Ex Parte Gudas et al

Board of Patent Appeals and Interferences

May 22, 2008

10280688 (B.P.A.I. May. 22, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte VICTOR V. GUDAS,
MICHAEL A. REEED,
PHILIP G. SCHNELL,
HENRY T. TYRPIN,
MICHAEL J. GREENBERG
and FRED R. WOLF
____________

Appeal 2007-4149
Application 10/280,688
Technology Center 1700
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Decided: May 22, 2008
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Before EDWARD C. KIMLIN, JEFFREY T. SMITH, and
KAREN M. HASTINGS, Administrative Patent Judges.

KIMLIN, Administrative Patent Judge.

ORDER REMANDING TO THE EXAMINER

This is an appeal from the final rejection of claims 1-27 and 30-34.
Claim 1is illustrative:

Appeal 2007-4149
Application 10/280,688

1. A method of producing a chewing gum product containing a
physically-modified bitterness inhibitor in order to control the release rate of
the bitterness inhibitor comprising the steps of:

a) mixing a quantity of a bitterness inhibitor with a modifying agent
in such a way so as to produce said physically-modified bitterness inhibitor,
the bitterness inhibitor being selected from the group consisting of glucono
delta lactone; sodium gluconate, potassium gluconate; neodiosmin;
cyclotetradecenones, sclareolide; natural soy flovor; N-sulfomethyl-N-
arylureas; sodium, potassium and ammonium salts of ferulic acid and caffeic
acid; 2, 4-dihydroxyl benzoic acid; ferulic acid; sodium ascorbate; sodium
acetate; sodium glycinate; calcium glyerolphosphate; sodium
glycerolphosphate and mixtures thereof;

b) adding a quantity of the physically-modified bitterness inhibitor
and a bitter medicament to a chewing gum formulation to provide a
bitterness inhibitor level in the chewing gum formulation of from about
0.5% to about 8.0%.

As evidence of obviousness, the Examiner relies upon asserted
admitted prior art and the references cited at page 3 of the Answer.
Appellants' claimed invention is directed to method of producing a
chewing gum comprising a bitter substance, such as a medicament, and a
bitterness inhibitor selected from the Markush group recited in independent
claims 1 and 18.1 The bitterness inhibitor is modified to control its release
rate in the chewing gum.
The appealed claims stand rejected under 35 U.S.C. § 103(a) as
follows:
(a) claims 1-22, 26, 27, and 32 over Patel in view Cherukuri,
(b) claims 1-22, 26, 27, and 32 over Patel in view of Suzuki;

1 Independent claims 24 and 25 do not recite any particular bitterness
inhibitor.
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Application 10/280,688

(c) claims 23-25, 30, and 31 over Patel in view of Cherukuri or
Suzuki in view of Yatka, and
(d) claims 33 and 34 over Patel in view of Cherukuri or Suzuki.
Patel, the "primary" reference in all the rejections under 35 U.S.C.
§ 103(a), discloses chewing gum comprising encapsulated salts as a
bitterness inhibitor for mint type favors that are also contained in the
chewing gum. As recognized by the Examiner, Patel does not disclose any
of the specifically claimed bitterness inhibitors. To make up for this
deficiency in Patel, the Examiner cites page 2 of Appellants' Specification
for an asserted admission that many of the claimed bitterness inhibitors were
well known in the art (see Ans. 4, first two complete sentences). The
Examiner draws the legal conclusion that it would have been obvious for
one with ordinary skill in the art to substitute one of the presently claimed,
admittedly well known bitterness inhibitors for the encapsulated salts of
Patel.
Appellants, in their Reply Brief, expressly state that they "do not
admit on page 2 that any bitterness inhibitors are 'well known'" (Reply Br.,
sentence bridging pages 2-3). Appellants go on to state that "[p]age 2
merely points out some ideas disclosed in previously published patents
where certain items were suggested as useful to reduce bitterness of other
compounds in specific applications" (Reply Br., 3, first para.). Appellants
further state that "[c]ertainly Applicants make no admission that any of the
items are well known bitterness inhibitors" (id.).
In the face of Appellants' express repudiation of any admitted prior art
asserted by the Examiner, and the Examiner's reliance on this assertion as
essential to his conclusion of obviousness, the present appeal is not ripe for
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Application 10/280,688

our decision. Significantly, the Examiner did not respond to this argument
of Appellants which does not appear in the principal Brief. The Examiner
only noted and entered the Reply Brief.
Accordingly, this application is remanded to the Examiner so that he
may include in the statement of the § 103 rejections the specific prior art
cited at page 2 of Appellants' Specification that is relied upon as evidence of
the obviousness of adding the specifically claimed bitterness inhibitors in the
chewing gum of Patel. The Examiner should consider prior art that teaches
any of the claimed compounds as bitterness inhibitors, while also
considering whether any of the claimed compounds were known to be
bitterness inhibitors for medicaments or similar materials. Again, we must
emphasize that not all the claims on appeal recite specific bitterness
inhibitors (see claims 24 and 25).
This Remand to the Examiner pursuant to 37 C.F.R. § 41.50(a)(1) is
made for further consideration of a rejection. Accordingly, 37 C.F.R.
41.50(a)(2) applies if a Supplemental Examiner's Answer is written in
response to this remand by the Board.
This application, by virtue of its Aspecial@ status, requires immediate
action by the examiner. See MPEP ' 708.01(d). The Board of Patent
Appeals and Interferences must be informed promptly of any action
affecting the appeal in this case, including reopening of prosecution,
allowance and/or abandonment of the application.
REMANDED

cam
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Appeal 2007-4149
Application 10/280,688

WRIGLEY & DREYFUS
BRINKS, HOFER GILSON & LIONE
P O BOX 10395
CHICAGO, IL 60610
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