Ex Parte Topsoe et al

Patent Trial and Appeal Board

Feb 19, 2016

11664985 (P.T.A.B. Feb. 19, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
11/664,985 0210512009 Martin Topsoe
24126 7590 02/23/2016
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.
05 l 98-P0028A 5283
EXAMINER
DEES, NIKKI H
ART UNIT PAPER NUMBER
1791
NOTIFICATION DATE DELIVERY MODE
02/23/2016 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 MARTIN TOPSOE and KIRSTEN LUND
Appeal2014-009286
Application 11/664,985
Technology Center 1700
Before CHUNG K. PAK, JEFFREY T. SMITH, and
WESLEY B. DERRICK, Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from a rejection of claims
1through46, 49 through 56, and 58 through 69. We have jurisdiction under
35 U.S.C. § 6(b).
Appellants' invention is generally directed to a confectionary product
comprising a polymer system, flavor, and sweetener, and to methods of
manufacturing such a confectionary product. App. Br. 7-9. Claim 1
illustrates the subject matter on appeal and is reproduced below:
1. Confectionery product comprising
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Application 11/664,985
a polymer system,
flavor and
sweetener,
wherein at least 20% by weight of said confectionery
product comprises non-elastomeric polymer and less than about
5% by weight of said confectionery product comprises one or a
combination of elastomeric polymers,
wherein said confectionery product is characterized by
having a tan (delta) above I measured at a frequency of about 1
Hz and wherein
the tan (delta) is defined as (loss modulus G' 'I storage
modulus G').
App. Br. 30 (Claims Appendix).
Appellants (see App. Br., generally) request review of the following
rejections from the Examiner's Non-Final Office Action: 1
I. Claims 1--41, 49, 51-56, and 58---69 under 35 U.S.C. § 112, first
paragraph for failing to comply with the enablement requirement.
II. Claims 1--46, 49-56, and 58---69 under 35 U.S.C. § 103(a) as
unpatentable over Synosky (US 5,116,626, issued May 26, 1992).
III. Claims 1--46, 49-56, and 58---69 provisionally rejected for
nonstatutory, obviousness-type double patenting over claims 1, 3, 7-15, 18,
19, 21-23, 25-27, and 29-32 of U.S. Patent Application 11/664,984 ("the
'984 application").
OPINION
1 Appellants argue the claims together for each rejection. See Appeal Brief,
generally. Therefore, we select claim 1 as representative of the rejected
claims, which will stand or fall with claim 1.
2
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Application 11/664,985
After review of the respective positions provided by Appellants and
the Examiner, we REVERSE the Examiner's rejection of claims 1--41, 49,
51-56, and 58---69 under 35 U.S.C. § 112, first paragraph for failing to
comply with the enablement requirement, but AFFIRM the Examiner's
rejection of claims 1--46, 49-56, and 58---69 under 35 U.S.C. § 103(a) as
unpatentable over Synosky, and the Examiner's provisional rejection of
claims 1--46, 49-56, and 58---69 for nonstatutory, obviousness-type double
patenting over claims 1, 3, 7-15, 18, 19, 21-23, 25-27, and 29-32 of the
'984 application. We add the following for emphasis.2
Rejection I
The Examiner finds that the quantity of experimentation necessary to
make and use the subject matter of claims 1--41, 49, 51-56, and 58---69
would be great because the Specification does not provide direction or
guidance for determining which non-elastomeric polymers, other than
polyvinyl acetate, would be suitable for inclusion in the claimed product to
provide a tan (delta) above 1, and does not provide working examples for
any non-elastomeric polymer other than polyvinyl acetate. Ans. 3. Based
on these findings, the Examiner determines that "the specification, while
being enabling for confectionery products comprising polymer systems
comprising the polymer polyvinyl acetate, does not reasonably provide
enablement for any polymer system providing a tan (delta) above 1
measured at a frequency of about 1 Hz." Ans. 2.
2 In the event of further prosecution of this application, we advise the
Examiner to consider whether the chewing processes recited in claims 5, 6,
8-10, 14, and 15 further limit claim 1, which is directed to a product rather
than a process.
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Application 11/664,985
It is well established that the Examiner has the "burden of giving
reasons, supported by the record as a whole, why the specification is not
enabling ... Showing that the disclosure entails undue experimentation is part
of the PTO's initial burden." In re Angstadt, 537 F.2d 498, 504 (CCPA
197 6). In determining whether any given disclosure would require undue
experimentation to practice the claimed subject matter, the Examiner must
consider not only the breadth of the claims, the amount of direction or
guidance presented and the presence or absence of working examples, but
also the nature of the invention, the state of the prior art, the relative skill of
those in the art and the predictability or unpredictability of the art. In re
Vaeck, 947 F.2d 488, 495 (Fed. Cir. 1991). When "a [S]pecification
disclosure ... contains a teaching of the manner and process of making and
using the invention in terms which correspond in scope to those used in
describing and defining the subject matter sough to be patented[,]" such
[S]pecification disclosure "must be taken as in compliance with the enabling
requirement of the first paragraph of§ 112 unless there is reason to doubt
the objective truth of the statements contained therein which must be relied
on for enabling support." In re Armbruster, 512 F.2d 676, 677 (CCPA
1975) (quoting In re Marzocchi, 439 F.2d 220 (CCPA 1971)).
Here, the Specification indicates that the non-elastomeric polymer
component of the polymer system can comprise a natural or synthetic resin,
and the Specification lists numerous exemplary natural and synthetic resins,
only one of which is polyvinyl acetate. Spec. 11, 11. 22-27. Specifically, as
explained by Appellants, the Specification states that "[i]n an embodiment of
the invention, said non-elastomeric polymers comprise a natural or synthetic
resm. Natural resins or synthetic resins may comprise hydrogenated and
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Application 11/664,985
polymerized gum resins, glycerol esters of hydrogenated and polymerized
gum resins, polyterpene resins[,] PVA[,] or other resins." App. Br. 13-14
(citing Spec. 11, 11. 22-27).
In addition, the Specification describes the amount and molecular
weight of polyvinyl acetate that should be present in the polymer system,
stating that, in an embodiment of the invention, "the confectionery product
comprises at least one low-molecular weight PV A having a molecular
weight (Mw) of about 2,000 to 40,000 g/mol in an amount of from about 70
to 99% by weight of the polymer system." Spec. 12, 11. 5-8. Therefore, we
agree with Appellants that the Specification provides sufficient guidance to
allow one of ordinary skill in the art to produce a confectionary product as
claimed without the need to engage in undue experimentation. App. Br. 11-
16.
Accordingly, we reverse the Examiner's rejection of claims 1--41, 49,
51-56, and 58---69 under 35 U.S.C. § 112, first paragraph, as failing to
comply with the enablement requirement.
Rejection II
The Examiner finds that Synosky discloses a gum composition
(confectionary product) comprising a gum base, flavoring, and sweetener.
Ans. 4; Synosky col. 2, 11. 31-34. The Examiner cites to a disclosure in
Synosky indicating that 70.0 to 95.0 percent of the gum base is comprised of
a polyvinyl acetate elastomer, and 85.0 to 95.0 percent of the gum base is
comprised of polyvinyl acetate when polyvinyl acetate is the sole elastomer
in the gum base. Ans. 4 (citing Synosky col. 3, 11. 13-16). Synosky
discloses that the molecular weight of the polyvinyl acetate is 2,000 to
85,000, preferably 7,000 to 60,000, and more preferably 10,000 to 30,000.
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Synosky col. 3, 11. 9-13. The Examiner concedes that Synosky does not
disclose the tan (delta) of the gum composition, but the Examiner
determines, relying on In re Best, 562 F.2d 1252, 1255 (CCPA 1977), that
Synosky's gum composition would inherently possess a tan (delta) of above
1 as recited in claim 1 because Synosky' s gum composition is identical or
substantially identical to the claimed confectionary product. Ans. 4--5.
Appellants argue that the Examiner's reliance on In re Best is
misplaced because the Examiner fails to establish that the claimed
confectionary product is identical or substantially identical to Synosky' s
gum composition. App. Br. 21-23. To support this assertion, Appellants
rely on a first Declaration of Jesper Neergaard submitted under Rule 132 on
September 28, 2012 ("the 2012 Declaration"), and a second Declaration of
Jesper Neergaard submitted under Rule 132 on February 28, 2013 ("the
2013 Declaration"). App. Br. 20-25. Appellants explain that the 2012
Declaration indicates that "the tan (delta) of a confoctionary product is
dependent upon more than simply the quantity of non-elastomeric polymer
and the quantity of elastomeric polymer." App. Br. 20. Specifically, the
2012 Declaration indicates that the molecular weight and molecular weight
distribution of the non-elastomeric and elastomeric polymers, and the type
and amount of other components in the product, such as the softener,
contribute to the tan (delta) value of a confectionary product. 2012
Declaration i-f 9. The 2013 Declaration indicates that "the presence of at
least 20% of non-elastomeric polymers and less than 5% of elastomeric
polymers in Synosky cannot be said to render the product identical or
substantially identical to the product as claimed in respect of a tan (delta) of
above 1." 2013 Declaration i-f 10.
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We find Appellants' arguments unpersuasive because we agree with
the Examiner that Synosky discloses a gum composition that is identical or
substantially identical to the claimed confectionary product, and Appellants
have not shown that Synosky' s gum composition would not have a tan
(delta) as claimed. Ans. 4. As discussed above, Synosky discloses a gum
composition comprising a gum base containing 85.0 to 95.0 percent by
weight polyvinyl acetate having a molecular weight of 7 ,000 to 60,000,
preferably 10,000 to 30,000. Synosky col. 3, 11. 9-16. Synosky further
discloses that the gum base includes from 1.0 to 20.0 percent by weight of a
softener, and preferably includes 3.0 to 12.0 percent by weight of a glycerol
triacetate (triacetin) softener. Synosky col. 3, 11. 41--43 and 11. 66-68. Like
Synosky, Appellants' Specification discloses that the polymer system
comprises from about 70% to 99% by weight polyvinyl acetate having a
molecular weight of 2,000 to 40,000. Spec. 12, 11. 5-8. Moreover, like
Synosky, Appellants; Specification discloses that the preferred softener
utilized in the confectionary product is triacetin, and discloses including up
to 18% by weight of the softener, more typically up to 12% by weight of the
softener. Spec. 35, 11. 21-23; 36, 11. 11-12.
Thus, because Synosky' s gum composition appears to be identical or
substantially identical to the confectionary product recited in claim 1,
including appearing to be identical or substantially identical with respect to
the components of the composition that Appellants' Specification and the
2012 Declaration indicate influence the tan (delta) of the product, the
Examiner has a reasonable basis for finding that Synosky's gum
composition would have a tan (delta) above 1 measured at a frequency of
about 1 Hz wherein the tan (delta) is defined as (loss modulus G"/storage
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modulus G'), as recited in claim 1. In re Best, 562 F.2d 1252, 1255 (CCPA
1977). ("Where ... the claimed and prior art products are identical or
substantially identical, or are produced by identical or substantially identical
processes, the PTO can require an applicant to prove that the prior art
products do not necessarily or inherently possess the characteristics of his
claimed product."); In re Crish, 393 F.3d 1253, 1259 (Fed. Cir. 2004)
("[W]hen the prior art evidence reasonably allows the PTO to conclude that
a claimed feature is present in the prior art, the evidence 'compels such a
conclusion if the applicant produces no evidence or argument to rebut it."'
(quoting In re Spada, 911 F.2d 705, 708 n.3 (Fed. Cir. 1990)). In any event,
the fact that Appellants have recognized an additional property which would
have naturally flowed from following the suggestion of Synosky cannot be
the basis of patentability when the difference would otherwise have been
obvious. Ex parte Obiaya, 227 USPQ 58, 60 (BP AI 1985); see also In re
Kubin, 561F.3d1351, 1357 (Fed. Cir. 2009) ("Even if no prior art of record
explicitly discusses the [limitation], [applicants'] application itself instruct[ s]
that [the limitation] is not an additional requirement imposed by the claims
on the [claimed invention], but rather a property necessarily present in [the
claimed invention]").
Appellants and the Declarant do not demonstrate that the
confectionary product recited in claim 1 includes components of a type and
in an amount that are patentably different from the components of Synosky's
gum composition. App. Br. 16-26, and 2012 and 2013 Declarations. Nor
do Appellants and the Declarant demonstrate that Synosky's gum
composition would not have a tan (delta) above I measured at a frequency of
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about 1 Hz and wherein the tan (delta) is defined as (loss modulus
G"/storage modulus G'). Id.
Although Appellants argue, referring to a statement made in the 2013
Declaration, that "one skilled in the art would immediately recognize that at
least some embodiments disclosed in Synosky [] (e.g., the bubble gum
embodiments) would have a tan (delta) below 1"3 (App. Br. 23), Appellants
and the Declarant do not demonstrate that the embodiment relied on by the
Examiner (discussed above)4 does not have a tan (delta) below 1. App. Br.
16-26, and 2012 and 2013 Declarations. Thus, on this record, Appellants do
not provide evidence sufficient to rebut the Examiner's finding that
Synosky's gum composition has a tan (delta) as claimed. In re Am. Acad. of
Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) ("[T]he Board is
entitled to weigh the declarations and conclude that the lack of factual
corroboration warrants discounting the opinions expressed in the
declarations.''); Yorkey v. Diab, 601 F.3d 1279, 1284 (Fed. Cir. 2010) (The
Board has discretion to give more weight to one item of evidence over
another "unless no reasonable trier of fact could have done so").
Accordingly, we sustain the Examiner's decision rejecting claims 1-
46, 49-56, and 58---69 under 35 U.S.C. § 103(a) as unpatentable over
Synosky.
Rejection III
The Examiner finds that claims 1--46, 49-56, and 58---69 are not
patentably distinct from claims 1, 3, 7-15, 18, 19, 21-23, 25-27, and 29-32
3 This admission in the 2013 Declaration further supports the Examiner's
obviousness rejection.
4 Synosky col. 3, 11. 13-16.
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of the '984 application because both sets of claims are directed to a
confectionery product comprising a polymer system, flavor, and sweetener
in which the polymer system contains little, if any, polymer other than
polyvinyl acetate. Ans. 9. The Examiner finds that the polymers of both
sets of claims have the same molecular weights. Id. The Examiner further
finds that the conflicting claims of the '984 application recite confectionary
products having amounts of fillers, elastomers, sweeteners, and flavors that
overlap with the respective amounts of the corresponding components of the
confectionary product recited in the instant claims. Id. Based upon these
substantial similarities, the Examiner concludes that that confectionary
product of the claims of the '984 application would have the same tan (delta)
as that of the confectionary product recited in the instant claims. Id.
Appellants argue that the Examiner fails to explain how each of the
rejected claims is rendered obvious by the claims of the '984 application,
and instead the Examiner only addresses claim 1. App. Br. 26----'28.
However, we find Appellants' argument lacking in persuasive merit because
Appellants do not identify a patentable distinction between the instant claims
and those of the '984 application. App. Br. 26-28. As discussed above,
according to Appellants' Specification and statements made in the 2012
Declaration, to achieve a tan (delta) of above 1 for the confectionary
product, particular amounts of non-elastomeric and elastomeric polymers
having particular molecular weights must be present in the confectionary
product. The claims of the instant application recite non-elastomeric and
elastomeric polymers that are substantially the same in these respects as the
non-elastomeric and elastomeric polymers recited in the conflicting claims
of the '984 application, and both sets of claims also recite overlapping
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amounts of additional components of the confectionary product. Therefore,
we agree with the Examiner that the confectionary product of the claims of
the '984 application would have a tan (delta) as recited in instant claim 1.
Moreover, numerous dependent claims in the instant application recite
limitations that correspond to limitations recited in claims of the '984
application, as set forth in the table below.
Instant claim Corresponding claim of '984
application
26 12
27 13
28 14
29 15
41 19
42 Part of claim 1
49 18
51 7
52 8
53 9
54 10
55 11
58 Encompassed by claim 1
59 Encompassed by claim 1
60 3
61 22
62 25
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63
64
66
26
27
29
We therefore agree with the Examiner that the instant claims are not
patentably distinct from the claims of the '984 application, and we
accordingly sustain the Examiner's provisional obviousness-type double-
patenting rejection of claims 1--46, 49-56, and 58---69.
ORDER
For the reasons set forth above and in the Answer, the decision of the
Examiner to reject claims 1--46, 49-56, and 58---69 under 35 U.S.C. § 103(a)
as unpatentable over Synosky is affirmed, and the decision of the Examiner
to provisionally reject claims 1--46; 49-56; and 58---69 for nonstatutory;
obviousness-type double patenting over claims 1, 3, 7-15, 18, 19, 21-23,
25-27, and 29-32 of the '984 application is affirmed.
For the reasons set forth above and in the Appeal Brief, the decision
of the Examiner to reject claims 1--41, 49, 51-56, and 58-69 under 35
U.S.C. § 112, first paragraph for failing to comply with the enablement
requirement is reversed.
TIME PERIOD
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).
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AFFIRMED
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