Ex Parte Russell et al

Patent Trial and Appeal Board

Jan 28, 2016

13012604 (P.T.A.B. Jan. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/012,604 01124/2011
23909 7590 02/01/2016
COLGATE-PALMOLIVE COMPANY
909 RIVER ROAD
PISCATAWAY, NJ 08855
FIRST NAMED INVENTOR
Bruce M. Russell
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.
7191-03-TB 7112
EXAMINER
EIDE, HEIDI MARIE
ART UNIT PAPER NUMBER
3732
NOTIFICATION DATE DELIVERY MODE
02/01/2016 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 BRUCE M. RUSSELL, ROBERT A. MOSKOVICK, and
MICHAEL PRENCIPE
Appeal2013-009806
Application 13/012,604
Technology Center 3700
Before WILLIAM A. CAPP, GEORGE R. HOSKINS, and
LEE L. STEPINA, Administrative Patent Judges.
CAPP, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the final
rejection of claims 33, 35-39, and 42--48. 1 We have jurisdiction under 35
U.S.C. § 6(b ).
We AFFIRM.
1 Claims 1-32, 34, 40, and 41 are canceled. Claims App.
Appeal2013-009806
Application 13/012,604
THE INVENTION
Appellants' invention relates to a dental care method. Spec. 1.
Claim 33 is the only independent claim on appeal and is reproduced below
as illustrative of the subject matter on appeal.
33. A method for whitening a user's teeth comprising
applying a dye to the user's teeth, wherein the dye binds
preferentially to dental plaque on the user's teeth,
removing excess dye from the user's teeth by rinsing,
radiating energy from a source in a toothbrush toward the
user's teeth, actuating the plaque-bound dye to induce
fluorescence detectable by the user, thereby revealing
residual plaque,
brushing the user's teeth until an acceptable level of residual
plaque is achieved,
applying an oxidizing agent to the teeth,
applying a carrier to the user's teeth,
attaching the brightener to the user's teeth,
radiating energy from the source in a the toothbrush toward
the user's teeth, and
activating the oxidizing agent from the energy to create a
whitening effect, wherein the energy is emitted from the at
least one light-emitting diode (LED) in the toothbrush at a
wavelength of 350-410-nm,
wherein the brightener has a whitening or bleaching effect
when coming into contact with ultraviolet radiation, and
wherein the carrier comprises an adhering agent which
adheres to the teeth while the brightener adheres to the
adhering agent.
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Appeal2013-009806
Application 13/012,604
THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Salmon
Rizolu
Guan
Chan
US 6,202,242 B 1
US 6,616,451 Bl
WO 2004-028498 Al
US 2005/0050658 Al
Mar. 20, 2001
Sept. 9, 2003
Apr. 8, 2004
Mar. 10, 2005
The following rejections are before us for review:
1. Claims 33, 35-39, and 42--48 are rejected under 35 U.S.C. § l 12(a)
lack of written description.
2. Claims 33, 35, and 37 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Guan, Rizolu, and Salmon.
3. Claims 36, 38, 39, and 42--48 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Guan, Rizolu, Salmon, and Chan.
OPINION
Written Description
Whether a specification, as filed, contains a written description of
subject matter of a later added claim is a question of fact. In re Alton, 76
F.3d 1168, 1171 (Fed. Cir. 1996). The test for sufficiency of the written
description is whether the disclosure of the application relied upon
reasonably conveys to those skilled in the art that the inventor had
possession of the claimed subject matter as of the filing date. Ariad Pharm.,
Inc., v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010).
The Examiner observes that Appellants, during prosecution, amended
claim 33 to include: (1) a method applying a dye to teeth, and (2) a method
of applying an oxidizing agent to the teeth, and (3) a method of applying a
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Application 13/012,604
brightener to the teeth. Final Action 2. The Examiner further observes that
Appellants' Specification provides adequate written description for each of
the three methods, when practiced individually. Id. However, the Examiner
finds that there is no written description support for a method that combines
the different methods. Id.
Appellants traverse the rejection by arguing that the Specification
provides written description support for each of the three recited aspects of
the overall claimed method. Appeal Br. 7. Appellants cite written
description support for plaque removal at pages 6-7 of Specification. Id.
Appellants cite written description support for surface oxidation at
pages 10-11 of the Specification. Id. at 7-8. Appellants cite written
description support for surface attachment of brighteners at pages 8-10 of
the Specification. Id. at 8. Appellants contend that such is sufficient to
demonstrate possession of the claimed invention. Id.
In response, the Examiner reiterates that Appellants provide no
written description support for the three different dental care methods being
used together in a single method. Ans. 2.
The Specification teaches that "[i]n one use" of the toothbrush, the
toothpaste would incorporate a dye that attaches to residual plaque on the
tooth surface. Spec. 6. Upon brushing, the dye is absorbed in the plaque
and not to the teeth. Id. at 7. Upon brushing, rinsing, and application of UV
radiation, the dye becomes visible so as to inform the user that not all of the
plaque has been removed. Id. at 6. This alerts the user to continue brushing.
Id. at 7. This method entails rinsing and spitting the dye and its toothpaste
carrier from the mouth. Id.
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Appeal2013-009806
Application 13/012,604
The Specification discloses that, "[i]n another use" of the toothbn.1sh,
the toothpaste would incorporate optical brighteners. Spec. 8. The
brighteners become attached to the tooth surface during brushing. Id.
During or immediately after brushing, the user applies UV radiation toward
the teeth. Id. The toothpaste carrier that carries the brightener includes an
adhering agent that adheres to the teeth and causes the brighteners to adhere
to the teeth, thus causing the brighteners to remain on the outer surface of
the teeth. Id. at 8-9. The presence of optical brighteners gives a white
appearance in the presence of UV or fluorescent light. Id. at 9.
The Specification further discloses that, "[i]n another use" of the
toothbrush, the toothpaste would incorporate oxidizing agents, such as
hydrogen peroxide. Spec. 10. During or immediately after brushing with
toothpaste, the user applies UV radiation toward the teeth. Id. The
oxidizing agent is thereby activated to speed the chemical process of
whitening stained teeth. Id.
In summary, the Specification discloses incorporating three different
chemical constituents into toothpaste for application to a user's teeth through
brushing: (1) dye; (2) brighteners; and (3) oxidizing agents. There is no
teaching that the three chemical constituents can be successfully combined
in a single toothpaste composition. There is no teaching that the three
chemical constituents can be successfully applied to the surface of teeth
simultaneously. Finally, there is no teaching that the three chemical
constituents can be successfully applied to the surface of teeth successively,
but within a time interval that would be consistent with the practice of a
single method as claimed in claim 3 3.
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Appeal2013-009806
Application 13/012,604
Under the circumstances, we agree with the Examiner that there is no
written description support in the Specification for combining the practice of
each of the three methods disclosed in the Specification into a single
method. The Specification, therefore, fails to demonstrate possession of the
claimed invention.
Accordingly, we sustain the Examiner's Section 112 written
description rejection of claim 33, 35-39, and 42--48.
Unpatentability of Claims 33, 35, and 37
over Guan, Rizolu, and Salmon
Appellants argue claims 33, 35, and 37 as a group. Appeal Br. 8-16.
We select claim 33 as representative. See 37 C.F.R. § 41.37(c)(l)(iv)
(2015).
The Examiner finds that Guan teaches a method of whitening a user's
teeth by applying an oxidizing agent and a brightener to the user's teeth and
then radiating energy toward the user's teeth. Final Action 3. The Examiner
finds that Rizolu teaches a method of whitening teeth by radiating energy
from a source in a tooth brush and activating an oxidizing agent. Id. at 4.
The Examiner further relies on Rizolu as teaching that energy is emitted
from at least one LED in the toothbrush. Id. at 5---6. The Examiner
concludes that it would have been obvious to a person of ordinary skill in the
art at the time the invention was made to modify the teachings of Guan with
the step of using a toothbrush to radiate the oxidizing agent. According to
the Examiner, a person of ordinary skill in the art would have done this to
reduce the amount of time required to carry out the procedure. Id. at 4. The
Examiner finds that Salmon teaches a method of applying a dye to the user's
teeth to identify plaque, removing excess dye by rinsing, and then radiating
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Application 13/012,604
energy from a source in a toothbn.1sh toward the user's teeth to induce
fluorescence detectable by the user, thereby revealing residual plaque and
brushing the user's teeth until an acceptable level or residual plague is
achieved. Id. at 5. The Examiner concludes that it would have been obvious
to a person of ordinary skill in the art at the time the invention was made to
modify Guan/Rizolu with the steps taught by Salmon. Id. According to the
Examiner, a person of ordinary skill in the art would have done this to
ensure that teeth are clean before they are whitened. Id.
Appellants traverse the Examiner's rejection by first arguing that
Guan does not disclose an oxidizing agent as claimed. Appeal Br. 10.
Appellants argue that Guan discloses whitening agents that absorb and
reflect radiated energy to make teeth look whiter in daylight, but do not
remove stains from teeth. Id. In response, the Examiner directs our
attention to a passage in Guan that specifically teaches the use of peroxides
to remove stains. Ans. 3, citing Guan, p. 8, 11. 12-20. The cited passage in
Guan states that: "In addition to treatment with the fluorescent whitening
agent ... oxidising or bleaching agents such as peroxides" may be used. Id.
The Examiner's finding that Guan discloses oxidizing agents is supported by
a preponderance of the evidence.
Appellants next argue that Rizolu teaches away from the use of
radiation in the claimed wavelength range of 3 50-410 nm. Appeal Br. 12.
Appellants cite to passages in Rizolu stating that the light source is
substantially free of ultraviolet radiation. Id. In response, the Examiner
states that Appellants are referring to only one alternative embodiment of
Rizolu and that another embodiment of Rizolu discloses radiation in the
range of 300-750 nm, which overlaps Appellants' claimed range. Ans. 4,
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Appeal2013-009806
Application 13/012,604
citing Rizolu, abstract, col. 5, 11. 12-30. As found by the Examiner, the
Abstract of Rizolu discloses the use of electromagnetic radiation within a
wavelength range of 300 to 750 nm. Rizolu, Abstract. Thus, Rizolu does
not teach away from the claimed invention based on the radiation
wavelength.
Next, Appellants attempt to distinguish Salmon on the basis that
Salmon discloses the use of light in the visible light spectrum. Appeal
Br. 13. Appellant argues that Salmon's light is used to create a fun visual
experience for children. Id. In response, the Examiner states that Salmon is
merely relied on for teaching the application of a dye to the user's teeth and
radiating the teeth to induce fluorescence. Ans. 5. Appellants argument
that Salmon's dye is responsive to visible light, not UV light, is not
persuasive. Claim 33 merely requires "radiating energy" to actuate the
plaque-bond dye. Claims App. Thus, Appellants' argument is not
commensurate with the scope of the claim.
Finally, Appellants argue that the Examiner has not articulated a
sufficient reason to combine Guan, Rizolu, and Salmon. Appeal Br. 14--15.
Appellants argue that the Examiner has not provided an adequate reason as
to why a person of ordinary skill in the art would have developed a method
to clean the teeth, as in Salmon, before applying the Guan/Rizolu step to
whiten the teeth. Id. In response, the Examiner states that it would have
been obvious to clean teeth before whitening so that the bleaching agent
would better contact the teeth. Ans. 5---6.
We think that the Examiner has articulated a sufficient reason to make
the proposed combination. The Examiner's reasoning that it would have
been obvious to first clean the teeth before applying whiteners and
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Application 13/012,604
brighteners strikes us as sound reasoning. Under the circumstances, the
Examiner's reasoning that it would have been obvious to combine Guan and
Rizolu with Salmon to teach a plaque dye that reacts to UV light is
adequately supported by the record.
We sustain the unpatentability rejection of claims 33, 35, and 37.
Unpatentability of Claims 36 and 38-48
over Guan, Rizolu, Salmon and Chan
Appellants argue claims 36, 38, 39, and 42--48 as a group. Appeal Br.
17-18. We select claim 36 as representative. See 37 C.F.R. §
41.37(c)(l)(iv) (2015). Claim 36 depends from claim 33 and adds a
limitation that the source of radiation is selectively activated by a switch.
Claims App. The Examiner relies on Chan as disclosing a powered
toothbrush that has a switch. Final Action 6-7. The Examiner concludes
that it would have been obvious to a person of ordinary skill in the art at the
time the invention was made to modify the Guan/Rizolu/Salmon
combination with the powered toothbrush of Chan. According to the
Examiner, a person of ordinary skill in the art would have done this to allow
the user to control the light emitting element. Id. at 7.
Appellants argue that Chan does not teach the use of UV light.
Appeal Br. 17. Appellants challenge the Examiner's reasoning for making
the proposed combination, arguing that the Examiner is guilty of engaging in
post-hoc reasoning. Id. We disagree. Rizolu teaches a toothbrush that
emits UV radiation. We agree with the Examiner that it would have been
obvious to use a switch, as taught by Chan, to tum an electric toothbrush
light source on and off.
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Application 13/012,604
The Examiner's position is supported by a preponderance of the
evidence and the Examiner's legal conclusion of unpatentability is supported
by sound reasoning. We sustain the unpatentability rejection of claims 36,
38, 39, and 42--48.
DECISION
The decision of the Examiner to reject claims 33, 35-39, and 42--48 is
affirmed.
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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