Ex Parte Neergaard et al

Patent Trial and Appeal Board

Aug 1, 2016

13719670 (P.T.A.B. Aug. 1, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
131719,670 12/19/2012 Jes per N eergaard
24126 7590 08/03/2016
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-P0045B 1682
EXAMINER
DEES, NIKKI H
ART UNIT PAPER NUMBER
1791
NOTIFICATION DATE DELIVERY MODE
08/03/2016 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,
HELLE WITTORFF, and HENRIETTE SIE WOLDUM
Appeal2015-002205
Application 13/719,670
Technology Center 1700
Before MARK NAGUMO, GEORGE C. BEST, and MONTE T. SQUIRE,
Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 1-20 of Application 13/719,670
under 35 U.S.C. § 103(a) as obvious. Final Act. (January 13, 2014). The
Examiner also finally rejected claims 13-16 under 35 U.S.C. § 112, i-f 1 as
failing to comply with the written description requirement and under
35 U.S.C. § 112, i-f 2 as indefinite. Id. Appellants 1 seek reversal of these
rejections pursuant to 35 U.S.C. § 134(a). We have jurisdiction under
35 U.S.C. § 6.
1Gumlink A/S is identified as the real party in interest. Appeal Br. 3.
Appeal2015-002205
Application 13/719,670
For the reasons set forth below, we AFFIRM.
BACKGROUND
The '670 Application describes chewing gums and chewing gum
bases. Spec. i-f 1. In particular, Appellants' Specification describes
biodegradable polyester polymers that can be used as chewing gum bases.
Id. i-fi-f 2-7.
Claim 1 is representative of the '670 Application's claims and is
reproduced below:
1. A chewing gum comprising at least one polyester
polymer, said polyester polymer consisting of the following
polyester-forming components in condensed form:
a) at least one dicarboxylic acid,
b) at least one diol,
c) at least one compound having at least three groups
capable of ester formation,
wherein the polyester polymer comprises the components
a) and b) in an amount of at least 90% by weight based on a
total weight of the polyester polymer, and wherein the molar
ratio between aromatic acids and aliphatic acids of said
dicarboxylic acid in the chewing gum is between 0 and 1 :4.2.
Appeal Br. 28 (Claims App.).
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Appeal2015-002205
Application 13/719,670
REJECTIONS
On appeal, the Examiner maintains2 the following rejections:
1. Claims 1-11 and 13-20 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Bunczek. 3 Final Act. 5; Answer 2.
2. Claim 12 is rejected under 35 U.S.C. § 103(a) as unpatentable over
the combination of Bunczek, Cook, 4 and Muller. 5 Final Act. 7;
Answer4.
DISCUSSION
We affirm the Examiner's rejections for the reasons expressed in the
Final Action and the Examiner's Answer. We add the following:
Rejection 1. The Examiner rejected claims 1-11 and 13-20 as
unpatentablye obvious over Bunczek. Final Act. 5; Answer 2.
Claims 1, 13, and 1 7 are independent. Appellants present specific
argument for reversal of the rejection of these claims. See Appeal Br. 16-
26. Appellants argue for reversal of the rejection of claims 2-11, 14--16, and
18-20 solely on the basis of their ultimate dependence from claim 1, 13, or
17. Id. at 26. We, therefore, limit our discussion to the independent claims.
Each of the '670 Application's independent claims is directed to a
polyester polymer formed from (a) at least one dicarboxylic acid, (b) at least
2 The Examiner has withdrawn the rejections of claims 13-16 under 35
U.S.C. § 112. Answer 5.
3 US 6,013,287, issued January 11, 2000.
4 US 6,469,129 Bl, issued October 22, 2002.
5 Rolf-Joachim Muller et al., Biodegradation of polyesters containing
aromatic constituents, 86 J. Biotech. 87 (2001 ).
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Appeal2015-002205
Application 13/719,670
one diol, and ( c) at least one compound that has at least three groups capable
of forming esters. See claims 1, 13, 17. Each of the independent claims
further requires that the polyester comprise components (a) and (b) in an
amount of at least 90% by weight based upon the total weight of the
polyester polymer. Id.
Appellants' principal argument for reversal of Rejection 1 is that the
Examiner erred by finding that Bunczek describes or suggests a polyester
polymer in which the diacid and diol components (identified as components
(a) and (b) in the '670 Application's claims) are present in an amount of at
least 90% by weight based upon the total weight of the polyester polymer.
Appeal Br. 20-26.
In rejecting claims 1, 13, and 1 7, the Examiner found:
12. Regarding claims 1, 7, 9-11, 13, 15, 17, 18 and 20,
Bunczek et al. teach polyester polymers consisting of the
polyester-forming components of at least one dicarboxylic acid
(i.e. adipic acid), at least one diol (i.e. propylene
glycol=propane-1,2-diol) and at least one compound having at
least three groups capable of ester formation (i.e. glycerol).
Examples P and Q in the table in col. 4 of Bunczek teach the
amount of glycerol at approximately 4% and 9%, respectively,
by weight based on the total weight of the polyester. The molar
ratio between aromatic acids and aliphatic acids of said
dicarboxylic acid is 0: 1, with no aromatic acids present in the
above examples.
13. Gum examples 5, 6 and 7 teach non-endcapped polyester
polymers (from Base Examples D and E) in chewing gums.
Base examples D and E do not have compound c) present at
10% or less of the polyester polymer.[6J However, as examples
6 The Examiner found that in Bunczek' s gum base Example E, see Bunczek
col. 7, 11. 12-50, components (a) and (b) comprise 88% by weight of the
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Appeal2015-002205
Application 13/719,670
P and Q have compound c) at less than 10% of the polyester
polymer, and Bunczek is concerned with polyester polymers for
inclusion in chewing gums, it is considered obvious to include
such polymers in chewing gums.
Final Act. 5.
Appellants argue that the Examiner's findings are erroneous because
the Examiner has misinterpreted Bunczek. Appeal Br. 16-26. In particular,
Appellants contest the Examiner's finding that Bunczek's polyester
polymers identified as Examples P and Q in the table reproduced in column
4 of Bunczek have components (a) and (b) present in a total of 90% by
weight based upon the total weight of the polyester polymer. Id. at 18-19;
21-24. Appellants' argument is based upon their resolution of ambiguous
aspects of the disclosure reported by the Table. For ease of reference, we
reproduce the table below:
/·~ i\clip;_(: /\cid
B Adip.i;; :k[tl
C Aclip.ic Acct\
D I\faiic A.cid
.F MJJ.\il: Acid
"':'',·1 rt-Q
.~. '•,J ••• {.~_;
3.;$.<;\J.66
1.4\2.03
2.0\1.28
F M;ilic Acid 2\0.S
(r /\dipicl:\-liilic Acid 1\P.L28
H Adipi.::;.:\hlic: A ... -id
/\dipic Acid
/\dipic A.cid
K 'foiw.ri(; Ad.d l\l
L Fu1tsarit..: A;;:~d/Cj~ric /\.i..~i.d
:vr Pwnari::: Add 2\J
N Fumar\,~ Acid/Citric Acid :l"J\:i
1_) l--\dip~c i\.cid 2\1\1 *~
P Adipic A.cicl
0 A.dipic Acid
R AJipic Acid.
''Lo·w kvcl>. of Glyc:cr.:11 added
"~"·~\1~·1f.J1_.:. '~~~JJ ,...\t~;pi3 .. ~ Ac;J\CHyi:..~.rin\P!'opy~c:ne, Cil y~".iJl
2'-j
L5\l..SrJ
2\2
1 \1\)
2\.25\:t
1\li4""\2
polyester polymer. Answer 10-11. Appellants do not contest this
calculation.
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Appeal2015-002205
Application 13/719,670
The Table reports synthesis of "several polyesters ... made using the
various food acids and glycerol or propylene glycol. Gram quantities were
made in a test tube heated at an oil bath at about 180°-250° C. from Yz hr. to
5 hours to obtain polyesters." Bunczek col. 4, 11. 13-17. As can be seen, the
Table reports the molar ratio of the food grade acid(s) to the diol. Examples
P, Q, and R, however, report the use of three compounds clearly stating what
they are. The ratios reported for Examples P and R include an asterisk. The
Table includes a legend stating that Examples so labeled have "Low levels
of Glycerol added." Example Q, however, does not include an asterisk,
creating an ambiguity regarding the identity of the third compound used to
make the polyester.
Appellants argue:
Appellant notes that the Examiner continues to assert that
Examples P and Q disclose, respectively, 4% and 9% by weight
of glycerol, completely ignoring Appellant's explanation as to
why this is not actually not the case.
It is noted that Example P is generally mentioned to
contain a "low level" of glycerol (indicated in the table in
column 4 by an asterisk). However, no level whatsoever of
glycerol is indicated for Example Q (since there is no asterisk).
It appears that the Examiner is interpreting the .1 and .25
numbers in the table as representing the amounts of glycerol
present in Examples P and Q, respectively. However,
Appellant respectfully submits that this appears to not be the
case. Although the table is not clear as to which the cited
numbers refer to, Appellant respectfully submits that the .25
number cannot possibly be the amount of glycerol present in
Example Q, and therefore one skilled in the art would assume
that the .1 number in Example P would also not be referring to
an amount of glycerol. Moreover, if the .1 number in Example
P did refer to an amount of glycerol, there would be no need for
the additional asterisk.
Appeal Br. 22.
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Appeal2015-002205
Application 13/719,670
The Examiner, on the other hand, states that
[ w ]here the asterisk is omitted from Example Q, but is present
in Examples P and R on either side, the Examiner reads it as a
typographical error. The examiner understands example Q to
teach glycerol present at 0.25 moles, to 2 moles of adipic acid
and 1 mole of propylene glycol. When this molar ratio is
converted to a weight ratio, glycerol (i.e. component ( c)) is
present at less than 10% by weight of the polymer. Stated
another way, components (a) and (b) are present at at least 90%
by weight.
Answer 11-12.
After review of Bunczek' s disclosure, we are not persuaded by
Appellants' argument and determine that the Examiner's finding is
reasonable and supported by the record. In particular, Appellants' inability
to explain what the numbers 0.1, 0.25 and 0.4 refer to in Examples P, Q, and
R if not to the amount of glycerol renders their position unreasonable.
Appellants have a second argument that the Examiner erred by finding
that Examples P and Q describe the synthesis of polyesters in which
components (a) and (b) comprise at least 90% by weight of the polymer. See
Appeal Br. 20-21. In particular, Appellants argue that a person of ordinary
skill in the art would understand that Bunczek's disclosure emphasizes the
importance of end-capping the polyesters. Id. at 21. Appellants further
argue that this emphasis would lead a person of ordinary skill in the art to
conclude that every polymer described in the Table included in column 4 of
Bunczek must have included some amount of end-capping monomers. Id.
("[O]ne skilled in the art would clearly understand that Examples P and Q
must include some end-capping monomers, and in all likelihood given the
teachings of Bunczek et al., a significant amount thereof."). Thus,
Appellants conclude that Bunczek's Examples P and Q would include
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Appeal2015-002205
Application 13/719,670
significantly less than 90% by weight of components (a) and (b) "because
the weight of the end capping monomers plus the weight of the glycerol
would account for more than 10% of the total weight of the polymer." Id.
We are not persuaded by this argument. Notwithstanding Bunczek's
extensive discussion of the use of end-capping monomers, a person of
ordinary skill in the art would have understood that Examples P and Q do
not include end-capping monomers. Bunczek describes the various
experiments reported in its Specification in sufficient detail that a person of
ordinary skill in the art would be able to replicate the experiments.
Consistent with this level of detail, Bunczek clearly indicates when it shifts
from describing the synthesis of non end-capped polyesters to end-capped
polyesters. Bunczek col. 7, 11. 51-52 ("By way of example, and not
limitation, examples of end-capped polyesters will now be given.").
Appellants present an additional argument for reversal of the rejection
of claim 1. See Appeal Br. 16-20. In particular, Appellants argue that the
Examiner erred by finding that Bunczek describes or suggests a polyester
polymer consisting of (a) at least one dicarboxylic acid, (b) at least one diol,
and ( c) at least one compound having at least three groups capable of ester
formation. Id.
Appellants' argument is based upon their contention that Examples P
and Q must have included an unstated amount of an undisclosed end-
cappmg monomer. See id. at 17-20. As discussed above, this argument is
not persuasive.
For the reasons set forth above, we affirm the rejection of claims 1-11
and 13-20 as unpatentably obvious over Bunczek.
Rejection 2. The Examiner rejected claim 12 is as unpatentable over
the combination of Bunczek, Cook, and Muller. Final Act. 7; Answer 4.
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Appeal2015-002205
Application 13/719,670
Claim 12 depends from claim 1. Appellant argues that the rejection of
claim 12 should be reversed because neither Cook nor Muller remedy the
alleged deficiencies in the Examiner's rejection of claim 1. Appeal Br. 26-
27.
Because we have affirmed the rejection of claim 1, we also affirm the
rejection of claim 12.
CONCLUSION
For the reasons set forth above, we affirm the rejection of claims 1-20
of the '670 Application.
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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