Ex Parte Mikkelsen et al

Patent Trial and Appeal Board

Feb 23, 2016

12399192 (P.T.A.B. Feb. 23, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/399, 192 0310612009
23373 7590 02/25/2016
SUGHRUE MION, PLLC
2100 PENNSYLVANIA A VENUE, N.W.
SUITE 800
WASHINGTON, DC 20037
FIRST NAMED INVENTOR
Rikke MIKKELSEN
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.
Ql 12149 1550
EXAMINER
DEES, NIKKI H
ART UNIT PAPER NUMBER
1791
NOTIFICATION DATE DELIVERY MODE
02/25/2016 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):
PPROCESSING@SUGHRUE.COM
sughrue@sughrue.com
USPTO@sughrue.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RIKKE MIKKELSEN, KAJ HOVHA VE NIELSEN,
NIELS RA VN SCHMIDT, and
PER HENRIK ERTEBJERG CHRISTENSEN
Appeal2014-005364
Application 12/399,192
Technology Center 1700
Before PETER F. KRATZ, JEFFREY T. SMITH, and JAMES C. HOUSEL,
Administrative Patent Judges.
KRATZ, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner's final rejection of claims 1, 2, 4--17, and 35. We have
jurisdiction pursuant to 35 U.S.C. § 6.
Appellants' claimed invention is directed to compressed chewing gum
tablets.
Claim 1 is illustrative and reproduced below:
1. Compressed chewing gum tablets, wherein the compressed
chewing gum tablets are obtained by
extruding a gum composition through a die plate and cutting the
extruded gum composition in a liquid filled chamber into gum granules,
conveying the extruded and cut granules to a tablet pressing
apparatus, and
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Application 12/399,192
including the granules in compressed chewing gum tablets, and
wherein the gum granules cut in the liquid filled chamber have average
diameters below 2.5 mm.
The Examiner relies on the following prior art references as evidence
in rejecting the appealed claims:
Beringer et al.
Fisher et al.
us 4, 139,589
us 4,405,647
Feb. 13, 1979
(hereinafter "Beringer")
Sept. 20, 1983
(hereinafter "Fisher")
The Examiner maintains the following grounds of rejection:
Claims 1, 2, 4--9, 11-15, 17, and 35 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by or, in the alternative, under 35 U.S.C.
§ 103(a) as being obvious over Fisher.
Claims 1, 2, 4--7, 9, 11-15, 17, and 35 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by or, in the alternative, under 35 U.S.C.
§ 103(a) as being obvious over Beringer.
Claims 10 and 16 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Fisher.
Claims 10 and 16 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Beringer.
After consideration of the evidence in the appeal record and the
opposing positions of Appellants and the Examiner, we determine that
Appellants fail to identify reversible error in the Examiner's anticipation and
obviousness rejections. Accordingly, we affirm the stated rejections for
substantially the reasons set forth by the Examiner in the Final Office
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Application 12/399,192
Action 1 and in the Examiner's Answer. We offer the following for
emphasis.
Concerning the Examiner's separate anticipation/obviousness
rejections over Beringer and Fisher, Appellants present argument against
these two separate rejections together while mentioning claims 1 and 11 and
argue the rejected claims together as a group based on features common to
claims 1and11 (App. Br. 6-11). We select claim 1 as the representative
claim on which we focus in deciding this appeal as to these rejections.
As Appellants observe, representative claim 1 is a product-by-process
claim wherein patentability is determined based on the product itself and not
the method for producing the product (App. Br. 6).
Appellants do not contest the Examiner's determination that each of
the separately applied Fisher and Beringer prior art references describe a
compressed chewing gum product that employs gum base granules having a
size that satisfies the claim 1 gum granule size limitation (Final Office
Action 3, 5; see generally App. Br.).
Rather, Appellants argue that the method limitation in representative
claim 1 concerning forming gum granules by "extruding a gum composition
through a die plate and cutting the extruded gum composition in a liquid
filled chamber into gum granules" results in a patentably distinct
compressed chewing gum tablet product over the applied gum products
described or suggested by each of Fisher and Beringer (App. Br. 6).2
1 Notification Date August 20, 2013.
2 Appellants observe that the Examiner appears to apply Fisher and Beringer
to an earlier version of representative claim 1 in the Answer by addressing a
feature pertaining to the number of granules of gum composition in the
product gum tablets while referring to claim 1 among other appealed claims
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According to Appellants, this is because the granules used in
Applicants' claim 1 gum product are characterized by a round smoothness
feature inherently imparted by the method of preparing the granules set forth
therein, which feature, according to Appellants, differentiates the claimed
gum product from the applied prior art wherein irregularly surfaced granules
are employed by either Fisher or Beringer in their respective gum products
(App. Br. 6-7). In this regard, Appellants contend that the prior art granules
used by either applied reference necessarily acquire such argued irregular
surface features due to the grinding method of preparation of the granules
described in each of the separately applied references in contrast to the
round smoothness of Appellants' granules argued to be necessarily acquired
via the method of preparing the granules pursuant to the aforementioned
claim 1 product-by-process limitation and as urged to be substantiated by the
Declaration of Dr. Jesper Neergaard3 (App. Br. 7-11; Reply Br. 5-8; Deel.
i-fi-17-14, Pictures 1--4).
In addition, Appellants contend that the gum product made according
to representative claim 1 is attended by unexpected/surprising results in
terms of texture properties sensed during chewing. These results are argued
(Reply Br. 4; Ans. 3, 5, 8, 9, 12). In this regard, the electronic application
file record indicates claim 1 was modified to remove the limitation in
question in an amendment filed June 14, 2013 (a date prior to the
Examiner's Final rejection of August 20, 2013). Furthermore, dependent
claims 2, 14, 17, and 35, which are not separately argued, retain a limitation
respecting gum composition granule number. Thus, the obvious oversight of
inadvertently including claim 1 while addressing a non-argued feature,
which feature is now found only in certain other clams represents harmless
error.
3 Declaration of Dr. Jesper Neergaard, submitted on June 12, 2013.
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Application 12/399,192
to be evinced by sensory test results obtained through employing a nine
member test panel wherein the gum products were scored on a scale of 1
through 15 as reported by Dr. Neergaard in comparing single layer gum
products said to be made according to Examples of Appellants'
Specification and single layer gum products said to be made in accordance
Examples 1-11 of Fisher and Examples 6-12 of Beringer as set forth in the
Declaration of Dr. Neergaard (App. Br. 9-10; Reply Br. 8-9; Deel. i-fi-f 16-
21).
Resolving the issues raised in this appeal by Appellants' arguments
requires us to determine whether the argued product-by-process gum
composition granule preparation limitation of representative claim 1
necessarily imparts the argued surface roundness and smoothness features to
the intermediate product gum composition granules while giving
representative claim 1 its broadest reasonable interpretation and, if that is so,
whether claim 1 further requires that such gum composition granule features
are necessarily carried forward to the gum tablet product so as to inherently
impart these characteristics to the final gum tablet product of claim 1.
Here, Appellants point to paragraphs 2, 7, 10, 20, and 38 of the
subject Specification as providing exemplary, non-limiting disclosure
providing support for the representative claim 1 limitations. However, we
find no disclosure in the cited Specification paragraphs specifying that
"extruding a gum composition through a die plate and cutting the extruded
gum composition in a liquid filled chamber into gum granules" for any gum
composition under any extrusion conditions, using any type of die plate,
employing any type of cutting device and under any extruding and cutting
conditions within the scope of claim 1 will necessarily result in obtaining
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gum granules having a round smoothness characteristic as argued to be a
patentable distinction of claim 1 over the separately applied references.
Nor do Appellants and/or Dr. Jesper Neergaard (in the Declaration
under 37 C.F.R. § 1.132) persuasively detail and evince how granules as
depicted in Picture 1 (accompanying the Declaration) are necessarily
obtained upon forming granules of any gum composition by any extrusion
and cutting technique commensurate with the scope of representative claim
1 (see generally App. Br, and Reply Br.; Deel. i-fi-16-8; Picture 1). In this
regard, the subject Specification indicates that the composition of the gum
employed, the extrusion and cutting equipment and conditions, including the
time it takes to cool the granules in the liquid filled chamber, all represent
parameters that can have an effect on the quality of the gum granules and
final chewing gum product tablet obtained (Spec. i-fi-109, 12, 15, 19, 20, 49-
58, 66, 67).
Moreover, the subject Specification evinces that the handling and
treatment or lack of treatment of the gum granules prior to and during
conveyance of the granules to the tablet pressing apparatus and the
conditions of the tablet pressing and other materials employed in forming the
chewing gum tablets would be expected to influence the qualities of the
chewing gum tablet final product obtained, including the qualities of any
gum granules retained in the final gum tablet, including its surface properties
(Spec. i-fi-121-26, 29, 30, 37, 98-100).
For example, Appellants disclose that "quick cooling acts to preserve
possible fragile ingredients in the gum composition so that their qualities are
better kept intact and conveyed into the granules included in the final gum
product," the extruded gum composition "is cut into granules by the cutting
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Application 12/399,192
means," such as reciprocating knives or rotating knives, after exiting through
openings in a die plate, "several different die plates with different
configuration of the openings can be used in the same granulating
apparatus," dusting or coating granules before conveying the granules to a
tablet pressing apparatus may be employed and can inhibit agglomeration of
the granules and the gum base composition "may be modified to provide a
variety of consistency, texture and other properties to the chewing gum
product" (Spec. i-fi-19, 21, 45, 46, 58). Representative claim 1 is not limited
as to a particular cooling time, the use of particular cutting equipment or die
plate configuration, does not require dusting or coating of any type, and is
not limited to a particular gum composition or particular tableting processing
equipment and processing conditions.
Consequently, Appellants' Specification undercuts Appellants'
argument and the testimony and Declaration evidence and opinions
proffered by Dr. Neergaard. In this regard, Appellants have failed to
establish that the argued gum granule surface features are an inherent feature
of gum granules prepared by cutting an extruded gum composition with any
type of cutting apparatus in a liquid filled chamber under any available
conditions as within the scope of representative claim 1 so as to be an
inherently obtained product feature that is required by claim 1 due to the
representative claim 1 product-by-process extruding step. Moreover and
even if Appellants had established that the argued gum granule surface
features were inherently furnished for the intermediate gum granule product
based on the broadly recited product-by-process extruding step of claim 1,
we concur with the Examiner that Appellants have not established that the
argued gum granule surface features would have been necessarily retained in
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the final compressed chewing gum tablet product given the plethora of post-
extruding processing, conveying, compounding, handling, and tableting
equipment and tableting condition choices within the scope of representative
claim 1 (Ans. 8-10, 12).
In this regard, Appellants have not established that the limited
showing provided by Pictures 1 and 4 and the limited evidence furnished to
support the statements made in the Declaration by Dr. N eergaard as to the
argued gum granule surface features are sufficient to establish that these
argued surface features are an inherently obtained product limitation of a
chewing gum tablet that is made commensurate in scope with the product-
by-process limitations of representative claim 1 (Ans. 8-10, 12; Final Office
Action 10).
In addition and as for the argued unexpected sensory properties for
Appellants' chewing gum tablets, we concur with the Examiner that
Appellants' proffered evidence is insufficient to establish that Appellants
have carried their burden to establish unexpected and different results for
chewing gum products commensurate in scope with the representative claim
1 chewing gum product based on the limited sensory data presented in the
Declaration of Dr. Neergaard with respect to gum types A, B, and C, as
disclosed in Table 1 of the subject Application Specification as compared
with tablets averred to be made in accordance with certain Examples of the
applied prior art (Final Office Action 11; Ans. 10-11; Deel. i-fi-f 15-21 ).
In this regard, the burden of production rests with Appellants to
establish that the reported tests results are unexpected, that the comparisons
are with the closest prior art, and that the showing is commensurate in scope
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with the claimed subject matter. See Jn re Klosak, 455 F.2d 1077, 1080
(CCP A 1972).
In essence, Appellants have not established that the evidence supplied
in the Declaration under 37 C.F.R. § 1.132 by Dr. Neergaard presents data
that is statistically significant much less evidence that is of sufficient
quantity ("no data reported beyond an average of results from only 9 test
panel members") to meet the above-noted production standard of furnishing
results for the claimed invention that are truly unexpected over the extensive
scope of representative claim 1 when compared with the closest prior art so
as to establish unexpected results which are commensurate in scope with the
claimed subject matter (Final Office Action 10-12; Ans. 10-11). In this
regard, the relied upon test results from the Declaration under 37 C.F.R.
§ 1.132 by Dr. Neergaard does not include the raw data from the testing said
to be conducted but is limited to a report of an average texture chewing
rating of 8 on a scale of 1 to 15 reported by a panel of nine members for a
population (Sample Population I) of gum types A, B, and C reported as
being made in accordance with Examples 1 through 7 of the subject
Specification and a report of an average rating of 5 on the same scale for a
collective population (Sample Population II) of chewing gum products said
to be made in accordance with certain examples of the separately applied
Beringer and Fisher Patents (Deel. i-fi-f 17-21 ). The Declaration and
arguments presented by Appellants furnish no credible analysis as to how
the Sample Population I gums tested individually and as to how these gums
may have been illustrative of results that would have been expected across
the scope of representative claim 1 and furnish no evidence as to how fully
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specified gums made in accordance with each of the separate applied prior
art references tested on a gum by gum basis.
Representative claim 1, as indicated above, is not so limited as the
population of gums tested and said to be made in accordance with the
Specification Examples involving gum types A, B, and C.
In addition to and consistent with the Examiner's determination as to
the lack of statistical significance of the reported test results, Appellants
have not proffered any persuasive scientific explanation articulating why the
reported averaged results for the limited examples said to be made would
have been logically expected to accrue over the extensive scope of the
representative claim 1 subject matter so as to discharge Appellants' burden
of establishing unexpected results that are reasonably commensurate in
scope with the claimed subject matter. In re Greenfield, 571 F .2d 1185,
1189 (CCP A 1978)( quoting In re Tiffin, 448 F .2d 791, 792 (CCP A
1971))("Establishing that one (or a small number of) species gives
unexpected results is inadequate proof, for 'it is the view of this court that
objective evidence of non-obviousness must be commensurate in scope with
the claims which the evidence is offered to support."'); see also In re Dill,
604 F.2d 1356, 1361(CCPA1979). Moreover, Appellants have not
established results for comparison examples that are truly representative of
the closest prior art and that the reported results are truly unexpected to one
of ordinary skill in the art.
Based on the totality of the record, including due consideration of
Appellants' evidence and arguments, we determine that the preponderance
of evidence weighs most heavily in favor of an anticipation and obviousness
determination for the claimed subject matter. Thus, upon consideration of
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the arguments and evidence of record, we determine that the Examiner has
reasonably established that representative claim 1 is anticipated by and, in
the alternative, rendered obvious over either Beringer or Fisher.
Accordingly, we affirm the stated anticipation/obviousness rejections
of the Examiner over each of Beringer and Fisher.
Appellants rely on their arguments and evidence set forth for the base
rejections, as discussed above, for traversing the Examiner's separate
obviousness rejection of dependent claims 10 and 16 over either Fisher or
Beringer. It follows that we shall sustain the latter rejections.
CONCLUSION/ORDER
The Examiner's decision to reject claims the appealed claims 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).
AFFIRMED
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