Ex Parte Barkalow et alDownload PDFPatent Trial and Appeal BoardSep 19, 201311673890 (P.T.A.B. Sep. 19, 2013) 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. 11/673,890 02/12/2007 David G. Barkalow 1391/1775 3585 28455 7590 09/19/2013 WRIGLEY & DREYFUS 28455 BRINKS HOFER GILSON & LIONE P.O. BOX 10395 CHICAGO, IL 60610 EXAMINER MUKHOPADHYAY, BHASKAR ART UNIT PAPER NUMBER 1793 MAIL DATE DELIVERY MODE 09/19/2013 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE _________ BEFORE THE PATENT TRIAL AND APPEAL BOARD __________ Ex parte DAVID G. BARKALOW, MIGUEL A. SOTO, and MICHAEL A. REED __________ Appeal 2012-009610 Application 11/673,890 Technology Center 1700 ___________ Before ADRIENE LEPIANE HANLON, MICHAEL P. COLAIANNI, and JAMES C. HOUSEL, Administrative Patent Judges. HANLON, Administrative Patent Judge. DECISION ON APPEAL Appeal 2012-009610 Application 11/673,890 2 A. STATEMENT OF THE CASE The Appellants have filed an appeal under 35 U.S.C. § 134 from an Examiner’s decision rejecting claims 1-8 and 17-19, which are all of the pending claims. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. The subject matter on appeal is directed to an aqueous sugarless syrup for use in a chewing gum product. Claim 1, reproduced below from the Claims Appendix of the Appeal Brief dated December 15, 2011 (“App. Br.”), is representative of the subject matter on appeal. 1. An aqueous syrup for use in chewing gum comprising, on a dry basis: a) greater than about 98% polyols, of which i) about 50% to about 90% is sorbitol, ii) about 3% to about 30% is maltitol, iii) about 2% to about 20% are polyols, other than sorbitol and maltitol, with a degree of polymerization (DP) of 1 or 2, and iv) less than about 20% are polyols with a DP of 3 or greater; and b) less than about 1.0% plasticizing agent selected from glycerin, propylene glycol and mixtures thereof. The Appellants seek review of the rejection of claims 1-8 and 17-19 under 35 U.S.C. § 103(a) as unpatentable over the combination of Reed1 and Hopkins.2 B. ISSUE 1 WO 97/01962 published January 23, 1997. 2 US 4,271,197 issued June 2, 1981. Appeal 2012-009610 Application 11/673,890 3 The dispositive issue in this appeal is whether the Examiner reversibly erred in concluding that it would have been obvious to one of ordinary skill in the art to reduce the amount of plasticizer in the aqueous syrup of Reed to an amount within the claimed range (i.e., less than about 1.0%) in view of the teachings in Hopkins. B. DISCUSSION Reed discloses an aqueous syrup comprising sorbitol, a plasticizing agent, and an anticrystallization agent. Reed 3, ll. 30-33. Reed discloses the syrup may be mixed with gum base and additional chewing gum ingredients to produce a chewing gum composition. Reed 4, ll. 4-14. The Examiner finds Reed does not teach that the syrup comprises less than 1.0% plasticizer as recited in claim 1. Ans. 6.3 Instead, Reed discloses that the aqueous syrup contains, on a dry basis, at least about 15% of a plasticizing agent selected from glycerin, propylene glycol, and mixtures thereof. Reed 4, ll. 22-26. Reed discloses the main function of the plasticizing agent “is to keep the syrup, with high solids level, fluid at room temperature.” Reed 8, ll. 11-13; see also App. Br. 14. Hopkins, on the other hand, discloses a chewing gum composition comprising, inter alia, gum base, sorbitol, hydrogenated starch hydrolysate, and glycerin. Hopkins 6, ll. 26-43. The Examiner finds Hopkins teaches that glycerin is optional and hydrogenated starch hydrolysate may be used as a substitute for a plasticizer in the disclosed composition. The Examiner concludes that it would have been obvious to one of ordinary skill in the art to substitute hydrogenated starch hydrolysate for the plasticizer in the aqueous syrup of Reed and reduce the amount of plasticizer to less than 1.0% based on the teachings in Hopkins. Ans. 6. 3 Examiner’s Answer dated April 11, 2012. Appeal 2012-009610 Application 11/673,890 4 The Appellants argue: A person of ordinary skill in the art would not consider substituting the hydrogenated starch syrup of Hopkins for the plasticizer in Reed because the plasticizer in Reed was needed to keep the syrup fluid at room temperature, and there is no teaching in Hopkins that a hydrogenated starch hydrolysate syrup could provide low viscosity at room temperature at the moisture levels of the syrup in Reed. Since the problem for which Reed uses the high levels of glycerin or propylene glycol would not be known to be solved by using the hydrogenated starch hydrolysates of Hopkins, this would destroy the motivation to make the substitution. App. Br. 15-16. In response, the Examiner contends that both Reed (p. 11, ll. 20-25) and Hopkins (col. 6, ll. 50-65) use hydrogenated starch hydrolysates and sorbitol in their respective compositions. Ans. 9-10. However, this fact alone does not support the Examiner’s conclusion of obviousness. According to the portion of Reed relied on by the Examiner, Reed does not add hydrogenated starch hydrolysate to the aqueous sorbitol syrup. Rather, Reed adds hydrogenated starch hydrolysate to the gum formulation along with the aqueous sorbitol syrup. Reed 11, ll. 20-27. Similarly, Hopkins adds hydrogenated starch hydrolysate to a gum base. See, e.g., Hopkins, col. 5, l. 59-col. 3 (hydrogenated starch hydrolysate is added to a melted gum base, heated at, for example 160º - 170º F.). On this record, the Examiner has not directed us to any evidence establishing that the hydrogenated starch hydrolysates disclosed in Hopkins would have been expected to keep the aqueous sorbitol syrup of Reed fluid at room temperature. For this reason, we will not sustain the Examiner’s § 103(a) rejection. Appeal 2012-009610 Application 11/673,890 5 D. DECISION The decision of the Examiner is reversed. REVERSED tc Copy with citationCopy as parenthetical citation