2020002011 (P.T.A.B. Jan. 6, 2021)

ALTRIA CLIENT SERVICES LLC

Patent Trials and Appeals BoardJan 6, 2021

2020002011 (P.T.A.B. Jan. 6, 2021)

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. 14/505,965 10/03/2014 Feng Gao 24000FR-000261-US-01 1083 127542 7590 01/06/2021 Harness, Dickey & Pierce-Altria 11730 Plaza America Drive, Suite 600 Reston, VA 20190 EXAMINER AHMED, HASAN SYED ART UNIT PAPER NUMBER 1615 NOTIFICATION DATE DELIVERY MODE 01/06/2021 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): dcmailroom@hdp.com gyacura@hdp.com jhill@hdp.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte FENG GAO, DIANE L. GEE, PHILLIP M. HULAN, SHUZHONG ZHUANG, WILLIAM J. BURKE, and GERD KOBAL1 ____________ Appeal 2020-002011 Application 14/505,965 Technology Center 1600 ____________ Before JEFFREY N. FREDMAN, DEBORAH KATZ, and JOHN G. NEW, Administrative Patent Judges. NEW, Administrative Patent Judge. DECISION ON APPEAL 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies Altria Client Services LLC as the real party-in-interest. App. Br. 2. Appeal 2020-002011 Application 14/505,965 2 SUMMARY Appellant files this appeal under 35 U.S.C. § 134(a) from the Examiner’s Final Rejection of claims 1, 5, 6, 9–16, 18–30, 39, and 42 as unpatentable under 35 U.S.C. § 103 as being obvious over the combination of Duggins et al., US 2013/0206150 A1, August 15, 2013 (“Duggins”), Cherukuri, US 2010/0010101 A1, January 14, 2010 (“Cherukuri”), and Meyers et al., US 5,236,719, August 17, 1993 (“Meyers”). Claims 1, 5–16, 18–30, 36–39, and 42 also stand rejected as unpatentable under 35 U.S.C. § 103 as being obvious over the combination of Duggins, Cherukuri, Meyers, and Gao et al., US 2013/0186417 A1, July 25, 2013 (“Gao”). Claims 1, 5–16, 18–30, 36–39, and 42 further stand provisionally rejected as unpatentable under the nonstatutory doctrine of obviousness-type double patenting as being obvious over claims 1–35 of copending US Ser. No. 14/505,939 (the “’939 application”), claims 1–29 of copending US Ser. No. 14/505,834 (the “’834 application”), and claims 1–31 of copending US Ser. No. 14/505,814 (the “’814 application”). We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. NATURE OF THE CLAIMED INVENTION Appellant’s claimed invention is directed to dissolvable-chewable tables that can include one more additives within a solid solution of soluble fiber and one or more sugar alcohols. Spec. 1. Appeal 2020-002011 Application 14/505,965 3 REPRESENTATIVE CLAIM Claim 1 is representative of the claims on appeal and recites: 1. A dissolvable-chewable tablet comprising: a solid solution having a glass transition temperature ranging from about -75°C to about 40°C, the solid solution including, soluble fibers present in an amount greater than or equal to about 20 weight percent, and a sugar alcohol present in an amount greater than or equal to about 20 weight percent; and an additive dispersed in the solid solution, the additive being configured to be released from the tablet when the tablet is chewed or dissolved. App. Br. 24. ISSUES AND ANALYSIS We agree with, and expressly adopt, the Examiner’s findings, reasoning, and conclusion that the claims are obvious over the combined cited prior art. We address below the arguments raised by Appellant. A. Rejection of claims 1, 5, 6, 9–16, 18–30, 39, and 42 over Duggins, Cherukuri, and Meyers Issue Appellant argues that the Examiner erred because the combined references do not teach or suggest a solid solution of soluble fibers and sugar alcohol. App. Br. 16–21. Appeal 2020-002011 Application 14/505,965 4 Analysis The Examiner finds that Duggins teaches a dissolvable smokeless tobacco product. Final Act. 5 (citing Duggins Abstract, ¶ 5). The dissolvable product may include a sugar alcohol capable of forming a glassy matrix, at least 20% of an organic filler, e.g., maltodextrin, and an additive. Id. (citing Duggins ¶¶ 51, 62, and 69). The Examiner finds that Cherukuri and Meyers teach the benefits of using a soluble fiber, e.g., maltodextrin, as a bulking agent in a dissolvable-chewable tablet. See id. at 6–7. The Examiner finds that maltodextrin is a free-flow imparting agent that aids in moisturizing a chewable composition when chewed without contributing to dental caries, causing gastro-intestinal disturbances, or significantly contributing calories. Id. (citing Cherukuri ¶¶ 77, 120, 312–334; Meyers col. 1, ll. 43–55). The Examiner finds that a person of ordinary skill in the art would have been motivated to include a soluble fiber, e.g., maltodextrin, as a bulking agent in Duggins’ dissolvable tablet, to obtain the benefits taught by Cherukuri and Myers. See Final Act at 7. The Examiner finds that the resulting composition contains the same components in the same configuration as the prior art, and it is Appellant’s burden to show that the claimed properties would have been absent in the prior art composition. Id. at 6 (citing In re Best, 562 F.2d 1252, 1255 (C.C.P.A. 1977)). Therefore, the Examiner concludes that, at the time of Appellant’s invention, it would have been obvious to a person of ordinary skill in the art to prepare a claimed dissolvable-chewable tablet comprising an additive dispersed in a solid solution of soluble fiber and sugar alcohol. Id. at 7. Appeal 2020-002011 Application 14/505,965 5 Appellant argues that Duggins does not teach a solid solution of a sugar alcohol and soluble fiber. App. Br. 16–17. Appellant argues that Duggins teaches a dissolvable lozenge formulation in paragraph [0069] that “does not include soluble fibers, and therefore cannot relate to the formation of a solid solution including soluble fibers.” Id. at 17 (internal footnote omitted); see also id. at 18–19 (Duggins’ Example 1, ¶ 94, “lozenge-type formulations do not include soluble fibers”). Moreover, Appellant argues that Duggins’ “lozenge-type formulation could not be modified to include greater than or equal to 20 weight percent soluble fibers,” because of the disclosed amounts of tobacco extract and sugar substitute. Id. at 17–18. We are not persuaded by Appellant’s argument. The question before us is not whether Duggins anticipates the claimed tablet by disclosing the identical formulation, but “whether the teachings of the prior art, taken as a whole, would have made obvious the claimed invention.” In re Gorman, 933 F.2d 982, 986 (Fed. Cir. 1991). We begin with the claimed “solid solution.” Appellant’s Specification does not provide an express definition for a “solid solution.” See Spec., generally. Absent an express definition, we adopt the broadest reasonable interpretation of the claim term consistent with the Specification. See In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Appellant’s Specification explains that “[a]t ambient temperatures, the solid solution can be amorphous and glassy.” Spec. p. 2, l. 17. Duggins teaches a dissolvable lozenge-type formulation including a sugar alcohol that forms a glassy matrix. Duggins ¶ 69. Absent evidence to the contrary, Duggins teaches a solid solution according to the broadest reasonable interpretation of the claim. Appeal 2020-002011 Application 14/505,965 6 We next consider Appellant’s argument that Duggins does not teach a solid solution including a soluble fiber. Duggins’ solid solution embodiment includes a sugar alcohol, e.g., isomalt, a filler, e.g., maltitol syrup, and an additive, e.g. tobacco extract. Duggins ¶ 69. However, Duggins’ teachings are not limited to a single embodiment as picking, choosing, and combining various disclosures within the reference is entirely proper in the making of a 103, obviousness rejection. See In re Arkley, 455 F.2d 586, 587 (CCPA 1972). For example, Duggins teaches that the disclosed compositions may include organic fillers that fulfill multiple functions, “such as enhancing certain organoleptic properties such as texture and mouthfeel, enhancing cohesiveness or compressibility of the product, and the like.” Duggins ¶ 62. Duggins teaches that “[c]ombinations of a sugar alcohol with a further filler component can also be used,” and the representative amount of organic filler may make up at least about 20 % of the total dry weight of the composition. Id. Duggins teaches organic fillers including maltitol (para. 0062), and soluble fibers, such as maltodextrin, corn starch, cellulose, and gum arabic. Duggins ¶ 51. Accordingly, Duggins suggests a soluble fiber as a filler that can be combined with a sugar alcohol, in an amount greater than about 20% to form a solid solution. The Examiner cites Cherukuri and Meyers for the motivation to use maltodextrin as an organic filler or bulking agent in Duggins’ solid solution to improve the organoleptic properties of the composition. See Duggins ¶ 62; Meyers col. 1, ll. 42–55; and Cherukuri ¶ 77 (“[t]he use of a diluent/bulking material is necessary to serve as a free-flow imparting agent which aids in the moisturizing of the composition when chewed.”). Appellant does not substantively address the teachings of Duggins in Appeal 2020-002011 Application 14/505,965 7 combination with Cherukuri and Meyers, relying on their arguments against Duggins alone. See App. Br. 21. However, “[n]on-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references.” In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Because the Examiner rejects the claims over the combination of Duggins, Cherukuri and Meyers, Appellant’s argument that Duggins alone does not suggest adding a soluble fiber to a solid solution of sugar alcohol and additive is not persuasive of Examiner error. We consequently affirm the Examiner’s rejection of claims 1, 5, 6, 9– 16, 18–30, 39, and 42 on this ground. B. Rejection of claims 1, 5–16, 18–30, 36–39, and 42 over Duggins, Cherukuri, Meyers, and Gao Appellant argues that Gao fails to cure the alleged deficiencies of the remaining references, as argued supra. App. Br. 22. We have explained why we affirm the Examiner’s rejection over Duggins, Cherukuri, and Meyers, and we incorporate that reasoning by reference here. We consequently affirm the Examiner’s rejection of claims 1, 5–16, 18–30, 36– 39, and 42 on this ground. C. Rejection of claims 1, 5–16, 18–30, 36–39, and 42 for nonstatutory obviousness-type double patenting In the Appeal Brief, Appellant does not argue the Examiner’s sustained provisional rejection of claims 1, 5–16, 18–30, 36–39, and 42 as unpatentable under the nonstatutory doctrine of obviousness-type double patenting over claims 1–35 of the ’939 application, claims 1–29 of the ’834 Appeal 2020-002011 Application 14/505,965 8 application, and claims 1–31 of the ’814 application. See Ans. 3 (every ground of rejection is maintained). Furthermore, Appellant has not filed a terminal disclaimer to moot these rejections. We therefore summarily affirm the rejection of claims 1, 5–16, 18–30, 36–39, and 42 on these grounds. See 37 C.F.R. § 41.37(c)(iv) (“[A]ny arguments or authorities not included in the appeal brief will be refused consideration by the Board for purposes of the present appeal”). CONCLUSION The rejection of claims 1, 5–16, 18–30, 36–39, and 42 as unpatentable under 35 U.S.C. § 103 is affirmed. The rejection of claims 1, 5–16, 18–30, 36–39, and 42 under the nonstatutory doctrine of obviousness-type double patenting 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 Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 5, 6, 9–16, 18–30, 39, 42 103 Duggins, Cherukuri, Meyers 1, 5, 6, 9– 16, 18–30, 39, 42 1, 5–16, 18–30, 36–39, 42 103 Duggins, Cherukuri, Meyers, Gao 1, 5–16, 18– 30, 36–39, 42 Appeal 2020-002011 Application 14/505,965 9 Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 5–16, 18–30, 36–39, 42 Non-statutory double patenting Claims 1–35 of Application No. 14/505,939 1, 5–16, 18– 30, 36–39, 42 1, 5–16, 18–30, 36–39, 42 Non-statutory double patenting Claims 1–29 of Application No. 14/505,834 1, 5–16, 18– 30, 36–39, 42 1, 5–16, 18–30, 36–39, 42 Non-statutory double patenting Claims 1–31 of Application No. 14/505,814 1, 5–16, 18– 30, 36–39, 42 Overall Outcome 1, 5–16, 18– 30, 36–39, 42