Ex Parte Andersen et al

Board of Patent Appeals and Interferences

Feb 24, 2012

10528926 (B.P.A.I. Feb. 24, 2012)

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.
10/528,926 12/16/2005 Lone Andersen 05198-P0008A 6586
24126 7590 02/24/2012
ST. ONGE STEWARD JOHNSTON & REENS, LLC
986 BEDFORD STREET
STAMFORD, CT 06905-5619
EXAMINER
DEES, NIKKI H
ART UNIT PAPER NUMBER
1781
MAIL DATE DELIVERY MODE
02/24/2012 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte LONE ANDERSEN and HELLE WITTORFF
________________

Appeal 2011-004896
Application 10/528,926
Technology Center 1700
________________

Before ADRIENE LEPIANE HANLON, TERRY J. OWENS, and KAREN
M. HASTINGS, Administrative Patent Judges.

OWENS, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1, 2, 4-6, 8, 10-13, and 15-66, which are all of the
pending claims. We have jurisdiction under 35 U.S.C. § 6(b).
The Invention
The Appellants claim a chewing gum. Claim 1 is illustrative:

Appeal 2011-004896
Application 10/528,926

2
1. Chewing gum comprising at least two different biodegradable
polymers,
wherein said at least two different biodegradable polymers have a
different glass transition temperature Tg,
wherein at least one of the biodegradable polymers has a glass transition
of at least + 1°C,
wherein at least one of the at least two different biodegradable polymers
has a glass transition temperature of less than 0 °C and
wherein the difference in molecular weight between the at least two different
biodegradable polymers is at least 1000 g/mol Mn.

The References
Meyers 5,433,960 Jul. 18, 1995
Grijpma 5,672,367 Sep. 30, 1997
Bunczek 6,013,287 Jan. 11, 2000
Li 6,153,231 Nov. 28, 2000
Cook 6,441,126 B1 Aug. 27, 2002
The Rejections
Claims 1, 2, 4-6, 8, 10-13, and 15-66 stand rejected provisionally on
the ground of nonstatutory obviousness-type double patenting over claims 1,
10, 11, 13-18, 24-26, 28-39, and 40-54 of copending application
no. 11/088,109.1 The claims stand rejected under 35 U.S.C. § 103 as
follows: claims 1, 2, 4-6, 8, 10-13, 15-17, 20-43, 46, 51-53, and 63-66 over
Bunczek; claims 18, 19, and 47-50 over Bunczek in view of Grijpma;
claims 44 and 45 over Bunczek in view of Li; claims 54-62 over Bunczek in
view of Meyers; claims 1, 2, 4-6, 8, 10-13, 15-17, 20-43, 46, 51-53, and 63-
66 over Cook; claims 18, 19, and 47-50 over Cook in view of Grijpma;
claims 44 and 45 over Cook in view of Li; and claims 54-62 over Cook in
view of Meyers.

1 Application no. 11/088,109 issued as US 7,833,555 on November 16,
2010.
Appeal 2011-004896
Application 10/528,926

3
OPINION
We affirm the provisional obviousness-type double patenting rejection
and reverse the rejections under 35 U.S.C. § 103.
Provisional obviousness-type double patenting rejection
The Appellants do not challenge the provisional obviousness-type
double patenting rejection (Br. 9). Accordingly, we summarily affirm that
rejection.
Rejections under 35 U.S.C. § 103
We need to address only the sole independent claim, i.e., claim 21.
That claim requires at least one biodegradable polymer having a glass
transition temperature of at least +1 ºC, at least one different biodegradable
polymer having a glass transition temperature of less than 0 ºC, and a
difference in number average molecular weight between the different
biodegradable polymers of at least 1000 g/mol. To meet those claim
requirements the Examiner relies upon Bunczek or Cook (Ans. 4, 9).
Bunczek discloses end-capped edible polyesters which can replace
traditional elastomers and elastomer plasticizers in chewing gum (col. 1,
ll. 47-53). The polyesters can have soft to hard plastic and soft to hard
rubbery characteristics and resin-like texture (col. 4, ll. 46-47).
Cook discloses a gum base including “a branched highly crosslinked
aliphatic biodegradable polyester comprising repeat units formed from (1) at
least one polyol having three to four hydroxyl groups, or ester thereof, (2) at
least one dibasic acid, or ester thereof; and (3) at least one long chain
monocarboxylic acid, or ester thereof, wherein the branched aliphatic
biodegradable polyester is crosslinked and has a molecular weight range of
from about 100K to greater than about 1M” (col. 4, ll. 26-29, 54-62). The
Appeal 2011-004896
Application 10/528,926

4
polyester can be used as an elastomer and/or elastomeric plasticizer (col. 7,
ll. 59-60).
The Examiner argues that because Bunczek’s and Cook’s polyesters
are used in the same manner as the Appellants’ polyesters, i.e., to replace
traditional elastomers and elastomer plasticizers in chewing gum bases, it
would be expected that they would have glass transition temperatures and
molecular weights within the Appellants’ ranges “in order to provide a
chewing gum product comprising biodegradable polymers while maintaining
chewing characteristics of chewing gums comprising traditional chewing
gum polymers” (Ans. 15, 20).
The Examiner is relying upon glass transition temperatures and
molecular weights within the Appellants’ ranges being an inherent
characteristic when one of Bunczek’s polyesters is used as an elastomer and
another of Bunczek’s polyesters is used as an elastomer plasticizer, or one of
Cook’s polyesters is used as an elastomer and another of Cook’s polyesters
is used as an elastomer plasticizer. An inherent characteristic must be
inevitable, and not merely a possibility or probability. See In re Oelrich,
666 F.2d 578, 581 (CCPA 1981). The Examiner has not established that
when Bunczek’s or Cook’s polyester elastomer/elastomer plasticizer
combination is used, inevitably one of the elastomer or elastomer plasticizer
has a glass transition temperature of at least +1 ºC, the other has a glass
transition temperature of less than 0 ºC, and the difference in number
average molecular weight between them is at least 1000 g/mol.
The Examiner argues that the Appellants have not provided
convincing arguments or evidence that Bunczek’s and Cook’s polyesters do
not meet the Appellants’ claim requirements (Ans. 16, 21).
Appeal 2011-004896
Application 10/528,926

5
As with any ground of rejection, the Examiner bears the initial burden
of establishing a prima facie case of unpatentability. See In re Oetiker, 977
F.2d 1443, 1445 (Fed. Cir. 1992). The Examiner has not met that initial
burden. Hence, the Appellants need not provide the convincing arguments
or evidence required by the Examiner.
DECISION/ORDER
The rejection of claims 1, 2, 4-6, 8, 10-13, and 15-66 provisionally on
the ground of nonstatutory obviousness-type double patenting over claims 1,
10, 11, 13-18, 24-26, 28-39, and 40-54 of copending application
no. 11/088,109 is affirmed. The rejections under 35 U.S.C. § 103 of
claims 1, 2, 4-6, 8, 10-13, 15-17, 20-43, 46, 51-53, and 63-66 over Bunczek,
claims 18, 19, and 47-50 over Bunczek in view of Grijpma, claims 44 and 45
over Bunczek in view of Li, claims 54-62 over Bunczek in view of Meyers,
claims 1, 2, 4-6, 8, 10-13, 15-17, 20-43, 46, 51-53, and 63-66 over Cook,
claims 18, 19, and 47-50 over Cook in view of Grijpma, claims 44 and 45
over Cook in view of Li, and claims 54-62 over Cook in view of Meyers are
reversed.
It is ordered that the Examiner’s decision 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

sld