Ex Parte Ha et al

Board of Patent Appeals and Interferences

Jul 23, 2012

10787804 (B.P.A.I. Jul. 23, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/787,804 02/26/2004 Thinh Nguyen Ha 9558 6711
27752 7590 07/24/2012
THE PROCTER & GAMBLE COMPANY
Global Legal Department - IP
Sycamore Building - 4th Floor
299 East Sixth Street
CINCINNATI, OH 45202
EXAMINER
LEWIS, RALPH A
ART UNIT PAPER NUMBER
3732
MAIL DATE DELIVERY MODE
07/24/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte THINH NGUYEN HA, BARBRA ANN CAPPEL,
JAYANTH RAJAIAH, and TAO HE
_________

Appeal 2011-003926
Application 10/787,804
Technology Center 3700
__________

Before TONI R. SCHEINER, MELANIE L. McCOLLUM, and
ERICA A. FRANKLIN, Administrative Patent Judges.

SCHEINER, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the rejection of claims
10, 12,-15, 17-19, 29, 31-36, and 38-47, directed to a method of applying
denture adhesive. The claims have been rejected on the grounds of
anticipation and obviousness. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
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Application 10/787,804

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STATEMENT OF THE CASE
Claims 10, 12-15, 17-19, 29, 31-36, and 38-47 are pending and on
appeal; claims 1-9, 11, 16, 20-28, 30, and 37 have been canceled (App. Br.
2). Appellants have not presented separate arguments for the claims, with
the exception of claims 10, 29, and 40. Claims not separately argued will
stand or fall with claims 10, 29, and 40. 37 C.F.R. § 41.37(c)(1)(vii).
Claims 10, 29, and 40 read as follows:
10. A method of decreasing food entrapment comprising:
a. opening a box having information fixed and/or printed within an
interior portion of said box, said information for instructing a denture wearer
how to apply a denture adhesive composition along a periphery of a denture
in a manner that will decrease food entrapment between said denture and the
denture wearer’s gums and/or oral mucus tissues; wherein said information
instructs the denture wearer to apply said denture adhesive composition as a
continuous bead that extends about the entire periphery of at least one of a
back quarter portion, a back half portion, a back three-quarters portion, or an
entire periphery of a lower denture, or as a continuous bead that extends
about the entire periphery of at least one of a back half portion, a back three-
quarters portion, or an entire periphery of an upper denture;
b. removing a tube from said box, said tube containing said denture
adhesive composition; and
c. applying a continuous peripheral bead of said denture adhesive
composition to an upper or a lower denture.
29. A method of decreasing food entrapment or sealing out food from
under an upper or lower denture, the method comprising:
a. applying a denture adhesive composition on at least one of a back
quarter portion, a back half portion, a back three-quarters portion, or an
entire periphery of said lower denture as a continuous peripheral bead or
applying a denture adhesive composition on at least one of a back half
portion, a back three-quarters portion, or an entire periphery of said upper
denture as a continuous peripheral bead; and
b. inserting said upper or lower denture into the oral cavity of a
denture wearer.
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40. A method of decreasing food entrapment or sealing out food from
under an upper or lower denture, the method comprising:
a. applying a denture adhesive composition on at least one of a back
quarter portion, a back half portion, a back three-quarters portion, or an
entire periphery of said lower denture as a continuous peripheral bead; and
b. applying a denture adhesive composition on at least one of a back
half portion, or a back three-quarters portion of said upper denture as a
continuous peripheral bead; and
c. inserting said upper and/or lower denture into the oral cavity of a
denture wearer.
The Examiner relies on the following evidence:
PROTEFIX Haft-Crème
(http://www.queisser.de/protefix/haftcreme.html) internet web archive date
of December 4, 2003 (web archive.org). English translation.
STABILIDENT NATUR® (package and package insert), publication date
not available. English translation.
The claims stand rejected as follows:
(A) Claims 10, 12, 29, 31, and 33 under 35 U.S.C. § 102(a) as
anticipated by STABILIDENT NATUR®;
(B) Claims 10, 12-15, 17-19, 29, 31-36, and 38-47 under 35 U.S.C.
§ 103(a) as unpatentable over STABILIDENT NATUR®;
(C) Claim 29 under 35 U.S.C. § 102(a) as anticipated by PROTEFIX
Haft-Crème; and
(D) Claims 10, 12-15, 17-19, 29, 31-36, and 38-47 under 35 U.S.C.
§ 103(a) as unpatentable over PROTEFIX Haft-Crème.
PRINCIPLES OF LAW
During examination, the PTO must interpret terms in a claim using
“the broadest reasonable meaning of the words in their ordinary usage as
they would be understood by one of ordinary skill in the art, taking into
account whatever enlightenment by way of definitions or otherwise that
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may be afforded by the written description contained in the applicant’s
specification.” In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
“The [obviousness] analysis need not seek out precise teachings
directed to the specific subject matter of the challenged claim, for a court
can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” KSR Int’l v. Teleflex Inc., 550 U.S.
398, 418 (2007). Moreover, the obviousness analysis “is in actuality quite
flexible and not only permits, but requires, consideration of common
knowledge and common sense.” DyStar Textilfarben GmbH & Co.
Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1367 (Fed. Cir. 2006).
The burden of demonstrating unexpected results rests on the party
asserting them.
In order for a showing of “unexpected results” to be
probative evidence of non-obviousness, it falls upon the
applicant to at least establish: (1) that there actually is a
difference between the results obtained through the claimed
invention and those of the prior art; and (2) that the difference
actually obtained would not have been expected by one skilled
in the art at the time of [the] invention.
In re Freeman, 474 F.2d 1318, 1324 (CCPA 1973) (internal citations
omitted).)
REJECTION A
Claims 10, 12, 29, 31, and 33 stand rejected as anticipated by
STABILIDENT NATUR®.
The Examiner finds that STABILIDENT NATUR® is a “denture adhesive
that comes in a tube that is enclosed in a box with an insert having directions
for applying the denture adhesive in a bead along the periphery of the upper
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denture” (Ans. 5). An illustration from the STABILIDENT NATUR® insert is
reproduced below:

The illustration shows suggested application patterns for the denture
adhesive.
According to the Examiner, “[t]he center picture above illustrates a
continuous bead about the entire periphery of an upper denture” (Ans. 6).
Appellants contend that
[T]he middle picture of the Stabilident illustration shows strips
of denture adhesive on an upper denture that are not applied
continuously. That is, on the portions in questions (either the
back half, back three-quarters, or the entire periphery), the
Stabilident denture adhesive is clearly in discrete beads as
opposed to a continuous bead.
(App. Br. 5-6.)
This argument is not persuasive. The Specification does not define
“continuous peripheral bead,” and we agree with the Examiner that “any
peripheral bead applied by a tube of paste (including appellant’s) would
inherently have some type [of] joint where the peripheral bead was started
and where it ended” (Ans. 6). We agree with the Examiner that one of
ordinary skill in the art would reasonably interpret a bead that provides
complete coverage about the portion in question to be continuous “even
though it has a joint in it” (id. at 10).
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Appellants further contend that STABILIDENT NATUR® “does not
disclose application of a peripheral bead (claim 29) or application about the
entire periphery (claim 10) on a lower denture” (App. Br. 6).
This argument is not persuasive as claims 10 and 29 are written in the
alternative, and do not require applying denture adhesive to a lower denture.
The rejection of claims 10, 12, 29, 31, and 33 as anticipated by
STABILIDENT NATUR® is affirmed.
REJECTION B
Claims 10, 12-15, 17-19, 29, 31-36, and 38-47 stand rejected as
unpatentable over STABILIDENT NATUR®. STABILIDENT NATUR® discloses as
set forth above.
Appellants argue that “[t]his rejection involves the same issue of
whether Stabilident discloses the application of a denture adhesive
composition as a continuous peripheral bead” (App. Br. 7). Appellants
contend that “[t]he illustration clearly shows lines between beads indicating
discrete beads of adhesive” and “[t]here is simply no teaching or suggestion
in Stabilident to apply the adhesive as a continuous bead” (id.). Appellants
further contend that STABILIDENT NATUR® “does not disclose application of
a peripheral bead (claims 29 and 40) or application about the entire
periphery (claim 10) on a lower denture” (id.).
This argument is not persuasive. Even if we were to agree, merely for
the sake of argument, that the bead of adhesive extruded from the tube in the
STABILIDENT NATUR® illustration is not continuous because of a joint or
joints in the bead, the illustration plainly shows coverage of the entire
periphery, and we agree with the Examiner’s conclusion that it would have
been obvious to start and stop extrusion of the bead at any convenient spot
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(Ans. 8). Moreover, we agree that it would have been obvious to apply a
similar peripheral bead on a lower denture, as well. “A person of ordinary
skill is also a person of ordinary creativity, not an automaton.” KSR, 550
U.S. at 421.
To the extent Appellants argue that “the obviousness argument is
overcome by the showing of unexpected results as evidenced in the
specification” (App. Br. 8), we are not persuaded. Appellants point to
Example 1, which lists the components of denture adhesive compositions
A-L, and states that each of the compositions, applied as a peripheral bead to
top and bottom dentures, “prevents, reduces, and inhibits calculus, tartar,
plaque, stain and/or microbes on the gums and/or oral mucous tissues” and
“also prevents, reduces, and inhibits entry of food between the denture and
the soft tissue of the wearer” (Spec. 12). However, the Specification does
not characterize this result as surprising in any way, nor have Appellants
provided any evidence that this result would have been unexpected to one of
ordinary skill in the art.
The rejection of claims 10, 12-15, 17-19, 29, 31-36, and 38-47 as
unpatentable over STABILIDENT NATUR® is affirmed.
REJECTION C
Claim 29 stands rejected as anticipated by PROTEFIX Haft-Crème.
Appellants contend that the PROTEFIX Haft-Crème illustration “shows
strips of denture adhesive on an upper denture that are not applied
continuously . . . on the portions in question (either the back half, back three-
quarters, or the entire periphery)” (App. Br. 4). Appellants contend that
PROTEFIX Haft-Crème adhesive “is clearly in discrete bands” (id.). The
PROTEFIX Haft-Crème illustration is reproduced below:
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PROTEFIX Haft-Crème shows denture adhesive applied to an upper
denture, and teaches that “[a]n effective marginal sealing helps prevent[ ] the
penetration of food residues” (PROTEFIX Haft-Crème 2).
We agree with Appellants that PROTEFIX Haft-Crème does not show a
continuous peripheral bead covering the back half, back three-quarters, or
entire periphery of an upper denture, as those portions are defined at page 4
and Figures 1, 5, and 7 of the Specification.
The rejection of claim 29 as anticipated by PROTEFIX Haft-Crème is
reversed.
REJECTION D
Claims 10, 12-15, 17-19, 29, 31-36, and 38-47 stand rejected as
unpatentable over PROTEFIX Haft-Crème. PROTEFIX Haft-Crème discloses
as set forth above.
Appellants contend that “[t]here is simply no teaching or suggestion in
PROTEFIX to apply the adhesive in a continuous bead” (App. Br. 5). Further,
“[r]egarding claim 40, PROTEFIX clearly does not teach or suggest
application of a denture adhesive composition on any portion of a lower
denture” (id.).
Nevertheless, we agree with the Examiner that it would have been
obvious for one of ordinary skill in the art “to have extended the bead . . . to
the full periphery of one of the identified portions in order to improve the
grip of the adhesive and to provide an effective marginal seal to help prevent
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the penetration of food residues” (Ans. 9-10), on either an upper or lower
denture (id. at 8). In our view, applying a bead of adhesive to a denture in a
marginal, i.e., peripheral pattern effective to seal out food particles is well
within the ambit of “the inferences and creative steps that a person of
ordinary skill in the art would employ.” KSR, 550 U.S. at 421.
The rejection of claims 10, 12-15, 17-19, 29, 31-36, and 38-47 stand
rejected as unpatentable over PROTEFIX Haft-Crème is affirmed.
SUMMARY
(A) The rejection of claims 10, 12, 29, 31, and 33 under 35 U.S.C. §
102(a) as anticipated by STABILIDENT NATUR® is affirmed;
(B) The rejection of claims 10, 12-15, 17-19, 29, 31-36, and 38-47 as
unpatentable over STABILIDENT NATUR® is affirmed;
(C) The rejection of claim 29 as anticipated by PROTEFIX Haft-Crème
is reversed; and
(D) The rejection of claims 10, 12-15, 17-19, 29, 31-36, and 38-47 as
unpatentable over PROTEFIX Haft-Crème is affirmed.
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

DM