Ex Parte Boit et al

Patent Trial and Appeal Board

Sep 18, 2018

13393619 (P.T.A.B. Sep. 18, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/393,619 03/01/2012
25944 7590 09/20/2018
OLIFF PLC
P.O. BOX 320850
ALEXANDRIA, VA 22320-4850
FIRST NAMED INVENTOR
Baptiste Boit
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.
200588-00110 4629
EXAMINER
MUKHOPADHYAY,BHASKAR
ART UNIT PAPER NUMBER
1793
NOTIFICATION DATE DELIVERY MODE
09/20/2018 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):
OfficeAction25944@oliff.com
jarmstrong@oliff.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BAPTISTE BOIT, PHILIPPE LEFEVRE, JOSE LIS, and
DOMINIQUE ORTIZ DE ZARATE
Appeal2018---000735
Application 13/393,619
Technology Center 1700
Before: JEFFREY B. ROBERTSON, CHRISTOPHER C. KENNEDY, and
MONTE T. SQUIRE, Administrative Patent Judges.
ROBERTSON, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-3 and 6-15. (Appeal Br. 2.) We have
jurisdiction pursuant to 35 U.S.C. § 6(b ).
We AFFIRM.
1 Appellant/ Applicant is ROQUETTE FRERES, which is identified as the
real party in interest. (Appeal Brief filed April 24, 2017 (hereinafter
"Appeal Br.") 2.)
Appeal2018---000735
Application 13/393,619
THE INVENTION
Appellant states that the invention relates to a method for producing a
chewing gum with partial or complete replacement of talc. (Specification,
filed March 1, 2012, (hereinafter "Spec.") 1, 11. 4---6.) As further explained
in the Specification, in methods of producing chewing gum, a dusting step is
conventionally carried out, in order to prevent the strip of gum, which is
very sticky after extrusion, from being destroyed or losing its integrity
during a rolling step. (Spec. 2, 11. 4--10.) Talc is commonly employed as a
powder for dusting, but is known to suffer from contamination by toxic
chemicals, such as asbestos. (Spec. 2, 11. 18-28.) The method as recited in
the claims employs a pulverulent composition formed of agglomerates of
crystals, comprising at least one polyol, such as mannitol. (Spec. 5, 11. 7-15,
12, 11. 8-14.)
Claim 1, the only independent claim on appeal, as reproduced below
from the Claims Appendix, recites:
1. A method for producing chewing gums comprising:
mixing chewing gum ingredients;
extruding the mixture of said chewing gum ingredients to
form a strip of chewing gum;
dusting the strip of chewing gum with a dusting powder
to form a dusted strip of chewing gum, said dusting powder
comprising a pulverulent composition comprising at least one
polyol and being formed of agglomerates of crystals, 50% to
0.1 % of said agglomerates having a particle diameter of less
than 75 µm, said agglomerates being formed by one of (i) wet
granulation of predominantly individual crystals of said at least
one polyol using a liquid or a suspension as a binding agent or
(ii) dry granulation of predominantly individual crystals of said
at least one polyol using solid as a binding agent; and
2
Appeal2018---000735
Application 13/393,619
rolling said dusted strip of chewing gum to remove
excess dusting powder; and
forming/cutting said dusted strip of chewing gum after
rolling.
(Appeal Br. 15, Claim Appendix.)
REJECTIONS
The Examiner rejected the claims as follows:
1. Claims 1-3 and 6-9, and 12-15 under pre-AIA 35 U.S.C. § I03(a)
as obvious over Frorer et al. (US 2,305,960, issued on December
22, 1942, hereinafter "Frorer"), Labergerie et al. (US
2003/0026832 Al, published on February 6, 2003, hereinafter
"Labergerie"); and Patel, M. et al. (WO 97 /26798, published on
July 31, 1997, hereinafter "Patel"); and
2. Claims 10 and 11 under pre-AIA 35 U.S.C. § I03(a) as obvious
over Frorer, Labergerie, Patel, further in view of Kruse (US
4,029,878, issued on June 14, 1977, hereinafter "Kruse").
(See Final Rejection, mailed November 7, 2016 (hereinafter "Final Act.") 3-
6; Examiner's Answer, mailed September 21, 2017 (hereinafter "Ans.") 2-
5.)
Rejection 1
Appellant presents arguments for claims 1 and 14 on appeal. (See
Appeal Br. 4, 11.) Accordingly, we select claims 1 and 14 as representative,
and decide the appeal as to this rejection on claims 1 and 14 alone.
(37 C.F.R. § 4I.37(c)(l)(iv).)
3
Appeal2018---000735
Application 13/393,619
Claim 1
ISSUE
The Examiner found that Frorer discloses chewing gum in sheet form
is dusted with pulverulent composition containing mannitol crystals, where
the dusted sheets are cut and wrapped. (Final Act. 3; Ans. 2.) The Examiner
found that Frorer is silent as to the steps of mixing chewing gum ingredients,
extruding the mixture to make a strip of chewing gum, and wet granulation
of mannitol crystal using binding agent to make dusting powder having
characteristic particle diameter less than 7 5 micron as in claim 1. (Final Act.
3; Ans. 2-3.) The Examiner found that Patel teaches the mixing, extrusion,
sheeting, and wrapping steps, and that Patel discloses that the mannitol
powder can be applied at any time during processing, which reads on the
rolling step recited in claim 1. (Final Act. 3; Ans. 3.) The Examiner found
that Labergerie discloses a pulverulent composition made from crystalline
mannitol using wet granulation with a binder having superior characteristics
of excellent flow factor. (Final Act. 3--4; Ans. 3.) The Examiner concluded
that it would have been obvious to have included the teachings of Patel and
Larbergie in Frorer in order to use the extrusion method of making chewing
gum strips and to provide a pulverulent composition having superior
functional characteristics to dust the chewing gum strip. (Final Act. 4; Ans.
3--4.)
Appellant contends that the rejection fails to address all the recited
features of claim 1, and in particular, the rolling of a dusted gum strip to
remove excess dusting powder and forming/cutting the dusted chewing gum
strips. (Appeal Br. 5.) Appellant argues that the rejection's reliance on
Labergerie is based on hindsight because Labergerie does not disclose
4
Appeal2018---000735
Application 13/393,619
pulverulent mannitol for surface application, but rather discloses
characteristics of the pulverulent mannitol, such as fine particle size, high
density, excellent flow capacity, and rapid rate of dissolution in water, for
excipients used in filling hard capsules. (Id. at 6.) Appellant contends that
Frorer does not require a free-flowing property as a desired property, and
includes applications, such as dipping the edible product in the pulverulent
mannitol, where a free-flowing characteristic would not be helpful. (Id.)
Appellant argues that Patel teaches away from using the pulverulent
mannitol of Labergerie because of the particle sizes, density of the particles,
and shape of the particles disclosed in Patel. (Id. at 7-10.) As evidence of
the difference between the particles used in Patel and the pulverulent
material used in Labergerie, Appellant points to two declarations filed by
one of the present inventors, Philippe Lefevre. (Id. at 10-11; Declarations of
Philippe Lefevre (under 37 C.F.R. § 1.132, executed on December 19, 2013,
(hereinafter "First Lefevre Dec.") and June 1, 2015 (hereinafter "Second
Lefevre Dec.")).)
The dispositive issue is:
Did Appellant demonstrate that the Examiner reversibly erred in
combining Frorer, Labergerie, and Patel in concluding that the method of
producing chewing gum recited in claim 1?
DISCUSSION
We are not persuaded by Appellant's argument that the rejection does
not account for all features of the method recited in claim 1. Frorer discloses
that pulverulent mannitol crystals are used to dust the exterior surface of
chewing gum. (Frorer, col. 1, 1. 37 - col. 2, 1. 7.) Frorer also discloses that
5
Appeal2018---000735
Application 13/393,619
the dusted sheets are cut and wrapped. (Frorer, col. 2, 11. 1-7.) As pointed
out by the Examiner, Patel discloses that mannitol dusting powder may be
applied "during the processing of the chewing gum," where after the
ingredients of the chewing gum are mixed, the chewing gum may be
"extruded, sheeted, or cast." (Ans. 6-7; Patel 13, 11. 5-9.) Patel then
discloses that the mannitol "would preferably be applied after one of these
steps" and "functions as a rolling compound improving processability and
wrapping." (Patel 13, 11.9-13 (emphasis added).) Thus, Patel provides
evidence that dusting powder may be applied to the surface of the chewing
gum after the gum is extruded and prior to rolling the dusted strip. In this
regard, Appellant has not provided sufficient persuasive evidence that the
rolling step recited in claim 1 is anything more than a conventional rolling
step for producing chewing gum. (See Spec. 1, 1. 28 -2, 1. 9; 27, 11. 4--5.) As
such, we agree with the Examiner that performing the rolling step after
dusting the extruded sheet of chewing gum would remove the excess dusting
powder as recited in claim 1.
We are also not persuaded that the combination of prior art relying on
Labergerie is based on hindsight. As discussed above, the Examiner found
that one of ordinary skill in the art would have used the pulverulent
composition of mannitol due to its superior functional characteristics. (Ans.
3.) Regarding Appellant's argument that Labergerie does not relate to a
composition for surface application, we do not agree that Labergerie is so
limited. Labergerie discloses that the pulverulent mannitol disclosed therein
has a fine particle size, high density, and excellent flow capacity, and may
be generally used in "foodstuffs." (Labergerie, ,r,r 1-2.) As Appellant
points out, Labergerie does focus on applications related to filling hard
6
Appeal2018---000735
Application 13/393,619
capsules for use in pharmaceuticals. (Id. at ,r,r 16, 29, and 31.) However, we
are of the view that by disclosing use in foodstuffs, Labergerie includes
applications such as surface application in chewing gum.
Although Appellant further argues that Frorer does not require a free-
flowing property as a result of disclosing alternative methods of application
by dipping product into pulverulent mannitol (Appeal Br. 6-7; Frorer, col. 2,
11. 19-26), this argument is not supported by persuasive evidence and does
not address why a free-flowing property would not be desirable in other
methods of application of the pulverulent mannitol as a dusting compound in
chewing gum. Moreover, such an argument is inconsistent with Appellant's
later argument that Patel emphasizes the free flowing property of dusting
compounds. (Appeal Br. 9 (citing Patel 6, 11. 22-24).) Accordingly, we are
not persuaded that the Examiner's combination of prior art including
Labergerie is based on hindsight.
Regarding Appellant's arguments with respect to Patel teaching away
from the use the pulverulent material of Labergerie, we agree with the
Examiner ( Ans. 9-11) that Patel is relied on for disclosing certain aspects of
the process of producing chewing gum and not for the particular dusting
compound recited in the claims. We also agree with the Examiner that
certain characteristics of the dusting compound of grittiness, particle density
and shape argued by Appellant, are not recited in the claims.
However, we are mindful that rejections based on obviousness
consider the prior art as a whole. We observe that obviousness does not
require that the combination produce the most desirable result. See In re
Fulton, 391 F.3d 1195, 1200 (Fed. Cir. 2004) ("'[T]he question is whether
there is something in the prior art as a whole to suggest the desirability, and
7
Appeal2018---000735
Application 13/393,619
thus the obviousness, of making the combination,' not whether there is
something in the prior art as a whole to suggest that the combination is the
most desirable combination available."); Merck & Co. v. Biocraft Labs. Inc.,
874 F.2d 804,807 (Fed. Cir. 1989) (quoting In re Lamberti, 545 F.2d 747,
750 (CCPA 1976)) ("[I]n a section 103 inquiry, 'the fact that a specific
[embodiment] is taught to be preferred is not controlling, since all
disclosures of the prior art, including unpreferred embodiments, must be
considered.'").
As a result, we provide further discussion on Appellant's teaching
away arguments.
We are not persuaded by Appellant's argument that Patel teaches
away from employing the pulverulent material of Labergerie because Patel
discloses particle sizes less than 7 4 microns to avoid grittiness for dusting
gum. (Appeal Br. 8 (citing Patel 7, 11. 10-14).) As acknowledged by
Appellant, Labergerie discloses particles sizes between 60 and 200 microns
(Appeal Br. 8; Labergerie ,r,r1, 23), which overlaps the range disclosed in
Patel. Appellant has not explained why one of ordinary skill in the art,
informed by the disclosure in Patel, would not have selected particle sizes
between 60 and less than 7 4 microns, which is within the broad particle size
range disclosed in Labergerie, in applying the pulverulent material of
Labergerie to chewing gum.
We are also not persuaded that because Patel discloses a lower bulk
density mannitol is advantageous compared to higher density crystalline
mannitol in terms of cost, Patel teaches away from applying the pulverulent
crystalline mannitol disclosed in Labergerie. Any additional cost of the
crystalline mannitol disclosed in Labergerie does not negate a conclusion
8
Appeal2018---000735
Application 13/393,619
that use of such a material would have been obvious. In this regard,
Appellant has not directed our attention to persuasive evidence that there is a
particular technological incompatibility of using the pulverulent mannitol
composition in Labergerie as the mannitol dusting compound in Frorer.
Indeed, Labergerie discloses its crystalline pulverulent mannitol as an
advance over prior crystalline pulverulent mannitol. (Labergerie ,r,r 1, 17-
19.) "That a given combination would not be made by businessmen for
economic reasons does not mean that persons skilled in the art would not
make the combination because of some technological incompatibility." In re
Farrenkopf, 713 F.2d 714, 718 (Fed. Cir. 1983) (Reference does not teach
away from addition of inhibitor to an Angiotensin I standard solution or
composition, where reference indicated that adding inhibitor "can be
costly.").
We are also not persuaded by Appellant's arguments that Patel's
disclosure of spherical particles of mannitol as rolling compounds would
have discouraged the use of the pulverulent mannitol disclosed in Labergerie
as the mannitol dusting compound in Frorer. (Appeal Br. 9-11.) We
observe that the First and Second Lefevre Declarations, while providing
general descriptions of the difference in procedures and purporting to show
micro graphs of the claimed agglomerates ( also representative of Labergerie,
see Appeal Br. 10) and the particles provided in Patel, do not provide any
specific conditions or procedures used to produce the particles in the
micrographs. Nevertheless, assuming that the particles are different, this
does not provide persuasive evidence that one of ordinary skill in the art
would not have applied the pulverulent material of Labergerie, which is
expressly described as being "free flowing" and an advance over prior
9
Appeal2018---000735
Application 13/393,619
crystalline pulverulent mannitol (Labergerie ,r,r 1, 17-19) as the dusting
compound in Frorer, because as emphasized by Appellant, Patel discloses
the importance of a free-flowing property. (Appeal Br. 9 ( citing Patel, 6, 11.
22-24).)
Accordingly, we affirm the Examiner's rejection of claim 1, as well as
the Examiner's rejection of claims 2, 3, 6-9, 12, 13, and 15, which depend
from claim 1.
Claim 14
Regarding claim 14, which recites a chewing gum obtained by the
method of claim 1, Appellant contends that rejection of claim 14 is deficient
for the same reasons as for claim 1. (Appeal Br. 12.) Appellant argues that
Patel teaches away from combining Frorer and Labergerie because one of
ordinary skill in the art would have expected the gum to have a gritty surface
and one of ordinary skill in the art would not have expected the gum to have
a reduced cost. (Appeal Br. 12-13.) We addressed Appellant's arguments
above with respect to claim 1, and are not persuaded for the same reasons as
discussed above.
Accordingly, we affirm the Examiner's rejection of claim 14 as well.
Rejection 2
Appellant does not provide separate arguments with respect to claims
10 and 11, except to argue that the additional citation of Kruse does not
remedy the alleged deficiencies of the combination of Labergerie and Patel.
(Appeal Br. 13-14.) We are not persuaded by Appellant's argument for the
reasons expressed above with respect to Rejection 1.
10
Appeal2018---000735
Application 13/393,619
Accordingly, we affirm the Examiner's rejection of claims 10 and 11.
DECISION
We affirm the Examiner's decision rejecting claims 1-3 and 6-15.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 41.50(±).
AFFIRMED
11