Ex Parte Thorengaard

Patent Trial and Appeal Board

Mar 30, 2016

12683172 (P.T.A.B. Mar. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/683, 172 01/06/2010 Bitten Thorengaard
24126 7590 04/01/2016
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-P0042A 2547
EXAMINER
DEES, NIKKI H
ART UNIT PAPER NUMBER
1791
NOTIFICATION DATE DELIVERY MODE
04/01/2016 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 BITTEN THORENGAARD
Appeal2014-008660
Application 12/683, 172
Technology Center 1700
Before CATHERINE Q. TIMM, N. WHITNEY WILSON and A VEL YN M.
ROSS, Administrative Patent Judges.
ROSS, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellant2 appeals under 35 U.S.C. § 134 from the Examiner's
rejection of claims 1-5 and 7-21. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We AFFIRM.
1 In our opinion below, we refer to the November 7, 2013 Office Action
appealed from (Non-Final Act.), the Appeal Brief, filed April 4, 2014
(Appeal Br.), and the Examiner's Answer filed June 5, 2014 (Ans.).
2 Appellant identifies the real party in interest as Gumlink A/S, the assignee
of the subject patent application. Appeal Br. 3.
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Application 12/683, 172
STATEMENT OF CASE
The claims are directed to compressed chewing gum comprising an
encapsulation delivery system comprising natural resin. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A compressible chewing gum composition comprising
i) chewing gum granules containing gum base
ii) particles of one or more encapsulation delivery
systems, dispersed between said granules, comprising
at least one encapsulation material and at least one
active ingredient being encapsulated by the
encapsulation material,
wherein the encapsulation material comprises at least one
natural resin.
Claims Appendix at Appeal Br. 21.
REJECTIONS3
The Examiner made the following rejections:
A. Claims 1-5, 7 and 10-21 stand rejected under
35 U.S.C §103(a) as being unpatentable over Chen.1kuri et
al. (4,753,805)4 in view of Kehoe (4,975,270). 5
B. Claims 1-5, 10-14, and 1-21 stand rejected under
35 U.S.C §103(a) as being unpatentable over Cherukuri
'805 in view of Cherukuri et al. (EP 401956 A2). 6
3 The Examiner also provisionally rejected claims 1-5 and 7-21 on the
ground of nonstatutory obviousness-type double patenting as being
unpatentable over claims 1, 6-8, 12-26, 28-30, 34, 35, 39--47, 52---60 and
65-73 of copending Application No. 12/279,968. Application No.
12/279,968 is abandoned as of February 20, 2015 for failure to respond to an
office action. Therefore, the rejection is moot.
4 Cherukuri et al., US 4,753,805, issued June 28, 1988 (hereinafter
Cherukuri '805").
5 Kehoe, US 4,975,270, issued December 4, 1990 (hereinafter "Kehoe").
6 Cherukuri et al., EP 401956 A2, published December 12, 1990 (hereinafter
"Cherukuri '956").
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Application 12/683, 172
C. Claim 7 stands rejected under 35U.S.C§103(a) as being
unpatentable over Cherukuri '805 in view of Cherukuri
'956 as applied to claim 21 and in further view of Weiss
et al. (4,252,786).7
D. Claims 1-5, 8-14, and 16-20 stand rejected under 35
U.S.C §103(a) as being unpatentable over Cherukuri '805
in view of Cherukuri et al. (5,064,658). 8
Appellant provides no substantive argument as to the separate
patentability of claims 2-5 and 8-21. See Appeal Br. 10-15 and 17-18.
And, although additional secondary references are applied in Rejections B-
D, Appellant does not provide additional substantive arguments over what is
argued for Rejection A. See id. We therefore focus our discussion on the
rejection of claim 1 as unpatentable over Cherukuri '805 and Kehoe
(Rejection A) to resolve the issues on appeal.
OPINION
The Examiner finds that Cherukuri '805 teaches "a compressible
chewing gum composition comprising chewing gum granules containing
gum base in combination with an encapsulation delivery system comprising
an active ingredient (i.e. a flavor)." Non-Final Act. 3. And, the Examiner
continues to find that Cherukuri '805 teaches "that the active agents (i.e.
medicaments) may be provided in encapsulated form and trapped between
granules (i.e. dispersed between granules) (col. 8 lines 25-33, 62---col. 9 line
7 Weiss et al., US 4,252,786, issued February 24, 1981 (hereinafter
"Weiss").
8 Cherukuri et al., US 5,064,658, issued November 12, 1991 (hereinafter
Cherukuri '658").
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Application 12/683, 172
9; col. 9 lines 14--18)." Id. According to the Examiner, Cherukuri '805 does
not disclose use of a natural resin as an encapsulating material-but, Kehoe
"teaches the encapsulation of active ingredients in an elastomer plasticized
with natural resins .... " Id.
The Appellant argues "that the main cited reference, Cherukuri '805,
not only fails to disclose, teach or suggest all requirements of Claim 1, but in
fact, would expressly lead those skilled in the art away from all requirements
of Claim 1." Appeal Br. 10. Appellant contends that Cherukuri '805
includes teachings that "lead those skilled in the art away from the use of a
natural resin as an encapsulating material." Id. at 11. Specifically,
Appellant relies upon the following:
The advantage of the tableted gum composition of this invention
as a means for dispensing drugs medicaments and other active
agents is that the component is trapped between granules and not
within the gum composition. Hence, it is readily bioavailable
and nearly completely released upon chewing of the gum. The
prior art has heretofore focused on adding medicaments to the
gum composition during blending of the chewing gum
ingredients into the melted gum base. This results in slow or
incomplete release of the medicament since it remains trapped to
a large extent in the gum base. The instant gum granulation and
moisture content allows for better release of the medicament
during mastication. The term "active agent" as used in the
specification and claims means any drug, medicament, or other
substance taken for its medicinal or dietary properties.
Id. at 12 (quoting Cherukuri '805, col. 9, 11. 14--29). Appellant continues to
reason that because "Cherukuri '805 clearly teaches that the active
ingredients should be dispersed between the gum base containing granules
only"-as opposed to being dispersed within the gum base-and because "it
would be immediately recognized by anyone even remotely skilled in the art
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Application 12/683, 172
that natural resins, if included in the chewing gum composition, would be
considered to comprise part of the 'gum composition' or 'gum base"'
Cherukuri '805 therefore "teach[ es] those skilled in the art that the active
ingredients should not be encapsulated within a natural resin, even though
the term 'natural resin' is not used [in Cherukuri]." Id. 12-13. Appellant
further argues that nothing in Kehoe contradicts the teaching away by
Cherukuri '805-rather, Kehoe is the type of composition, i.e., a gum where
the active ingredients are within the composition, that Cherukuri '805
criticizes. Id. at 13-14. In support of Appellant's position, Appellant
submits the Declaration of Dr. Jesper Neergaard, dated December 10, 2012
(hereinafter "Neergaard Declaration").
The Examiner counters, first, that the rejection on appeal is under
35 U.S.C. § 103 and therefore all claim requirements need not be found
within a single reference. Ans. 13. The Examiner continues to explain that
Kehoe is used to teach active ingredients may be encapsulated using natural
resins as the encapsulation material. Id. at 14 and 17. The Examiner also
finds that "Cherukuri '805 generally teaches encapsulated active ingredients,
and does not limit the encapsulation material. The failure of Cherukuri
[' 805] to teach a natural resin as an encapsulation material is in no way a
'teaching away' from the use of a natural resin as in encapsulation material."
Id. at 15. Appellant does not challenge this finding and offers no evidence
that natural resins would not function if used as the encapsulating material
for the active ingredients in Cherukuri '805. Id. at 16.
As the Examiner aptly notes, Appellant's initial argument-that
Cherukuri '805 fails to disclose, teach or suggest all requirements of Claim
1-is not applicable for rejections based upon 35 U.S.C. § 103. We, like the
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Application 12/683, 172
Examiner, find that the combination of Cherukuri '805 and Kehoe would
have been obvious to those of ordinary skill in the art in light of the
combined teachings of those references. See In re Keller, 642 F.2d 413, 425
(CCPA 1981).
Therefore, the issue on appeal is whether Appellant has shown a
reversible error in the Examiner's findings that Cherukuri '805 does not
teach away from a combination that includes natural resins as encapsulating
materials for active ingredients. We find that Appellant has not established a
reversible error in the Examiner's findings.
Like the Examiner (Final 16, 18, 29), we find that one of ordinary
skill in the art at the time would not have viewed Cherukuri '805' s teachings
as a teaching away. To teach away, a reference must discourage one of
ordinary skill in the art from following the path set out in the reference, or
lead that person in a direction divergent from the path taken by the applicant.
In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).
Cherukuri '805 teaches a compressible chewing gum composition
comprising chewing gum granules containing gum base. Cherukuri '805
col. 1, 11. 10-15 and col. 2, 11. 63---col. 3, 11. 3. Also taught by Cherukuri '805
is that when an active ingredient is "trapped between granules and not within
the gum composition" the bioavailability and release of the active ingredient
is improved. Id. col. 9, 11. 14--19. Cherukuri '805 further discloses an
encapsulation delivery system, dispersed between the granules, where an
active ingredient may be encapsulated by an encapsulation material. Id. at
col. 8, 11. 25-33 and col. 8, 11. 62---col. 9, 11. 5 ("active agents are added in a
number of forms including encapsulation").
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Kehoe teaches a chewable article, such as chewing gum, where the
active ingredient is encased in an elastomer, either natural or synthetic in
nature. Kehoe col. 2, 11. 23-34 and col. 4, 11. 13-18. Kehoe (as well as the
remaining secondary references) provides that the encapsulation material
may be a natural resin. Kehoe col. 8, 11. 4--10 and col. 11, 11. 57-63;
Cherukuri p. 1, 11. 2--4; p. 3, 11. 24--29, and claim 4; and Cherukuri '658 col.
1, 11. 12-18, col. 5, 1. 62---col. 6, 1. 1.
From Cherukuri '805, the skilled artisan would understand that active
ingredients may be encapsulated and used in a gum composition having
chewing gum granules containing a gum base. See Cherukuri '805 col. 8, 11.
62---col. 9, 11. 5; see also N eergaard Deel. i-f 51. One skilled in the art would
also understand that a composition where the active ingredients are
dispersed between the granules increases availability and release of that
active ingredient. See Cherukuri '805 col. 9, 11. 14--19; see also Neergaard
Deel. i-f54. Because Cherukuri '805 places no limits on the encapsulating
material, one skilled in the art would have reason to use the natural resin of
Kehoe, known to function as an encapsulent, in the Cherukuri '805
composition. See KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007)
("if a technique has been used to improve one device, and a person of
ordinary skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless its actual
application is beyond his or her skill.")
Appellant's argument that "Cherukuri '805 is clearly teaching those
skilled in the art that the active ingredients should not be encapsulated
within a natural resin" (Appeal Br. 13) because one skilled in the art would
recognize "that natural resins, if included in the chewing gum composition,
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Application 12/683, 172
would be considered to comprise part of the 'gum composition' or 'gum
base'" (Id.) is unsupported by any evidence. Nothing in Cherukuri '805
would lead one skilled in the art to infer that natural resins are objectionable
as an encapsulating material or would not work in the Cherukuri '805
composition. Notably, Appellant does not include a citation to either
Cherukuri '805 or the Neergaard Declaration to support this proposition.
And as the Examiner correctly explains, the mere absence of a natural resin
as an encapsulation material in Cherukuri '805 is not a teaching away. Ans.
15.
For these reasons, in addition to those discussed in the Non-Final
Office Action and the Examiner's Answer, we are not persuaded that
Cherukuri '805 teaches away from the Examiner's proposed combination.
CONCLUSION
The Examiner did not reversibly err in rejecting claims 1-5, 7, and
10-21, under 35U.S.C§103(a), as being unpatentable over Cherukuri '805
in view of Kehoe.
The Examiner did not reversibly err in rejecting claims 1-5, 10-14,
and 1-21, under 35 U.S.C §103(a), as being unpatentable over Cherukuri
'805 in view of Cherukuri '956.
The Examiner did not reversibly err in rejecting claim 7, under 35
U.S.C §103(a), as being unpatentable over Cherukuri '805 in view of
Cherukuri '956 as applied to claim 21 and in further view of Weiss et al.
The Examiner did not reversibly err in rejecting 1-5, 8-14, and 16-
20, under 35 U.S.C §103(a), as being unpatentable over Cherukuri '805 in
view ofCherukuri '658.
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DECISION
For the above reasons, the Examiner's rejection of claims 1-5 and 7-
21 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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