Ex Parte MacInnis et al

Patent Trial and Appeal Board

Mar 9, 2018

13039598 (P.T.A.B. Mar. 9, 2018)

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.
13/039,598 03/03/2011 Kari L. Maclnnis CU-100072 1206
124057 7590
FLENER IP LAW, LLC
77 West Washington Street
Suite 800
Chicago, IL 60602
EXAMINER
MUKHOPADHYAY, BHASKAR
ART UNIT PAPER NUMBER
1793
NOTIFICATION DATE DELIVERY MODE
03/13/2018 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):
fleneriplaw_docketing @ cardinal-ip. com
zflener @ fleneriplaw .com
info@fleneriplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KARI L. MACINNIS,
TOMY WIDYA, and COREY CAPASSO
Appeal 2017-007152
Application 13/039,598
Technology Center 1700
Before CATHERINE Q. TIMM, GEORGE C. BEST, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
Opinion of the Board filed by Administrative Patent Judge CASHION.
Opinion Dissenting-in-Part filed by Administrative Patent Judge TIMM.
CASHION, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from a non-final rejection
of claims 21, 22, and 25^41. We have jurisdiction under 35 U.S.C. § 6.
We AFFIRM.
Independent claims 21, 25, 26, and 36 all require the presence of a
melt-processable thermoplastic polymer. Independent claims 21 and 36 are
Appeal 2017-007152
Application 13/039,598
directed to methods of making a flavored article. Independent claims 25 and
26 are directed to a flavored article.
Independent claims 25 and 36 are illustrative of the subject matter on
appeal and are reproduced below:
25. A flavored article comprising:
a flavored thermoplastic composition comprising
(a) one or more flavor enhancing agent selected
from the group consisting of sucralose, stevia extracts,
acesulfame K, maltodextrin and combinations thereof;
wherein the flavor enhancing agent is heat stable and
provides a taste component of flavor;
(b) one or more flavorant, wherein the flavorant is
heat stable and provides an aroma component of flavor;
(c) one or more thermoplastic polymer selected
from the group consisting of polyolefins, and polyolefin
copolymers or terpolymers, wherein (i) the thermoplastic
polymer allows migration of the flavor enhancing agent
and flavorant without significant destruction, mastication,
or fully or partially dissolving the flavored thermoplastic
composition, and (ii) the flavor enhancing agent and the
flavorant are selected to be thermally stable at the
processing temperature of the thermoplastic polymer; and
(d) optionally, an additive selected from the group
consisting of antioxidants, antistatics, antifogs,
antimicrobials, slips, antiblocks, minerals, fillers, optical
brighteners, foaming agents, nucleating agents, impact
modifiers, dispersing aids, release agents, waxes,
colorants, pigments, UV stabilizers and combinations
thereof;
wherein
the taste component of flavor and the aroma
component of flavor are released from the article without
said article being significantly destructed, masticated or
fully or partially dissolved;
2
Appeal 2017-007152
Application 13/039,598
the flavor enhancing agent and the flavorant are
blended throughout the thermoplastic polymer;
the flavored article does not include an elastomer;
and
the article is selected from the group consisting of
dental mold, retainer, nightguard, gumshield and
mouthguard.
36. A method for enhancing the flavor in a flavored
article comprising the steps of:
a) blending
0.1 to 20% by weight of one or more flavor
enhancing agent selected from the group consisting of
sucralose, stevia extracts, acesulfame K, maltodextrin
and combinations thereof, wherein the flavor enhancing
agent is heat stable and provides a taste component of
flavor;
0.01 to 20% by weight of one or more flavorant,
wherein the flavorant is heat stable and provides an
aroma component of flavor;
with one or more thermoplastic polymer selected
from the group consisting of polyethylene, polypropylene
and co-polymers or terpolymers thereof,
and optionally one or more additives selected from
the group consisting of antioxidants, antistatics, antifogs,
antimicrobials, slips, antiblocks, minerals, fillers, optical
brighteners, foaming agents, nucleating agents, impact
modifiers, dispersing aids, release agents, waxes,
colorants, pigments and UV stabilizers;
to form a flavored thermoplastic composition,
wherein the one or more flavor enhancing agent and the
flavorant are blended throughout the one or more
polymers; and
3
Appeal 2017-007152
Application 13/039,598
b) molding or extruding said flavored thermoplastic
composition into an article wherein the taste component of
flavor and the aroma component of flavor are released from the
article without being significantly destructed, masticated or
fully or partially dissolved;
wherein said flavored article is selected from the group
consisting of dental mold, retainer, nightguard, gumshield and
mouthguard.
Appellants1 (see generally App. Br.) request review of the following
rejections from the Examiner’s Non-Final Office Action dated March 24,
2016:
I. Claims 21, 22, 25-35, 40, and 41 rejected under 35
U.S.C. § 103(a) as unpatentable over Noda (US 2003/0143261
Al, published July 31, 2003), White (US 2003/0039617 Al,
published February 27, 2003), and Hall (US 4,548,821, issued
October 22, 1985); and
II. Claim 36-39 rejected under 35 U.S.C. § 103(a) as
unpatentable over Noda and White.
Appellants rely essentially on the same line of arguments in
addressing the rejections of independent claims 21, 25, 26, and 36
(Rejections I and II). See generally App. Br. Appellants do present
additional arguments for independent claims 21 and 26. Id. Appellants did
not present separate arguments for the dependent claims rejected in
Rejections I and II. Accordingly, we select claim 36 as representative of the
subject matter for review on appeal for this rejection. Claims 21, 22, 25-35,
and 37^11 stand or fall with claim 36. The additional arguments for claims
21 and 26 will be addressed separately.
1 A. Schulman Inc. is identified as the real party in interest. App. Br. 3.
4
Appeal 2017-007152
Application 13/039,598
OPINION
Prior Art Rejections
After review of the respective positions provided by Appellants and
the Examiner, we AFFIRM the Examiner’s prior art rejections of claims 21,
22, and 25—41 for the reasons presented by the Examiner. We add the
following for emphasis.
Claim 36
The Examiner finds that Noda discloses a method of making a
flavored article, such as a mouth guard, by molding a flavored thermoplastic
polyethylene composition polymer comprising flavorants. Non-Final Act. 5;
Noda 46, 87, 88, 93, 94, 144. The Examiner finds that Noda does not
disclose the flavor enhancing agent (sweeteners), the type of flavorings, and
the amounts of the flavor enhancing agents and flavorings. Non-Final Act.
6. The Examiner finds that White discloses an oral care composition in the
form of denture products containing sweeteners (aspartame, acesulfame) in
an amount from 0.1 to 10% by wt. and flavor (lemon, orange) in an amount
from 0.001 to 1 % in the composition, where White’s disclosed ranges of
amounts for these components overlap the claimed ranges of amounts for the
same components. Non-Final Act. 6; White 18, 96-97. The Examiner
determines that it would have been obvious to one skilled in the art to use
the flavor enhancing agents and flavorants of White in the amounts taught in
the thermoplastic composition of Noda to attain a desired flavor and
sweetness effect in the article made from this polymer. Non-Final Act. 6.
Appellants assert that Noda is directed to hydrophilic and
biodegradable polymers and only mentions hydrophobic polyethylene as an
5
Appeal 2017-007152
Application 13/039,598
example of a non-biodegradable polymer. App. Br. 16.2 According to
Appellants, Noda discloses polyethylene as an example of a non-degradable
polymer and teaches a distinction between the compostable (biodegradable)
materials and polyethylene. App. Br. 16. That is, Appellants assert that
Noda teaches away from using polyethylene in the thermoplastic material
because it is unsuitable for the purposes of Noda. App. Br. 16-18. In
support of these assertions, Appellants point to the Declaration under 37
CFR § 1.132 by Dr. Tim Osswald (“Declaration”).3 Id. at 16. According to
Declarant, Noda is wholly focused on a latex-free, biodegradable polymer
identified as a polyhydroxyalkanoate (PHA) that is hydrophilic and a very
polar polymer, while polyethylene polymers are hydrophobic and have low
to no polarity. Decl. ^ 7. Declarant also asserts that polyethylene is only
mentioned in the reference as an undesirable material in biodegradable
compositions. Id. Thus, Declarant concludes that one skilled in the art of
polymer manufacturing would not take Noda as teaching the use of
polyethylene polymers in the reference’s disclosed invention. Id.
We are unpersuaded of Examiner error. A reference teaches away
from a claimed invention when a person of ordinary skill, “upon reading the
2 Appellants refer to a communication filed January 29, 2016 as an
Amendment/Response to the Non-Final Office Action dated August 13,
2015 in presenting some of the arguments before the Board. Hereinafter, we
refer to this communication as Amendment to be consistent with Appellant’s
references to the same communication. We limit our consideration of the
Amendment to the specific portions identified by Appellants with respect to
the arguments presented in the Appeal Brief.
3 The Declaration was submitted January 29, 2016 and entered into the
record by the Examiner in the Non-Final Office Action dated March 24,
2016.
6
Appeal 2017-007152
Application 13/039,598
reference, would be discouraged from following the path set out in the
reference, or would be led in a direction divergent from the path that was
taken by the applicant.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).
Whether the prior art teaches away from the claimed invention is a question
of fact. DyStar Textilfarben GmbHv. C.H. Patrick Co., 464 F.3d 1356,
1360 (Fed. Cir. 2006); In re Harris, 409 F.3d 1339, 1341 (Fed. Cir. 2005)
(holding that a reference teaches away from following a path when a skilled
artisan, upon reading the reference, would be discouraged from that path).
Appellants appear to rely on paragraphs 45 and 46 of Noda as
distinguishing polyethylene from biodegradable polymers and, thus,
teaching away from its use. App. Br. 16. We do not find Noda’s disclosure
to be as narrow as asserted by Appellants and agree with the Examiner’s
determination that Noda, as a whole, would not discourage one skilled in the
art from using polyethylene as a component of the disclosed thermoplastic
polymers. Ans. 10. Although Noda defines three characteristics to
determine if a material is biodegradable (Noda 43, 45 46), this definition
does not mention anything about Noda’s thermoplastic polymer, or articles
made therefrom, being limited to biodegradable thermoplastic components.
On the contrary, the portions of Noda relied upon by Appellants suggest that
the material undergoing the composting process can include both
biodegradable and non-biodegradable materials. As noted by the Examiner,
Noda contemplates a thermoplastic composition comprising a blend of
thermoplastic components, without any restriction as to the type of
thermoplastic components used. Ans. 10-11; Noda ^113. Noda also
generally refers to articles as comprising the disclosed biodegradable
polymer. See, e.g., Noda]fl| 21, 27. Moreover, Noda’s disclosure
7
Appeal 2017-007152
Application 13/039,598
encompasses products containing non-biodegradable components, such as
products made by coating a biodegradable polymer over substrates
comprising latex. Noda ^ 107. One skilled in the art, reading the above
noted disclosure would infer that the polymers used to make the article are
not limited to biodegradable polymers and, thus, would not be discouraged
from using non-biodegradable polymers, such as polyethylene, in Noda’s
thermoplastic polymer blends. While Noda may prefer the use of a
biodegradable polymer for the articles made (Noda 113, 125), it is well
settled that a reference stands for all of the specific teachings thereof as well
as the inferences one of ordinary skill in the art would have reasonably been
expected to draw therefrom. See In re Fritch, 972 F.2d 1260, 1264-65 (Fed.
Cir. 1992); see also Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807
(Fed. Cir. 1989) (“all disclosures of the prior art, including unpreferred
embodiments, must be considered” (quoting In re Lamberti, 545 F.2d 747,
750 (CCPA 1976))); In re Fracalossi, 681 F.2d 792, 794 n.l (CCPA 1982)
(explaining that a prior art reference’s disclosure is not limited to its
examples.).
Appellants have not directed us to any portion of Noda that supports
the assertion that polyethylene cannot be a component of Noda’s disclosed
thermoplastic polymer. Appellants have not adequately explained why one
of ordinary skill in the art, upon reading Noda’s disclosure as a whole,
would not have inferred that Noda’s thermoplastic polymers could comprise
other thermoplastic components such as polyethylene.
Appellants’ reliance on the Declaration is also unavailing for the
reasons presented by the Examiner and given above. Ans. 12-13.
Moreover, Declarant directs us to no objective evidence in support of the
8
Appeal 2017-007152
Application 13/039,598
statement that one skilled in the art of polymer manufacturing would not
take Noda as teaching the use of polyethylene polymers as suitable
components for Noda’s thermoplastic polymer. Deck ^ 7. At most,
Appellants, through the use of the Declaration, have provided mere attorney
arguments; such arguments cannot replace evidence. See In re De Blauwe,
736 F.2d 699, 705 (Fed. Cir. 1984); In re Payne, 606 F.2d 303, 315 (CCPA
1979).
Relying on paragraphs 8 and 9 of the Declaration, Appellants argue
White is non-analogous art because the reference is not in the same field of
endeavor as the claimed invention or reasonably pertinent to the problem
solved by the claimed invention (significantly improving flavor in a
thermoplastic composition for molded or extruded flavored articles). App.
Br. 14-15; Amendment 11-12. Appellants assert that it would not be logical
for one skilled in the art to consider aqueous dentifrice compositions, such as
toothpaste, which are Bingham fluids that flow at room temperature and thus
cannot be molded or extruded. Amendment 11-12.
We have considered Appellants’ arguments and Declarant’s
statements and are unpersuaded of error. Appellants’ assertions appear
premised on using White’s aqueous compositions in Noda’s thermoplastic
compositions. As noted by the Examiner, Noda teaches the use of flavorants
in thermoplastic compositions that are shaped into oral care products. Non-
Final Act. 5; Noda 87-89, 93-95. The Examiner relied upon White as
teaching known flavorings and sweeteners used in an oral care composition
and product. Non-Final Act. 6; Ans. 8-9. That is, the Examiner’s rejection
is based on using White’s flavorants, and not the toothpaste, in Noda’s
thermoplastic. Neither Appellants nor Declarant directs us to any objective
9
Appeal 2017-007152
Application 13/039,598
evidence nor provide an adequate explanation why White’s flavorants would
be unsuitable for Noda’s flavored thermoplastic polymer. Given that both
references are directed to oral care products, Appellants have not adequately
explained why one skilled in the art, using no more than ordinary creativity,
would not have been capable of adapting the White’s flavorants for use in
Noda’s thermoplastic polymers. KSR Int’l Co. v. Teleflex Inc., 550 U.S.
398, 421 (2007) (“A person of ordinary skill is also a person of ordinary
creativity, not an automaton. ”); see In re Sovish, 769 F.2d 738, 743 (Fed.
Cir. 1985) (skill is presumed on the part of one of ordinary skill in the art).
We have also considered Appellants’ arguments and Declarant’s
statements concerning the Examiner allegedly erring in combining the cited
art to arrive at the claimed invention. App. Br. 15; Amendment 11-12;
Decl. 8-9. We are again unpersuaded for the reasons presented by the
Examiner (Ans. 12-15) and given in our discussion above. Appellants’
arguments do not point to error in the Examiner’s determination of
obviousness.
Appellants assert the cited art does not teach (1) flavorants that
provide an aroma component of flavor; (2) taste component of flavor and
aroma component of flavor released from an article without being
significantly destructed, masticated or fully or partially dissolved; or
(3) flavor enhancement in dental molds, retainers, nightguards,
mouthguards, and gum shields. App. Br. 15; Amendment 14.
We are unpersuaded. With respect to (1) and (2), as noted by the
Examiner, the combined teachings of the cited art use ingredients that are
identical in amounts that meet as required by the subject matter of claim 36.
Ans. 9. Given that the flavorants and flavor enhancing agents of the prior art
10
Appeal 2017-007152
Application 13/039,598
and the claimed invention are the same, Appellants have not adequately
explained why one skilled in the art would not have expected the flavorants
and flavor enhancing agents of the cited art to have aroma and taste
components that would release from the article without significant
manipulation. With respect to (3), Noda discloses mouth guards made from
polymers containing flavorants. Noda]fl| 87, 94.
We also find Appellants’ argument that the Examiner relied on
impermissible hindsight in combining the teachings of the prior art to arrive
at the claimed invention unavailing. App. Br. 15-16; Amendment 13. Both
White and Appellants disclose fruit flavorants such as orange and lemon.
Spec. ^ 88; White ^ 95. According to the Specification, these flavorants are
useful at an appropriate level in a final article to achieve the right intensity
of aroma. Spec. ^ 88. Appellants have not adequately explained why one
skilled in the art would not have expected White’s flavorants also to achieve
the right intensity of aroma and/or taste when White discloses using these
flavorants in amounts that overlap the claimed amounts for this ingredient.
Non-Final Act. 6; White 18, 96-97. Thus, Appellants have not explained
error in the Examiner’s determination of obviousness.
Claims 21 and 26
Claims 21 and 26 require specific thermoplastics polymers, such as
low density polyethylene. The Examiner relied on Hall to provide this
teaching. Non-Final Act. 4; Hall, col. 4,11. 52-60.
Appellants argue that Hall is directed to augmenting or enhancing
musky, patchouli-like and earthy aromas with the aid of specific tertiary
pentamethylindanol derivatives, but does not address taste. App. Br. 21, 25.
11
Appeal 2017-007152
Application 13/039,598
We are unpersuaded by this argument because Hall expressly
discloses that the disclosed compositions are useful to augment or enhance
the aroma or taste of items, such as foodstuffs. Hall, col. 1,11. 23-27.
Accordingly, we affirm the Examiner’s prior art rejections of claims
21, 22, and 25^41 under 35 U.S.C. § 103(a) (Rejections I—II) for the reasons
presented by the Examiner and given above.
DECISION
The Examiner’s prior art rejections of claims 21, 22, and 25—41 under
35 U.S.C. § 103(a) 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)(iv).
AFFIRMED
12
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KARI L. MACINNIS,
TOMY WIDYA, and COREY CAPASSO
Appeal 2017-007152
Application 13/039,598
Technology Center 1700
Before CATHERINE Q. TIMM, GEORGE C. BEST, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
TIMM, Administrative Patent Judge, DISSENTING.
I respectfully dissent from the decision to affirm the Examiner’s
rejections. In my opinion, Appellants have identified a reversible error in
the Examiner’s finding that Noda teaches blending a flavor enhancing agent
and flavorant throughout polyethylene.
The Examiner finds Noda “discloses a flavored thermoplastic
polymer, e.g. polyethylene composition used for pet toys, baby toys, nipple
etc. ([0045] e.g. polyethylene, [0046] e.g. polyethylene, [0087], [0088],
[0093], [0094] e.g. flavorants, [0144], e.g. thermoplastic).” Non-Final Act.
3. In the Answer, the Examiner further finds “if we consider Noda et al. as a
whole, Noda et al. uses polyethylene to make the product ([0123]).” Ans.
Appeal 2017-007152
Application 13/039,598
10. The Examiner further looks to disclosures in Noda of forming
multilayered films. Ans. 10-11, citing Noda 110, 113.
I agree with Appellants that the Examiner has misinterpreted the
teachings of Noda. App. Br. 16-18.
Noda is directed to methods of reducing exposure to latex and
plasticizers by replacing conventional latex items, for example, gloves, with
items formed from biodegradable polyhydroxyalkanoate copolymers
(PHAs). Noda ^ 2, 35. Noda requires the items formed be biodegradable
and compostable. See, e.g., Noda]fl| 2, 3, 16, 18, 35-36, 42-43, 46 (“to
avoid a [build-up] of man-made materials in the soil, it is required herein
that such materials be fully biodegradable.”).
Contrary to the findings of the Examiner, Noda does not disclose
including polyethylene. The only mention of polyethylene is in disclosures
intended to distinguish the inventive PHA material from polyethylene or in
disclosures of foaming the PHAs using a process known to be used to foam
polyethylene. Noda]fl| 45, 46, 123.
Paragraphs 45 and 46 distinguish the compostable material from
nondegradable polyethylene; they do not disclose including polyethylene.
These paragraphs are part of a multi-paragraph definition of compostable
material. Noda 43 46. These paragraphs set forth that nondegradable
polymers, like polyethylene, fail to meet the requirement (3) of the
compostable definition given in paragraph 43 because polyethylene will not
biodegrade in soil. Noda 43^46. Thus, Noda specifically excludes
polyethylene from the biodegradable, compostable materials of Noda’s
invention.
2
Appeal 2017-007152
Application 13/039,598
Nor does paragraph 123 disclose adding polyethylene. Although
paragraph 123 mentions that cellular polyethylene is often made by
decompression expansion processes, it is only in the context of disclosing
that this known method of decompression expansion can be used to form the
PHA foams of paragraph 120. Paragraph 123 does not state that
polyethylene may be blended into the composition to be foamed.
Paragraphs 110 and 114 discuss forming articles from PHAs using
conventional processes such as single or multi-layer films such as by melt
extrusion, cast film forming, and blown film forming. Noda 110, 113.
However, neither paragraph suggests blending non-biodegradable polymers
with flavor enhancing agent and flavorant. Note that the Examiner fails to
provide an analysis that it would have been obvious to the ordinary artisan to
incorporate polyethylene; instead, the Examiner’s rejection hinges on the
finding that Noda affirmatively discloses including polyethylene. Given that
the Examiner’s rejection rests on the finding that Noda discloses including
polyethylene and this finding is not supported by Noda, a preponderance of
the evidence fails to support the Examiner’s obviousness conclusion.
Thus, I would not sustain the Examiner’s rejections, which both
contain the same error.
3