Ex Parte Schmidt

Patent Trial and Appeal Board

Feb 24, 2016

11197583 (P.T.A.B. Feb. 24, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111197,583 08/05/2005
23373 7590 02/26/2016
SUGHRUE MION, PLLC
2100 PENNSYLVANIA A VENUE, N.W.
SUITE 800
WASHINGTON, DC 20037
FIRST NAMED INVENTOR
Niels Ravn Schmidt
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.
Q89531 7923
EXAMINER
DEES, NIKKI H
ART UNIT PAPER NUMBER
1791
NOTIFICATION DATE DELIVERY MODE
02/26/2016 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 NIELS RA VN SCHMIDT
Appeal2014-005429
Application 11/197,583
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--6, 8, 10-12, 14--16, 27-33, and
36-40. We have jurisdiction pursuant to 35 U.S.C. § 6.
Appellant's claimed invention is directed to a layered chewing gum
tablet including at least one layer containing gum base and at least one layer
substantially free of gum base. According to the subject Specification, "the
term 'gum base' refers in general to a commercially available gum base
suitably [sic] for production of chewing gum" wherein "[ s ]uch gum bases
normally comprise natural and/or synthetic resins and optionally other
ingredients" (Spec. 10, 11. 3-7). Further details are evident after review of
claim 1, which is illustrative and reproduced below:
Appeal2014-005429
Application 11/197,583
1. A layered chewing gum tablet of compressed material comprising
at least two layers wherein at least one of the at least two layers contains
gum base and at least another of said at least two layers is substantially free
of gum base, wherein the at least one layer containing gum base comprises
gum base in an amount of 35.5 to 86.5 weight-% based on the total weight
of the layered chewing gum tablet, and wherein said gum base is present in
compressed gum granules having an average diameter in the range of 0.3
mm to 2 .1 mm.
The Examiner relies on the following prior art references as evidence
in rejecting the appealed claims:
Ream et al. US 6,322,806 Bl Nov. 27, 2001
(hereinafter "Ream")
Leadbeater et al. WO 2004/006686 A2 Jan. 22, 2004
(hereinafter "Leadbeater")
The Examiner maintains the following grounds of rejection:
Claims 1, 2, 4---6, 8, 10, 11, 14--16, 27-33, and 36-40 stand rejected
under 35 U.S.C. § 103(a) as being unpatentable over Leadbeater. 1
Claim 12 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Leadbeater in view of Ream.
Claims 1, 2, 4---6, 8, 10, 11, 14--16, 27-33, and 36-40 stand
provisionally rejected on the ground of nonstatutory obviousness-type
double patenting as being unpatentable over claims 1, 2, 4--10, 12-15, 17-
30, 32-37, 37--42, 44, 46-49, 51-53, and 55-73 of copending Application
No. 10/520,786.
Concerning the first stated obviousness rejection over Leadbeater,
Appellant argues the rejected claims together as a group (App. Br. 5-8). We
1 Appellant does not dispute that Leadbeater is a prior art reference available
for use under 35 U.S.C. § 103(a).
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Application 11/197,583
select claim 1 as the representative claim on which we decide this appeal as
to this ground of rejection.
After a careful review of the opposing positions and evidence
furnished by Appellant and the Examiner we determine that the Appellant's
arguments and Declaration evidence are insufficient to identify reversible
error in the Examiner's obviousness rejection of claim 1 over Leadbeater. In
re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011).
We affirm the stated obviousness rejection over Leadbeater for
substantially the fact findings and the reasons set forth by the Examiner in
the Examiner's Answer and in the Final Office Action. We offer the
following for emphasis.
The Examiner has determined that "Leadbeater et al. disclose a
layered chewing gum tablet" having "two layers wherein one layer includes
gum base granules having a particle size ranging from 10 µm to 2 mm (p. 3,
lines 33-34)" (Ans. 2). The Examiner finds that Leadbeater teaches or
suggests that "gum base may be present in the first layer in an amount
ranging from 5 to 99 wt. % of the first layer" wherein
[ t ]he ratio taught between the first (gum base containing) and
second layers ranges from 1. 5: 1 to 10: 1, indicating that the
amount of gum base in the tablet could vary widely and include
appellant's claimed amounts of gum base to be present in both
the layer containing the gum base, as well as the entire weight
of the tablet
(id.). This gum base amount corresponds to the required amount of gum
base in Appellant's representative claim 1 (id.). Also, the Examiner has
determined that Leadbeater teaches that gum base need not be present in the
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Application 11/197,583
second layer and that the layers can further "include sweetener, flavor, filler,
color and optionally another additive (p. 3 lines 4-13)" (Ans. 3).
As for Appellant's claimed average particle diameter for the gum
base-containing granules, the Examiner, as indicated above, has determined
that Leadbeater teaches the use of gum base present in gum granules, which
granules can have particle sizes that may range from 10 microns (0.01 mm)
to 2 mm. The Examiner finds that "[t]he average particle size (i.e. average
diameter) of the granules of Leadbeater must be in the range from 10 µm to
2 mm, as if there are no particles smaller than 10 µm or larger than 2 mm,
the average of the particle sizes cannot be outside of this range" (Ans. 5). 2
In other words, the Examiner has determined that the disclosure of
Leadbeater also dictates that the particles would have an average gum
granule diameter falling within the disclosed 10 microns to 2 mm particle
size range of particle sizes disclosed by Leadbeater. Hence, the Examiner
essentially maintains Leadbeater inferentially discloses/suggests an average
particle diameter range for the gum granules of Leadbeater that embraces
and overlaps with the claimed narrower average diameter range of 0.3 mm to
2 .1 mm, which overlapping range conveyed by Leadbeater renders the
selection of a particle size average diameter within the encompassed
implicitly disclosed average particle size range of Leadbeater that
corresponds to the claimed narrower and overlapping average particle
diameter range prima facie obvious to one of ordinary skill in the art. See In
2 Appellant discloses that the "average diameter" "is defined as the diameter
of a sphere having the same volume as e.g. the granule" and "according to
the definition granules having the same volume also have the same average
diameter" (Spec. 10-11 ).
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Application 11/197,583
re Geisler, 116 F.3d 1465, 1469--70 (Fed. Cir. 1997); In re Boesch, 617 F.2d
272, 276 (CCPA 1980); In re Malagari, 499 F.2d 1297, 1303 (CCPA 1974).
That is, this selection amounts to a determination of the workable average
diameter size range for the gum base particles sizes taught to be employed
by Leadbeater (Ans. 2-3, 5---6; Leadbeater, p. 3).
Appellant argues that the Examiner has failed to establish a prima
facie case of obviousness because the Examiner misinterprets a particle size
distribution range furnished by Leadbeater as an average granule diameter
range in applying Leadbeater to the subject matter of Appellant's
representative claim 1, which requires gum base in compressed gum
granules having an average diameter in the range of 0.3 mm to 2.1 mm in the
layered gum product (App. Br. 5-6). In this regard, Leadbeater discloses
that (p. 3):
The particle sizes of the gum base and the tablet base of
both the first and second integral parts may range from 10
microns to 2mm, but the average particle size may be from 20
to 160 microns, preferably from 30 to 120 microns and more
preferably from 50 to 100 microns.
Contrary to Appellant's argument and as set forth by the Examiner in
the Answer as indicated above, the Examiner does not misinterpret the
disclosed particle size range disclosure of Leadbeater as an average particle
size range and state, as contended by Appellant (Reply Br. 4 ), that "since
Leadbeater discloses that the particle sizes are in the range of 10 microns
( .01 mm) to 2 mm, the average diameter of all of the particles must be in the
claimed range of0.3 mm to 2.1 mm." Rather, the Examiner finds that the
average particle size range encompassed by the particle size range ("10
microns to 2mm") disclosed by Leadbeater must be an average particle size
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(diameter) range of values for the particles that falls within the scope of and
is consistent with the 10 microns to 2 mm particle size range specifically
disclosed by Leadbeater as an option ("may range from 10 microns to
2mm") (Ans. 5, Leadbeater p.3). Leadbeater does not limit the average
particle size to be employed to a value falling within the average particle
size ranges explicitly identified by Leadbeater as representing possible range
limit choices for an average particle size ("but the average particle size may
be from 20 to 160 microns, preferably from 30 to 120 microns and more
preferably from 50 to 100 microns" (emphasis added)) (Ans. 5; Leadbeater
p. 3).
To be sure, Leadbeater teaches preferred average particle sizes
encompassing values outside the average diameter range set forth in
representative claim 1. However, the mere fact that the prior art teaches or
prefers an average particle size that can lie without the claimed requirements
does not militate against a determination of obviousness when the prior art
also encompasses a layered chewing gum tablet having a gum base
particle/ granule average size falling within the claimed requirements, as
here, absent a compelling and substantiated explanation articulating why one
ordinary skill in the art would have ignored and/or not have been led to the
overlapping territory encompassed by the teachings/suggestions of
Leadbeater.
In this regard, it is well settled that all of the disclosures in a reference
must be considered, including the non-preferred embodiments. In re
Kaslow, 707 F.2d 1366, 1373 (Fed. Cir. 1983); In re Fracalossi, 681 F.2d
792, 793-94 (CCPA 1982); In re Lamberti, 545 F.2d 747, 750 (CCPA
1976).
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It follows that we are not persuaded of reversible error in the
Examiner's obviousness rejection over Leadbeater by the arguments
asserting the lack of a prima facie case of obviousness set forth in the
Appeal Brief. In this regard, Leadbeater' s disclosure is not limited to the
argued preferred embodiments and/or the examples. Given the breadth of
the disclosure of Leadbeater respecting suitable particles sizes for the gum
base particles, we concur with the Examiner that one of ordinary skill in the
art would have been reasonably expected to arrive at the selection of a gum
base having an average particle diameter within the claimed range upon the
exercise of ordinary skill in determining the workable limits for gum base
particles.
In the Declaration of Dr. J esper N eergaard, 3 Appellant presents
evidence by way of an assertion as to the criticality (unexpectedness)
associated with "the combination of the gum base content being within the
range of 35.5 to 86.5% and the gum base granule size being within the range
of 0.3 to 2.1 mm in order to achieve the surprising volume sensation of the
present invention", which asserted criticality of the claimed ranges is argued
as supporting Appellants' contention that the claimed subject matter is
nonobvious over Leadbeater (Deel. p. 2, i-f 4; App. Br. 7, Reply Br. 6).
As determined by the Examiner, however, the Neergaard Declaration
statement of Opinion as to "surprising volume sensation" and criticality of
the combination of claimed ranges falls short in presenting sufficient
evidence to establish the criticality of or unexpected results for a layered
chewing gum containing a combination of gum base content within the
3 Declaration of Dr. Jesper Neergaard, submitted June 20, 2012.
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claimed range and average granule size within the claimed range according
to representative claim 1 as compared with layered chewing gum having
either a gum content and/or an average granule size just outside the claimed
range(s) (Final Office Action 8-9).
For instance, Dr. Neergaard opines that"[ w ]hen an average gum base
granule diameter of less than 0.3 mm is used, the tablet would tend to
disintegrate and hence compromise the volume" (Deel. 3, i-f 1 ). However, no
evidence supporting the latter statement accompanies the Declaration. Nor
does Dr. Neergaard point to any particular portion of the Applicant's
Specification that supports this statement. Indeed, Appellant's Specification
undercuts the Declaration Opinion by disclosing that gum granules having
an average diameter in the range of0.1 mm to 2.5 mm that may be
manufactured as described in European Patent Application No. 03388031.1
are not only of suitable size but represent a preferred gum granule average
diameter range of sizes (Spec. 5, 11. 17-27).
Consequently, the Declaration evidence is insufficient to establish the
criticality/unexpectedness of the claimed combination of ranges.
Appellant reemphasizes in the Reply Brief that the Declaration
Opinion enhances their argument that the explicitly disclosed (20 to 160
microns/0.16 mm) and exemplified ( 40 microns/0.04 mm) gum base average
particle sizes of Leadbeater are too far removed from the claimed gum base
average diameter range of 0.3 mm to 2.1 mm such that one of ordinary skill
in the art would not have been led to seek a gum base with an average
diameter within the claimed range notwithstanding the broader particle size
range of 10 microns (.0 Imm) to 2mm for the gum base particles employed
in Leadbeater (Reply Br. 5-7).
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Application 11/197,583
Once again, we are not persuaded of reversible error in the
Examiner's obviousness position by this argument that is limited to the
example and explicitly preferred embodiment disclosures of Leadbeater
without adequately taking into account the broader particle sizes for gum
base particles disclosed by Leadbeater as being suitable. Moreover,
Appellant's Specification disclosure undercuts Appellant's arguments given
that the Specification discloses that "any [suitable] water-insoluble gum base
well[-]known in the art" can be employed in their gum product and by
disclosing that the gum base granules they employ can be made in ways
well-known to an artisan, such as via "underwater granulating as described
in European patent application no 03388031.1" (Spec. 11, 11. 13-14; 13, 11.
14--25).
Having reconsidered the Examiner's obviousness position in light of
the arguments and evidence marshalled by Appellant, we determine that, on
balance, the evidence of obviousness furnished by the Examiner outweighs
the evidence marshalled by Appellant that is argued to indicate the non-
obviousness of the claimed subject matter.
It follows that we affirm the Examiner's first stated obviousness
rejection over Leadbeater.
Concerning the Examiner's separate obviousness rejection of claim 12
over Leadbeater in view of Ream, Appellant does not separately argue the
rejection pertaining to dependent claim 12 in the Appeal Brief. It follows
that we shall sustain this rejection.
Concerning Appellant's arguments traversing the Examiner's
obviousness-type double patenting rejection of certain appealed claims over
the claims of Application No. 10/520,786, we concur with the reasons set
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forth by the Examiner as to why the tendered arguments are not persuasive
of substantive error in this ground of rejection (Ans. 7-8; Final Office
Action 6-8). In this regard, much of Appellant's argument parallels the
unsuccessful argument made against the Examiner's obviousness rejection
over Leadbeater in that claim 1 of U.S. Application No. 10/520,786 requires
gum base having a particle size of from 10 microns to 2 mm.
On this appeal record, the argument presented by Appellant does not
indicate reversible error in the Examiner's obviousness-type double
patenting rejection over the claims of U.S. Application No. 10/520,786. It
follows that we shall sustain the latter ground of rejection.
CONCLUSION/ORDER
The Examiner's decision to reject 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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