Ex Parte Andersen et al

Patent Trial and Appeal Board

Aug 31, 2016

12652574 (P.T.A.B. Aug. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/652,574 01/05/2010 Carsten Andersen
24126 7590 09/02/2016
ST ONGE STEW ARD JOHNSTON & REENS, LLC
986 BEDFORD STREET
STAMFORD, CT 06905-5619
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.
05 l 98-P0041A 1368
EXAMINER
DEES, NIKKI H
ART UNIT PAPER NUMBER
1791
NOTIFICATION DATE DELIVERY MODE
09/02/2016 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 CARSTEN ANDERSON, MARTIN TOPSOE and BITTEN
THORENGAARD
Appeal2014-007102
Application 12/652,5741
Technology Center 1700
Before JEFFREY T. SMITH, BEYERL YA. FRANKLIN, and
JULIA HEANEY, Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner's non-final rejection of claims 9-14, 16, and 22-28. We have
jurisdiction pursuant to 35 U.S.C. § 6(b ).
1 According to the Appeal Brief, the Real Party in Interest is Gumlink A/S.
App. Br. 3.
Appeal2014-007102
Application 12/652,574
BACKGROUND
Appellants' invention relates to ball-shaped chewing gum granules
having an average diameter below 1900 µm, and the surface of the chewing
gum granules coated with a free-flowing agent. (Spec. iJ 5). Claim 9 is
reproduced below from the Claims Appendix to the principal Brief:
9. A composition of chewing gum granules for compressed
chewing gum,
said chewing gum granules being ball-shaped, said chewing
gum granules having an average diameter below 1900 µm, and a
surface of said chewing gum granules being provided with 0.5 to
18% by weight of free-flowing agent,
wherein more than 95% of said chewing gum granules have an
average diameter deviating less than 30% from a mean value
diameter of said chewing gum granules.
The Examiner maintains the following rejections (Ans. 2-7):2
I. Claims 9-14 and 22-28 under 35 U.S.C. § 103(a) as obvious
over Bematz et al. (U.S. Patent No. 6,551,643 B2, Apr. 22,
2003) in view of Gimmler et al. (U.S. Patent No. 5,925,387, Jul.
20, 1999).
II. Claims 9-14, 16, and 22-28 under 35 U.S.C. § 103(a) as
obvious over Mikkelsen et al. (U.S. Patent Application
2 The Examiner withdrew the nonstatutory obviousness type double
patenting rejection over U.S. Patents. 7,521,074; 7,232,581; 8,137,716; and
8,329,235, and the provisional nonstatutory obviousness-type double
patenting rejection over copending Application No. 12/399, 192. (Ans. 7).
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Appeal2014-007102
Application 12/652,574
Publication No. 2004/0224054 Al, Nov. 11, 2004) in view of
Levin (U.S. 3,976,601, Aug. 24, 1976).
OPINION3
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 the subject matter of Appellants'
claims is unpatentable over the applied prior art. We sustain the Examiner's
§ 103 rejections essentially for the reasons set out by the Examiner in the
Answer. 4
We add the following primarily for emphasis.
Rejection I
Appellants argue Bematz does not disclose chewing gum granules
having a diameter below 1900 µm or a process for making such granules.
(App. Br. 10-12). Appellants argue there is no reason for one of ordinary
skill in the art to create chewing gum granules having a diameter below 1900
µm because Bematz discloses that a lower limit on the size of a functioning
gumball is 2.0 mm. (App. Br. 12). Appellants argue the Examiner has not
provided any motivation why one skilled in the art would achieve the
homogeneity required by the claimed invention. Specifically, Appellants
3 Appellants present arguments directed only to independent claim 9.
Appellants have not addressed claims 10-14, 16, and 22-28. See Appeal
Brief, generally. We limit our discussion to independent claim 9.
4 The complete statement of the rejections on appeal appear in the Non-
Final Action and the Answer. (Non-Final Act. 3-8; Ans. 2-7).
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Application 12/652,574
argue the claimed composition has homogeneity because more than 95% of
the chewing gum granules have an average diameter deviating less than 30%
from a mean value diameter of the chewing gum granules. (App. Br. 12-
14).
Appellants' arguments are not persuasive of reversible error in the
Examiner's rejection. Although Appellants impliedly distinguish their
claimed invention as a compressed chewing gum product, Appellants'
claims are directed to a composition of granules, not a chewing gum
product. Further, Appellants do not dispute that Bematz describes a process
for producing granules having a diameter below 3200 µm (3.2 mm), and
exemplifies granules formed having a diameter of 2000 µm (2.0 mm).
[cite?] Bematz further describes passing granules through a screen to obtain
the product having the desired size. (Bematz col. 3, 11. 34--42). A person of
ordinary skill in the art would have had sufficient skill to select the
appropriate separation technique (e.g., screens) for producing a composition
of confectionery product having a diameter less than 1900 µm and having
more than 95% of said chewing gum granules have an average diameter
deviating less than 30% from a mean value diameter. Ordinarily, "where
there is a range disclosed in the prior art, and the claimed invention falls
within that range, there is a presumption of obviousness." Iron Grip Barbell
Co. v. USA Sports, Inc., 392 F.3d 1317, 1322 (Fed. Cir. 2004); accord
Lazare Kaplan Int'!, Inc. v. Photoscribe Techs., Inc., 628 F.3d 1359, 1380-
81 (Fed. Cir. 2010). That presumption is rebuttable either by a showing that
the prior art taught away from the invention or by a showing of new and
unexpected results relative to the prior art. Iron Grip Barbell, 392 F.3d at
1322. Appellants have not directed us to evidence that establishes the
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Application 12/652,574
collection of granules having a diameter less than 1900 µm and having more
than 95% of said chewing gum granules have an average diameter deviating
less than 30% from a mean value diameter provides unexpected results.
Contrary to Appellants' argument, Bematz does not disclose the lower
limit on the size of a functioning gumball is 2.0 mm. Appellants' argument
is directed to the exemplified embodiment. A reference is available for all
that it teaches to a person of ordinary skill in the art. Merck & Co. v.
Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989). A person of
ordinary skill in the art would have reasonably expected that Bematz's
process would have been suitable for forming granules having a diameter
less than 1900 µm.
Rejection II
Appellants argue the combination of Mikkelsen and Levin does not
disclose or suggest providing the surface of chewing gum granules with 0.5
to 18% by weight of a free-flowing agent and the homogeneity required by
the claimed invention. (App. Br. 16-22). Appellants in rebuttal to this
rejection rely on the Anderson Declaration5 to support their arguments for
patentability of the claimed subject matter. (App. Br. 17-22).
Appellants' arguments regarding the amount of free-flowing agent are
not persuasive of reversible error in the appealed rejection. Mikkelsen
discloses it is appropriate to coat the surface of the granules with a tableting
aid- such as magnesium stearate or cornstarch-that function to facilitate
the filling of granules into tablet pressing forms. (Mikkelsen ,-i 30). The
5 Anderson Declaration, attached to the appendix to the principal Brief,
signed January 31, 2013.
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Application 12/652,574
Examiner recognized Mikkelsen did not disclose the amount of tableting aid
and cited Levin as evidence suggesting the claimed amount would have been
obvious. (Non-Final Act. 7; Ans. 6-7). Mikkelsen discloses the granules
are usable with or without a tableting coating. (Mikkelsen ,-i 30). A person
of ordinary skill in the art would have recognized the tableting aid should
have been utilized in amounts suitable for its intended purpose. The cited
prior art establishes that the amount of tableting aid can be varied.
Appellants have not argued, and the Declarant has not stated, that the
claimed amount of free-flowing agent (tableting aid) provides unexpected
results.
Regarding the ball shape of the produced granules, the Examiner
determined that Mikkelsen described methods of production including
expanding the granules in a liquid media, which are the same methods
required by the described invention. (Non-Final action 6-7; citing In re Best,
562 F.2d 1252, 1255 (CCPA 1977)). Appellants have not refuted the
Examiner's position that the production process of the granules of
Mikkelsen is the same as the claimed invention. Rather, Appellants argue the
Examiner improperly cited In re Best in relation to the homogeneity of the
group of granules. (App. Br. 19-20).
Appellants' arguments regarding the homogeneity required by the
claimed invention are not persuasive of reversible error in the appealed
rejection. Appellants argue that Mikkelsen prefers two different granules
sizes and teaches away from the claimed homogeneity. (App. Br. 20-22).
The Examiner in response to Appellants' arguments asserts Example 2 of
Mikkelsen teaches granules of the single size falling within the Appellants'
claimed range. (Ans. 14). Appellants have not refuted the Examiner's
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Application 12/652,574
position that Example 2 exhibits the production of a single particle size. As
discussed above, a person of ordinary skill in the art would have sufficient
skill to select the appropriate separation technique (e.g., screens) for
producing a collection of granules having more than 95% of said chewing
gum granules have an average diameter deviating less than 30% from a
mean value diameter.
ORDER
The Examiner's prior art rejections are affirmed.
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C.F .R. § 1.13 6( a )(1 ).
AFFIRMED
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