Yizhong Wang et al.

Patent Trials and Appeals Board

Jul 29, 2019

14917442 - (D) (P.T.A.B. Jul. 29, 2019)

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.
14/917,442 03/08/2016 Yizhong Wang 74462US004 7463
32692 7590 07/29/2019
3M INNOVATIVE PROPERTIES COMPANY
PO BOX 33427
ST. PAUL, MN 55133-3427
EXAMINER
WEBB, WALTER E
ART UNIT PAPER NUMBER
1612
NOTIFICATION DATE DELIVERY MODE
07/29/2019 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):
LegalUSDocketing@mmm.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte YIZHONG WANG, JOEL D. OXMAN, and
TIFFANY TON1
____________

Appeal 2019-001089
Application 14/917,442
Technology Center 1600
____________

Before JEFFREY N. FREDMAN, DEBORAH KATZ, and JOHN G. NEW,
Administrative Patent Judges.

NEW, Administrative Patent Judge.

DECISION ON APPEAL

1 Appellants identify the real party-in-interest as 3M Innovative Properties
Company. App. Br. 2.

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SUMMARY
Appellants file this appeal under 35 U.S.C. § 134(a) from the
Examiner’s Final Rejection of claims 1–3, 5–7, 9–11, 13, 15, 17–20, and 31
as unpatentable under 35 U.S.C. § 103 over Feldstein et al. (US
2005/0113510 A1, May 26, 2005) (“Feldstein”).
Claims 1–3, 5–7, 9–11, 13, 15, and 17–20 also stand rejected as
unpatentable under 35 U.S.C. § 103 over Friedman et al. (WO 2011/042897
A1, April 14, 2011) (“Friedman”).
Claim 31 also stands rejected as unpatentable over Friedman and
Vermeer et al. (US 5,521,293, May 28, 1996) (“Vermeer”).
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

NATURE OF THE CLAIMED INVENTION
Appellants’ invention is directed to oral care compositions with acid
buffering or neutralization capacity, capable of forming a film on a surface
when contacted with water. Spec. p. 1, ll. 18–22.

REPRESENTATIVE CLAIM
Claim 1 is representative of the claims on appeal and recites:
1. An oral composition, comprising:

a solvent comprising water and a cosolvent chosen from
C1–C5 alcohols and acetone;

a basic copolymer comprising basic acrylate monomeric
units, basic methacrylate monomeric units, or a combination
thereof;
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no less than 0.5 wt-% of an acid buffering or neutralizing
agent; and optionally an active agent;

wherein the oral composition comprises from about 6 to
about 15 wt-% of water, from about 30 to about 60 wt-% of the
cosolvent, and from about 25 to about 55 wt-% of the basic
copolymer;

wherein the basic copolymer is dissolved in the oral
composition;

wherein the oral composition is capable of forming a film
on a surface when contacted with an aqueous solution; and

wherein the wt-% of each component is based on the total
weight of the composition.

Claims App’x 1.

ISSUES AND ANALYSIS
We agree with, and expressly adopt, the Examiner’s findings,
reasoning, and conclusion that the claims are prima facie obvious over
Feldstein. We address below the arguments raised by Appellants.

A. Rejection of the claims as obvious over Feldstein
Issue 1
Appellants argue that the Examiner erred because Feldstein fails to
teach all of the elements of the claims. App. Br. 7.

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Analysis
The Examiner finds Feldstein teaches film-forming compositions for
oral care containing 20–90 wt% of a film-forming polymer, with the balance
including water or other solvents, and pH regulators, among other
components. Final Act. 3–4 (citing Feldstein ¶¶ 60, 119). The Examiner
finds that Feldstein teaches a liquid tooth-whitening formulation comprising
a film-forming polymer, a neutral polymer, 15 wt% water, 40 wt% ethanol
(C1–C5 alcohol) cosolvent, and 0.2 wt% sodium citrate (acid buffering or
neutralizing agent), wherein the formulation forms a film within 30 seconds
when applied to teeth. Id. at 4 (citing Feldstein ¶¶ 235–237).
The Examiner further finds that Feldstein teaches the film-forming
polymer may include Eudragit E, i.e., a basic copolymer comprising basic
methacrylate monomeric units, and the compositions may include blends of
Eudragit E and other polymers. Final Act. 3 (citing Feldstein ¶¶ 105, 213).
The Examiner finds “[b]ecause the prior art compositions comprise a film-
forming polymer [they] would have been capable of forming a film on a
surface when contacted with an aqueous solution.” Id. at 4. The Examiner
finds it would have been obvious to modify Feldstein to make the claimed
composition because modifying the amounts of basic copolymer, water,
cosolvent, and buffering or neutralizing agents “represents nothing more
than the predictable use of prior art elements according to their established
functions.” Id. at 5–6.
Appellants argue that Feldstein does not teach or suggest an oral
composition with about 6 to about 30 wt% of water and about 30 to about 60
wt% of cosolvent. App. Br. 7. According to Appellants, Feldstein’s
teaching of formulations containing 20–95 wt% film-forming polymer with
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the balance of “the composition [including] components such as plasticizers
and tackifiers, water or other solvents, active agents, pH regulators, and so
forth, as are described below” does not teach or suggest the claimed ranges.
Id. at 8. Moreover, Appellants argue that Feldstein does not teach: (1)
“wherein the basic copolymer is dissolved in the oral composition”; and (2)
“wherein the oral composition is capable of forming a film on the surface
when contacted with an aqueous solution.” Id.
Appellants contend that Feldstein’s Examples 8 and 14, containing
Eudragit E in amounts greater than 55 wt% and no water, show that
Feldstein does not teach the required features of the claims. App. Br. 8–9.
Appellants also argue that Feldstein’s Example 13 does not contain Eudragit
E, and that “[i]t is not clear . . . whether Example 13 is a solution” or “how
the Examiner reached the conclusion that substituting [Eudragit E] into
Example 13, at the instant claimed ranges of from about 25 to about 55 wt-%
would result in a composition where the [Eudragit E] were soluble.” Id. at
12.
We are not persuaded. We first consider whether Feldstein teaches
the components of the claimed composition, and then consider the functional
limitation of the claims. Feldstein’s Example 13 states: “[a]dhesive blends
described in this invention can be applied . . . as solutions in appropriate
solvents, which are capable of forming the film upon drying at [an]
application site.” Feldstein ¶ 235. Feldstein’s Example 13 teaches the
appropriate solvents include 15 wt% water and 40 wt% ethanol for a
solution that forms a hydrogel film when applied to teeth. Id. at ¶¶ 235, 237.
Therefore, Feldstein teaches a solution having a film-forming polymer
composition dissolved therein.
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Feldstein’s Example 13 does not teach that the film-forming polymer
is Eudragit E. However, Feldstein teaches suitable blends of polymers
include Eudragit E as the film-forming polymer. See Feldstein ¶ 114.
Moreover, the fact that Eudragit E may function as a film-forming polymer
in non-liquid compositions, e.g., Examples 8 and 14, does not preclude the
obviousness of the claims. All limitations of a claim may be incorporated
into separate embodiments of a prior art reference if, by combining the
elements of those embodiments, a person of ordinary skill in the art could
have implemented a predictable variation of the composition. See Boston
Scientific Scimed, Inc. v. Cordis Corp., 554 F.3d 982, 991 (Fed. Cir. 2009).
Feldstein teaches that the film-forming polymer in the composition may
range from 20–95 wt% of the composition, with the balance being solvents
and pH regulators. Feldstein ¶ 60. Therefore, Feldstein teaches a
predictable variation of Example 13, incorporating a blend of suitable
polymers including Eudragit E as the film-forming polymer in the amount of
20–45 wt% of the formulation (the balance including, among other
components, 40 wt% ethanol, 15 wt% water, and sodium citrate buffer).
With respect to the recited ranges, our reviewing court has held that:
“In cases involving overlapping ranges, we and our predecessor court have
consistently held that even a slight overlap in range establishes a prima facie
case of obviousness.” In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003).
The ranges and amounts taught by Feldstein encompass or lie within the
ranges recited in Appellants’ claims. We consequently agree with the
Examiner that the claims are prima facie obvious over Feldstein.
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Appellants next argue that Feldstein does not disclose: “that the
compositions are capable of forming a film on the surface when contacted
with an aqueous solution.” Reply Br. 2–3. The Specification discloses:
When the oral composition of the present disclosure contacts
water, the water miscible solvents can diffuse into water and
water can also diffuse into the oral composition. As a result, the
molecular interaction among the copolymer chains can increase
dramatically and then form a durable, toothbrush abrasion
resistant and slippery film. Alternatively, the film can be formed
by air drying. For example, air blowing can evaporate water and
cosolvents to form the durable, brush abrasion resistant and
slippery film.

Spec. p. 5, ll. 1–6. Feldstein similarly teaches liquid compositions that air
dry when applied to teeth. Moreover, Feldstein teaches compositions that
contain the same amounts of water and water miscible solvents (e.g.,
ethanol) as the claimed composition. Appellants argue that it is the
Examiner’s burden to prove that Feldstein’s compositions are capable of
forming a film when contacted with an aqueous solution. See Reply Br. 2–3.
However, as our reviewing court has held:
Where … the claimed and prior art products are identical or
substantially identical … the PTO can require an applicant to
prove that the prior art products do not necessarily or inherently
possess the characteristics of his claimed product. Whether the
rejection is based on ‘inherency’ under 35 U.S.C. § 102, on
‘prima facie obviousness’ under 35 U.S.C. § 103, jointly or
alternatively, the burden of proof is the same, and its fairness is
evidenced by the PTO’s inability to manufacture products or to
obtain and compare prior art products.

In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (citations and footnote
omitted).
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We find that the Examiner has established that Feldstein teaches all of
the structural limitations of Appellants’ claimed composition, and also
exemplifies similar compositions that satisfy the functional recitation of
film-forming. The burden therefore shifts to Appellants to prove that
Feldstein’s obvious compositions are not capable of forming a film when
contacted with an aqueous solution. Appellants have failed to meet that
burden. Accordingly, we are not persuaded that the Examiner erred in this
respect.

Issue 2
Appellants argue that the Examiner erred because the teachings of
Feldstein would have required a person of ordinary skill to select one of an
almost infinite number of possible formulations to arrive at the claimed
compositions. App. Br. 10.

Analysis
Appellants argue that “[a] person of ordinary skill in the art reviewing
[Feldstein] would be subjected to an infinite number of possible
formulations, and would not arrive at the wt% ranges and combinations . . .
of the present claims.” App. Br. 10. Appellants further argue “[t]he
comparative examples of the present application exemplify the importance
of the ranges of the claimed compositions.” Id. Appellants contend that the
comparative examples show that a person of ordinary skill in the art could
not reach the claimed invention with routine experimentation. Id. at 11.
Specifically, Appellants contend that comparative examples CE1,
CE3, and CE4, containing 4 wt% water do not form a polymer solution.
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App. Br. 11 (citing Spec. p. 19, Table 1). Moreover, Appellants contend
comparative example CE2, containing 4 wt% water, does not form a film
when contacted with water. Id. In contrast, Examples 1–27, containing at
least 10 wt% water appear to form solutions that set as films when applied to
a surface and contacted with water. See Spec. pp. 19–21 (Tables 1–4).
We are not persuaded. As discussed above, Feldstein teaches a liquid
composition containing a film-forming polymer, 15 wt% and 40 wt%
ethanol. Moreover, Feldstein suggests that the film-forming polymer may
include 20–95 wt% Eudragit E. Our reviewing court has held that in: “cases
in which the difference between the claimed invention and the prior art is
some range or other variable within the claims . . . the applicant must show
that the particular range is critical, generally by showing that the claimed
range achieves unexpected results.” In re Woodruff, 919 F.2d 1575, 1578
(Fed. Cir. 1990) (citations omitted). Appellants fail to adduce any evidence
of record showing that the claimed range is critical.
Appellants’ arguments with respect to the comparative examples CE1-
CE4 do not show the claimed range achieves unexpected results relative to
the prior art. See Woodruff, 919 F.2d at 1578. Appellants do not compare
the results against a prior art liquid formulation containing 15 wt% and 40
wt% ethanol, as taught by Feldstein. Furthermore, Appellants do not explain
why it is unexpected that decreasing the amount of solvent, e.g., water,
below a certain minimum amount prevents the composition from forming a
solution in C1, CE3, and CE4. Rather, as stated by the Examiner, the
compositions simply arrange common elements, e.g., water and ethanol,
performing their known functions as solvents, in a range optimized to form a
solution as taught by Feldstein. See Final Act. 3 (citing KSR Int’l Co. v.
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Teleflex Inc., 127 S.Ct. 1727, 1740 (2007)). See Merck & Co., Inc. v.
Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (“That the [prior art]
discloses a multitude of effective combinations does not render any
particular formulation less obvious.”)
With respect to CE2, it appears that amount of water is not critical; as
CE2 contains 4 wt% water forms a solution, whereas CE1, CE3, and CE4,
which contain the identical concentration of water, do not. See Spec. p. 19,
Table 1. Rather than establish criticality, CE2 suggests that some other non-
claimed feature effects the formation of a solution and film when contacted
with water. Accordingly, even were we persuaded that the results were
unexpected; the data in the Specification is not commensurate with the scope
of claims. In re Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005) (“[T]he record
does not show that the improved performance would result if the weight-
percentages were varied within the claimed ranges”). Accordingly, we are
not persuaded that the Examiner erred.

Issue 3
Appellants argue that the Examiner erred by allegedly using
impermissible hindsight. App. Br. 12.

Analysis
Appellants argue:
the Examiner failed to articulate a common sense reason that
would have led a skilled artisan to the claimed oral composition
capable of forming a film on a surface when contacted with an
aqueous solution and wherein the basic copolymer is dissolved
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in the oral composition without using Appellant’s disclosure as
a guide.

App. Br. 12.
We are not persuaded. The Examiner has established the prior art
teaches all of the components of the claimed oral composition, as well as a
reason to prepare a solution that forms a film when applied to a tooth
surface. Appellants point to no limitations of the claims on appeal that could
have been gleaned using only knowledge obtained from Appellants’
Specification, and not from the teachings of the cited prior art. See In re
McLaughlin, 443 F.2d 1392, 1395 (C.C.P.A. 1971). Rather, Appellants
merely make an allegation of hindsight reasoning, unsupported by any
evidence of probative value. We accord such conclusory allegations little
probative value. See In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997)
(holding that attorney arguments and conclusory statements that are
unsupported by factual evidence are entitled to little probative value).
Appellants do not argue the dependent claims separately, relying on
their arguments for claim 1. We consequently affirm the Examiner’s
rejection of claims 1–3, 5–7, 9–11, 13, 15, 17–20, and 31.

B. Rejection of the claims as obvious over Friedman
Issue
Appellants argue that the Examiner erred in finding that Friedman
teaches all of the elements of the claims. App. Br. 13.
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Analysis
The Examiner finds Friedman teaches liquid compositions applied to
hard surfaces in the oral cavity. Final Act. 7 (citing Friedman Abst.). The
Examiner finds Friedman teaches a composition comprising Eudragit E PO
(a basic methacrylate copolymer), ethylcellulose (a neutral copolymer),
ethanol (C1–C5 alcohol), and sodium acetate hydrate (acid buffering agent).
Id. (citing Friedman pp. 13–14). The Examiner finds that Friedman teaches
an amount of pH sensitive polymer ranging from 10% to about 30%. Ans. 9
(citing Friedman p. 6, ll. 30–33). The Examiner finds that Friedman teaches
a carrier for the liquid precursor composition may include a combination of
alcohol and water. Final Act. 8 (citing Friedman p. 5). The Examiner
determines it would have been obvious to determine the amounts of water
and alcohol solvents by routine experimentation. Id.
Appellants argue that Friedman does not teach or suggest oral
composition containing about 6 to about 15 wt% water, about 30 to about 60
wt% cosolvent, and about 25 to about 55 wt% basic copolymer. App. Br.
13. Appellants contend that all of the Examples in Friedman use amounts of
ethanol from 71–90.5 wt% and amounts of Eudragit E PO from 1.3–5 wt%
in liquid precursor composition. Id. at 17 (citing Friedman pp. 15–21).
We are persuaded by Appellants’ argument. We agree that the
Examiner has not shown that Friedman teaches or suggests the limitations of
Appellants’ claims. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).
Friedman teaches “the pH sensitive polymer ranging from about 10%
to about 30% . . . in the dry film.” Friedman p. 6, ll. 30–34. In contrast,
claim 1 requires “the wt-% of each component is based on the total weight
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of the composition” including water and cosolvent (Claims App’x).
Friedman does not teach any amount of water and alcohol other than those
taught in the Examples. We agree with Appellants that Friedman do not
disclose amounts of water, alcohol, or basic copolymer that overlap the
ranges recited by the claims. Because the Examiner does not identify the
claimed amounts of the components recited in the claims, we do not sustain
the Examiner’s rejection over Friedman.

C. Rejection of claim 31 as obvious over Friedman and Vermeer
We have explained the reasons we do not sustain the Examiner’s
rejection of claim 1 over Friedman in the discussion supra. We further find
that Vermeer does not cure the deficiencies of Friedman. Consequently, we
do not sustain the Examiner’s rejection of claim 31 over Friedman and
Vermeer.
DECISION
The Examiner’s rejection of claims 1–3, 5–7, 9–11, 13, 15, 17–20,
and 31 under 35 U.S.C. § 103 over Feldstein is affirmed.
The Examiner’s rejection of claims 1–3, 5–7, 9–11, 13, 15, and 17–20
under 35 U.S.C. § 103 over Friedman is reversed.
The Examiner’s rejection of claim 31 under 35 U.S.C. § 103 over
Friedman and Vermeer is reversed.
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