Ex Parte SchmidtDownload PDFPatent Trial and Appeal BoardFeb 24, 201611197583 (P.T.A.B. Feb. 24, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 111197,583 08/05/2005 23373 7590 02/26/2016 SUGHRUE MION, PLLC 2100 PENNSYLVANIA A VENUE, N.W. SUITE 800 WASHINGTON, DC 20037 FIRST NAMED INVENTOR Niels Ravn Schmidt 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. Q89531 7923 EXAMINER DEES, NIKKI H ART UNIT PAPER NUMBER 1791 NOTIFICATION DATE DELIVERY MODE 02/26/2016 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): PPROCESSING@SUGHRUE.COM sughrue@sughrue.com USPTO@sughrue.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte NIELS RA VN SCHMIDT Appeal2014-005429 Application 11/197,583 Technology Center 1700 Before PETER F. KRATZ, JEFFREY T. SMITH, and JAMES C. HOUSEL, Administrative Patent Judges. KRATZ, Administrative Patent Judge. DECISION ON APPEAL This is a decision on an appeal under 35 U.S.C. § 134 from the Examiner's final rejection of claims 1, 2, 4--6, 8, 10-12, 14--16, 27-33, and 36-40. We have jurisdiction pursuant to 35 U.S.C. § 6. Appellant's claimed invention is directed to a layered chewing gum tablet including at least one layer containing gum base and at least one layer substantially free of gum base. According to the subject Specification, "the term 'gum base' refers in general to a commercially available gum base suitably [sic] for production of chewing gum" wherein "[ s ]uch gum bases normally comprise natural and/or synthetic resins and optionally other ingredients" (Spec. 10, 11. 3-7). Further details are evident after review of claim 1, which is illustrative and reproduced below: Appeal2014-005429 Application 11/197,583 1. A layered chewing gum tablet of compressed material comprising at least two layers wherein at least one of the at least two layers contains gum base and at least another of said at least two layers is substantially free of gum base, wherein the at least one layer containing gum base comprises gum base in an amount of 35.5 to 86.5 weight-% based on the total weight of the layered chewing gum tablet, and wherein said gum base is present in compressed gum granules having an average diameter in the range of 0.3 mm to 2 .1 mm. The Examiner relies on the following prior art references as evidence in rejecting the appealed claims: Ream et al. US 6,322,806 Bl Nov. 27, 2001 (hereinafter "Ream") Leadbeater et al. WO 2004/006686 A2 Jan. 22, 2004 (hereinafter "Leadbeater") The Examiner maintains the following grounds of rejection: Claims 1, 2, 4---6, 8, 10, 11, 14--16, 27-33, and 36-40 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Leadbeater. 1 Claim 12 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Leadbeater in view of Ream. Claims 1, 2, 4---6, 8, 10, 11, 14--16, 27-33, and 36-40 stand provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1, 2, 4--10, 12-15, 17- 30, 32-37, 37--42, 44, 46-49, 51-53, and 55-73 of copending Application No. 10/520,786. Concerning the first stated obviousness rejection over Leadbeater, Appellant argues the rejected claims together as a group (App. Br. 5-8). We 1 Appellant does not dispute that Leadbeater is a prior art reference available for use under 35 U.S.C. § 103(a). 2 Appeal2014-005429 Application 11/197,583 select claim 1 as the representative claim on which we decide this appeal as to this ground of rejection. After a careful review of the opposing positions and evidence furnished by Appellant and the Examiner we determine that the Appellant's arguments and Declaration evidence are insufficient to identify reversible error in the Examiner's obviousness rejection of claim 1 over Leadbeater. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011). We affirm the stated obviousness rejection over Leadbeater for substantially the fact findings and the reasons set forth by the Examiner in the Examiner's Answer and in the Final Office Action. We offer the following for emphasis. The Examiner has determined that "Leadbeater et al. disclose a layered chewing gum tablet" having "two layers wherein one layer includes gum base granules having a particle size ranging from 10 µm to 2 mm (p. 3, lines 33-34)" (Ans. 2). The Examiner finds that Leadbeater teaches or suggests that "gum base may be present in the first layer in an amount ranging from 5 to 99 wt. % of the first layer" wherein [ t ]he ratio taught between the first (gum base containing) and second layers ranges from 1. 5: 1 to 10: 1, indicating that the amount of gum base in the tablet could vary widely and include appellant's claimed amounts of gum base to be present in both the layer containing the gum base, as well as the entire weight of the tablet (id.). This gum base amount corresponds to the required amount of gum base in Appellant's representative claim 1 (id.). Also, the Examiner has determined that Leadbeater teaches that gum base need not be present in the 3 Appeal2014-005429 Application 11/197,583 second layer and that the layers can further "include sweetener, flavor, filler, color and optionally another additive (p. 3 lines 4-13)" (Ans. 3). As for Appellant's claimed average particle diameter for the gum base-containing granules, the Examiner, as indicated above, has determined that Leadbeater teaches the use of gum base present in gum granules, which granules can have particle sizes that may range from 10 microns (0.01 mm) to 2 mm. The Examiner finds that "[t]he average particle size (i.e. average diameter) of the granules of Leadbeater must be in the range from 10 µm to 2 mm, as if there are no particles smaller than 10 µm or larger than 2 mm, the average of the particle sizes cannot be outside of this range" (Ans. 5). 2 In other words, the Examiner has determined that the disclosure of Leadbeater also dictates that the particles would have an average gum granule diameter falling within the disclosed 10 microns to 2 mm particle size range of particle sizes disclosed by Leadbeater. Hence, the Examiner essentially maintains Leadbeater inferentially discloses/suggests an average particle diameter range for the gum granules of Leadbeater that embraces and overlaps with the claimed narrower average diameter range of 0.3 mm to 2 .1 mm, which overlapping range conveyed by Leadbeater renders the selection of a particle size average diameter within the encompassed implicitly disclosed average particle size range of Leadbeater that corresponds to the claimed narrower and overlapping average particle diameter range prima facie obvious to one of ordinary skill in the art. See In 2 Appellant discloses that the "average diameter" "is defined as the diameter of a sphere having the same volume as e.g. the granule" and "according to the definition granules having the same volume also have the same average diameter" (Spec. 10-11 ). 4 Appeal2014-005429 Application 11/197,583 re Geisler, 116 F.3d 1465, 1469--70 (Fed. Cir. 1997); In re Boesch, 617 F.2d 272, 276 (CCPA 1980); In re Malagari, 499 F.2d 1297, 1303 (CCPA 1974). That is, this selection amounts to a determination of the workable average diameter size range for the gum base particles sizes taught to be employed by Leadbeater (Ans. 2-3, 5---6; Leadbeater, p. 3). Appellant argues that the Examiner has failed to establish a prima facie case of obviousness because the Examiner misinterprets a particle size distribution range furnished by Leadbeater as an average granule diameter range in applying Leadbeater to the subject matter of Appellant's representative claim 1, which requires gum base in compressed gum granules having an average diameter in the range of 0.3 mm to 2.1 mm in the layered gum product (App. Br. 5-6). In this regard, Leadbeater discloses that (p. 3): The particle sizes of the gum base and the tablet base of both the first and second integral parts may range from 10 microns to 2mm, but the average particle size may be from 20 to 160 microns, preferably from 30 to 120 microns and more preferably from 50 to 100 microns. Contrary to Appellant's argument and as set forth by the Examiner in the Answer as indicated above, the Examiner does not misinterpret the disclosed particle size range disclosure of Leadbeater as an average particle size range and state, as contended by Appellant (Reply Br. 4 ), that "since Leadbeater discloses that the particle sizes are in the range of 10 microns ( .01 mm) to 2 mm, the average diameter of all of the particles must be in the claimed range of0.3 mm to 2.1 mm." Rather, the Examiner finds that the average particle size range encompassed by the particle size range ("10 microns to 2mm") disclosed by Leadbeater must be an average particle size 5 Appeal2014-005429 Application 11/197,583 (diameter) range of values for the particles that falls within the scope of and is consistent with the 10 microns to 2 mm particle size range specifically disclosed by Leadbeater as an option ("may range from 10 microns to 2mm") (Ans. 5, Leadbeater p.3). Leadbeater does not limit the average particle size to be employed to a value falling within the average particle size ranges explicitly identified by Leadbeater as representing possible range limit choices for an average particle size ("but the average particle size may be from 20 to 160 microns, preferably from 30 to 120 microns and more preferably from 50 to 100 microns" (emphasis added)) (Ans. 5; Leadbeater p. 3). To be sure, Leadbeater teaches preferred average particle sizes encompassing values outside the average diameter range set forth in representative claim 1. However, the mere fact that the prior art teaches or prefers an average particle size that can lie without the claimed requirements does not militate against a determination of obviousness when the prior art also encompasses a layered chewing gum tablet having a gum base particle/ granule average size falling within the claimed requirements, as here, absent a compelling and substantiated explanation articulating why one ordinary skill in the art would have ignored and/or not have been led to the overlapping territory encompassed by the teachings/suggestions of Leadbeater. In this regard, it is well settled that all of the disclosures in a reference must be considered, including the non-preferred embodiments. In re Kaslow, 707 F.2d 1366, 1373 (Fed. Cir. 1983); In re Fracalossi, 681 F.2d 792, 793-94 (CCPA 1982); In re Lamberti, 545 F.2d 747, 750 (CCPA 1976). 6 Appeal2014-005429 Application 11/197,583 It follows that we are not persuaded of reversible error in the Examiner's obviousness rejection over Leadbeater by the arguments asserting the lack of a prima facie case of obviousness set forth in the Appeal Brief. In this regard, Leadbeater' s disclosure is not limited to the argued preferred embodiments and/or the examples. Given the breadth of the disclosure of Leadbeater respecting suitable particles sizes for the gum base particles, we concur with the Examiner that one of ordinary skill in the art would have been reasonably expected to arrive at the selection of a gum base having an average particle diameter within the claimed range upon the exercise of ordinary skill in determining the workable limits for gum base particles. In the Declaration of Dr. J esper N eergaard, 3 Appellant presents evidence by way of an assertion as to the criticality (unexpectedness) associated with "the combination of the gum base content being within the range of 35.5 to 86.5% and the gum base granule size being within the range of 0.3 to 2.1 mm in order to achieve the surprising volume sensation of the present invention", which asserted criticality of the claimed ranges is argued as supporting Appellants' contention that the claimed subject matter is nonobvious over Leadbeater (Deel. p. 2, i-f 4; App. Br. 7, Reply Br. 6). As determined by the Examiner, however, the Neergaard Declaration statement of Opinion as to "surprising volume sensation" and criticality of the combination of claimed ranges falls short in presenting sufficient evidence to establish the criticality of or unexpected results for a layered chewing gum containing a combination of gum base content within the 3 Declaration of Dr. Jesper Neergaard, submitted June 20, 2012. 7 Appeal2014-005429 Application 11/197,583 claimed range and average granule size within the claimed range according to representative claim 1 as compared with layered chewing gum having either a gum content and/or an average granule size just outside the claimed range(s) (Final Office Action 8-9). For instance, Dr. Neergaard opines that"[ w ]hen an average gum base granule diameter of less than 0.3 mm is used, the tablet would tend to disintegrate and hence compromise the volume" (Deel. 3, i-f 1 ). However, no evidence supporting the latter statement accompanies the Declaration. Nor does Dr. Neergaard point to any particular portion of the Applicant's Specification that supports this statement. Indeed, Appellant's Specification undercuts the Declaration Opinion by disclosing that gum granules having an average diameter in the range of0.1 mm to 2.5 mm that may be manufactured as described in European Patent Application No. 03388031.1 are not only of suitable size but represent a preferred gum granule average diameter range of sizes (Spec. 5, 11. 17-27). Consequently, the Declaration evidence is insufficient to establish the criticality/unexpectedness of the claimed combination of ranges. Appellant reemphasizes in the Reply Brief that the Declaration Opinion enhances their argument that the explicitly disclosed (20 to 160 microns/0.16 mm) and exemplified ( 40 microns/0.04 mm) gum base average particle sizes of Leadbeater are too far removed from the claimed gum base average diameter range of 0.3 mm to 2.1 mm such that one of ordinary skill in the art would not have been led to seek a gum base with an average diameter within the claimed range notwithstanding the broader particle size range of 10 microns (.0 Imm) to 2mm for the gum base particles employed in Leadbeater (Reply Br. 5-7). 8 Appeal2014-005429 Application 11/197,583 Once again, we are not persuaded of reversible error in the Examiner's obviousness position by this argument that is limited to the example and explicitly preferred embodiment disclosures of Leadbeater without adequately taking into account the broader particle sizes for gum base particles disclosed by Leadbeater as being suitable. Moreover, Appellant's Specification disclosure undercuts Appellant's arguments given that the Specification discloses that "any [suitable] water-insoluble gum base well[-]known in the art" can be employed in their gum product and by disclosing that the gum base granules they employ can be made in ways well-known to an artisan, such as via "underwater granulating as described in European patent application no 03388031.1" (Spec. 11, 11. 13-14; 13, 11. 14--25). Having reconsidered the Examiner's obviousness position in light of the arguments and evidence marshalled by Appellant, we determine that, on balance, the evidence of obviousness furnished by the Examiner outweighs the evidence marshalled by Appellant that is argued to indicate the non- obviousness of the claimed subject matter. It follows that we affirm the Examiner's first stated obviousness rejection over Leadbeater. Concerning the Examiner's separate obviousness rejection of claim 12 over Leadbeater in view of Ream, Appellant does not separately argue the rejection pertaining to dependent claim 12 in the Appeal Brief. It follows that we shall sustain this rejection. Concerning Appellant's arguments traversing the Examiner's obviousness-type double patenting rejection of certain appealed claims over the claims of Application No. 10/520,786, we concur with the reasons set 9 Appeal2014-005429 Application 11/197,583 forth by the Examiner as to why the tendered arguments are not persuasive of substantive error in this ground of rejection (Ans. 7-8; Final Office Action 6-8). In this regard, much of Appellant's argument parallels the unsuccessful argument made against the Examiner's obviousness rejection over Leadbeater in that claim 1 of U.S. Application No. 10/520,786 requires gum base having a particle size of from 10 microns to 2 mm. On this appeal record, the argument presented by Appellant does not indicate reversible error in the Examiner's obviousness-type double patenting rejection over the claims of U.S. Application No. 10/520,786. It follows that we shall sustain the latter ground of rejection. CONCLUSION/ORDER The Examiner's decision to reject the appealed claims 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). AFFIRMED 10 Copy with citationCopy as parenthetical citation