Ex Parte Kiefer et alDownload PDFPatent Trial and Appeal BoardJan 14, 201611732942 (P.T.A.B. Jan. 14, 2016) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte JESSE KIEFER and JOAN E. HARVEY ____________ Appeal 2014-000724 Application 11/732,942 Technology Center 1700 ____________ 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). Appeal 2014-000724 Application 11/732,942 2 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) Appeal 2014-000724 Application 11/732,942 3 (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). Appeal 2014-000724 Application 11/732,942 4 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 Appeal 2014-000724 Application 11/732,942 5 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 Appeal 2014-000724 Application 11/732,942 6 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 Appeal 2014-000724 Application 11/732,942 7 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 cdc Copy with citationCopy as parenthetical citation