Ex Parte Lenzi et al

Patent Trial and Appeal Board

Dec 19, 2016

13254480 (P.T.A.B. Dec. 19, 2016)

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.
13/254,480 10/31/2011 Sandra Lenzi CDS0271US3 9321
23413 7590 12/21/2016
TANTOR TOT RTTRN T T P
EXAMINER
20 Church Street DEES, NIKKI H
22nd Floor
Hartford, CT 06103 ART UNIT PAPER NUMBER
1791
NOTIFICATION DATE DELIVERY MODE
12/21/2016 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 SANDRA LENZI, SIMKIE KAR,
TASOULA A. MICHAELIDOU, JOAN E. HARVEY,
MATTHEW ALLAN BEAM, DEMETRIUS TORINO MCCORMICK,
SIMMAN WONG, JUNJIE GUAN, DEBORAH LEVENSON,
JUAN PABLO CAMPOMANES-MARIN, NAVROZ BOGHANI, and
PETROS GEBRESELASSIE
Appeal 2015-007217
Application 13/254,480
Technology Center 1700
Before CHUNG K. PAK, JEFFREY T. SMITH, and
WESLEY B. DERRICK, Administrative Patent Judges.
PAK, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision finally rejecting claims 39 through 47, 49 through 55, and 57.2 We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify the Real Party in Interest as INTERCONTINENTAL
GREAT BRANDS LLC. (Appeal Brief filed March 2, 2015 (“App. Br”), 2.)
2 Final Office Action entered July 28, 2014 (“Final Act.”), 2.
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STATEMENT OF THE CASE
The subject matter on appeal is directed to a chewing gum
composition comprising a gum base and at least first, second, and third
flavor compositions. (Spec. 1 6.) The first flavor composition begins to
release from the chewing gum composition when the chewing gum
composition is masticated, the second flavor composition begins to release
after the first flavor composition has begun to release, and the third flavor
composition releases after the second flavor composition begins to release.
(Id.) The first flavor composition may be an unencapsulated fruit flavor
composition, the third flavor composition may comprise an encapsulated
mint flavor, and the second flavor composition may comprise an
encapsulated fruit flavor that is the same as the fruit flavor of the first flavor
composition and an encapsulated mint flavor that is the same as the mint
flavor of the third flavor composition. (Spec. 15—17.)
Details of the appealed subject matter are recited in representative
claim 39, which is reproduced below from the Claims Appendix to the
Appeal Brief:
39. A chewing gum composition, comprising a gum base and
at least a first, second and third flavor composition wherein the
at least one first flavor composition begins to release from the
chewing gum composition when the chewing gum composition
is masticated, the at least one second flavor composition begins
to release after the at least one first flavor composition has
begun to release, and the at least one third flavor composition
releases after the second flavor composition begins to release;
wherein the first flavor composition is an unencapsulated
fruit flavor composition and is present in an amount from about
0.05% to about 1.0% by weight based on the weight of the
chewing gum composition;
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wherein the at least one second flavor composition
comprises two encapsulated flavors and is present in an amount
from about 1.0% to about 5.0% by weight based on the weight
of the chewing gum composition, wherein one of the two
flavors is the same fruit flavor of the first flavor composition
and the second of the two flavors is the same mint flavor of the
third flavor composition; and
wherein the at least one third flavor composition
comprises an encapsulated mint flavor and is present in an
amount from about 1.0% to about 4.0% by weight based on the
weight of the chewing gum composition.
(App. Br. 15, Claims Appendix.)
Appellants seek review of the following grounds of rejection
maintained by the Examiner in the Answer entered on May 21, 2015
(“Ans.”):
Claims 39-47, 49, 50, 52, and 57 under 35 U.S.C. § 103(a) as
unpatentable over the disclosure of U.S. Patent 3,795,744, issued in the
name of Ogawa et al. on March 5, 1974 (hereinafter referred to as
“Ogawa”);
Claim 51 under 35 U.S.C. § 103(a) as unpatentable over the disclosure
of Ogawa in view of U.S. Patent 3,867,556, issued in the name of Darragh et
al. on February 18, 1975 (hereinafter referred to as “Darragh”);
Claims 53 and 54 under 35 U.S.C. § 103(a) as unpatentable over the
disclosure of Ogawa in view of U.S. Patent 6,627,233 Bl, issued in the
name of Wolf et al. on September 30, 2003 (hereinafter referred to as
“Wolf’);
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Claim 55 under 35 U.S.C. § 103(a) as unpatentable over the disclosure
of Ogawa in view of Wolf and U.S. Patent 5,912,030, issued in the name of
Huzinec et al. on June 15, 1999 (hereinafter referred to as “Huzinec”); and
Claims 39-47, 49—55, and 57 provisionally rejected on the ground of
nonstatutory, obviousness-type double patenting over claims 1—29 of
copending U.S. patent application 13/821,296 (hereinafter referred to as the
‘296 application”).
DISCUSSION
Upon consideration of the evidence on this appeal record and each of
Appellants’ contentions, we sustain the Examiner’s rejections of claims 39—
47, 49-55, and 57 under 35 U.S.C. § 103(a) for obviousness and claims 39-
47, 49-55, and 57 for obviousness-type double patenting for the reasons set
forth in the Final Action and the Answer. We add the discussion below
primarily for emphasis and completeness.
Rejection of Claims 39—47, 49, 50, 52, and 57 under 35 U.S.C. § 103(a)3
Appellants do not dispute the Examiner’s finding that Ogawa
discloses a chewing gum composition comprising a gum base and at least
first, second, and third flavor (seasoning) compositions, which are present in
amounts falling within the ranges recited in claim 39. (Compare Final Act.
3, with App. Br. 4—9.) Appellants also do not dispute the Examiner’s
3 We limit our discussion to those claims separately argued, and claims not
separately argued stand or fall with the argued claims. 37 C.F.R.
§ 41.37(c)(l)(iv). Appellants argue claims 39-47, 49, 50, 52, and 57 as a
group. (See generally App. Br. 4—9.) Therefore, for the purposes of this
appeal, we select claim 39 as representative, and decide the propriety of the
rejection of claims 39-47, 49, 50, 52, and 57 based on claim 39 alone.
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finding that Ogawa discloses that the first, second, and third flavor
(seasoning) compositions release sequentially from the chewing gum
composition. {Compare Final Act. 3, with App. Br. 4—9.) Nor do
Appellants dispute the Examiner’s finding that Ogawa discloses that fruit
and mint are suitable flavors for inclusion in the flavor or seasoning
compositions of the chewing gum composition. {Compare Final Act. 3, with
App. Br. 4—9.) Appellants also do not dispute the Examiner’s finding that
Ogawa exemplifies encapsulating some of the flavor (seasoning)
compositions of a chewing gum composition to release the flavors
sequentially from the chewing gum composition. {Compare Final Act. 3,
with App. Br. 4—9.) The Examiner finds that Ogawa allows for a continuum
of flavors to be provided in the chewing gum by encapsulating different
flavors. (Final Act. 4.) Based on these findings, the Examiner concludes
that it would have been obvious to utilize any combination of the flavors
disclosed in Ogawa to provide the predictable result of a chewing gum that
would release desired flavors singly or in combination in a desired order.
{Id.)
Appellants argue that Ogawa does not recognize the problem of mint
flavor interfering with fruit flavor solved by their invention. (App. Br. 7.)
Appellants explain that the transitional second flavor composition of the
chewing gum composition of claim 39, which is released between the first
fruit flavor composition and the third mint flavor composition, is comprised
of both the fruit flavor and the mint flavor and prevents the unwanted
perception of the mint flavor overpowering the fruit flavor. (App. Br. 7.)
Appellants argue that Ogawa does not teach or suggest using a transition
flavor made up both encapsulated fruit and mint flavors to beneficially
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prevent the mint flavor from interfering with the perception of the fruit
flavor, and Appellants contend that the Examiner’s rejection is therefore
based on impermissible hindsight. (App. Br. 7—9.)
We begin our analysis by determining the meaning of claim 39, giving
terms the broadest reasonable interpretation consistent with the Specification
as it would be interpreted by one of ordinary skill in the art. In re ICON
Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (During
prosecution of patent applications, “the PTO must give claims their broadest
reasonable construction consistent with the specification. . . . Therefore, we
look to the specification to see if it provides a definition for claim terms, but
otherwise apply a broad interpretation.”). Claim 39 recites a chewing gum
composition in which a first flavor composition begins to release from the
chewing gum composition when the chewing gum composition is
masticated, a second flavor composition begins to release after the first
flavor composition has begun to release, and a third flavor composition
releases after the second flavor composition begins to release. The plain
language of claim 39 reasonably indicates that the release of the first and
second flavor compositions partially or substantially overlaps, as does the
release of the second and third flavor compositions.
This interpretation is consistent with Appellants’ Specification, which
states that “the at least one second flavor composition begins to release when
at least about 50% of the at least one first flavor composition has released
from the chewing gum composition, including at least 60, 70, 75, 80, 90, 95,
97%, and all values and ranges there between,” indicating that the second
flavor composition begins to release before all of the first flavor composition
is released, thus providing partial or substantial overlap in release of the first
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and second flavors. (Spec. 1 55.) Appellants’ Specification also states that
“the at least one third flavor composition begins to release when at least
about 50% of the at least one [] second composition has released from the
chewing gum composition, including at least 60, 70, 75, 80, 90, 95, 97%,
and all values and ranges there between,” similarly indicating that the third
flavor composition begins to release before all of the second flavor
composition is released, thus providing partial or substantial overlap in
release of the second and third flavors. (Spec. 1 84.) Accordingly, under a
broadest reasonable interpretation consistent with the Specification, claim 39
recites partial or substantial overlap in release of the first and second flavor
compositions, and partial or substantial overlap in release of the second and
third flavor compositions to impart both distinct individual flavors of the
flavor ingredients and a combination flavor of such flavor ingredients.
Ogawa discloses that chewing gum having variable flavors was
conventionally prepared in the art by mixing several different seasonings or
flavoring agents into a chewing gum base. (Ogawa col. 1,11. 29-34.)
Ogawa explains that when such gum is chewed, the admixed flavors release
simultaneously (a combination or blend flavor of the flavor ingredients), and
the chewer does not taste individual, distinct flavors. (Ogawa col. 1,11. 29-
39.)4
4 In the event of further prosecution of the application, we direct the
Examiner’s attention to paragraph 57 of Appellants’ Specification, which
indicates that U.S. Patent 4,775,537 provides an example of a two
component flavor composition for chewing gum. Column 5, lines 19—22 of
this patent states that “[w]hen different flavoring agents are used and they
have the same or substantially the same solubilities, then a flavor blend or
combination may be perceived by the chewer,” indicating that flavor blend
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Ogawa further discloses that the chewing gum composition of his
invention contains several different seasonings or flavoring agents in a
conventionally available form, and in a form integrated, coated, and/or
encapsulated with a high molecular weight compound, resulting in the
release of the flavors over time while the gum is chewed. (Ogawa col. 1,
11. 45—53, 59-68.) Ogawa further discloses that suitable flavoring agents for
the chewing gum composition include mints such as peppermint and
spearmint; essential oils extracted from oranges, lemons and other fruits;
bean derived flavors such as coffee and cocoa; wine flavors; and pungent
materials such as affinin, pepper, and mustard. (Ogawa col. 2,11. 54—59.)
Ogawa exemplifies a chewing gum product containing unencapsulated pine
oil, encapsulated lemon oil, and coated banana powder, and discloses that on
chewing this product, the three different flavors could be enjoyed separately
or successively during the chewing period. (Ogawa col. 4,11. 9—22.)
Ogawa’s broad disclosure of a chewing gum composition in which
multiple flavors are released over time while the gum is chewed, inclusive of
partial or substantial overlap in release of the first, second and third flavors,
Ogawa’s description of conventional chewing gum compositions in which
multiple flavors are released simultaneously during chewing to provide
blended flavors, and Ogawa’s exemplification of chewing gum compositions
in which multiple flavors are released successively during chewing to
compositions for chewing gum were known in the art at the time of the
invention. It also teaches, at column 5,11.19-41 sequential releases of the
flavoring agents, with the same or substantially same solubilities or different
solubilities.
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provide distinct flavors would have suggested a chewing gum composition
in which multiple flavors are released successively in a partially,
substantially and/or entirely overlapping manner to provide both distinct
and/or blended flavors, or are released successively in a non-overlapping
manner to provide distinct flavors. Therefore, it would have been obvious to
one of ordinary skill in the art at the time of Appellants’ invention, in view
of Ogawa’s disclosures, to prepare a chewing gum composition in which
multiple flavoring agents are released in a partially, substantially and/or
entirely overlapping manner to provide distinct and blended flavors such as
mint and/or fruit flavors or seasonings by coating or encapsulating them.
As indicated supra, Ogawa’s disclosures are not limited to the
exemplified chewing gums, and Ogawa’s broad disclosure of a chewing gum
composition in which multiple flavors are released over time is not limited
to release of particular flavors in a specific sequence. Merck & Co. v.
Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (quoting In re
Lamberti, 545 F.2d 747, 750 (CCPA 1976)(“[T]he fact that a specific
[embodiment] is taught to be preferred is not controlling, since all
disclosures of the prior art, including unpreferred embodiments, must be
considered.”); In re Fracalossi, 681 F.2d 792, 794 n.l (CCPA 1982) (A
prior art reference’s disclosure is not limited to its examples.); In re Boe, 355
F.2d 961, 965 (CCPA 1966) (All of the disclosures in a prior art reference
“must be evaluated for what they fairly teach one of ordinary skill in the
art.”). As discussed above, Ogawa explicitly teaches simultaneous or
sequential release of flavors from chewing gum to provide blended flavors
or distinct flavors. Accordingly, Ogawa’s disclosures as a whole, including
Ogawa’s teaching of a limited number of flavors suitable for use in chewing
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gum compositions, would have suggested a chewing gum composition from
which any combination of the disclosed flavors, such as fruit and mint, are
released individually and/or together in any order, including a chewing gum
composition in which mint and fruit flavors are released individually and/or
together in a partially or substantially overlapping manner (as discussed
above) to provide distinct and blended flavors, such as the release sequence
of fruit, fruit and mint, and mint recited in claim 39. KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 417 (2007) (quoting Sakraida v. AgPro, Inc.,
425 U.S. 273, 282 (1976) (“[W]hen a patent ‘simply arranges old elements
with each performing the same function it had been known to perform’ and
yields no more than one would expect from such an arrangement, the
combination is obvious.”); In re Kerkhoven, 626 F.2d 846, 850 (CCPA
1980)(“It is prima facie obvious to combine two compositions each of which
is taught by the prior art to be useful for the same purpose, in order to form a
third composition which is to be used for the very same purpose.”)
Accordingly, the Examiner’s rejection is not based on impermissible
hindsight as Appellants contend.
Appellants’ argument that Ogawa does not recognize the problem of
mint flavor interfering with fruit flavor solved by their invention is without
persuasive merit because “[i]n determining whether the subject matter of a
patent claim is obvious, neither the particular motivation nor the avowed
purpose of the patentee controls.” KSR, 550 U.S. at 419; see also In re
Kemps, 97 F.3d 1427, 1430 (Fed. Cir. 1996) (“Although the motivation to
combine here differs from that of the applicant, the motivation in the prior
art to combine the references does not have to be identical to that of the
applicant to establish obviousness.”); In re Beattie, 974 F.2d 1309, 1312
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(Fed. Cir. 1992) (“[T]he law does not require that the references be
combined for the reasons contemplated by the inventor.”). As discussed
above, Ogawa’s disclosures as a whole would have suggested to one of
ordinary skill in the art the chewing gum composition of claim 39. As stated
by the Supreme Court, “[t]he question is not whether the combination was
obvious to the patentee [(i.e., applicants)] but whether the combination was
obvious to a person with ordinary skill in the art.” KSR, 550 U.S. at 420.
Appellants also argue that Ogawa’s Examples teach away from a
transitional second flavor composition comprising both fruit and mint
flavors because Ogawa’s Examples describe separate release of the
individual flavors in a chewing gum. (App. Br. 7—8.) However, Ogawa’s
disclosures are not limited to its Examples, and as discussed above, Ogawa
discloses that chewing gum in which various flavors are released
simultaneously was conventional in the art at the time of Appellants’
invention. Although Ogawa exemplifies a sequential release alternative to a
conventional simultaneous release, Ogawa nevertheless still would have
suggested a chewing gum composition in which two or more flavors are
released simultaneously and/or sequentially in a partially or substantially
overlapping manner, as discussed above to provide both blend and distinct
flavors. Ogawa thus does not teach away from a second flavor composition
comprising both fruit and mint flavors. In re Fulton, 391 F.3d 1195, 1201
(Fed. Cir. 2004) (“[t]he prior art’s mere disclosure of more than one
alternative does not constitute a teaching away from any of these alternatives
because such disclosure does not criticize, discredit, or otherwise discourage
the solution claimed”); In re Gurley, 27 F.3d 551, 552—53 (Fed. Cir. 1994).
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On this record, Appellants do not show that the claimed chewing gum
composition produces results that would have been unexpected to one of
ordinary skill in the art at the time of the invention. (See generally App. Br.)
Nor do Appellants assert that the composition satisfied a long-felt need or
was commercially successful. (Id.) Thus, on balance, the evidence of
obviousness on this record outweighs Appellants’ assertions in support of
nonobviousness.
We accordingly sustain the Examiner’s rejection of claims 39-47, 49,
50, 52, and 57 under 35 U.S.C. § 103(a).
Rejections of Claims 51 and 53—55 under 35 U.S.C. § 103(a)
Appellants rely in essence on contentions that the Examiner erred in
rejecting the base claim, independent claim 39, from which claims 51 and
53—55 depend, and argue that the additional references cited in the rejections
of these claims fail to remedy the deficiencies of Ogawa. (App. Br.9-14.)
Because we are not persuaded of reversible error in the Examiner’s rejection
of claim 39, we sustain the rejections of claims 51 and 53—55 under U.S.C.
§ 103(a).
Provisional Rejection of Claims 39—47, 49—55, and 57 for Obviousness-type
Double Patenting
Appellants do not contest the Examiner’s provisional rejection of
claims 39-47, 49—55, and 57 for non-statutory obviousness-type double
patenting over claims 1—29 of the ’296 application. (See generally App. Br.)
Accordingly, we summarily sustain this rejection without comment. 37
C.F.R. § 41.37(c)(l)(iv); see also Manual of Patent Examining Procedure
(MPEP) § 1205.02 (9th ed. Mar. 2014) (“If a ground of rejection stated by
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the examiner is not addressed in the appellant’s brief, appellant has waived
any challenge to that ground of rejection and the Board may summarily
sustain it, unless the examiner subsequently withdrew the rejection in the
examiner’s answer.”).
ORDER
In view of the reasons set forth above and in the Final Action and the
Answer, we affirm the Examiner’s decision rejecting claims 39-47, 49—55,
and 57 under § 103(a) and claims 39-47, 49—55, and 57 on the ground of
obviousness-type double patenting.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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