Ex Parte Harris et al

Patent Trial and Appeal Board

Sep 28, 2016

13266349 (P.T.A.B. Sep. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/266,349 11/10/2011
23413 7590 09/30/2016
CANTOR COLBURN LLP
20 Church Street
22nd Floor
Hartford, CT 06103
FIRST NAMED INVENTOR
Lawrence William Harris
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.
CDS0219US 7960
EXAMINER
DEES, NIKKI H
ART UNIT PAPER NUMBER
1791
NOTIFICATION DATE DELIVERY MODE
09/30/2016 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):
usptopatentmail@cantorcolbum.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LAWRENCE WILLIAM HARRIS, PAUL D.
SOPER, and GAELLE MADELEINE CLAUDETTE BUFFET
Appeal2015-005042
Application 13/266,349
Technology Center 1700
Before: KAREN M. HASTINGS, A VEL YN M. ROSS, and
BRIAND. RANGE, Administrative Patent Judges.
ROSS, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellants2 appeal under 35 U.S.C. § 134(a) from a rejection of
claims 1, 12, 15-29, 35, 36, 40, 43, and 45. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 In our Decision below, we refer to the Specification filed October 26, 2011
(Spec.), the Final Office Action appealed from mailed January 14, 2014
(Final Act.), the Appeal Brief filed November 10, 2014 (Appeal Br.), and the
Examiner's Answer mailed February 4, 2015 (Ans.).
2 Appellants identify the real party in interest as Intercontinental Great
Brands LLC. Appeal Br. 2.
Appeal2015-005042
Application 13/266,349
STATEMENT OF CASE
The claims are directed to gum base. According to Appellants, the
claimed gum base is "environmentally-friendly chewing gum base [and is]
capable of degrading in a relatively short period of time" and yet is able to
"prolong the shelf life of degradable gum formulations by protecting the
agent present in such formulations which is capable of degrading the
elastomer from exposure to moisture prior to the gum being chewed .... "
Spec. 2-3.
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A gum base comprising:
a) a hydrophilic precursor component compnsmg
hydrolysable units; and b) an elastomer;
wherein the hydrophilic precursor component comprising
hydrolysable units is encapsulated or dispersed in a barrier
material prior to addition to the gum base; wherein the
hydrophilic precursor component comprises a polymer or a salt
thereof, wherein the polymer is selected from a copolymer of
methyl vinyl ether and maleic anhydride and/or a salt thereof;
copolymers of polystyrene and maleic anhydride and/or a salt
thereof; polysuccinimide and/or a salt thereof, and combinations
thereof, copolymers of vinyl pyrrolidone and vinyl acetate and/or
a salt thereof~ and alginates and/or a salt thereot; and
wherein the barrier material is selected from hydrogenated
rape seed oil (HRSO), hydrogenated palm oil, HRSO with
Camauba wax, hydrogenated palm oil with Camauba wax,
microcrystalline wax, or an emulsion of vegetable oil and
mal todextrin.
Claims Appendix at Appeal Br. 10.
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Application 13/266,349
REJECTIONS 3
The Examiner rejects claims 1, 12, 15-29, 35, 36, 40, 43, and 45
under 35 U.S.C. § 103(a) as being unpatentable over Soper4 in view of
Stahl. 5 Final Act. 4.
Appellants appeal the rejection of claims 1, 12, 15-29, 35, 36, 40, 43,
and 45 but do not argue any claim apart from the others. Appeal Br. 3-9.
We select claim 1 as representative for resolving the issues on appeal. See
37 C.F.R. §41.37 (c)(l)(iv)(2014).
OPINION
In rejecting claim 1 (among others) as obvious, the Examiner finds
that Soper teaches a chewing gum base that comprises a hydrophilic
precursor component, having hydrolyzable units, and an elastomer. Final
Act. 5. The Examiner acknowledges that Soper does not disclose
encapsulating or dispersing the hydrophilic precursor in a barrier material as
claimed. Id. But, the Examiner explains that Soper teaches that
that the hydrophilic precursor component may react undesirably
with the hydroxy group of polyols [0286], and that the
hydrophilic precursor component aids in the degradation of the
gum base [0267], it is considered obvious to encapsulate the
hydrophilic precursor component in a barrier material in order to
better control the release of the hydrophilic precursor component
from the gum base and forestall premature degradation of the
chewing gum base.
3 The Examiner withdraws a prior rejection of claim 43 under 35 U.S.C.
l 12(b) as being indefinite. Final Act. 9 and Ans. 7.
4 Soper et al., US 2007/0104829 Al, published May 10, 2007 (hereinafter
"Soper").
5 Stahl, US 2005/0048164 Al, published March 3, 2005 (hereinafter
"Stahl").
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Application 13/266,349
Id. The Examiner also finds that Stahl teaches several encapsulation agents
including "preferred encapsulation agents being a mixture of hydrogenated
rape (i.e. HRSO) with camauba wax [0071]." Id. The Examiner further
explains that "[b ]oth Stahl and Soper et al. recognize the importance of
keeping active ingredients isolated from conditions which might provide
undesired release of the active ingredients; encapsulation is an old and well
known means of controlling release of ingredients in foodstuffs." Id. at 5---6.
Therefore, the Examiner concludes it would have been obvious to
encapsulate the materials in Soper "which are taught to have a desired
effectiveness at particular points in the lifecycle of the chewing gum (i.e. not
immediately on production) with known encapsulating materials as taught
by Stahl ... and [it] would have been expected to have provided the
predictable result of the controlled release of the hydrophilic precursor
components." Id at 6
Appellants present five reasons in support of their contention that
claims 1, 12, 15-29, 35, 36, 40, 43, and 45 are not rendered obvious by
Soper in view of Stahl. Appeal Br. 3-9. Appellants begin by arguing that
the claimed hydrolyzable units, "compris[ing] a polymer or a salt thereof,"
are different from the degrading agent of Soper in both structure and
function. Id. at 5. Appellants argue that the claimed polymeric hydrolyzable
units that are encapsulated are very different from the encapsulated
degrading agent, namely, one is a polymer and one is not. Id. And,
Appellants urge that hydrolyzable units of the instant invention function "to
attract water which promotes hydrolysis that degrades the chewing gum
product, whereas the function of the degrading agents described in
paragraphs [0257]-[0259] of the reference is to degrade the elastomer in the
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Application 13/266,349
chewing gum product which will in tum degrade the chewing gum product."
Id. 5-6.
We are not persuaded of error based on the Appellants' argument that
the claimed hydrolyzable units are very different in structure from Soper' s
degrading agent because it does not address the reasoning relied upon by the
Examiner. Specifically, the Examiner does not compare the claimed
hydrolyzable units to Soper's degrading agent, but rather to Soper's
"polymer including hydrolyzable units" (see Soper i-f 27). Final Act. 5
(identifying i-fi-126-29 of Soper). Moreover, Soper expressly teaches the
same hydrophilic precursor component as claimed by Appellants. Compare
Soper, i-f 215 ("Examples of hydrophilic precursor components include, for
example, copolymers of methyl vinyl ether and maleic anhydride, and salts
thereof' with Claims Appendix at Appeal Br. 10 ("wherein the polymer is
selected from a copolymer of methyl vinyl ether and maleic anhydride
and/or a salt thereof'). For the same reason, Appellants argument that the
claimed hydrolyzable units differ in function from the degrading agent of
Soper, must also fail. In addition, Appellants' arguments, spanning pages 3-
6 of the Appeal Brief, are directed to the teachings of Soper alone and fail to
address the combined teachings of Soper and Stahl as presented by the
Examiner. "Non-obviousness cannot be established by attacking references
individually where the rejection is based upon the teachings of a
combination of references." In re Merck & Co., 800 F.2d 1091, 1097 (Fed.
Cir. 1986). Rather, "[t]he test for obviousness is what the combined
teachings of the references would have suggested to those having ordinary
skill in the art." In re Keller, 642 F.2d 413, 425 (CCPA 1981).
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Second, Appellants urge that "Stahl does not teach or suggest each
of the claimed components as claimed in the orientation as claimed."
Appeal Br. 6, heading b.
We are not convinced of reversible error on the part of the Examiner.
Appellants' argument section focuses only on a recitation of the teachings of
Stahl and does not identify which of the "claimed components as claimed
in the orientation as claimed," are not suggested by Stahl. Id. Therefore,
Appellants argument, without more, does not sufficiently identify the point
of error. See In re Jung, 637 F.3d 1356, 1365 (("[I]t has long been the
Board's practice to require an applicant to identify the alleged error in the
examiner's rejections." (citing Ex Parte Frey, 94 U.S.P.Q.2d 1072 (BPAI
2010)(precedential))). Moreover, Appellants' arguments are directed to
Stahl individually and do not challenge the Examiner's combination of
Soper in view of Stahl. Merck & Co., 800 F.2d at 1097.
Third, Appellants contend that neither Soper nor Stahl suggest that a
polymer or a salt thereof can be encapsulated and therefore, no reason to
modify the art to achieve the instant invention is shown. Appeal Br. 6. The
Appellants explain that Soper encapsulates chlorophyll and other
photosensitizers while Stahl teaches encapsulating "flavors, acids, salts high
potent sweeteners, and other certain non-polymeric functional substances,"
neither of which suggests the claimed polymer. Id. at 7. Appellants
disagree with the Examiner's rationale that because the hydrophilic
precursor may prematurely react with hydroxyl groups of polyols (see Soper
i-f286) one skilled in the art would consider encapsulating the hydrophilic
precursor. Id. In support, Appellants contend paragraphs 285 to 286 of
Soper are directed to the order in which ingredients are added. Id.
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Specifically, Appellants argue that Soper teaches adding the hydrophilic
precursor "prior to adding polyols and flavoring agents to the gum base[,]
[ s Jo as to decrease the possibility of unwanted partial reaction of the
anhydride with the hydroxyl groups of the polyols." Id. Appellants urge
that "this passage only talks of a theoretical reaction that might occur, not
any actual reaction." Id
Appellants do no persuade us of reversible error by the Examiner.
Soper and Stahl teach encapsulation of active ingredients possesses certain
advantages, including preventing premature degradation. Soper i-f 261 and
Stahl i-f 66-69. The hydrophilic precursor components is known to interact
with hydroxyl groups of the pol yo ls present. Soper i-fi-1285-286. This
combination of teachings provides adequate reason for skilled artisan to
encapsulate the hydrophilic precursor of Soper to achieve the claimed gum
base. That Soper proposes an alternate solution-i.e., to add the hydrophilic
precursor prior to the addition of the polyols---does not supplant the
teachings of Soper that identify a basic problem know in the art. Appellants'
contention that the reaction is merely theoretical is similarly unpersuasive as
the rejection is based on obviousness, not anticipation. Therefore, we
consider the prior art for all that it teaches and suggests. Merck & Co. v.
Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989).
Next, Appellants contend that polymers have been used as
encapsulating agents but not as the subject material to be encapsulated.
Appeal Br. 8. "Thus, it can be surmised that the prior art teaches away from
the present invention that it teaches that polymers are used as encapsulating
agents in gum and not as the active agents being encapsulated." Id.
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Application 13/266,349
Appellants' argument does not convince us of reversible error.
Appellants fail to direct attention to any reference that discourages
encapsulating polymeric materials and instead relies upon assertions (also
unsupported) that "polymers have been used to encapsulate other materials
but have not being [sic] encapsulated in chewing gum compositions."
Appeal Br. 8. From this, Appellants "surmise" the prior art teaches away.
Id. But, "[s]ilence does not imply teaching away." Allergan, Inc. v. Apotex
Inc., 754 F.3d 952, 964 (Fed. Cir. 2014); Syntex (US.A.) LLC v. Apotex,
Inc., 407 F.3d 1371, 1380 (Fed. Cir. 2005) ("[a] prior art reference that does
not specifically refer to one element of a combination does not, per se, teach
away."). And, Appellants provide no evidence to support this assertion
which is based instead on unsubstantiated attorney argument. Such attorney
argument has low probative value. See In re Geisler, 116 F.3d 1465, 1470
(Fed. Cir. 1997). Attorney argument is not evidence. In re Pearson, 494
F.2d 1399, 1405 (CCPA 1974). Nor can such argument take the place of
evidence lacking in the record. Meitzner v. Mindick, 549 F.2d 775, 782
(CCPA 1977). Therefore, we do not find Appellants' contention persuasive
of reversible error.
Lastly, Appellants argue that the combination of Soper and Stahl does
not suggest that the claimed encapsulating materials-like those enumerated
in Stahl---can be used to encapsulate polymers. Appeal Br. 8. Rather,
Appellants urge that only through hindsight can the instant invention be
achieved as "no one has ever encapsulated [hydrophilic precursor
components] in commercial chewing gum formulations." Id. at 9.
Appellants criticize the Examiner's rationale and contend that "[ n Jo where in
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Soper et al. '829 is a teaching to encapsulate any or all materials used in
chewing gum formulations." Id.
Appellants fail to persuade us of reversible error. "Any judgment on
obviousness is in a sense necessarily a reconstruction based upon hindsight
reasoning, but so long as it takes into account only knowledge which was
within the level of ordinary skill at the time the claimed invention was made
and does not include knowledge gleaned only from applicant's disclosure,
such a reconstruction is proper." In re McLaughlin, 443 F.2d 1392, 1395,
170 USPQ 209, 212 (CCPA 1971). Here, the Examiner relies on knowledge
that was within the level of ordinary skill at the time the invention was
made. Both Soper and Stahl recognize that encapsulation of active
ingredients is advantageous for use in chewing gum compositions to control
release of the active ingredient or prevent premature degradation prior to
use. Soper i-f 261 and Stahl i-f 66-69. Soper teaches that the hydrophilic
precursor is known to undesirably react with the hydroxyl groups of the
polyols present. Soper i-fi-1285-286. Therefore, from these teachings,
encapsulating the active hydrophilic precursor was well within the level of
skill of the ordinary artisan at the time of the invention.
CONCLUSION
The Examiner did not err in rejecting claims 1, 12, 15-29, 35, 36, 40,
43, and 45, as unpatentable under 35 U.S.C. § 103(a) over Soper in view of
Stahl.
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DECISION
For the above reasons, the Examiner's rejection of claims 1, 12, 15-
29, 35, 36, 40, 43, and 45 is affirmed.
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l).
AFFIRMED
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