Ex Parte Miladinov et alDownload PDFPatent Trial and Appeal BoardDec 19, 201611283217 (P.T.A.B. Dec. 19, 2016) Copy Citation 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. 11/283,217 11/18/2005 Vesselin Danailov Miladinov CDS0171US2 3085 23413 7590 12/21/2016 TANTOR TOT RTTRN T T P EXAMINER 20 Church Street DEES, NIKKI H 22nd Floor Hartford, CT 06103 ART UNIT PAPER NUMBER 1791 NOTIFICATION DATE DELIVERY MODE 12/21/2016 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): usptopatentmail@cantorcolbum.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte VES SELIN DANAILOV MILADINOV and JOSE A. AMARISTA Appeal 2015-005166 Application H/283,2171 Technology Center 1700 Before WESLEY B. DERRICK, CHRISTOPHER C. KENNEDY, and JENNIFER R. GUPTA, Administrative Patent Judges. DERRICK, Administrative Patent Judge. DECISION ON APPEAL This is a decision on an appeal under 35U.S.C. § 134 from the Examiner’s maintained rejection of claims 36-38, 40-50, and 52-63. We have jurisdiction pursuant to 35 U.S.C. § 6. We AFFIRM. BACKGROUND Appellants’ claimed invention is directed to gum base compositions and chewing gum compositions having reduced-stick properties. Spec. 1 Appellants identify Intercontinental Great Brands LLC as the real party in interest. Appeal Br. 2. Appeal 2015-005166 Application 11/283,217 Abstract. The independent claims are directed to biodegradable or photodegradable chewing gum compositions. Claims 36, 48, 60, and 61. Independent claim 36 is reproduced below. 36. A biodegradable chewing gum composition comprising: (a) a gum base comprising (i) about 2% to about 15% by weight of the gum base of an elastomer consisting of a butyl rubber or a styrene butadiene rubber; (ii) about 0.1 % to about 0.3% by weight of the gum base of chlorophyll; (iii) about 10% to about 60% by weight of the gum base of at least one non-stick inducing component; and (iv) about 15% to about 60% by weight of the gum base of a texture-modifier chosen from polyvinyl acetate, polyvinyl laurate acetate, polyvinyl alcohol, or mixtures thereof; wherein the gum base does not contain any other elastomers besides the elastomer (i) and wherein the gum base does not contain any chlorophyllin ; and (b) at least one flavor or at least one sweetener or mixtures thereof. Appeal Br. (Claims Appendix) 15 (formatting added). 2 Appeal 2015-005166 Application 11/283,217 REJECTIONS I. Claims 36^16, 48-58, 60, and 61 stand rejected under 35 U.S.C. § 103 over Park2 in view of Koch,3 Chung,4 and Mazzeo,5 with evidence provided by Rivarola6 and Schmidt7; II. Claims 47 and 59 stand rejected under 35 U.S.C. § 103 over Park in view of Koch, Chung, and Mazzeo, in further view of Synosky8; and III. Claims 62 and 63 stand rejected under 35 U.S.C. § 103 over Park in view of Koch, Chung, and Mazzeo, in further view of Song.9 DISCUSSION10 Appellants argue the claims subject to Rejections I and II as a group. Appeal Br. 5-12. While Appellants do not identify particular claims from within the group, the limitations argued include those set forth in independent claim 36, as well as some further limitations set forth in 2 Park et al., KR2001-0054258 (published July 2, 2001) (machine translation). 3 Koch et al., US 4,387,108, issued June 7, 1983. 4 Chung et al., Inhibitory effects of chlorophyllin on 7,12-dimethyl- benz[a]anthracene-induced bacterial mutagenesis and mouse skin carcinogenesis, Cancer Letters 145 (1999) 57-64. 5 Mazzeo, Preventing polymer degradation during mixing, Rubber World 211(5) (Feb. 1995) 22. 6 Rivarola et al., Crystallization of Hydrogenated Sunflower-Cottonseed Oil, JAOCS 64(11) (Nov. 1987) 1537^13. 7 Schmidt et al., Preparation of modified fats from vegetable oil and fully hydrogenated vegetable oil by randomization with alkali catalysts, Food Chemistry 55(4) (1996) 343^18. 8 Synosky et al., US 5,437,875, issued August 1, 1995. 9 Song, US 4,978,537, issued December 18, 1990. 10 We refer to the Appeal Brief filed November 11, 2014 (“Appeal Br.”), and the Examiner’s Answer mailed February 13, 2015 (“Ans.”). 3 Appeal 2015-005166 Application 11/283,217 dependent claims 43 46 (talc as a mineral adjuvant in an amount from about 3% to about 30% by weight of the gum base and glycerol monostearate as an emulsifier in an amount from about 0.1% to about 5% by weight of the gum base). See Appeal Br. 5—12. Appellants add separate argument as to Rejection III, directed to dependent claims 62 and 63 which both add the same further limitation that the “chlorophyll is encapsulated in an encapsulant chosen from fats, polymers, carbohydrates, and combinations thereof.” Appeal Br. 13, 19. Our discussion, accordingly, largely focuses on the rejection of independent claim 36. To prevail in an appeal to this Board, Appellants must adequately explain or identity reversible error in the Examiner’s rejection. See 37 C.F.R. § 41.37(c)(l)(iv) (2012); see also In re Jung, 637 F.3d 1356, 1365—66 (Fed. Cir. 2011) (explaining that even if the Examiner had failed to make a prima facie case, it has long been the Board’s practice to require an Appellant to identify the alleged error in the Examiner’s rejection); In re Chapman, 595 F.3d 1330, 1338 (Fed. Cir. 2010) (“[T]he burden of showing that the error is harmful normally falls upon the party attacking the agency’s determination.” (quoting Shinseki v. Sanders, 556 U.S. 396, 409 (2009))). On this record, we are not persuaded the Examiner erred in determining that one of ordinary skill in the art at the time of the invention, armed with knowledge of the cited prior art, would have found the claimed subject matter obvious within the meaning of 35 U.S.C. § 103. Koch discloses a non-stick chewing gum base that can be combined with flavors and sweeteners to provide chewing gum. Koch Abstract, col. 6, 4 Appeal 2015-005166 Application 11/283,217 11. 5—11. The Examiner relies on Koch for its teaching of a gum base comprising elastomer at 8-30% by weight, oleaginous plasticizer (e.g. fat or oil; ) [sic] at 9-40% by weight, mineral adjuvants (e.g. talc) at 10-15% by weight, non-toxic vinyl polymer (i.e. polyvinyl acetate at 16-32% by weight, emulsifier (e.g. glycerol monostearate) at 0.5-10% by weight, and elastomer solvent (e.g. resins) Ans. 4-5 (citing Koch col. 3,1. 61-col. 4,1. 10); see also 11 (citing Koch col. 2,11. 54, 56, col. 3,11. 11-15, 43^46, col. 5,11. 5-59 (Examples I-III)). The Examiner further finds Koch to teach use of isobutylene-isoprene copolymer (i.e., butyl rubber) as preferred and to disclose in its Example II the use of butadiene-styrene copolymer at 8.29% by weight of the gum base in combination with polyvinyl acetate. Ans. 5 (citing Koch col. 4,11. 11- 14); Koch col. 5,11. 27 40 (Example II). The Examiner further finds the butadiene-styrene copolymer is the only elastomer present in the gum base disclosed in the cited Example II. Ans. 5. Park discloses a chewing gum that includes copper sodium chlorophyll (i.e., chlorophyllin) for health benefits (e.g., anti-carcinogenic effect). Park Abstract, 3 (first paragraph). The Examiner relies on Park for its teaching the use of chlorophyllin in amounts from 0.005% to 0.05% by weight of the gum. Ans. 3. The Examiner finds that when the gum base is used at 10 to 25% by weight of the chewing gum, the range of provided copper sodium chlorophyll overlaps the claimed amount of chlorophyll. Ans. 3. Chung discloses chlorophyllin (i.e., copper sodium chlorophyll) as a water soluble derivative of chlorophyll useful for treatment of several abnormal human conditions without apparent toxicity. Chung Abstract. The 5 Appeal 2015-005166 Application 11/283,217 Examiner relies on Chung for its disclosure that chlorophyll and chlorophyllin have close structural similarity and similar utility, but differ in that chlorophyll is oil soluble and chlorophyllin is water soluble. Ans. 4 (citing Chung Fig. 1); see also Chung Abstract, 57-58. The Examiner concludes that one of ordinary skill in the art would have found it obvious at the time of the invention to have included chlorophyll in a chewing gum, including a chewing gum composition having the gum base as disclosed in Koch. Ans. 4, 6. The Examiner further de facto concludes that it would have been obvious to include the chlorophyll in the gum base in stating that “one of ordinary skill further would found it obvious, and would have been able, to select chlorophyll or chlorophyllin based on the matrix in which the molecule was to be included” after noting that chlorophyll is oil soluble. Ans. 15; see also Ans. 16 (distinguishing the gum base from the water soluble portion). The Examiner relies on Mazzeo for its disclosure that unsaturated polymers are inherently less stable than saturated polymers. Ans. 6. The Examiner finds that a chewing gum including “butyl rubber or styrene butadiene rubber (both unsaturated polymers) elastomer” would be expected to be degraded by the action of chlorophyll because it is a free-radical generator. Ans. 6. As to Rejection II, the Examiner further relies on Koch for its teaching to include elastomer plasticizers, preferably from 2.5 to 5% by weight of the gum base, in the gum base and for the inclusion of rosin derivatives (Ans. 7, citing Koch col. 3,11. 20-36) and relies on Synosky for its teaching of methyl ester rosin as an elastomer plasticizer in chewing gums (Ans. 7-8, citing Synosky col. 4,11. 1-8). 6 Appeal 2015-005166 Application 11/283,217 As to Rejection III, the Examiner relies on Song for its teaching of encapsulated chlorophyll for inclusion in chewing gums and that doing so provides a gradual release of the encapsulated, active ingredient. Ans. 8-9 (citing Song col. 4,11. 33-34, 38^11). The Examiner maintains that it is well known to encapsulate active ingredients to impart additional shelf-stability to the encapsulated ingredient. Ans. 17. Appellants first proffer arguments as to each of the cited references, and additionally as to references relied on as evidence, contending that these references do not teach or suggest the claimed components as arranged in the claims. Appeal Br. 6-10. The proffered arguments, however, fail to address the relied on combination of Koch—providing a gum base and gum according to claim 36 but for the inclusion of chlorophyll—with the teaching from Park to include chlorophyllin in a chewing gum for health benefits and the teaching from Chung that chlorophyll and chlorophyllin have similar structures and are recognized as providing the same or similar health benefits. It is axiomatic that “one cannot show non-obviousness by attacking references individually where ... the rejections are based on combinations of references.” In re Keller, 642 F.2d 413, 426 (CCPA 1981). As to Appellants’ arguments contending deficiencies in Koch’s disclosure (Appeal Br. 7-8), we are not persuaded of any error for the reasons set forth by the Examiner (Ans. 10-11). Appellants’ argument that there is no teaching in Park or Koch to exclude chlorophyllin (Appeal Br. 6-8) fails to address the rejection as it was grounded on substitution of chlorophyll for chlorophyllin (Ans. 3^4). Further, contrary to Appellants’ assertion that “[tjhere is no teaching in any of the cited references that states one may be substituted for the other” 7 Appeal 2015-005166 Application 11/283,217 (Appeal Br. 8, emphasis omitted), we find Chung does in fact teach the substitution of one for the other as set forth by the Examiner (Ans. 3—4, 11- 12). In re Preda, 401 F.2d 825, 826 (CCPA 1968) (“[I]t is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom.”); see also In re Boe, 355 F.2d 961, 965 (CCPA 1966) (Disclosures in a prior art reference “must be evaluated for what they fairly teach one of ordinary skill in the art.”). As set forth by the Examiner, the motivation to include chlorophyll, rather than chlorophyllin as taught by Park, in Koch’s gum base is provided by Chung, which reasonably teaches that both chlorophyll and chlorophyllin have close structural similarity, and similar health benefits (e.g., anti-carcinogenic effect). Ans. 4, 6; Chung 57— 58. Appellants’ argument that there is no teaching or suggestion that the claimed chewing gum compositions would be biodegradable or photodegradable (Appeal Br. 6-9) fails to address the rejection grounded on including chlorophyll for its health benefit in the gum base composition of Koch in which the elastomer is butyl rubber or styrene butadiene rubber and Mazzeo is cited for the uncontroverted fact that unsaturated bonds are more susceptible to degradation (Ans. 6, 13). Appellants proffer further arguments grounded on the number of different references and choices necessary to be made in combining the teachings of Park with the other references to provide the claimed invention. Appeal Br. 10-11. Having considered these, we find them unpersuasive of reversible error for reasons set forth above and in the Examiner’s Answer. Like the arguments discussed above, these fail to address the rejection 8 Appeal 2015-005166 Application 11/283,217 grounded on modifying a chewing gum composition as taught by Koch by adding chlorophyll for its health benefit, rather than chlorophyllin as taught by Park, because of the similar health benefits of chlorophyll and chlorophyllin, as taught by Park and Chung. As such, contrary to Appellants’ argument, the Examiner’s rejection is not grounded on an “obvious to try” rationale. Appellants further contend the prior art does not teach adding chlorophyll to a gum base. Appeal Br. 11-12. Emphasizing that the chlorophyll in the instant invention acts to degrade elastomers in a chewing gum (Appeal Br. 12, citing Spec. 96-97), Appellants argue that Park discloses chlorophyllin present in a chewing gum composition outside of the gum base and that Koch, lacking any teaching of chlorophyll, fails to teach chlorophyll in its gum base (Appeal Br. 11-12). On this record, we are directed to no evidence that one of ordinary skill in the art at the time of the invention seeking the health benefit associated with chlorophyllin and chlorophyll included in a chewing gum would not have found it obvious at the time of the invention both to include chlorophyll and to include it in the component in which it is soluble, namely, in the gum base. See generally Appeal Br. Appellants’ arguments, accordingly, lack sufficient support to overcome the Examiner’s rationale for the rejection grounded on provision of the health benefit. Appellants contend that patentability is supported by surprising results as to the degradation of chewing gum compositions having a gum base containing butyl rubbers or styrene butadiene rubbers. Appeal Br. 12 (citing Spec. 11 180-96, Tables 14-18). 9 Appeal 2015-005166 Application 11/283,217 We have considered the cited portion of the Specification, but find the disclosure insufficient to rebut the prima facie case. It is well established that Appellants bear the burden of showing that the claimed invention imparts unexpected results. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). To meet the burden, Appellants must establish that the results actually would have been unexpected, and that the unexpected results are reasonably commensurate with the scope of protection sought by the claims on appeal. In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983); In re Clemens, 622 F.2d 1029, 1035 (CCPA 1980); Klosak, 455 F.2d at 1080. It might reasonably be inferred from the cited portion of the Specification that there are differences, perhaps even that they are significant, but there is nothing on this record indicating that they are unexpected or surprising. See, e.g., In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (“Attorney’s argument. . . cannot take the place of evidence.”). Appellants’ argument focusing on the lack of recognition in the cited references of the results they contend to be surprising is wholly inapposite and without persuasive merit that the results would, in fact, have been surprising to the skilled artisan at the time of the invention. Further, Appellants fail to proffer any cogent explanation why the results are reasonably commensurate with the scope of the claims. Appellants proffer separate argument as to Rejection III (claims 62 and 63). Appeal Br. 13. While conceding Song discloses that an encapsulated agent may be chlorophyll, Appellants emphasize that it appears to only be mentioned once and that Song is concerned with a chewing gum that has longer lasting flavor and not a degradable gum or a gum including chlorophyll for health benefits. Appeal Br. 13 (citing Song, col. 4,11. 13- 10 Appeal 2015-005166 Application 11/283,217 34). Appellants argue that adding encapsulated chlorophyll to the particular gum base according to the claims is not taught or suggested by the combined teachings of the cited prior art. Appeal Br. 13. Appellants’ argument fails to squarely address the Examiner’s relied on rationale that one of ordinary skill in the art would have been motivated, based on Song, to have encapsulated chlorophyll to provide for gradual release of the chlorophyll during chewing. Ans. 8-9. For the reasons above, Appellants have not shown reversible error in the rejection of the pending claims. CONCLUSION The Examiner’s rejections of claims 36-38, 40-50, and 52-63 under 35 U.S.C. § 103 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(a)(1). AFFIRMED 11 Copy with citationCopy as parenthetical citation