Ex Parte Wittorff et al

Patent Trial and Appeal Board

Jul 22, 2016

12304656 (P.T.A.B. Jul. 22, 2016)

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.
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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,
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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
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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).
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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).
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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).
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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
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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
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