Michael Prencipe et al.Download PDFPatent Trials and Appeals BoardOct 14, 20212020006149 (P.T.A.B. Oct. 14, 2021) Copy Citation 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. 12/058,209 03/28/2008 Michael Prencipe 8272-00-US-01-OC 2695 23909 7590 10/14/2021 COLGATE-PALMOLIVE COMPANY 909 RIVER ROAD PISCATAWAY, NJ 08855 EXAMINER SIMMONS, CHRIS E ART UNIT PAPER NUMBER 1629 NOTIFICATION DATE DELIVERY MODE 10/14/2021 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 MICHAEL PRENCIPE, RAVI SUBRAMANYAM, SARITA V. MELLO, DONGHUI WU, SUMAN CHOPRA, ANDRE M. MORGAN, DIANE CUMMINS, RICHARD J. SULLIVAN, RALPH PETER SANTARPIA III, LYNETTE ZAIDEL, QIN WANG, GARY EDWARD TAMBS, VIRGINIA MONSUL BARNES, RAJNISH KOHLI, RICHARD SCOTT ROBINSON, SERGIO LEITE, and ERIC A. SIMON __________ Appeal 2020-006149 Application 12/058,209 Technology Center 1600 __________ Before DONALD E. ADAMS, RICHARD M. LEBOVITZ, and JEFFREY N. FREDMAN, Administrative Patent Judges. FREDMAN, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appellant1 requests rehearing of the decision entered June 22, 2021 (“Decision”) that affirmed the Examiner’s obviousness rejections. We grant the Request to the extent that we designate our earlier affirmance a NEW GROUND OF REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b). 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Colgate- Palmolive Company. Appeal Br. 2. Appeal 2020-006149 Application 12/058,209 2 DISCUSSION Appellant asserts the Decision differs in thrust from the Examiner’s rejection and misapprehended several issues under 37 C.F.R. § 41.52. We note that “[a]rguments not raised, and Evidence not previously relied upon . . . are not permitted in the request for rehearing except . . . based upon a recent relevant decision of either the Board or a Federal Court . . . [or] responding to a new ground of rejection.” 37 C.F.R. § 41.52 (a)(1)–(3). I. New Grounds Appellant contends: Removing Kleinberg II from the grounds of rejection changed the thrust of the rejection (and the arguments made in response) because a substantial issue on appeal was the fact that Kleinberg II teaches against the pH range and inclusion of phosphoric acid in the claims. Kleinberg II specifically teaches that the higher pH is necessary to promote calcium deposition and remineralization, which Appellant argued was inconsistent with the requirement of a lower pH and the inclusion of phosphoric acid in the claims. (Reh’g Req. 2). We find this argument persuasive and agree that our analysis resulted in different thrust of the rejection. Therefore, we grant the request to designate our affirmance as a New Ground of Rejection. II. Kleinberg II2 Appellant contends Kleinberg II teaches away from a neutral pH, as a basic pH is “required” for tubule plugging, calcium deposition, and adhesive properties of the arginine bicarbonate. The reference also teaches away from 2 Kleinberg et al., US 2002/0064504 A1, published May 30, 2002 (“Kleinberg II”). Appeal 2020-006149 Application 12/058,209 3 the use of phosphoric acid, rather than carbonic acid, as a neutralizing acid, as the loss of carbon dioxide helps drive the deposition of the calcium. (Reh’g Req. 3). We find this argument unpersuasive for a number of reasons. First, while Kleinberg II prefers “a pH ranging from about 7.5 to about 9.5” (Kleinberg II ¶ 34), we do not agree that Kleinberg discourages, discredits, or otherwise teaches away from the use of pH values such as the pH 7.2 value recited in claim 1. Second, Kleinberg II never discredits the use of phosphoric acid. Indeed, Appellant does not identify any mention of phosphoric acid in Kleinberg II, who therefore cannot discourage the use of phosphoric acid. Third, to the extent that Kleinberg II does prefer more basic pH values, Kleinberg II provides evidence that pH values higher than 7 will function, and no criticality or unexpected result is shown for a pH of 7.2. The Specification recites “compositions wherein the pH is about 6 to about 9, e.g., about 6.5 to about 7.4 or about 7.5 to about 9” (Spec. 6–7). Kleinberg II teaches “that arginine bicarbonate surprisingly has adhesive properties particularly useful at a pH ranging from about 7.5 to about 9.5” (Kleinberg II ¶ 34). Kleinberg II does prefer higher pH values, but also recognizes that “[a]rginine bicarbonate is prepared from arginine (free base) by titrating the arginine with gaseous carbon dioxide . . . until a solution pH of 7.2 is reached” (Kleinberg II ¶ 61). Kleinberg II explains that a pH of 7.2 “is the pH at which the carbon dioxide has converted all or most of the arginine to arginine bicarbonate. For intrinsic plugging and the formation of salivary precipitin, a pH between 8 and 9 is preferred” (id.). Thus, Kleinberg II acknowledges that 7.2 is a working embodiment. Rather than teach away from the use of pH 7.2, Kleinberg II demonstrates that the Appeal 2020-006149 Application 12/058,209 4 pH value of 7.2 shares the same properties of a pH value of 7.5. See Titanium Metals Corp. of Am. v. Banner, 778 F.2d 775, 783 (Fed. Cir. 1985) (stating a prima facie case of obviousness can be found where the ranges “are so close that prima facie one skilled in the art would have expected them to have the same properties.”) III. Motivation Appellant contends, regarding our Decision, “that these rationales would not provide motivation to adding phosphoric acid into a composition containing Kleinberg I’s calcium-arginine-cariostatic anion complex” (Reh’g Req. 6). We remain unpersuaded for the reasons given in the Decision at pages 7 and 8. We further note that Kleinberg I3 expressly suggests that the “pH of the oral compositions described herein can be controlled with acid such as hydrochloric” (Kleinberg I 5:50–52) and Montgomery4 teaches “[a]cid buffers, such as citric acid, phosphoric acid, and others may also be used alone or in conjunction with an alkaline buffer to obtain the desirable pH and to provide buffering capacity” (Montgomery ¶ 40). These references directly suggest the use of acids, including phosphoric acid, for desirable pH and buffering capacity. Appellant also contends that: If inorganic phosphate (e.g., phosphoric acid) is added into Kleinberg’s composition, inorganic phosphate might interact with calcium and arginine. Thus, one of skill in the art would expect that inorganic phosphate might interfere with the formation of calcium/arginine/cariostatic anion complex. 3 Kleinberg et al. US 6,217,851 B1, issued Apr. 17, 2001 (“Kleinberg I”). 4 Montgomery, US 2001/0021374 A1, published Sept. 13, 2001. Appeal 2020-006149 Application 12/058,209 5 Similarly, one of skill in the art would expect that citrate (which is also not taught to be cariostatic by Kleinberg I) and a competing divalent soluble metal ion (zinc from zinc citrate) might interfere with the formation of calcium/arginine/ cariostatic anion complex. (Appeal Br. 8–9). We find this argument unpersuasive because Appellant lacks any evidence demonstrating the expectation of an ordinary artisan for interactions of inorganic phosphate or any other compound. This is purely attorney argument but “attorney argument [is] not the kind of factual evidence that is required to rebut a prima facie case of obviousness.” In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997). We note that “[e]vidence not previously relied upon . . . [is] not permitted in the request for rehearing.” 37 C.F.R. § 41.52(a). DECISION SUMMARY We have reviewed the original opinion in light of Appellant’s request and granted the request for a New Ground of Rejection. However, we find no point of law or fact which we overlooked or misapprehended in arriving at our decision. Therefore, Appellant’s request is denied with respect to making any modifications to the decision other than designating our rejection as a new ground of rejection. Appeal 2020-006149 Application 12/058,209 6 Outcome of Decision on Rehearing: Claim(s) 35 U.S.C. § Reference(s)/Basis Denied Granted 1, 2, 4, 7, 10–13, 15, 25–27 103 Doyle, Kleinberg I, Montgomery 1, 2, 4, 7, 10–13, 15, 25–27 1, 2, 4, 7, 10–15, 25–27, 31–34 103 Doyle, Kleinberg I, Montgomery, Fujisawa 1, 2, 4, 7, 10–15, 25– 27, 31–34 Overall Outcome 1, 2, 4, 7, 10–15, 25– 27, 31–34 Final Outcome of Appeal after Rehearing Claim(s) 35 U.S.C. § Reference(s)/Basis Affirmed Reversed New Ground of Rejection 1, 2, 4, 7, 10–13, 15, 25– 27 103 Doyle, Kleinberg I, Montgomery 1, 2, 4, 7, 10–13, 15, 25–27 1, 2, 4, 7, 10–13, 15, 25–27 1, 2, 4, 7, 10–15, 25–27, 31–34 103 Doyle, Kleinberg I, Montgomery, Fujisawa 1, 2, 4, 7, 10–15, 25–27, 31–34 1, 2, 4, 7, 10–15, 25– 27, 31–34 Overall Outcome 1, 2, 4, 7, 10–15, 25–27, 31–34 1, 2, 4, 7, 10–15, 25– 27, 31–34 We designated new grounds pursuant to 37 C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of rejection pursuant to this Appeal 2020-006149 Application 12/058,209 7 paragraph shall not be considered final for judicial review.” Section 41.50(b) also provides: When the Board enters such a non-final decision, the appellant, within two months from the date of the decision, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. The new ground of rejection is binding upon the examiner unless an amendment or new Evidence not previously of Record is made which, in the opinion of the examiner, overcomes the new ground of rejection designated in the decision. Should the examiner reject the claims, appellant may again appeal to the Board pursuant to this subpart. (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. The request for rehearing must address any new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which rehearing is sought. Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure § 1214.01. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). GRANTED; 37 C.F.R. § 41.50(b) Copy with citationCopy as parenthetical citation