Ex Parte Lorenzi

Patent Trial and Appeal Board

Mar 31, 2016

11354457 (P.T.A.B. Mar. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111354,457 02/15/2006
27752 7590 04/04/2016
THE PROCTER & GAMBLE COMPANY
Global Patent Services - Legal IP
Central Building, CS
One Procter and Gamble Plaza
CINCINNATI, OH 45202
FIRST NAMED INVENTOR
Marc Paul Lorenzi
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.
CM2949 8746
EXAMINER
KING, FELICIA C
ART UNIT PAPER NUMBER
1793
NOTIFICATION DATE DELIVERY MODE
04/04/2016 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):
centraldocket.im @pg.com
pair_pg@firsttofile.com
mayer.jk@pg.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL
AND APPEAL BOARD
Ex parte MARC PAUL LORENZI 1
Appeal2013---008278
Application 11/354,457
Technology Center 1700
Before BRADLEY R. GARRIS, BEYERL YA. FRANKLIN, and
JEFFREY W. ABRAHAM, Administrative Patent Judges.
FRANKLIN, Administrative Patent Judge.
DECISION ON APPEAL
1 The real party in interest is The Procter & Gamble Company. Appeal Br.
1.
Appeal2013-008278
Application 11/354,457
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner's
decision rejecting claims 1, 8, 10-18, and 20. We have jurisdiction over the
appeal under 35 U.S.C. § 6(b ).
STATEMENT OF THE CASE
Claim 1 is illustrative of Appellant's subject matter on appeal and is
set forth below:
1. A hard-boiled center-fill candy composition compns1ng from
about 60% to about 95% hard boiled candy shell comprising
sugars or sugar alcohols and from about 5% to about 40%
filling, by weight of the composition, wherein the filling
comprises:
from about 40% to about 95%, by weight of the
filling, a polar edible liquid comprising a polyhydric
alcohol;
from about 0.001 % to about 10%, by weight of the
filling, of a xanthan gum thickener; and
wherein the filling comprises less than about 8%
water; wherein the filling is shear-thinning and exhibits a
log [(11@ O.Ols-1)/ (11 @ 250s-1)] of greater than about 0.5
at 37°C·
'
and wherein the composition further comprises a component
selected from the group consisting of a xanthine derivative,
salts thereof,
and mixtures thereof.
2
Appeal2013-008278
Application 11/354,457
The Examiner relies on the following prior art references as evidence
of unpatentability:
Johnson et al.
(hereafter "Johnson)
Bealin-Kelly
Mishima et al.
(hereafter "Mishima")
Ream et al.
(hereafter Ream)
Cifrese et al.
(hereafter "Cifrese")
Kabse et al.
(hereafter "Kabse")
US 6,627,234 Bl
US 6,306,429 B 1
us 6,106,867
us 6,024,988
us 4,466,983
US 2006/0045934 Al
Sept. 30, 2003
Oct. 23, 2001
Aug. 22, 2000
Feb. 15,2000
Aug.21, 1984
Mar. 2, 2006
http://web.archive.org/web/20050207090323/http://www.lsbu.ac.uk/water/h
yxan.html, (hereafter "LSBU").
THE REJECTIONS
1. Claims 1, 8, 10, 13-18, and 20 are rejected under 35 U.S.C. §103(a)
as being unpatentable over Bealin-Kelly in view of Kabse, LSBU, and
Mishima.
2. Claims 11 and 12 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bealin-Kelly in view ofKabse, LSBU, Mishima, as
applied to claim 1 above, and in further view of Johnson.
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Appeal2013-008278
Application 11/354,457
3. Claims 1, 8, 10, 13-18, and 20 are rejected under 35 U.S.C. §103(a)
as being unpatentable over Bealin-Kelly, in view of Kabse, LSBU, Mishima,
and Ream.
4. Claims 11 and 12 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bealin-Kelly in view of Kabse, LSBU, Mishima, "as
applied to claim 1 above" (Final Action 9, Ans. 10), and in further view of
Ream.
ANALYSIS
We adopt the Examiner's findings in the Answer and AFFIRM. We
add the following for emphasis. Also, we select claim 1 as representative of
all the claims on appeal, based upon Appellant's presented arguments. 37
C.F.R. § 41.37(c)(l)(iv) (2014).
Beginning on page 2 of the Appeal Brief, Appellant first discusses the
problems in the art of center-filled candies, and how such problems are
addressed by the present application. Appellant refers to page 3, lines 18-23
of the Specification, which discusses one of the problems which is that too
much water in the shear-thinning filling can deleteriously interact with the
sugars in the candy shell, "which results in the filling becoming hard and
crystalline, as well as the shell becoming opaque and susceptible to
breakage." Appeal Br. 2-3. Appellant submits that such problems of filling
hardening/shell breakage, and the cause of such problems, are not addressed
by the applied art. Appeal Br. 3. In short, Appellant submits that they have
discovered that the use of the proper thickener at low water levels provides a
center-fill component that solves the aforesaid problems, yet provides the
desired organoleptic experience. Id.
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Appeal2013-008278
Application 11/354,457
Beginning on page 4 of the Appeal Brief, Appellant reiterates that the
applied references are silent as to the problems addressed by Appellant,
much less suggestive of their solution using low water/xanthan gum in the
manner disclosed and claimed. Appellant submits that Bealin-Kelly
suggests an "interaction of the filling with the shell," but suggests a
"separate edible lining" to prevent such interaction. Bealin-Kelly, col. 6, 1.
13-15. Appellant argues that Bealin-Kelly is silent as to a xanthan gum
thickener and xanthine derivative, salts thereof, and mixtures thereof.
Appellant argues that Kabse relates to center-fill chewing gum, whose fill
can contain xanthan gum. However, Appellant submits that no interaction
problem with an outer sugar-containing candy shell appears to have been
identified, nor its solution provided in the manner according to the present
application. Appellant argues that LSBU discloses that xanthan gum is used
for the control of viscosity due to its weak-gel shear-thinning properties.
LSBU, p. 2, para. 2. However, Appellant argues that the physico-chemical
connection between this shear-thinning behavior and the unique organoleptic
qualities which are a disclosed goal of the present application are not
described. Appeal Br. 4. Appellant then argues that Mishima relates to a
propolis (a substance produced by honeybees) food product having
improved bio-absorbability of its active ingredients. Mishima, col. 1, 11. 7-9
and col. 1, 11. 41--43; Appeal Br. 5. Appellant submits that Mishima is silent
on center-fill compositions, and that the disclosed goals of the present
application are not described. Id.
We are not persuaded by such argument. The prior art need not solve
the same problem Appellant discusses in the Specification in order to render
the composition obvious. "[A ]ny need or problem known in the field of
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Appeal2013-008278
Application 11/354,457
endeavor at the time of invention and addressed by the patent can provide a
reason for combining the elements in the manner claimed." KSR Int'!. Co. v.
Teleflex Inc., 550 U.S. 398, 420 (2007). In the instant case, Appellant's
arguments concern how the applied art allegedly does not recognize the
problems that Appellant has addressed (Appeal Br. 4--5). This alone is not
persuasive. Id. We also refer to the Examiner's stated response as set forth
on pages 11-14 and 15-19 of the Answer in support of the obviousness
rejection. Appellant's arguments (discussed, supra) do not address squarely
what the combined teachings of the applied references would have suggested
to one of ordinary skill in the art at the time of the invention. In re Merck &
Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) ("Non-obviousness cannot be
established by attacking references individually where the rejection is based
upon the teachings of a combination of references."). Without more, we are
unpersuaded by such argument.
Appellant's only other argument is that the applied art does not
suggest the claim limitation of from about 40% to about 95%, by weight of
the filling, of a polar edible liquid comprising a polyhydric alcohol, as
recited in claim 1. Appellant states that there is no motivation as to why one
would increase the amount of glycerine from 5% to 25%, as disclosed in
Bealin-Kelly, to 40% to 95%, as recited in claim 1. Appeal Br. 3.
In response, the Examiner provides a claim interpretation of claim 1
on page 14 of the Answer. Therein, the Examiner states that it appears that
Appellant is asserting that the claim requires that the polar edible liquid is
entirely a polyol. Ans. 14. It is the Examiner's position that the claims do
not require a polyol content of from 40% to 95%. Claim 1 recites "from
about 40% to about 95%, by weight of the filling, a polar edible comprising
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Application 11/354,457
a polyhydric alcohol." The Examiner interprets this phrase as meaning that
the filling comprises a polar edible liquid that is present in an amount of
from about 40% to about 95% of the filling, whereby the polar edible liquid
comprises a polyol. The Examiner states that there is no "consisting of'
language in the claim, and there is no definitive language stating that the
polyol is 40% to 95% of the filling. Id. We agree with the Examiner's
stated interpretation, and note that the term "comprising" is an open-ended
transitional term. See, e.g., In re Baxter, 656 F.2d 679, 686-87 (CCPA
1981) ("As long as one of the monomers in the reaction is propylene, any
other monomer may be present, because the term 'comprises' permits the
inclusion of other steps, elements, or materials."). As such, because
Appellant's argument regarding the aforementioned limitation is directed to
limitations not in the claims (Appeal Br. 3), we are unpersuaded by such
argument. Limitations not appearing in the claims cannot be relied upon for
patentability. In re Self, 671F.2d1344, 1348 (CCPA 1982). We also refer
to the Examiner's detailed response made on pages 14--15 of the Answer in
support of the obviousness rejection. We also note that there is no Reply
Brief on record in reply to the Examiner's stated response discussed herein.
In view of the above, we affirm Rejection 1. Because Appellant relies
upon similar arguments for Rejections 2--4 (Appeal Br. 5---6), that were
presented for Rejection 1, we also affirm Rejections 2--4 for similar reasons.
DECISION
Each rejection is affirmed.
TIME PERIOD
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Application 11/354,457
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a).
ORDER
AFFIRMED
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