Ex Parte Isse et al

Patent Trial and Appeal Board

Sep 12, 2016

12039828 (P.T.A.B. Sep. 12, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/039,828 02/29/2008
27752 7590 09/14/2016
THE PROCTER & GAMBLE COMPANY
Global IP Services
Central Building, C9
One Procter and Gamble Plaza
CINCINNATI, OH 45202
FIRST NAMED INVENTOR
Abdikadir Isse
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.
CM3165 8251
EXAMINER
MCCLAIN-COLEMAN, TYNES HAL.
ART UNIT PAPER NUMBER
1793
NOTIFICATION DATE DELIVERY MODE
09/14/2016 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):
centraldocket.im @pg.com
pair_pg@firsttofile.com
mayer.jk@pg.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ABDIKADIR ISSE, MARC PAUL LORENZI, and
GRAHAMJOHNMYATT 1
Appeal2015-004130
Application 12/039,828
Technology Center 1700
Before CHUNG K. PAK, JEFFREY T. SMITH, and
WESLEY B. DERRICK, Administrative Patent Judges.
DERRICK, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134(a) from the
Examiner's maintained final rejection of claims 1-11 and 14--22. We have
jurisdiction pursuant to 35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
Appellants' claimed invention is generally directed to a confectionary
composition comprising a candy base and a filling. Claim 1.
1 According to Appellants, the Real Party in Interest is The Procter &
Gamble Company. Appeal Brief filed January 3, 2014 ("Br."), 1.
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Application 12/039,828
Claim I-reproduced below2-is illustrative:
1. A centre-filled confectionery composition comprising:
a. a candy base comprising one or more sugar bases;
1. at least one edible organic acid;
11. greater than 0% and less than 1.90% of
fructose by weight of said candy base and
111. one or more xanthine derivatives;
b. a filling comprising less than 10% water and from
about 30% to about 85% polyhydric alcohol wherein the
filling is a selected from the group consisting of a solid,
powder, paste, gel, or combinations thereof.
Amendment filed March 20, 2012, 2.
REJECTIONS
The Examiner maintains the following final grounds of rejection
under 35 U.S.C. § 103(a):
I. Claims 1-8, 14, and 16-22 as obvious over Bell et al.
(WO 00/06127, published February 10, 2000) in view of Bernard et al.
(US 2006/0019022 Al, published January 26, 2006) and Lorenzi et al.
(US 2006/0188613 Al, published August 24, 2006).
II. Claims 9-11 and 15 as obvious over Bell in view of Bernard,
Lorenzi, and Wood et al. (US 5,883,161, issued March 16, 1999).
III. Claims 1-7, 14, and 16-18 as obvious over Bell in view of
Bernard and Jones et al. (US 2003/0219514 Al, published November 27,
2003).
2 We take the claims as they stand upon appeal. The claims reproduced in
the Claims Appendix to the Appeal Brief do not reflect the claims as they
now stand. Ans. 2. The Amendment filed March 20, 2012, however, does
set forth the presently pending claims.
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IV. Claims 8 and 19--22 as obvious over Bell in view of Bernard,
Jones, and Lorenzi.
V. Claims 9-11 and 15 as obvious over Bell in view of Bernard,
Jones, and Wood.
VI. Claims 1-8, 14, and 16-22 as obvious over Carpenter et al.
(US 5,637,344, issued June 10, 1997) in view of Bernard and Lorenzi.
VII. Claims 9-11 and 15 as obvious over Carpenter in view of
Bernard, Lorenzi, and Wood.
DISCUSSION
Having reviewed the Examiner's rejections in light of arguments
advanced by Appellants in their Appeal Brief, we are not persuaded that the
Examiner erred reversibly in concluding that claims 1-11 and 14--22 are
unpatentable for obviousness, particularly as set forth in Rejections I and II.
We add the following for emphasis. 3
Rejection I
Appellants argue claims 1-8, 14, and 16-22 as a group on the basis of
claim 1, to which we limit our discussion. Br. 2-5.
The Examiner finds that Bell discloses confections having a hard
outer shell and a soft core in which one or more nutraceuticals-including
caffeine-is incorporated into the outer shell and/or the core. Final Act. 3.
Bell explicitly describes including caffeine in the outer shell. Bell 10, 11. 19-
20. The Examiner finds that Bell discloses that the outer shell of the
3 We refer to the Final Office Action entered August 9, 2013 ("Final Act."),
the Appeal Brief filed January 3, 2014 ("Br."), and the Examiner's Answer
entered May 9, 2014 ("Ans.").
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Application 12/039,828
confection has a base that contains up to 7 5% sucrose, and may also include
an acidulant. Id.
The Examiner acknowledges that Bell does not disclose that the outer
shell comprises greater than 0% and less than 1.9% fructose by weight of the
confection, and relies on Bernard for this feature. Final Act. 4. The
Examiner finds that Bernard, like Bell, also discloses a hard confection-in
particular, a hard caramel confectionary. Id. The Examiner finds that
Bernard's hard caramel comprises an edible organic acid, which is disclosed
to increase the storage stability of the hard caramel. Id. The Examiner
further finds that Bernard exemplifies a hard caramel confection comprising
0.8% fructose. Id.
The Examiner concludes proforma that it would have been obvious to
one of ordinary skill in the art at the time of the invention to use a hard
confection as taught by Bernard including 0.8% fructose and an edible
organic acid as the base of the caffeine-containing, hard outer sheH of BeH's
confection in order to obtain the improved storage stability identified as a
benefit of Bernard's hard confection. Id.
The Examiner also acknowledges that Bell does not disclose that the
soft core of the confection is a solid, powder, paste, gel, or combinations
thereof that comprise less than 10% water and from about 30% to about 85%
polyhydric alcohol, and relies on Lorenzi for these characteristics of the
core. Final Act. 5. Like Bell, Lorenzi discloses a center-filled confectionary
composition with a hard candy shell. See, e.g., Lorenzi i-fi-f l, 32, 44. The
Examiner finds that Lorenzi discloses that the center-filling that can be a
solid, a powder, a paste, or a gel. Final Act. 5. The Examiner finds that
Lorenzi discloses that the filling comprises water at a level of less than 10%
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and contains a polyhydric alcohol such as glycerin in an amount of about
30% to about 95% by weight. Id.
The Examiner concludes that it would have been obvious to one of
ordinary skill in the art at the time of the invention to utilize a solid, powder,
paste, and/or gel filling comprising less than 10% water and from about 30%
to about 85% polyhydric alcohol as disclosed in Lorenzi as the soft core of
Bell's confection as modified by Bernard with the expectation of
successfully obtaining a center-filled confectionery product. Final Act. 6.
Appellants contend the Examiner has erred in concluding the cited
prior art renders the claims prima facie obviousness. Appellants point to
statements based on unreliable theories at pages 4 and 5 of their
Specification indicating that the stability of confections that include fructose,
an organic acid, and a xanthine derivative can be improved if the fructose
level is kept below about 1.90%, which results in a candy base that is "more
stabie and iess sticky due to reduced hygroscopicity than a candy base
having fructose in higher level." Br. 2-3. Appellants argue that Bell,
Bernard, and Lorenzi do not suggest the existence of the stability/stickiness
problem, much less its solution in the manner claimed, and one skilled in the
art seeking to solve this problem would therefore not have looked to these
references. Br. 3--4.
However, for the reasons that follow, we are not persuaded of
reversible error in the Examiner's conclusion that one of ordinary skill in the
art armed with the disclosures of Bell, Bernard, and Lorenzi would have
been led to the center-filled confectionery composition recited in claim 1.
As discussed above, the Examiner correctly finds that Bell discloses a
confection having a hard outer shell and a soft core, and discloses that
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Application 12/039,828
caffeine can be incorporated into the outer shell. Final Act. 3; Bell 7, 1. 3 2-
8, 1. 2; 9, 11. 30-31; 10, 11. 19-20. Bell further discloses that any hard
confectionery formulation may be used for the outer shell of the confection.
Bell 11, 11. 31-32. The Examiner also correctly finds that Lorenzi discloses
a center-filled confectionary composition comprising a xanthine derivative
that has a hard candy shell and a solid, powder, paste, and/or gel filling
comprising less than 10% water and from about 30% to about 85%
polyhydric alcohol. Final Act. 5; Lorenzi i-fi-f l 0, 30, 31, 44.
Contrary to Appellants' arguments that the stability/stickiness
problem was unknown, Bernard discloses that sugar-containing hard
caramels absorb water, leading them to become soft and sticky upon
prolonged storage. Bernard i12. Bernard further discloses that the
"technical problem on which the present invention is based is thus to provide
hard caramels with improved storage life." Bernard i1 9. Bernard still
further discloses that their invention achieves a soiution to this probiem
through modification of the surface of the caramels with a surface-active
agent and by incorporation of an edible organic acid in the hard caramel,
which causes the caramels to absorb significantly less water during storage
and eliminates stickiness, thus improving the storage stability of the
caramels. Bernard i-fi-f l 0, 11, 30, 44, 45. The Examiner correctly finds that
Bernard exemplifies a hard caramel confection comprising 0.8% fructose.
Bernard i168. Therefore, one of ordinary skill in the art seeking to address
this problem of stickiness and instability of a hard confection during storage
described in Bernard would have been led by Bernard's disclosures to
include an edible organic acid in the hard confection containing a low level
of fructose, such as 0.8%.
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Application 12/039,828
It follows then that one of ordinary skill in the art seeking to produce a
center-filled confection including a nutraceutical such as caffeine that would
be stable during prolonged storage reasonably would have been led to utilize
Bernard's hard confection containing an edible organic acid and a low level
of fructose (0.8%) as the base for the caffeine-containing hard outer shell of
Bell's center-filled confection in view of Bell's disclosure that any hard
confectionery formulation can be used for the outer shell. One of ordinary
skill in the art reasonably would also have been led to utilize a solid,
powder, paste, and/or gel filling comprising less than 10% water and from
about 30% to about 85% polyhydric alcohol as the filling in Bell's center-
filled confection in view of Lorenzi' s disclosure of including such a filling
in a center-filled confectionery composition containing a xanthine derivative
such as caffeine, thus arriving at the center-filled confectionary composition
recited in claim 1. Appellants' arguments that the applied prior art does not
suggest the existence of the stabiiity/stickiness probiem and its soiution in
the manner claimed is thus unpersuasive of reversible error.
Appellants also argue that one of ordinary skill in the art looking to
modify Bell---directed to controlling the dosage of nutraceuticals by using
center-filled confections-in order to solve the known problems relating to
stability/stickiness in center-filled confectionaries, would not have looked to
Bernard because Bernard is directed to hard caramels, and does not disclose
center-filled confectionaries. Br. 4. However, as discussed above, Bell
discloses that any hard confectionery formulation may be used for the outer
shell of the center-filled confection. In view of this disclosure, we are
unpersuaded of reversible error in the Examiner's determination that one of
ordinary skill in the art seeking to produce a center-filled confection
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including a nutraceutical such as caffeine as disclosed in Bell reasonably
would have been led to utilize Bernard's hard confection containing an
edible organic acid and a low level of fructose (0.8%) as the hard outer shell
base to ensure stability of the confection during prolonged storage.
Appellants further argue that Bernard does not suggest that the
solution to the problem of candy base instability and stickiness is solved by
maintaining the level of fructose level at less than about 1.9%. Br. 4.
Appellants contend that Bernard instead discloses that water uptake is
reduced by including an edible acid in the confection, and one of ordinary
skill in the art therefore would not have arrived at the claimed confectionery
composition from Bernard's disclosures. Id. Appellants further argue that
one looking to modify Bell with Lorenzi would not arrive at claimed
invention because Lorenzi does not teach or suggest the fructose levels
recited in claim 1, and does not acknowledge the stability/stickiness
probiem, and so provides no motivation to iower the fructose amount to that
claimed. Br. 4--5.
However, we are unpersuaded by these arguments because they are
based on the disclosures of Bernard and Lorenzi individually and do not
address what one of ordinary skill in the art at the time of the invention
would have been led to by the combination of teachings as discussed above.
In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) ("Non-
obviousness cannot be established by attacking references individually
where the rejection is based upon the teachings of a combination of
references."); In re Keller, 642 F.2d 413, 425 (CCPA 1981) (The test for
obviousness "is what the combined teachings of the references would have
suggested to those of ordinary skill in the art."). In particular, Appellants'
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Application 12/039,828
arguments fail to address the combination in which Bernard is relied on for
its disclosure of a hard confection with improved storage stability-
including an edible organic acid and 0.8% fructose-to be used as the base
for a hard candy shell and Lorenzi is relied on for its disclosure of a center-
filling-including polyhydric alcohol-in Bell's center-filled confection
with a caffeine-containing, hard outer shell. It follows that Appellants'
arguments do not identify error in the Examiner's conclusion that one of
ordinary skill in the art armed with the disclosures of Bell, Bernard, and
Lorenzi would have been led to the center-filled confectionery composition
recited in claim 1.
In any event, we note that the Specification merely states that
"[ w ]ithout wishing to be bound by theory, fructose as used herein and in the
presence of at least one edible organic acid and one or more xanthine
derivatives, may improve the stability of a confectionery by reducing the
hygroscopicity of the overaH composition" and "[ w ]ithout wishing to be
bound by theory, fructose within the candy base may induce water vapor
absorption during storage of said candy base." Spec. 4, 11. 4--7 and 5, 11. 12-
13 (emphasis added). However, on this record, Appellants do not proffer
any credible evidence to demonstrate the criticality of the recited fructose
content suggested by the applied prior art.
For the reasons set forth above, on this record, we are unpersuaded of
reversible error. Accordingly, we sustain the Examiner's rejection of claims
1-8, 14, and 16-22 under 35 U.S.C. § 103(a) as obvious over Bell, Bernard,
and Lorenzi.
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Re} ection II
Appellants rely on their contentions that the Examiner erred in
rejecting claim 1, and contend that Wood fails to remedy the deficiencies of
Bell, Bernard, and Lorenzi. Br. 6. Because we are unpersuaded of
reversible error in the Examiner's rejection of claim 1, Appellants' position
as to this ground of rejection is also found without merit. Accordingly, we
sustain the rejection of claims 9--11 and 15 under 35 U.S.C. § 103(a) as
obvious over Bell in view of Bernard, Lorenzi, and Wood.
Re} ections III- VII
Having sustained Rejections I and II directed to all of the claims on
appeal, there is no need to reach the merits of these additional rejections
under 35 U.S.C. § 103(a) because they are, at most, cumulative to Rejections
I and II. Cf In re Gleave, 560 F.3d 1331, 1338 (Fed. Cir. 2009) (not
reaching obviousness after finding anticipation); In re Basel! Poliolefine,
547 F.3d 1371, 1379 (Fed. Cir. 2008) ("Having concluded that the Board
properly affirmed the rejection of claims 1-52 of the '687 patent based on
obviousness-type double patenting in view of the '987 patent, we need not
address the remaining issues raised by Basell regarding the §§102(b) and
103(a) rejections, as well as the additional double patenting rejections.");
Beloit Corp. v. Valmet Oy, 742 F.2d 1421 (Fed. Cir. 1984) (ITC having
decided a dispositive issue, there was no need for the Commission to decide
other issues decided by the presiding officer).
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DECISION
In view of the foregoing, the Examiner's rejections of claims 1-11
and 14--22 under 35 U.S.C. § 103(a) are 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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