Ex Parte Neergaard et al

Patent Trial and Appeal BoardAug 1, 2016

13719670 (P.T.A.B. Aug. 1, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 131719,670 12/19/2012 Jes per N eergaard 24126 7590 08/03/2016 ST ONGE STEW ARD JOHNSTON & REENS, LLC 986 BEDFORD STREET STAMFORD, CT 06905-5619 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. 05198-P0045B 1682 EXAMINER DEES, NIKKI H ART UNIT PAPER NUMBER 1791 NOTIFICATION DATE DELIVERY MODE 08/03/2016 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): patentpto@ssjr.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JESPER NEERGAARD, HELLE WITTORFF, and HENRIETTE SIE WOLDUM Appeal2015-002205 Application 13/719,670 Technology Center 1700 Before MARK NAGUMO, GEORGE C. BEST, and MONTE T. SQUIRE, Administrative Patent Judges. BEST, Administrative Patent Judge. DECISION ON APPEAL The Examiner finally rejected claims 1-20 of Application 13/719,670 under 35 U.S.C. Â§ 103(a) as obvious. Final Act. (January 13, 2014). The Examiner also finally rejected claims 13-16 under 35 U.S.C. Â§ 112, i-f 1 as failing to comply with the written description requirement and under 35 U.S.C. Â§ 112, i-f 2 as indefinite. Id. Appellants 1 seek reversal of these rejections pursuant to 35 U.S.C. Â§ 134(a). We have jurisdiction under 35 U.S.C. Â§ 6. 1Gumlink A/S is identified as the real party in interest. Appeal Br. 3. Appeal2015-002205 Application 13/719,670 For the reasons set forth below, we AFFIRM. BACKGROUND The '670 Application describes chewing gums and chewing gum bases. Spec. i-f 1. In particular, Appellants' Specification describes biodegradable polyester polymers that can be used as chewing gum bases. Id. i-fi-f 2-7. Claim 1 is representative of the '670 Application's claims and is reproduced below: 1. A chewing gum comprising at least one polyester polymer, said polyester polymer consisting of the following polyester-forming components in condensed form: a) at least one dicarboxylic acid, b) at least one diol, c) at least one compound having at least three groups capable of ester formation, wherein the polyester polymer comprises the components a) and b) in an amount of at least 90% by weight based on a total weight of the polyester polymer, and wherein the molar ratio between aromatic acids and aliphatic acids of said dicarboxylic acid in the chewing gum is between 0 and 1 :4.2. Appeal Br. 28 (Claims App.). 2 Appeal2015-002205 Application 13/719,670 REJECTIONS On appeal, the Examiner maintains2 the following rejections: 1. Claims 1-11 and 13-20 are rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Bunczek. 3 Final Act. 5; Answer 2. 2. Claim 12 is rejected under 35 U.S.C. Â§ 103(a) as unpatentable over the combination of Bunczek, Cook, 4 and Muller. 5 Final Act. 7; Answer4. DISCUSSION We affirm the Examiner's rejections for the reasons expressed in the Final Action and the Examiner's Answer. We add the following: Rejection 1. The Examiner rejected claims 1-11 and 13-20 as unpatentablye obvious over Bunczek. Final Act. 5; Answer 2. Claims 1, 13, and 1 7 are independent. Appellants present specific argument for reversal of the rejection of these claims. See Appeal Br. 16- 26. Appellants argue for reversal of the rejection of claims 2-11, 14--16, and 18-20 solely on the basis of their ultimate dependence from claim 1, 13, or 17. Id. at 26. We, therefore, limit our discussion to the independent claims. Each of the '670 Application's independent claims is directed to a polyester polymer formed from (a) at least one dicarboxylic acid, (b) at least 2 The Examiner has withdrawn the rejections of claims 13-16 under 35 U.S.C. Â§ 112. Answer 5. 3 US 6,013,287, issued January 11, 2000. 4 US 6,469,129 Bl, issued October 22, 2002. 5 Rolf-Joachim Muller et al., Biodegradation of polyesters containing aromatic constituents, 86 J. Biotech. 87 (2001 ). 3 Appeal2015-002205 Application 13/719,670 one diol, and ( c) at least one compound that has at least three groups capable of forming esters. See claims 1, 13, 17. Each of the independent claims further requires that the polyester comprise components (a) and (b) in an amount of at least 90% by weight based upon the total weight of the polyester polymer. Id. Appellants' principal argument for reversal of Rejection 1 is that the Examiner erred by finding that Bunczek describes or suggests a polyester polymer in which the diacid and diol components (identified as components (a) and (b) in the '670 Application's claims) are present in an amount of at least 90% by weight based upon the total weight of the polyester polymer. Appeal Br. 20-26. In rejecting claims 1, 13, and 1 7, the Examiner found: 12. Regarding claims 1, 7, 9-11, 13, 15, 17, 18 and 20, Bunczek et al. teach polyester polymers consisting of the polyester-forming components of at least one dicarboxylic acid (i.e. adipic acid), at least one diol (i.e. propylene glycol=propane-1,2-diol) and at least one compound having at least three groups capable of ester formation (i.e. glycerol). Examples P and Q in the table in col. 4 of Bunczek teach the amount of glycerol at approximately 4% and 9%, respectively, by weight based on the total weight of the polyester. The molar ratio between aromatic acids and aliphatic acids of said dicarboxylic acid is 0: 1, with no aromatic acids present in the above examples. 13. Gum examples 5, 6 and 7 teach non-endcapped polyester polymers (from Base Examples D and E) in chewing gums. Base examples D and E do not have compound c) present at 10% or less of the polyester polymer.[6J However, as examples 6 The Examiner found that in Bunczek' s gum base Example E, see Bunczek col. 7, 11. 12-50, components (a) and (b) comprise 88% by weight of the 4 Appeal2015-002205 Application 13/719,670 P and Q have compound c) at less than 10% of the polyester polymer, and Bunczek is concerned with polyester polymers for inclusion in chewing gums, it is considered obvious to include such polymers in chewing gums. Final Act. 5. Appellants argue that the Examiner's findings are erroneous because the Examiner has misinterpreted Bunczek. Appeal Br. 16-26. In particular, Appellants contest the Examiner's finding that Bunczek's polyester polymers identified as Examples P and Q in the table reproduced in column 4 of Bunczek have components (a) and (b) present in a total of 90% by weight based upon the total weight of the polyester polymer. Id. at 18-19; 21-24. Appellants' argument is based upon their resolution of ambiguous aspects of the disclosure reported by the Table. For ease of reference, we reproduce the table below: /Â·~ i\clip;_(: /\cid B Adip.i;; :k[tl C Aclip.ic Acct\ D I\faiic A.cid .F MJJ.\il: Acid "':'',Â·1 rt-Q .~. 'â€¢,J â€¢â€¢â€¢ {.~_; 3.;$.<;\J.66 1.4\2.03 2.0\1.28 F M;ilic Acid 2\0.S (r /\dipicl:\-liilic Acid 1\P.L28 H Adipi.::;.:\hlic: A ... -id /\dipic Acid /\dipic A.cid K 'foiw.ri(; Ad.d l\l L Fu1tsarit..: A;;:~d/Cj~ric /\.i..~i.d :vr Pwnari::: Add 2\J N Fumar\,~ Acid/Citric Acid :l"J\:i 1_) l--\dip~c i\.cid 2\1\1 *~ P Adipic A.cicl 0 A.dipic Acid R AJipic Acid. ''LoÂ·w kvcl>. of Glyc:cr.:11 added "~"Â·~\1~Â·1f.J1_.:. '~~~JJ ,...\t~;pi3 .. ~ Ac;J\CHyi:..~.rin\P!'opy~c:ne, Cil y~".iJl 2'-j L5\l..SrJ 2\2 1 \1\) 2\.25\:t 1\li4""\2 polyester polymer. Answer 10-11. Appellants do not contest this calculation. 5 Appeal2015-002205 Application 13/719,670 The Table reports synthesis of "several polyesters ... made using the various food acids and glycerol or propylene glycol. Gram quantities were made in a test tube heated at an oil bath at about 180Â°-250Â° C. from Yz hr. to 5 hours to obtain polyesters." Bunczek col. 4, 11. 13-17. As can be seen, the Table reports the molar ratio of the food grade acid(s) to the diol. Examples P, Q, and R, however, report the use of three compounds clearly stating what they are. The ratios reported for Examples P and R include an asterisk. The Table includes a legend stating that Examples so labeled have "Low levels of Glycerol added." Example Q, however, does not include an asterisk, creating an ambiguity regarding the identity of the third compound used to make the polyester. Appellants argue: Appellant notes that the Examiner continues to assert that Examples P and Q disclose, respectively, 4% and 9% by weight of glycerol, completely ignoring Appellant's explanation as to why this is not actually not the case. It is noted that Example P is generally mentioned to contain a "low level" of glycerol (indicated in the table in column 4 by an asterisk). However, no level whatsoever of glycerol is indicated for Example Q (since there is no asterisk). It appears that the Examiner is interpreting the .1 and .25 numbers in the table as representing the amounts of glycerol present in Examples P and Q, respectively. However, Appellant respectfully submits that this appears to not be the case. Although the table is not clear as to which the cited numbers refer to, Appellant respectfully submits that the .25 number cannot possibly be the amount of glycerol present in Example Q, and therefore one skilled in the art would assume that the .1 number in Example P would also not be referring to an amount of glycerol. Moreover, if the .1 number in Example P did refer to an amount of glycerol, there would be no need for the additional asterisk. Appeal Br. 22. 6 Appeal2015-002205 Application 13/719,670 The Examiner, on the other hand, states that [ w ]here the asterisk is omitted from Example Q, but is present in Examples P and R on either side, the Examiner reads it as a typographical error. The examiner understands example Q to teach glycerol present at 0.25 moles, to 2 moles of adipic acid and 1 mole of propylene glycol. When this molar ratio is converted to a weight ratio, glycerol (i.e. component ( c)) is present at less than 10% by weight of the polymer. Stated another way, components (a) and (b) are present at at least 90% by weight. Answer 11-12. After review of Bunczek' s disclosure, we are not persuaded by Appellants' argument and determine that the Examiner's finding is reasonable and supported by the record. In particular, Appellants' inability to explain what the numbers 0.1, 0.25 and 0.4 refer to in Examples P, Q, and R if not to the amount of glycerol renders their position unreasonable. Appellants have a second argument that the Examiner erred by finding that Examples P and Q describe the synthesis of polyesters in which components (a) and (b) comprise at least 90% by weight of the polymer. See Appeal Br. 20-21. In particular, Appellants argue that a person of ordinary skill in the art would understand that Bunczek's disclosure emphasizes the importance of end-capping the polyesters. Id. at 21. Appellants further argue that this emphasis would lead a person of ordinary skill in the art to conclude that every polymer described in the Table included in column 4 of Bunczek must have included some amount of end-capping monomers. Id. ("[O]ne skilled in the art would clearly understand that Examples P and Q must include some end-capping monomers, and in all likelihood given the teachings of Bunczek et al., a significant amount thereof."). Thus, Appellants conclude that Bunczek's Examples P and Q would include 7 Appeal2015-002205 Application 13/719,670 significantly less than 90% by weight of components (a) and (b) "because the weight of the end capping monomers plus the weight of the glycerol would account for more than 10% of the total weight of the polymer." Id. We are not persuaded by this argument. Notwithstanding Bunczek's extensive discussion of the use of end-capping monomers, a person of ordinary skill in the art would have understood that Examples P and Q do not include end-capping monomers. Bunczek describes the various experiments reported in its Specification in sufficient detail that a person of ordinary skill in the art would be able to replicate the experiments. Consistent with this level of detail, Bunczek clearly indicates when it shifts from describing the synthesis of non end-capped polyesters to end-capped polyesters. Bunczek col. 7, 11. 51-52 ("By way of example, and not limitation, examples of end-capped polyesters will now be given."). Appellants present an additional argument for reversal of the rejection of claim 1. See Appeal Br. 16-20. In particular, Appellants argue that the Examiner erred by finding that Bunczek describes or suggests a polyester polymer consisting of (a) at least one dicarboxylic acid, (b) at least one diol, and ( c) at least one compound having at least three groups capable of ester formation. Id. Appellants' argument is based upon their contention that Examples P and Q must have included an unstated amount of an undisclosed end- cappmg monomer. See id. at 17-20. As discussed above, this argument is not persuasive. For the reasons set forth above, we affirm the rejection of claims 1-11 and 13-20 as unpatentably obvious over Bunczek. Rejection 2. The Examiner rejected claim 12 is as unpatentable over the combination of Bunczek, Cook, and Muller. Final Act. 7; Answer 4. 8 Appeal2015-002205 Application 13/719,670 Claim 12 depends from claim 1. Appellant argues that the rejection of claim 12 should be reversed because neither Cook nor Muller remedy the alleged deficiencies in the Examiner's rejection of claim 1. Appeal Br. 26- 27. Because we have affirmed the rejection of claim 1, we also affirm the rejection of claim 12. CONCLUSION For the reasons set forth above, we affirm the rejection of claims 1-20 of the '670 Application. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a). AFFIRMED 9