Ex Parte Schechner et al

Patent Trial and Appeal Board

Feb 25, 2014

10528842 (P.T.A.B. Feb. 25, 2014)

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.
10/528,842 07/26/2005 Gallus Schechner P/2107-267 8538
2352 7590 02/26/2014
OSTROLENK FABER LLP
1180 AVENUE OF THE AMERICAS
NEW YORK, NY 10036-8403
EXAMINER
DEES, NIKKI H
ART UNIT PAPER NUMBER
1791
MAIL DATE DELIVERY MODE
02/26/2014 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 PATENT TRIAL AND APPEAL BOARD
____________
Ex parte GALLUS SCHECHNER, CAROLA BRAUNBARTH,
TILO POTH, HOLGER FRANKE, LUTZ GUDERJAHN, and
JORG KOWALCZYK
____________
Appeal 2012-010629
Application 10/528,842
Technology Center 1700
____________

Before PETER F. KRATZ, DONNA M. PRAISS, and
KRISTINA M. KALAN, Administrative Patent Judges.

KALAN, Administrative Patent Judge.

DECISION ON APPEAL

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Application 10/528,842

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Appellants1 appeal under 35 U.S.C. § 134 the final rejection of claims
1, 3-5, 7-32, 34, 35, and 37-42. We have jurisdiction over the appeal
pursuant to 35 U.S.C. § 6(b).
We REVERSE.
STATEMENT OF THE CASE
Appellants’ invention is said to be directed to a chewing gum, which
is coated with at least one layer, said layer comprising poorly water-soluble
calcium salt and/or a composite thereof. Spec., Abst.
Claims 1 and 25 are illustrative:
1. A chewing gum coated by at least one layer, said layer
comprising a coating material which is a composite of a slightly water-
soluble calcium salt and a protein component, which salt is selected from the
group consisting of fluoroapatite, carbonate-containing nonstoichiometric
apatite, hydroxyapatite and fluorine-doped hydroxyapatite, wherein the
slightly water-soluble calcium salt has a particle size less than 1000 nm.

25. A method for producing the chewing gum of claim 1, said
method comprising producing a chewing gum core and coating the chewing
gum core with at least one layer which comprises a composite of a slightly
water-soluble calcium salt and a protein component, which salt is selected
from the group consisting of fluoroapatite, carbonate-containing
nonstoichiometric apatite, hydroxyapatite and fluorine-doped
hydroxyapatite, wherein the slightly water-soluble calcium salt has a particle
size less than 1000 nm.

App. Br. 12 and 15, Claims App’x.

1 Appellants identify the real party in interest as Südzucker
Aktiengesellschaft Mannheim/Ochsenfurt, a corporation organized and
existing under the laws of Germany. Appellants’ Brief filed May 14, 2012
(“App. Br.”) at 2.
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Appellants appeal the rejection of claims 1, 3-5, 7-32, 34, 35, and 37-
42 under 35 U.S.C. § 103(a) as unpatentable over Yatka et al., US
5,298,263, issued March 29, 1994, in view of Kropf et al., DE 10063945 A1,
published July 4, 2002.
Appellants argue claims 1, 3-5, 7-24, and 37-41 as a group, App. Br.
5-8, and claims 25-32, 34, 35, and 42 as a group. Id. at 9-11. Accordingly,
the rejection of claims 3-5, 7-24, and 37-41 will stand or fall with claim 1
and the rejection of claims 26-32, 34, 35, and 42 will stand or fall with claim
25. 37 C.F.R. § 41.37(c)(1)(iv).

ISSUE
Did the Examiner reversibly err in determining that the combination
of Yatka’s chewing gum composition with Kropf’s remineralizing agents
would have rendered obvious Appellants’ claimed composition and method?
We decide this issue in the affirmative.

ANALYSIS
The Examiner bears the initial burden of establishing a prima facie
case of obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
“After evidence or argument is submitted by the applicant in response,
patentability is determined on the totality of the record, by a preponderance
of evidence with due consideration to persuasiveness of argument.” Id.
“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), quoted with
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approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Here,
we are not persuaded that the Examiner considered the totality of the record
or established a prima facie case of obviousness.
With respect to claims 1 and 25, the Examiner finds that Yatka
teaches the coated chewing gum product of claim 1 as well as a method for
producing a coated chewing gum. Examiner’s Answer filed June 4, 2012
(“Ans.”) at 3-4. The Examiner further finds that although Yatka is silent as
to the coating material comprising a composite, Kropf teaches a dental
adhesive film comprising poorly soluble calcium salts, preferably salts of
hydroxyapatite or fluoroapatite, which salts are preferably provided in
combination with a protein. Id. at 4. The Examiner also finds that
paragraph [0002] of Kropf teaches chewing gums as another means of
introducing active ingredients to the tooth and gum surfaces. Id. The
Examiner determines that
[O]ne of ordinary skill would have found it obvious to include
the remineralizing agents of Kropf in traditional chewing gum
compositions, as taught by Yatka, in order to provide a chewing
gum product containing nanoparticle-sized calcium in order to
improve the dental hygiene of the user, or mineralize the
enamel or dentine of the user in the presence of the calcium
particles.

Id. at 5.

Appellants contend that the Examiner erred in rejecting claim 1
because: (1) Kropf teaches that the support, i.e., film, should not be too
soluble whereas a chewing gum coating as described in Yatka is very
soluble, App. Br. 5; (2) the Examiner has used an impermissible hindsight
reliance on Appellants’ teachings, id. at 5-6; (3) Yatka’s reference to
“nutritional value” is taken to refer to the nutrient content of a comestible,
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id. at 6; (4) low-solubility calcium salts such as those disclosed in Kropf
would not be considered by a skilled artisan to dissolve sufficiently in a
coating medium and thus unsuitable for application as a chewing gum
coating, as noted in the Declaration of Dr. Jörg Kowalczyk dated August 30,
2011 (“Kowalczyk Declaration”), id.; (5) the composition of Appellants’
chewing gum coating layer is distinguishable from what is disclosed in
Kropf, id.; (6) preparation of Appellants’ coating layer requires a complex
preparation process, id.; (7) Appellants’ coating is comprised of calcium
salt/protein composites, unlike Kropf’s formulation, App. Br. 7; (8) Kropf
discloses it is crucial that the active components be released from the
support over a relatively long period and should not dissolve too rapidly in
the mouth, and thus teaches away from including active components in the
coating of a chewing gum, id. at 7-8; and (9) Yatka’s coating dissipates
when the gum is chewed, so one of ordinary skill in this art would not have
considered that Kropf’s calcium salt composites in Yatka’s chewing gum
coating would have produced a beneficial effect upon the teeth of a subject
who has chewed the gum. Id. at 8.
The Examiner responds that: (1) Kropf does not specify where the
agents are to be located, and there is no requirement in the instant claims that
the salts be present for a particular amount of time, Ans. 5-6; (2)
impermissible hindsight was not used, In re McLaughlin, 443 F.2d 1392
(CCPA 1971), Ans. 6; (3) Yatka’s chewing gums also improve dental health
by including non-cariogenic sugars, id. at 7; (4) the limited solubility of the
claimed calcium salt would not preclude its inclusion in a coating layer for a
chewing gum, as it is well known in the chewing gum art to include
insoluble pigments in chewing gum coating solutions, id.; (5) the
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combination of Yatka and Kropf is used to reject claim 1, not the
composition of Kropf’s dental film alone, id. at 7-8; (6) Yatka’s process
involves repeated application of a coating solution as does the claimed
process, id. at 8; (7) Yatka teaches gelatin, which is one of Appellants’
claimed proteins, as a conventional panning (coating) modifier, id.; (8) there
is no requirement in the instant claims that the salts be present for a
particular amount of time, and there is no showing that Appellants’ salts
would have longer residence time in the mouth if they were included in the
gum coating, id. at 9; and (9) the mechanics of gum chewing would allow
the calcium salt present in a coating to provide a beneficial effect upon the
teeth of a subject. Id. at 10.
With respect to claim 25, Appellants further depend on the
Kowalczyk Declaration to support their arguments that: (10) the process for
coating chewing gum is complicated and sophisticated, App. Br. 9; Decl. ¶6;
(11) a skilled artisan would not regard Kropf’s calcium salts as suitable for a
chewing gum coating process, App. Br. 10; Decl. ¶10; (12) Kropf’s method
of preparing a dental film is nothing like Appellants’ method of producing a
coated chewing gum, App. Br. 10; Decl. ¶12; and (13) a skilled artisan
would not have considered using a protein component with a calcium salt in
a chewing gum coating process, App. Br. 10; Decl. ¶14.
The Examiner responds that (10) the claimed coating process and the
claimed coating salt are both known in the art, thus the process is obvious,
Ans. 10; (11) it is well known in the chewing gum art to include insoluble
pigments in chewing gum coating solutions, id.; (12) Yatka teaches the
claimed coating method, and Kropf teaches calcium salts, id. at 11; and (13)
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Yatka teaches gelatin, which is one of Appellants’ claimed proteins, as a
conventional panning (coating) modifier. Id.
In the Reply Brief, Appellants assert that the “panning modifier” of
Yatka, i.e., gelatin, is an optional component of Yatka’s coating, whereas
Appellants’ protein is an essential part of the coating. Appellants’ Reply
Brief filed July 16, 2012 (“Reply Br.”) at 5.
The Examiner failed to consider properly Appellants’ rebuttal
evidence, submitted in the form of the Kowalczyk Declaration. The
Examiner’s Answer does not reflect that Examiner considered the
Kowalczyk Declaration at all. Appellants submitted the Kowalczyk
Declaration as objective evidence of non-obviousness, which seems to
address directly the core issue before us, namely, whether the claims would
have been obvious to one of ordinary skill in the art at the time of invention.
We find that the Kowalczyk Declaration, which was proffered in support of
Appellants’ position as to lack of a reasonable expectation of success in
incorporating Kropf’s remineralizing agents into the chewing gum coating of
Yatka, should have been considered by the Examiner as part of the “totality
of the record” on appeal in determining whether it would have been obvious
for one of ordinary skill in the art to combine Yatka with Kropf. Thus, in
light of Appellants’ supportive evidence, and in the absence of any clear
rebuttal evidence from the Examiner, we conclude that the Examiner has not
established a prima facie case of obviousness.
On this record, we reverse the Examiner’s § 103 rejections.

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ORDER
The Examiner’s decision is reversed.

REVERSED

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