Appeal No. 2006-2604 Page 6
Application No. 10/253,066
Rowsell “is silent on treating the material to control its release rate from the gum” (id.,
page 6); and “Song is silent about acyclic carboxamides” (id.). Appellants conclude that
“[t]here is nothing in Luo that would motivate the combination of Luo and Song. . . .
Likewise, since Rowsell does not indicate any need or desire to modify the release rate
of acyclic carboxamides, there is no motivation to combine Song and Rowsell. Claims
1, 7, 17, 18, 24 and 25 are thus patentable over Luo, Rowsell and Song.” Id., page 7.
This argument is not persuasive. Appellants’ argument improperly focuses on
the teachings of each reference in isolation, or at best two at a time. Obviousness,
however, depends on what the references as a whole would have suggested to a
person of ordinary skill in the art. See, e.g., In re Young, 927 F.2d 588, 591,
18 USPQ2d 1089, 1091 (Fed. Cir. 1991) (“The test for obviousness is what the
combined teachings of the references would have suggested to one of ordinary skill in
the art.”).
Here, Luo teaches that encapsulated cooling agents, such as cyclic
carboxamides, are desirable ingredients in chewing gum. Rowsell teaches that acyclic
carboxamides are also cooling agents. Song teaches a method of encapsulating active
agents, including menthol, for use in chewing gum. Therefore, when viewed together as
they must be, the references would have suggested the method of claim 1 to those of
ordinary skill in the art. The rejection of claim 1 is affirmed. Claims 7, 17, 24, and 25
fall with claim 1.
Claim 18 is directed to the method of claim 1 but also requires that a high
potency sweetener be mixed with the acyclic carboxamide and polymer prior to
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