Ex Parte Vaman et al

Patent Trial and Appeal Board

Sep 8, 2016

13120513 (P.T.A.B. Sep. 8, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/120,513 05/23/2011 Shama Karu Vaman
23413 7590 09/12/2016
CANTOR COLBURN LLP
20 Church Street
22nd Floor
Hartford, CT 06103
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.
CDS0356US 1727
EXAMINER
LEBLANC, KATHERINE DEGUIRE
ART UNIT PAPER NUMBER
1791
NOTIFICATION DATE DELIVERY MODE
09/12/2016 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):
usptopatentmail@cantorcolbum.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SHAMA KARU V AMAN,
SARAH JAYNE PRESTWOOD PEARSON, and
CLIVE RICHARD THOMAS NORTON1
Appeal2015-002546
Application 13/120,513
Technology Center 1700
Before MICHAEL P. COLAIANNI, CHRISTOPHER C. KENNEDY, and
AVEL YN M. ROSS, Administrative Patent Judges.
KENNEDY, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's
decision to reject claims 1, 3-19, 21-29, and 36-39. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.
BACKGROUND
The subject matter on appeal relates to a confectionery product
comprising a plurality of capillaries, and an associated manufacturing
1 According to the Appellants, the Real Party in Interest is Cadbury UK, Ltd.
Br. 2.
Appeal2015-002546
Application 13/120,513
process. E.g., Spec. 1: 3-5; Claims 1, 17. Claim 1 is reproduced below from
page 19 (Claims Appendix) of the Appeal Brief:
1. A confectionery product comprising
an extruded body portion, the body portion comprising gum and
having a plurality of capillaries disposed therein,
one or more of the capillaries being at least partially filled with
a fill material which is a different material from that of the
extruded body portion,
the fill material comprising an active/reactive component and
wherein two or more different active/reactive components are
provided in different capillaries;
wherein the active/reactive components are selected from the
group consisting of flavor agents, oral care actives, sweetening
agents, physiological cooling agents, warming agents, coloring
agents, effervescent agents, pharmaceutical agents,
nutraceutical agents, botanical extracts, teeth whitening agents,
and combinations thereof.
Additional claims appear in the Analysis section below.
REJECTIONS ON APPEAL
1. Claims 1, 5-15, 17-19, 23-29, and 37-39 stand rejected under 35
U.S.C. § 103(a) as unpatentable over Fomaguera (WO 2007/056685 A2,
published May 18, 2007) in view ofDegady et al. (US 2002/0136812 Al,
published Sept. 26, 2002).
2. Claims 3, 4, 21, and 22 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Fomaguera in view ofRivier (US 2003/0059501 Al,
published Mar. 27, 2003).
3. Claim 36 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Fomaguera in view ofDegady, further in view of Meisner (US
4,925,380, issued May 15, 1990).
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Application 13/120,513
ANALYSIS
After review of the cited evidence in the appeal record and the
opposing positions of the Appellants and the Examiner, we determine that
the Appellants have not identified reversible error in the Examiner's
rejections. Accordingly, we affirm the rejections for reasons set forth below
and in the Examiner's Answer. See generally Ans. 2-14.
I. Rejection 1
The Appellants present arguments for several different claims, which
we address in tum below.
A. Claim 1
Claim 1 is reproduced above. The Examiner finds that F omaguera
teaches an extruded confectionery product comprising each element of claim
1 except that "Fomaguera does not specifically teach that different
active/reactive components are in different capillaries." Ans. 4. The
Examiner finds that Fomaguera teaches "a number of different confectionary
materials," and that "Degady teaches that multi component extruded
confections are well known and desirable in the art, especially hard candy
and gum combinations." Id. at 4--5. The Examiner further finds that
"Degady ... show[ s] that an extruded composition can comprise different
active components in different regions [of the composition]." Id. at 10. The
Examiner concludes that "it would have been obvious to modify Fomaguera
with Degady by forming an extruded confectionary product with two
different confectionary materials in different capillaries. This adds variety to
the composition and a pleasing texture according to Degady." Id. at 5.
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The Appellants argue that (1) "Fomaguera is directed to an apparatus
and method for continuous production of individual, identical center-filled
confectionery products," (2) Fomaguera's multi-capillary extrudate is
merely an intermediate in route to a single-capillary final product, and (3)
Degady likewise fails to teach a multi-capillary confectionery product.
Br. 5-8.
Those arguments do not persuade us of reversible error in the
Examiner's rejection. Consistent with the Examiner's findings, Figure 6 of
Fomaguera, which appears below, depicts a multi-capillary extruded
confectionery product:
~~,~
4~ -~~ ·~~ ~'' ~' ''•~~. t......~--~ . . .. · ~ . :,,... .
38
Figure 6 shows center-filled confectionery ropes 46 with fill material 38
occupying capillaries in the ropes. See, e.g., Fomaguera i-f 77. While
Fomaguera does not expressly disclose the use of different fill materials in
different capillaries, the Appellants identify nothing in F omaguera that
would have discouraged a person of ordinary skill from pursuing such an
embodiment. The fact that Fomaguera allegedly shows only "one reservoir
for filling conduits," see Br. 5, is not evidence that Fomaguera teaches away
from using different fill materials in different capillaries; it is simply an
embodiment in which F omaguera uses the same fill material in different
capillaries. Cf In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) ("The
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prior art's mere disclosure of more than one alternative does not constitute a
teaching away from any of the[] [disclosed] alternatives .... ").
Fornaguera teaches a wide variety of potential fill materials, see i-f 74,
and it teaches that the individual conduits for the fill material may have
dedicated flow regulators, see i-f 77. While the Examiner does not identify
any express teaching in F ornaguera of using different fill materials in
different capillaries, the teachings of i-f 7 4 and i-f 77 in combination with the
knowledge that different textures or flavors are desirable in confectioneries
at least inferentially suggests to a person of ordinary skill in the art that
different fill materials could be used in different capillaries to provide
variety. Cf KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) ("A
person of ordinary skill is also a person of ordinary creativity, not an
automaton."). As the Examiner explains, extruded confections with
different components in different regions are known in the art. Ans. 4--5, 10.
A person of ordinary skill in the art, through the use of only ordinary
creativity, would have been motivated to use different fill materials in
Fornaguera's capillaries to produce different textures, different flavors, or
otherwise to provide variety to the confectionery product.
We recognize that the multi-capillary product depicted in
Fornaguera's Figure 6 is an intermediate product in Fornaguera's
manufacturing process that may ultimately be divided into individual pieces,
each having only a single capillary. See, e.g., Fig. 1 (item 72, representing
multi-capillary pieces, and item 78, representing single-capillary pieces),
Figs. 13 & 14. However, even if split into individual pieces, variety in
flavor and texture would be desirable, and the scope of claim 1 appears to be
broad enough to encompass the intermediate product of F ornaguera when
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modified, as proposed by the Examiner, to include different fill materials in
different capillaries to provide different flavors. The Appellants have not
persuasively argued to the contrary.
The Appellants argue that "[c]ombining the teachings of Degady with
F omaguera would lead the artisan of ordinary skill to mass produce
individual center-filled pieces having 3 layers." Br. 7. The Examiner,
however, does not propose bodily incorporation of Degady's teachings into
Fomaguera's method; the Examiner cites Degady for the common sense
notion that different textures, different flavors, or general variety may be
desirable in confectionery products. Even if Degady were to motivate a
three-layer confectionery product, Fomaguera likewise teaches a three-layer
product (i.e., outer coating 88, fill portion 82, and outer portion 84, see Fig.
14 & i-f 94). The Appellants have not persuasively explained why a three-
layer product is incompatible with the use of different fill materials in the
capillaries of Fomaguera Fig. 6.
To the extent the Appellants argue that the Examiner fails to explain
how or why a person of ordinary skill in the art would have had a reasonable
expectation of success in modifying Fomaguera's apparatus to use multiple
fill materials instead of only one, see Br. 8, the Appellants fail to suggest
that such a modification would have been beyond the ordinary level of skill
in the art. Absent evidence to the contrary, we determine that a person of
ordinary skill in the art would have been capable of modifying Fomaguera's
apparatus, through the use of only ordinary creativity, to provide different
fill material for different capillaries.
On the record before us, we are persuaded that the use of different fill
materials in the capillaries of Fomaguera Fig. 6 would have been obvious to
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provide variety in flavor or texture, and that claim 1 is broad enough to
encompass such a product notwithstanding the fact that it ultimately may be
divided into smaller individual pieces.
B. Claim 9
Claim 9 depends from claim 1 and further recites, "wherein the
capillaries in the extruded body portion result in a voidage in the range of 5-
99%." The Examiner finds that "Fomaguera does not specifically teach the
voidage in the body portion," but that it "teaches the amount of fill material
in terms of a percentage by weight." Ans. 5 (citing Fomaguera i-f 94,
teaching a weight percent of fill material of about 1-16 % ) . The Examiner
further finds that Fomaguera's "apparatus is capable of being adjusted in
order to make a range of capillary sizes." Ans. 5. The Examiner concludes
that "it would have been obvious to modify the amount of void space
depending on the amount of fill material desired." Id. at 5---6.
The Appellants argue that the Examiner's rationale is "technically
faulty" because F omaguera discloses a weight percent of fill material, which
"does not inform one of the volume percent of the fill within that piece." Br.
8-9. The Appellants also argue that F omaguera' s disclosed weight percent
range of 1-16% refers to individual pieces, such as those of Figs. 13 and 14,
rather than to the multi-rope extrudate of Figure 6. Br. 9-10.
We are not persuaded by those arguments. Claim 10 recites a broad
voidage range of 5-99%. That range makes clear that the voids can occupy
a small amount of the body (i.e., 5%) or they can occupy nearly the entire
body (i.e., 99%). On this record, it is reasonable to believe that the use of,
e.g., 16% fill material by weight would require a voidage in the range of 5-
99%, notwithstanding the fact that weight percent and volume are different
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units of measure. Moreover, the record establishes that volume of the
capillaries (voidage) is a result-effective variable that a person of ordinary
skill in the art would have optimized to achieve a desired amount of fill
material. It would have been well within the ordinary level of skill in the art
to optimize voidage to achieve desirable results, including in the range of 5-
99%. Although we recognize that Fig. 6 is a schematic that does not provide
measurements, the volume of the voidage provided by the capillaries of
Fig. 6 appears to fall well within the recited range of 5-99%, further
suggesting that optimization of voidage within that range would have been
obvious to a person of ordinary skill in the art.
C. Claims 10 and 11
Claims 10 and 11 depend from claim 1 and specify that "the
capillaries have an average width or diameter of no more than 3 millimeters"
(claim 10) or "2 millimeters" (claim 11 ). The Examiner finds that
"F ornaguera teaches that the diameter of the entire extruded rope is about l
to about 10 mm," including "the cavity and the wall surrounding it." Ans. 6.
The Examiner finds that Fomaguera does not expressly teach the size of the
capillary but that it necessarily would be smaller than the extruded rope, i.e.,
"smaller than about 1 to about 10 mm, thus reasonably including a size of
less than 2 mm." Id. The Examiner further finds that it would have been
obvious "to adjust the diameter of the cavity depending on the amount of fill
material desired." Id.
The Appellants argue that the Examiner's analysis is "conclusory"
and that the Examiner "has not articulated any correlation between diameter
of the centerfill regions of Fomaguera's confectionery pieces and the
amount of fill." Br. 10.
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For reasons similar to those discussed above with respect to claim 9,
we are not persuaded by the Appellants' arguments. The Appellants do not
dispute the Examiner's finding that Fomaguera's extruded ropes have
diameters of 1 to 10 mm, or that the diameter of the capillary necessarily
must be less than the diameter of the rope. The volume of the capillary,
including its diameter, necessarily is affected by the amount of fill material.
The record indicates that optimizing the amount of fill material and the
volume of the capillaries would have been well within the ordinary level of
skill in the art. The Appellants have not alleged any criticality to the
particular diameters recited by claims 10 and 11. On this record, we are not
persuaded that the recited diameters impart patentability to the subject
matter of claims 10 and 11. See In re Applied Materials, Inc., 692 F.3d
1289, 1295 (Fed. Cir. 2012) ("Discovery of an optimum value of a result
effective variable ... is ordinarily within the skill of the art."); In re
Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990) ("The law is replete with
cases in which the difference between the claimed invention and the prior art
is some range or other variable within the claims .... [and] in such a
situation, the applicant must show that the particular range is critical,
generally by showing that the claimed range achieves unexpected results
relative to the prior art range." (citations omitted)).
D. Claim 38
Claim 3 8 depends from claim 1 and further recites that "the extruded
body portion has a regular polygonal cross-section." The Examiner finds
that "Fomaguera does not specifically teach that the extruded body portion
has a regular polygonal cross section," but that it "would have been obvious
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to modify the shape of the body portion depending on the aesthetic design
choice desired." Ans. 8.
The Appellants argue that, in a previous Office Action, the Examiner
had rejected claim 38 as indefinite under 35 U.S.C. § 112, i-f 2, and that,
when the Examiner eventually withdrew that rejection, the§ 103 rejection
"should also have been withdrawn since 'regular polygonal cross section' is
indeed clear and a limiting term." Br. 11-12.
That argument is not persuasive because it does not address the
Examiner's rationale. Changes in shape typically do not impart patentability
to otherwise obvious subject matter. See In re Dailey, 357 F.2d 669, 672-73
(CCPA 1966); see also MPEP § 2144.04(IV)(B). The Appellants fail to
persuade us otherwise in this case.
E. Claim 17
Claim 1 7 is similar to claim 1, except that it claims a process for
manufacturing rather than the confectionery product. The Examiner's
analysis of claim 17 is the same as the Examiner's analysis of claim 1.
The Appellants' arguments concerning claim 17 are also essentially
the same as their arguments concerning claim 1. We are not persuaded by
those arguments for the reasons set forth above. The Appellants, however,
also argue that the proposed modification would render Fornaguera
unsatisfactory for its intended purpose because "F ornaguera' s intended
purpose is increasing production output of identical, individual center-filled
confectionery pieces." Br. 16.
We are not persuaded by that argument. As set forth above, the
Appellants do not persuasively identify any teaching in Fornaguera that
teaches away from the use of different fill materials in different capillaries.
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It appears that F omaguera' s apparatus would continue to serve its intended
purpose of producing confectionery products even if different fill materials
were used in different capillaries. Accordingly, the Appellants' argument
does not persuade us of reversible error in the Examiner's rejection.
II. Rejections 2 and 3
The Appellants present no new arguments concerning Rejections 2
and 3, and instead simply assert that the additional prior art cited by the
Examiner in support of Rejections 2 and 3 does not remedy the alleged
deficiencies discussed above with respect to claims 1 and 1 7. See Br. 16-17.
Accordingly, because we affirm the Examiner's rejection of claims 1 and 17,
we likewise affirm Rejections 2 and 3.
CONCLUSION
We AFFIRM the Examiner's rejections of claims 1, 3-19, 21-29, and
36-39.
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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