Ex Parte Neergaard

Patent Trial and Appeal Board

Feb 12, 2016

12622848 (P.T.A.B. Feb. 12, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/622,848 11120/2009 Jes per N eergaard
24126 7590 02/17/2016
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-P0039A 5144
EXAMINER
THAKUR, VIREN A
ART UNIT PAPER NUMBER
1792
NOTIFICATION DATE DELIVERY MODE
02/17/2016 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
Appeal2014-005391
Application 12/622,848
Technology Center 1700
Before: TERRY J. OWENS, CATHERINE Q. TIMM and
AVEL YN M. ROSS, Administrative Patent Judges.
ROSS, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellant2 seeks review under 35 U.S.C. § 134 from the Examiner's
final rejection of claims 1, 2, 4, and 6-24, under 35 U.S.C. § 103(a). We
have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 In our opinion below, we refer to the Final Office Action appealed from,
filed November 15, 2013 (Final), the Appeal Brief, filed December 12, 2013
(Appeal Br.), the Examiner's Answer, filed January 29, 2014 (Ans.), and the
Reply Brief, filed March 31, 2014 (Reply Br.).
2 Appellant identifies the real party in interest as Gumlink A/S, the assignee
of the subject patent application. Appeal Br. 4.
Appeal2014-005391
Application 12/622,848
STATEMENT OF CASE
The claims are directed to a "packaged confectionary product
comprising a biodegradable chewing gum composition and a package
assembly forming a humidity barrier to the biodegradable chewing gum
composition." Spec. if 2. Claim 1, reproduced below, is illustrative of the
claimed subject matter:
1. A packaged confectionary product compnsmg a
biodegradable chewing gum composition and a package
assembly forming a humidity barrier to the biodegradable
chewing gum composition, the chewing gum composition being
comprised in chewing gum pieces, wherein a water content
within the package assembly is less than 2.0% by weight of the
packaged chewing gum composition and wherein a moisture
vapor transmission rate (MVTR) of the package assembly
forming the humidity barrier is less than 3g/m2/24hr with
reference to DIN 23°C, 85% RH/DIN 53122, wherein the
chewing gum pieces are comprised in the package assembly and
wherein the chewing gum pieces contain water.
Appeal Br., Claims Appendix at 27.
REJECTIONS
The Examiner made the following rejections:
A. Claims 1, 2, 4, 6-10, 13-16, 18, 19, and 21-24 stand
rejected under 35 U.S.C. §103(a) as being unpatentable
over Anderson et al. 3 in view of Zurawski et al.4, Gregory
3 Anderson et al., WO 2004/028265 Al, published April 8, 2004 (hereinafter
"Anderson").
4 Zurawski et al., US 5,885,630, issued March 23, 1999 (hereinafter
"Zurawski").
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Application 12/622,848
et al. 5, and Boyd et al. 6 and as evidenced by "Plastics
Design Library Staff'7 and Grijpma et al. 8
B. Claim 8 stands rejected under 35 U.S.C. §103(a) as being
unpatentable over the combination as applied to claim 1
and in further view of Bridger et al. 9 and "BlairCandy."10
C. Claim 11 stands rejected under 35U.S.C.§103(a) as being
unpatentable over the combination as applied to claim 1,
and in further view of Bridger 2004.
D. Claim 12 stands rejected under 35U.S.C.§103(a) as being
unpatentable over the combination as applied to claim 1,
and in further view of Hultberg et al. 11 or Kuroki. 12
E. Claim 13 stands rejected under 35U.S.C.§103(a) as being
unpatentable over the combination as applied to claim 1,
5 Gregory et al., US 4,305,502, issued December 15, 1981 (hereinafter
"Gregory").
6 Boyd et al., US 6,010,724, issued January 4, 2000 (hereinafter "Boyd").
7 "Permeability and Other Film Properties of Plastics and Elastomers,"
Plastics Design Library Staff (hereinafter "Plastics Design Library Staff').
8 Grijpma et al., US 5,672,367, issued September 30, 1997 (hereinafter
"Grijpma").
9 Bridger et al., US 2004/0247742 Al, published December 9, 2004
(hereinafter "Bridger 2004").
10 BlairCandy (February 12, 2006),
http://www.blaircandy.com/mibugumba32.html
[http://www.web.archive.org/web/20060212 l 45957 /http://www.blaircandy.c
om/mibugumba32.html].
11 Hultberg et al., US 2007/0186511 Al, published August 16, 2007
(hereinafter "Hultberg").
12 Kuroki, JP 63-24856, published February 2, 1988 (hereinafter "Kuroki").
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Application 12/622,848
and in further view of Rudolph et al., 13 "ClearFoil,"14 or
Iossi. 15
F. Claim 15 stands rejected under 35U.S.C.§103(a) as being
unpatentable over the combination as applied to claim 1,
and in further view of Grijpma and Bougoulas et al. 16
G. Claim 17 stands rejected under 35U.S.C.§103(a) as being
unpatentable over the combination as applied to claim 1,
and in further view of Abraham et al. 17
H. Claim 20 stands rejected under 35U.S.C.§103(a) as being
unpatentable over the combination as applied to claim 1,
and in further view of Cook et al. 18 or Bridger et al. 19
Appellant provides no substantive argument as to the separate
patentability of claims 2, 4, and 6-24. See Appeal Br. 20-26. The issue
arising is the same for all claims, and it will suffice for us to focus our
discussion on the rejection of claim 1 to resolve the issues on appeal.
13 Rudolph et al., US 4, 150, 161, issued April 17, 1979 (hereinafter
"Rudolph").
14 Product Specification, Rollprint Packaging Products, Inc., ClearFoil Ultra-
high Barrier Transparent Laminates (10/04) (hereinafter "ClearFoil").
15 Iossi, US 20050205457 Al, published September 22, 2005 (hereinafter
"Iossi").
16 Bougoulas et al., US 2006/0051457 Al, published March 9, 2006
(hereinafter "Bougoulas").
17 Abraham et al., US 2005/0170041 Al, published August 4, 2005
(hereinafter "Abraham").
18 Cook et al., US 2003/0032764 Al, published February 13, 2003
(hereinafter "Cook").
19 Bridger et al., US 2006/0083818 Al, published April 20, 2006 (hereinafter
"Bridger 2006").
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Application 12/622,848
OPINION
The Examiner finds that Anderson in view of Zurawski, Gregory, and
Boyd, and as evidenced by "Plastics Design Library Staff' and Grijpma,
teaches the packaged confectionary product of claim 1. Final 2---6.
Appellant does not dispute the Examiner's findings that the collective
teachings of Anderson, and others above, would have suggested the
packaged confectionary product of the claims-we adopt the Examiner's
findings here. See Appeal Br. 12 and Reply Br. 4---6. Rather, Appellant
argues that
those skilled in the art would not have been motivated to employ those
packaging materials disclosed by the various secondary references in
connection with the biodegradable, moisture-containing chewing gums
taught by Andersen, and indeed, the teachings of Andersen itself would
have led those skilled in the art away from doing so.
Appeal Br. 13. Appellant also asserts that "those skilled in the art would
have found no motivation and no reasonable expectation of success in
combining the disclosure of Andersen with any of the various secondary
prior art references cited by the Examiner. ... " Id. at 14.
Thus, the issue on appeal becomes whether Appellant has identified
reversible error in the Examiner's finding that one of ordinary skill in the art
would have reason to modify Anderson's teachings to include a humidity
barrier taught by the secondary references. On this record, we find
Appellant has not.
Appellant initially argues that the disclosure of Anderson would teach
away from using the disclosed packaging materials taught by the secondary
references-Zurawski and Boyd, in particular-because "the chewing gum
of Anderson would have trapped the moisture present in the chewing gum,
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as manufactured, inside the package, which as taught by Anderson itself,
may create problems with undesirable pre-degradation." Appeal Br. 13. In
support of Appellant's position, Appellant submits the Declaration of Dr.
Jesper Neergaard (hereinafter "Neergaard Declaration").
Like the Examiner (Final 16, 18, 29), we find that one of ordinary
skill in the art would not have viewed Anderson's teachings as a teaching
away. When the prior art teaches away from a combination, that
combination is more likely to be nonobvious. See id. However, to teach
away, a reference must discourage one of ordinary skill in the art from
following the path set out in the reference, or leads that person in a direction
divergent from the path taken by the applicant. In re Gurley, 27 F.3d 551,
553 (Fed. Cir. 1994). Various types of teachings may support a finding of
"teaching away." These include known disadvantages in old devices that
would naturally discourage the search for new inventions, teachings leaving
the impression that the product would not have the property sought by the
applicant, and reference combinations that would produce a seemingly
inoperative device. Id.
Anderson teaches a biodegradable chewing gum where a small
amount of water content is highly desired. Anderson p. 1, 11. 22-23. While
Anderson does recognize that even small amounts of water can cause
degradation (id. at p. 1, 11. 18-20), Anderson explains that the water content
can be as high as 2.0% by weight and produce "an acceptable chewing gum
having certain stability with respect to degradation." Id. at p. 2, 1. 24--p. 3, 1.
6. Anderson also discusses packaging the chewing gum. Id. at p. 18, 1. 7.
From Anderson, the skilled artisan would learn that some water
content is highly desirable for biodegradable chewing gum compositions but
that too much water may cause premature degradation, i.e., degradation prior
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Application 12/622,848
to chewing. Anderson p. 1, 11. 18-20. Nothing in Anderson would lead one
skilled in the art to infer that a humidity barrier would be objectionable.
Indeed, the teachings of Anderson would lead an ordinary artisan to infer the
importance of maintaining a proper balance of water content within the
composition. The Neergaard Declaration, providing opinion testimony, does
not convince us otherwise. In re Oelrich, 579 F.2d 86, 91(CCPA1978)(In
assessing the probative value of declaratory evidence, one must consider the
nature of the matter sought to be established as well as the strength of the
opposing evidence.). As noted by the Examiner, the Neergaard Declaration
is not supported by sufficient evidence. Final 1 7 and 19-21. And, the
Neergaard Declaration primarily characterizes Dr. Neergaard's opinion
about what Andersen says without providing additional technical
analysis. Dr. Neergaard's characterization of Anderson is insufficient to
supplant the actual teachings of Anderson. For these reasons, in addition to
those discussed in the Final Office Action and the Examiner's Answer, we
are not persuaded that Anderson's teachings teach away from the
Examiner's proposed combination.
Appellant also argues that a person skilled in the art would have no
reasonable expectation of success based on the Examiner's combination of
references. According to Appellant, "[ n ]on-degradable chewing gum is a
completely different kind of chewing gum compared to degradable chewing
gum in terms of properties and intended function" and "non-degradable
chewing gum would certainly not degrade during storage because the
polymers are intended to sustain the presence of water." Appeal Br. 14--15.
In assessing whether a claim to a combination of prior art elements
would have been obvious, the law "requires that the skilled artisan would
have perceived a reasonable expectation of success in making the invention
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in light of the prior art." Amgen v. F. Hoffman-La Roche Ltd., 580 F.3d
1340, 1362 (Fed. Cir. 2009) (citing In re Kubin, 561 F.3d 1351, 1360 (Fed.
Cir. 2009)). "[O]nly a reasonable expectation of success, not a guarantee, is
needed." Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1364 (Fed. Cir. 2007);
In re Langi, 759 F.2d 887, 897 ("Only a reasonable expectation of success,
not absolute predictability is necessary" to support a conclusion of
obviousness).
We have considered Appellant's arguments, but are not persuaded.
Zurawski and Boyd teach packaging for non-degradable chewing gum
composition using materials that provide a humidity barrier less than
3g/m2/24hr. See Zurawski col. 3, 11. 11-19 (further evidenced by "Plastics
design Library Staff') and Boyd col. 6, 11. 23-30. Boyd also teaches that
packaging to prevent both moisture loss and gain during storage is important
for non-degradable gum compositions. Boyd col. 1, 11. 9-22. And Grijpma
teaches that degradable chewing gum compositions can be degraded by
environmental elements such as exposure to light and water. Grijpma col. 1,
11. 29--42; see also Anderson p. 12, 1. 29-p. 13, 1. 16.
Given these teachings, as well as those discussed in Anderson above,
we concur with the Examiner that one of ordinary skill in the art would have
been led to employ the claimed packaged confectionary product with a
reasonable expectation of success. We agree with the Examiner that:
the prior art also recognized that the packaging materials have an
effect of moisture on non-degradable gum and that moisture can
have an effect on degradable gum. Therefore, taken as a whole,
the art teaches that the packaging materials used for protecting
non-degradable gums from moisture could have been equally
advantageous for protecting degradable gum from moisture. As
such, the prior art is seen to provide motivation for packaging
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Application 12/622,848
biodegradable chewing gum with the packaging materials taught
by the prior art.
Final 20; see KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007)("The
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results."). And
Appellant's position that Anderson is concerned only with water internal to
the chewing gum composition and not the ingress of water is not entirely
accurate. Appeal Br. 16. While Anderson does focus on water within the
chewing gum composition, it also teaches that chewing gum compositions
can degrade due to environmental influences. Anderson p. 12, 1. 29-p. 13, 1.
16; see also Grijpma col. 1, 11. 29--42. Moreover, the testimony of Dr.
Neergaard that "non-degradable chewing gum would certainly not degrade
during storage because the polymers are intended to sustain the presence of
water" is not convincing in light of the teachings of Boyd. Compare
Neergaard Deel. i-f 8 with Boyd col. 1, 11. 9-22.
Consistent with Appellant's teaching away position, Appellant also
contends that
those skilled in the art would have expected that a package forming a
humidity barrier as taught by the secondary prior art references, would
be a problem to biodegradable chewing gum since he/she would
reasonably expect biodegradable chewing gum to react with water
trapped inside the package under these conditions.
Appeal Br. 15 and 17-18; see also Neergaard Deel. i-fl9 (same). The
Examiner aptly finds that a "complete" barrier, as Dr. Neergaard suggests
(N eergaard Deel. i-fi-f l 9-21 ), is not advanced by either the pending claims or
the prior art. Final 20-21. Rather, the claims state that the MVTR of
humidity barrier is less than 3 g/m2/24hr. Therefore, some water is permitted
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Application 12/622,848
to pass through the humidity barrier as claimed and as taught by Boyd and
Zurawski, among others.
Therefore, because Appellant has not shown reversible error in the
Examiner's findings, we sustain the Examiner's rejections.
CONCLUSION
The Examiner did not err in rejecting claims 1, 2, 4, and 6-24, under
35 U.S.C. § 103(a).
DECISION
For the above reasons, the Examiner's rejection of claims 1, 2, 4, and
6-24 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 )(iv) (2009).
AFFIRMED
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