Ex Parte Nissen et al

Patent Trial and Appeal Board

May 31, 2016

10543791 (P.T.A.B. May. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
10/543,791 07/28/2005
24126 7590 06/02/2016
ST ONGE STEW ARD JOHNSTON & REENS, LLC
986 BEDFORD STREET
STAMFORD, CT 06905-5619
Vibeke Nissen
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-P0013A 4666
EXAMINER
DEES, NIKKI H
ART UNIT PAPER NUMBER
1791
NOTIFICATION DATE DELIVERY MODE
06/02/2016 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 VIBEKE NISSEN, RITA BOGE ANDERSEN, and
NIELS RA VN SCHMIDT
Appeal2014-008517
Application 10/543,791
Technology Center 1700
Before PETER F. KRATZ, JEFFREY T. SMITH, and JAMES C. HOUSEL,
Administrative Patent Judges.
KRATZ, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner's second or subsequent rejection of claims 1, 3, 5, 6, 8-11, 14--16,
19-23, 25, and 28-30. We have jurisdiction pursuant to 35 U.S.C. § 6.
Appellants' claimed invention is directed to a chewing gum tablet
having a specified amount of gum base component content and comprising
at least two separate coherent chewing gum modules wherein at least one of
the modules includes a compressed gum base containing chewing gum
granules. The gum base component includes synthetic elastomer. Also, a
method of manufacturing the tablet is claimed.
Claim 1 is illustrative and reproduced below:
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Application 10/543,791
1. Chewing gum tablet comprising at least two separate
cohered chewing gum modules, at least one of said chewing
gum modules comprising compressed gum base containing
chewing gum granules, wherein the chewing gum tablet
comprises a gum base content of at least 5% by weight of the
table, and wherein the gum base comprises a synthetic
elastomer.
The Examiner relies on the following prior art references as evidence
in rejecting the appealed claims:
Beringer
Athanikar
us 4, 139,589
US 6,322,828 B 1
Feb. 13, 1979
Nov. 27, 2001
The Examiner maintains the following grounds of rejection:
Claims 1, 3, 5, 6, 8-11, 14--16, 19-23, 25, and 28-30 stand rejected
under 35 U.S.C. § 103(a) as being unpatentable over Beringer in view of
Athanikar. Claims 1, 3, 5, 6, 8-11, 14--16, 19-23, 25, and 28-30 stand
provisionally rejected on the ground of nonstatutory obviousness-type
double patenting over claims 1, 2, 4--10, 12-15, 17-30, 32-37, 39--42, 44,
46--49, 51-53, and 55-71 of co-pending U.S. Application No. 10/520,786.
Concerning the provisional obviousness type double patenting (ODP)
rejection, Appellants do not contest this rejection in the Appeal Brief.
Accordingly, we affirm the ODP rejection.
As for the rejection under 35 U.S.C. § 103(a) and after review of the
opposing positions articulated by Appellants and the Examiner and the
evidence of obviousness adduced by the Examiner in light of the
countervailing Declaration evidence proffered by Appellants, we determine
that the Appellants' arguments and evidence are insufficient to outweigh the
evidence of obviousness marshalled by the Examiner. Thus, Appellants
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have not identified reversible error in the Examiner's obviousness rejection.
In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011).
Accordingly, we affirm the stated obviousness rejection for
substantially the fact findings and the reasons set forth by the Examiner in
the non-Final Office Action 1 and in the Examiner's Answer. We offer the
following for emphasis only.
Appellants argue the rejected claims together as a group and present
substantially the same argument with respect to independent claims 1 and
28. Accordingly, we select claim 1 as the representative claim on which we
focus in deciding this appeal as to this rejection.
As more fully set forth in the Examiner's Answer and in the non-Final
Rejection, the Examiner has determined that Beringer teaches or suggests (1)
a multi-zone tablet (Example 12, see Figure 11 embodiment) wherein a gum
base granulate is mixed with a tablet mass granulate and the multi-zone
tablet is formed and (2) a multi-layered (three-layer) tablet composition
according to Examples 6-11, which multi-layer tablet can be manufactured
using gum base-containing granulate according to the Figure 10 embodiment
and wherein the multi-layer chewing gum tablet can include a middle layer
containing chewing gum base granules and outer layers comprising a
sweetener (Ans. 2-3, 8-25; see Beringer; abstract; col. 1, 11. 7-12; col. 2, 11.
3---62, col. 3, 11. 40-44, col. 6, 1. 30- col. 7, 1. 26; col. 7, 1. 46- col. 9, 1. 26;
Examples 1-12; Figs. 1, 10, 11). The Examiner has determined that each of
these embodiments taught or suggested by Beringer provide for a tablet
structure that corresponds to Appellants' tablet having at least two separately
1 Electronically delivered October 4, 2013.
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Application 10/543,791
cohered chewing gum modules2 with at least one module comprising
compressed gum base containing chewing gum granules as required by
representative claim 1 (id.).
As for the at least 5 weight percent gum base content of the tablet as
required by claim 1, the Examiner has determined/ calculated that the
Examples of Beringer are directed to multi-layered gum tablet compositions
that provide for a tablet gum base content that corresponds to the claimed
amount; hence use of an amount of gum base in the tablets of Beringer that
corresponds to the claimed amount would have been taught or suggested by
Beringer to one of ordinary skill in the art (Ans. 3, 8-15). 3
Concerning the claim 1 requirement that the gum base includes a
synthetic elastomer, the Examiner relies on Anthanikar for teaching or
suggesting the use of a synthetic elastomer as at least part of a gum base for
a granulated, compressed chewing gum product and maintains that one of
ordinary skill in the art would have been led to employ a known synthetic
elastomer as a gum base ingredient as an addition or substitute for the
natural gum base chicle component that is used in the chewing gum of
2 The claim term "module" is not defined in the subject Specification in a
manner so as to exclude a zone of the multi-zone tablet of Example 12, such
as a zone comprising gum granulate. While the claim term "module" may
be comprised of a layer, it is not limited thereto (Spec. 28, 11. 1-3).
Moreover, the Specification describes chewing modules that "may typically
be made on the basis of compressed gum granulates (Spec. 8, 11. 4--5).
Appellants disclose that "[g]um base granulates may be manufactured
according to conventional methods" (Spec. 8, 11. 25-26).
3 Appellants do not dispute the Examiner's calculation concerning the 24%
by weight chicle (gum base) content of the Example 1 tablet of Beringer
(Non-final Office Action 3--4; Ans. 3; see generally App. Br.).
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Beringer with a reasonable expectation of success in providing a suitable
tableted chewing gum product (Ans. 3--4; Athanikar, col. 4, 11. 21-25).
In light of the above and for reasons more fully set forth by the
Examiner in the Answer, a principal argument raised by Appellants-that is,
that Beringer does not teach or suggest a chewing gum tablet having
elements (i) and (ii) as said to be required by claims 1 and 28; that is, "at
least two separate[ly] cohered chewing gum modules, at least one of which
comprises compressed gum base-containing chewing gum granules"
[wherein] "the chewing gum tablet comprises a gum base content of at least
5% by weight of the tablet"-lacks persuasive merit (App. Br. 11-12).
In particular and concerning the Examiner's application of the Figure
11 (Example 12) embodiment of Beringer to these claimed features,
Appellants argue that this multi-zone tablet of Beringer comprises a single
module, rather than a tablet comprising at least two separately cohered
chewing gum modules as required by representative claim 1 (App. Br. 34--
36). However, Appellants have not established that one of ordinary skill in
the art would interpret the claim term "module" when read in light of the
subject specification to exclude irregularly arranged and cohered chewing
gum granules of a tablet as being separate modules such as would be
expected to be found in the multi-zone tablet of the Figure 11 (Example 12)
embodiment of Beringer as maintained by the Examiner (Ans. 24--25).
Consequently and for reasons expressed above and in the Answer,
Appellants' arguments are not persuasive of substantive error in the
Examiner's obviousness rejection given our claim construction of the claim
term "module".
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Even if we found, arguendo, that the multi-zone tablet of the Figure
11 (Example 12) embodiment of Beringer only includes a single module as
contended by Appellants in their claim construction argument, this claim
construction argument is unavailing as to the Examiner's further application
of Beringer to the claimed subject matter (in combination with Athanikar)
based on the multi-layer tablet taught and suggested therein in the Figure 10
embodiment, which tablet includes at least two modules (layers). 4
Concerning the Examiner's alternative application of Beringer based
on the Figure 10 embodiment and while unnecessary to the Examiner's
obviousness determination in light of the Example 12 (Figure 11) disclosure
of Beringer discussed above, Appellants' arguments, as contended to be
buttressed by the Declaration evidence, is not persuasive of reversible error
in the Examiner's alternative application of the Figure 10 embodiment in the
obviousness rejection for reasons as articulated by the Examiner (Ans. 2--4,
7-24). In particular, much of Appellants' argument and Declaration
evidence centers on Appellants' position that the Examiner misinterprets
Beringer as to the chewing gum formulation that the Examiner has
determined one of ordinary skill in the art would have employed in forming
a multi-layer chewing gum tablet in accordance with the Figure 10
embodiment; that is, a chewing gum formula as is exemplified in the
examples of Beringer, which as determined by the Examiner would have
included at least 5 weight percent gum base content for the chewing gum
tablet, as would have been recognized by one of ordinary skill in the art as
being applicable for formulating the gum composition for the Figure 10
4 The claim term "module" may comprise a layer (Spec. 28, 11. 1-3).
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embodiment tablet manufacture of Beringer according to the Examiner (see
generally App. Br. and Reply Br.).
Significantly and notwithstanding the multiple Declarations furnished
by Appellants and the lengthy presentation as to how Appellants believe one
of ordinary skill in the art would have interpreted Beringer, Appellants have
not directed our attention in the Appeal Brief to any test results or other
evidence that indicates why one of ordinary skill in the art would have
manufactured tablets according to the Figure 10 embodiment of Beringer in
a manner such that the multi-layer tablets would have been restricted to a
gum base content that is less than 5 weight percent; that is, a gum base
content weight percent that lies outside the 5% or more weight percent
limitation of representative claim 1 particularly given the example
compositions of Beringer that include gum base weight percent within the
claimed weight percent range of gum base as determined by the Examiner. 5
In this regard, the compositional limitations present in representative
claim 1 relate to the 5 weight percent gum base content limitation and the
further requirement that the gum base comprises a synthetic elastomer; that
is, that at least some portion of the gum base is any type of at least one
synthetic elastomer. With regard to the latter limitation, Appellants do not
persuasively articulate why one of ordinary skill in the art would not have
included any of the well-known synthetic elastomers as part of the gum base
5 Appellants define "gum base" as a term that "refers in general to the water-
insoluble part of the chewing gum which typically constitutes 10 to 90% by
weight including the range of 15-50% by weight of the total chewing gum
formulation (Spec. 8, 11. 7-10). Appellants acknowledge that "[g]um base
granulates may be manufactured according to conventional methods" (Spec.
8, 1. 25).
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of Beringer for its Figure 10 embodiment in light of the additional teachings
of Athanikar for reasons set forth by the Examiner (Ans. 3--4, 8-24). In
particular, we observe that representative claim 1 is not limited as to the
particular synthetic elastomer(s) employed and/or the amount of the gum
base that comprises synthetic elastomer. Indeed, Appellants disclose that
"[ c ]hewing gum base formulations typically comprise one or more
elastomeric compounds which may be of synthetic or natural origin" and
"[i]t is common in the industry to combine in a gum base a synthetic
elastomer ... (Spec. 8, 11. 10-14; Spec. 25, 11. 4--11). These disclosures
appear to partially undercut Appellants' argument.
For reasons set forth above and for reasons articulated by the
Examiner, the three cited Declarations by Dr. Jesper Neergaard fail to shift
the weight of the evidence in Appellants' favor upon reconsideration anew
in light of all of the relevant evidence (App. Br. Evidence Appendix). 6
In the Declaration executed on April 29, 2011 (Deel. I), Dr. Neergaard
opines that the granule plastic mass of Examples 6 through 12 of Beringer
are suitable for a single layer multi-zone tablet of Beringer and would yield
non-sticky granules, Examples 1 through 5 of Beringer address a pre-formed
disc embodiment of Beringer, and none of the compositions of Examples 1-
12 of Beringer would be suitable for the Figure 10 multi-layer tablet forming
embodiment of Beringer (Deel. I i-fi-16-11). Dr. Neergaard further opines
that chewing gum tablets require new chewing gum formulations and that
traditional chewing gum compositions are not generally applicable for use in
manufacturing chewing gum tablets (Deel. I i-fi-f 12-15).
6 Appellants acknowledge the lack of reliance on a previously filed
Declaration as evidence of unexpected results in this appeal (Reply Br. 3).
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In the Declaration executed on June 19, 2012 (Deel. II), Dr.
Neergaard reports that attempts at manufacturing three-layered tablets via
the Figure 10 technique of Beringer while using a plastic mass granulate
composition in accordance with Example 6 of Beringer did not successfully
yield useful three-layer chewing gum tablets because of poor mechanical
properties and that similar failures would be expected for the granulate
plastic mass compositions of Examples 7-11 of Beringer (Deel. II i-fi-14, 5,
Exhibit A).
In the Declaration executed on April 15, 2013 (Deel. III), Dr.
Neergaard reiterates, inter alia, the unsuccessful previous attempt at
producing multi-layer tablets via the Figure 10 technique of Beringer and
expresses Dr. Neergaard's opinion that Beringer does not disclose using
chicle for the Figure 10 embodiment and Dr. Neergaard would not consider
replacing chicle with a synthetic elastomer as gum base in Beringer's Figure
10 embodiment "in view of the conventional wisdom in the art" with any
reasonable expectation of success because a synthetic elastomer is known to
be non-tacky whereas an adhering material was required for the gum base
material of the multi-layer tablet of Beringer (Deel. III i-fi-f 10-19).
Appellants contend that the submitted Declaration evidence
substantiate or buttress their argument that Beringer would not have led one
of ordinary skill in the art to a multi-layer product gum tablet formed by
employing granulates in making gum base-containing layer(s) by employing
a gum base composition as required by representative claim 1 when using
the Figure 10 embodiment taught by Beringer for making the multiple layer
tablet and using a gum composition in accordance with the Examples of
Beringer, as modified by Athanikar, for the gum base-containing plastic
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layer. In this regard and consistent with the Declaration evidence,
Appellants argue that Examples 2 through 12 of Beringer, as well, as
Example 1, are directed to other embodiments of Beringer, not the Figure 10
embodiment, and an ordinarily skilled artisan would not have modified the
Figure 10 embodiment to employ compositions as set forth in the Examples
of Beringer for a middle plastic granular layer as they would have been
unsuitable for forming a gum tablet via the Figure 10 embodiment as
substantiated by the Declarations of Dr. N eergaard.
Contrary to the argument and evidence furnished by Appellants,
however, we concur with the Examiner's obviousness conclusion because
the applied prior art taken as a whole outweighs the evidence furnished by
Appellants for the reasons articulated by the Examiner (Ans. 2--4, 7-25). In
particular, we concur with the Examiner that Beringer teaches using a
granulated plastic mass in the Figure 10 embodiment and would have
reasonably suggested to one of ordinary skill in the art to use a plastic mass
for granulation like the plastic masses described in the examples, such as
Example 6 (Ans. 15-24). In this regard, we further observe that Dr.
Neergaard's attempt at manufacturing tablets by duplicating the Figure 10
method of Beringer fall short by cooling the plastic mass to -7 5°C for the
grinding/granulation given that Beringer, in describing the Figure 10
embodiment for making a multi-layer tablet using granules for the layers,
teaches that granulation of the chewing gum mass should be conducted at a
temperature between - 20 to + 10°C (Deel. II, Exhibit A; Beringer, col. 6, 11.
56-59; Example 6). Moreover, the ingredients employed in Example 6 of
Beringer were not duplicated, as noted in the plastic mass preparation
description provided in the Declaration, and merely stating that the relatively
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small amounts of the ingredients used by Beringer that were omitted from
the duplication effort for lack of availability were unimportant fails to
adequately address the effect of this formulation duplication deviation (Deel.
II, Exhibit A). Nor have Appellants established that one of ordinary skill in
the art would not have been able, through routine experimentation, to
perform adjustments to the gum composition (such as by adding additional
known tablet binders, etc.) and adjust relevant process conditions so as to
yield tablets having acceptable physical characteristics using the Figure 10
embodiment of Beringer. Consequently, Appellants have not carried the
burden of production in presenting evidence sufficient to establish Beringer
as being unworkable for the Figure 10 embodiment. 7
In this regard, Beringer expressly teaches that "[t]he various layers of
tablet mass and various elements or layers of plastic mass of one and the
same tablet may have different substances mixed in with them and/or be
differently coloured" (Beringer, col. 4, 11. 8-12). Moreover, Beringer
expresses a recommendation for proceeding with using granulate for the
plastic mass just as with the tablet mass (Beringer, col. 2, 11. 5-19). Beringer
describes the Figure 10 embodiment as being suitable for making a multi-
layer tablet in accordance with Figure 1 and Beringer describes
compositions in Examples 1 through 11 for the three-layer tablet according
to Figure 1 (col. 6, 11. 3 0-3 5; col. 7, 1. 48 - col. 9, 1. 17). In addition,
Beringer describes placing the granulate made in Example 6 from plastic
mass in a mold not in a mixer as occurs in Example 12 and the Figure 11
single layer tablet embodiment. Thus, we disagree with Appellants'
7 Indeed, Appellants acknowledge that they are not attempting to establish
that individual embodiments of Beringer are non-enabling (Reply Br. 3).
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contention that Beringer would have discouraged one of ordinary skill in the
art from employing compositions, such as identified and disclosed in
Examples 1 through 11 of Beringer as a plastic mass composition for use in
the Figure 10 embodiment of Beringer.
Consequently, Appellants have not identified reversible error in the
Examiner's obviousness rejection and the preponderance of the evidence
supports the Examiner's fact findings and reasoning in maintaining the
rejection.
For the reasons set forth above and as stated by the Examiner in the
Answer, it follows that we shall sustain the Examiner's obviousness
rejection.
CONCLUSION/ORDER
The Examiner's decision to reject the appealed claims 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).
AFFIRMED
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