Ex Parte Thorengaard et alDownload PDFPatent Trial and Appeal BoardAug 16, 201613352211 (P.T.A.B. Aug. 16, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/352,211 01/17/2012 Bitten Thorengaard 24126 7590 08/18/2016 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-P0014B 3202 EXAMINER DEES, NIKKI H ART UNIT PAPER NUMBER 1791 NOTIFICATION DATE DELIVERY MODE 08/18/2016 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, DORTHE SCHACKINGER BOESEN, and VIBEKE NISSEN 1 Appeal2014-007824 Application 13/352,211 Technology Center 1700 Before CATHERINE Q. TIMM, MICHAEL P. COLAIANNI, and GEORGE C. BEST, Administrative Patent Judges. TIMM, Administrative Patent Judge. DECISION ON APPEAL 2 STATEMENT OF CASE Appellants appeal under 35 U.S.C. § 134(a) the Examiner's decision to reject claims 1-16, 18-29, and 31. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 Appellants identify the real party in interest as Gumlink A/S. Br. 3. 2 In our opinion below, we reference the Specification filed January 17, 2012 (Spec.), Final Office Action mailed April 3, 2013 (Final), the Appeal Brief filed December 3, 2013 (Br.), and the Examiner's Answer mailed May 8, 2014 (Ans.). Appeal2014-007824 Application 13/352,211 The claims are directed to a compressed chewing gum. Claim 1 is illustrative: 1. Compressed chewing gum, formed from the compression of gum base granules, said compressed chewing gum compnsmg: an elastomer in an amount of about 0% to 32% by weight of the chewing gum; a resin in an amount of about 1.5% to 55% by weight of the chewing gum; and chewing gum additives; wherein said resin comprises: -natural resin in an amount of about 0.5% to 35% by weight of the chewing gum; -synthetic resin in an amount of about 1 % to 35% by weight of the chewing gum; -and wherein the ratio between the synthetic resin and the natural resin is from about 0.5 to about 7.0. Claims Appendix, Br. 25. The Examiner maintains the following rejections: A. The rejection of claims 1-16, 18-29, and 31 under the grounds of res judicata; B. The rejection of claims 1-15, 18-27, and 31under35 U.S.C. § 103(a) as obvious over Cherukuri3 in view of Patel;4 3 Cherukuri et al., 4,753,805, issued June 28, 1988 (Cherukuri). 4 Patel et al., US 5,431,930, issued July 11, 1995 (Patel). 2 Appeal2014-007824 Application 13/352,211 C. The rejection of claims 28 and 29 under 35 U.S.C. § 103(a) as obvious over Cherukuri in view of Patel, and further in view of Cherukuri '510· 5 and ' D. The rejection of claims 1-14, 16, 18, and 20-27 under 35 U.S.C. § 103(a) as obvious over Kaul6 in view of Patel. OPINION Rejection A The Examiner rejects claims 1-16, 18-29, and 31 under the grounds of res judicata because these claims correspond directly to claims 25-54 of the parent application,7 and the Examiner's decision to reject claims 25-54 of that application was affirmed in the Decision mailed November 16, 2011 (Prior Decision). Final 9. Since the Prior Decision, Appellants have introduced new evidence. See Neergaard Declaration8 and Mansukhani et al., EP 0 797 391 Bl, publ. March 8, 2000 (Mansukhani). The Examiner acknowiedges that new evidence has been presented since the prior appeal, 9 but contends that this fact "does not remove the res judicata rejection where the new evidence was not deemed convincing to overcome the prior art rejections." Ans. 18. The Examiner's determination is based upon a misinterpretation of the law. The proper question is not whether the new evidence is convincing; it is whether the new evidence raises a new issue. New evidence can raise a 5 Cherukuri et al., US 4,238,510, issued Dec. 9, 1980 (Cherukuri '510). 6 Kaul, US 4, 161,544, issued July 17, 1979. 7 Application Serial No. 11/028,684. 8 Declaration of Jesper Neergaard, dated January 10, 2012. 9 Ans. 18. 3 Appeal2014-007824 Application 13/352,211 new issue. Irz re Herr, 377 F.2d 610, 611 (CCPA 1967) (a showing of unexpected results not previously considered raised a new issue even though the claims, and prior art applied in the rejection, were the same). Granted, the court in Herr focused on the fact that the showing of unexpected results was convincing. However, that was due to the facts before the court in that case. Even if the new evidence is unconvincing, it must still be reviewed. In re Donohue, 766 F.2d 531, 533 (Fed. Cir. 1985). One should also keep in mind the purpose of res judicata is to settle litigated disputes rather than prevent an inventor from obtaining a patent. Herr, 377 F.2d at 615 (Rich concurring). Great care should be taken in applying res judicata in the context of patent prosecution so that inventors are not improperly foreclosed from obtaining patents. Allowance of a patent application should depend on compliance with the statutory requirements. That requires the consideration of new evidence presented that impacts the patentability analysis. The Examiner here has untaken the task of considering the new evidence in determining patentability. See, e.g., Ans. 10-11. Thus, we decline to sustain the res judicata rejection and instead review the issues as now presented by the prior art rejections and new record. Rejection B In the rejection of claims 1-15, 18-27, and 31under35 U.S.C. § 103 (a) as obvious, the Examiner relies upon the combination of Cherukuri and Patel. Appellants' arguments focus on the rejection of claims 1, 10, and 20. We select those claims as representative for deciding the issues on appeal. 4 Appeal2014-007824 Application 13/352,211 Claim 1 Except for the fact that Appellants rely on new evidence, the issue is the same as that presented in the prior appeal. We state the issue as: Does the evidence as a whole support the Examiner's finding of a reason or suggestion in the prior art to include a mixture of natural and synthetic resins in a ratio of about 0.5 to about 7 in the chewing gum composition of Cherukuri? After review of all the evidence now presented, we determine that the evidence as a whole supports the Examiner's finding. The findings of fact we articulated in the Prior Decision have not been disputed and we incorporate them by reference. Prior Decision 3-5. Appellants rely upon the Neergaard Declaration to support their argument that "one skilled [sic, one of ordinary skill] in the art would have [had] no motivation or expectation of success from combining the teachings of Patel et al. with the teachings of Cherukuri et al." because "he/ she would not expect polyvinyl acetate to work in compressed formulations." Br. 13. Turning to the statements in the Declaration, many are directed to the teachings of the references or amount to Neergaard's opinion on either the ultimate conclusion of obviousness or what Neergaard would have expected to be successful and would have considered obvious. Deel. i-fi-15-18. We consider the statements of N eergaard' s own opinions in so far as they are persuasively supported, but do not place weight on Neergaard's opinion on the ultimate legal question of obviousness. See In re Lindell, 385 F.2d 453, 456 (CCPA 1967) ("Appellant's opinion on the ultimate legal issue is not evidence in the case. [However,] we do feel that some weight ought to be 5 Appeal2014-007824 Application 13/352,211 given to a persuasively supported statement of one skilled in the art on what was not obvious to him [or her]." (citation omitted; emphasis added)). Neergaard declares that I would not, as a person skilled in the art, consider using polyvinyl acetate as disclosed in Patel and combine this polyvinyl acetate with the compressed formulation of Cherukuri because I would expect such polyvinyl acetate to possess inherent non-tack properties. Accordingly, I would not have any motivation or expectation that the discrete granules in compressed chewing gum as disclosed in Cherukuri would adhere properly together during the compression step of compressed chewing gum. Deel. i-f 12. According to Neergaard, there is an inherent difference between conventional chewing gum and compressed chewing gum due to differences in processing, and compressed chewing gum requires that the discrete chewing gum granules be adhered properly together during compression. First, based upon the Declaration and its reliance on Mansukhani, we agree with Appellants that polyvinyl acetate has inherent non-tack properties, and this non-tack property was known in the art. Mansukhani i-fi-1 3, 10, and 11. 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. In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). Thus, we also consider the other evidence provided in the prior art of record in weighing the probative effect ofNeergaard's opinions. Mansukhani, in addition to Patel, provides evidence that it was known in the art to add polyvinyl acetates and vinyl laurate-vinyl acetate copolymers to conventional gum bases. Mansukhani i-f 2; Patel, col. 1, 11. 18-25. 6 Appeal2014-007824 Application 13/352,211 Patel and Mansukhani fhrther provide evidence that it was known in the art to add agents that aid in softening and increase tackiness. Mansukhani i-f 3 (elastomer solvent resins); Patel, col. 1, 11. 27-29; col. 4, 11. 43-55 (elastomer plasticizers). Cherukuri also adds this same genus of compounds to the tableted chewing gum composition. Cherukuri, col. 6, 11. 24--42 (elastomer solvents). The conventional chewing gum bases of the references greatly overlap in other ways including in the examples of natural and synthetic rubbers or elastomers. Compare Patel, col. 1, 11. 18-25 with Mansukhani i-f 2 (both listing polyisobutylene, isobutylene-isoprene copolymers, and styrene- butadiene copolymers, Patel further listing polyvinyl acetate, and vinyl acetate-vinyl laurate copolymers, and Mansukhani listing polyvinyl acetate and vinyl acetate-vinyl laurate copolymers as hydrophobic synthetic polymers). And Cherukuri also lists polyisobutylene, isobutylene-isoprene copolymers, styrene-butadiene copolymers in the list of elastomers as both "well known in the art" and included in the tableted chewing gum base. Cherukuri, col. 6, 11. 14--20. Appellants term polyvinyl acetate and vinyl acetate-vinyl laurate copolymers "synthetic resin[s]" in their Specification. Spec. i-f 27. Moreover, claim 10 requires the "synthetic resin" be at least one of a polyvinyl acetate, a vinyl acetate laurate copolymer, or mixture thereof. Although Cherukuri does not use the designation "synthetic resins," Cherukuri discloses using "any conventional chewing gum composition of the prior art," and states that [a]s is well known in the art, the gum base comprises natural or synthetic rubbers or elastomers." Cherukuri, col. 6, 11. 8-23. Patel provides evidence that "synthetic rubbers or elastomers" 7 Appeal2014-007824 Application 13/352,211 includes polyvinyl acetate and vinyl acetate-vinyl laurate. Compare Patel, col. 1, 11. 18-29 with Cherukuri, col. 6, 11. 8-28. Cherukuri is directed to a tableted chewing gum composition. Cherukuri, col. 1, 11. 7-15. The tableted chewing gum is a blend of chewing gum granules and a compression aid that is formed into tablets, i.e., compressed. Id. According to Cherukuri, conventional chewing gum is difficult to form into chewing gum tablets because of their high moisture content (about 2 wt.% to about 8 wt.% water). Cherukuri, col. 1, 11. 16-38. Attempts to grind these conventional chewing gum compositions using standard techniques have been unsuccessful because the chewing gum jams the grinding machine, sticking to the blades, screens, and other surfaces. Id. The high moisture levels also cause problems with granulation, flow, and compressibility. Id. One way those in the art have attempted to solve these problems was by lowering the moisture content before grinding and granulation. Id. Cherukuri makes a tableted chewing gum using conventional prior art chewing gum compositions having a moisture content of about 2 wt.% to about 8 wt.%. Cherukuri, col. 2, 11. 54---63. Cherukuri overcomes the problems of the prior art by adding a grinding aid and subsequently blending the resultant granules with a compression aid. Id. The compression aid contains anti-adherents that prevent the granules from sticking to equipment and to one another. Cherukuri, col. 5, 11. 45-61. After weighing Neergaard's declaratory evidence along with the evidence within Cherukuri, Patel, and Mansukhani, given the similarities between the chewing gum compositions of Cherukuri and Patel, Cherukuri' s 8 Appeal2014-007824 Application 13/352,211 desire to make conventional gum base processable, the use of anti-adherents in Cherukuri' s gum base along with tackifiers, a preponderance of the evidence supports the Examiner's finding of a suggestion within the art to incorporate polyvinyl acetate or vinyl acetate-vinyl laurate copolymers into the gum base of Cherukuri with a reasonable expectation that a gum base suitable for granulating and compressing into tablets would be achieved. Polyvinyl acetate and vinyl acetate-vinyl laurate copolymers were known for use in gum base, and had known anti-tackifying properties. "The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results." KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). "A person of ordinary skill is also a person of ordinary creativity, not an automaton." Id. at 421. Claim 10 Claim 10 specifically requires the synthetic resin of claim 1 be polyvinyl acetate, a vinyl acetate-vinyl laurate copolymer, or a mixture thereof. For the reasons we state above, a preponderance of the evidence supports the Examiner's conclusion of obviousness with respect to the composition of claim 10. Claim 20 Claim 20 requires that the compressed chewing gum of claim 1 have a water content of less than 1.5 wt.%. The Examiner finds that Cherukuri teaches a chewing gum having about 2% moisture, and that about 2% is close to the claimed less than 1.5% as to render the claimed moisture content obvious. Final 4. Appellants contend Cherukuri's range of about 2% to about 8% by weight does not encompass "less than 1.5%" because Cherukuri "teach 9 Appeal2014-007824 Application 13/352,211 major benefits from working within their range," at for example column 3, lines 35-38, and "[t]here is no motivation to be found in Cherukuri et al. to work their process below the lower limit of their given range." Br. 17. We disagree with Appellants. There is, in fact, a reason to use a lower moisture level. Cherukuri discloses it was known in the art that lowering the moisture content allows for more successful production of tableted chewing gum. Cherukuri, col. 1, 11. 16-38. Cherukuri's invention is directed to including additives (grinding and compression aids) that allow tableting of conventional higher moisture (about 2% to about 8%) chewing gum. It was known that lowering the moisture content would be successful in a granulating and tabling process. Moreover, we agree with the Examiner that "about 2%" is reasonably close to 1.5% given that 1.5% rounds up to 2%. Rejection C The Examiner rejects claims 28 and 29 under 35 U.S.C. § 103(a) as obvious over Cherukuri in view of Patel; and further in view of Cherukuri '510. Appellants do not advance any arguments over and above those we have already addressed. Br. 18. For the reasons we stated above, we determine that Appellants have not identified a reversible error in the Examiner's rejection of claims 28 and 29. Rejection D The Examiner rejects claims 1-14, 16, 18, and 20-27 under 35 U.S.C. § 103(a) as obvious over Kaul in view of Patel. Appellants do not argue any claim apart from the others. Br. 19-23. We select claim 1 as representative. 10 Appeal2014-007824 Application 13/352,211 Kaul is directed to a pourable-non-caking material for chewing gum, and chewing gum made from this material in compressed form. Kaul, col. 1, 11. 5-9. Kaul uses a process that uses dry ingredients to overcome prior art problems of using glucose syrup-containing chewing gum compositions to make compressed chewing gum. Kaul, col. 1, 11. 10-18and11. 43-52. Kaul exemplifies a process that starts with a commercial quality chewing gum base. Kaul, col. 2, 11. 32-34. The base is 20 wt.% of the composition. Kaul, col. 2, 1. 25. As acknowledged by the Examiner, Kaul is silent as to the specific composition of the base. Final 7. The Examiner relies upon Patel as evidence that gum bases having natural and synthetic resins in the concentrations required by claim 1 were known in the art to support the conclusion of obviousness. Final 7-9. Appellants contend that the ordinary artisan would not have had a reasonable expectation of success in using the composition of Patel in the gum base of Kaul in the ratio required by claim 1. Br. 19. First, we do not agree that Patel's teaching of mixing medium chain triglycerides (MCTs) in their liquid form into the gum base is incompatible with the teachings of Kaul such that the ordinary artisan would not expect the teaching of Patel to be workable with the teaching of Kaul. Br. 20 (citing Patel, col. 6, 11. 31-32). Kaul also teaches mixing a liquid ingredient (glucose syrup) into gum base. See Kaul, col. 2, 11. 23-37. Neergaard's declarations are not convincing in light of the express teachings of the references. 11 Appeal2014-007824 Application 13/352,211 Further, for the reasons we stated above, and for the reasons stated by the Examiner, 10 we are not persuaded that the differences between conventional chewing gum and compressed chewing gum would have led the ordinary artisan away from using polyvinyl acetate as disclosed by Patel in the commercial quality chewing gum base of Kaul. Br. 20-22. A preponderance of the evidence supports the Examiner's finding of a suggestion in the art for using polyvinyl acetate as that was a known ingredient in gum base with a reasonable expectation that polyvinyl acetate would provide the properties it was known to have in the commercial quality chewing gum base of Kaul. CONCLUSION We do not sustain the Examiner's res judicata rejection, but we sustain the obviousness rejections. DECISION The Examiner's decision is affirmed. TIME PERIOD FOR RESPONSE 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 10 Ans. 14--18. 12 Copy with citationCopy as parenthetical citation