Ex Parte Neergaard

Patent Trial and Appeal Board

Feb 10, 2016

12627948 (P.T.A.B. Feb. 10, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/627,948 11130/2009 Jes per N eergaard
24126 7590 02/12/2016
ST ONGE STEW ARD JOHNSTON & REENS, LLC
986 BEDFORD STREET
STAMFORD, CT 06905-5619
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.
05198-P0040A 5005
EXAMINER
DEES, NIKKI H
ART UNIT PAPER NUMBER
1791
NOTIFICATION DATE DELIVERY MODE
02/12/2016 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):
patentpto@ssjr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JESPER NEERGAARD
Appeal2014--002040
Application 12/627,948
Technology Center 1700
Before TERRY J. OWENS, ROMULO H. DELMENDO and
BEVERLY A. FRANKLIN, Administrative Patent Judges.
DELMENDO, Administrative Patent Judge.
DECISION ON APPEAL
The Appellant1 seeks our review under 35 U.S.C. § 134(a) of a
decision of the Primary Examiner to reject claims 1, 4---6, 8, 9, 16, 18, and
21-26. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
BACKGROUND
The subject matter on appeal relates to a biodegradable chewing gum
composition with improved biodegradation and low tack properties provided
by a plurality of side chains attached to a backbone of an included gum base
1 The Appellant states that "Gumlink A/S" is the real party in interest
(Appeal Brief filed July 15, 2013, hereinafter "App. Br.," 1).
Appeal2014-002040
Application 12/627,948
polymer (Specification, hereinafter "Spec" i1i12, 8). Representative claim 1
is reproduced from page 20 of the Appeal Brief (Claims App.) as follows:
1. A chewing gum composition comprising gum
base, at least one sweetener and at least one
flavor, said composition having low tack effected
by a plurality of side chains attached to a
backbone of at least one biodegradable gum base
polymer.
THE REJECTIONS
The Examiner rejected the claims as follows:
I. Claims 8 and 9 under 35 U.S.C. §112 i-f 1, as failing to
comply with the written description requirement;
II. Claims 1, 4---6, 8, 9, 16, 18, and 22-26 under 35 U.S.C. §
103(a) as being unpatentable over Andersen et al.
("Andersen"),2 Park et al. ("Park")3 and Cosgrove et al.
("Cosgrove");4 and
III. Claims 1, 4---6, 8, 9, 16, 18 and 21-26 under 35 U.S.C. §
103(a) as being unpatentable over Goldberg et al.
("Goldberg"), 5 Park and Cosgrove.
(Examiner's Answer entered October 03, 2013, hereinafter "Ans.", 2-7;
Final Office Action entered January 15, 2013, hereinafter "Final Act.," 2-7.)
2 US 2004/0146599 Al, published July 29, 2004.
3 US Patent No. 7,151,142 B2, issued December 19, 2006.
4 WO 2006/016179 Al, published February 16, 2006.
5 WO 01/47368 Al, published July 5, 2001.
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DISCUSSION
I
The Examiner rejected claims 8 and 9 under U.S.C. § 112 i-f 1, "as
failing to comply with the written description requirement ... claim(s)
contains subject matter which was not described ... to reasonably convey to
one skilled in the relevant art that the inventor or a joint inventor ... had
possession of the claimed invention" (Final Act. 2-3). Specifically, with
respect to claim 8, the Examiner held the original disclosure lacks "support
for the gum base content of the chewing gum to range from 15 to 70% by
weight of the chewing gum" (id. at 3). With respect to claim 9, the
Examiner held the original disclosure lacks "support for the gum base to
comprise at least 5% by weight biodegradable polymers" (id.).
The Appellant has set forth no arguments regarding the merits of the
Examiner's rejection of claims 8 and 9 under 35 U.S.C. § 112 i-f 1, stating
"the rejection of Claims 8 and 9 under 35 U.S.C. 112 first paragraph, is not
being appealed - instead it will be addressed by amendment or cancellation .
. . . "(Br. 9). Because no amendment or cancellation of claims has been
offered to address this rejection, we summarily affirm the written description
rejection of claims 8 and 9 for essentially the reasons as set forth in the Final
Rejection.
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II
In arguing for the reversal of Rejection II, the Appellant argues
independent claims 1, 25, and 26 together, focusing only on claim 1, and
argue dependent claims 4---6, 8, 9, 16, 18 and 22-24 for the same reasons as
set forth with respect to the independent claims (Br. 11-18). Therefore,
consistent with 37 C.F.R. § 41.37(c)(l)(iv), we confine our discussion to
representative claim 1.
As found by the Examiner (Ans. 3), Andersen describes a chewing
gum composition comprising biodegradable polymer gum base, at least one
flavor and at least one sweetener (Abst.; i-fi-125, 42). The Examiner found
that Andersen does not disclose a "biodegradable polymer having low-tack
effected by a plurality of side chains attached to the backbone of the
biodegradable polymer" in the manner recited as recited by the claims (Ans.
3). The Examiner found further, however, that Park discloses
"biodegradable polyester polymers grafted with polyethylene glycol ... to
improve the hydrophilicity of the polyester polymer" (id. at 4) (citing Park,
col. 2, 11. 26-31 ). Additionally, the Examiner found that Cosgrove discloses
"grafting of carbon-carbon polymers with polyethylene glycol side chains to
improve the hydrophilicity of the polymer and, in tum, decrease the
tackiness of the polymer to provide a chewing gum with reduced-stick
properties" (Ans. 4) (citing Cosgrove, i16). Based on these findings, the
Examiner concluded that a person ordinary skill in the art would have found
it obvious to have included the hydrophilic side chains as taught by Park in
Andersen with the expectation of "improv[ing] the non-stick properties of
the chewing gum" as supported by the teachings of Cosgrove (Ans. 5).
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Application 12/627,948
The Appellant argues Park discloses polymers that contain a binding
moiety of an initiator or change transfer agent and that such initiators or
chain transfer agents are toxic for human consumption or otherwise not
suitable for human consumption, relying on the October 24, 2012
Declaration of Jesper Neergaard (Neergaard Deel.) as evidence to support
this position (Br. at 12-14). Mr. Neergaard opines that, inter alia,
"polymers to be used in chewing gum would need to be non-toxic and free
of any harmful remnants from the synthesis of the polymers" and the "the
polymer synthesized in Park would indeed be problematic to use in chewing
gum" because the polymer contains a "binding moiety of the initiator or
chain transfer agent added for polymerization" (Neergaard Deel. i-fi-17, 9).
Mr. Neergaard further opines that because Park mentions 2,2'-
azobisisobutyronitrile ("AIBN") as the polymerization initiator and AIBN
"is classified in the risk phase R 25 of the European Union Directive
67 /548/EEC as toxic if swallowed" that "[he] would as a skilled person not
even consider using the polymer synthesized in Park for the purpose of
chewing gum formulation" because of the likely toxicity if swallowed
(Neergaard Deel. i19-10). The Appellant further clarifies this position in the
Reply Brief (Reply Br.) filed on December 3, 2013, arguing the AIBN
initiator provides---CN functional group (nitryl) to the polymers of Park
which "is known to be toxic as part of common knowledge" (Reply Br. at 2-
3). Thus, the Appellant contends that for these reason "one skilled in the art
would never consider the polymers of Park et al. for use in chewing gum"
(Br. at 13). Based on this, the Appellant concludes "one skilled in the art
would clearly be led away from employing the polymers of Park et al. for
use in chewing gum" (id. at 14).
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Application 12/627,948
The Appellant's arguments do not reveal any reversible error in the
Examiner's factual findings, analysis, and conclusion of obviousness.
Specifically, we find the Appellant's reliance on the AIBN initiator of Park
as evidence of toxicity of the polymers of Park is misplaced as Park merely
exemplifies AIBN as a known initiator. As found by the Examiner (Ans. 4),
Park describes improving the hydrophilic properties of a biodegradable
polyester polymers by grafting polyethylene glycol side chains to the
polyester backbone and Park discloses "extensive research has been
undertaken to impart hydrophilicity to the aliphatic polyesters" (col. 1 11. 32-
34). Additionally, as found by the Examiner (Ans. 9), Park teaches that it is
known to provide aliphatic polyester polymers with poly( ethylene glycol)
side chains by other methods (col. 1 11. 64---col. 2 11. 14 ). That some
experimentation may have been necessary to determine the suitability of an
option for use in gums has not been shown to require anything more than the
ordinary skill in the art. Given the breadth of the disclosure, we agree with
the Examiner that the exemplified AIBN does not lead away from Park's
general disclosure and that one of ordinary skill in the art would have found
it obvious to employ other methods to graft poly( ethylene glycol) side
chains. Disclosed examples and preferred embodiments do not constitute a
teaching away from a broader disclosure or non-preferred embodiments. In
re Susi, 440 F.2d 442, 445 n.3 (CCPA 1971). Additionally, a reference may
be relied upon for all that it would have reasonably suggested to one having
ordinary skill the art. Merck & Co., Inc. v. Biocraft Laboratories, Inc., 874
F.2d 804 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989).
The Appellant has also proffered evidence (in the form of the
Neergaard Declaration) that, because Park is concerned with including
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reactive groups (-OH) that may chemically connect the side chains or drugs
via covalent bonds, Park "points in another direction than 'low tack'" (id.).
Mr. Neergaard opines that "I would realize that the side chains disclosed by
Park would most likely not be low tack" because "the side chain contains
reactive group (-OH group) at the end of the poly(ethylene glycol) side
chains" (Neergaard Deel. i-fl 1-12). From this Mr. Neergaard concludes that
"I would consider the polymers disclosed by Park to work as 'tackifying'
polymers due to the potential of the reactive end groups capable of forming
covalent bonds" (id. at i-fl3). However, we find this line of reasoning
unpersuasive for the reasons outlined by the Examiner in the Final Office
Action. The Examiner found that Cosgrove discloses grafting the
poly( ethylene glycol) side chain (having the same reactive group -OH) to a
polymer backbone provides a polymeric gum base with low-tack properties
(Final Act. at 10). Given that the Appellant has proffered no factual
evidence to contradict this understanding of Cosgrove, we find the
Appellant's arguments and evidence fail to reveal reversible error in the
Examiner's conclusion that the combination of Park with Cosgrove suggests
the poly( ethylene glycol) hydrophilic side-chain grafted to a polyester
polymer backbone will present "low tack" properties.
The Appellant also rejects the Examiner's utilization of Park and
Cosgrove to establish the "low tack" feature of the instant claims, arguing
the Examiner improperly relies on the doctrine of inherency by failing to
establish "the products in question are identical or substantially identical or
that they are produced by an identical or substantially identical process" and
therefore the Examiner failed to shift the burden of proving the absence of
"low tack" in the polymers (Br. 15-16).
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We have considered fully the Appellant's multiple arguments based
on the Examiner's failure to set forth sufficient evidence of inherency (Br.
17-18). However, for reasons discussed below, we reject these arguments
as unpersuasive.
In relying upon the theory of inherency, "the [E]xaminer must provide
a basis in fact and/or technical reasoning to reasonably support the
determination that the allegedly inherent characteristic necessarily flows
from the teachings of the applied prior art." Ex parte Levy, 17 USPQ2d
1461, 1464 (Bd. Pat. App. & Inter. 1990).
Here, Andersen discloses "the at least one degradable elastomeric or
resinous polymer of the coated chewing gum element is a polyester
polymer" including graft polymers of polyester (i-f 0025). As found by the
Examiner (Ans. 4), Park discloses polyethylene glycol grafted to polyester
polymers to provide a polymer with hydrophilic properties (col. 1, 11. 32-34;
col. 2, 11. 26-31 ). The Examiner further noted Cosgrove indicates that the
tack properties of a gum base polymer can be reduced by grafting side
chains with hydrophilic character, such as poly(alkylene glycol), and more
specifically poly( ethylene glycol), to the polymer backbone (id. at 4--5)
(citing Cosgrove 2). Also, as found by the Examiner (id. at 10---11 ),
Cosgrove attributes the low tack characteristic to the presence of the grafted
hydrophilic side chains and notes the increase in the number of side chains
will increase the polymer hydrophilicity (Cosgrove 7). Therefore, given the
collective teachings of Andersen, Park and Cosgrove, we conclude that the
examiner has proffered sufficient technical reasoning to support the
conclusion that a hydrophilic poly( ethylene glycol) side chain grafted to a
polyester polymer will present low tack properties when present in a gum
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polymer. In so concluding, we note that the Appellant has not produced
additional factual evidence rebutting the Examiner's findings and
conclusions. In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (Once the
examiner presents evidence or reasoning tending to show inherency, the
burden of production shifts to the Appellant.)
Therefore, we hold that, given the collective teachings of Andersen,
Park and Cosgrove, a person of ordinary skill in the art would have been
prompted to graft a poly( alkylene glycol), and more specifically
poly( ethylene glycol), hydrophilic side chain to a polyester in the gum base
of Andersen to provide low tack gum polymer because poly( ethylene glycol)
side chains provide hydrophilic properties to the polyester backbone as
established by Park and the hydrophilic properties associated with
poly( ethylene glycol) are acknowledged by Cosgrove as providing a low-
tack effect to a polymer gum base. The test of obviousness is not express
suggestion of the claimed invention in any or all references but rather what
the references taken collectively would suggest to those of ordinary skill in
the art presumed to be familiar with them. In re Rosselet, 347 F.2d 847, 851
(CCPA 1965); In re Hedges, 783 F.2d 1038, 1041 (Fed. Cir. 1986).
III
In arguing the reversal of Rejection III, the Appellant presents no
additional argument and therefore we maintain this rejection for the same
reasons as set forth above.
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survnvIARY
For these reasons and those set forth in the answer, Rejections I, II
and III are affirmed. Therefore, the Examiner's final decision to reject
claims 1, 4---6, 8, 9, 16, 18, and 21-26 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)(l).
AFFIRMED
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