Evangelia ARVANITIDOU et al.

Patent Trials and Appeals Board

Sep 15, 2020

15422314 - (D) (P.T.A.B. Sep. 15, 2020)

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.
15/422,314 02/01/2017 Evangelia S. ARVANITIDOU 7603-00-US-C2-OC 5274
23909 7590 09/15/2020
COLGATE-PALMOLIVE COMPANY
909 RIVER ROAD
PISCATAWAY, NJ 08855
EXAMINER
FIEBIG, RUSSELL G
ART UNIT PAPER NUMBER
1655
NOTIFICATION DATE DELIVERY MODE
09/15/2020 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 EVANGELIA S. ARVANITIDOU and
MICHAEL PRENCIPE
____________

Appeal 2020-000849
Application 15/422,314
Technology Center 1600

Before RICHARD M. LEBOVITZ, JASON V. MORGAN, and
DEBORAH KATZ, Administrative Patent Judges.

LEBOVITZ, Administrative Patent Judge.

DECISION ON APPEAL
The Examiner rejected claims 1–4, 10–12, and 16–19 under 35 U.S.C.
§ 103 as obvious and under obviousness-type double-patenting. Pursuant to
35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to
reject the claims. We have jurisdiction for the appeal under
35 U.S.C. § 6(b).
We AFFIRM.

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.
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STATEMENT OF THE CASE
Claim 1–4, 10–12, and 16–19 stand rejected by the Examiner in the
Final Office Action (“Final Act”) under 35 U.S.C. § 103(a) as obvious in
view of Zhu et al. (WO 01/17494 A1, published Mar. 15, 2001) (“Zhu I”),
You-Pin Zhu, Chinese Materia Medica: chemistry, pharmacology, and
applications 127–29 (1998) (“Zhu II”), and G. William Claus,
Understanding microbes: a laboratory textbook for microbiology 423–24
(1989) (“Claus”). Final Act. 9; Ans. 5.
Claims 1–4, 10–12, and 16–19 stand rejected by the Examiner in the
Final Office Action under obviousness-type double-patenting over various
subsets of the claims of US 5,453,265, US 5,334,375, US 5,424,059, US
5,814,304, US 5,693,314, US 6,110,446, US 5,202,112, US 5,256,402, US
5,601,803, US 5,578,293, US 9,682,027 B2, US 8,974,772 B2, US
8,765,155 B2, US 9,242,125 B2, US 8,906,349 B2, US 8,481,004 B2, and
US 8,628,755 B2, in combination with Zhu I and Zhu II. Final Act. 11–22;
Ans. 13–20. Appellant requests that the obviousness-type double-patenting
rejections be held in abeyance. Appeal Br. 7. However, the rejections are
pending before us and therefore we summarily affirm the rejections.
Claim 1 is representative and is reproduced below:
1. An oral composition comprising
1) 1–70% by weight of at least one humectant;
2) 1–70% by weight of at least one abrasive compound;
3) 0.001–5% by weight of a plant-derivable compound,
comprising an extract of a Scutellaria species;
4) an antioxidant selected from stannous compounds, stannate
compounds, ammonium sulfates and sodium metabisulfite; and
5) less than 6% by weight water.

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OBVIOUSNESS REJECTION
The Examiner found that Zhu I describes an oral composition with the
same components recited in claim 1, but not with an extract of Scutellaria
species as required by the claims. Final Act. 9–10.
The Examiner found that the oral composition in Zhu I comprises tea
polyphenols which “are useful for anti-bacterial and breath protection
effects.” Zhu I, 5:8–9. Zhu I discloses, as found by the Examiner that “it is
believed that tea polyphenol can deliver breath protection benefit due to its
ability to inhibit the certain bacteria, e.g., S. mutans and S. sobrinud.” Zhu I,
5:21–23. The Examiner also found that Zhu I teaches that its oral
composition can comprise other antimicrobial agents.2 Final Act. 10.
To meet the deficiency in Zhu I, the Examiner cited the disclosure in
Zhu II for its description of an extract of Scutellaria species that has
antibacterial activity again oral bacteria. Final Act. 8. The Examiner further
cited Claus as teaching that hemolytic bacteria (such as S. mutans), one of
the classes of bacteria mentioned in Zhu II that Scutellaria species has
antibacterial activity against, comprises oral bacteria. Final Act. 10.
The Examiner determined it would have been obvious to one of
ordinary skill in the art to use the Scutellaria species extract described in Zhu
II as an antimicrobial agent in the oral composition of Zhu I because Zhu I
discloses that additional antimicrobial agents may be present in its
composition and Scutellaria is an antimicrobial agent that has activity
against oral bacteria, including S. mutans which is targeted in Zhu I. Final
Act. 9.

2 The terms “antimicrobial” and “antibacterial” are used interchangeably.
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Appellant contends that “the skilled artisan would find no reason to
assume that an extract of a Scutellaria species would impart antibacterial
properties upon orally derived bacteria.” Appeal Br. 5. Appellant states that
Zhu II “does not teach efficacy against oral bacterial at large, it teaches
efficacy against hemolytic bacteria.” Reply Br. 2. Appellant argues:
There is no basis to assume that a microbe’s ability to carry out
hemolysis (i.e., the rupture or destruction of red blood cells) has
any correlation with its susceptibility to any given antimicrobial
agent. The fact that S. mutans also happens to have hemolytic
qualities is therefore not a scientifically plausible predictor of
vulnerability to a Scutellaria baicalensis extract.
Appeal Br. 6.
Appellant’s arguments do not identify error in the Examiner’s
rejection.
Zhu II has the following pertinent teaching:
The root [of Scutellaria baicalensis] has a wide antibacterial
spectrum. Its decoction showed different degrees of antibacterial
activity in vitro against hemolytic streptococcus, pneumococcus,
meningococcus, Staphylococcus aureus, Bacillus diphtheria, B.
dysenteriae, B. anthracis, B. typhosus, B. paratyphosus, B.
proteus, E. coli, Pseudomonas aeruglnosa, Bordetela pertussis,
and Vibrio comma. Baicalin is the major antibacterial active
component. In tests with selected oral bacteria, including
suspected periodontopathogens, Bacterioides melamnogenicus
intermedius was found to be most sensitive to a 2% decoction of
S. baicalensis.
Zhu II, 127 (footnotes omitted),
Zhu II therefore expressly teaches that Scutellaria baicalensis (a
member of the claimed “Scutellaria species”) has antibacterial activity
against at least one oral bacteria (the periodontopathogen Bacterioides
melamnogenicus intermedius). As explained by the Examiner, Zhu I teaches
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the benefit of including anti-bacterial agents in its oral composition,3
providing a reason to have used Scutellaria baicalensis extract in Zhu I’s
oral composition for its known activity against an oral bacteria. The fact
that Scutellaria baicalensis is active against one specific bacteria is
motivation enough to put it in Zhu I’s oral composition. Appellant does not
explain why the lack of general teaching of activity against “oral bacteria at
large” diminishes the teaching that the extract is effective against one
specific species of oral bacteria.
Zhu II also teaches that Scutellaria baicalensis has antibacterial
activity against hemolytic Streptococcus. Zhu II, 127. Based on the
teachings in Claus, the Examiner found that some hemolytic Streptococcus
reside in the mouth, namely on the teeth and gums, providing further reason
to use Zhu II’s extract in Zhu I as an antimicrobial agent in an oral
composition used to treat the mouth.
Appellant argues that Claus’s teachings about hemolytic bacteria do
not make it obvious to have used Scutellaria baicalensis extract in Zhu I’s
oral composition. We do not agree.
Claus teaches that the hemolytic activity of Streptococcus, as
measured on blood agar, is used “to distinguish species with the genus

3 “It is believed that the catechines are useful for anti-bacterial and breath
protection effects. As the major components of malodor, methyl mercaptan
and trimethylamine can be cleaned by using 2–5 mg/ml of catechines in
about 2–5 minutes. At the same time, catechines can be adhered to the oral
cavity for more than one hour. Without being bound by theory, it is also
believed that tea polyphenol is potentially useful for anti-caries, anti-
gingivitis, anti-stomatitis effect, as well as other oral health benefits.” Zhu I,
5:8–14. “Other anti-microbial agents can also be present in the oral care
compositions or substances of the present invention.” Zhu I, 17:13–14.
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Streptococcus because there is a good correlation between hemolytic activity
and pathogenicity.” Claus 423. Appellant argues that it is “unclear why
hemolytic qualities of a bacterium” in rupturing red bloods “would lead the
skilled artisan toward any particular oral care composition in general.”
Appeal Br. 6. However, Claus does not teach that the hemolytic activity in
lysing red blood cells is the antibacterial activity. Rather, this hemolytic
activity is merely used to classify and distinguish Streptococcus species.
Thus, Appellant’s argument is not persuasive.
Claus teaches that some Streptococcal bacteria, classified as
hemolytic using the blood agar assay, cause diseases of the gum and teeth
(“dental caries”), specifically identifying S. mutans and two other species.
Claus, Table 46-2. Zhu II teaches that a Scutellaria extract, the same extract
recited in the claims, inhibits hemolytic Streptococcus. Thus, one of ordinary
skill in the art would have reasonably expected that Scutellaria extract would
have anti-bacterial activity against oral bacteria residing on the gums and
teeth. Zhu I teaches that its composition comprising tea phenol “can deliver
breath protection benefit due to its ability to inhibit the certain bacteria” in
the mouth, such as S. mutans (Zhu I, 5:21–23), providing reason to use the
anti-bacterial agent of Zhu II to treat the oral bacteria in the mouth,
including S. mutans. While Appellant points out that streptococcal bacteria
are present in other human tissues (Reply Br. 2), this teaching does not
denigrate the combined teachings of Zhu II and Claus that Scutellaria extract
is useful to treat oral bacteria.
For the foregoing reasons, the obviousness rejection of claim 1 is
affirmed. Claims 2–4, 10–12, and 16–19 are not argued separately and
therefore these claims fall with claim 1. 37 C.F.R. 41.37(c)(1)(iv).
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CONCLUSION
In summary:
Claims
rejected
35 U.S.C. § References/
Basis
Affirmed Reversed
1–4, 10–12,
16–19
103 Zhu I, Zhu II,
Claus
1–4, 10–12,
16–19

1–4, 10–12,
16–19
Obviousness-Type
Double Patenting
1–4, 10–12,
16–19

Overall
Outcome
1–4, 10–12,
16–19

TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED