CAO GROUP, INC.v.The Procter & Gamble Company

Patent Trial and Appeal Board

Nov 26, 2014

08870665 (P.T.A.B. Nov. 26, 2014)

Trials@uspto.gov Paper 18
Tel: 571-272-7822 Entered: November 26, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

CAO GROUP, INC.,
Petitioner,

v.

THE PROCTER & GAMBLE COMPANY,
Patent Owner.
____________

Case IPR2014-00796
Patent 5,989,569
____________

Before ERICA A. FRANKLIN, DONNA M. PRAISS, and
SCOTT E. KAMHOLZ, Administrative Patent Judges.

PRAISS, Administrative Patent Judge.

DECISION
Denying Institution of Inter Partes Review
37 C.F.R. § 42.108

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I. INTRODUCTION
CAO Group, Inc. (“Petitioner”) filed a Second Corrected Petition
(Paper 12, “Pet.”) to institute an inter partes review of claims 1 to 13 of U.S.
Patent No. 5,989,569 (Ex. 1001, “the ’569 patent”) pursuant to 35 U.S.C. §§
311‒319. The Procter & Gamble Company (“Patent Owner”) filed a
Preliminary Response (Paper 16, “Prelim. Resp.”).
We have jurisdiction under 35 U.S.C. § 314, which provides that an
inter partes review may be authorized only if “the information presented in
the petition . . . and any [preliminary] response . . . shows that there is a
reasonable likelihood that the petitioner would prevail with respect to at least
1 of the claims challenged in the petition.” 35 U.S.C. § 314(a).
Petitioner challenges claims 1 to 13 of the ’569 patent under
35 U.S.C. §§ 102(b) and 103(a). Pet. 6. Upon consideration of the Petition,
we conclude the information presented does not demonstrate a reasonable
likelihood that Petitioner would prevail in showing the unpatentability of
any of the challenged claims. Accordingly, we do not authorize an inter
partes review to be instituted as to the ’569 patent.

A. Related Proceedings
The ’569 patent has been asserted in the U.S. District Court for the
Southern District of Ohio, Western Division, in The Procter & Gamble
Company v. CAO Group, Inc., No. 1:13-cv-00337-TSB. Pet. 1–2. U.S.
Patents 6,045,811 and 7,122,199 also are asserted in the same district court
case and are the subject of inter partes review petitions IPR2014-00797 and
IPR2014-00798, respectively.

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B. The ’569 Patent (Ex. 1001)
The ’569 patent, titled “Delivery System for a Tooth Whitener Using
a Permanently Deformable Strip of Material,” is directed to “an oral care
substance applied to [a] strip of material” such that “[t]he substance . . .
provides adhesive attachment between the strip of material and the surface
[of a tooth] to hold the delivery system in place for a sufficient time[,]” “the
substance . . . provid[es] an active onto the surface[,]” and “the substance is
not substantially extruded from between the strip of material and the surface
during manual deformation of the strip of material.” Ex. 1001, Abst.

C. Illustrative Claim
Claims 1, 6, 10, and 13 are the only independent claims of the ’569
patent. Claim 1, reproduced below, is illustrative of the claims at issue:
1. A delivery system for a tooth whitening substance,
wherein the delivery system is unobtrusive so as to be wearable
without interfering with normal social discourse and is of a size
that individually fits an upper or lower row of a wearer’s teeth
when placed against the teeth, comprising:
a. a strip of material of sufficient length to cover a
plurality of adjacent teeth having a yield point and thickness
such that said strip of material substantially conforms to the
curvature of the wearer’s mouth, gaps between the adjacent
teeth, a shape of a tooth via permanent deformation under a
pressure less than about 250,000 Pascals when said delivery
system is placed thereagainst; and
b. a tooth whitening substance applied to said strip of
material such that when said delivery system is placed on a
front surface of said tooth, said substance contacts said surface
providing an active onto said surface, said substance also
having sufficient viscosity and tackiness for providing adhesive
attachment between said strip of material and said surface to
hold said delivery system in place for a sufficient time to allow
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said active to act upon said surface, said substance having an
extrusion resistance sufficient to withstand a normal force
applied to deform said strip of material so that said substance is
not substantially extruded from between said strip of material
and said surface during manual deformation of said strip of
material.

D. The Prior Art
Petitioner relies on the following prior art:
Reference Patent Number Date Exhibit
Shapiro US 5,462,067 Oct. 31, 1995 1006
Gaglio US 5,326,685 July 5, 1994 1005
Curtis US 5,310,563 May 10, 1994 1004
Hoef US 3,416,527 Dec. 17, 1968 1003

E. The Asserted Grounds
Petitioner challenges claims 1 to 13 of the ’569 patent on the
following grounds:
1

Ground Claims Challenged Basis Reference(s)
1 1–3, 6, 7, 10, 11, and 13 § 102(b) Gaglio
2 1–13 § 103(a) Gaglio, Curtis, Hoef, Shapiro
3 1–3, 6, 7, 10, 11, and 13 § 102(b) Hoef
4 1–13 § 103(a) Hoef, Gaglio, Curtis, Shapiro
5 1–3, 6, 7, 10, and 11 § 102(b) Curtis
6 1–13 § 103(a) Curtis, Gaglio, Hoef, Shapiro

1
Pet. 6. We understand the claims challenged in obviousness grounds 2 and
6 to be claims 1–13 despite the references elsewhere in the Petition to claims
1–3, 6, 7, 10, and 11 for ground 2 (Pet. 17) and either claims 1–3, 6, 7, 10,
and 11 (id. at 53) or claims 1–9 for ground 6 (id. at 54–57, claims chart).
Thus the Petition features three separate obviousness grounds challenging
the same claims based on the same four references: Gaglio, Curtis, Hoef, and
Shapiro. We note that these grounds are, in fact, one obviousness ground
based on differing theories or rationales. Nonetheless, for purposes of this
decision, we treat them separately as Petitioner has presented them.
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F. Claim Interpretation
As a first step in our analysis, we determine the meaning of the
claims, for purposes of this decision, using the “broadest reasonable
construction in light of the specification of the patent in which [they]
appear[].” 37 C.F.R. § 42.100(b). Under that standard, claim terms “are . . .
given their ordinary and customary meaning,” as would be understood by
one of ordinary skill in the art in the context of the entire disclosure. In re
Translogic Tech. Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007) (quoting
Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc)).
Any special definition for a claim term must be set forth in the specification
with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d
1475, 1480 (Fed. Cir. 1994).
Petitioner proposes constructions for the claim terms “substantially
conforms” and “permanent deformation.” Pet. 3–4. Petitioner contends that
the term “substantially conforms” means “plastically deforms” (id. at 3) and
the term “permanent deformation” means “permanently conforming to the
shape of the teeth” (id. at 4) based on their usage in the ’569 patent
specification and prosecution history. Patent Owner asserts that the Petition
provides no reason why the terms require a claim construction and no reason
for departing from the plain and ordinary meaning of the terms. Prelim.
Resp. 16–17.
Based on our review of the Petition and Preliminary Response, we
conclude that, for the purposes of this decision, neither claim term for which
Petitioner proposes a construction requires an express claim construction.

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II. DISCUSSION
We turn now to Petitioner’s asserted grounds of unpatentability and
Patent Owner’s arguments in its Preliminary Response to determine whether
Petitioner has met the standard of 35 U.S.C. § 314(a).

A. Grounds Based on Gaglio (Ex. 1005)
1. Anticipation of Claims 1–3, 6, 7, 10, 11, and 13 by Gaglio
Based on our review of Petitioner’s analysis and supporting evidence,
in light of the arguments presented by Patent Owner, we are not persuaded
that Petitioner has shown that there is a reasonable likelihood that it would
prevail in its anticipation challenge to claims 1–3, 6, 7, 10, 11, and 13 based
on Gaglio.
Petitioner asserts that Gaglio discloses every element of claims 1–3, 6,
7, 10, 11, and 13 expressly or inherently. Pet. 8. The Petition quotes
claim 1 of the ’569 patent (id. at 7–8), quotes the abstract of Gaglio (id. at
8), and provides a claim chart that relies on the discussion of Gaglio with
respect to claim 1 for independent claims 6, 10, and 13 (id. at 9–15).
Regarding claim 1, and specifically the strip of material recited in paragraph
(a), Petitioner directs us to Gaglio’s description of the strip being placed
against the surface of the teeth. Id. at 9–10. Regarding the tooth whitening
substance recited in paragraph (b) of claim 1, Petitioner directs us to
Gaglio’s description of placing a strip and whitening substance against the
surface of the teeth to be whitened and the whitening substance being
“viscous fluids or gels” and “thick enough not to simply run out” of the strip
material. Id. at 10–11.
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Patent Owner contends that the Petitioner has not shown how Gaglio
anticipates every element of the claims because neither the pressure
limitation nor the viscosity and tackiness limitation required by each of the
claims is explained adequately. Prelim. Resp. 24. We agree.
The Petition does not explain how Gaglio’s strip of material
“substantially conforms to the curvature of the wearer’s mouth, gaps
between the adjacent teeth, a shape of a tooth via permanent deformation
under a pressure less than about 250,000 Pascals” (Ex. 1001, col. 7, ll. 15–
19), as required by independent claims 1, 6, 10, and 13. Similarly, the
Petition does not explain how Gaglio’s “viscous fluids or gels” (Ex. 1005,
col. 7, l. 13) meet the requirement in each of independent claims 1, 6, 10,
and 13 that the tooth whitening substance has “sufficient viscosity and
tackiness for providing adhesive attachment” (Ex. 1001, col. 7, ll. 25–26)
between the strip and the tooth surface.
Even assuming that Petitioner meant to argue that these claim
limitations are inherently met by a strip with a viscous fluid or gel that is
placed against the surface of teeth, Petitioner has not directed us to any
credible evidence supporting such a conclusion. Petitioner should not expect
the Board to search the record and piece together what may support
Petitioner’s arguments. 37 C.F.R. § 42.22(a)(2) (the “petition . . . must
include . . . [a] full statement of the reasons for the relief requested”); cf.
DeSilva v. DiLeonardi, 181 F.3d 865, 866‒67 (Fed. Cir. 1999) (“A brief
must make all arguments accessible to the judges, rather than ask them to
play archeologist with the record.”).
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For at least these reasons, we conclude that Petitioner has not shown a
reasonable likelihood of prevailing in its anticipation challenge to claims 1–
3, 6, 7, 10, 11, and 13 of the ’569 patent based on Gaglio.
2. Obviousness over Gaglio, Curtis, Hoef, and Shapiro
Petitioner challenges claims 1 to 13 as obvious under 35 U.S.C.
§ 103(a) over Gaglio, Curtis, Hoef, and Shapiro. Pet. 15‒24. Specifically,
Petitioner contends that “Gaglio expressly or inherently discloses each and
every element of each of claims 1–3, 6, 7, 10, 11, and 13” and that the
combination of Gaglio, Hoef, Curtis, and Shapiro teaches or suggests the
elements of claims 1–13. Id. at 17.
Neither the first ground nor the second ground in the Petition explains
how Gaglio’s strip of material and “viscous fluids and gels” (Ex. 1005, col.
7, l. 13) meet the pressure, viscosity and tackiness requirements in
paragraphs (a) and (b) of independent claims 1, 6, 10, and 13, either
expressly or inherently. The Petition also does not set forth a meaningful
obviousness analysis over any of the art cited under the second ground
because it fails to articulate any difference between the claimed invention
and the cited art, fails to provide a rationale for combining the references,
and fails to provide a rationale for modifying Gaglio. The Petition merely
asserts in the claim chart (Pet. 18–24) that Gaglio meets the limitations of
paragraphs (a) and (b) of the independent claims on the same basis as the
first ground and describes Gaglio, Shapiro, Hoef, and Curtis as delivery
systems for applying a bleach or active to teeth in the body of the Petition
(id. at 17). As such, the obviousness argument offered by Petitioner in
support of this ground is deficient. See KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 418 (2007) (Obviousness grounds cannot be sustained by mere
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conclusory statements, but require “some articulated reasoning with some
rational underpinning”).
For these reasons, we conclude that Petitioner has not shown a
reasonable likelihood of prevailing in its obviousness challenge to claims 1–
13 of the ’569 patent based on the combination of Gaglio, Curtis, Hoef, and
Shapiro.

B. Grounds Based on Hoef (Ex. 1003)
1. Anticipation of Claims 1–3, 6, 7, 10, 11, and 13
Petitioner challenges claims 1–3, 6, 7, 10, 11, and 13 as anticipated by
Hoef. Pet. 24 ‒32.
Petitioner contends that the delivery system of Hoef uses a tray that is
a flat strip deformed to fit the dental arch, and a medicament in liquid or gel
form dispensed into the tray prior to use. Id. at 24‒26. Petitioner concedes
that Hoef does not explicitly disclose permanent deformation of the tray or
strip under a pressure less than about 250 kPa, but argues that such a
pressure is inherently used by Hoef (or is an obvious design choice) because
“[t]he strip is ‘pressed around both sides of the patient’s teeth and gums’
([Ex. 1003,] col. 2, lines 54-56) and would cause injury or pain if pressed
against the patient’s teeth with too much pressure.” Pet. 25; see id. at 26–27.
Petitioner also argues that “[a] liquid or a gel would inherently, or at least
obviously, be adhesive to some degree.” Id. at 26.
Based on our review of Petitioner’s analysis and supporting evidence,
in light of the arguments presented by Patent Owner, we are not persuaded
that Petitioner has shown that there is a reasonable likelihood that it would
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prevail in its challenge to claims 1–3, 6, 7, 10, 11, and 13 as anticipated by
Hoef.
Patent Owner contends that Petitioner has not established anticipation
of every element of claim 1 because the Petition does not explain what is
meant by “too much pressure” to cause injury or pain or provide any
evidence or expert testimony to support its argument that the pressure
limitation of the independent claims is inherently met by Hoef. Prelim.
Resp. 29. Patent Owner also contends that Petitioner’s argument that Hoef’s
medicament would be “adhesive to some degree” is unsupported and
insufficient to meet the “sufficient viscosity and tackiness” limitation by
inherency or obvious modification. Id. at 32–33. We agree.
The Petition does not explain how Hoef’s tray meets the requirement
of independent claims 1, 6, 10, and 13 that a strip of material “substantially
conforms to the curvature of the wearer’s mouth, gaps between the adjacent
teeth, a shape of a tooth via permanent deformation under a pressure less
than about 250,000 Pascals” (Ex. 1001, col. 7, ll. 15–19). As Patent Owner
points out, Hoef describes using a mold outside of the mouth to deform the
flat tray and does not imply a minimum pressure to deform the strip of
material. Prelim. Resp. 29–30 (citing Ex. 1003, col. 2, ll. 43–46). The
Petition also does not explain how Hoef’s “liquid or gel form” (Ex. 1003,
col. 1, l. 50) meets the requirement in each of independent claims 1, 6, 10,
and 13 that the tooth whitening substance has “sufficient viscosity and
tackiness for providing adhesive attachment” (Ex. 1001, col. 7, ll. 25–26)
between the strip and the tooth surface. As Patent Owner points out, Hoef’s
molded tray containing medicament is kept in position by keeping the mouth
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closed, suggesting the substance is not tacky or adhesive. Prelim. Resp. 33
(citing Ex. 1003, col. 2, ll. 57–62).
Petitioner’s assertion that the pressure and tackiness limitations
required by each of the claims are met inherently by Hoef, therefore, is not
consistent with the teachings in Hoef. Consequently, Petitioner has not
shown that there is a reasonable likelihood that it would prevail in its
challenge to claims 1–3, 6, 7, 10, 11, and 13 as anticipated by Hoef.
2. Obviousness over Hoef, Gaglio, Curtis, and Shapiro
Petitioner challenges claims 1–13 as obvious under 35 U.S.C.
§ 103(a) over Hoef, Gaglio, Curtis, and Shapiro. Pet. 32‒41.
Petitioner contends that “Hoef, Gaglio, Curtis, and Shapiro teach[] or
suggest[] all the elements of claims 1–13 of the ’569 Patent.” Id. at 35.
Petitioner’s argument is based on claim 1 as representative of the
independent claims (id. at 33) and relies only on the disclosure of Hoef as
describing the elements of claim 1 (id. at 33–35, 36–37 (claim chart)).
2

Regarding the pressure and tackiness limitations of claim 1, Petitioner
restates the same arguments discussed above with respect to the asserted
anticipation by Hoef (id. at 34–35). As discussed above, Hoef’s flat tray is
deformed in a mold, which does not suggest the minimum pressure which
substantially conforms the strip of material to the wearer’s mouth as required

2
Petitioner also states in the claim chart for the preamble of claim 1 “[s]ee
discussion of Gaglio and Curtis in the other claim charts set forth herein
above and below.” Pet. 36. It is not clear from this statement how Petitioner
seeks to modify Hoef or to combine Hoef with Gaglio and Curtis. Petitioner
also fails to provide a rationale for combining Hoef with the secondary
references. Regarding the pressure and tackiness limitations of paragraph
(a) in claim 1, Petitioner cites only to Hoef. Therefore, we need not address
the secondary references in connection with this challenge to the ’569
patent.
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by claim 1. See supra at 10. Hoef’s disclosure of a liquid or gel form does
not teach or suggest adequately the tackiness limitation and is inconsistent
with Hoef’s molded tray being kept in position by keeping the mouth closed.
Id.
Petitioner acknowledges that Hoef does not disclose explicitly
permanent deformation under a pressure of less than about 250 kPa (Pet.
34), but does not explain why the claimed pressure limitation would have
been an obvious design choice in Hoef’s molding process. Petitioner has not
articulated any reason for combining Hoef with any of the secondary
references to address the deficiencies in Hoef. Petitioner thus has failed to
make a showing of a reasonable likelihood that claims 1 to 13 are
unpatentable over the combination of Hoef, Gaglio, Curtis, and Shapiro.
Based on our review of Petitioner’s analysis and supporting evidence,
we are not persuaded that Petitioner has shown that there is a reasonable
likelihood that it would prevail in its challenge to claims 1 to 13 under
35 U.S.C. § 103(a) over Hoef, Gaglio, Curtis, and Shapiro.

C. Grounds Based on Curtis (Ex. 1004)
1. Anticipation of Claims 1–3, 6, 7, 10, and 11
Petitioner challenges claims 1–3, 6, 7, 10, and 11 under 35 U.S.C.
§ 102(b) as anticipated by Curtis. Pet. 42‒51.
Based on our review of Petitioner’s analysis and supporting evidence
in light of the arguments presented by Patent Owner, we are not persuaded
that Petitioner has shown a reasonable likelihood that it would prevail in its
anticipation challenge to claims 1–3, 6, 7, 10, and 11 based on Curtis.
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Petitioner asserts that “Curtis expressly or inherently discloses each
and every element of each of claims 1–3, 6, 7, 10, and 11 of the ’569
Patent.” Pet. 43. As to claim 1 (id. at 42), Petitioner acknowledges that the
claimed pressure range is not disclosed explicitly in Curtis, but contends the
limitation “would be inherent or at least an obvious design choice” because
“too much pressure” would cause injury or pain (id. at 44). Regarding the
viscosity and tackiness limitation, Petitioner’s claim chart quotes Curtis, col.
6, ll. 42–46, “dilatant rheological properties of the composition are such that
the composition adheres sufficiently to the tooth surface to remain in place.”
Pet. 46.
Petitioner provides no basis for establishing the amount of pressure
one of ordinary skill in the art would understand Curtis’s invention to
require. Nor does Petitioner establish the amount of pressure at which injury
or pain would be caused to provide an upper boundary on the pressure that
one might expect would be applied in Curtis. In the absence of such support
for Petitioner’s argument that the amount of pressure required by claim 1 is
met by the disclosures in Curtis, Petitioner does not demonstrate a
reasonable likelihood of establishing anticipation of claim 1 by Curtis on this
record.
Because this limitation is required in each of the independent claims
and Petitioner relies upon the same arguments made with respect to claim 1
for all of the independent claims (see Pet. 56), we are not persuaded that
Petitioner has shown that there is a reasonable likelihood that it would
prevail in its challenge to claims 1–3, 6, 7, 10, and 11 under 35 U.S.C.
§ 102(b) over Curtis.
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2. Obviousness over Curtis, Gaglio, Hoef, and Shapiro
Petitioner challenges claims 1–13 as obvious under 35 U.S.C.
§ 103(a) over Curtis, Gaglio, Hoef, and Shapiro. Pet. 51‒57.
Petitioner contends that all of the claim limitations are taught or
suggested by Curtis, Gaglio, Hoef, and Shapiro. Id. at 53.
Petitioner’s argument consists of the quoted abstract from Curtis and
separate brief sentences briefly describing each of Curtis, Gaglio, Hoef, and
Shapiro. Id. at 52–54. The Petition does not explain how the references are
to be applied to the independent claims apart from the claim chart provided.
Based on the claim chart, Petitioner relies on the same position, discussed
above, that Curtis teaches or suggests all of the limitations in independent
claim 1. Pet. 54–55 (claim chart). Petitioner relies on claim 1 as
representative of the claims of the ’569 patent (id. at 51) and relies solely on
the teachings in Curtis in connection with the pressure and tackiness
limitations that appear in the independent claims (id. at 54–56). For the
same reasons discussed above with respect to claim 1 and Curtis, we are not
persuaded that the amount of pressure required by claim 1 is met by the
disclosures in Curtis. Petitioner provides no rationale for modifying the
teaching of Curtis to meet the pressure limitation of claim 1.
Petitioner also has not articulated any reason for combining Curtis
with Gaglio, Hoef, and Shapiro, nor has Petitioner articulated how the
combined teachings of these references would have led a person of ordinary
skill in the art to arrive at the claimed invention. See id. at 53‒54.
Consequently, Petitioner has failed to present a meaningful obviousness
analysis under 35 U.S.C. § 103, and thus has failed to make a threshold
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showing of a reasonable likelihood that claims 1–13 are unpatentable over
the combination of Curtis, Gaglio, Hoef, and Shapiro.
Based on our review of Petitioner’s analysis and supporting evidence,
we are not persuaded that Petitioner has shown that there is a reasonable
likelihood that it would prevail in its challenge to claims 1–13 under
35 U.S.C. § 103(a) over Curtis, Gaglio, Hoef, and Shapiro.

III. CONCLUSION
For the foregoing reasons, we do not institute an inter partes review
of any of the asserted grounds as to any of the challenged claims of the ’569
patent.

IV. ORDER
Accordingly, it is:
ORDERED that the Petition is DENIED.
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PETITIONER:

Edgar R. Cataxinos
J. Jeffrey Gunn
TRASKBRITT, P.C.
ercataxinos@traskbritt.com
jgunn@traskbritt.com

PATENT OWNER:

David M. Maiorana
John V. Biernacki
Kenneth S. Luchesi
JONES DAY
dmaiorana@jonesday.com
jvbiernacki@jonesday.com
kluchesi@jonesday.com

Amanda T. Barry
Amy M. Foust
THE PROCTER & GAMBLE COMPANY
barry.at@pg.com
foust.am@pg.com