Ex Parte Szeles et al

Patent Trial and Appeal Board

Mar 18, 2016

13372871 (P.T.A.B. Mar. 18, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/372,871 02/14/2012
23909 7590 03/22/2016
COLGATE-PALMOLIVE COMPANY
909 RIVER ROAD
PISCATAWAY, NJ 08855
FIRST NAMED INVENTOR
Lori H. Szeles
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.
6859-01-0C 6728
EXAMINER
RAO, SA VITHA M
ART UNIT PAPER NUMBER
1621
NOTIFICATION DATE DELIVERY MODE
03/22/2016 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 LORI H. SZELES, XIAOY AN LIU,
MALCOLM WILIAMS, M. TERESA R. CARALE,
MICHAEL PRENCIPE and JAMES G. MASTERS 1
Appeal2013-010875
Application 13/372,871
Technology Center 1600
Before DONALD E. ADAMS, JEFFREY N. FREDMAN, and
JOHN G. NEW, Administrative Patent Judges.
NEW, Administrative Patent Judge.
DECISION ON APPEAL
1 Appellants state the real party-in-interest is Colgate-Palmolive Company.
App. Br. 2.
Appeal2013-010875
Application 13/372,871
SUMMARY
Appellants file this appeal under 35 U.S.C. § 134(a) from the
Examiner's Final Rejection of claims 1-20 as unpatentable under 35 U.S.C.
§ 103 (a) as being obvious over the combination of Gebreselassie et al. (US
6,379,654 Bl, April 30, 2002)2 ("Gebreselassie"), and Vermeer (US
5,624,906, April 29, 1997) ("Vermeer"). Final Act. 6.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
NATURE OF THE CLAIMED INVENTION
Appellants' invention is directed to an oral care composition which
contains a cationic antibacterial compound which composition is effective in
retarding bacterial plaque accumulation on teeth and more particularly to a
dentifrice composition containing a cationic antibacterial compound and a
proteolytic enzyme which achieves plaque reduction with superior breath
freshening characteristics. Abstract.
REPRESENTATIVE CLAIM
Claim 1 is representative of the claims on appeal and recites:
1. A dentifrice composition which effects enhanced
antiplaque and breath freshening which comprises an orally
acceptable vehicle containing a combination of an abrasive
having a cationic antibacterial agent and at least one proteolytic
enzyme; and at least one additional enzyme.
2 Based on the STN Summary "Novel Antiallergenic Agent" (Accession
Number 1981-538635).
2
Appeal2013-010875
Application 13/372,871
App. Br. 11.
ISSUES AND ANALYSES
We agree with, and adopt, the Examiner's findings and conclusion
that the claims on appeal are prima facie obvious. We address Appellants'
arguments below.
A. Claims 1-8 and 13
Issue 1
Did Examiner err in finding the combination of Gebreselassie and
Vermeer teaches or suggests the limitations of claims 1-8 and 13?
Analysis
(1) Appellants argue Gebreselassie neither teaches nor suggests the
combination of all of the required elements of 1A .. ppellants' claim 1, viz., ( l)
an abrasive (no limitation on the type); (2) a cationic antibacterial; (3) a
proteolytic enzyme; and (4) at least one additional enzyme. App. Br. 6.
Appellants also argue that claim 1 requires only "an abrasive" and not the
genus of silica abrasives taught by Gebreselassie (having an oil absorption
value of less than 100 cc/100 g silica). Id.
The Examiner responds that Gebreselassie teaches the following
constituents in the disclosed dentifrices: (1) a silica abrasive having an oil
absorption value of less than 100 cell OOg and less than 70cc/1 OOg; (2) the
enzyme glucoamylase; (3) dicalcium phosphate; (4) and the proteolytic
enzyme papain at a concentration of 0 .1-10%; ( 5) antibacterial agents; and
( 5) other additives and excipients which are known to be useful in dentrifice
3
Appeal2013-010875
Application 13/372,871
compositions. Ans. 4. The Examiner finds the only component of claim 1
not taught by Gebreselassie is the cationic antibacterial agent. Id. However,
the Examiner finds Gebreselassie explicitly teaches the inclusion of
antibacterial agents in its compositions and Vermeer teaches that the
employment of cationic antibacterials in dentifrices was well-known in the
art for their activity against oral bacteria. Id. The Examiner finds a person
of ordinary skill would understand that the cationic antibacterial agents
taught by Vermeer are functionally equivalent to the antibacterial agents of
Gebreselassie. Id. at 5. The Examiner explains that substituting equivalents
with the reasonable expectation that the respective species will behave in a
similar manner or provide comparable results in related circumstances is
primafacie obvious. Id. (citing In re Ruff, 256 F.2d 590, 594 (C.C.P.A.
1958)).
As an initial matter, Appellants mere assertion that Gebreselassie fails
to teach all of the limitations of the claim is, in itself, insufficient to sustain
an argument that the prior art fails to teach or suggest the limitations of
claim 1. See 37 C.F.R. § 41.37(c)(l)(vii) ("A statement which merely points
out what a claim recites will not be considered an argument for separate
patentability of the claim"); see also In re Lovin, 652 F.3d 1349, 1357 (Fed.
Cir. 2011): ("[W]e hold that the Board reasonably interpreted Rule 41.37 to
require more substantive arguments in an appeal brief than a mere recitation
of the claim elements and a naked assertion that the corresponding elements
were not found in the prior art.").
Moreover, the Examiner's rejection of the claims is over the
combination of Gebreselassie and Vermeer and not over Gebreselassie
alone. "[O]ne cannot show non-obviousness by attacking references
4
Appeal2013-010875
Application 13/372,871
individually where ... the rejections are based on combinations of
references." In re Keller, 642 F.2d 413, 426 (C.C.P.A. 1981).
Finally, we agree with the Examiner that the only limitation not taught
by Gebreselassie is the cationic antibacterial agent. Gebreselassie explicitly
teaches the use of antibacterial agents, reciting:
Another active agent useful in dentifrice compositions of the
present invention are antibacterial agents, which can be from 0.2
to 1.0% by weight of the dentifrice composition. Such useful
antibacterial agents include non-cationic anti-bacterial agents
which are based on phenolic or bisphenolic compounds, such as
halogenated di phenyl ethers such as Triclosan (2,4,4 '-trichloro-
2 '-hydroxydiphenyl ether).
Gebreselassie col. 4, 11. 61---67. However, Vermeer teaches: "Cation[i]c
surfactants have been taught in the art as antimicrobial agents (antibacterial
agents) effective against oral bacteria." Vermeer col 33, 11. 40-42. We
therefore agree with the Examiner that Vermeer teaches cationic
antibacterials were well-known in the art and that a person of ordinary skill
would expect the substitution of a cationic antibacterial agent for the
"antibacterial agent" of Gebreselassie would yield a predictable result, viz.,
antibacterial activity. "If a person of ordinary skill can implement a
predictable variation, § 103 likely bars its patentability." KSR Int 'l Co. v.
Teleflex Inc., 550 U.S. 398, 417 (2007). We consequently uphold the
Examiner's findings in this respect.
(2) Appellants next argue their claimed invention is directed toward oral
compositions with enhanced antiplaque and breath freshening properties,
whereas Gebreselassie is directed to a dentifrice with enhanced stain
removal properties. Id. Therefore, Appellants contend, the rationale for
5
Appeal2013-010875
Application 13/372,871
selecting elements for the respective compositions of Gebreselassie and the
Appellants are different and a person of ordinary skill in the art would not
have realized that using any type of abrasive and adding a cationic
antibacterial and additional enzyme would have maintained Gebreselassie' s
intended use. Id. To the contrary, Appellants argue, one of ordinary skill in
the art would have been taught away from viewing the compositions of
Gebreselassie as being obvious variants of composition of claim 1 because
Gebreselassie requires a specific type of abrasive having an oil absorption of
less than 100 cc/100 g (e.g., Sylodent 650XW A) and distinguishes its
invention from abrasives outside this parameter. Id. (citing Gebreselassie
Table VI).
The Examiner responds that although the primary stated purpose of
the compositions of Gebreselassie may be enhanced stain removal of stain
from the teeth, the inclusion of hydrolytic enzymes and antibacterial agents,
both of which function as anti plaque and malodor removing agents, would
inherently cause the compositions taught by Gebreselassie to also exhibit
those properties. Ans. 5. Furthermore, the Examiner finds Vermeer teaches
proteolytic enzymes disrupt or interfere with plaque/calculus formation and
bacterial adhesion to the tooth surface thereby preventing dental caries, and
also finds the malodorous elements of mouth aroma are generated by
bacteria. Id. As such, finds the Examiner, the compositions of
Gebreselassie, which contains the enzymes instantly claimed would in fact
possess antiplaque activity and reduce breath malodor. Id.
The Examiner further finds the discovery of a previously
unappreciated property of a prior art composition, or of a scientific
explanation for the prior art's functioning, does not render the old
6
Appeal2013-010875
Application 13/372,871
composition patentably new to the discoverer. Ans. 5 (citing Atlas Powder
Co. v. Ireco Inc., 190 F.3d 1342, 1347 (Fed. Cir. 1999)). The Examiner also
states the fact that applicant has recognized another advantage which would
flow naturally from following the suggestion of the prior art cannot be the
basis for patentability when the differences would otherwise be obvious. Id.
at 5---6 (citing Ex parte Obiaya, 227 USPQ 58, 60 (BP AI 1985).
We are not persuaded by Appellants' arguments. In cases in which
"the claimed and prior art products are identical or substantially identical in
structure or composition, or are produced by identical or substantially
identical processes, a prima facie case of either anticipation or obviousness
has been established." MPEP § 2112.0l(I) (citing In re Best, 562 F.2d 1252,
1255 (C.C.P.A. 1977). Moreover, when the Examiner "shows a sound basis
for believing that the products of the applicant and the prior art are the same,
the applicant has the burden of showing that they are not." Id. (citing In re
Spada, 911 F.2d 705, 709 (Fed. Cir. 1990). Therefore, the Examiner's
prima facie case of obviousness can be rebutted by evidence showing that
the prior art products do not necessarily possess the characteristics of the
claimed product. Id. (citing In re Best, 562 F.2d at 1255; see also Titanium
Metals Corp. v. Banner, 778 F.2d 775 (Fed. Cir. 1985) (holding that if a
composition is the same as the prior art, it is immaterial what properties they
have or who discovered the properties because the composition must
necessarily exhibit the properties)).
In the instant appeal, the Examiner has shown the composition of
Gebreselassie, when combined with the teachings of Vermeer, is
substantially the same as the composition recited in claim 1. Although the
state purpose of Gebreselassie is "enhanced tooth and stain removal" an
7
Appeal2013-010875
Application 13/372,871
artisan of ordinary skill would expect the antibacterial components of the
composition of Gebreselassie and Vermeer to have antibacterial properties
that would have antiplaque and breath-freshening properties as recited in
claim 1. The burden is therefore upon the Appellants to show that they do
not. Appellants have not adduced any evidence that the composition taught
by the combination of the cited prior art would not have anti plaque or
breath-freshening properties, and consequently has not met their burden of
rebutting the Examiner's primafacie case. We consequently uphold the
Examiner's findings and reasoning in this respect.
(3) Appellants next argue the Examiner erred by failing to give adequate
consideration to the evidence secondary considerations of nonobviousness,
in this case unexpected results. App. Br. 7. Appellants emphasize that
Gebreselassie does not explicitly teach the use of a cationic antibacterial, as
required by claim 1.
Appellants point to Table II of their Specification arguing that
Compositions 1 and 2 which are within the scope of the claimed
compositions provided unexpectedly improved reduction in malodorous
bacteria when compared against composition which lacked one or more
essential components of the Appellants' claimed invention. Appellants
assert composition C 1 of Table II lacked a cationic antibacterial (e.g.,
cetylpyridinium chloride); composition C2 and C3 lacked a proteolytic
enzyme (e.g., papain) and an additional enzyme (e.g., glucoamylase).
The Examiner finds an artisan of ordinary skill in would expect to
achieve a better antibacterial action, an improved reduction in plaque, and
breath deodorizing by use of the cationic antibacterial and the enzymes in
8
Appeal2013-010875
Application 13/372,871
the dentrifice compositors. Ans. 6. The Examiner finds the data presented
in Table II shows only that the inclusion of the cationic antibacterial and/or
enzymes reduces malodor bacteria. Id. The Examiner finds Appellants have
failed to provide factual evidence than this difference is unexpected. Id.
The Examiner finds one skilled in the art would expect that not all agents
from the same class (antibacterial agents) would necessarily have identical
inhibitory activity ad that some agents will be more effective than others. Id.
The Examiner points out that the burden of demonstrating unexpected
results rests on the party asserting them, and that "it is not enough to show
that results are obtained which differ from those obtained in the prior art:
that difference must be shown to be an unexpected difference." Ans. 6
(quoting In re Klosak, 455 F.2d 1077, 1080 (C.C.P.A. 1972).
The Examiner further notes that the results were obtained with a very
specific composition comprising specific ingredients at specific
concentrations which are not required by the instant claims. Id. The
Examiner quotes In re Dill as holding "[t]he evidence presented to rebut a
prima facie case of obviousness must be commensurate in scope with the
claims to which it pertains. Id. (quoting 604 F.2d 1356, 1361 (C.C.P.A.
1979)). The Examiner also points out that expected beneficial results are not
evidence of nonobviousness. See In re Skoner, 517 F.2d 947, 950 (CCPA
1975).
We are not persuaded by Appellants' arguments. Table II of
Appellants' Specification is reproduced below:
9
Appeal2013-010875
Application 13/372,871
Appellants' Table II presents data concerning the effect of claimed and
control compositions in reducing malodor bacteria
Appellants' Table II demonstrates increased reduction of malodor
bacteria colonies when a cationic antibacterial and enzymes are added to the
composition. We agree with the Examiner that this is an expected result; a
person of ordinary skill in the art would reasonably expect antibacterial
agents and proteolytic enzymes to inhibit bacterial growth. Moreover, Table
II does not demonstrate that Appellants' claimed composition is
unexpectedly more effective than the compositions taught in the prior art at
reducing bacteria: Appellants adduce no evidence that cationic
antibacterials are unexpectedly more effective than those taught by the prior
art or what one of ordinary skill would expect from the combination of
Gebreselassie and Vermeer.
As such, we agree with the Examiner that Appellants have not
successfully demonstrated that the results set forth in Table II are
unexpected when compared to what a person of ordinary skill would expect
from the teachings of the prior art. We consequently affirm the Examiner's
rejection of claims 1-8 and 13. Furthermore, because Appellants make
10
Appeal2013-010875
Application 13/372,871
essentially the same argument with respect to the unexpected results for
claims 19 and 20, we similarly affirm the Examiner's rejection of those
claims.
B. Claims 9-12 and 14--18
Issue
Claim 9 is representative and recites: "A method of effecting
enhanced antiplaque and breath freshening which comprises preparing a
dentifrice comprised of an orally acceptable vehicle containing a
combination of an abrasive; at least one proteolytic enzyme; and at least one
additional enzyme; and then applying the dentifrice to the teeth in the oral
cavity." App. Br. 11. Did the Examiner err because the combination of
Gebreselassie and Vermeer fails to teach the method recited in claims 9-12
and 14--18? Id. at 8.
Analysis
Appellants contend the Examiner admits Gebreselassie does not teach
or suggest the method recited in claim 9. App. Br. 8. Appellants argue that
the effects of reducing plaque and deodorizing the oral cavity attributed to
Vermeer in the Office Action apply to Vermeer's compositions, which only
require an alkyl aldonamide compound and a co-surfactant. Id. Appellants
maintain Vermeer does not attribute the reduction of plaque and deodorizing
the oral cavity to the other components of their composition. Id.
Appellants further contend that a person of ordinary skill, considering
all of the possible solutions represented by the combined teachings of
Gebreselassie and Vermeer would have been directed to a virtually infinite
11
Appeal2013-010875
Application 13/372,871
number of possible combinations of elements for an oral care composition.
App. Br. 9. As such, Appellants argue, one of ordinary skill in the art would
not have gleaned that Vermeer taught or suggested the elements relied upon
by the Examiner for combination with Gebreselassie to provide the effects of
reducing plaque and deodorizing the oral cavity. Id.
The Examiner responds that, whereas the main ingredient in
Vermeer's composition is the alkyl aldonamide, Vermeer also specifically
teaches the utility of the different components commonly used in the
dentrifice compositions. Ans. 7. The Examiner finds, by way of example,
that Vermeer explicitly teaches that cationic surfactants, such as
cetylpyridinium chloride, ha[ ve] antibacterial activity and are effective
against oral bacteria. Id. (citing Vermeer col.33, 11. 40-42; col.35, 11. 13-
14). Furthermore the Examiner finds Vermeer also teaches that proteolytic
enzymes disrupt and interfere with plaque/calculus formation and bacterial
adhesion to the tooth surface and thereby prevent dental caries. Id. (citing
Vermeer col.41, 11. 7-10).
We are not persuaded by Appellants' arguments. As an initial matter,
Appellants' representation that Gebreselassie fails to teach the method of
claim 9 is not relevant to the obviousness analysis, because the Examiner
rejected the claims over the combination of Gebreselassie and Vermeer. See
Keller, 642 F.2d at 426.
Furthermore, and as explained supra, Vermeer was cited by the
Examiner for the purpose of showing cationic antibacterial agents were well-
known in the art at the time of Appellants' claimed invention. With respect
to Appellants' argument concerning the large number of possible
combinations, we have explained, and Appellants have implicitly admitted,
12
Appeal2013-010875
Application 13/372,871
that Gebreselassie teaches all of the limitations of the claims, with the
exception of the cationic antibacterials, which are taught by Vermeer. See
App. Br. 6; see also Wm. Wrigley Jr. Co. v. Cadbury Adams USA LLC, 683
F.3d 1356, 1364 (Fed. Cir. 2012) (A "strong case of obviousness based on
the prior art [exists when the claim] recites a combination of elements that
were all known in the prior art, and all that was required to obtain that
combination was to substitute one well-known ... agent for another"). We
have also explained our conclusion as to why it would have been obvious to
a person of ordinary skill in the art to combine the teachings of
Gebreselassie and Vermeer. We consequently affirm the Examiner's
rejection of claims 9-12 and 14--18.
DECISION
The Examiner's rejection of claims 1-20 as unpatentable under 35
U.S.C. § 103(a) 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). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
13