Ex Parte Wittorff

Patent Trial and Appeal BoardApr 25, 2016

10585019 (P.T.A.B. Apr. 25, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 10/585,019 04/17/2007 24126 7590 04/27/2016 ST ONGE STEW ARD JOHNSTON & REENS, LLC 986 BEDFORD STREET STAMFORD, CT 06905-5619 Helle Wittorff 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-P0017A 4929 EXAMINER GWARTNEY, ELIZABETH A ART UNIT PAPER NUMBER 1791 NOTIFICATION DATE DELIVERY MODE 04/27/2016 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 HELLE WITTORFF 1 Appeal2014-005771 Application 10/585,019 Technology Center 1700 Before CHUNG K. PAK, MICHAEL P. COLAIANNI, and JULIA HEANEY, Administrative Patent Judges. COLAIANNI, Administrative Patent Judge. DECISION ON APPEAL 1 The Appellant identifies the real party in interest as "Gmnlink A/S" (Appeal Brief filed November 25, 2013 ("App. Br.") 3). Appeal2014-005771 Application 10/585,019 Appellant appeals under 35 U.S.C. Â§ 134 the final rejection of claims 1--4, 9--26, and 28-32. We have jurisdiction over the appeal pursuant to 35 U.S.C. Â§ 6(b). We AFFIRM. Appellant's invention relates to chewing gum granules, particularly, gum base granules comprising a biodegradable polymer having a water content of less than 1.0% by weight of the gum base. (Spec. 2, 11. 10-11, App. Br. 28, claim 1 (emphasis added). Claim 1 is the sole independent claim and is representative. 1. Gum base granules for a compressed chewing gum, said gum base granules comprising at least one biodegradable gum base polymer in an amount of about 1 % to about 100% by weight of the gum base, wherein said gum base granules have a water content of less than 1. 0% by weight of the gum base. Appellant appeals the following rejections under 35 U.S.C. Â§ 103(a): I. Claims 1, 2, 4, 9, 10, 13, 19, 23, 24, 26, and 28-32 2 as unpatentable over Leadbeater3 in view of Grijpma4 (Final Action dated April 9, 2013 ("Final Act.") 2---6; Examiner's Answer dated February 14, 2014 ("Ans.") 3-7). 2 The statement of the rejection identifies claims "18-32" (Final Rej. 2; Ans. 3). From the body of the rejection, however, it is evident that the claims under rejection are 28-32. We find the misidentification of claims in the statement of the rejection to be harmless error. 3 U.S. Patent Application Publication No. 2005/0220934 Al to Leadbeater et al. issued October 6, 2005. 4 U.S. Patent No. 5,672,367 to Grijpma et al. issued September 30, 1997. 2 Appeal2014-005771 Application 10/585,019 II. Claims 1-3, 8-18, 20-23, 25, 26, and 28-32 as unpatentable over Gmunder5 in view of Leadbeater and Bunczek6 (Final Rej. 6-11; Ans. 7-12). III. Claim 19 as unpatentable Over Gmunder in View of Leadbeater and Bunczek and further in view of Wittorff7 (Final Rej. 12; Ans. 12). Appellant's arguments focus on claim 1 only. Any claims not argued separately with regard to Rejections (I-III) will stand or fall with our analysis regarding claim 1. FINDINGS OF FACT & ANALYSIS REJECTION (I): Claims 1, 2, 4, 9, 10, 13, 19, 23, 24, 26, and 28-32. The Examiner finds that Leadbeater discloses gum base granules for compressed gum compnsmg elastomeric polymers but does not teach gum base granules containing a biodegradable polymer or the water content of the granules as recited in claim 1 (Final Act. 2-3). The Examiner finds that Grijpma teaches a chewing gum base including biodegradable polymers and that these polymers contain unstable bonds that are preferably broken down under the influence of light or hydrolytically into components that are water- soluble and non-toxic (Final Act. 3). The Examiner concludes that it would have been obvious to one skilled in the art to replace the non-degradable elastomers in Leadbeater's with biodegradable polymers to obtain a chewing 5 U.S. Patent No. 6,200,608 Bl to Gmunder et al. issued March 13, 2001. 6 U.S. Patent No. 6,017,566 to Bunczek et al. issued January 25, 2000. 7 WO 02/076230 Al to Wittorff et al. published October 3, 2002. 3 Appeal2014-005771 Application 10/585,019 gum whose organic component is biodegradable after use (Final Act. 3--4). The Examiner further concludes that when employing biodegradable polymers, a person skilled in the art would have formulated the chewing gum base with a minimal amount of water to maintain the stability of the polymers and that determining the optimal amount of water requires nothing more than routine experimentation (Final Act. 4 ). Appellant argues that the water content of the gum base granules is "nowhere disclosed, taught or suggested" in Leadbeater or Grijpma (App. Br. 10). Appellant contends that it was the first to recognize the importance of water content prior to chewing, that there is "no hint in the prior art that the already relatively low moisture content of typical chewing gum pre-chew ... may be an issue" and, therefore, that determining water content involves more than routine experimentation because water is incidentally used in chewing gum manufacture (App. Br. 11-15, 20-21). Appellant further contends that Grijpma would not lead one skilled in the art to lower the already low water content in manufactured chewing gum and that the Examiner's conclusions are based on hindsight (App. Br. 17-20; Reply Brief entered April 11, 2014 ("Reply Br.") 2-6). Appellant also relies upon the Neergaard Declaration8 (App. Br. 15-16). We are not persuaded by Appellant's contentions that neither Leadbeater nor Grijpma explicitly disclose the amount of water in their respective gum granules and that the water content in pre-chewing conditions is not a result effective variable in chewing gum manufacture. The Examiner correctly determined that the claimed subject matter would 8 Declaration under 37 C.F.R. 1.132 of Jesper Neergaard, filed Feb. 7, 2013 (hereinafter "N eergaard Declaration"). 4 Appeal2014-005771 Application 10/585,019 have been obvious to one of ordinary skill in the art within the meaning of Â§ 103 in view of the teachings of Leadbeater and Grijpma. As the Examiner reasonably finds, in view of Grijpma's teachings regarding the hydrolytic degradation of biodegradable polymers, one of ordinary skill in the art would have been aware that biodegradable polymers degrade in the presence of water (Ans. 13-14). Appellant does not contest this finding by the Examiner regarding Grijpma (Reply Br. 2-6). Since the Examiner's finding is uncontested and it has not been shown to be clearly erroneous, we accept it as fact. In re Kunzmann 326 F2d 424, 425 n.3 (CCPA 1964). Accordingly, the ordinarily skilled artisan would have appreciated that water content is a result effective variable in a gum containing a biodegradable polymer since the hydrolytic bonds of the polymer will break down in the presence of water as found by the Examiner (Ans. 13-14). The prior art's recognition that biodegradable polymers are hydrolytically unstable would have strongly suggested to the ordinarily skilled artisan that moisture (i.e., water) should be minimized in a biodegradable gum composition prior to its use (Ans. 14--15). With respect to Appellant's argument contending that Appellant is the first to discover the significance of relatively small amounts of water itself prior to chewing to avoid byproducts of pre-degradation of biodegradable polymers (e.g., App. Br. 18), there is no evidence submitted by Appellant as to what levels of water content actually exist in prior art gums (generally App. Br.; Reply Br.). The fact that Appellant may have recognized another property that would flow naturally from following the applied prior art's teaching or suggestion for the amounts of the components of the biodegradable gum cannot be the basis for patentability when the 5 Appeal2014-005771 Application 10/585,019 differences, if any, would otherwise have been obvious. In re Kao, 639 F.3d 1057, 1070 (Fed. Cir. 2011) ("Maloney's express teachings render the claimed controlled release oxymorphone formulation obvious, and the claimed 'food effect' adds nothing of patentable consequence."). See also Ex parte Obiaya, 227 USPQ 58, 60 (BPAI 1985). Appellant has also not submitted any evidence showing that this water content concentration provides an unexpected result, nor does Appellant provide any persuasive evidence that chewing gum made following the teachings of the applied prior art would not have naturally resulted in such a range for the water content (see generally App. Br.; Reply Br.). See In re Boesch, 617 F.2d 272, 276 (CCPA 1980). See also, In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990), and In re Aller, 220 F.2d 454, 456 (CCPA 1955). As to the N eergaard Declaration, contrary to Appellant's argument, the Examiner did not disregard Appellant's submitted evidence (see, e.g., App. Br. 15). Rather, the Examiner found the evidence insufficient to outweigh the evidence of obviousness (Final Rej. 12-17; Ans. 16). The Neergaard Declaration does not contain any reasonably specific factual support for prior art water levels in biodegradable gums to substantiate the opinion evidence contained therein regarding whether it would have been obvious to minimize the amount of water in biodegradable gums based upon the teachings of the Examiner's applied prior art. Declarant's statements that Grijpma's teachings regarding the bonds of the biodegradable polymer being hydrolytically unstable would have suggested controlling the water content after use of the gum, rather than prior to use, have been considered. Declarant's analysis, however, is based upon Grijpma's failure to teach the 6 Appeal2014-005771 Application 10/585,019 criticality of the water content of the gum prior to use (Declaration i1i1 16- 18 ). Such analysis does not rebut the Examiner's finding that Grijpma's teachings related to the hydrolytically unstable biodegradable polymer would have suggested minimizing the water content of the pre-chewed gum to extend stability of the gum prior to use and avoid premature degradation of the gum (Ans. 14). Degradation of the gum in the environment after use would occur naturally when the gum is exposed to water. We give more weight to the cited prior art teachings and disclosures than the unsubstantiated opinions of an interested party9 regarding the obviousness of the claimed invention. Thus, we discern no reversible error in the Examiner's assessment of the weight to be given to the Neergaard Declaration. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) (" [T]he Board is entitled to weigh the declarations and conclude that the lack of factual corroboration warrants discounting the opinions expressed in the declarations."). See also, Velander v. Garner, 348 F .3d 1359, 1371 (Fed. Cir. 2003) ("In giving more weight to prior publications than to subsequent conclusory statements by experts, the Board acted well within [its] discretion."); Yorkey v. Diab, 601F.3d1279, 1284 (Fed. Cir. 2010) (The Board has discretion to give more weight to one item of evidence over another "unless no reasonable trier of fact could have done so"). Based on this record, we find that the preponderance of the evidence favors the Examiner's obviousness conclusion and affirm this rejection. 9 Dr. Neergaard's Declaration states that he is employed by "Chew Tech I/S, which is a R&D company owned by Gumlink A/S, assignee of the above captioned patent application." (Declaration i-f 2). 7 Appeal2014-005771 Application 10/585,019 REJECTION (II): Claims 1-3, 8--8, 20-23, 25, 26, and 28-32. The Examiner finds that Gmunder discloses a particulated gum base comprising elastomers and fillers that is free of liquid ingredients but does not teach the gum base containing a biodegradable polymer, its water content or the gum base being used in compressive tablets (Final Act. 7). The Examiner finds Leadbeater teaches compressed chewing gum and Bunczek suggests biodegradable polymers in gum base (Final Act. 7-8). The Examiner concludes that it would have been obvious to make a compressed chewing gum using Gmunder's particulated base gum and that it can further include a biodegradable polymer in accordance with Leadbeater and Bunczek's teachings (Final Act. 7-8). The Examiner further finds that biodegradable polymers are hydrolytically unstable and concludes that upon employing biodegradable polymers, a person skilled in the art would have formulated the chewing gum base with a minimal amount of water to maintain the stability of the biodegradable polymers and that determining the optimal amount of water requires nothing more than routine experimentation (Final Act. 8). Similar to the response to Rejection (I), Appellant contends that the water content of the gum base granules is not taught or suggested in the cited prior art (App. Br. 22-23), that the prior art recognizes water content as a result effective variable "during and after chewing" but not pre-chewing (App. Br. 23), and that water is incidentally found in various ingredients during chewing gum manufacture and would not be optimized by experimentation (App. Br. 24--25). We agree with the Examiner that the claimed subject matter would have been prima facie obvious to one skilled in the art for the same reasons 8 Appeal2014-005771 Application 10/585,019 discussed previously regarding Rejection (I). Particularly, Appellant does not contest the Examiner's finding that Gmunder's gum base is free of liquid or the finding that biodegradable polymers are hydrolytically unstable (Ans. 15-17; Reply Br. generally). Because Appellant did not specifically respond to these findings other than to reiterate the same arguments made traversing Rejection (I) (App. Br. 22-24), Appellant has not shown error with the Examiner's specific findings and they are accepted as fact. In re Kunzmann 326 F2d 424, 425 n.3 (CCPA 1964). Appellant argues that the Examiner's findings in the Non-Final Office Action dated August 21, 2012 that Bunczek and Grijpma fail to teach that the elastomers normally degrade prior to use is contradicted by the finding in the Final Office Action dated April 9, 2013 that Grijpma's and Bunczek's teachings would have suggested formulating a chewing gum base comprising a minimal amount of water to maintain the stability of the polymers prior to use (App. Br. 24-25). Appellant argues again that the Neergaard Declaration addresses these shortcomings of the Examiner's case in paragraphs 19 and 37, which are not subsequently addressed by the Examiner. Id. These arguments are unpersuasive for the same reasons discussed above regarding the rejection over Leadbeater and Grijpma. The Examiner's position on page 14 of the Non-Final Office Action dated August 21, 2012 referred to by Appellant was directed to Appellant's argument that there is no reasonable expectation of successfully using Bunczek's biodegradable polymers for Gmunder's gum base polymer because one would expect the biodegradable polymer to degrade (Non-Final Act. dated Aug. 21, 2012, 13- 14). Accordingly, the Examiner finds that there is a reasonable expectation 9 Appeal2014-005771 Application 10/585,019 of success in using the biodegradable polymers of Bunczek in lieu of Gmunder's gum base polymer as the reference does not indicate that the biodegradable polymers degrade prior to use. The Examiner finds in the Non-Final Action dated August 21, 2012 at pages 4 to 5 and the Final Office Action dated April 9, 2013 page 8 that the water content of the gum incorporating Bunczek' s biodegradable polymer would have been minimized to maintain stability of the gum. In other words, the Examiner's positions are not inconsistent as alleged by Appellant. Rather, the Examiner finds that there is a reasonable expectation of that Bunczek's biodegradable polymer would work in Gmunder's gum composition when the water content is minimized to prevent degradation of the biodegradable polymer. The Examiner has considered the N eergaard Declaration including paragraphs 19 and 3 7 and found it insufficient to overcome the prima facie case of obviousness as noted above with regard to rejection (I). Consequently, based on this record, we affirm this rejection for the reasons discussed above. REJECTION (III): Claim 19 Claim 19 depends from claim 1. Appellant contends that because this claim requires the water content of the granules be present in the range recited in claim 1 and Wittorff was cited for its teachings concerning pharmaceutically or biologically active substances, Wittorff does not remedy the deficiencies of Gmunder, Leadbeater and Bunczek. However, as discussed previously, Appellant's arguments traversing the Examiner's findings as to the water content limitation of claim 1 are unavailing. 10 Appeal2014-005771 Application 10/585,019 Thus, based on this record, we sustain this rejection for the same reasons discussed supra. CONCLUSION Accordingly, on this record and for the above reasons, we sustain Rejections (I-III) of claims 1--4, 9-26, and 28-32 over the cited prior art. DECISION The Examiner's Â§103 rejections are affirmed. 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 11