Ex Parte Jani et alDownload PDFPatent Trial and Appeal BoardDec 23, 201411710830 (P.T.A.B. Dec. 23, 2014) 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. 11/710,830 02/26/2007 Bharat Jani 1421-5 CIP II 5353 23869 7590 12/23/2014 Hoffmann & Baron LLP 6900 Jericho Turnpike Syosset, NY 11791 EXAMINER BEKKER, KELLY JO ART UNIT PAPER NUMBER 1791 MAIL DATE DELIVERY MODE 12/23/2014 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 BHARAT JANI, KISHOR KABSE, PETROS GEBRESELASSIE, and ADITI SHETTY ____________ Appeal 2013-001176 Application 11/710,8301 Technology Center 1700 ___________ Before PETER F. KRATZ, KAREN M. HASTINGS, and DONNA M. PRAISS, Administrative Patent Judges. HASTINGS, Administrative Patent Judge. DECISION ON APPEAL Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s final decision rejecting claims 1, 2, 4-8, 10-22, and 262 under 35 U.S.C. §103(a) as being unpatentable over the combined prior art of Friello (US 4,250,196), Nabors (Alternative Sweeteners 3rd Edition, pp. 317–319, 324; 2001), Cheruki (US 4,933,188), Witzel (US 4,301,178), Lees (Sugar Confectionery and Chocolate Manufacture, pp. 327, 335; 1973), as 1 The Real Party in Interest is Kraft Foods Global Branch LLC (Br. 2). 2 The Examiner entered Appellants’ cancellation of claim 30 as noted in the Advisory Action mailed Jan. 10, 2012 (Br. 2–3). Appeal 2013-001176 Application 11/710,830 2 evidenced by Thesauras.com (“stick” and “slab” are synonyms) and Rivier (EP 1,151,673 A2).3 We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM. The sole independent claim, claim 1, is illustrative of the subject matter on appeal (emphasis added): 1. A composition comprising: (a) a liquid-fill composition; (b) a gum region surrounding said liquid-fill composition, said gum region comprising a gum base; and (c) a third region, said third region surrounding at least a portion of said gum region, wherein: said gum region further comprises a polyol composition comprising maltitol present in the amount of about 40% to about 60% by weight of the gum region, and said liquid-fill composition comprises hydrogenated starch hydrolysate present in the amount of about 58% to about 83% by weight of said liquid-fill composition and crystalline sorbitol present in the amount of about 10% to about 35% by weight of said liquid-fill composition, wherein said composition has a piece size of less than about 3 grams and demonstrates no noticeable loss of liquidity of said liquid-fill composition into said gum region after accelerated aging at 37°C for a three week period. Appellants argue the claims as a group, and focus on limitations of independent claim 1 (Br. 7–10). Appellants rely upon the same arguments for the additional rejection of claims 19–21 (Br. 11). Accordingly, all the claims stand or fall with claim 1. 3 Ribadeau-Dumas (US 5,900,261) is also applied as needed in the rejection of claims 19–21 (Ans. 2). Appeal 2013-001176 Application 11/710,830 3 ANALYSIS After thorough review of the respective positions provided by Appellants and the Examiner, we AFFIRM the § 103(a) rejections on appeal for essentially the reasons presented by the Examiner, including the Response to Argument section (Ans., mailed July 9, 2012). We add the following primarily for emphasis. Appellants’ arguments directed to the deficiencies of Friello are not persuasive as they fail to consider the applied prior art as a whole (Br. 7, 8). Appellants do not specifically refute the Examiner’s findings that Friello encompasses a center-filled chewing gum generically comprising the claimed ingredients. Appellants’ contention that it would not have been obvious to apply the teachings concerning the maltitol content of Cherukuri’s gum as the polyol in the gum region composition of Friello is unavailing (Br. 9) for the reasons set out by the Examiner (e.g., Ans. 2, 3). Appellants do not provide any persuasive technical reasoning or credible evidence to refute the Examiner’s determination that it would have been prima facie obvious to use the known gum additive of maltilol as taught in Cherukuri in amounts that substantially overlap the claimed amount as the polyol of Friello’s gum region “in order to provide textural integrity and soft chew as taught by Cherukuri” (Ans. 3; Cherukuri, col. 2 ll. 35–41 (teaching use of 28–58% maltilol versus the claimed 40–60%)). Appellants do not dispute the Examiner’s finding that Friello’s center- filled composition includes the use of hydrogenated starch hydrolysate (HSH) in amounts that overlap the claimed amount (Final 4; Ans. 3; Br. generally). The Examiner’s determination that this results in a situation Appeal 2013-001176 Application 11/710,830 4 where overlapping ranges renders the claimed amount prima facie obvious is reasonable (e.g., Ans. 3; no Reply Brief has been filed). Cf. In re Harris, 409 F.3d 1339, 1341 (Fed. Cir. 2005) (quoting In re Peterson, 315 F.3d 1325, 1329-30 (Fed. Cir. 2003)): [A] prima facie case of obviousness exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art. [Citations omitted.] Appellants’ argument that Friello de facto teaches away from the use of crystalline sorbitol in the amounts claimed (Br. 8) and that Weitzel teaches away from a “conventional” center-filled gum are also not persuasive of error (id. at 9) for reasons set out by the Examiner (Ans. 5, 6). It has been established that “[a] person of ordinary skill is also a person of ordinary creativity, not an automaton.” KSR Int'l. Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). Weitzel is merely relied upon to exemplify the known use of a moisture resistant coating, and that center-filled gums include 10– 20% liquid and 80–90% of a gum region (Final 6). Appellants also have not explained adequately why the Examiner’s determination that Friello encompasses the use of any known form of sorbitol is in error (Br. generally). Nabors exemplifies the known use of crystalline sorbitol in chewing gum (Ans. 5; Nabors, p. 324). A preponderance of the evidence supports the Examiner’s position that [i]t would have been obvious to one of ordinary skill in the art at the time the invention was made for the 5-30% sugar alcohol as taught by Friello to be crystalline sorbitol in view of Nabors; One would have been motivated to use gamma polymorph structure crystalline sorbitol as the 5-30% sugar alcohol of Friello as Friello teaches sorbitol is a usable sugar alcohol in the center fill and as Nabors teaches that sorbitol provides improved moisture control and extended shelf life in food products and that gamma polymorph crystalline sorbitol is most Appeal 2013-001176 Application 11/710,830 5 stable and commonly available. To use a commonly available and utilized form of a food component would have been obvious and routine determination to one of ordinary skill in the art. (Ans. 5, 6). The Examiner also reasonably determines that the property or function of the claimed “no noticeable loss of liquidity of said liquid-fill composition into said gum region after accelerated aging” would follow from one of ordinary skill in the art using the claimed ingredients within the claimed ranges, especially since loss of liquidity was a known prior art concept related to shelf-life, Friello discusses that the use of HSH in the center fill provides an extended shelf life, and Cherukuri teaches that its gum composition with maltitol prevents moisture transfer (Ans. 6–7). Stated differently, the fact that Appellants may have recognized another property which would flow naturally from following the prior art suggestions for amounts of maltitol for the gum region, and sorbitol and starch hydrosylate in the center fill of a gum cannot be the basis for patentability when the differences, if any, would otherwise have been obvious. Cf. In re Huai- Hung Kao, 639 F.3d 1057, 1070 (Fed. Cir. 2011) (“Maloney's express teachings render the claimed controlled release oxymorphone formulation obvious, and the claimed ‘food effect’ adds nothing of patentable consequence.”); see also Ex parte Obiaya, 227 USPQ 58, 60 (BPAI 1985). Thus, Appellants’ arguments that the applied prior art fails to render obvious the claimed invention are unavailing, and a preponderance of the evidence supports the Examiner’s reasonable position that it would have been prima facie obvious to use the claimed ingredients in the claimed ranges so as to result in the claimed composition. Appeal 2013-001176 Application 11/710,830 6 Furthermore, a preponderance of the evidence supports the Examiner’s de facto position that the artisan of ordinary skill would have appreciated that the amount of each ingredient was a known result effective variable (Ans. generally). The law is replete with cases in which the difference between the claimed invention and the prior art is some range or other variable within the claims. It is well settled that, generally speaking, it would have been obvious for an artisan with ordinary skill to develop workable or even optimum ranges for result-effective parameters. These cases have consistently held that the Appellants must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range. See e.g., In re Peterson, 315 F.3d at 1329; In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990). The burden rests with Appellants to establish (1) that the alleged unexpected results presented as being associated with the claimed invention are, in fact, unexpected, (2) that the comparisons are to the disclosure of the closest prior art, and (3) that the supplied evidentiary showing is commensurate in scope with the claimed subject matter. See In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). On this record, Appellants have not met this burden. Accordingly, we affirm the Examiner’s § 103 rejections of all the claims on appeal based on the applied prior art. Appeal 2013-001176 Application 11/710,830 7 DECISION The decision of the Examiner is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1). AFFIRMED Copy with citationCopy as parenthetical citation