Ex Parte MIKKELSEN et alDownload PDFPatent Trial and Appeal BoardFeb 23, 201612399192 (P.T.A.B. Feb. 23, 2016) Copy Citation 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 Appeal2014-005364 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 2 Appeal2014-005364 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 3 Appeal2014-005364 Application 12/399,192 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. 4 Appeal2014-005364 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 5 Appeal2014-005364 Application 12/399,192 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 6 Appeal2014-005364 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 7 Appeal2014-005364 Application 12/399,192 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 8 Appeal2014-005364 Application 12/399,192 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 9 Appeal2014-005364 Application 12/399,192 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 10 Appeal2014-005364 Application 12/399,192 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 11 Copy with citationCopy as parenthetical citation