Ex Parte Wittorff et al

Patent Trial and Appeal Board

Jun 13, 2016

11793957 (P.T.A.B. Jun. 13, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111793,957 06/21/2007
24126 7590 06/15/2016
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-P0032A 7941
EXAMINER
DEES, NIKKI H
ART UNIT PAPER NUMBER
1791
NOTIFICATION DATE DELIVERY MODE
06/15/2016 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 and JESPER NEERGAARD 1
Appeal2014-009043
Application 11/793,957
Technology Center 1700
Before CHUNG K. PAK, CHRISTOPHER C. KENNEDY, and
MONTE T. SQUIRE, Administrative Patent Judges.
KENNEDY, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1--4, 7-9, 11---62, and 64. We have jurisdiction under 35 U.S.C.
§ 6(b). We AFFIRM.
BACKGROUND
The subject matter on appeal relates to chewing gum. E.g., Spec. 1:6-
8; Claim 1. Claim 1 is reproduced below from page 25 (Claims Appendix)
of the Appeal Brief:
1 According to the Appellants, the Real Party in Interest is Gumlink A/S.
App. Br. 3.
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Application 11/793,957
1. Chewing gum comprising:
at least one biodegradable polymeric resin in an amount of from
about 0.1 to about 95 % by weight of the chewing gum, said
biodegradable polymeric resin having a glass transition
temperature (Tg) above 40°C, and
at least one elastomeric compound, wherein said biodegradable
polymeric resin has a plasticizing effect on said elastomeric
compound.
ANALYSIS
Claims 1--4, 7-9, 11---62, and 64 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Wittorff et al. (WO 02/076228 Al, published
Oct. 3, 2002) (hereafter referred to as "Andersen" consistent with the
nomenclature of the Examiner and the Appellants) in view of Song et al.
(US 6,010,723, issued Jan. 4, 2000). 2 The Appellants argue the claims as a
group. We select claim 1 as representative of the rejected claims, and the
remaining claims will stand or fall with claim 1. See 3 7 C.F .R. §
41.37(c)(l)(iv).
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
rejection. Accordingly, we sustain the rejection for reasons set forth below
and by the Examiner in the Answer. See generally Ans. 2-19.
The Examiner finds that Andersen teaches a chewing gum comprising
each element of claim 1 except that Andersen teaches a biodegradable
2 The provisional obviousness-type double patenting rejection over
Application No. 11/793,958, see Ans. 7-8, is moot in view of the
abandonment of that application.
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polymeric resin having a glass transition temperature up to and including
40°C, rather than "above 40°C" as recited by claim 1. While the Examiner
appears to conclude that claim 1 is obvious over Andersen alone because
Andersen's teaching of glass transition temperatures of 40°C "touch[e]s the
claimed range and thereby render[s] it obvious," id. at 9, the Examiner also
relies on Song in combination with Andersen. In particular, the Examiner
finds that Andersen teaches the substitution of a degradable resin for a
nondegradable resin, and that Andersen further teaches that "a suitable
strategy for creation of a resin substitute is to correctly match the glass
transition (Tg) of the resin to be replaced." Id. at 6, 10 (internal quotation
marks omitted). The Examiner finds that Song teaches that polyvinyl
acetates, which are "typical" chewing gum resins, "have a Tg ranging from
20° to 75°C." Id. at 6. Based on these findings, the Examiner concludes
that "it would have been obvious ... to provide resin substitutes (i.e.,
biodegradable polymeric resins) to replace conventional polyvinyl acetate
having a Tg of above 40°C in combination with elastomers in order to
provide chewing gum base having the appropriate softness." Id.
The Appellants present several arguments in opposition to the
Examiner's rejection, which we address in tum below:
1. The Appellants argue that Andersen teaches glass transition
temperatures of less than or equal to 38°C and would not have motivated a
person of ordinary skill to use a resin having a glass transition temperature
higher than that. E.g., App. Br. 11-15 ("[T]he disclosure of Andersen
makes it clear ... that it is mandatory to use a biodegradable polymer with a
glass transition temperature in the range of 20 to 38°C in order to be
successful."). While asserting that "Andersen as a whole" supports their
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contention, App. Br. 12, the Appellants cite nothing persuasive in Andersen,
and their argument appears to be based principally on Andersen's teachings
of specific embodiments in which the resin has a Tg of20 to 38°C, e.g.,
Andersen at 4:15-20, 5:10-15.
The disclosure of a reference, however, is not limited to preferred
embodiments or specific working examples. E.g., In re Mills, 470 F.2d 649,
651 (CCP A 1972) ("[A] reference is not limited to the disclosure of specific
working examples."); cf also In re Susi, 440 F.2d 442, 445--46 (CCPA
1971) (disclosure of particularly preferred embodiments does not teach away
from broader disclosure). The Appellants' argument is undermined by their
concession that Andersen expressly teaches resins having glass transition
temperatures greater than 38°C, i.e., up to and including 40°C. See App. Br.
11; see also, e.g., Andersen at 11:11-13, claim 17, 19, 29, 31. The
Appellants have not persuasively identified any teaching in Andersen that
disparages or criticizes resins having glass transition temperatures above
38°C (or above 40°C).
In that regard, we note that Andersen discloses embodiments that do
not limit the glass transition temperature of the resin to any particular range.
For example, Andersen's claim 21 includes no limitation with respect to
glass transition temperature. Andersen's claim 29, which depends from
claim 21, narrows claim 21 by reciting a glass transition temperature range
of 15--40°C. Claim 21 is presumptively broader than claim 29 and
encompasses glass transition temperatures of greater than 40°C.
The broad scope of claims such as claim 21 is consistent with
Andersen's teaching that "a suitable strategy for creation of a resin substitute
is to correctly match the glass transition (Tg) of the resin to be replaced."
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Andersen at 5:3-5. Other than preferred embodiments, discussed above, the
Appellants have identified nothing in Andersen that purports to exclude the
use of resins having glass transition temperatures above 38°C or 40°C, and it
was known in the art that certain conventional resins have glass transition
temperatures of greater than 40°C. E.g., Song at 9:43--46 ("typical chewing
gum base ... polyvinyl acetate has a glass transition phase change at 20°C
to 75°C."). Indeed, Andersen specifically contemplates replacement of
polyvinyl acetate (PV A or PV Ac), a resin known to have a glass transition
temperature of up to 75°C. Anderson at 9:4---6; Song at 9:43--46. Thus,
while Andersen does not explicitly describe resins having glass transition
temperatures greater than 40°C, Andersen does not exclude such resins, and
the use of such resins is consistent with Song's teaching that the use of
resins having glass transition temperatures above 40°C was known in the art.
Contrary to the Appellants' arguments, a person of ordinary skill
would not have understood Andersen as teaching the "mandatory" use of
resins having glass transition temperatures of less than 38°C, see App. Br.
12, but would have understood Andersen to teach the use of resins having
glass transition temperatures equivalent to the glass transition temperatures
of conventional resins, which were known to exceed 40°C. Andersen's
teaching of preferred embodiments with resins having glass transition
temperatures of less than 38°C does not negate its teachings of embodiments
with resins having glass transition temperatures that exceed 38°C. Cf In re
Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) ("The prior art's mere
disclosure of more than one alternative does not constitute a teaching away
from any of the[] [disclosed] alternatives .... "). Accordingly, we are not
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persuaded that Andersen does not teach resins having glass transition
temperatures greater than 3 8 °C, or that it discourages the use of such resins.
2. The Appellants dispute the Examiner's findings (1) that Andersen
"speak[ s] to the preferred elastomer plasticizer depending on the specific
application and the elastomer(s) used" and (2) that Andersen "teach[ es]
varying the ratio of monomers in the polymer in order to vary the Tg." App.
Br. 12-14; Ans. 6 (citing Andersen at 10:14--21, 14:14--16). Specifically,
the Appellants argue that those teachings are not generally applicable but are
instead narrowly limited to polymers having glass transition temperatures in
the range of 20 to 38°C or to the specific resins disclosed in the same
paragraphs in which those teachings appear. See App. Br. 12-14.
We disagree. As set forth above, Andersen is not limited to polymers
having glass transition temperatures in the range of 20 to 38°C, but
expressly discloses polymers having glass transition temperatures that
exceed 38°C. Similarly, nothing in Andersen suggests that its teaching that
"preferred elastomer plasticizers will also vary depending on the
specification application, and on the type of elastomer(s) being used," is
limited only to specific compounds disclosed in the same paragraph as that
sentence. See Andersen at 14:1-16.
Even if we were to agree with the Appellants' assertions concerning
those teachings, their arguments fail to establish reversible error in the
Examiner's rejection. The Examiner relies on those teachings as general
support for the notion that the teachings of Andersen are similar to the
disclosures of the Appellants' Specification. Those teachings are not critical
to the Examiner's findings concerning motivation to use a resin having a
glass transition temperature above 40°C. While the Appellants argue that
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"one skilled in the art would not know if the nature of the biodegradable
polymer of Anderson would allow for a glass transition temperature of
above 40°C," App. Br. 16, they provide no evidence or argument that it
would not. In the absence of such evidence or persuasive technical
reasoning, we find that Andersen's teaching of resins having glass transition
temperatures up to 40°C would have provided a person of ordinary skill in
the art with a reasonable expectation that Andersen's resins would allow for
glass transition temperatures of at least, for example, 40.001°C, i.e., "above
40°C." See In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003) ("We have
also held that a prima facie case of obviousness exists when the claimed
range and the prior art range do not overlap but are close enough such that
one skilled in the art would have expected them to have the same
properties." (citing Titanium Metals Corp. v. Banner, 778 F.2d 775, 783
(Fed. Cir. 1985)). Accordingly, the Appellants' arguments do not persuade
us of reversible error.
3. The Appellants dispute the Examiner's finding that Andersen
teaches that resin substitutes are selected to match the Tg of the resin to be
replaced. App. Br. 14--15. The Appellants focus on a preferred embodiment
in which the resin to be replaced has a Tg of 33°C, see Andersen at 5:7-8,
and argue that Andersen's teaching is limited to resins having glass
transition temperatures of 38°C or less. App. Br. 14--15.
We disagree. As explained above, a reference's disclosure of
preferred embodiments does not negate the other teachings of the reference.
See Fulton, 391 F.3d at 1201; see also Belden Inc. v. Berk-Tek LLC, 805
F.3d 1064, 1076 (Fed. Cir. 2015) ("A reference must be considered for
everything that it teaches .... "(internal quotation marks and alterations
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omitted)). The Appellants have not identified a teaching in Andersen that
purports to exclude resins having glass transition temperatures that exceed
38°C. On the contrary, Andersen expressly teaches such embodiments.
Andersen teaches that "a suitable strategy for creation of a resin substitute is
to correctly match the glass transition (Tg) of the resin to be replaced."
Andersen at 5:3-5. We are not persuaded that a person of ordinary skill in
the art would have understood that teaching to be limited to resins having
glass transition temperatures of 38°C or less.
4. The Appellants argue that Song's teaching of glass transition
temperatures of up to 75°C applies to conventional, nondegradable polymers
and "does not imply that a totally different category of polymers (in this case
biodegradable polymers) may also have a high glass transition temperature."
App. Br. 15-16. The Appellants further argue that "the combination [of
Song with Andersen] would be inherently impossible because the
biodegradable polymer of Andersen is materially different." Id. at 16.
We are not persuaded by those arguments. Song teaches that
polyvinyl acetates are "typical" chewing gum resins, and that they have
glass transition temperatures of 20°C to 75°C. Song at 9:43--46. Andersen
teaches that conventional, nondegradable resins should be replaced with
degradable resins, and it states that "[a] preferred [nondegradable] resin to
replace" is polyvinyl acetate. Andersen at 5:3-15. Thus, a person of
ordinary skill in the art would not have expected "the combination [to] be
inherently impossible," see App. Br. 16, and, as explained above,
Andersen's teaching of preferred embodiments having glass transition
temperatures of 38°C or less does not negate its broader teachings. Based on
the cited prior art, it would have been within the ordinary level of skill in the
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art, with the use of only ordinary creativity, to use a degradable resin having
a glass transition temperature of above 40°C, as recited by claim 1.
Andersen itself teaches the use of degradable resins having glass transition
temperatures equal to 40°C. The Appellants' arguments do not persuade us
that it would not have been obvious, for example, to use a degradable resin
having a glass transition temperature of 40.001°C, which would fall within
the scope of claim 1. Cf Titanium Metals, 778 F.2d at 783 ("The
proportions are so close that prima facie one skilled in the art would have
expected them to have the same properties."); see also Ans. 9.
5. The Appellants rely on a series of references to support their
contention "that it has always been thought that biodegradable polymers
used in conjunction with the human body (involving chewing gum or
otherwise) should have a glass transition temperature below human body
temperature." App. Br. 17-21 (emphasis in original). That argument is
undermined by the fact that Andersen teaches embodiments having glass
transition temperatures of 40°C, which is greater than the human body
temperature of 37°C.
Grijpma's3 teaching of degradable chewing gum resins having glass
transition temperatures of "3 7°C. at a maximum," see id. at 18-19, does not
negate Andersen's explicit teaching of degradable resins having glass
transition temperatures above 37°C. In particular, Grijpma teaches replacing
the chewing gum elastomer with a degradable polymer, e.g., Grijpma at
1 :22-25, while Andersen teaches an alternative of replacing the chewing
gum resin, e.g., Andersen at 5:7-8. The Appellants have not adequately
3 US 5,672,367, issued Sept. 30, 1997.
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explained why Grijpma's teaching would have discouraged a person of
ordinary skill in the art from pursuing the teachings of Andersen, including
the use of resins having glass transition temperatures above 3 7°C. Cf
Fulton, 391 F.3d at 1201 ("The prior art's mere disclosure of more than one
alternative does not constitute a teaching away from any of the[] [disclosed]
a ternatlves . . . . . 1 . ")
The Appellants' reliance on Smith and Hissink, see id. at 19-20, is
also unpersuasive. As the Examiner points out, those references are not of
record in this proceeding. See Ans. 15. In any event, the Appellants'
description of those references makes clear that they pertain to surgical
implants-not chewing gum. The Appellants even concede that those
references concern "a distinct field of technology." App. Br. 20. We are not
persuaded that a person of ordinary skill in the art would have looked to the
art of surgical implants when selecting the glass transition temperature of a
chewing gum resin. Even if a person of ordinary skill in the art would have
looked to those references, a person of ordinary skill in the art would have
found the teachings of Andersen and Song to be more relevant to the
chewing gum art, and Andersen and Song teach the use of resins having
glass transition temperatures above body temperature.
6. The Appellants, without any evidence or elaboration, state that it
was "completely unexpected" that biodegradable resins having glass
transition temperatures above human body temperature could be used in
chewing gum. App. Br. 18, 21. However, in the Reply Brief, the Appellants
state that the issue "of unexpected results .... is not relevant in the context
of Appellant's line of argumentation since Appellant is arguing the lack of a
prima facie case of obviousness in the first place." Reply Br. 4--5.
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Accordingly, we do not consider the Appellants to have raised an argument
concerning unexpected results. In any event, we are not persuaded of any
reversible error in the Examiner's rejection, for the Appellants proffer no
factual evidence to support an argument concerning unexpected results, to
the extent they intended to raise one. See In re Mayne, 104 F.3d 1339, 1343
(Fed. Cir. 1997) (explaining that unexpected results is a factual question).
The Appellants' unsupported statements cannot take the place of objective
evidence. See, e.g., In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984); In
re Lindner, 457 F .2d 506, 508 (CCP A 1972).
7. We have fully considered both Neergaard Declarations4 in
combination with the arguments discussed above. While we accord them
some weight, we do not find them to be more persuasive than the plain
teachings of the references. See Yorkey v. Diab, 601 F.3d 1279, 1284 (Fed.
Cir. 2010) (factfinder has discretion to give more weight to one item of
evidence over another unless no reasonable trier of fact could have done so).
In particular, we note that some of Dr. N eergaard' s statements appear to
contradict the plain teachings of the prior art. E.g., Deel. dated Dec. 7, 2012,
i-f 7 (stating that a person of ordinary skill in the art would understand
Andersen to teach that "it is mandatory to use a biodegradable polymer with
a glass transition temperature in the range of 20 to 38°C in order to have
success."). On this record, we accord more weight to the prior art, as
discussed above, than to the Neergaard Declarations. See Velander v.
Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003); In re Am. Acad. of Sci. Tech
4 See Declarations of Jesper Neergaard dated Dec. 7, 2012 and June 7, 2013.
Dr. Neergaard is a named inventor on the present application.
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Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004). The Neergaard Declarations do
not persuade us of reversible error in the Examiner's rejection.
CONCLUSION
We AFFIRM the Examiner's rejection of claims 1--4, 7-9, 11---62, and
64.
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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