Ex Parte Andersen et alDownload PDFPatent Trial and Appeal BoardJun 30, 201613739921 (P.T.A.B. Jun. 30, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 131739,921 0111112013 Rita Bpge Andersen 24126 7590 07/05/2016 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 - P0006B 1030 EXAMINER DEES, NIKKI H ART UNIT PAPER NUMBER 1791 NOTIFICATION DATE DELIVERY MODE 07/05/2016 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 Ex parte RITA B0GE ANDERSEN, DORTHE SCHACK.INGER BOESEN, NIELS RA VN SCHMIDT, and VIBEKE NISSEN Appeal2015-003362 Application 13/739 ,921 Technology Center 1700 Before BEYERL YA. FRANKLIN, CHRISTOPHER C. KENNEDY, and MONTE T. SQUIRE, Administrative Patent Judges. FRANKLIN, Administrative Patent Judge. DECISION ON APPEAL Appellants seek our review under 35 U.S.C. § 134 of the Examiner's decision rejecting claims 1-12, 14, 15, 17, 18, and20. Wehavejurisdiction over the appeal under 35 U.S.C. § 6(b ). STATEMENT OF THE CASE Claim 1 is illustrative of Appellants' subject matter on appeal and is set forth below: Appeal2015-003362 Application 13/739,921 1. A compressed chewing gum tablet compnsmg compressed gum base granules and chewing gum additives, wherein the compressed gum base granules are composed of: a first plurality of gum base granules consisting of a water insoluble gum base, said first plurality of gum base granules containing no flavor and no active ingredient; and a second plurality of gum base granules consisting of a water insoluble gum base and at least one of a flavor or an active ingredient. THE REJECTIONS 1. Claims 1-10, 12, 14, 15, 17, 18 and20 are rejected under35 U.S.C. § 103(a) as being patentable over Fisher (US 4,405,647; iss. Sept. 20, 1983) in view of Cherukuri (US 4,352,822; iss. Oct. 5, 1982). 2. Claim 11 is rejected under 35 U.S.C. §103(a) as being patentable over Fisher in view of Cherukuri as applied to claim 1 above, and in further view ofLichtneckert (US 3,901,248; iss. Aug. 26, 1975). 3. Claims 1-12, 14, 15, 17, 18 and 20 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1, 3-5, 8-12, 14--19, 28-31, 34 and 35 of copending Application No. 10/520,173. 1 4. Claims 1-12, 14, 15, 17, 18 and 20 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-16, 17-29 and 31 of copending Application No. 13/352,211.2 1 Application No. 10/520, 173 was abandoned on February 18, 2016. 2 Application No. 13/352,211 has been assigned Appeal No. 2014--007824. 2 Appeal2015-003362 Application 13/739,921 5. Claims 1-12, 14, 15, 17, 18 and 20 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1, 2 and 4--17 of copending Application No. 12/399, 192. 3 ANALYSIS We select claim 1 as representative of the claims on appeal, based upon Appellants' presented arguments. 37 C.F.R. § 41.37(c)(l)(iv) (2014). We affirm the rejections for the reasons provided by the Examiner in the record, and add the following for emphasis. Rejections 1 and 2 Appellants argue that the applied art does not disclose or suggest that a flavor or active ingredient be included in some, but not all, of the granules forming a compressed chewing gum tablet. Appeal Br. 12. Appellants detail three possible scenarios taught by Cherukuri, and argues that either all of the gum base portions will include flavor, or all of the gum base portions will be free of flavor, and Appellants refer to the Neergaard Declaration in support thereof. Appeal Br. 13-14. Appellants submit that one skilled in the art would find no motivation to use the disclosure of Cherukuri to apply a first plurality of gum base granules without a flavoring, and combine this first plurality of gum base granules with a second plurality of gum base granules with a flavor or an active ingredient, as claimed in the present claims. Appeal Br.14. Appellants submit that thus there is no motivation to pursue the route of the damed invention. Appeal Br. 16. 3 Application No. 12/399,192 was abandoned on May 3, 2016. 3 Appeal2015-003362 Application 13/739,921 In response, the Examiner states that the presence or absence of flavoring in the gum base portion of the chewing gum is deemed obvious where the prior art teaches that the flavor may be provided in the water- soluble and/or water-insoluble portions of the chewing gum, as in the instant case. Ans. 8-9. In other words, it is the Examiner's position that because Cherukuri teaches that flavors may be included in the gum base and/or soluble portions of the chewing gum, this is a suggestion of the absence of flavors in the gum base or in the soluble portions, depending upon the option selected. Hence, it is the Examiner's position that Cherukuri suggests the presence or absence of flavorings in gum portions, as desired based upon certain teachings therein (discussed, supra). The Examiner also states that to have omitted flavor from a portion of the gum base, and included flavor in a second portion of the gum base, is not considered to have provided any unexpected effects with regard to the compressed chewing gum tablet. Ans. 9. Absent evidence of unexpected results, we agree with the Examiner's position. With regard to the Neergaard Declaration, Appellants suggest that the Examiner essentially ignored this declaration. Reply Br. 5---6. To the contrary, the Examiner considered this declaration and provided remarks on pages 9-10 of the Final Office Action. On page 9 of the Answer, the Examiner states that the declaration is unsupported by objective evidence. We agree in that no probative evidence is set forth in the Declaration, such as comparative testing, to support the opinions expressed therein. See e.g., Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) ("[T]he Board is entitled to weigh the declarations and conclude that the lack of factual corroboration warrants discounting the opinions expressed in the 4 Appeal2015-003362 Application 13/739,921 declarations.") (citations omitted); In re Etter, 756 F.2d 852, 849---60 (Fed. Cir. 1985) (en bane) (opinion affidavit asserting the reference disclosed obsolete technology was correctly characterized by the board "as merely representing opinions unsupported by facts and thus entitled to little or no weight.") (citing In re Piasecki, 745 F.2d 1468, 1472-73 (Fed. Cir. 1984); In re Rinehart, 531F.2d1048, 1052(CCPA1976)). In other words, it is the Examiner's position that the Declaration has been considered with the understanding that it is opinion set forth therein. We agree with the Examiner that the Declaration is not persuasive for the reasons provided by the Examiner in the record, and add that evidence of unexpected results has not been presented in the record by Appellants. Appellants also argue that they have discovered a multi-string manufacturing process which employs two different pluralities of gum base granules and that only Appellants' disclosure would provide any motivation for one skilled in the art to have included a flavor or active ingredient in some, but not all, of the granules forming a compressed chewing gum tablet Appeal Br. 1 7. We agree with the Examiner's reply made on page 10 of the Answer. Therein, the Examiner points out that the claims are to a compressed chewing gum tablet, not to a method of making such a tablet, and therefore is unpersuaded by such argument. In view of the above, we affirm Rejection 1. Because Appellants rely upon similar arguments relied upon for Rejection 1 (Appeal Br. 18), we also affirm Rejection 2 for the same reasons that we affirmed Rejection 1. 5 Appeal2015-003362 Application 13/739,921 Rejection 3 Because co-pending Application No. 10/520,173 is now abandoned (see footnote 1, supra), this rejection is moot and therefore dismissed. Rejection 4 We affirm this rejection for the reasons expressed by the Examiner on pages 7 and 11 of the Answer. Appellants do not direct us to specific errors in the Examiner's rejection (Appeal Br. 19), and we are thus unpersuaded by Appellants' argument. Rejection 5 Because Application No. 12/399, 192 is now abandoned (see footnote 3, supra), this rejection is moot and therefore dismissed. DECISION Rejections 1, 2, and 4 are affirmed. Rejections 3 and 5 are moot and therefore dismissed. 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). See 37 C.F.R. § 1.136(a). ORDER AFFIRMED 6 Copy with citationCopy as parenthetical citation