Ex Parte Fei et al

Patent Trial and Appeal Board

Aug 5, 2013

10641961 (P.T.A.B. Aug. 5, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte LIN FEI, SUMAN K. CHOPRA,
PRAKASARAO MANDADI, NEETA PATEL,
RAMACHANDRA SHASTRY, YELLOJI-RAO K. MIRAJKAR,
and MICHAEL PRENCIPE1
__________

Appeal 2012-003156
Application 10/641,961
Technology Center 1600
__________

Before DONALD E. ADAMS, ERIC GRIMES, and ERICA A.
FRANKLIN, Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims related to a
tooth whitening composition. The Examiner has rejected the claims as
obvious. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.

1 Appellants identify the Real Party in interest as Colgate-Palmolive
Company (Appeal Br. 3).
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STATEMENT OF THE CASE
The Specification discloses that available products “to whiten teeth …
lose their whitening efficacy over time as peroxide compounds in aqueous
solutions are relatively unstable” (Spec. 2:5-8). The Specification discloses
“a stable non-aqueous dental whitening composition comprised of an
anhydrous liquid suspension of an anhydrous peroxide whitening agent in an
anhydrous liquid hydrophilic polymer” (id. at 2:16-18), which “provides a
stable vehicle that prevents the decomposition of the peroxide whitening
agent during storage” (id. at 2:22-23).
Claims 21-24 and 26-34 are on appeal. Claim 21, the only
independent claim, reads as follows:
21. A stable, non-aqueous liquid tooth whitening composition
suitable for application to teeth comprising:
a liquid suspension comprising:
a) PVP/H2O2 (polyvinyl pyrrolidone-H2O2) dispersed in an orally
acceptable anhydrous hydrophilic liquid polymer, wherein the liquid
polymer is present in an amount from 5 to 70 weight %,
b) an adhesion enhancing agent comprising polyvinyl
pyrrolidone/vinyl acetate copolymer or a vinyl acetate copolymer and
optionally further comprising amorphous, fumed silica, and
c) less than 10% by weight water;
the composition being sufficiently viscous to form an adherent continuous
layer upon application to dental enamel surfaces so as to provide release of
peroxide over an extended period of time.

The claims stand rejected under 35 U.S.C. § 103(a) as follows:
• Claims 21-23, 26-29, and 32-34 in view of Montgomery2 and
Cowsar3;

2 Montgomery US 2001-0021374 A1, Sept. 13, 2001.
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• Claim 24 in view of Montgomery, Hassan,4 and Cowsar;
• Claim 30 in view of Montgomery, Orlowski,5 and Cowsar; and
• Claim 31 in view of Montgomery, Christina-Beck,6 and Cowsar.
I.
Issue
The Examiner has rejected claims 21-23, 26-29 and 32-34 as obvious
in view of Montgomery and Cowsar. The Examiner finds that Montgomery
exemplifies a whitening toothpaste comprising sodium percarbonate, a liquid
hydrophilic polymer, hydrated silica (as thickener), and 1.8 wt % water
(Answer 4-5). The Examiner further finds that Montgomery discloses that
“[s]odium percarbonate … may be substituted with poly (vinyl pyrrolidone)/
hydrogen peroxide complexes” and that “[h]ydrated silica … may be
substituted with poly(vinylpyrrolidone-co-vinyl acetate) as an adhesion
enhancing agent” (id.), and concludes that the claimed composition would
have been obvious based on Montgomery’s suggested substitutions (id. at
5-6).
Appellants contend that Montgomery teaches away from the
composition of claim 21 because it is a toothpaste that is not meant to
remain on teeth for an extended period and because it is designed to release
peroxyacids rather than hydrogen peroxide (Appeal Br. 10-12). Appellants
also contend that Montgomery does not teach an adhesion enhancing agent

3 Cowsar, US 5,565,216, Oct. 15, 1996.
4 Hassan et al., US 5,851,514, Dec. 22, 1998.
5 Orlowski et al., US 7,067,115 B2, June 27, 2006.
6 Christina-Beck et al., US 5,766,574, June 16, 1998.
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comprising polyvinyl pyrrolidone/vinyl acetate copolymer (id. at 13).
Finally, Appellants argue that Cowsar does not, as the Examiner found,
provide evidence that Montgomery’s polyethylene glycol is a liquid
hydrophilic polymer (Reply Br. 11).
The issue presented is: Does the evidence of record support the
Examiner’s conclusion that Montgomery would have made obvious a
composition within the scope of claim 21?
Findings of Fact
1. Montgomery discloses “compositions and methods useful in
cosmetically treating teeth in a manner to improve the brightness or shade of
the teeth” (Montgomery 2, ¶ 0015).
2. Montgomery discloses that the composition can “include[ ] at least
two components: one component including a source of peroxide (such as
hydrogen peroxide), and a second component including a source of acetyl
groups” (id. at 2, ¶ 0019).
3. Montgomery discloses that the “acyl [sic, acetyl] group source and
the peroxide precursor, upon contact with an aqueous solution, generate a
peroxyacid. The acyl [sic] group source and the peroxide precursor may be
dispersed within an anhydrous carrier.” (Id. at 2, ¶ 0016.)
4. Montgomery discloses that the hydrogen peroxide precursor “is
preferably selected from the group consisting of carbamide peroxide, sodium
percarbonate, … and the anhydrous poly(vinyl pyrrolidone)/hydrogen
peroxide complexes” (id. at 3, ¶ 0026).
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5. Montgomery discloses that the composition “may be applied to the
stained tooth surface as liquids, gels, pastes, sprays, or as solid delivery
systems” (id. at 4, ¶ 0035).
6. Montgomery discloses that carriers for single component,
relatively anhydrous compositions “include glycerin, propylene glycol, and
polyethylene glycols” (id. at 4, ¶¶ 0037-0038).
7. Montgomery discloses that a “thickener may also be added to
increase contact time of either the single or multi-component composition on
the tooth surface,” including “salts of … poly(vinylpyrrolidone),
poly(vinylpyrrolidone-co-vinyl acetate), silicon dioxide, [and] fumed silica”
(id. at 4, ¶ 0039).
8. Montgomery discloses that thickeners can be included at a
concentration of 0.5 to 20 percent by weight (id.).
9. Montgomery exemplifies a toothpaste composition containing
polyethylene glycol 400 (34.76%), polyethylene glycol 3350 (1.00%), water
(1.80%), glyceryl triacetate (2.00%), sodium percarbonate (5.00%), sodium
bicarbonate (50.00%) and hydrated silica (1.6%), among other things (id.).
10. Cowsar discloses that “water-miscible, hydrophilic liquid
carrier[s] … include polyhydroxy compounds (such as propylene glycol,
glycerine, …) and ethers including simple ethers and polyethers” (Cowsar,
col. 10, ll. 1-8).
11. The Specification discloses that the “nonaqueous liquid whitening
composition forms an adherent layer of peroxide containing suspension that
has the capacity to release the peroxide whitening agent over an extended
period of time, e.g., from about 5 to about 30 minutes” (Spec. 2:30-32).
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12. The Specification discloses that “[e]xamples of nonaqueous liquid
hydrophilic polymer vehicles suitable for use in the practice of the present
invention includes polyethylene glycols” (Spec. 3:24-25).
13. The Specification discloses that “[p]olyethylene glycols 200, 300,
400 and 600 are clear viscous liquids at room temperature” (id. at 3:30-33).
Analysis
Claim 21 is directed to a composition comprising (a) PVP/H2O2
(polyvinyl pyrrolidone-H2O2) in an anhydrous hydrophilic liquid polymer (5
to 70 weight %), (b) a polyvinyl pyrrolidone/vinyl acetate copolymer or a
vinyl acetate copolymer and (c) less than 10% by weight water.
Montgomery discloses anhydrous, single component tooth whitening
compositions containing a source of hydrogen peroxide, such as polyvinyl
pyrrolidone-H2O2, and a source of acetyl groups, in a carrier such as a
polyethylene glycol. Montgomery also discloses that the compositions may
contain polyvinyl pyrrolidone/vinyl acetate copolymer as a thickener to
increase contact time between the composition and the tooth surface. In
view of Montgomery’s disclosure, it would have been obvious for one of
skill in the art to formulate an anhydrous (less than 10% by weight water)
liquid tooth whitening composition which comprises polyvinyl pyrrolidone-
H2O2 dispersed in polyethylene glycol because Montgomery suggests
whitening compositions with these components. Additionally, it would have
been obvious to include a polyvinyl pyrrolidone/vinyl acetate copolymer
thickening agent in order to increase contact time with the tooth, as
suggested by Montgomery. The resulting composition would reasonably be
expected to “form an adherent continuous layer upon application to dental
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enamel surfaces so as to provide release of peroxide over an extended period
of time,” as recited in claim 21.
Appellants argue that Montgomery “teaches away from compositions
that release hydrogen peroxide, rather than producing peroxyacids” (Appeal
Br. 10). Appellants argue that the “objective … in Montgomery is that the
formulation ‘quickly and effectively produce a peroxyacid.’” (id.).
This argument is not persuasive. Although Montgomery’s
compositions are intended to produce a peroxyacid by reaction of hydrogen
peroxide with an acetyl group source, they nonetheless contain a hydrogen
peroxide precursor such as poly(vinyl pyrrolidone)/hydrogen peroxide
complexes as the source of hydrogen peroxide. Thus, Montgomery would
have made obvious a composition comprising poly(vinyl pyrrolidone)/
hydrogen peroxide complexes, along with the other components of claim 21.
Appellants further argue that although Montgomery’s compositions
“may comprise thickeners, [they] are intended to release peroxyacetic acid
immediately upon contact with water. Montgomery teaches away from
compositions that remain on the teeth for extended periods, … stating that
prolonged exposure of the teeth to bleaching compositions has … ‘a number
of adverse consequences.’” (Appeal Br. 10).
This argument is also unpersuasive. The Specification discloses that
an extended period of time may be, for example, five minutes. As discussed
above, Montgomery suggests adding a thickening agent to its composition in
order “to increase contact time … on the tooth surface” (FF 7); it is
reasonable to conclude that “increase[d] contact time” includes a contact
time of at least five minutes. Although Montgomery states that “[p]rolonged
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exposure of teeth to bleaching compositions, as practiced at present, has a
number of adverse effects” (Montgomery 1, ¶ 0009, emphasis added), that
statement is applied to prior art methods, which involve “contact times of
greater than about 60 minutes” (id. at 1, ¶ 0008), not methods using
Montgomery’s inventive composition.
Appellants argue that “Example VII of Montgomery is a toothpaste,
not a liquid. It is meant to be brushed on the teeth with water and
immediately rinsed off, not applied and left on” (Appeal Br. 12). Appellants
also argue that the composition of Montgomery’s Example VII is not
viscous, as recited in claim 21, and that it would not have been obvious to
modify it to be left in the mouth for extended periods (id. at 13-14).
This argument is not persuasive. Although Montgomery exemplifies
a toothpaste composition, its teachings are not limited to toothpastes. As the
Examiner pointed out (Answer 5), Montgomery teaches that its composition
can be in the form of a liquid or gel (FF 5) and expressly suggests modifying
its composition so as to increase its contact time with the teeth (FF 7). Thus,
the composition of claim 21 would have been obvious based on the
disclosure of Montgomery as a whole.
Appellants argue that “[w]hile PVP/H2O2 complexes are … disclosed
in Montgomery, they are not selected or identified as being preferable to any
other peroxide source, and indeed, they would be disfavored, because they
provide for a delayed release, rather than the instant reaction described in
Example VII” (Appeal Br. 12). Contrary to Appellants’ position, however,
Montgomery expressly suggests PVP/H2O2 complexes as a suitable peroxide
source for its composition.
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Appellants also argue that there “is no teaching in Montgomery to use
PVP/VA or a vinyl acetate copolymer as an adhesion enhancing agent, or to
use any adhesion enhancing agent” (Appeal Br. 13). This argument is not
supported by the evidence, because Montgomery expressly discloses the use
of PVP/VA as a thickening agent in order to increase contact time – i.e.,
adhesion with – the teeth.
Appellants argue that Cowsar “cannot fairly be construed as pro-
viding evidentiary support for the Examiner’s assertion that Montgomery’s
recited polyethylene glycol species are necessarily liquid hydrophilic
polymers” (Reply Br. 11).
This argument is not persuasive. While Cowsar does not expressly
state that polyethylene glycols are liquid hydrophilic polymers, the instant
Specification itself characterizes polyethylene glycol 400, which is used in
Montgomery’s Example VII composition, as a hydrophilic clear viscous
liquid (FFs 12, 13). In any event, Montgomery suggests polyethylene
glycols generally as a carrier (FF 6) and is not limited to the particular
species used in Example VII. Thus, the evidence of record shows that
Montgomery suggests a hydrophilic liquid polymer as a carrier.
Thus, we affirm the rejection of claim 21 as being obvious in view of
Montgomery and Cowsar. Claims 22, 23, 26-29 and 32-34 have not been
argued separately and therefore fall with claim 21. 37 C.F.R.
§ 41.37(c)(1)(iv).
The Examiner has also rejected claim 24 as obvious in view of
Montgomery, Hassan, and Cowsar. Claim 24 depends from claim 21 and
further requires that “the liquid polymer is a polyethylene oxide/
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polypropylene oxide block copolymer.” The Examiner relies on
Montgomery, as discussed above, and concludes that Hassan would have
made obvious the additional limitation of claim 24 (Appeal Br. 7-8).
Appellants argue that Hassan does not cure the deficiencies of Montgomery
in rendering claim 21 obvious. This argument is not persuasive for the
reasons discussed above. We affirm the rejection of claim 24 as obvious in
view of Montgomery and Hassan.
Conclusion of Law
The evidence of record supports the Examiner’s conclusion that
Montgomery would have made obvious the stable, non-aqueous liquid tooth
whitening composition of claim 21.
II.
The Examiner has rejected claim 30 under 35 U.S.C. § 103(a) as
obvious in view of Montgomery, Orlowski and Cowsar. Claim 30 depends
indirectly from claim 21 and further requires that the composition comprises
the peroxide activator NaCO3.
The Examiner relies on Montgomery and Cowsar as discussed above.
The Examiner finds that Orlowski discloses that “one or more alkali
materials may be included in the teeth whitening composition, including
sodium carbonate, sodium bicarbonate, calcium gluconate” (Answer 8). The
Examiner concludes that it would have been obvious to a person of ordinary
skill in the art to add Orlowski’s sodium carbonate to Montgomery’s
composition “to enhance the tooth whitening properties … because Orlowski
et al. suggest that one or more alkali materials can be added to tooth
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whitening compositions” and Montgomery exemplifies compositions also
comprise alkali material (sodium bicarbonate) (id. at 8-9).
Appellants argue that Orlowski “teaches away from non-aqueous
formulations, and away from single component formulations” (Appeal Br.
15-16).
This argument is not persuasive because Montgomery discloses that
single component anhydrous compositions that include an alkali material
(sodium bicarbonate) (FF 9). Orlowski discloses that sodium bicarbonate
and sodium carbonate are both alkali materials known to be used in tooth
whiteners; thus, the substitution of one for the other would have been
obvious to a person of ordinary skill in the art.
III.
The Examiner has rejected claim 31 under 35 U.S.C. § 103(a) as
obvious in view of Montgomery, Christina-Beck, and Cowsar. Claim 31
indirectly depends from claim 21 and further requires that the composition
comprises the peroxide activator manganese gluconate.
The Examiner relies on Montgomery and Cowsar as discussed above.
The Examiner finds that Christina-Beck discloses “tooth whitening
compositions comprising peroxide activators such as manganese
coordination complexes (e.g. manganese gluconate) … [which] activates the
peroxide component and accelerates the release of active oxygen to effect
rapid whitening action” (Answer 9). The Examiner concludes that it would
have been obvious to a person of ordinary skill in the art “to add manganese
gluconate as taught by Christina-Beck et al. to the composition of
Montgomery to enhance the release of peroxide from PVP/H202” because
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Christina-Beck teaches that peroxide activators such as manganese
gluconate accelerate whitening action (id. at 9-10).
Appellants contend that “[l]ike Orlowski, Christina-Beck discloses
two-component dentifrice compositions. It does not disclose compositions
to form an adherent continuous layer upon application to dental enamel
surfaces.” (Appeal Br. 16.)
This argument is not persuasive because, as discussed above,
Montgomery discloses single component anhydrous compositions and
suggests adding a thickener to increase contact time with the teeth. The
Examiner relies on Christina-Beck only for the suggestion of including
manganese gluconate as a peroxide activator, and Appellants have identified
no error in that conclusion.
SUMMARY
We affirm the rejection of claims 21-24 and 26-34 under 35 U.S.C.
§ 103(a).
TIME PERIOD FOR RESPONSE
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

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