Ex Parte Russell et alDownload PDFPatent Trial and Appeal BoardJan 28, 201613012604 (P.T.A.B. Jan. 28, 2016) Copy Citation 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. - 2 - 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 - 3 - Appeal2013-009806 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. - 4 - 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. - 5 - 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 - 6 - Appeal2013-009806 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, - 7 - 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 - 8 - Appeal2013-009806 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. - 9 - Appeal2013-009806 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 Ssc - 10 - Copy with citationCopy as parenthetical citation