Ex Parte MacInnis et al

Patent Trial and Appeal Board

Mar 9, 2018

12583979 (P.T.A.B. Mar. 9, 2018)

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.
12/583,979 08/28/2009 Kari L. Maclnnis CU-100071 2567
124057 7590
FLENER IP LAW, LLC
77 West Washington Street
Suite 800
Chicago, IL 60602
EXAMINER
MUKHOPADHYAY, BHASKAR
ART UNIT PAPER NUMBER
1793
NOTIFICATION DATE DELIVERY MODE
03/13/2018 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):
fleneriplaw_docketing @ cardinal-ip. com
zflener @ fleneriplaw .com
info@fleneriplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KARI L. MACINNIS and TOMY WIDYA
Appeal 2017-005187
Application 12/583,979
Technology Center 1700
Before CATHERINE Q. TIMM, GEORGE C. BEST, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
Opinion of the Board filed by Administrative Patent Judge CASHION.
Opinion Concurring-in-Part filed by Administrative Patent Judge TIMM.
CASHION, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 2, 5, 6, 9-11, 14, 15, 17-20, and 23-27. We have jurisdiction
under 35 U.S.C. § 6.
We AFFIRM.
Independent claims 1, 19, 23, and 24 all require the presence of a
melt-processable thermoplastic polymer. Independent claims 1 and 23 are
directed to a flavored thermoplastic composition. Independent claims 19
Appeal 2017-005187
Application 12/583,979
and 24 are directed to methods of making flavored thermoplastic
compositions.
Independent claims 1 and 24 are illustrative of the subject matter on
appeal and are reproduced below:
1. A flavored thermoplastic composition consisting
essentially of:
(a) 12 to 20% by weight of one or more flavor enhancing
agent, wherein the flavor enhancing agent is heat stable and
provides a taste component of flavor and the flavor enhancing
agent is selected from the group consisting of sweetness
enhancing agent, sourness enhancing agent, bitterness
enhancing agent, saltiness enhancing agent, coolness enhancing
agent, umami enhancing agent, fatty acid enhancing agent and
acidity enhancing agent;
(b) 0.01 to 20% by weight of one or more flavorant,
wherein the flavorant is heat stable and provides an aroma
component of flavor;
(c) one or more melt-processable thermoplastic polymer
selected from the group consisting of polyethylene,
polypropylene and co-polymers or terpolymers thereof, wherein
the flavor enhancing agent and the flavorant are selected for
thermal stability to the polymer melt processing temperature,
and
(d) optionally, an additive selected from the group
consisting of antioxidants, antistatics, antifogs, antimicrobials,
slips, antiblocks, minerals, fillers, optical brighteners, foaming
agents, nucleating agents, impact modifiers, dispersing aids,
release agents, waxes, colorants, pigments, UV stabilizers and
combinations thereof;
wherein,
the flavor enhancing agent and the flavorant are blended
throughout the thermoplastic polymer.
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Application 12/583,979
24. A method for enhancing the flavor in a flavored
thermoplastic composition for molded or extruded articles
comprising the steps of:
blending 0.1 to 20% by weight of one or more flavor
enhancing agent selected from the group consisting of
sucralose, stevia extracts, acesulfame K, maltodextrin and
combinations thereof, wherein the flavor enhancing agent is
heat stable and provides a taste component of flavor;
0.01 to 20% by weight of one or more flavorant, wherein
the flavorant is heat stable and provides an aroma component of
flavor;
with one or more thermoplastic polymer selected from
the group consisting of polyethylene, polypropylene and co­
polymers or terpolymers thereof,
and optionally one or more additives selected from the
group consisting of antioxidants, antistatics, antifogs,
antimicrobials, slips, antiblocks, minerals, fillers, optical
brighteners, foaming agents, nucleating agents, impact
modifiers, dispersing aids, release agents, waxes, colorants,
pigments and UV stabilizers;
to form a flavored thermoplastic composition,
wherein,
the taste component of flavor and the aroma
component of flavor are released from the article
without being significantly destructed, masticated
or fully or partially dissolved;
80^10 percent of the flavorant and flavor
enhancing agent are retained at ten hours of use of
said article; and
the one or more flavor enhancing agent and the
flavorant are blended throughout the one or more
polymers.
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Application 12/583,979
Appellants1 (App. Br. 9) request review of the following rejections
from the Examiner’s Final Office Action:
I. Claims 1, 2, 5, 6, 9-11, 14, 15, 17-20, 24, and 26
rejected under 35 U.S.C. § 103(a) as unpatentable over Noda
(US 2003/0143261 Al, published July 31, 2003), White (US
2003/0039617 Al, published February 27, 2003), and Deutsch
(US 4,971,078, issued November 20, 1990);
II. Claim 23 rejected under 35 U.S.C. § 103(a) as
unpatentable over Noda, White, and Hall (US 4,548,821, issued
October 22, 1985); and
III. Claims 25 and 27 rejected under 35 U.S.C.
§ 103(a) as unpatentable over Noda, White, Deutsch, and Hall.
Appellants rely essentially on the same line of arguments in
addressing the rejections of independent claims 1,19, 23, and 24 (Rejections
I and II). See generally App. Br. Appellants do present additional
arguments for independent claims 19 and 23. Id. Appellants did not present
separate arguments for the dependent claims rejected in Rejections I and III.
Accordingly, we select claim 24 as representative of the subject matter for
review on appeal for this rejection. Claims 1, 2, 5, 6, 9-11, 14, 15, 17, 18,
20, and 25-27 stand or fall with claim 24. The additional arguments for
claims 19 and 23 will be addressed separately.
OPINION
Prior Art Rejections
After review of the respective positions provided by Appellants and
the Examiner, we AFFIRM the Examiner’s prior art rejections of claims 1,
1 A. Schulman Inc. is identified as the real party in interest. App. Br. 3.
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Application 12/583,979
2, 5, 6, 9-11, 14, 15, 17-20, and 23-27 for the reasons presented by the
Examiner. We add the following for emphasis.
Claim 24
The Examiner finds Noda discloses a method of making a
thermoplastic polyethylene composition polymer comprising flavorants that
can be molded and coextruded to make a stable cellular structure for pet
toys, baby toys, nipples, mouth guards, etc. Ans. 3; Noda]fl| 87, 88, 93, 94,
113, 123, 144. The Examiner finds Noda discloses the use of flavorants in a
thermoplastic composition (Noda ^ 94) but does not disclose (i) the flavor
enhancing agent (sweeteners) and the amounts of the flavor enhancing
agents and flavorings and a (ii) controlled release profile. Ans. 4.
With respect to (i), the Examiner finds White discloses an oral care
composition in the form of a chewing gum containing sweeteners
(aspartame, acesulfame) in an amount from 0.1 to 10% by wt. and flavor
(lemon, orange) in an amount from 0.001 to 1 % in the composition, where
the White’s disclosed ranges of amounts for these components overlap the
claimed ranges of amounts for the same components. Ans. 4; White 18,
96-97. With respect to (ii), the Examiner finds Deutsch discloses that
flavorants are pre-blended and impregnated with a thermoplastic polymer
polyolefin (polyethylene) to make an article where the blended flavorant
with the polymer provides unique control release of flavors with time. Ans.
4; Deustch, col. 2,11. 12, 17-27. Deustch discloses the flavorant is less
likely to evaporate from the hollow fiber during storage, yet the hollow
fibers have a large surface area for contact with the smoke of the smoking
article to provide good release of flavorant from the hollow fiber. Deustch
col. 1,11. 49-55.
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Application 12/583,979
The Examiner determined that it would have been obvious to one of
ordinary skill in the art to use White’s flavor enhancing agents and
flavorants in the amounts taught in Noda’s thermoplastic composition to
attain a desired flavor and sweetness effect. Ans. 4. The Examiner also
determined that it would have been obvious to one of ordinary skill in the art
to provide Noda’s flavorants with a time release profile, as taught by
Deustch, to ensure greater shelf life. Ans. 4-5; Deustch, col. 2,11. 32-35.
Appellants assert Noda is directed to hydrophilic and biodegradable
polymers and only mentions hydrophobic polyethylene as an example of a
non-biodegradable polymer. App. Br. 16; Noda]fl| 45, 46. According to
Appellants, Noda discloses polyethylene as an example of a non-degradable
polymer and teaches a distinction between the compostable (biodegradable)
materials and polyethylene. App. Br. 16; Noda]fl| 45 46. That is,
Appellants assert Noda teaches away from using polyethylene in the
thermoplastic material because it is unsuitable for Noda’s purposes. App.
Br. 16. In support of these assertions, Appellants point to the Declaration
under 37 CFR § 1.132 by Dr. Tim Osswald (“Declaration”).2 Id. According
to Declarant, Noda is wholly focused on a latex-free, biodegradable polymer
identified as a polyhydroxyalkanoate (PHA) that is hydrophilic and a very
polar polymer while polyethylene polymers are hydrophobic and have low
to no polarity. Decl. ^ 7. Declarant also asserts that polyethylene is only
mentioned in the reference as an undesirable material in biodegradable
compositions. Id. Thus, Declarant concludes that one skilled in the art of
2 The Declaration was submitted January 29, 2016 and entered into the
record by the Examiner in the Final Office Action dated April 5, 2016.
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Application 12/583,979
polymer manufacturing would not take Noda as teaching the use of
polyethylene polymers in the reference’s disclosed invention. Id.
We are unpersuaded of Examiner error. A reference teaches away
from a claimed invention when a person of ordinary skill, “upon reading the
reference, would be discouraged from following the path set out in the
reference, or would be led in a direction divergent from the path that was
taken by the applicant.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).
Whether the prior art teaches away from the claimed invention is a question
of fact. DyStar Textilfarben GmbHv. C.H. Patrick Co., 464 F.3d 1356,
1360 (Fed. Cir. 2006); In re Harris, 409 F.3d 1339, 1341 (Fed. Cir. 2005);
(holding that a reference teaches away from following a path when a skilled
artisan, upon reading the reference, would be discouraged from that path).
Appellants point to paragraphs 45 and 46 of Noda as distinguishing
polyethylene from biodegradable polymers and, thus, teaching away from its
use. App. Br. 16. We do not find Noda’s disclosure to be as narrow as
asserted by Appellants and agree with the Examiner’s determination that
Noda, as a whole, would not discourage one skilled in the art from using
polyethylene as a component of the disclosed thermoplastic polymers. Ans.
13. Although Noda defines three characteristics to determine if a compost
material is biodegradable (Noda]fl| 43, 45-46), this definition does not
mention anything about Noda’s thermoplastic polymer, or articles made
therefrom, being limited to biodegradable thermoplastic components. On
the contrary, the portions of Noda relied upon by Appellants suggest that the
material undergoing the composting process can include both biodegradable
and non-biodegradable materials. As noted by the Examiner, Noda
contemplates a thermoplastic composition comprising a blend of
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Application 12/583,979
thermoplastic components, without any restriction as to the type of
thermoplastic components used. Ans. 13; Noda 113. Noda also generally
refers to articles comprising the disclosed biodegradable polymer. See, e.g.,
Noda 21, 27. Moreover, Noda’s disclosure encompasses products
containing non-biodegradable components, such as products made by
coating a biodegradable polymer over substrates comprising latex. Noda ^
107. One skilled in the art, reading the above noted disclosure would infer
that the polymer used to make the article is not limited to biodegradable
polymers and, thus, would not be discouraged from using non-biodegradable
polymers, such as polyethylene, in Noda’s thermoplastic polymer blends.
While Noda may prefer the use of a biodegradable polymer for the articles
made (Noda 113, 125), it is well settled that a reference stands for all of
the specific teachings thereof as well as the inferences one of ordinary skill
in the art would have reasonably been expected to draw therefrom. See In re
Fritch, 972 F.2d 1260, 1264-65 (Fed. Cir. 1992); see also Merck & Co. v.
Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (“all disclosures of
the prior art, including unpreferred embodiments, must be considered”
(quoting In re Lamberti, 545 F.2d 747, 750 (CCPA 1976))); In re
Fracalossi, 681 F.2d 792, 794 n.l (CCPA 1982) (explaining that a prior art
reference’s disclosure is not limited to its examples.).
Appellants have not directed us to any portion of Noda that supports
the assertion that polyethylene cannot be a component of Noda’s disclosed
thermoplastic polymer. Appellants have not adequately explained why one
skilled in the art, upon reading Noda’s disclosure as a whole, would not have
inferred that Noda’s thermoplastic polymers could comprise other
thermoplastic components such as polyethylene.
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Application 12/583,979
Appellants’ reliance on the Declaration is also unavailing for the
reasons presented by the Examiner and given above. Ans. 17-18.
Moreover, Declarant directs us to no objective evidence in support of the
statement that one skilled in the art of polymer manufacturing would not
take Noda as teaching the use of polyethylene polymers as suitable
components for Noda’s thermoplastic polymer. Deck ^ 7. At most,
Appellants, through the use of the Declaration, have provided mere attorney
arguments; such arguments cannot take replace evidence. See In re De
Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984); In re Payne, 606 F.2d 303, 315
(CCPA 1979).
Relying on paragraphs 8 and 9 of the Declaration, Appellants argue
White is non-analogous art because the reference is not in the same field of
endeavor as the claimed invention or reasonably pertinent to the problem
solved by the claimed invention (significantly improving flavor in a
thermoplastic composition for molded or extruded flavored articles). App.
Br. 13-14. Appellants assert that the product of White is different from the
claimed thermoplastic compositions and therefore not combinable with the
claimed composition. Id. at 13. Appellants also assert that it would not be
logical for one skilled in the art to consider aqueous dentifrice compositions,
such as toothpaste, which are Bingham fluids that flow at room temperature
and thus cannot be molded or extruded. Id. at 14.
We have considered Appellants’ arguments and Declarant’s
statements and are unpersuaded of error. Appellants’ assertions appear
premised on using White’s aqueous compositions in Noda’s thermoplastic
compositions. As noted by the Examiner, Noda teaches the use of flavorants
in thermoplastic compositions that are shaped into oral care products. Ans.
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Appeal 2017-005187
Application 12/583,979
3—4; Noda 87-89, 93-95. The Examiner relied upon White as teaching
known flavorings and sweeteners used in oral care compositions and
products. Ans. 12. That is, the Examiner’s rejection is based on using
White’s flavorants, and not the toothpaste, in Noda’s thermoplastic. Neither
Appellants nor Declarant direct us to any objective evidence nor provide an
adequate explanation why White’s flavorants would be unsuitable for
Noda’s flavored thermoplastic polymer. Given that both references are
directed to oral care products, Appellants have not adequately explained why
one skilled in the art, using no more than ordinary creativity, would not have
been capable of adapting White’s flavorants for use in Noda’s thermoplastic
polymers. KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) (“A
person of ordinary skill is also a person of ordinary creativity, not an
automaton.”); see In re Sovish, 769 F.2d 738, 743 (Fed. Cir. 1985) (skill is
presumed on the part of one of ordinary skill in the art).
We have also considered Appellants’ arguments and Declarant’s
statements concerning the Examiner allegedly erring in combining the cited
art to arrive at the claimed invention. App. Br. 18-19; Decl. ^ 9. We are
again unpersuaded for the reasons presented by the Examiner (Ans. 15) and
given in our discussion above. Appellants’ arguments do not point to error
in the Examiner’s determination of obviousness.
Claim 19
With respect to independent claim 19, Appellants additionally argue
that a product having the recited ingredients in the stated amounts would not
inherently have the recited retention of 80—40 percent of the flavorant and
flavor enhancing agent at ten hours of use of said article is unsupported.
App. Br. 30-31.
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Application 12/583,979
We are unpersuaded by this argument. As noted by the Examiner, the
combined teachings of the prior art would lead one skilled in the art to a
flavored thermoplastic polymer composition comprising the claimed
flavorant and flavor enhancing agent in the claimed amounts. Ans. 16;
compare claim 19, Spec. 61 (lemon flavorant), 62 (acesulfame flavor
enhancing agent (sweetener)), with White 95 (lemon flavoring agent), 96
(acesulfame sweetener). Appellants have not adequately explained why
using the same flavorant and flavor enhancing agent components in Noda’s
thermoplastic polymer composition would not result in the claimed retention
time. Further, Appellants have not directed us to any objective evidence
showing criticality of the claimed retention of the flavorant and flavor
enhancing agent.
Claim 23
Claim 23 requires specific thermoplastics polymers, including low
density polyethylene. The Examiner relied on Hall to provide this teaching.
Ans. 8; Hall col. 4,11. 52-60.
With respect to independent claim 23, Appellants further argue that
Hall is directed to augmenting or enhancing musky, patchouli-like and
earthy aromas with the aid of specific tertiary pentamethylindanol
derivatives, but does not address taste. App. Br. 33.
We are unpersuaded by this argument because Hall expressly
discloses that the disclosed compositions are useful to augment or enhance
the aroma or taste of items, such as foodstuffs. Hall col. 1,11. 23-27.
Accordingly, we affirm the Examiner’s prior art rejections of claims
1, 2, 5, 6, 9-11, 14, 15, 17-20, and 23-27 under 35 U.S.C. § 103(a) for the
reasons presented by the Examiner and given above.
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Application 12/583,979
DECISION
The Examiner’s prior art rejections of claims 1, 2, 5, 6, 9-11, 14, 15,
17-20, and 23-27 under 35 U.S.C. § 103(a) are affirmed.
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
12
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KARI L. MACINNIS and TOMY WIDYA
Appeal 2017-005187
Application 12/583,979
Technology Center 1700
Before CATHERINE Q. TIMM, GEORGE C. BEST, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
TIMM, Administrative Patent Judge, CONCURRING-IN-PART.
I concur-in-part with the decision to affirm the Examiner’s rejections.
In my opinion, Appellants have identified an error in the Examiner’s
finding that Noda teaches blending a flavor enhancing agent and flavorant
throughout polyethylene. See, e.g., App. Br. 16-17 (“the reference as a
whole is directed to hydrophilic and biodegradable polymers, and
hydrophobic polyethylene is only mentioned as an example of a
nonbiodegradable polymer. That is, polyethylene is only mentioned in the
reference as not appropriate for the purposes of Noda et«/.”). However, in
the rejections including Deutsch, the error is not a reversible error because a
preponderance of the evidence supports the Examiner’s finding that Deutsch
teaches pre-blending and impregnating flavorants in thermoplastic
polyolefin. Final Act. 4.
Appeal 2017-005187
Application 12/583,979
Deutsch specifically suggests using polyethylene as the preferred
thermoplastic. Deutsch, col. 2,11. 10-16. Deutsch teaches pre-blending and
impregnating the thermoplastic with flavorants in a concentration range of 5-
25% by weight and lists as suitable flavorants compounds Appellants list as
flavorants and flavor enhancing agents. Compare Deutsch, col. 2,11. 22-24
(“Suitable flavorants include menthol, spearmint, peppermint, cocoa, vanilla,
cinnamon, licorice, citrus, other fruit flavors, and tobacco.”), with Spec. ^ 61
(listing fruit flavorant, peppermint, spearmint, cinnamon, citrus, vanilla as
suitable flavorants), and Spec. ^ 63 (listing cooling agents such as menthol
as a flavor enhancing agents). The use of, for instance, menthol together
with, for instance, spearmint or peppermint, would have been obvious to
those of ordinary skill in the art to obtain the properties of both in the
smoking article filter of Deutsch. The ordinary artisan would have
performed routine experimentation to find the workable or optimal
concentrations of the combination required to achieve the taste and cooling
effect desired in the smoking article. In fact, in my opinion, Deutsch alone
supports the prima facie case of obviousness.
Thus, I would have:
Affirmed the rejection of claims 1, 2, 5, 6, 9-11, 14, 15, 17-20, 24,
and 26 under 35 U.S.C. § 103(a) as obvious over Noda in view of White and
Deutsch; and
Affirmed the rejection of claims 25 and 27 under 35 U.S.C. § 103(a)
as obvious over Noda in view of White and Deutsch; and
Reversed the rejection of claim 23 under 35 U.S.C. § 103(a) as
obvious over Noda in view of White and Hall.
2