Ex Parte Robinson et al

Patent Trial and Appeal Board

Jun 8, 2018

13881516 (P.T.A.B. Jun. 8, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/881,516 04/25/2013
23909 7590 06/12/2018
COLGATE-PALMOLIVE COMPANY
909 RIVER ROAD
PISCATAWAY, NJ 08855
FIRST NAMED INVENTOR
Richard Robinson
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.
8928-00-US-Ol-OC 6423
EXAMINER
BRANSON, DANIELL
ART UNIT PAPER NUMBER
1616
NOTIFICATION DATE DELIVERY MODE
06/12/2018 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):
Patent_Mail@colpal.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RICHARD ROBINSON and ERIC SIMON 1
Appeal2017-006633
Application 13/881,516
Technology Center 1600
Before ELIZABETH A. LA VIER, RICHARD J. SMITH, and
RYAN H. FLAX, Administrative Patent Judges.
FLAX, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision under 35 U.S.C. § 134(a) involving appealed claims
directed to a dentifrice composition. The Examiner's rejections of claims 1,
4---6, 9, 11-18, and 20-23 under 35 U.S.C. § 103(a) and for obviousness-type
double patenting are appealed. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 The Real Party in Interest is identified as "Colgate-Palmolive Company."
Appeal Br. 2.
Appeal2017-006633
Application 13/881,516
STATEMENT OF THE CASE
The Background of the Specification states:
Natural calcium carbonate (e.g., chalk or limestone) typically has
a well-defined crystal structure (making it very hard). It is
generally quarried, must be milled to size. Natural calcium
carbonate abrasives provide good tooth cleaning and stain
removal, but they [are] also highly abrasive, however, so that
natural calcium carbonate product has been considered
undesirable for persons having sensitive teeth. Precipitated
calcium carbonate is more friable and less abrasive, resulting in
less damaging abrasion to enamel, which is good for sensitive
teeth, but also it typically provides less effective cleaning.
Spec. i-f 3; see also Prencipe i-fi-1 3--4, 18 (see infra n.2) (also identifying these
characteristics of natural calcium carbonate ("NCC") and precipitated
calcium carbonate ("PCC") ). The Specification also states "there is a need
for a stable oral care product that comprising [sic] a basic amino acid and
beneficial minerals such as fluoride and calcium, which moreover has an
optimized abrasive system to provide effective cleaning without damaging
abrasivity, particularly for people having sensitive teeth." Spec. i-f 4
(Background).
Independent claim 1, reproduced below, is representative:
1. A dentifrice composition comprising
form;
a. an effective amount of a basic amino acid in free or salt
b. an abrasive comprising
i. natural calcium carbonate (NCC) having an
average particle size of 3-7 microns; and
ii. precipitated calcium carbonate (PCC) having an
average particle size of 1-5 microns;
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Application 13/881,516
wherein the composition has a Pellicle Cleaning Ratio
(PCR), of at least 70, and a Radioactive Dentine Abrasivity
(RDA) value of less than 140 and the ratio of natural calcium
carbonate to precipitated calcium carbonate is from 1 :2 to 1 :3.
Response to Notification of Non-Compliant Appeal Brief 2 (Claims App 'x ).
The following rejections are on appeal:
Claims 1, 4---6, 9, 11-18, and 20-23 stand rejected under 35 U.S.C.
§ 103(a) over Prencipe, 2 Robinson, 3 Mohanty, 4 and Saurashtra. 5 Final
Action 3.
Claims 1, 4---6, 9, 11-16, and 20-23 stand provisionally rejected on
the ground of non-statutory (obviousness type) double patenting over claims
of US Application 12/058,424, in view of Robinson, Mohanty, and
Saurashtra. Final Action 10. The '424 application, which was published as
the cited Principe application (see supra n.2), subsequently issued as US
9,682,027 B2, on June 20, 2017. Accordingly, this rejection is no longer
provisional, but has ripened into an obviousness-type double patenting
rejection over the corresponding claims in the '027 patent. See MPEP § 804.
Claims 1, 4---6, 9, 11-16, and 20-23 stand provisionally rejected on
the ground of non-statutory (obviousness type) double patenting over claims
of US Application 12/866,644 in view of Principe, Robinson, Mohanty, and
Saurashtra. Id. at 11. The '664 application was abandoned May 18, 2017
2 US 2009/0202451 Al (published Aug. 13, 2009) ("Principe").
3 US 2008/0274065 Al (published Nov. 6, 2008) ("Robinson").
4 US 2007 /0025929 Al (published Feb. 1, 2007) ("Mohanty").
5 Saurashtra Solid Industries PVT, LTD., Toothpaste & Tooth Powder,
https://web.archive.org/web/2007070710463 8/http://saurashtrasolid.com/ht
ml/toothpast.htm, printed June 10, 2014 ("Saurashtra").
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Application 13/881,516
for failure to respond to office action. Accordingly, this rejection is reversed
as moot.
Claims 1, 4--6, 9, 11-17, and 20-23 stand provisionally rejected on
the ground of non-statutory (obviousness type) double patenting over claims
of US Application 12/058,278 in view of Principe, Robinson, Mohanty, and
Saurashtra. Id. at 11-12.
Claims 1, 4--6, 9, 11-17, and 20-23 stand provisionally rejected on
the ground of non-statutory (obviousness type) double patenting over claims
of US Application 12/058,209 in view of Principe, Robinson, Mohanty, and
Saurashtra. Id. at 12.
DISCUSSION
"[T]he examiner bears the initial burden, on review of the prior art or
on any other ground, of presenting aprimafacie case ofunpatentability. If
that burden is met, the burden of coming forward with evidence or argument
shifts to the applicant." In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
We adopt the Examiner's findings of fact as set forth in the Final Action and
Answer. Final Action 2-16; Answer 2-8.
Obviousness
"The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results."
KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). "[T]he 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." Id. at
418. "In determining whether the subject matter of a patent claim is
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Application 13/881,516
obvious, neither the particular motivation nor the avowed purpose of the
patentee controls. What matters is the objective reach of the claim. If the
claim extends to what is obvious, it is invalid under§ 103." Id. at 419.
The Examiner determined the rejected claims would have been
obvious over the Prencipe-Robinson-Mohanty-Saurashtra prior art
combination. Appeal Br. 3-9, 13-15. We discern no error in the
Examiner's determinations. We address Appellants' arguments below.
Appellants argue there would have been no motivation to combine the
prior art as asserted by the Examiner. Appeal Br. 5. Appellants dispute the
Examiner's rationale for combining the prior art, which was that because
Robinson suggests pairing harder and softer abrasives to achieve desired
cleaning/polishing characteristics, using relatively-harder NCC and
relatively-softer PCC as disclosed in Mohanty as the abrasives in the
composition of Prencipe, which otherwise respectively uses silica and PCC
abrasives, would have been obvious. Id. Appellants contend Principe
relates to a composition for application to sensitive teeth while, in contrast,
Mohanty relates to a toothpowder; Appellants argue the particles sizes of the
abrasives of these references are different (5µm or less in Prencipe versus
10-150 µmin Mohanty). Id. Appellants argue these differences mean the
skilled artisan would not consult Mohanty in order to modify Prencipe' s
toothpaste. Id. at 6. Appellants argue Robinson cannot provide the
motivation to combine the references because it does not disclose natural or
precipitated, as opposed to general, calcium carbonate; thus, Appellants
ague, Robinson is no more than an invitation to experiment. Id.
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Appellants' arguments are not persuasive. Each of the cited
references is directed to oral care compositions and, specifically, including
combinations of abrasives for cleaning and/or polishing teeth; they relate to
compositions that are brushed onto teeth. See, e.g., Prencipe Abstract, i-fi-1 2-
6; Robinson Abstract, i-fi-12--4; Mohanty Abstract, i-fi-12-7, Saurashtra
generally. A prior art reference is analogous and thus can be used in an
obviousness combination if it "is from the same field of endeavor, regardless
of the problem addressed" or "is reasonably pertinent to the particular
problem with which the inventor is involved," even if it is not within the
inventor's field of endeavor. Unwired Planet, LLC v. Google Inc., 841 F.3d
995, 1000--01 (Fed. Cir. 2016) (quoting In re Clay, 966 F.2d 656, 658-59
(Fed. Cir. 1992)). Here, the cited prior art references are analogous to the
claimed invention and to one another and, therefore, combinable in an
obviousness rejection.
Moreover, "[i]t is prima facie obvious to combine two compositions
each of which is taught by the prior art to be useful for the same purpose, in
order to form a third composition which is to be used for the very same
purpose." In re Kerkhoven, 626 F.2d 846, 850 (CCPA 1980); see also
Merck & Co., Inc. v. Biocraft Labs, Inc., 874 F.2d 804, 808 (Fed. Cir. 1989)
("Given the prior art teaching that both amiloride and hydrochlorothiazide
are natriuretic, it is to be expected that their co-administration would induce
more sodium excretion than would either diuretic alone."). Here, each of the
cited prior art references teaches using some composition of abrasive
particles to clean/polish teeth, and discloses significantly overlapping
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materials for such abrasives. Thus, it would have been obvious for a skilled
artisan to combine their teachings for the same purpose of cleaning teeth.
Appellants also argue there would have been no motivation to
combine Mohanty with Principe/Robinson "because the prevention of
selective settling of particles and avoidance of localized concentration
formation of the Mohanty tooth powder is an entirely different problem from
the making of dentifrice for sensitive teeth, as described in Prencipe, or the
creation of dentifrice for periodic use as described by Robinson." Appeal
Br. 6. Appellants contend it does not matter whether the cited prior art
references are each directed to the same field if they address different
problems from one another. Id. at 6-7. 6
Appellants' argument is not persuasive. "The combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results." KSR, 550 U.S. at 416. "[E]vidence
of a suggestion, teaching, or motivation to combine may flow from the prior
art references themselves, the knowledge of one of ordinary skill in the art,
or, in some cases, from the nature of the problem to be solved." In re
Dembiczak, 175 F.3d 994, 999 (Fed. Cir. 1999). Here, the compositions of
each cited reference are taught to be useful for the same purpose, that is, oral
care compositions to clean and/or polish teeth. So, it would be obvious to
6 In support of this proposition, Appellants cite to General Foods Corp. v.
Studiengesellschaft Kahle mbH, 972 F.2d 1272 (Fed. Cir. 1992). Appeal Br.
6. But General Foods is not on point; it relates to the issue of double
patenting and whether claims are obvious over other claims, not to whether
prior art should be combined under 35 U.S.C. § 103(a). See 972 F.2d at
1277 ("Double patenting is altogether a matter of what is claimed.").
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combine them in order to form a composition to be used for this purpose.
See, e.g., Kerkhoven, 626 F.2d at 850. That distinct, additional advantages
might also be provided for each specific composition does not detract from
their compatibility and combinability.
Regarding combining Mohanty with the other prior art, although
Mohanty' s composition is disclosed as a toothpowder as initially
manufactured or, perhaps, in consumer packaging, it is intended to be mixed
with water before use, which would form a paste. See Mohanty i-f 46. In any
event, Mohanty' s composition is a tooth cleaning product incorporating
abrasive particles and, thus, would have been obvious to combine with the
other references that are also directed to oral care compositions
incorporating the same types of abrasives. The differently sized particles of
Mohanty, as compared to those of the other references, is also not an
obstacle to the combination. Mohanty discloses using abrasive particles
sized so that, when combined with fluoride-providing particles, the fluoride
particles do not settle. Mohanty i-fi-140-42. Thus, if the fluoride particles of
Mohanty were smaller, so would be its abrasive particles. However, because
the compositions of Precipe and Robinson are pastes, rather than powders,
the size of their abrasive particles are not so limited.
"[I]t can be important to identify a reason that would have prompted a
person of ordinary skill in the relevant field to combine the elements in the
way the claimed new invention does ... because inventions in most, if not
all, instances rely upon building blocks long since uncovered, and claimed
discoveries almost of necessity will be combinations of what, in some sense,
is already known." KSR, 550 U.S. at 418-19. This, as noted in Appellants'
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Application 13/881,516
brief, the Examiner has done. See Appeal Br. 7. In Appellants' summary of
the Examiner's reasoning, the "motivation to combine 'stems from the fact
that they [the prior art] are all analogous art as all references are directed to
compositions for cleaning and polishing teeth through the use of at least a
calcium carbonate abrasive', and seek to provide a composition which is
useful in cleaning/polishing teeth." Id. (citing Final Action 15). Here, we
conclude the Examiner's rationale is sound.
Appellants argue the prior art combination of Prencipe-Robinson-
Mohanty (not mentioning Saurashtra) does not teach using natural calcium
carbonate particles averaging 3-7 µm in combination with precipitated
calcium carbonate. Appeal Br. 7. Appellants acknowledge that Mohanty
discloses "a blend of PCC/NCC (precipitated calcium carbonate and natural
calcium carbonate," but argue the reference does not explain the blend's
proportions of components and indicates that the calcium carbonate particles
are "'about 10 to about 150 micron[ s ]' in size," which is not the claimed size
range and teaches away therefrom. Id. at 7-8 (citing Mohanty i-fi-125, 49).
Further, Appellants argue, "[i]n addition, there is no teaching or suggestion
in Prencipe, Robinson and Mohanty of the use of natural calcium carbonate
having an average particle size of 3-7 microns," but Appellants also
acknowledge that "Prencipe teaches the use of small particles having a d50
of less than about 5 µm." Id. at 8. Further, Appellants acknowledge that
Robinson teaches a range of abrasive particle sizes, i.e., from less than 5 µm
to about 14 µm, but argue that Robinson is somehow restrictive when
pairing abrasives with PCC to particle sizes of more than 8 µm. Id. at 8-9.
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We have addressed the disclosed particle size range of Mohanty,
above. The reference's disclosure of larger abrasive particles to match
larger fluoride particles does not teach away from Prencipe and Robinson's
smaller abrasive particles, like those claimed. A "teaching away" requires a
reference to actually criticize, discredit, or otherwise discourage the claimed
solution. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). This,
Mohanty does not do.
The combined prior art references disclose combining PCC and NCC
(Prencipe i-fi-1209--218 (teaching it is possible)); Mohanty i-fi-1 49--50 (teaching
it is preferable), teach that different abrasive particle materials can be paired
to achieve some balance in cleaning and polishing functionality (Prencipe
i-fi-13-13, 158-162, examples; Robinson i-fi-13, 12-18; Mohanty i135), and
teach a range of abrasive particle sizes overlapping the claimed ranges of 3-
7 µm and 1-5 µm (for NCC and PCC, respectively) (Prencipe i-fi-19--13, 135-
140, 158-163; Robinson i-fi-f 17-18, 21). The question, therefore, is whether
particle size is an optimizable variable that would be obvious to adjust to the
claimed ranges. It is apparent from the cited prior art that it is.
Each of Precipe, Robinson, and Mohanty discloses a range of abrasive
particle sizes as a result effective variable and suggest optimizing such sizes
for a variety of results, such as optimizing for patients with hypersensitivity,
matching abrasive hardness to tooth hardness, balancing abrasiveness and
hardness with cleaning ability, achieving industry benchmarks for oral care
products such as RDA and PCA, and matching abrasive particle size to that
of other components in the composition. Prencipe i-fi-19--18, 135-140, 152,
158-163; Robinson i-fi-13, 12-18, 21; Mohanty i-fi-140, 42, 49. It would be
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Application 13/881,516
obvious to optimize particle sizes of abrasives to achieve any of these
results.
Appellants argue the claims require a ratio of NCC to PCC of 1 :2 to
1 :3 and that the prior art combination does not teach such a ratio range.
Appeal Br. 9. Appellants identify that the Examiner has determined that
Robinson's disclosed range of 1:1.6 of harder (e.g., silicate) to less hard
(e.g., precipitated calcium carbonate) abrasive particles reads on the claimed
1 :2 ratio. Id. Appellants argue that Robinson does not disclose the claimed
abrasives (i.e., NCC/PCC) or the claimed sizes, so the disclosed prior art
ratio cannot be applied to such materials and sizes. Id. Appellants also
argue that about 1.6 cannot be fairly understood to read on 2, as claimed;
contending "about" does not afford so much leeway. Id. Appellants argue
that the claimed ratio ofNCC:PCC would not be recognized as an
optimizable variable, absent use of Appellants' Specification. Id.
Appellants' arguments are not persuasive. Because the cited prior art
does not explicitly disclose an NCC:PCC ratio of 1 :2, but does teach and
suggest ranges of such a ratio nearing this value, again, the question is
whether there is evidence that such a ratio is an optimizable variable. As
noted by Appellants, the Examiner determined that a 1 :2 ratio would have
been obvious over Robinson's disclosed ratio of harder-to-softer abrasive
particles of about 1: 1.6. See Robinson i-fi-128-29. Appellants contest the
closeness of the Robinson ratio of harder-to-softer abrasive particles,
arguing that about 1.6 is not mathematically close to 2, but the Examiner
determined that 2 is obvious over about 1.6 because "Robinson et al.
provides strong motivation for optimizing the ratio of hard to soft abrasive
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until the desired RDA and PCR values are obtained." Final Action 15. We
agree. In addition to Robinson's teachings, Appellants' own Specification
evidences that variables such as particle size and ratio of hard-to-soft
particles are routinely optimizable. See Spec. i-f 4 ("there is a need for a
stable oral care product that ... has an optimized abrasive system to provide
effective cleaning without damaging abrasivity, particularly for people
having sensitive teeth"), Example 2 ("Based on the preliminary testing with
different abrasive combinations, an optimized dentifrice is prepared (Table
2) providing good cleaning and stain removal but low abrasivity[.]").
Appellants present no more than a conclusion that the ratio ofNCC-
to-PCC, within the context of the claimed subject matter, is not routinely
optimizable. Appellants do not argue nor submit evidence that the claimed
range is critical, other than pointing to examples in the Specification that,
utilizing the claimed ratio of particles, achieved the claimed PCR and RDA
values. Appellants' Specification does not describe the claimed ratio range
of 1 :2-1 :3 as critical, but merely that it falls within a larger range of
NCC:PCC ratios of 1: 1-1 :5, or the even larger NCC:PCC ratio range of 1: 1
to 1:6.6, that are suitable. Spec. at 6 ("the ratio of natural calcium carbonate
to precipitated calcium carbonate is from 1: 1 to 1:5, e.g., from 1:2 to 1:3,
e.g, about 1:2.5."), i-f 13 (5-15% NCC and 15-33% PCC).
Our reviewing court has recognized "that a prima facie case of
obviousness exists when the claimed range and the prior art range do not
overlap but are close enough such that one skilled in the art would have
expected them to have the same properties" See In re Peterson, 315 F .3d
1325, 1329 (Fed. Cir. 2003) (citing Titanium Metals Corp. of Am. v. Banner,
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778 F.2d 775, 783 (1985)). Here, the Examiner is correct that there would
be motivation and a suggestion, based on Robinson, to optimize a ratio of
harder-to-softer abrasive particles to achieve the cleaning and polishing
objectives (as well as accounting for patient sensitivity concerns) for an oral
care composition. Further, the other cited prior art teach that NCC and PCC
have such harder and softer abrasive characteristics (as utilized in Prencipe)
and that they can be combined in an oral care composition (as taught by
Mohanty).
Appellants allege the data in their Specification, specifically
formulations G and H, which comprise arginine, PCC, and NCC within the
scope of claim 1, provide sufficient cleaning (PCR 87 and 81) and low RD A
( 102 and 98), compared to formulation F, which comprises arginine, PCC,
and small silica, which allegedly corresponds to a Principe formulation and
provides a PCR of94, but an RDA of 172, is evidence of unexpected results
and non-obviousness. Appeal Br. 11-12.
This argument is not persuasive. "Mere improvement in properties
does not always suffice to show unexpected results. . .. [H]owever, when an
applicant demonstrates substantially improved results ... and states that the
results were unexpected, this should suffice to establish unexpected results in
the absence of evidence to the contrary." In re Soni, 54 F.3d 746, 751 (Fed.
Cir. 1995). "To be particularly probative, evidence of unexpected results
must establish that there is a difference between the results obtained and
those of the closest prior art, and that the difference would not have been
expected by one of ordinary skill in the art at the time of the invention."
Bristol-Myers Squibb Co. v. Teva Pharms. USA, Inc., 752 F.3d 967, 977
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(Fed. Cir. 2014). "[B]y definition, any superior property must be unexpected
to be considered evidence of non-obviousness. Thus, in order to properly
evaluate whether a superior property was unexpected, the [fact-finder]
should have considered what properties were expected. Here, [Appellants']
evidence must fail because the record is devoid of any evidence of what the
skilled artisan would have expected." Pfizer, Inc. v. Apotex, Inc., 480 F.3d
1348, 1371 (Fed. Cir. 2007).
Appellants' allegation that the Specification's formulation F
represents some composition disclosed in Prencipe does not appear to be
supported by the evidence. It is not clear which Prencipe formulation, if
any, is specifically invoked by the Specification's formulation F. Appellants
do not specify which, and the amounts of components do not appear to
match between the prior art reference and the Specification's Examples.
Therefore, no specific comparison to the closest prior art is apparent from
the Specification. Even if the Specification's formulation F did represent
some composition of Prencipe, it is also not apparent whether the results
argued were necessarily unexpected or why they were unexpected, rather
than expected. Also, even though the data show different RDA and PCR
values in formulations G and H compared to formulation F, there is no
evidence that these results show a substantial improvement (as opposed to
some mere difference in degree).
For the reasons above, we affirm the obviousness rejection.
Double Patenting
The Examiner has determined that the rejected claims constitute
unpatentable variants over the cited claims of US Application 12/058,424
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(now US 9,682,027), US Application 12/058,278, and/or US Application
12/866,644. Final Action 10, 11, 12. Appellants present no argument in
rebuttal, but state "Appellants request that the outstanding provisional
rejections for obviousness-type double patenting be held in abeyance until
allowable claims are identified." Appeal Br. 12. Outstanding rejections will
not be held in abeyance on appeal. Therefore, we affirm the rejections.
SUMMARY
The obviousness rejection is affirmed.
The double patenting rejections are each affirmed, except as to
Application No. 12/866,644, which is reversed as moot.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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