Ex Parte Patel et al

Patent Trial and Appeal Board

May 18, 2017

13518097 (P.T.A.B. May. 18, 2017)

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.
13/518,097 06/21/2012 Madhusudan Patel 8962-OO-OC 9285
23909 7590 05/22/2017
COLGATE-PALMOLIVE COMPANY
909 RIVER ROAD
PISCATAWAY, NJ 08855
EXAMINER
WEBB, WALTER E
ART UNIT PAPER NUMBER
1612
NOTIFICATION DATE DELIVERY MODE
05/22/2017 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):
Paten t_Mail @ colpal. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MADHUSUDAN PATEL, ROSA PAREDES,
MAHMOUD HAS SAN, and THOMAS BOYD
Appeal 2016-004981
Application 13/518,0971
Technology Center 1600
Before ERIC B. GRIMES, RYAN H. FLAX, and
DEVON ZASTROW NEWMAN, Administrative Patent Judges.
NEWMAN, Administrative Patent Judge.
DECISION ON APPEAL
This appeal under 35 U.S.C. § 134 involves claims to an oral care
composition. The Examiner entered final rejections for obviousness. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify the Real Party in Interest as Colgate-Palmolive
Company. Br. 2.
Appeal 2016-004981
Application 13/518,097
STATEMENT OF THE CASE
Background
The Specification discloses:
It has now been found that generally regarded as safe (GRAS)
dyes, while used conventionally in oral care compositions as
colorants, possess strong anti-bacterial activity when irradiated
with absorbable, visible light, and that the anti-bacterial activity
is administered very rapidly, preferably in less than 2 minutes.
The inventors also have found that in the absence of Eradication,
the GRAS dyes described herein are silent and exhibit little or no
anti-bacterial activity. However, their anti-bacterial properties
are turned on in the presence of absor[]bable, visible light.
Spec. 111. The Specification discloses “an optically clear oral composition
comprising at least one photosensitizing dye, an oxygen generator or oxygen
carrier, and an orally acceptable and optically clear carrier.” Id. 112.
Claims 1—5, 7—15, and 17—21 are on appeal.2 Sole independent claim
1 is illustrative and reads as follows:
1. An optically clear oral care composition comprising
at least one photosensitizing dye,
an oxygen generator or oxygen carrier, and
an orally acceptable and optically clear carrier,
wherein the photosensitizing dye is selected from the
group consisting of
Tartrazine (FD&C Yellow No.5),
Riboflavin 5’-monophosphate sodium salt,
Allura Red AC (FD&C Red No. 40),
Fast Green FCF (FD&C Green No.3),
2 Claim 16 was withdrawn. See Examiner’s Final Action (“Final Act.”)
mailed August 21, 2014. Claim 6 was cancelled. See Br. 7.
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Lissamine Green B,
Riboflavin, and mixtures thereof, and
wherein the oxygen generator or oxygen carrier is
perfluorodecahydro naphthalene.
Br. 7 (Claims App’x.) (emphasis original).
DISCUSSION
The Examiner has rejected claims 1—5, 7—15, and 17—21 under
pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Kishen3 and
Melker.4 Ans. 2. The Examiner finds that Kishen discloses “a composition
‘formulated for use in oral cavity treatment’ [that comprises] a surfactant, an
alcohol, at least one photosensitizing agent. . . and an oxygen carrier,
where the oxygen carrier includes perfluorodecahydro naphthalene.”
Ans. 2 (emphasis original). The Examiner finds that Kishen teaches a
“specific embodiment comprising perfluorodecahydro naphthalene as the
oxygen carrier and methylene blue as the photosensitizing agent” and that
Kishen claims use of the composition as a mouthwash. Id. (emphasis
original). The Examiner finds that Kishen discloses that “‘any suitable
photosensitizer may be used’” with the disclosed compositions, but that
Kishen does not teach tartrazine (FD&C) Yellow No. 5.5 Id. at 3.
3 Kishen et al., WO 2006/135344 Al, published Dec. 21, 2006 (“Kishen”).
4 Richard J. Melker, US 2008/0227856 Al, published Sept. 18, 2008
(“Melker”).
5 Appellants provisionally elected tartrazine as the species of
photosensitizing dye in response to the Examiner’s restriction requirement.
See Feb. 27, 2013 Response to Restriction Requirement 1.
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The Examiner finds that Melker teaches that “FD&C Yellow No. 5 is
recognized as a suitable photosensitive agent.” Id. The Examiner concludes
that it “would have been obvious to a person having ordinary skill in the art
to use FD&C Yellow No. 5 as the photosensitizing agent in the composition
of Kishen et al. since FD&C Yellow No. 5 is a suitable photosensitizing
agent, as taught by Melker. Id. The Examiner further concludes that
because Kishen’s compositions are “activated by light. . . they are expected
to be optically clear.” Id.
We agree with the Examiner that Kishen and Melker support a prima
facie case of obviousness. Kishen discloses a “composition [that] may be
formulated for use in oral cavity treatment. . . . and/or prevention of
periodontal and/or halitosis conditions.” Kishen 7,13. Kishen discloses
“a photosensitising composition comprising a mixture of: at least one
surfactant, at least one alcohol, and optionally water. The composition may
further comprise at least one photosensitising compound.” Id. at 5,12.
Kishen teaches “[f]or the purposes of the present invention, any suitable
photosensitiser may be used.” Id. at 24,12. The composition may further
comprise an oxygen carrier that can optionally be perfluorodecahydro
naphthalene. Id. at 6—7. The composition can comprise a liquid conduit to
“achieve greater penetration of light energy . . . [and] is chosen in such a
way that [the compositions] are transparent liquid, low refractive index.” Id.
at 30,11.
Melker discloses “materials and methods for preparing compositions
having a temporary visual indicator customized to an individual user’s
needs, where the individual user adds a temporary indicator to a selected
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Application 13/518,097
material so that the location, duration of visible indication, and/or
concentration of the material after application to a surface can be determined
by the individual user.” Melker 112. Melker discloses that “[preferred
compositions of the invention comprise a photosensitive or light unstable
dye.” Id. at 125. “Preferred photosensitive or light unstable dyes include
. . . FD&C Yellow # 5 (pyrozoine).” Id.
We agree with the Examiner that the product of claim 1 would have
been obvious based on Kishen and Melker. Kishen suggests a
photosensitive composition that meets all of the limitations of claim 1 except
that it does not expressly disclose FD&C Yellow # 5 as a photosensitizing
agent. However, Kishen expressly teaches that “any suitable photosensitiser
may be used.” Kishen at 24 12. Melker teaches that FD&C Yellow # 5 is a
known photosensitizer. Thus, it would have been obvious to use FD&C
Yellow # 5 as the photosensitizing agent in the composition of Kishen.
Appellants argue that the photosensitizing agent is not disclosed in
Kishen’s core composition, is not disclosed as “an essential part” of the
composition and is “not a required element, but an optional one.” Br. 3, 5.
Appellants further argue Melker is “not directed to a photosensitizer
composition, but to a tracer-like composition ... for locations and/or
concentration of the composition during application” and that Melker
teaches “FD&C Yellow No. 5 . . . within the context of combination with a
laundry list of other ‘components’.” Id. at 4.
These arguments are not persuasive as “[i]t is well settled that a prior
art reference is relevant for all that it teaches to those of ordinary skill in the
art.” In reFritch, 972 F.2d 1260, 1264 (Fed. Cir. 1992). Melker discloses
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Application 13/518,097
that tartrazine is a photosensitizing agent. Given Kishen’s clear instruction
that any suitable photosensitizing agent may be used, we agree the
Examiner’s proposed combination of tartrazine as the photosensitizing agent
in the composition of Kishen would have been obvious to the skilled artisan
at the time of the invention.
Appellants also argue that the “claims of this application were
subjected to multiple election of species requirement because of the presence
of multiple patentably distinct species. However, there is no indication from
Kishen or Melker that. . . their composition is directed to a toothpaste.” Br.
4.
Appellants are correct that the Examiner imposed a restriction
requirement, which Appellants responded to by electing “toothpaste” as the
species election. See Feb. 27, 2013 Response to Restriction Requirement 1.
Pursuant to M.P.E.P. § 803.02, examination of the claims will be limited to
the elected species unless the Examiner determines the elected species is
allowable (“[Sjhould the examiner determine that the elected species is
allowable, the examination of the Markush-type claim will be extended. If
prior art is then found that anticipates or renders obvious the Markush-type
claim with respect to a nonelected species, the Markush-type claim shall be
rejected.”). As the Examiner has issued a rejection based upon oral care
compositions rather than on toothpaste, we presume for the purposes of this
appeal that the Examiner has concluded that the claimed toothpaste species
is allowable and broadened the search to other oral care compositions.
Accordingly, we review the claim scope as presented by the Examiner, and
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agree with the Examiner that Kishen teaches an oral care composition as
recited in claim 1.
Appellants further argue Kishen teaches away from the claimed
invention because “the required elements to provide the photosensitizing
effect requires two different alcohols (one of which must be a surfactant)
and requires these elements to be in a ratio with water of 10:5:85 to
40:30:30.” Br. 4. According to Appellants, Kishen’s disclosed composition
is “not descriptive of combination of chemical components in the appellants’
claimed invention” [and] “there is no indication that Kishen teaches an
optically clear toothpaste.” Id. at 4—5.
Claim 1 recites an “optically clear oral care composition” and is not
limited to a toothpaste. Kishen discloses compositions for oral cavity
treatment such as a mouthwash that can be transparent. Kishen 7,13, claim
28; 30,11. Appellants have presented no evidence or persuasive argument
that the claimed composition cannot be made according to Kishen’s teaching
of alcohols in a ratio with water, which can be optically clear. Moreover,
claim 1 employs open-ended “comprising” language, which does not
preclude alcohol as a component.
With regard to Appellants’ argument that Kishen teaches away from
the claimed invention, a reference must actually criticize, discredit, or
otherwise discourage the [invention] in order to teach away. See In re
Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (“The prior art’s mere
disclosure of more than one alternative does not constitute a teaching away
from any of these alternatives because such disclosure does not criticize,
discredit, or otherwise discourage the solution claimed”). Appellants do not
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identify, and we do not find, any teaching in any of the cited prior art which
criticizes, discredits, or discourages the use of an alcohol and/or surfactant in
the claimed composition.
Finally, Appellants claim:
each of the remaining dyes cited in the claims have provided
evidence of unexpected results with respect to either percent
reduction in biofilm (see Table 6) and/or the low percent
reduction (and in some cases an increase) in light transmission
(see Table 16). While the results themselves can be considered
to be unexpected, they are more so when compared against
other dyes which not only do not show the unexpected benefits
from the dyes within the scope of the claims, but show the
opposite effect; a clear teaching away (see e.g. Table 6, Indigo
Carmine - the addition of this photosensitizer decreased rather
than increased reduction in biofilm).
Br. 5.
We are not persuaded. Although the Specification refers to the result
in the presence of certain photosensitizing dyes as “dramatic . . . compared
with the use of just light alone” (Spec. 1101), Appellants did not claim the
results were unexpected until post-hoc argument of Appellants’ counsel.
Given that Kishen expressly teaches use of a photosensitizing agent in its
optically clear composition, we are not persuaded that the results of Tables 6
and 16 are unexpected in light of our findings of fact above regarding the
teachings of the prior art or in light of the data itself. Absent evidence,
which Appellants have not provided, we are not persuaded that the
Examiner’s conclusion of obviousness is not supported by a preponderance
of the evidence.
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Conclusion of Law
We affirm the rejection of claim 1. Claims 2—5, 7—15, and 17—21
have not been argued separately and therefore fall with claim 1. 37 C.F.R.
§ 41.37(c)(l)(iv).
SUMMARY
We affirm the rejection of claims 1—5, 7—15, and 17—21 under
pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Kishen and Melker.
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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