Ex Parte Massey et al

Patent Trial and Appeal Board

Nov 20, 2014

11707713 (P.T.A.B. Nov. 20, 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.
11/707,713 02/16/2007 Craig Massey 1421-210 8581
23869 7590 11/21/2014
Hoffmann & Baron LLP
6900 Jericho Turnpike
Syosset, NY 11791
EXAMINER
GWARTNEY, ELIZABETH A
ART UNIT PAPER NUMBER
1791
MAIL DATE DELIVERY MODE
11/21/2014 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 CRAIG MASSEY and THOMAS KUNCEWITCH
____________

Appeal 2013-003316
Application 11/707,713
Technology Center 1700
___________

Before BRADLEY R. GARRIS, CHUNG K. PAK, and
KAREN M. HASTINGS, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL

Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 16, 21, 22, 23, 25, 35-38 and 41 under 35
U.S.C. §103(a) as being unpatentable over Jani (US 2007/0003663 A1,
published Jan. 4, 2007). We have jurisdiction over the appeal under 35
U.S.C. § 6(b).
We AFFIRM.
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Application 11/707,713

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Claim 16 is illustrative of the subject matter on appeal (emphasis
added):
16. A chewing gum composition comprising:
(a) a center-fill composition comprising
a slurry comprising a fluid carrier present in the amount of
about 10% to about 65% by weight of said center-fill
composition, wherein said slurry comprises glycerin and
hydrogenated starch hydrolysate; and
crystalline erythritol particles present in the amount of
about 10% to about 50% by weight of said center-fill
composition, wherein said crystalline erythritol particles have a
particle size of less than about 45 micrometers and are suspended
in said fluid carrier; and
(b) a gum region surrounding said center-fill composition,
said gum region comprising a gum base,
wherein said slurry comprises a solids content greater than
82% of the center-fill composition.

Appellants argue the claims as a group, and focus on limitations
common to all the independent claims (App. Br. 5-14). Accordingly, all the
claims stand or fall with claim 16.
ANALYSIS
After thorough review of the respective positions provided by
Appellants and the Examiner, we AFFIRM the § 103(a) rejection on appeal
for essentially the reasons presented by the Examiner, including the
Response to Argument section (Ans., mailed October 4, 2012).
We add the following primarily for emphasis.
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Appellants do not specifically refute the Examiner’s findings that Jani
encompasses a gum having the claimed ingredients, including the claimed
center-fill composition comprising the same ingredients and the particle
sizes in amounts that overlap and/or encompass the claimed amounts/sizes
(Br. generally). The Examiner’s determination that this results in a situation
where overlapping ranges renders the claims prima facie obvious is
reasonable (e.g., Ans. 8, 9, 11; no Reply Brief has been filed). Cf. In re
Harris, 409 F.3d 1339, 1341 (Fed. Cir. 2005) (quoting In re Peterson, 315
F.3d 1325, 1329-30 (Fed. Cir. 2003)):
[A] prima facie case of obviousness exists when the ranges of a
claimed composition overlap the ranges disclosed in the prior
art. [Citations omitted.] Where the “claimed ranges are
completely encompassed by the prior art, the conclusion [that
the claims are prima facie obvious] is even more compelling
than in cases of mere overlap.”

Appellants’ main arguments - that Jani does not teach or suggest the
claimed “slurry having greater than 82% solids content” (e.g., Br. 8) and that
the Examiner is relying upon an impermissible “hindsight” and/or an
improper “obvious to try” standard because Jani includes over 600 options
for its centerfill component (Br. 13, 14) – are not persuasive of error. See
Merck & Co., Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989)
(rejecting “obvious to try” argument where the prior art disclosed a
“multitude of effective combinations” that did not “render any particular
formulation less obvious” and where the claimed composition was “used for
the identical purpose taught by the prior art” and affirming obviousness of
composition selected from among more than 1200 possible compositions
disclosed in patent). It has also been established that “[a] person of ordinary
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skill is also a person of ordinary creativity, not an automaton.” KSR Int'l.
Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007).
The Examiner reasonably determines that the property or function
(recited in each of the independent claims) of the claimed slurry “solids
content greater than 82%” such that erythritol particles (alone or with xylitol
particles) are “suspended” therein would follow from one of ordinary skill in
the art using the claimed ingredients within the claimed ranges of Jani’s
disclosure. Stated differently, the fact that Appellants may have recognized
another property which would flow naturally from following Jani’s teaching
or suggestion for amounts of erythritol, glycerin, and starch hydrosylate in
the center fill of a gum cannot be the basis for patentability when the
differences, if any, would otherwise have been obvious. Cf. In re Huai-
Hung Kao, 639 F.3d 1057, 1070 (Fed. Cir. 2011) (“Maloney's express
teachings render the claimed controlled release oxymorphone formulation
obvious, and the claimed ‘food effect’ adds nothing of patentable
consequence.”); see also Ex parte Obiaya, 227 USPQ 58, 60 (BPAI 1985).
Thus, Appellants’ arguments that the applied prior art fails to render
obvious the claimed invention are unavailing, and a preponderance of the
evidence supports the Examiner’s reasonable position that it would have
been prima facie obvious to use the claimed ingredients in the claimed
ranges so as to result in a slurry with a solids content greater than 82% for a
center fill gum composition.
Furthermore, a preponderance of the evidence supports the
Examiner’s position that the artisan of ordinary skill would have appreciated
that the amount of each ingredient was a known result effective variable
(e.g., Ans. 13). The law is replete with cases in which the difference
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between the claimed invention and the prior art is some range or other
variable within the claims. It is well settled that, generally speaking, it
would have been obvious for an artisan with ordinary skill to develop
workable or even optimum ranges for result-effective parameters. These
cases have consistently held that the Appellants must show that the
particular range is critical, generally by showing that the claimed range
achieves unexpected results relative to the prior art range. See e.g., In re
Peterson, 315 F.3d at 1329; In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir.
1990). The burden rests with Appellants to establish (1) that the alleged
unexpected results presented as being associated with the claimed invention
are, in fact, unexpected, (2) that the comparisons are to the disclosure of
closest prior art, and (3) that the supplied evidentiary showing is
commensurate in scope with the claimed subject matter. See In re Klosak,
455 F.2d 1077, 1080 (CCPA 1972).
On this record, Appellants have not met this burden.
Accordingly, we affirm the Examiner’s § 103 rejection of all the
claims on appeal based on Jani.
DECISION
The decision of the Examiner is affirmed.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1).
AFFIRMED

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