Ex Parte Wittorff

Patent Trial and Appeal Board

Apr 25, 2016

10585019 (P.T.A.B. Apr. 25, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
10/585,019 04/17/2007
24126 7590 04/27/2016
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.
05198-P0017A 4929
EXAMINER
GWARTNEY, ELIZABETH A
ART UNIT PAPER NUMBER
1791
NOTIFICATION DATE DELIVERY MODE
04/27/2016 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 1
Appeal2014-005771
Application 10/585,019
Technology Center 1700
Before CHUNG K. PAK, MICHAEL P. COLAIANNI, and
JULIA HEANEY, Administrative Patent Judges.
COLAIANNI, Administrative Patent Judge.
DECISION ON APPEAL
1 The Appellant identifies the real party in interest as "Gmnlink A/S"
(Appeal Brief filed November 25, 2013 ("App. Br.") 3).
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Application 10/585,019
Appellant appeals under 35 U.S.C. § 134 the final rejection of claims
1--4, 9--26, and 28-32. We have jurisdiction over the appeal pursuant to
35 U.S.C. § 6(b).
We AFFIRM.
Appellant's invention relates to chewing gum granules, particularly,
gum base granules comprising a biodegradable polymer having a water
content of less than 1.0% by weight of the gum base. (Spec. 2, 11. 10-11,
App. Br. 28, claim 1 (emphasis added).
Claim 1 is the sole independent claim and is representative.
1. Gum base granules for a compressed chewing gum, said gum
base granules comprising at least one biodegradable gum base
polymer in an amount of about 1 % to about 100% by weight of
the gum base, wherein said gum base granules have a water
content of less than 1. 0% by weight of the gum base.
Appellant appeals the following rejections under 35 U.S.C. § 103(a):
I. Claims 1, 2, 4, 9, 10, 13, 19, 23, 24, 26, and 28-32 2 as unpatentable
over Leadbeater3 in view of Grijpma4 (Final Action dated April 9,
2013 ("Final Act.") 2---6; Examiner's Answer dated February 14, 2014
("Ans.") 3-7).
2 The statement of the rejection identifies claims "18-32" (Final Rej. 2; Ans.
3). From the body of the rejection, however, it is evident that the claims
under rejection are 28-32. We find the misidentification of claims in the
statement of the rejection to be harmless error.
3 U.S. Patent Application Publication No. 2005/0220934 Al to Leadbeater et
al. issued October 6, 2005.
4 U.S. Patent No. 5,672,367 to Grijpma et al. issued September 30, 1997.
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II. Claims 1-3, 8-18, 20-23, 25, 26, and 28-32 as unpatentable over
Gmunder5 in view of Leadbeater and Bunczek6 (Final Rej. 6-11; Ans.
7-12).
III. Claim 19 as unpatentable Over Gmunder in View of Leadbeater
and Bunczek and further in view of Wittorff7 (Final Rej. 12; Ans. 12).
Appellant's arguments focus on claim 1 only. Any claims not argued
separately with regard to Rejections (I-III) will stand or fall with our
analysis regarding claim 1.
FINDINGS OF FACT & ANALYSIS
REJECTION (I): Claims 1, 2, 4, 9, 10, 13, 19, 23, 24, 26, and 28-32.
The Examiner finds that Leadbeater discloses gum base granules for
compressed gum compnsmg elastomeric polymers but does not teach gum
base granules containing a biodegradable polymer or the water content of the
granules as recited in claim 1 (Final Act. 2-3). The Examiner finds that
Grijpma teaches a chewing gum base including biodegradable polymers and
that these polymers contain unstable bonds that are preferably broken down
under the influence of light or hydrolytically into components that are water-
soluble and non-toxic (Final Act. 3). The Examiner concludes that it would
have been obvious to one skilled in the art to replace the non-degradable
elastomers in Leadbeater's with biodegradable polymers to obtain a chewing
5 U.S. Patent No. 6,200,608 Bl to Gmunder et al. issued March 13, 2001.
6 U.S. Patent No. 6,017,566 to Bunczek et al. issued January 25, 2000.
7 WO 02/076230 Al to Wittorff et al. published October 3, 2002.
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gum whose organic component is biodegradable after use (Final Act. 3--4).
The Examiner further concludes that when employing biodegradable
polymers, a person skilled in the art would have formulated the chewing
gum base with a minimal amount of water to maintain the stability of the
polymers and that determining the optimal amount of water requires nothing
more than routine experimentation (Final Act. 4 ).
Appellant argues that the water content of the gum base granules is
"nowhere disclosed, taught or suggested" in Leadbeater or Grijpma (App.
Br. 10). Appellant contends that it was the first to recognize the importance
of water content prior to chewing, that there is "no hint in the prior art that
the already relatively low moisture content of typical chewing gum pre-chew
... may be an issue" and, therefore, that determining water content involves
more than routine experimentation because water is incidentally used in
chewing gum manufacture (App. Br. 11-15, 20-21). Appellant further
contends that Grijpma would not lead one skilled in the art to lower the
already low water content in manufactured chewing gum and that the
Examiner's conclusions are based on hindsight (App. Br. 17-20; Reply Brief
entered April 11, 2014 ("Reply Br.") 2-6). Appellant also relies upon the
Neergaard Declaration8 (App. Br. 15-16).
We are not persuaded by Appellant's contentions that neither
Leadbeater nor Grijpma explicitly disclose the amount of water in their
respective gum granules and that the water content in pre-chewing
conditions is not a result effective variable in chewing gum manufacture.
The Examiner correctly determined that the claimed subject matter would
8 Declaration under 37 C.F.R. 1.132 of Jesper Neergaard, filed Feb. 7, 2013
(hereinafter "N eergaard Declaration").
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have been obvious to one of ordinary skill in the art within the meaning of
§ 103 in view of the teachings of Leadbeater and Grijpma. As the Examiner
reasonably finds, in view of Grijpma's teachings regarding the hydrolytic
degradation of biodegradable polymers, one of ordinary skill in the art
would have been aware that biodegradable polymers degrade in the presence
of water (Ans. 13-14). Appellant does not contest this finding by the
Examiner regarding Grijpma (Reply Br. 2-6). Since the Examiner's finding
is uncontested and it has not been shown to be clearly erroneous, we accept
it as fact. In re Kunzmann 326 F2d 424, 425 n.3 (CCPA 1964).
Accordingly, the ordinarily skilled artisan would have appreciated that
water content is a result effective variable in a gum containing a
biodegradable polymer since the hydrolytic bonds of the polymer will break
down in the presence of water as found by the Examiner (Ans. 13-14). The
prior art's recognition that biodegradable polymers are hydrolytically
unstable would have strongly suggested to the ordinarily skilled artisan that
moisture (i.e., water) should be minimized in a biodegradable gum
composition prior to its use (Ans. 14--15).
With respect to Appellant's argument contending that Appellant is the
first to discover the significance of relatively small amounts of water itself
prior to chewing to avoid byproducts of pre-degradation of biodegradable
polymers (e.g., App. Br. 18), there is no evidence submitted by Appellant as
to what levels of water content actually exist in prior art gums (generally
App. Br.; Reply Br.). The fact that Appellant may have recognized another
property that would flow naturally from following the applied prior art's
teaching or suggestion for the amounts of the components of the
biodegradable gum cannot be the basis for patentability when the
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differences, if any, would otherwise have been obvious. In re Kao, 639 F.3d
1057, 1070 (Fed. Cir. 2011) ("Maloney's express teachings render the
claimed controlled release oxymorphone formulation obvious, and the
claimed 'food effect' adds nothing of patentable consequence."). See also Ex
parte Obiaya, 227 USPQ 58, 60 (BPAI 1985).
Appellant has also not submitted any evidence showing that this water
content concentration provides an unexpected result, nor does Appellant
provide any persuasive evidence that chewing gum made following the
teachings of the applied prior art would not have naturally resulted in such a
range for the water content (see generally App. Br.; Reply Br.). See In re
Boesch, 617 F.2d 272, 276 (CCPA 1980). See also, In re Woodruff, 919
F.2d 1575, 1578 (Fed. Cir. 1990), and In re Aller, 220 F.2d 454, 456 (CCPA
1955).
As to the N eergaard Declaration, contrary to Appellant's argument,
the Examiner did not disregard Appellant's submitted evidence (see, e.g.,
App. Br. 15). Rather, the Examiner found the evidence insufficient to
outweigh the evidence of obviousness (Final Rej. 12-17; Ans. 16). The
Neergaard Declaration does not contain any reasonably specific factual
support for prior art water levels in biodegradable gums to substantiate the
opinion evidence contained therein regarding whether it would have been
obvious to minimize the amount of water in biodegradable gums based upon
the teachings of the Examiner's applied prior art. Declarant's statements
that Grijpma's teachings regarding the bonds of the biodegradable polymer
being hydrolytically unstable would have suggested controlling the water
content after use of the gum, rather than prior to use, have been considered.
Declarant's analysis, however, is based upon Grijpma's failure to teach the
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criticality of the water content of the gum prior to use (Declaration i1i1 16-
18 ). Such analysis does not rebut the Examiner's finding that Grijpma's
teachings related to the hydrolytically unstable biodegradable polymer
would have suggested minimizing the water content of the pre-chewed gum
to extend stability of the gum prior to use and avoid premature degradation
of the gum (Ans. 14). Degradation of the gum in the environment after use
would occur naturally when the gum is exposed to water. We give more
weight to the cited prior art teachings and disclosures than the
unsubstantiated opinions of an interested party9 regarding the obviousness of
the claimed invention. Thus, we discern no reversible error in the
Examiner's assessment of the weight to be given to the Neergaard
Declaration. 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."). See also, Velander v. Garner, 348 F .3d
1359, 1371 (Fed. Cir. 2003) ("In giving more weight to prior publications
than to subsequent conclusory statements by experts, the Board acted well
within [its] discretion."); Yorkey v. Diab, 601F.3d1279, 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").
Based on this record, we find that the preponderance of the evidence
favors the Examiner's obviousness conclusion and affirm this rejection.
9 Dr. Neergaard's Declaration states that he is employed by "Chew Tech
I/S, which is a R&D company owned by Gumlink A/S, assignee of the
above captioned patent application." (Declaration i-f 2).
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REJECTION (II): Claims 1-3, 8--8, 20-23, 25, 26, and 28-32.
The Examiner finds that Gmunder discloses a particulated gum base
comprising elastomers and fillers that is free of liquid ingredients but does
not teach the gum base containing a biodegradable polymer, its water
content or the gum base being used in compressive tablets (Final Act. 7).
The Examiner finds Leadbeater teaches compressed chewing gum and
Bunczek suggests biodegradable polymers in gum base (Final Act. 7-8).
The Examiner concludes that it would have been obvious to make a
compressed chewing gum using Gmunder's particulated base gum and that it
can further include a biodegradable polymer in accordance with Leadbeater
and Bunczek's teachings (Final Act. 7-8). The Examiner further finds that
biodegradable polymers are hydrolytically unstable and concludes that upon
employing biodegradable polymers, a person skilled in the art would have
formulated the chewing gum base with a minimal amount of water to
maintain the stability of the biodegradable polymers and that determining
the optimal amount of water requires nothing more than routine
experimentation (Final Act. 8).
Similar to the response to Rejection (I), Appellant contends that the
water content of the gum base granules is not taught or suggested in the cited
prior art (App. Br. 22-23), that the prior art recognizes water content as a
result effective variable "during and after chewing" but not pre-chewing
(App. Br. 23), and that water is incidentally found in various ingredients
during chewing gum manufacture and would not be optimized by
experimentation (App. Br. 24--25).
We agree with the Examiner that the claimed subject matter would
have been prima facie obvious to one skilled in the art for the same reasons
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discussed previously regarding Rejection (I). Particularly, Appellant does
not contest the Examiner's finding that Gmunder's gum base is free of liquid
or the finding that biodegradable polymers are hydrolytically unstable (Ans.
15-17; Reply Br. generally). Because Appellant did not specifically
respond to these findings other than to reiterate the same arguments made
traversing Rejection (I) (App. Br. 22-24), Appellant has not shown error
with the Examiner's specific findings and they are accepted as fact. In re
Kunzmann 326 F2d 424, 425 n.3 (CCPA 1964).
Appellant argues that the Examiner's findings in the Non-Final Office
Action dated August 21, 2012 that Bunczek and Grijpma fail to teach that
the elastomers normally degrade prior to use is contradicted by the finding in
the Final Office Action dated April 9, 2013 that Grijpma's and Bunczek's
teachings would have suggested formulating a chewing gum base
comprising a minimal amount of water to maintain the stability of the
polymers prior to use (App. Br. 24-25). Appellant argues again that the
Neergaard Declaration addresses these shortcomings of the Examiner's case
in paragraphs 19 and 37, which are not subsequently addressed by the
Examiner. Id.
These arguments are unpersuasive for the same reasons discussed
above regarding the rejection over Leadbeater and Grijpma. The Examiner's
position on page 14 of the Non-Final Office Action dated August 21, 2012
referred to by Appellant was directed to Appellant's argument that there is
no reasonable expectation of successfully using Bunczek's biodegradable
polymers for Gmunder's gum base polymer because one would expect the
biodegradable polymer to degrade (Non-Final Act. dated Aug. 21, 2012, 13-
14). Accordingly, the Examiner finds that there is a reasonable expectation
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of success in using the biodegradable polymers of Bunczek in lieu of
Gmunder's gum base polymer as the reference does not indicate that the
biodegradable polymers degrade prior to use. The Examiner finds in the
Non-Final Action dated August 21, 2012 at pages 4 to 5 and the Final Office
Action dated April 9, 2013 page 8 that the water content of the gum
incorporating Bunczek' s biodegradable polymer would have been
minimized to maintain stability of the gum. In other words, the Examiner's
positions are not inconsistent as alleged by Appellant. Rather, the Examiner
finds that there is a reasonable expectation of that Bunczek's biodegradable
polymer would work in Gmunder's gum composition when the water
content is minimized to prevent degradation of the biodegradable polymer.
The Examiner has considered the N eergaard Declaration including
paragraphs 19 and 3 7 and found it insufficient to overcome the prima facie
case of obviousness as noted above with regard to rejection (I).
Consequently, based on this record, we affirm this rejection for the
reasons discussed above.
REJECTION (III): Claim 19
Claim 19 depends from claim 1. Appellant contends that because this
claim requires the water content of the granules be present in the range
recited in claim 1 and Wittorff was cited for its teachings concerning
pharmaceutically or biologically active substances, Wittorff does not remedy
the deficiencies of Gmunder, Leadbeater and Bunczek. However, as
discussed previously, Appellant's arguments traversing the Examiner's
findings as to the water content limitation of claim 1 are unavailing.
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Thus, based on this record, we sustain this rejection for the same
reasons discussed supra.
CONCLUSION
Accordingly, on this record and for the above reasons, we sustain
Rejections (I-III) of claims 1--4, 9-26, and 28-32 over the cited prior art.
DECISION
The Examiner's §103 rejections are 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).
AFFIRMED
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