Colgate-Palmolive Company

Patent Trials and Appeals Board

Aug 11, 2021

2020006596 (P.T.A.B. Aug. 11, 2021)

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.
15/434,258 02/16/2017 Michael Prencipe 7446-00-US-C2-TB 4829
23909 7590 08/11/2021
COLGATE-PALMOLIVE COMPANY
909 RIVER ROAD
PISCATAWAY, NJ 08855
EXAMINER
ROBERTS, LEZAH
ART UNIT PAPER NUMBER
1612
NOTIFICATION DATE DELIVERY MODE
08/11/2021 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, SUMAN CHOPRA,
JOSEPH THOMAS NORRIS, and ADOLFO SERRANO
__________

Appeal 2020-006596
Application1 15/434,258
Technology Center 1600
__________

Before RICHARD M. LEBOVITZ, DEBORAH KATZ, and
RACHEL H. TOWNSEND, Administrative Patent Judges.

TOWNSEND, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to a
dispenser, which have been rejected as obvious. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
STATEMENT OF THE CASE
Appellant’s Specification notes that “[t]ooth whitening products are
applied in different ways.” (Spec. ¶ 2.) One technique involves applying a
whitening composition that is stored in a container to the teeth using a brush.

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 Co. (Appeal Br. 2.)
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(Id.) Appellant’s Specification explains that in such an application, the
brush is taken in and out of the container and the brush introduces
contaminants that can cause decomposition of the peroxide whitening
component. (Id. ¶ 3.) Consequently, “a better way to deliver the whitening
composition to the teeth” is needed. (Id. ¶ 4.) Appellant’s invention is
directed at “a dispenser that is easy to use by a person to apply the whitening
composition to his/her teeth and is gentle on the teeth and gums.” (Id.)
Claims 8, 9, and 11–20 are on appeal. Claims 8 and 19, reproduced
below, are illustrative of the claimed subject matter:
8. A dispenser for a composition comprising:
a housing comprising a reservoir having a channel, a
composition stored in the reservoir;
an applicator comprising an applicator surface having an
aperture therein provided at an end of the channel; and
a drive mechanism disposed within the housing, the drive
mechanism comprising:
a moveable piston attached to a threaded piston rod;
a stationary unit; and
a rotary unit comprising rotation limiting cams that
directly engage and interact with a cooperating cam surf ace on
said stationary unit; and
wherein interaction between the rotation limiting cams of
the rotary unit and the cooperating cam surface of the stationary
unit limits rotation of the threaded piston rod to only one
direction that moves the movable piston towards the applicator
to dispense the composition through the channel and the
aperture to the applicator surf ace; and
wherein the channel has a length of more than about 10
mm.

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19. A dispenser for a composition comprising:
a housing extending along a longitudinal axis and
comprising a reservoir that stores a composition;
an applicator provided at an end of the housing, the
applicator having a planar applicator surface having an aperture
therein, the planar applicator surface being oriented oblique to
the longitudinal axis of the housing; and
a drive mechanism disposed within the housing and
comprising a piston that moves in only one direction towards
the applicator to dispense the composition from the reservoir to
the applicator surface.
(Appeal Br. 9–10.)

The prior art relied upon by the Examiner is:
Name Reference Date
Fried US 1,907,350 May 2, 1933
Nakajima US 5,827,002 Oct. 27, 1998
The following ground of rejection by the Examiner is before us on
review:
Claims 8, 9, 11–13, and 15–20 under 35 U.S.C. § 103(a) as
unpatentable over Nakajima and Fried.2
DISCUSSION
Claim 8
The Examiner found that Nakajima discloses a liquid applicator that
has an applicator portion that is attached to the front end of a barrel, a piston

2 The nonstatutory double patenting rejections of claims 8, 9, and 11–20
made in the Final Action were withdrawn in the Examiner’s Answer. (Ans.
6.) We note that in light of the foregoing, there is no outstanding rejection
of claim 14.
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fitted in the barrel that can slide in the axial direction (i.e., a movable piston
as claimed), and a pushing means for pushing the piston toward the
applicator. (Ans. 3–4.) The Examiner further found that the applicator
includes a channel, a liquid reservoir, and an aperture. (Ans. 3.)
The Examiner refers generally to the figures of Nakajima, several of
which are reproduced herein below.
Figure 4A is reproduced below:

Figure 5 is reproduced below:

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Figure 6 is reproduced below:

Figure 4A from Nakajima set forth above depicts an overall
configuration of a liquid applicator. Figure 5 from Nakajima set forth above
depicts an exploded sectional side view of the applicator depicted in Figure
4A, and Figure 6 from Nakajima set forth above depicts a perspective view
showing components shown in Figure 5. Although the Examiner’s rejection
does not refer to the numbered parts of these figures in the rejection, we do
so for a clearer understanding of the Examiner’s rejection.
The Examiner found that the pushing means (see Fig. 4a, part 30)
disclosed in Nakajima includes a barrel joint (see Figs. 4a, 5, and 6, part 31),
a threaded portion (see Figs. 5 and 6, part 32) with a threaded bore that is
fixed in the interior surface of the barrel joint (i.e., a stationary unit as
claimed), a threaded shaft screw (see Figs. 5 and 6, part 33) that is fitted in
the threaded bore and projects forward from the barrel joint and joined to the
center of the piston (see Figs. 4A, 5, and 6, part 14) (i.e., the threaded shaft
screw being a threaded piston rod as claimed), a rotary handle (see Figs. 4A,
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5, and 6, part 37) fitted in the rear interior of the barrel joint that can move in
a rotational direction and axially and rotationally with respect to the threaded
shaft, and a cylindrical spring receiver (see Figs. 4A, 5, and 6, part 35) fitted
inside the barrel joint that can move in the axial direction but not
rotationally. (Ans. 3–4.) The Examiner further found that the pushing
means includes a delivering member (see Figs. 4A, 5, and 6, part 34) with a
cam (see Figs. 5 and 6, part 34a) formed at one end, and a ratchet
mechanism for allowing the delivering member to rotate in only a particular
rotational direction which ratchet mechanism is formed by a pair of cam
surfaces (see Figs. 5 and 6, parts 34a and 35a) that “are provided for the
spring receiver and the delivering member on their opposing faces so as to
be able to become engaged and disengaged with each other and a spring
which urges the cam surface of the spring receiver against the cam surface of
the delivering member.” (Ans. 4.) The Examiner explained that the
delivering member and the threaded shaft are rotated together with the rotary
handle causing the threaded shaft to move forward in an axial direction and
pushing the piston toward the applicator portion. (Id.)
The Examiner found that the applicator disclosed in Nakajima “differs
from the instant claims insofar as it does not disclose the cross-sectional area
of the aperture or the dimensions of the channel.” (Ans. 5.) The Examiner
found, however, that the aperture and channel control the flow of solutions
within the applicator and the dimensions thereof are result effective
variables which are supported by the teachings of Fried. (Id.) The Examiner
found that Fried teaches an “aperture must be small enough to prevent the
fluid from running out of the applicator when it is not needed.” (Id.) The
Examiner further found that “[i]t is in the relative skill of one of ordinary
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skill in the art to design an applicator with an aperture and channel suitable
for holding and dispensing the desired compositions with the desired
viscosity.” (Id.) The Examiner concluded that one of ordinary skill in the
art would have been motivated to make a channel with the claimed more
than about 10 mm “motivated by the desire to produce an applicator that will
not result in the waste of the composition by preventing the compositions
from escaping the applicator through an aperture that is too big, as supported
by Fried.” (Id. at 5–6.)
We agree with the Examiner’s factual findings regarding the teachings
of Nakajima and conclusion of obviousness.
Appellant argues that the Examiner’s rejection is in error because
“Fried does not indicate that the length of the channel is a result effective
variable, only that the diameter of the aperture is a result effective variable
for prevention of the leakage of fluids.” (Appeal Br. 6.) Although we agree
with Appellant that Fried does not indicate the length of the channel is a
result effective variable, we nevertheless agree with the Examiner that one
of ordinary skill in the art would have found the length of the channel of
Nakajima to be a result effective variable from Nakajima’s disclosure itself
(Ans. 7, 9). In affirming a multiple reference rejection under 35 U.S.C.
§ 103, the Board may rely on fewer than all of the references relied on by the
Examiner in an obviousness rationale without designating it as a new ground
of rejection. In re Bush, 296 F.2d 491, 496 (CCPA 1961).
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In particular, the Examiner explained that the pipe in which the
contents of the device must pass to reach the tip of the applicator3
establishes communication between the main body and the bristle side of the
applicator and is used to ensure that the content of the device reaches the tip
and also controls the flow, making “the channel a result effective variable.”
(Ans. 7.) The Examiner explains that “[i]t would have been in the skill of
one of ordinary skill in the art to have made the channel a certain dimension
to obtain the desire[d] flow properties.” (Id. at 8; see also id. 9 (“one of
ordinary skill in the art would reasonably conclude that restricting the flow
by adjusting the dimensions of a channel would help control the flow to the
desired rate”).) Appellant does not argue against the foregoing. Indeed,
Appellant did not file a Reply Brief responding to the Examiner’s Answer.
Moreover, we agree that the length and diameter of the channel would
provide for differing flow along the channel and thus, would have been
result effective variables known to one of ordinary skill in the art. “[W]here
the general conditions of a claim are disclosed in the prior art, it is not
inventive to discover the optimum or workable ranges by routine
experimentation.” In re Aller, 220 F.2d 454, 456 (CCPA 1955).
Furthermore, Appellant has not identified the particular length of the channel

3 The Examiner appears to have inadvertently referenced the prior art
applicator of Nakajima represented in Figure 2, which prior art structure is
disclosed and described in detail in US 5,803,640, which was filed as
Application 08/792,842. (See Nakajima 1:10–52.) Nevertheless, the
applicator of the Nakajima reference relied on in the Examiner’s rejection
also includes a pipe, pipe 23, that ensures that the contents of the device
reaches the tip of the application. (Nakajima 5:52–59; 8:4–11; see also
Nakajima Figs. 4a and 5).)
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as a critical element of the device or that it achieves an unexpectedly good
result as compared to lengths that are shorter than 10 mm. See In re Geisler,
116 F.3d 1465, 1469 (Fed. Cir. 1997) (“Only if the ‘results of optimizing a
variable’ are ‘unexpectedly good’ can a patent be obtained for the claimed
critical range. In re Antonie, 559 F.2d 618, 620 (CCPA 1977).”)
In light of the foregoing, we affirm the Examiner’s rejection of claim
8 as being obvious from Nakajima and Fried.
Claims 9–13 and 15–18 have not been argued separately and therefore
fall with claim 8. 37 C.F.R. § 41.37(c)(1)(iv).
Claim 19 requires the applicator have a surface being oriented oblique
to the longitudinal axis of the housing, which is not a requirement of claim
8. The Examiner found that the applicator of Nakajima is “a brush of fibers
which tap[]ers” which meets the orientation requirement of claim 19. (Ans.
10.) We agree with the Examiner, and Appellant does not contest the
foregoing.
Consequently, we affirm the Examiner’s rejection of claim 19 as
being obvious from Nakajima and Fried.
Claim 20 has not been argued separately and therefore falls with claim
19. 37 C.F.R. § 41.37(c)(1)(iv).
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
8, 9, 11–13,
15–20
103 Nakajima, Fried 8, 9, 11–13,
15–20

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TIME PERIOD FOR RESPONSE
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).

AFFIRMED