Gagan Mongia

Patent Trials and Appeals Board

Jul 18, 2019

13071843 - (D) (P.T.A.B. Jul. 18, 2019)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/071,843 03/25/2011 Gagan Mongia 1021238-001124 4810
145992 7590 07/18/2019
ALCS Law Dept. - Product and IP c/o
BUCHANAN, INGERSOLL & ROONEY PC
POST OFFICE BOX 1404
ALEXANDRIA, VA 22313-1404
EXAMINER
PRAKASH, SUBBALAKSHMI
ART UNIT PAPER NUMBER
1793
NOTIFICATION DATE DELIVERY MODE
07/18/2019 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):
ADIPDOC1@BIPC.com
jane.fallgren@bipc.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte GAGAN MONGIA1
________________

Appeal 2019-009054
Application 13/071,843
Technology Center 1700
________________

Before KAREN M. HASTINGS, JAMES C. HOUSEL, and
N. WHITNEY WILSON, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL

Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
Non-Final Rejection of claims 1–4, 7, 8, and 14–17 under 35 U.S.C.
§ 103(a) as being unpatentable over Puglia et al. (US 4,399,154, issued Aug.
16, 1983) (“Puglia”).2
We have jurisdiction under 35 U.S.C. § 6(b).
Claim 11 is illustrative of the claimed subject matter (emphasis added
to highlight a key disputed limitation):

1 According to Appellant, the real party in interest is Phillip Morris USA
Inc. See Appeal Br. 3.
2 The rejection of claim 16 under pre-AIA U.S.C. § 112, 4th paragraph, has
been withdrawn by the Examiner (Ans. 5).
Appeal 2018-009054
Application 13/071,843

2

11. An edible flavor gradient capsule, comprising:
a solid round core consisting of sugars and/or polyols and
a concentrated flavorant, selected from the group consisting of
pomegranate, acai, raspberry, blueberry, strawberry,
boysenberry, cranberry, menthol, peppermint, spearmint,
wintergreen, bourbon, scotch, whiskey, cognac, hydrangea,
lavender, chocolate, licorice, citrus, apple, peach, pear, cherry,
plum, orange, lime, grape, and grapefruit, gamma octalactone,
vanillin, ethyl vanillin, breath freshener flavors, butter, rum,
coconut, almond, pecan, walnut, hazelnut, french vanilla,
macadamia, sugar cane, maple, cassis, caramel, banana, malt,
espresso, kahlua, white chocolate, cinnamon, clove, cilantro,
basil, oregano, garlic, mustard, nutmeg, rosemary, thyme,
tarragon, dill, sage, anise, and fennel, methyl salicylate,
linalool, jasmine, coffee, olive oil, sesame oil, sunflower oil,
bergamot oil, geranium oil, lemon oil, ginger oil, balsamic
vinegar, rice wine vinegar, red wine vinegar, cinnamol, tymool,
tea tree, and combinations thereof;
an inner shell substantially surrounding the core,
consisting or sugars and/or polyols and the same flavorant at a
lower concentration than exists in the core;
an outer shell substantially surrounding the inner shell,
consisting of sugars and/or polyols and the same flavorant at a
lower concentration than exists in the inner shell; and
wherein the capsule has a rounded form, which
sequentially releases the flavorant beginning with the outer
shell and ending with the core by a dissolution process in the
user’s mouth.

Claim 23 is directed to an edible flavor gradient capsule similar to
claim 11 which recites “two or more additional shells”, each shell having the
same flavorant as the core in a concentration lower than the concentration in
a preceeding shell (Claims Appendix 2, 3).

Appeal 2018-009054
Application 13/071,843

3
OPINION
The Examiner has the initial burden of establishing a prima facie case
of obviousness based on an inherent or explicit disclosure of the claimed
subject matter under 35 U.S.C. § 103. In re Oetiker, 977 F.2d 1443, 1445
(Fed. Cir. 1992) (“[T]he examiner bears the initial burden, on review of the
prior art or on any other ground, of presenting a prima facie case of
unpatentability.”). To establish a prima facie case of obviousness, the
Examiner must show that each and every limitation of the claim is described
or suggested by the prior art or would have been obvious based on the
knowledge of those of ordinary skill in the art or the inferences and creative
steps a person of ordinary skill in the art would have employed. In re Fine,
837 F.2d 1071, 1074 (Fed. Cir. 1988); KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 417 (2007).
We need to address only independent claim 11 and 23 which each
requires at least two shells surrounding a solid round core with each shell
having the flavorant at a lower concentration than that of the preceding shell.
The Examiner properly interpreted the claims as open-ended, reciting
a “capsule, comprising” and thus both claims 11 and 23 permit layers of
gum in-between the core and shell layers (Ans. 7). The evidence also
supports the Examiner’s de facto determination that it would have been
prima facie obvious to eliminate gum from the core and shell of Puglia and
provide it in a separate layer as suggested by the prior art discussed in Puglia
(id.).
The Examiner admits that the applied prior art does not explicitly
teach or suggest more than one shell; and relies upon the reasoning that it
would have been obvious to have more shells “if so desired” and that such a
Appeal 2018-009054
Application 13/071,843

4
modification is “within the technical ability” of one of ordinary skill (Final
Act. 4; see also Ans. 8 (stating this is an obvious modification to achieve a
desired release profile of a flavorant, of e.g., “harsh or pungent flavors”)).
Appellant urges that the Examiner has improperly relied upon “technical
ability” to add more shells (Appeal Br. 13), as well as “if so desired”
reasoning (Appeal Br. 15; Reply Br. 3–5, 11–13). Appellant points out that
there is no teaching or suggestion in the applied prior art of more than one
shell, and thus no suggestion of subsequent shells having the same flavorant
at a lesser concentration than that of the preceding shell (Appeal Br. 15).
A preponderance of the evidence supports Appellant’s position that
the Examiner has not pointed to any evidence to adequately establish that the
applied prior art teaches or suggests the required second shell with the same
flavor at a lower concentration as the preceding shell as required by claims
11 and 23. The Examiner has not established that having multiple shells is
known, and thus has also not established that having multiple shells with
decreasing concentrations of the same flavorant are known and/or obvious.3
The Examiner has also not directed us to any evidence of the use of “harsh
or pungent flavors” (Ans. 8).

3 While multilayered candy shells of different flavors may well exist, the
Examiner has not provided any evidence that such multiple shells are
known. The Board relies on the involved parties to focus the issues and
decides on those issues based on facts and arguments presented by the
involved parties. See Ex Parte Frye, 94 USPQ 2d 1072 (BPAI 2010
(precedential)). While the Board is authorized to enter a new ground of
rejection, this authority is discretionary. See 37 C.F.R. § 41.77(b). We
leave it to Examiner to decide whether to find and apply prior art to establish
the obviousness of multiple candy shells as recited herein.
Appeal 2018-009054
Application 13/071,843

5
In light of these circumstances, the Examiner has not shown that each
and every limitation of the claim is either described or suggested by the prior
art or would have been obvious based on the knowledge or inferences and
creativity of the ordinary artisan. See In re Fine, 837 F.2d at 1074; see also
In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) (“A rejection based on
section 103 clearly must rest on a factual basis, and these facts must be
interpreted without hindsight reconstruction of the invention from the prior
art.”). It appears that the proposed modification(s) of Puglia to add more
shells of the same but decreasing flavor concentration would be based on
improper hindsight reconstruction. The fact finder must be aware “of the
distortion caused by hindsight bias and must be cautious of arguments reliant
upon ex post reasoning.” KSR, 550 U.S. at 421 (citing Graham v. John
Deere Co., 383 U.S. 1, 36 (1966) (warning against a “temptation to read into
the prior art the teachings of the invention in issue”)).
The Examiner does not rely upon any other references to cure these
deficiencies. Accordingly, we reverse the § 103 rejection on appeal.

ORDER
It is ordered that the Examiner’s decision is reversed.

REVERSED