Ex Parte Wittorff

Patent Trial and Appeal Board

Feb 17, 2016

11919958 (P.T.A.B. Feb. 17, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111919,958 11105/2007
24126 7590 02/19/2016
ST ONGE STEW ARD JOHNSTON & REENS, LLC
986 BEDFORD STREET
STAMFORD, CT 06905-5619
Helle Wittorff
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-P0025A 9834
EXAMINER
DEES, NIKKI H
ART UNIT PAPER NUMBER
1791
NOTIFICATION DATE DELIVERY MODE
02/19/2016 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 HELLE WITTORFF
Appeal2014-006268
Application 11/919,958
Technology Center 1700
Before BF~ADLEY R. Gi\~RRIS, 1\1ICHi\~EL P. COLiUi\J'Jl'H, and
BRIAND. RANGE Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2014-006268
Application 11/919,958
SUMMARY
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1,
3-5, 7, 10-34, 39, 41-53, and 55-64. We have jurisdiction. 35 U.S.C.
§ 6(b). We review the appealed rejections for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. Cf Ex parte Frye, 94 USPQ2d 1072, 1075 (BP AI 2010)
(precedential) (citation omitted).
We AFFIRM.
STATEMENT OF CASE
Appellant1 describes the present invention as a biodegradable toffee
gum. Spec. ,-i 4. Claims 1-62 were originally filed, and claims 63-64 were
added during prosecution. Claims 2, 6, 8-9, 35-38, and 54 were cancelled.
The remaining claims stand rejected and are the subject of appeal.
Claim 1 is the only independent claim. It is reproduced below and is
illustrative of the claimed subject matter:
1. A toffee gum comprising
a polymer system,
at least one flavor, and
at least one sweetener,
at least 70% by weight of said polymer system comprising one
or more polymers selected from the group consisting of
polyesters, poly( ester-carbonates), polycarbonates, polyester
amides, polypeptides, polyurethane, polyhydroxyalkanoates,
homopolymers of amino acids and proteins,
wherein said toffee gum is free of elastomers, and
wherein said toffee gum comprises an anti-smoking agent
selected from the group consisting of tobacco powder and
nicotine.
1 According to the Appellant, the real party in interest is Gumlink A/S.
Appeal Br. 3.
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Application 11/919,958
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Andersen, et al.
Ogawa
Richey
Walker, et al.
WO 2004/028267 Al
us 4,157,402
us 5,538,741
us 2,306,415
REJECTIONS
The Examiner made the following rejections:
published April 8, 2004
issued June 5, 1979
issued July 23, 1996
issued Dec. 29, 1942
Rejection 1. Claims 1, 3-5, 7, 10-34, 39--41,2 45-53, 56, 57, 60, and
61 stand rejected under 35 U.S.C. § 102(b) as anticipated by Andersen or, in
the alternative, under 35 U.S.C. § 103 over Andersen.
Rejection 2. Claims 42--44, 55, 63, and 64 stand rejected under 35
U.S.C. § 103 over Andersen. 3
2 .,A .. ppellant' s Brief lists claim 40 as currently pending and on appeal.
Appeal Br. 5. Claim 40 is also listed in Appellant's claim appendix. Id. at
34. Appellant makes no arguments as to claim 40, and claim 40 is not
addressed in the Examiner's Answer. The Office Action Summary form
attached to the September 10, 2013, Non-Final office action lists claim 40 as
rejected, but the detailed office action does not address specifically claim 40.
At page 7 of the November 18, 2010, Non-Final action, the examiner finds
that the subject matter of claim 40 is anticipated under 35 U.S.C. § 102(b)
over Andersen.
Claim 40 is dependent on claim 39. Claim 39 is dependent on claim 1.
Based upon the treatment of claim 40 in the prosecution history, we
understand the Examiner to have omitted inadvertently claim 40 from the 35
U.S.C. §§102(b)/103(a) rejections over Andersen. The Examiner's
inadvertent error is harmless, and Appellant waived any arguments
regarding claim 40 by failing to argue separately the claim on appeal. 37
CPR§ 41.37(c)(l)(iv) (2013).
3 The Examiner inadvertently omitted the rejection of claim 64 in the
September 10, 2013, Non-Final Office Action but added the rejection in the
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Application 11/919,958
Rejection 3. Claim 58 stands rejected under 35 U.S.C. § 103 over
Andersen in view of Walker.
Rejection 4. Claim 59 stands rejected under 35 U.S.C. § 103 over
Andersen in view of Ogawa.
Rejection 5. Claim 62 stands rejected under 35 U.S.C. § 103 over
Andersen in view of Richey.
ANALYSIS
Appellant does not separately argue the patentability of any dependent
claims. We therefore limit our discussion to one claim, i.e., claim 1. The
dependent claims under rejection (1) and the claims under rejections (2) to
( 5) will stand for all with our analysis of the rejection of claim 1. See 3 7
C.F.R. § 41.37(c)(l)(iv) (2013).
The Examiner's findings and conclusions regarding Anderson are
located on pages 2-6 of the Answer.
With respect to the anticipation rejection under 35 U.S.C. § 102(b),
Appellant argues that Andersen does not anticipate because no single
embodiment of Andersen includes all elements of claim 1 including the use
of nicotine with the other limitations of claim 1. See, e.g., App. Br. 10. The
Federal Circuit has explained that even where a reference discloses all
claimed limitations within its four comers, it cannot anticipate unless it also
discloses "all of the limitations arranged or combined in the same way as
recited in the claim .... " Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d
1359, 1371 (Fed. Cir. 2008).
Examiner's Answer as a New Ground of Rejection. Ans. 10, 16. Appellant
responded to the New Ground of Rejection of claim 64 in the Reply Brief.
Reply Br. 2.
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Application 11/919,958
We agree with Appellant that Andersen does not anticipate the claims
under review within the meaning of 35 U.S.C. § 102. The Examiner cites
example 8 of Andersen as meeting all claim limitations except for the "anti-
smoking agent" requirement of claim 1. Ans. 11. Andersen's embodiments
that include an anti-smoking agent lack at least the "free of elastomers"
element of claim 1. See, e.g., id. at 39:20-12. The Examiner does not
identify any one Andersen embodiment that has both an anti-smoking agent
selected from tobacco powder and nicotine and is "free of elastomers" as
required by claim 1. Although the Examiner finds that Andersen appears to
utilize the phrase "in an embodiment" in a loose manner such that statements
referring to characteristics "in an embodiment" could be general rather than
limited to a specific embodiment (Ans. 12-13), the Examiner has not
established that Andersen discloses all the limitations of claim 1 arranged as
required by claim 1 within the meaning of§ 102. Accordingly, we reverse
the Examiner's rejection under 35 U.S.C. § 102(b).
With respect to the obviousness rejection under 35 U.S.C. § 103,
Andersen's example 8 teaches a polymer having no elastomers where at
least 70% of the polymer system comprises polyester polymers. Andersen
22:28-23: 17; 27:25-30: 11; see also Non-Final Act. 4 3-4. Appellant does not
dispute this point. Example 8 is not the only embodiment where Andersen
teaches that its gum could be elastomer-free. Andersen 7:4-5 ("the chewing
gum is substantially free of non-biodegradable polymers"); 9:20-21 ("a
biodegradable polymer according to the invention may form a substitute of a
conventional low or high molecular weight elastomer"); 21 :6-7 ("[ e ]dible
polyesters can replace both elastomers and elastomer plasticizers and form
4 Unless we specify otherwise, we refer to the Non-Final Action dated
September 10, 2013 in this Decision.
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Application 11/919,958
1-80% of the gum base"); 47:31--48:3 (reciting in dependent claim 35 "at
least one non-biodegradable conventional elastomer" and thus indicating
that other claims do not require "conventional elastomer"). Andersen does
not, however, explicitly state that the gum of Example 8 was combined with
an anti-smoking agent.
Andersen repeatedly teaches that its gum can be combined with active
ingredients. See, e.g., id. at 1:15-19; 2:29-3:2; 9:23-27; 33:10-19.
Andersen teaches that its active ingredients can include nicotine (one of the
anti-smoking agents within the scope of the '958 application's claim 1).
See, e.g., id. at 6:5-7:2; 14:8-15:4; 39:18--40:12; 45:1--46:2.
Importantly, Andersen teaches that improved initial release of
ingredients, including active ingredients, is advantageous:
More particularly, according to the invention, an improved initial
release has been obtained with respect to chewing gum ingredients.
Active ingredients includes [sic] according to the terms of the
invention among others flavor ingredients and for example medical
active ingredients.
Id. at 2:29-3:2; see also, e.g., id. at 1:12-19. Indeed, the title of Andersen is
"CHEWING GUM HA YING IMPROVED RELEASE OF CHEWING
GUM INGREDIENTS." Id. at 1:1-2. Meanwhile, Andersen also teaches
that example 8 has "lower viscosity resulting in faster flavor release due [to]
the increased mobility of the flavor components in the compound." Id. at
29:11-13. Figures 2 and 4 further illustrate the fast release profile of
example 8.
Based on Andersen's teachings, we determine by a preponderance of
the evidence that a person of ordinary skill would have implemented and
would have been motivated to implement a predictable variation of example
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Application 11/919,958
8 that would include nicotine. Andersen teaches that "improved initial
release" of active ingredients is desirable. Example 8' s characteristics of
lower viscosity and faster release would predictably improve nicotine gum
through faster release in the same way it improved flavor release. Appellant
has not established that addition of nicotine to example 8 would be beyond
ordinary skill in the art. Rather, the Examiner has established by a
preponderance of the evidence that it would have been obvious to modify
Andersen's example 8 by adding nicotine because such is nothing more than
a predictable use of prior art elements (nicotine) according to established
functions (i.e., medicinal release to the user). The subject matter as recited
in claim 1 would have been obvious. Cf KSR Int 'l, Co. v. Teleflex Inc., 550
U.S. 398, 417 (2007).
Appellant's arguments to the contrary are not persuasive. Appellant
argues that Andersen, as a whole, teaches that "elastomer must be present in
an acceptable chewing gum .... " Appeal Br. 17 (emphasis original).
Appellant admits, however, that this teaching is not explicitly in Andersen.
Reply Br. 8. We agree. Moreover, given Andersen's various references to
substitution of elastomers cited above, we find that Andersen does not
implicitly teach that elastomers are required.
Appellant continues this argument by asserting that Andersen would
have provided a person of skill in the art with no "motivation to create a
chewing gum free of elastomers" and that such a person would, therefore,
not combine Andersen's elastomer-free example 8 gum base with nicotine.
Appeal Br. 17. Appellant's argument fails to appreciate the full teachings of
Andersen. As explained above, Andersen teaches that elastomer is
unnecessary, teaches the fast release of elastomer-free example 8, teaches
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Application 11/919,958
that fast release is desirable when the gum includes an active ingredient, and
teaches nicotine as an active ingredient.
Appellant also argues that "the embodiment of Andersen where active
ingredients are included (Example 65)" is "intentionally separated from the
embodiments of Andersen where no active ingredients are included (for
instance the isolated embodiment of Example 8)." Id. at 18. Appellant's
emphasis on example 65 is misplaced and fails to recognize Andersen's
teachings as a whole as discussed above. Andersen does not state or suggest
that its examples and teachings cannot be combined. While it is true that
some of Andersen's examples include active ingredients and some do not,
this does not diminish Andersen's teaching that fast release of active
ingredients is beneficial and that example 8 provides this release.
In reply, Appellant argues that the Examiner does not address the
Appellant's submission of the declaration of Dr. Jesper Neergaard and
appears to argue that failure to address a declaration is a per se reason to
reverse the Examiner's rejections. Reply Br. 3. The Examiner, however,
addressed the Dr. Neergard declaration in the April 18, 2013, Final
Rejection at page 10. The Examiner states: "The [Neergaard] declaration
under 37 C.F.R. 1.132 filed January 18, 2013, is insufficient to overcome the
rejection of all claims based upon Andersen as set forth in the last office
action because: the declaration fails to convincingly argue that the claims are
patentably distinguishable from the prior art." Therefore, the Examiner has
considered the evidence and found it insufficient to overcome the rejection
based on Andersen.
The Neergaard declaration is not persuasive. The Neergaard
declaration primarily characterizes Dr. Neergaard's view of what Andersen
states without providing additional technical analysis or evidence to
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Application 11/919,958
substantiate Declarant's views. Dr. Neergaard's characterization of
Andersen does not diminish Andersen's actual teachings.
Dr. Neergaard provides one technical opinion when he states:
a person of skilled in the art would believe that the presence of
medical ingredients, such as nicotine, would require a special gum
base formulation according to the established function (such as the
gum base formulation disclosed in Example 65) in order to ensure
proper release of the active ingredients.
Neergaard Deel. iJ 13. Based on this, and Dr. Neergaard's view of the
Andersen examples as being "separate" (see, e.g., id. at iii! 14-15), Dr.
N eergaard concludes that a person of skill in the art "would therefore have
no expectations of success in using a medical gum base formulation without
elastomer and above 70% of biodegradable polymer .... " Id. at iJ 16.
Dr. Neergaard's testimony is unpersuasive on this point because it does not
explain why the particular gum base formulation of example 65 is an
absolute requirement for proper release. Moreover, Dr. N eergard does not
explain why a person of skill would not have been inclined to add nicotine to
example 8 of Andersen given Andersen's teachings regarding the desire for
improved initial release of active ingredients and example 8's ability to
provide quick release.
In reply, Appellant also argues that Andersen's use of nicotine as an
active ingredient in combination with example 8 would not have been
obvious because of the sheer number of gum combinations taught by
Andersen. Reply Br. 7. As a legal matter, a disclosure of a multitude of
effective combinations does not render any particular formulation less
obvious. See, e.g., Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807
(Fed. Cir. 1989) ("That the '813 patent discloses a multitude of effective
combinations does not render any particular formulation less obvious. This
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Application 11/919,958
is especially true because the claimed composition is used for the identical
purpose taught by the prior art .... "). Here, Andersen teaches the
advantage of this improved initial release of active ingredients and teaches
that example 8 allows quick release. Thus, Appellant's arguments do not
persuade us that the Examiner improperly rejected the '958 application's
claim 1 based on obviousness. We affirm the obviousness rejections (1) to
(5) based on Andersen.
DECISION
For the above reasons, we reverse (1) the Examiner's rejection of
claims 1, 3-5, 7, 10-34, 39--41, 45-53, 56, 57, 60, and 61under35 U.S.C. §
102(b) as anticipated by Andersen. We affirm (2) the Examiner's rejection
of claims 1, 3-5, 7, 10-34, 39-53, 55-57, 60, 61, 63, and 64 under 35
U.S.C. § 103 over Andersen, (3) the Examiner's rejection of claim 58 under
35 U.S.C. § 103 over Andersen in view of Walker, (4) the Examiner's
rejection of claim 59 under 35 U.S.C. § 103 over Andersen in view of
Ogawa, and (5) the Examiner's rejection of claim 62 under 35 U.S.C. § 103
over Andersen in view of Richey.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l.136(a).
AFFIRMED
tc
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