Ex Parte Lorenzi et al

Patent Trial and Appeal BoardNov 29, 2012

11354494 (P.T.A.B. Nov. 29, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 11/354,494 02/15/2006 Marc Paul Lorenzi CM2948 1122 27752 7590 11/30/2012 THE PROCTER & GAMBLE COMPANY Global Legal Department - IP Sycamore Building - 4th Floor 299 East Sixth Street CINCINNATI, OH 45202 EXAMINER KING, FELICIA C ART UNIT PAPER NUMBER 1793 MAIL DATE DELIVERY MODE 11/30/2012 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte MARC PAUL LORENZI, CHRISTINE MARIE CAHEN, and JENNY ELIZABETH FEE __________ Appeal 2011-010283 Application 11/354,494 Technology Center 1700 ____________ Before JEFFREY T. SMITH, MICHAEL P. COLAIANNI, and DONNA M. PRAISS, Administrative Patent Judges. PRAISS, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-010283 Application 11/354,494 2 Appellants appeal under 35 U.S.C. § 134 the final rejection of claims 1-3, 5-7, 9 and 11-16. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). We AFFIRM. Appellants’ invention is said to be directed to “confectionery compositions that effectively mask the flavour associated with a xanthine derivative” (Spec. 2). Claim 1 is illustrative: 1. A confectionery composition comprising: a. from about 0.01% to about 5%, by weight of the confectionery composition, of a xanthine derivative; b. a cooling composition comprising from about 0.001% to about 10%, by weight of the confectionery composition, of a physiological cooling agent which has an average threshold for a reported cooling effect of 100 µg or less amongst a test panel selected to have an average threshold for a reported cooling effect of 1-menthol of 0.25 µg; and c. a warming composition comprising from about 0.001% to about 10%, by weight of the confectionery composition, of a physiological warming agent which has an average threshold for a reported warming effect of 100 µg or less amongst a test panel selected to have an average threshold for a reported warming effect of benzyl alcohol of 0.25 µg, wherein said cooling composition and said warming composition are located in distinct and discrete regions within said confectionery composition and said cooling and warming compositions being adapted to provide sequential release profiles; wherein the composition is in the form of a centre-fill throat drop Appeal 2011-010283 Application 11/354,494 3 comprising a filling and a shell; wherein said shell comprises the xanthine derivative. Appellants appeal the following rejection:1 Claims 1-3, 5-7, 9 and 11-16 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Bealin-Kelly et al. (US Patent No. 6,306,429 issued Oct. 23, 2001) in view of Johnson et al. (US Patent No. 6,627,234 issued Sept. 30, 2003). Appellants do not separately argue the claims rejected, accordingly, the rejection of claims 1-3, 5-7, 9 and 11-16 will stand or fall with our analysis of the rejection of claim 1. ISSUE Did the Examiner reversibly err in determining that Bealin-Kelly’s disclosure of a confectionery composition containing medicaments combined with Johnson’s disclosure of caffeine as a medicament in the coating of a composition would have rendered obvious the claimed confectionary composition containing caffeine? We decide this issue in the negative. 1 The Examiner provisionally rejects claim 1 on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claim 18 of copending Application No. 11/354,457 in view of Johnson (Ans. 6). Appellants have not appealed this rejection and thus that rejection is not the subject of this appeal (App. Br. 3). Appeal 2011-010283 Application 11/354,494 4 FINDINGS OF FACT AND ANALYSES Appellants argue that Bealin-Kelly only discloses confectionaries having warming and cooling agents to enhance the perceived warming and cooling effects (App. Br. 4) and that Johnson discloses a coated product including caffeine as a medicament where the bitterness of the caffeine is controlled by either selecting a concentration that is not overwhelming or incorporating bitterness inhibitors (id. at 5). Appellants further argue that there is no apparent reason to combine these elements of the prior art and no reasonable expectation of success that the warming and cooling agents of Bealin-Kelly would mask the bitterness of a caffeine medicament. Id. at 6. The Examiner responds that Bealin-Kelly discloses the warming and cooling agents in a confection within the claimed amounts (Ans. 3) in addition to a medicament (id. at 4). Johnson evidences the ability to use medicaments, including caffeine, interchangeably in a confection (id. at 5) as well as incorporating a cooling agent in the shell with caffeine (id. at 4). The Examiner further finds that because Bealin-Kelly “discloses the same cooling and warming agents of the same type, in the same amounts and in the same locations as the claims, . . . the composition is the same and it would have been expected that the effect of the agents would have been the same.” Id. at 7. The preponderance of the evidence favors the Examiner’s obviousness conclusion. Appellants do not dispute the Examiner’s finding that Bealin- Kelly discloses the incorporation of medicaments in a confection having warming and cooling agents within the claimed amount. See Ans. 4; Bealin- Kelly, col. 1, ll. 16-17, 56-59. Appellants also do not dispute the Examiner’s finding that Johnson discloses caffeine as a medicament contained in the Appeal 2011-010283 Application 11/354,494 5 outer coating (shell). See Ans. 6; Johnson, col. 41, ll. 46-55. Even if the masking effect of the cooling and warming agents was not appreciated by Bealin-Kelly, Appellants have not directed us to any evidence to suggest that the composition disclosed by Bealin-Kelly would not possess the property of masking the bitterness of caffeine. Indeed, Appellants do not specifically dispute the Examiner’s finding that the composition and physical structure of the confection resulting from the combination of Johnson’s and Bealin- Kelly’s teachings would have been identical to the claim (Ans. 7; App. Br. generally). Moreover, Bealin-Kelly discloses the addition of a coffee flavoring in the outer coating (shell). Bealin-Kelly, col. 5, ll.56-62, col. 6, ll. 14-15. While Appellants contend that the Examiner has engaged in impermissible hindsight and there is no reason to modify Bealin-Kelly with Johnson’s teachings, we observe that the Examiner has relied solely on the teachings and suggestions of the prior art to arrive at the claimed invention. Furthermore, Appellants do not specifically contest the Examiner’s finding that the Johnson and Bealin-Kelly teachings as a whole recognize caffeine as a medicament that would have been interchangeable with other medicaments in the coating as providing a reason for the modification (Ans. 4; App. Br. generally). On this record, we affirm the Examiner’s § 103 rejections. DECISION The Examiner’s decision is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136. Appeal 2011-010283 Application 11/354,494 6 ORDER AFFIRMED bar