Ex Parte Arvanitidou et al

Board of Patent Appeals and Interferences

Nov 3, 2010

11025577 (B.P.A.I. Nov. 3, 2010)

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.
11/025,577 12/29/2004 Evangelia S. Arvanitidou 7603-00 7939
23909 7590 11/03/2010
COLGATE-PALMOLIVE COMPANY
909 RIVER ROAD
PISCATAWAY, NJ 08855
EXAMINER
MCCORMICK, MELENIE LEE
ART UNIT PAPER NUMBER
1655
MAIL DATE DELIVERY MODE
11/03/2010 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte EVANGELIA S. ARVANITIDOU and MICHAEL PRENCIPE
____________

Appeal 2010-008807
Application 11/025,577
Technology Center 1600
____________

Before DONALD E. ADAMS, DEMETRA J. MILLS, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL1
This appeal under 35 U.S.C. § 134 involves claims 29-32, 34, 36-38,
40, and 41. We have jurisdiction under 35 U.S.C. § 6(b). Pending claims 33
and 39 stand withdrawn from consideration (App. Br. 4).

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
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Application 11/025,577

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STATEMENT OF THE CASE
The claims are directed to an oral composition. Claim 29 is
representative and is reproduced in “APPENDIX A” of Appellants’ Brief.
Claims 29-32, 34, 36-38, 40, and 41 stand rejected under 35 U.S.C §
103(a) as unpatentable over the combination of Anderson2 and Riley.3
We affirm. However, because our rationale differs from that of the
Examiner we designate the affirmance to represent a new ground of
rejection.
ISSUE
Does the preponderance of evidence on this record support a
conclusion of obviousness?
FINDINGS OF FACT
FF 1. Riley teaches toothpaste comprising, inter alia, 10-85 % by weight
humectant, 5-75% by weight abrasive materials, 0.01-10% stannous
compounds, and 5-45% water (Riley, col. 1, ll. 63-65 and col. 3, ll. 13-25;
see also Ans. 4-5).
FF 2. Riley teaches stannous compounds significantly reduce the
discolouration of their composition (Riley, col. 1, ll. 25-33).
FF 3. While Riley teaches that the toothpaste can include a “variety of other
known toothpaste ingredients” (Riley, col. 3, ll. 47-49), Riley does not
expressly teach “a plant extract comprising one or more flavonoid, catechin,
polyphenol, and tannin components” as required by Appellants’ claim 29.
FF 4. Anderson teaches a dentrifice composition that comprises, as an
optional ingredient, up to 3% green tea extract (a plant extract comprising

2 Anderson, US 6,645,472 B1, issued November 11, 2003.
3 Riley, US 5,094,842, issued March 10, 1992.
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one or more flavonoid, catechin, polyphenol, and tannin components4)
(Anderson, col. 1, ll. 18-19 and col. 5, l. 31; see also Ans. 4).
FF 5. Appellants’ Specification discloses that the inclusion of a stannous
compound as an antioxidant in a toothpaste composition provides some
benefit in the subjective evaluation of the toothpaste’s color (see Spec. 21:
¶[0054]; Spec. 21: Table 1; Spec. 22: Table 2).
FF 6. Arvanitidou declares that “[d]iscoloration is a known and expected
disadvantage of oral compositions comprising natural ingredients such as
plant extracts” and that “[t]he presently claimed oral compositions are
advantageous because . . . they can be formulated, stored and marketed for a
period of time without undergoing discoloration” (Arvanitidou Declaration5
4: ¶ 13).
FF 7. The Examiner finds that Appellants’ evidence of unexpected results is
not commensurate in scope with the composition set forth in Appellants’
claim 29 (Ans. 16).
ANALYSIS
Riley teaches a toothpaste composition that differs from Appellants’
claimed composition by not specifically including “a plant extract
comprising one or more flavonoid, catechin, polyphenol, and tannin
components” (FF 1-3). Riley does, however, teach that the toothpaste can
include a “variety of other known toothpaste ingredients” (FF 3). Anderson
teaches a dentrifice composition that comprises green tea extract as an
optional ingredient (FF 4). Based on the combined teachings of Riley and

4 See Appellants’ claim 30, which identifies green tea as the plant from
which the extract is derived.
5 Declaration of Evangelia S. Arvanitidou, PhD., executed January 19, 2007.
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Anderson it would have been prima facie obvious to a person of ordinary
skill in this art at the time the invention was made to include green tea
extract, a known ingredient in dentrifice compositions, in Riley’s toothpaste
composition. The specific concentration of each ingredient is a matter of
routine optimization. In re Aller, 220 F.2d 454, 456 (CCPA 1955) (“[I]t is
not inventive to discover the optimum or workable ranges by routine
experimentation.”).
The foregoing rationale does not rely on In re Kerkhoven, 626 F.2d
846 (CCPA 1980), accordingly we are not persuaded by Appellants’
contentions regarding Kerkhoven (App. Br. 8-9).
The foregoing rationale simply adds a known dentrifice ingredient
(Anderson’s green tea extract) to a known dentrifice composition (Riley’s
toothpaste) that expressly permits the inclusion of known dentrific
ingredients (FF 3). Accordingly, we are not persuaded by Appellants’
reliance on Winston6 to support their contention that there is no need for
Anderson’s green tea extract in Riley’s composition (App. Br. 10-12). For
the same reason we are not persuaded by Appellants’ contention that the
combination of Anderson and Riley would frustrate the purpose of
Anderson’s composition (App. Br. 13-15).
Notwithstanding Appellants’ contentions to the contrary (App. Br. 15-
18; Reply Br. 3-5) we agree with the Examiner’s finding that the evidence of
unexpected results is not commensurate in scope with the composition of
Appellants’ claim 29 (FF 7). Appellants appear to agree that their evidence

6 Winston et al., US 4,547,362, issued October 15, 1985. We also recognize
the Examiner’s reliance on Winston et al., US 4,721,614, issued January 26,
1988 “to rebut Appellant’s [sic] argument brought up in the Appeal Brief
with respect to the . . . [‘362] patent” (Ans. 3).
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of unexpected results is based on a composition that comprises more than
the ingredients listed for the composition of Appellants’ claim 29 (Reply Br.
5 (“The remaining components that are included in the examples clearly are
‘present’ in the instantly claimed composition by virtue of the open ended
transition ‘comprising’”)).
Nevertheless, assuming the evidence was commensurate in scope with
the composition of Appellants’ claim 29 we are not persuaded that
Appellants’ evidence supports a conclusion of unexpected results.
Appellants’ evidence suggests that the inclusion of a stannous compound as
an antioxidant in a toothpaste composition provides some benefit in the
subjective evaluation of the toothpaste’s color (FF 5). More specifically
Arvanitidou declares that “[d]iscoloration is a known and expected
disadvantage of oral compositions comprising natural ingredients such as
plant extracts” and that a composition within the scope of claim 29 can be
stored for a period of time without undergoing discoloration (FF 6).
Appellants have failed, however, to establish this result is unexpected in
view of Riley, who teaches the addition of stannous compounds to
toothpaste formulations to prevent discolouration (FF 2).
CONCLUSION OF LAW
The preponderance of evidence on this record supports a conclusion
of obviousness. The rejection of claim 29 under 35 U.S.C § 103(a) as
unpatentable over the combination of Anderson and Riley is affirmed as a
new ground of rejection. Because they are not separately argued, claims 30-
32, 34, 36-38, 40, and 41 fall together with claim 29. 37 C.F.R. §
41.37(c)(1)(vii).
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TIME PERIOD FOR RESPONSE
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b) (effective September 13, 2004, 69 Fed. Reg. 49960
(August 12, 2004), 1286 Off. Gaz. Pat. Office 21 (September 7, 2004)). 37
C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this
paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that 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 proceeding
will be remanded to the examiner. . . .

(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .

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

AFFIRMED; 37 C.F.R. § 41.50(b)

cdc
COLGATE-PALMOLIVE COMPANY
909 RIVER ROAD
PISCATAWAY, NJ 08855