Ex Parte Kiefer et al

Patent Trial and Appeal Board

Jan 14, 2016

11732942 (P.T.A.B. Jan. 14, 2016)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte JESSE KIEFER and JOAN E. HARVEY
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Appeal 2014-000724
Application 11/732,942
Technology Center 1700
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Before PETER F. KRATZ, ROMULO H. DELMENDO, and
JEFFREY W. ABRAHAM, Administrative Patent Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL
The Appellants1 seek our review under 35 U.S.C. § 134(a) of a final
decision of the Primary Examiner to reject claims 1–5, 7–9, 11–14, 17–23,
25, 26, 31, and 33. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 The Appellants state that the Real Party in Interest is “KRAFT FOODS
GLOBAL BRANDS LLC, the assignee of record, which is a subsidiary of
MONDELĒZ INTERNATIONAL INC.” (Appeal Brief filed May 20, 2013,
hereinafter “Br.,” 2).
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BACKGROUND
The subject matter on appeal relates to “cooling compositions that
deliver a prolonged physiological cooling sensation to the skin or mucous
membrane” and may be present alone or in a product such as a chewing gum
or a confection (Specification, hereinafter “Spec.,” ¶ 5). Representative
claim 1 is reproduced from page 13 of the Appeal Brief (Claims App’x.) as
follows:
1. A cooling composition consisting essentially of:
about 5% to about 60% by weight of a menthyl ester
consisting of a menthyl glutarate;
about 5% to about 50% by weight of at least one cooling
agent selected from the group consisting of N-ethyl-p-
menthane-3-carboxamide, trimethyl isopropyl butanamide and
combinations thereof; and
about 15% to about 85% by weight menthol.

THE REJECTIONS
The Examiner rejected the claims as follows:
I. Claims 1–4, 9, 11–13, 19–22, 31, and 33 under 35 U.S.C.
§ 103(a) as unpatentable over Witkewitz et al. (US
2006/0159819 A1 published July 20, 2006; hereinafter
“Witkewitz”) in view of Erman et al. (US 2005/0265930 A1
published December 1, 2005; hereinafter “Erman”);
II. Claims 5, 7, 8, 14, 17, 18, 23, 25, and 26 under 35 U.S.C.
§ 103(a) as unpatentable over Witkewitz in view of Richard D.
Hiserodt, et al., Identification of Monomethyl Succinate,
Monomenthyl Glutarate, and Dimenthyl Glutarate in Nature by
High Performance Liquid Chromatography-Tandem Mass
Spectrometry, 52 J. AGRIC. FOOD CHEM. 3536–3541 (2004)
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(hereinafter “Hiserodt”); and
III. provisionally, claims 1–5, 7–9, 11–14, 17–23, 25, and 26 under
the judicially-created doctrine of obviousness-type double
patenting as unpatentable over claims 41–49 of copending
Application 11/543,473.2
(Examiner’s Answer entered July 31, 2013, hereinafter “Ans.,” 3–11; Final
Office Action entered December 31, 2012 at 3–9.)

DISCUSSION
I
With respect to Rejection I, the Appellants argue the claims together
(Br. 6–9). Therefore, we confine our discussion to claim 1, which we select
as representative pursuant to 37 C.F.R. § 41.37(c)(1)(iv). By rule, claims 2–
4, 9, 11–13, 19–22, 31, and 33 stand or fall with claim 1.
The Examiner found that Witkewitz describes a composition
comprising about 25% to about 75% by weight menthol and about 25% to
about 75% of at least one physiological cooling agent, which includes
menthyl lactate, menthyl succinate, N-ethyl-p-menthane-3-carboxamide
(WS-3), and N-2,3-2-isopropyl-trimethyl butanamide (WS-23) (Ans. 3)
(citing Witkewitz ¶¶ 20 and 23). The Examiner acknowledged that
Witkewitz does not disclose a composition that also includes menthyl
glutarate, as required in the specified amounts by claim 1 (Ans. 4). The
Examiner found further, however, that Erman teaches cooling compositions
that include monomenthyl glutarate (MMG) in combination with other

2 The current application is a continuation-in-part application of Application
11/543,473, which is also on appeal (Appeal 2014-000320).
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known cooling agents such as WS-3, WS-23, and menthyl lactate (id. at 4).
Based on these findings, the Examiner concluded that a person of ordinary
skill in the art would have found it obvious to substitute MMG for the
menthyl esters (menthyl lactate and menthyl succinate) disclosed in
Witkewitz as interchangeable cooling agents (id.).
The Appellants contend that the prior art teaches away because “[i]t is
known in the art that menthyl glutarate is a very weak (low-intensity)
cooling agent,” as evidenced by Table 1 of Johnson et al. (WO 2005/082154
A1 published September 9, 2005; hereinafter “Johnson”), which shows that
“menthyl glutarate has about three times lower cooling intensity as
compared to menthyl succinate, about ten times lower cooling intensity as
compared to menthyl lactate, and about five times lower cooling intensity as
compared to WS-23” (Br. 8). According to the Appellants, “by teaching that
menthyl glutarate is a much weaker cooling agent than menthyl succinate
and menthyl lactate, the prior art teaches away from substituting menthyl
glutarate for menthyl succinate and menthyl lactate” (id. at 9). Citing
Paragraph 6 of the Specification, the Appellants argue that they “have
surprisingly found that the cooling composition comprising a menthyl
glutarate ester, WS-3 or WS-23, and menthol provides a cooling sensation
substantially similar to that provided by WS-3 or WS-23 alone” (id. at 9).
The Appellants’ arguments are insufficient to identify a reversible
error in the Examiner’s rejection of claim 1. In re Jung, 637 F.3d 1356,
1365 (Fed. Cir. 2011).
The Appellants are correct in pointing out that menthyl glutarate
provides a cooling intensity that differs from those provided by other
coolants (Johnson, Table 1). That fact, however, does not negate Johnson’s
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disclosure (¶ 87) that monomenthyl glutarate is, like menthyl succinate and
menthyl lactate, a physiological cooling agent. Nor does it remove Erman’s
disclosure that MMG can be included as part of the cooling composition
(¶¶ 99, 100, 115, 116). As pointed out by the Examiner (Ans. 7–8), a mere
difference in cooling intensities for various known cooling agents is not a
teaching away for any one of the disclosed cooling agents. In re Fulton, 391
F.3d 1195, 1200 (Fed. Cir. 2004) (“[C]ase law does not require that a
particular combination must be the preferred, or the most desirable,
combination described in the prior art in order to provide [the] motivation
[or reason] for the current invention.”); In re Gurley, 27 F.3d 551, 553 (Fed.
Cir. 1994) (“A known or obvious composition does not become patentable
simply because it has been described as somewhat inferior to some other
product for the same use.”).
As stated above, the Appellants refer to Paragraph 6 of the
Specification as providing evidence of surprising results (Br. 9).
Specifically, the paragraph states that a combination of menthyl ester and
reduced amounts of WS-3 or WS-23 provided a “sensation substantially
similar” to that delivered by WS-3 or WS-23 alone (Spec. ¶ 6). The
paragraph, however, is devoid of any experimental data and other facts
necessary to establish that the alleged results would have been considered
unexpected by one of ordinary skill in the art.
For these reasons, we uphold Rejection I.
II
Again, the Appellants argue the claims subject to Rejection II together
(Br. 9–10). Therefore, pursuant to 37 C.F.R. § 41.37(c)(1)(iv), we confine
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our discussion to claim 5, which we select as representative. Claims 7, 8,
14, 17, 18, 23, 25, and 26 stand or fall with claim 5.
Claim 5 recites in relevant part “about 5% to about 60% by weight of
two menthyl esters, wherein the two menthyl esters consist of monomenthyl
glutarate and dimenthyl glutarate” (Br. 13).
The Examiner relied on Hiserodt for its disclosure that cooling agents
including monomenthyl glutarate (FEMA 4006), dimenthyl glutarate, and
dimenthyl succinate are known to provide a cooling effect without the
burning sensation of menthol (Ans. 6) (citing Hiserodt, Abst.). Based on
this finding, the Examiner concluded that a person of ordinary skill in the art
would have found it obvious to include a combination of monomenthyl
glutarate and dimenthyl glutarate in formulating Witkewitz’s cooling
composition (id.).
The Appellants do not dispute the Examiner’s findings concerning the
teachings of Hiserodt (Br. 10). Rather, the Appellants contend that the
rejection should be reversed based on the same arguments offered in support
of the reversal of Rejection I (Br. 10).
Because we found the Appellants’ arguments based on Johnson
insufficient, we uphold Rejection II for the same reasons discussed above in
I.
III
The Appellants do not offer any substantive arguments against the
double patenting rejection (Br. 11). Rather, they assert that filing a terminal
disclaimer is premature because the claims may be amended further and that,
in any event, they are willing to file a terminal disclaimer should the cited
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claims in the reference application be allowed and the claims of the current
application become otherwise allowable (id.).
Because the Appellants fail to provide any substantive argument on
the merits or a terminal disclaimer and the conflicting claims are still
pending, we summarily affirm Rejection IV. Cf. Hyatt v. Dudas, 551 F.3d
1307, 1314 (Fed. Cir. 2008).

SUMMARY
Rejections I–III are 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

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