Ex Parte Wittorff et alDownload PDFPatent Trial and Appeal BoardJul 22, 201612304656 (P.T.A.B. Jul. 22, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/304,656 12/12/2008 24126 7590 07/26/2016 ST ONGE STEW ARD JOHNSTON & REENS, LLC 986 BEDFORD STREET STAMFORD, CT 06905-5619 Helle Wittorff 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. 05198-P0035A 7415 EXAMINER DEES, NIKKI H ART UNIT PAPER NUMBER 1791 NOTIFICATION DATE DELIVERY MODE 07/26/2016 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): patentpto@ssjr.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte HELLE WITTORFF and JESPER NEERGAARD Appeal2015-001059 Application 12/304,656 Technology Center 1700 Before KAREN M. HASTINGS, GEORGE C. BEST, and N. WHITNEY WILSON, Administrative Patent Judges. HASTINGS, Administrative Patent Judge. DECISION ON APPEAL Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's decision rejecting claims 1, 7, 10, 14--16, 18, 20, 22-25, 29, 30, 33-35, 38, 39, 43, 47, 48, 50, 52, 54--56, and 60 under 35 U.S.C. § 103(a) (Final Act. 2-13). We have jurisdiction over the appeal under 35 U.S.C. § 6(b ). We AFFIRM. 1 The real party in interest is stated to be Gumlink A/S. App. Br. 3. Appeal2015-001059 Application 12/304,656 Claim 1 is illustrative of the claimed subject matter: 1. A chewing gum comprising at least one biodegradable polymer, a sweetener in an amount from about 0.5% to about 95% of said chewing gum, one or more flavoring agents, fillers in an amount from about 0 to 50% by weight of said chewing gum, further chewing gum ingredients and at least one enzyme, wherein said at least one enzyme comprises a hydrophobic enzyme formulation, wherein said hydrophobic enzyme formulation comprises at least one selected from the group consisting of: - at least one hydrophobic enzyme, - at least one enzyme at least partly encapsulated by a hydrophobic encapsulation, - at least one enzyme dispersed in an anhydrous dispersion medium, wherein said anhydrous medium comprises oil or other suitable lipophilic solvents, - at least one enzyme dispersed in a hydrophobic medium, and - at least one enzyme absorbed to a hydrophobic earner, wherein said at least one enzyme is release controlled by said hydrophobic enzyme formulation; and wherein said hydrophobic enzyme formulation is comprised in the chewing gum and not in a coating provided to the chewing gum. (App. Br. 20; Claims App. (emphasis added to highlight key limitations).) The Examiner maintains the following rejections: (a) Claims 1, 10, 14, 15, 18, 20, 22-25, 29, 30, 33-35, 38, 39, 43, 47, 48, 50, 52, 54--56 and 60 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Wittorff et al. (WO 2002/076227 Al, published Oct. 3, 2 Appeal2015-001059 Application 12/304,656 2002) (hereinafter "Wittorf") in view of Kondo et al. (US Patent No. 4, 102,806, issued July 25, 1978) (hereinafter "Kondo"); (b) Claims 1, 7, 16, 18, 20, 22-25, 29, 30, 33-35, 38, 39, 43, 47, 48, 50, 52, 54--56 and 60 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Wittorff in view ofWildi et al. (US Patent No. 3,751,561, issued Aug. 7, 1973) (hereinafter "Wildi"); and (c) Claim 54 is rejected under 35 U.S.C. § 103(a) as unpatentable over Wittorff in view of Kondo or Wildi, and further in view of Goldberg et al. (WO 01/47368 Al, published July 5, 2001) (hereinafter "Goldberg"). Appellants' arguments urging reversal of the§ 103 rejections (a}-(c) focus mainly on limitations common to independent claim 1 (App. Br. 10- 19; Reply Br. 2-8). In the absence of arguments specific to their patentability, dependent claims 7, 10, 14--16, 18, 20, 22-25, 29, 30, 33-35, 38, 39, 43, 47, 48, 50, 52, 54--56, and 60 stand or fall with independent claim 1. 37 C.F.R. § 41.37(c)(l)(iv). ANALYSIS Rejections under 35 USC§ 103(a) Upon consideration of the evidence on this record and each of Appellants' contentions, we find that the preponderance of evidence supports the Examiner's conclusion that independent claim 1 and all of its dependent claims are unpatentable over the applied prior art. Appellants have failed to show that the Examiner erred reversibly. We sustain the Examiner's§ 103 rejections, as listed in (a) through (c) above, of all the 3 Appeal2015-001059 Application 12/304,656 appealed claims for essentially the reasons set out by the Examiner in the Answer. We add the following primarily for emphasis. Rejections (a) and (b) The Examiner finds that the primary reference of Wittorff discloses a chewing gum composition that teaches most of the limitations of claim 1, including inclusion of at least one biodegradable polymer and at least one enzyme (Ans. 2). The Examiner finds Wildi teaches that encapsulating enzymes by adsorption to a hydrophobic polymer results in compositions being "more stable, long-acting, less subject to deterioration, and which have a longer shelf life and longer period of effectiveness upon use" (id. at 15 (citing Wildi 3:55-60)). Likewise, the Examiner finds that Kondo teaches that encapsulated enzymes provide "excellent stability of the core material for inclusion as a food material'; (Ans. 15 (citing Wildi 3: 10-15; 6:59---65)). The Examiner determines that because Kondo teaches the benefits afforded by encapsulation of enzymes and Wildi teaches similar benefits provided by encapsulating active ingredients, it would have been obvious to the ordinary skilled artisan to include such active ingredients in the chewing gum center of Wittorff (Ans. 15-16). According to the Examiner, this "would have been expected to provide the predictable result of a chewing gum comprising an encapsulated active ingredient" (id. at 16). There is no dispute Wittorff teaches that enzymes capable of degrading the biodegradable polymers in gum centers should be included in the coating of the chewing gum (Ans. 14; App. Br. 12). 4 Appeal2015-001059 Application 12/304,656 Appellants' main argument is that that the Examiner's combination of Wittorff with either secondary reference, Kondo or Wildi, is improper because Wittorff teaches the importance of omitting chewing gum ingredients that cause degradation of biodegradable polymers in the chewing gum center (App. Br. 12, 16; Reply Br. 3-5). According to Appellants, "Wittorff[] teaches away from incorporating any type of enzyme ... within the chewing gum itself, and explicitly teaches instead that all enzymes must be present only in the coating" (App. Br. 14 (emphasis in original); see also id. at 13 (citing, e.g., Wittorff 25:22-30)). Therefore, according to Appellants, the Examiner's cited references fail to teach or suggest, either alone or in combination, that the "hydrophobic enzyme formulation is comprised in the chewing gum and not in a coating provided to the chewing gum" as recited in the claims (App. Br. 11 ). Whether a reference teaches away from a claimed invention is a question of fact. In re Harris, 409 F.3d 1339, 1341 (Fed. Cir. 2005). Appellants' arguments are not persuasive because, contrary to Appellants' position, Wittorff does not explicitly teach that all enzymes must be present only in the coating (see Ans. 15-16). Although Wittorff discloses that active components, such as "enzymes, may be capable of promoting pre-chewing degradation of the degradable polymers in the chewing gum centres" (Wittorff 25: 25-26) and teaches "incorporating such active compounds in the coating layer", we find no explicit teaching that forbids incorporating enzymes in non-coating layer locations. Thus, we are persuaded by Examiner's argument that "[ n ]owhere does Wittorff speak to the criticality of locating all enzymes in the coating" (Ans. 15). 5 Appeal2015-001059 Application 12/304,656 We are, likewise, not persuaded of reversible error in the Examiner's obviousness determination because evidence in the record provides that it is known that the primary purpose of encapsulation is to provide a barrier between the encapsulated material and its environment2 (Ans. 17). Therefore, one of ordinary skill would have reasonably expected that enzymes and polymers, which are separated by the encapsulation material, would be provided some stability against premature degradation of the polymers and/or activation of the enzyme (id.). Although Appellants argue that Wittorff teaches that locating unencapsulated enzymes in the chewing gum centers may promote pre- chewing degradation (App. Br. 12), the Examiner finds that each of the secondary references teach that encapsulation of enzymes provides several benefits, including a longer shelf life and a longer period of effectiveness upon use (see Ans. 15). One of ordinary skill in the art would have found it obvious to weigh the advantages and disadvantages of including encapsulated enzymes in the coating versus placing encapsulated enzymes in the chewing gum center, including the tradeoff between longer period of enzyme effectiveness upon use as desired and pre-chewing degradation of chewing gum polymers. Just as it is obvious for one of ordinary skill in the art to eliminate a feature of the prior art along with its attendant advantage, it also is obvious to employ a feature of the prior art along with its known disadvantage. Winner Int 'l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000) ("The fact 2 We note that Wittorff teaches that undesired degradation" ... is further prevented or reduced by applying the active substances in encapsulated form" (Wittorff 25:29--30). 6 Appeal2015-001059 Application 12/304,656 that the motivating benefit comes at the expense of another benefit, ... should not nullify its use as a basis to modify the disclosure of one reference with the teachings of another. Instead, the benefits, both lost and gained, should be weighed against one another."); see Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006) ("a given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate the motivation to combine"). Appellants have not, therefore, identified reversible error in the Examiner's determination of a prima facie case of obviousness when the applied prior art is considered as a whole. Having determined that prima facie obviousness has been established, we begin our consideration anew and consider any evidence of obviousness against any evidence of non-obviousness. See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). Appellants rely on the Declaration under 37 C.F.R. § 1.132 of Jesper Neergaard that was submitted on June 24, 2013 (the "Declaration") throughout the Briefs. According to Appellants, the Declaration provides "additional detail concerning how one skilled in the art would interpret Wittorff-1] and Kondo[][/Wildi], as well as the asserted combination thereof' (App Br. 15, 17 (citing Declaration i-fi-f 15-19)). We have carefully considered this Declaration, but do not find it persuasive of nonobviousness. The Declaration is by the Inventor/ Appellant and, as such, is less persuasive than that of a disinterested person. See In re McKenna, 203 F.2d 717, 720 (CCPA 1953) ("an affidavit by an applicant or co-applicant as to the advantages of his invention is less persuasive than one made by a disinterested person"). Moreover, the Declaration presents 7 Appeal2015-001059 Application 12/304,656 only opinion regarding the teachings of Wittorff~ without objective evidence. Thus, we accord the Declaration little value. See In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) ("the Board is entitled to weigh the declarations and conclude that the lack of factual corroboration warrants discounting the opinions expressed in the declarations" (citing Velander v. Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003))). Thus, we affirm the rejections of claims 1, 7, 10, 14--16, 18, 20, 22- 25, 29, 30, 33-35, 38, 39, 43, 47, 48, 50, 52, 54-56, and 60. Rejection (c) For the reasons set forth above and in the Answer, Appellants have not identified any deficiencies in the Examiner's combination of the teachings of Wittorff in view of Kondo or Wildi, and further in view of Goldberg. Thus, we affirm the rejection of claim 54. CONCLUSION The Examiner's§ 103 rejections of all the claims on appeal are affirmed. TIME PERIOD No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l ). AFFIRMED 8 Copy with citationCopy as parenthetical citation