Ex Parte Boyd et al

Patent Trials and Appeals Board

Apr 25, 2019

14364918 - (D) (P.T.A.B. Apr. 25, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/364,918 02/13/2015
23909 7590 04/29/2019
COLGATE-PALMOLIVE COMPANY
909 RIVER ROAD
PISCATAWAY, NJ 08855
FIRST NAMED INVENTOR
Thomas Boyd
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
T9433-00-US-Ol-OC 3363
EXAMINER
WEBB, WALTERE
ART UNIT PAPER NUMBER
1612
NOTIFICATION DATE DELIVERY MODE
04/29/2019 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):
Patent_Mail@colpal.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS BOYD, GUOFENG XU, RICHARD ADAMS,
ROBERT PIERCE, DEREK SAMAROO, and DAVID VISCIO
Appeal2018-001022
Application 14/364,918
Technology Center 1600
Before RICHARD M. LEBOVITZ, JEFFREY N. FRED MAN, and
RACHEL H. TOWNSEND, Administrative Patent Judges.
FREDMAN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal 1,2 under 35 U.S.C. § 134 involving claims to a two-
part oral care tooth whitening composition. The Examiner rejected the
claims as obvious. We have jurisdiction under 35 U.S.C. § 6(b ). We affirm.
1 Appellants identify the Real Party in Interest as the Colgate-Palmolive
Company (see App. Br. 2).
2 We have considered and herein refer to the Specification of June 12, 2014
("Spec."); Final Office Action of Dec. 13, 2016 ("Final Act."); Appeal Brief
of May 15, 2017 ("Br."); and Examiner's Answer of Aug. 21, 2017
("Ans.").
Appeal2018-001022
Application 14/364,918
Statement of the Case
Background
A "formulation where it may be desirable to keep formulation
components separate is tooth-whitening formulations comprising reactive
ingredients such as peroxides or peroxyacids" (Spec. ,r 2). However, "if a
typical consumer were to mix by hand, it would lead to regions of well-
mixed and poorly-mixed sample" (id.). "It is desirable in such cases to be
able to mix the formulation components at the point of use in an efficient
and simple way" (Spec. ,r 1 ).
The Claims
Claims 18, and 20-25 are on appeal. Independent claim 18 is
representative and reads as follows:
18. A composition comprising a first part which is
physically separated from a second part during storage and
combined with the second part just prior to use, wherein the
parts comprise ingredients that, when combined, provide a
peracid and/or dioxirane whitening material;
wherein the first part comprises protein having
perhydrolase activity, and the second part comprises a
peroxide source and a carboxy donor selected from a
carboxylic acid and an acyl compound, wherein the peroxide
source and the carboxy donor react in the presence of the
perhydrolase to form a peracid; and
wherein the peroxide source is a solid, granular,
peroxide source selected from urea peroxide, a
polyvinylpyrrolidone-hydrogen peroxide complex, sodium
percarbonate, sodium perborate, a metal peroxide, and a
combination of two or more thereof; and
wherein the carboxy donor is encapsulated 1,2,3-
triacetoxypropane; and
wherein the composition is a multi-part oral care
composition.
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The Issues
A. The Examiner rejected claims 18, 20, and 22-25 under 35 U.S.C.
§ I03(a) as obvious over Dicosimo 3 and Bianchetti4 (Final Act. 2--4).
B. The Examiner rejected claims 18, 20, and 22-25 under 35 U.S.C.
§ I03(a) as obvious over Dicosimo, Bianchetti, and McLaughlin5 (Final Act.
5).
C. The Examiner rejected claim 21 under 35 U.S.C. § I03(a) as obvious
over Dicosimo, Bianchetti, McLaughlin, and Huybrechts6 (Final Act. 5---6).
D. The Examiner rejected claims 18 and 20-25 on the ground of
nonstatutory double patenting as being unpatentable over claims 12-14, 18-
20, 22, 23 of copending Application No. 14/364,7387 in view of McLaughlin
(Final Act. 7).
A.-B. 35 USC§ 103(a) over Dicosimo, Bianchetti, and McLaughlin
Because both these rejections rely on the combination of Dicosimo
and Bianchetti, and because Appellants argue both rejections together, we
will consider them together.
The Examiner finds Dicosimo teaches a multicomponent system for
oral care that comprises "'an enzyme catalyst comprising a polypeptide
having perhydrolytic activity', 'one or more acylated monosaccharides,
acylated disaccharides, or acylated polysaccharides', 'as source of
peroxygen"' (Final Act. 2). The Examiner finds Dicosimo teaches the
3 Dicosimo et al., US 2011/0236339 Al, published Sept. 29, 2011.
4 Bianchetti et al., US 2005/0008526 Al, published Jan. 13, 2005.
5 McLaughlin, US 6,274,122 Bl, issued Aug. 14, 2001.
6 Huybrechts, WO 01/64175 Al, published Sept. 7, 2001.
7 US Application 14/364,738 issued as US 10,098,824 B2 on Oct. 16, 2018.
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Application 14/364,918
components may be kept separate until use (id. at 3). The Examiner finds
Dicosimo "specifically teaches reacting a perhydrolase enzyme with
triacetin and hydrogen peroxide" (id.; emphasis omitted).
The Examiner acknowledges that Dicosimo does not teach a solid,
granular peroxide source or to encapsulate the triacetin (Final Act. 4).
For the granular peroxide source, the Examiner cites McLaughlin as
teaching granular urea peroxide and finds it obvious to select this form
because "granular urea peroxide ... has a extremely long shelf life" (Final
Act. 5; citing McLaughlin 1 :48-50).
For encapsulating the triacetin, the Examiner finds Bianchetti teaches
to encapsulate the triacetin and finds it obvious to modify Dicosimo 's
system to separate triacetin because "separation prevents the premature
activation of the peroxygen bleach by the bleach activators" (Final Act. 4;
citing Bianchetti ,r 62).
The issue with respect to this rejection is: Does a preponderance of
the evidence of record support the Examiner's conclusion that the prior art
renders claims 18 and 22-25 obvious?
Findings of Fact
1. Dicosimo teaches
a peroxycarboxylic acid generation and delivery system
compnsmg:
(a) a first compartment comprising
( 1) an enzyme catalyst comprising a polypeptide
having perhydrolytic activity ... ;
(2) at least one substrate selected from the group
consisting of ... ;
(iv) one or more acylated monosaccharides,
acylated disaccharides, or acylated
polysaccharides; ...
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Application 14/364,918
(b) a second compartment comprising
(1) source of peroxygen;
(2) a peroxide stabilizer; and
(3) an optional buffer.
(Dicosimo ,r,r 55-76). Dicosimo teaches the "enzyme-generated
peroxycarboxylic acid may be incorporated into a product whose final form
is a powder, liquid, gel, film, solid or aerosol" (Dicosimo ,r 204).
2. Dicosimo teaches suitable substrates for the enzyme catalyst
"are selected from the group consisting of ... triacetin" (Dicosimo ,r 175).
3. Dicosimo teaches "the term 'triacetin' is synonymous with ...
1,2,3-triacetoxypropane ... and all other synonyms of CAS Registry
Number 102-76-1" (Dicosimo ,r 120).
4. Dicosimo teaches the term "'source of peroxygen' refer[s] to
compounds capable of providing hydrogen peroxide ... including, but not
limited to ... urea-hydrogen peroxide" (Dicosimo ,r 161 ).
5. Dicosimo teaches "the enzymatic reaction formulation produces
peroxycarboxylic acid in situ upon combining the reaction components[, a ]s
such, the reaction components may be provided as a multi-component
system wherein one or more of the reaction components remains separated
until use" (Dicosimo ,r 132).
6. Dicosimo teaches "the present variant polypeptide having
perhydrolytic activity may be used to produce a peracid-based benefit agent
for use in personal care products (such as ... oral care products)" (Dicosimo
i1162).
7. Dicosimo teaches "the peroxycarboxylic acid is generated at a
safe and efficacious concentration suitable for use in a personal care product
to be applied to the ... tissues of the oral cavity, such as tooth enamel, tooth
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Application 14/364,918
pellicle or the gums" (Dicosimo ,r 185). Dicosimo also teaches "the
peroxycarboxylic acid formed in accordance with the processes describe
herein is used in a laundry care application" (Dicosimo ,r 189).
8. Bianchetti teaches laundry applications and teaches "the
hydrophilic bleach activator present in the liquid composition additionally
comprising a peroxygen bleach, are preferably separated from said
peroxygen bleach" (Bianchetti ,r 61 ).
9. Bianchetti teaches "the long chain glycerol-based, hydrophobic
bleach activator and the hydrophilic bleach together in one encapsulate or in
two separate encapsulates" (Bianchetti ,r 62). Bianchetti explains "it has
been found that such a separation prevents the premature activation of the
peroxygen bleach by the bleach activators" (Bianchetti ,r 62).
10. Bianchetti specifically identifies a composition where the
triacetin is the hydrophilic bleach activator and teaches "encapsulation of the
bleach activators and the peroxygen bleach in different encapsulates"
(Bianchetti ,r 62).
11. McLaughlin teaches "[ w ]hen granular urea peroxide is isolated
from moisture and humidity it has a extremely long shelf life" (McLaughlin
1 :49--50).
12. McLaughlin teaches "the composition can include a gelling
agent" and "flavoring to impart a pleasant taste to the mixture" (McLaughlin
9:33-34, 9:63---64).
Principles of Law
"The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results."
KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). "If a person of
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Application 14/364,918
ordinary skill can implement a predictable variation, § 103 likely bars its
patentability." Id. at 417. As noted by the Court in KSR, "[a] person of
ordinary skill is also a person of ordinary creativity, not an automaton." 550
U.S. at 421.
Analysis
We adopt the Examiner's findings of fact and conclusions of law (see
Final Act. 2-5; FF 1-12) and agree that the combination of Dicosimo,
Bianchetti, and McLaughlin renders the claims obvious. We address
Appellants' arguments below.
Claim 18
Appellants contend "Bianchetti is improperly used by the Examiner
and does not constitute analogous art" (Br. 5). Appellants cite In re Klein,
647 F.3d 1343 (Fed. Cir. 2011) for the proposition that "even prior art that is
very similar in structure to the claimed invention ( e.g., containers with
dividers) is not analogous when the purpose is different." (Br. 7).
Appellants contend that
Bianchetti is not directed to oral care products. Rather the
reference is directed to overcoming issues with stained fabrics,
and being used, for example, as a "bleach booster" in fabric
applications. See, Bianchetti paragraph [0002]; paragraph
[0091]. The Examiner does not cite to anything which indicates
Bianchetti teaches or suggests that the ingredients could also be
used in oral care applications - and Bianchetti itself does not
suggest such using any of the ingredients in an oral care
context.
(Br. 7) ( emphasis omitted).
We are not persuaded. "Prior art is analogous if it is from the same
field of endeavor or if it is reasonably pertinent to the particular problem the
inventor is trying to solve." Circuit Check Inc. v. QXQ Inc., 795 F.3d 1331,
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Application 14/364,918
1335 (Fed. Cir. 2015). While we recognize that both Dicosimo and
Bianchetti discuss laundry applications (FF 7-8), we agree with Appellants
that Bianchetti is silent regarding oral care applications and therefore may
not be in the same field of endeavor of whitening teeth as that of the
Specification and Dicosimo (FF 7).
However, Dicosimo and the Specification are both drawn to the
particular problem of developing systems where "the reaction components
remain[] separated until use" (FF 5; see Spec. ,r 14 "the invention provides a
package for an oral care product which comprises multiple chambers and is
designed to keep the ingredients in each chamber separate and non-reactive
until the point of use.") Thus, the problem that both Dicosimo and the
Specification were interested in solving was keeping reaction components
such as the perhydrolase enzyme, the triacetin substrate, and the peroxide
source separate until they were at the location of use. Bianchetti directly
addresses this problem, teaching the "hydrophilic bleach activator present in
the liquid composition additionally comprising a peroxygen bleach, are
preferably separated from said peroxygen bleach" (FF 8). Bianchetti teaches
a solution involving "encapsulation of the bleach activators and the
peroxygen bleach in different encapsulates" (FF 10) because "it has been
found that such a separation prevents the premature activation of the
peroxygen bleach by the bleach activators" (FF 9).
Because Bianchetti is pertinent to the problem of keeping peroxide
and enzyme substrate ingredients separate until use in the bleaching process
and both Dicosimo and the Specification were concerned with keeping these
ingredients separate until use in their oral care bleaching processes (FF 5;
Spec. ,r 14), this fact pattern differs from Klein because Bianchetti relates to
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the specific problem faced by both the Specification and Discosimo. We
therefore conclude that Bianchetti, as pertinent prior art, was properly relied
upon by the Examiner.
Appellants contend
the framework for analysis as to the obviousness of chemical
formulations and their uses is similar to that involving novel
compounds. Unigene Laboratories, Inc. et al. v. Apotex, Inc.,
et al., 655 F.3d 1352, 1361-1362 (Fed. Cir. 2011). First a lead
or reference formulation is identified from the art and then a
flexible teaching-suggestion-motivation (TSM) test is applied
to determine whether the modifications would be obvious. Id.
(Br. 9). Appellants contend the "Examiner has not demonstrated why
Dicosimo would have been a logical or reasonable starting reference nor
presented a sufficient rationale for why Unigene would not apply here" (id.).
We find this argument unpersuasive because the court in Unigene
merely stated that "[a] prima facie case of obviousness in the chemical arts is
often based on a ... 'lead compound'" and that in the context of a
composition or formulation patent the "lead compound" might more
appropriately be referred to as a "reference composition." Unigene, 655
F.3d at 1361---62. There is no requirement, however, that the obviousness
analysis for a composition or formulation claim must always be based on a
motivation to modify a particular reference composition. Indeed, Unigene
cannot run counter to the flexible analysis set out by the Supreme Court in
KSR that recognizes the obviousness of pursuing known options within the
technical grasp of the skilled artisan, e.g., known equivalents. KSR, 550
U.S. at 421.
Here, it is fair to say that there were "a finite number of identified,
predictable solutions" to the problem of putting the peroxycarboxylic acid
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generation components of Dicosimo into separate compartments (Ans. 4; FF
1-10). Selecting Bianchetti's method of encapsulating the reaction
ingredients to create a multi-component system with separate components to
satisfy Discosimo' s express desire for "a multi-component system wherein
one or more of the reaction components remains separated until use" (FF 5)
is the "product not of innovation but of ordinary skill and common sense"
because the instant claim "recites a combination of elements that were all
known in the prior art, and all that was required to obtain that combination
was to substitute one well-known ... agent for another." Wm. Wrigley Jr.
Co. v. Cadbury Adams USA LLC, 683 F.3d 1356, 1364--65 (Fed. Cir. 2012).
Moreover, even if a lead composition analysis was appropriate,
Discosimo teaches a composition with all of the reaction elements in a
multi-component system (FF 1-7), and therefore reasonably serves as a lead
composition. The Examiner provides strong reasons for incorporating the
encapsulation method of Bianchetti into Dicosimo 's known composition
because "it has been found that such a separation prevents the premature
activation of the peroxygen bleach by the bleach activators" (Final Act. 4;
FF 9). The Examiner also provides a specific reason for using granular urea,
as evidenced by McLaughlin, which is that "it has a extremely long shelf
life" (FF 11 ). Thus, the Examiner provides a specific reason for forming the
combination of Dicosimo, Bianchetti, and McLaughlin.
Claims 22-25
Appellants contend "[fJabric applications are quite dissimilar from
uses in a multi-part oral care composition; and the Examiner has not
demonstrated any reason or motivation why one of skill in the art would
have connected the two or thought that fabric applications had anything to
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Application 14/364,918
do with providing an extrudable gel (claim 22), palatability (claim 23), or
flavor (claim 24)" (App. Br. 12).
We find this argument unpersuasive because in fact, Dicosimo
"connected the two" noting that the peroxycarboxylic acid formed in
accordance with the processes described therein can be used both in laundry
care application and oral care (FF7). Furthermore, the Examiner relies upon
Dicosimo to suggest the limitations of the dependent claims and Dicosimo
specifically teaches the use of gels (FF 1) as well as use in oral care
compositions (FF 7). Moreover, McLaughlin teaches that tooth whitening
compositions may be in gel form and contain flavorings to make them
palatable (FF 12). To the extent that Appellants contend that Bianchetti is
not drawn to tooth whitening compositions and would therefore not support
the use of gels or flavorings, "[ n ]on-obviousness cannot be established by
attacking references individually where the rejection is based upon the
teachings of a combination of references. . . . [The reference] must be read,
not in isolation, but for what it fairly teaches in combination with the prior
art as a whole." In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Here, Bianchetti is relied upon to solve the problem of separately
encapsulating a substrate ingredient used by both Dicosimo and the
Specification in order to solve the problem of multicompartment systems
desired by both Dicosimo and the Specification as discussed above.
Bianchetti is not relied upon for tooth whitening, instead Dicosimo and
McLaughlin are relied upon for this teaching (FF 1-8, 12).
Conclusion of Law
A preponderance of the evidence of record supports the Examiner's
conclusion that the prior art renders claims 18 and 22-25 obvious.
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C. 35 US.C. § 103(a) over Dicosimo, Bianchetti, McLaughlin, and
Huybrechts
The Examiner relies upon Dicosimo, Bianchetti, and McLaughlin as
discussed above, but finds these references do "not teach a ketone for
producing dioxirane" (Final Act. 5). 8
The Examiner finds Huybrecht teaches "dioxiranes effectively can
whiten teeth" and that "dioxiranes are taught to be made in situ from a
ketone catalyst and oxone (peroxide)" (Final Act. 5---6) ( emphasis omitted).
The Examiner finds it obvious to "use a ketone for producing
dioxirane since dioxiranes are bleaching agents that would have been useful
in the tooth whitening compositions.
The issue with respect to this rejection is: Does a preponderance of
the evidence of record support the Examiner's conclusion that the prior art
renders claim 21 obvious?
Findings of Fact
13. Huybrechts teaches "new multi-stage-multi-active-agent-
whitening procedure for teeth" (Huybrects 1 :5-6).
14. Huybrechts teaches "dioxiranes effectively can whiten teeth"
(Huybrechts, abstract).
15. Huybrechts teaches "[ d]ioxiranes can be made in situ from a
ketone catalyst and oxone .... The reaction is carried out in water and an
8 We note the Examiner erroneously referred to a reference entitled
"Concar" but properly cited Dicosimo, Bianchetti, and McLaughlin in the
statement of the rejection (see Final Act. 5). We therefore treat this error as
harmless.
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appropriate ketone should be used" (Huybrechts 17: 16-22).
16. Huybrechts teaches "[ w ]e have, surprisingly, discovered a
'multi-stage' whitening procedure for teeth, in which several new and
different types of whitening and stain weakening agents are used
consecutively, together resulting in superior and improved whitening
performance" (Huybrechts, abstract).
Analysis
We adopt the Examiner's findings of fact and conclusions of law (see
Final Act. 5; FF 1-16) and agree that the combination of Dicosimo,
Bianchetti, McLaughlin, and Huybrechts renders claim 21 obvious. We
address Appellants' arguments below.
Appellants contend "Huybrechts seems to teach away from using
dioxiranes in combination with a peroxide source" (Br. 11 ). Appellants
contend "Huybrechts seems to contrast 'traditional whitening procedures'
based on the use of peroxides, with the ones discussed by Huybrechts that
incorporate tannase enzyme as well as dioxiranes. This is inapposite the
claimed invention" (id.).
We do not find this argument persuasive. "The prior art's mere
disclosure of more than one alternative does not constitute a teaching away
from ... because such disclosure does not criticize, discredit, or otherwise
discourage the solution claimed." In re Fulton, 391 F.3d 1195, 1201 (Fed.
Cir. 2004 ). In the portion cited by Appellants, Huybrechts does not
discourage, discredit, or criticize the use of a perhydrolase system, but rather
supports obviousness by suggesting that multiple different enzyme systems
may be combined (FF 16). Indeed, Huybrechts suggests that multiple
different systems should be combined to improve whitening, rather than
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discouraging the use of particular whitening systems (FF 16).
Conclusion of Law
A preponderance of the evidence of record supports the Examiner's
conclusion that the prior art renders claim 21 obvious.
D. Obviousness-type double patenting
We note that the obviousness-type double patenting is no longer
provisional because US application 14/364,738 issued as US 10,098,824 B2
on Oct. 16, 2018. Appellants do not dispute the rejection of the claims under
obviousness-type double patenting rejections on the merits. We therefore
summarily affirm the obviousness-type double patenting rejection. See
Manual of Patent Examining Procedure§ 1205.02 ("If a ground of rejection
stated by the examiner is not addressed in the appellant's brief, that ground
of rejection will be summarily sustained by the Board.")
SUMMARY
We affirm the rejection of claims 18 and 22-25 under 35 U.S.C.
§ 103(a) as obvious over Dicosimo and Bianchetti. Claim 20 falls with
claim 18.
We affirm the rejection of claims 18 and 22-25 under 35 U.S.C.
§ 103(a) as obvious over Dicosimo, Bianchetti, and McLaughlin. Claim 20
falls with claim 18.
We affirm the rejection of claim 21 under 35 U.S.C. § 103(a) as
obvious over Dicosimo, Bianchetti, McLaughlin, and Huybrechts.
We affirm the rejection claims 18 and 20-25 on the ground of
nonstatutory double patenting as being unpatentable over claims 12-14, 18-
20, 22, 23 of copending Application No. 14/364,738 in view of McLaughlin.
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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
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