Declarations by Dr. Jesper Neergaard fail to shift the weight of the evidence
in Appellants' favor upon reconsideration anew in light of all of the relevant
evidence (App. Br. Evidence Appendix). 10
In the Declaration executed on April 29, 2011 (Deel. I), Dr. Neergaard
opines that the granule plastic mass of Examples 6 through 12 of Beringer
are suitable for a single layer multi-zone tablet of Beringer and would yield
non-sticky granules, Examples 1 through 5 of Beringer address a pre-formed
disc embodiment of Beringer, and none of the compositions of Examples 1-
12 of Beringer would be suitable for the Figure 10 multi-layer tablet forming
embodiment of Beringer (Deel. I i-fi-1 6-11 ). Dr. N eergaard further opines
formulation" (Spec. 21, 11. 7-10). Appellants acknowledge that "[g]um base
granulates may be manufactured according to conventional methods" (Spec.
21, 1. 25).
9 Appellants disclose that biodegradable polymers are polymers that "are
capable of undergoing, a physical, chemical and/or biological degradation
.... "(Spec. 38, 11. 10-19).
10 Appellants acknowledge the lack of reliance on a previously filed
Declaration as evidence of unexpected results in this appeal (Reply Br. 3).
9
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that chewing gum tablets require new chewing gum formulations and that
traditional chewing gum compositions are not generally applicable for use in
manufacturing chewing gum tablets (Deel. I i-fi-f 12-15).
In the Declaration executed on June 19, 2012 (Deel. II), Dr.
Neergaard reports that attempts at manufacturing three-layered tablets via
the Figure 10 technique of Beringer while using a plastic mass granulate
composition in accordance with Example 6 of Beringer did not successfully
yield useful three-layer chewing gum tablets because of poor mechanical
properties and that similar failures would be expected for the granulate
plastic mass compositions of Examples 7-11 of Beringer (Deel. II i-fi-1 4, 5,
Exhibit A).
Appellants contend that the submitted Declaration evidence
substantiate or buttress their argument that Beringer would not have led one
of ordinary skill in the art to a multi-layer product gum tablet formed by
employing granulates in making gum base-containing layer(s) by employing
a gum base composition as required by representative claim 1 when using
the Figure 10 embodiment taught by Beringer for making the multiple layer
tablet and using a gum composition in accordance with the Examples of
Beringer, as modified by Li, for the gum base-containing plastic layer. In
this regard and contended to be consistent with the Declaration evidence,
Appellants argue that Examples 2 through 12 of Beringer, as well, as
Example 1, are directed to other embodiments of Beringer, not the Figure 10
embodiment, and an ordinarily skilled artisan would not have modified the
Figure 10 embodiment to employ compositions as set forth in the Examples
of Beringer for a middle plastic granular layer as they would have been
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unsuitable for forming a gum tablet via the Figure 10 embodiment as
substantiated by the Declarations of Dr. Neergaard.
Contrary to the argument and evidence furnished by Appellants,
however, we concur with the Examiner's obviousness conclusion because
the applied prior art taken as a whole outweighs the evidence furnished by
Appellants for the reasons articulated by the Examiner (Ans. 2--4, 6-25). In
particular, we concur with the Examiner that Beringer teaches using a
granulated plastic mass in the Figure 10 embodiment and would have
reasonably suggested to one of ordinary skill in the art to use a plastic mass
for granulation like the plastic masses described in the examples, such as
Example 6 (Ans. 13-24). In this regard, we further observe that Dr.
Neergaard's attempt at manufacturing tablets by duplicating the Figure 10
method of Beringer fall short by cooling the plastic mass to -7 5 °C for the
grinding/granulation given that Beringer, in describing the Figure 10
embodiment for making a multi-layer tablet using granules for the layers,
teaches that granulation of the chewing gum mass should be conducted at a
temperature between - 20 to + 10°C (Deel. II, Exhibit A; Beringer, col. 6, 11.
56-59; Example 6). Moreover, the ingredients employed in Example 6 of
Beringer were not duplicated, as noted in the plastic mass preparation
description provided in the Declaration, and merely stating that the relatively
small amounts of the ingredients used by Beringer that were omitted from
the duplication effort for lack of availability were unimportant fails to
adequately address the effect of this formulation duplication deviation (Deel.
II, Exhibit A). Nor have Appellants established that one of ordinary skill in
the art would not have been able, through routine experimentation, to
perform adjustments to the gum composition (such as by adding additional
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known tablet binders, etc.) and adjust relevant process conditions so as to
yield tablets having acceptable physical characteristics using the Figure 10
embodiment of Beringer. Consequently, Appellants have not carried the
burden of production in presenting evidence sufficient to establish Beringer
as being unworkable for the Figure 10 embodiment. 11
In this regard, Beringer expressly teaches that "[t]he various layers of
tablet mass and various elements or layers of plastic mass of one and the
same tablet may have different substances mixed in with them and/or be
differently coloured" (Beringer, col. 4, 11. 8-12). Moreover, Beringer
expresses a recommendation for proceeding with using granulate for the
plastic mass just as with the tablet mass (Beringer, col. 2, 11. 5-19). Beringer
describes the Figure 10 embodiment as being suitable for making a multi-
layer tablet in accordance with Figure 1 and Beringer describes
compositions in Examples 1 through 11 for the three-layer tablet according
to Figure 1 (col. 6, 11. 30-35; col. 7, 1. 48-col. 9, 1. 17). In addition,
Beringer describes placing the granulate made in Example 6 from plastic
mass in a mold not in a mixer as occurs in Example 12 and the Figure 11
single layer tablet embodiment. Thus, we disagree with Appellants'
contention that Beringer would have discouraged one of ordinary skill in the
art from employing compositions, such as identified and disclosed in
Examples 1 through 11 of Beringer as a plastic mass composition for use in
the Figure 10 embodiment of Beringer.
Consequently, Appellants have not identified reversible error in the
Examiner's first state obviousness rejection and the preponderance of the
11 Indeed, Appellants acknowledge that they are not attempting to establish
that individual embodiments of Beringer are non-enabling (Reply Br. 3--4).
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evidence supports the Examiner's fact findings and reasoning in maintaining
the rejection.
As for the Examiner's separate obviousness rejection as to certain
dependent claims, Appellants rely on the arguments presented against the
base rejection pertaining to representative claim 1 and do not furnish
additional argument as to this ground of rejection (App. Br. 49-50).
For the reasons set forth above and as stated by the Examiner in the
Answer, it follows that we shall sustain the Examiner's obviousness
rejections.
CONCLUSION/ORDER
The Examiner's decision to reject the appealed claims is affirmed.
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
13