Ex Parte Campbell et al

Patent Trial and Appeal Board

Jun 17, 2016

13266938 (P.T.A.B. Jun. 17, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/266,938 10/28/2011
23909 7590 06/21/2016
COLGATE-PALMOLIVE COMPANY
909 RIVER ROAD
PISCATAWAY, NJ 08855
FIRST NAMED INVENTOR
Thomas S. Campbell
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.
8780-00-0C 7617
EXAMINER
PROSSER, ALISSA J
ART UNIT PAPER NUMBER
1619
NOTIFICATION DATE DELIVERY MODE
06/21/2016 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 S. CAMPBELL, THOMAS J. BOYD,
STEVEN W. FISHER, and MICHAEL PRENCIPE
Appeal2014-007264
Application 13/266,938 1
Technology Center 1600
Before ERIC B. GRIMES, FRANCISCO C. PRATS, and
KRISTI L. R. SA WERT, Administrative Patent Judges.
SA WERT, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the rejection of
claims 1 and 6. We have jurisdiction under 35 U.S.C. § 6(b ). We affirm.
Appellants identify Colgate-Palmolive Company as the real party in
interest. Br. 2.
Appeal2014-007264
Application 13/266,938
STATEMENT OF THE CASE
Claims 1 and 6 stand rejected under 35 U.S.C. § 103(a) for
obviousness over Prencipe2 in view of Boyd '273, 3 Lokken, 4 and Boyd
'201. 5 We choose independent claim 1 as representative. See 37 C.F.R.
§ 41.37(c)(l)(iv). Claim 1 provides:
1. An oral care composition comprising
a film entrained in a carrier, a zinc-containing compound
contained in the film,
a polysaccharide thickening agent, and
a maleic anhydride copolymer,
wherein the polysaccharide thickening agent has less than
0.4 charged groups per sugar residue unit along the
polysaccharide backbone; and
wherein the film is present in an amount of 0.1 % to 5%
by weight of the composition and the film contains 20% to 60%
by weight of the zinc containing compound;
wherein
a) the film comprises a combination of two different
molecular weights of hydroxypropyl methylcellulose,
propylene glycol and polysorbate 80;
2 Michael Prencipe and Gary A. Durga, U.S. Patent No. 5,202, 112
(issued April 13, 1993) ("Prencipe").
3 Thomas J. Boyd, et al., U.S. Patent Publication No. 2005/0019273 Al
(published Jan. 27, 2005) ("Boyd '273").
4 Jeffery Lokken, U.S. Patent Publication No. 2005/0276760 Al
(published Dec. 15, 2005) ("Lokken").
5 Thomas J. Boyd, et al., U.S. Patent Publication No. 2005/0020201 Al
(published Jan. 25, 2007) ("Boyd '201").
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b) the zinc-containing compound comprises zinc oxide;
c) the polysaccharide thickening agent comprises xanthan
gum;
d) the maleic anhydride copolymer comprises a methyl
vinyl ether/maleic anhydride copolymer having a molecular
weight of 30,000 to 5,000,000 g/mole;
and
e) an amount of polysaccharide thickening agent/maleic
anhydride copolymer in the oral care composition is 0.5% to
5% by weight.
Br. 13.
FINDINGS OF FACT
We make the following findings of fact:
1. The claimed invention is directed to an oral care composition
comprising a carrier composition containing a polysaccharide
thickening agent and a maleic anhydride copolymer, a film entrained6
in the carrier composition, and a zinc-containing compound contained
in the film. Spec. 3 (i-f 14 ).
2. The use of zinc-containing compounds in oral care compositions was
well known in the art prior to the claimed invention. Zinc ions
improve breath and facilitate the reduction of gingivitis, plaque, and
sensitivity. See, e.g., Spec. 8 (i-f 32); id. 16 (i-f 53). The disadvantages
6 The specification defines "entrained" as "the embedding or
suspension of a film in a carrier." Spec. 16 (i-f 52).
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Application 13/266,938
of zinc-containing compounds, however, are that they are poorly
soluble and must be used in relatively large amounts to be effective,
and at those large amounts, may have an "unpleasant consumer
astringency." Spec. 16 (if 53).
3. According to the Specification, the claimed invention solves the
problems of the prior art by "providing a mechanism that increases the
availability of soluble zinc, thus permitting the use of lower
concentrations of zinc compounds to achieve the same or more
beneficial effect." Spec. 16 (if 53). Specifically, "[t]he present
inventors have found that the incorporation of a zinc compound into a
film, coupled with a polysaccharide and a maleic anhydride
copolymer system, dramatically improves the solubility of the zinc."
Id. at 17 (if 54).
4. As claimed, the polysaccharide is a polysaccharide thickening agent
comprising xanthan gum, and the maieic anhydride copoiymer system
comprises a methyl vinyl ether/maleic anhydride copolymer having a
molecular weight of 30,000 to 5,000,000 g/mole. Br. 13 (claim 1).
The methyl vinyl ether/maleic anhydride copolymer is commercially
available under the trademark Gantrez®. Spec. 22 (if 74). The film
comprises a combination of two different molecular weights of
hydroxypropyl methylcellulose ("HPMC"), propylene glycol, and
polysorbate 80. Br. 13 (claim 1 ).
5. Examples 1 and 2 of the Specification provide experimental results
purporting to show that the addition of xanthan gum and Gantrez® to a
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product containing film and the commercially-available dentifrice 7
Max Fresh® "dramatically increases the soluble zinc levels" over
products containing film and Max Fresh®. Spec. 28-29 (i-fi-f 100-101).
6. Prencipe teaches a toothpaste or dental gel composition. Prencipe
(Abstract). The composition comprises a polymeric thickening agent
having a molecular weight of about 1000 to about 5,000,000 g/mole.
Id. (col. 4, 11. 17-23). Prencipe describes methyl vinyl ether/maleic
anhydride copolymer having a molecular weight of about 30,000 to
about 1,000,000 as preferred, and teaches that these copolymers are
available as Gantrez®. Id. (col. 4, 11. 52-58). Prencipe's composition
may also include conventional thickeners, including xanthan gum. Id.
(col. 9, 11. 57-65). Prencipe teaches that the thickening agent is
present "preferably in proportions of about 0.4 to about 3 parts per
part of the" copolymer. Id. (col. 10, 11. 2-7).
7. Prencipe does not disclose a zinc-containing fiim entrained in the
composition. Ans. 4. However, the Boyd references teach zinc-
containing film flakes entrained in a carrier composition (referred to
as a "vehicle").
8. Specifically, Boyd '273 discloses a dentifrice composition comprising
a vehicle and film flakes. Boyd '273 (Abstract). Boyd teaches that
including film flakes in a dentifrice composition provides "decorative,
cosmetic and therapeutic benefits." Id. (i-f 3). Not only are the film
flakes "pleasing" aesthetically, Boyd explains, they also allow for the
7 The specification defines "dentifrice" as "a paste, gel, or liquid
formulation." Spec. 5 (i-f 23).
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provision of breath-freshening agents that "deliver a pleasing burst of
... breath freshening flavor into the oral cavity." Id. (i1i15, 9). Boyd
teaches that the film flakes are formed from a matrix comprised of a
hydroxylalkyl methylcellulose starch, preferably HPMC, starch film-
forming agents, and a breath-freshening agent. Id. (i-fi-f 13, 21). The
film flakes are incorporated into the vehicle at a concentration of
about 0.05 to 1.0% by weight. Id. (i-f 18). Boyd provides zinc
gluconate and zinc citrate as examples of suitable breath-freshening
agents, and teaches that they are present at a concentration of about
0.1 to about 2.0% by weight. Id. (i1i147--48). Boyd also teaches that
other therapeutic agents may be present in the film in an amount up to
30% by weight. Id. (i-f 45--46). And the exemplary formulations in
Tables III, IV, and V show that the polymeric HPMC film further
comprises propylene glycol and Tween 80 (also known as polysorbate
80). Id. (i1i1 61---65); see also Spec. if 59.
9. Similarly, Boyd '201 teaches a dentifrice composition comprising a
vehicle and a zinc ion source that provides "antiplaque and anti-
malodor benefits to the user." Boyd '201 (Abstract). Boyd teaches
that zinc ions provide "a number of beneficial effects" to the user,
including "antiplaque, anticalculus, and deodorant properties." Id.
(i-f l ). But, Boyd explains, zinc is also associated "with numerous
negative organoleptic properties," such as astringency and unpleasant
lingering tastes, which restricts the use of zinc ion-providing
compounds in oral care products. Id.
10. Boyd '201 solves the taste problem by providing the zinc ion source
in the form of nanoparticles that are substantially non-aggregated. Id.
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(i-f 3). Boyd teaches that, in one embodiment, the zinc nanoparticles
are provided on a film made from "one of film formats known in the
art." Id. (i1i15, 17). Boyd specifically describes a film formed from a
matrix comprised ofhydroxyalkyl methylcellulose, starch, and starch
film-forming agents. Id. (i-f 17). Boyd also states that the film may be
in the form of flakes. Id. (i-f 20).
11. Boyd '201 states that the zinc ion source "may be any source known
or developed in the art," but points to zinc oxide as the preferable zinc
ion source. Id. (i-f 15).
12. Lokken discloses a two-layer tooth whitening strip. Lokken
(Abstract). The outer layer is made of HPMC. Id. (i-f 38). Lokken
explains that, for the outer layer to dissolve rapidly, it is preferable
that the outer layer be "composed of a number of different molecular
weights of HPMC." Id. (i-f 48). Specifically, Lokken states:
Good resuits have been achieved with a combination of
HPMC having approximated molecular weights of 10,000
Daltons, 26,000 Daltons and 86,000 Daltons. It has been
found that when all high molecular weight HPMC is used,
the material does not dry or dissolve in an appropriate
fashion. Similarly, if only a low molecular weight HPMC
is used, the product does not have the right texture,
dissolution time and rigidity. What has been found is that
a combination of molecular weights is required in order
to achieve a combination of desirable properties including
an appropriate texture for mouth-feel, an appropriate
drying time for manufacturing purposes, and an
appropriate dissolution rate for controlled dissolving of
the film in the mouth.
Id. (emphasis added).
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LEGAL STANDARD
A claimed invention is unpatentable if the differences between it and
the prior art are "such that the subject matter as a whole would have been
obvious at the time the invention was made to a person having ordinary skill
in the art." 35 U.S.C. § 103(a) (pre-AIA). To assess whether the subject
matter would have been obvious, the Board follows guidance in Graham v.
John Deere Co., 383 U.S. 1 (1966) andKSRint'l Co. v. Teleflex, Inc., 550
U.S. 398 (2007). "Where a skilled artisan merely pursues 'known options'
from 'a finite number of identified, predictable solutions,' the resulting
invention is obvious under Section 103." In re Cyclobenzaprine
Hydrochloride Extended-Release Capsule Patent Litig., 676 F.3d 1063,
1070 (Fed. Cir. 2012) (quoting KSR, 550 U.S. at 421).
DISCUSSION
Obviousness
On appeal, the Board "reviews the obviousness rejection for error
based upon the issues identified by appellant, and in light of the arguments
and evidence produced thereon." Ex parte Frye, 94 USPQ2d 1072, 1075-76
(BPAI 2010) (Precedential). Appellants raise two issues on appeal: (1)
whether the Examiner provided an adequate reason to combine Boyd '273,
Lokken, and Boyd '201 with Prencipe, see Br. 5-9; and (2) whether the
Examiner properly considered evidence of secondary considerations
proffered by Appellants, see Br. 6, 9. We address each issue below.
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(1) Reason to combine
As to the first issue, Appellants argue that the Examiner "failed to
provide an articulated rationale for why one of ordinary skill in the art would
have combined the diverse elements of Prencipe, Boyd '273, Lokken, and
Boyd '201, taken in any combination, to arrive at Applicants' claimed
invention." Br. 5. To the contrary, in our view the Examiner articulated a
reasoned explanation as to why a person of ordinary skill in the art would
have combined the prior-art references to achieve the claimed invention.
Specifically, the Examiner explained that an ordinarily-skilled artisan
would have been motivated to include the breath freshening zinc-containing
film flakes taught by Boyd '273 in Prencipe's oral composition "because
consumers find the aesthetic effect of the film flakes to be pleasing, thereby
promoting the use of oral hygiene products." Ans. 6 (citing Boyd '273
(i-f 5)). A preponderance of the evidence supports the Examiner's rationale,
as Boyd '273 expressiy motivates the ordinariiy-skiUed artisan to include
film flakes in a dentifrice composition because those film flakes provide
"decorative, cosmetic and therapeutic benefits," are "pleasing" aesthetically,
and allow for the provision of breath-freshening agents that "deliver a
pleasing burst of ... breath freshening flavor into the oral cavity." FF8.
Moreover, Boyd '201 teaches the skilled artisan to include a zinc-ion source
in an oral care composition, because zinc ions provide "a number of
beneficial effects" to the user, including "antiplaque, anticalculus, and
deodorant properties." FF9--10. Boyd '201 also specifically points the
skilled artisan to zinc oxide as the preferred source for zinc ions. FFlO.
In response, Appellants state that "there is no teaching from within
Boyd '273 that would have suggested the insertion of these films into the
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specific type of oral care compositions taught by Prencipe." Br. 6 (emphasis
added). But, as the Federal Circuit has explained, the need for an explicit
analysis does not require record evidence of an explicit teaching of a
motivation to combine in the prior art:
[T]he analysis that "should be made explicit" refers not to the
teachings in the prior art of a motivation to combine, but to the
court's analysis .... Under the flexible inquiry set forth by the
Supreme Court [in KSR], the district court therefore erred by
failing to take account of 'the inferences and creative steps,' or
even routine steps, that an inventor would employ and by
failing to find a motivation to combine related pieces from the
prior art.
Ball Aerosol v. Limited Brands, 555 F.3d 984, 993 (Fed. Cir. 2009). Thus,
contrary to Appellants' argument, there is no requirement that Boyd '273
expressly teach incorporation of zinc-containing film flakes into Prencipe' s
specific compositions. Nevertheless, we agree with the Examiner that a
skilled artisan would have considered the step of combining Prencipe' s
composition with Boyd's film flakes a routine matter, given the similarities
between the base compositions of both references. See Ans. 11-12
(describing the similarities between Prencipe's and Boyd's dentifrice
compositions).
Appellants have not sufficiently rebutted the Examiner's reasoned
analysis. Appellants' argument that a skilled artisan would have been
"taught away from using the films of Boyd for combination with the oral
care compositions of Prencipe because of the presumed unpredictability of
the soluble zinc levels provided" is not persuasive. Br. 6. A reference
teaches away when it "criticize[s], discredit[s], or otherwise discourage[s]
the solution claimed." In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).
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Here, nothing in the prior art implies that Boyd's zinc-containing film flakes
"should not" or "cannot" be combined with a dentifrice composition such as
Prencipe's. In re Mouttet, 686 F.3d 1322 (Fed. Cir. 2012). Instead, as the
Examiner pointed out, "Boyd '273 places no limitations on the composition
of the base dentifrice composition/vehicle." Ans. 11. Thus, the prior art
does not teach away.
As to "presumed unpredictability," Appellants state that the skilled
artisan would have expected Boyd's films to lack a correlation between the
amount of film and the levels of soluble zinc in the dentifrice based on the
data provided in Table 1 of the Specification. Br. 6. Specifically, Table 1
purports to show that an increase in the weight percentages of a zinc-
containing film in a dentifrice does not correlate to an increase in the amount
of soluble zinc in the dentifrice. Spec. i-f 100; see also FF5. But the problem
with Appellants' argument is that it does not speak to whether skilled
artisans wouid have anticipated success of the claimed invention, even if
skilled artisans would have expected a constant level of soluble zinc
regardless of the amount of zinc-containing film. "The reasonable
expectation of success requirement refers to the likelihood of success in
combining references to meet the limitations of the claimed invention."
Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., --- F.3d ----, 2016 WL
2620512, at *6 (Fed. Cir. May 9, 2016) (emphasis added). Here, nothing in
representative claim 1 here requires the oral care composition to exhibit a
certain level of soluble zinc. See Br. 13 (claim 1 ).
Nevertheless, the "case law is clear that obviousness cannot be
avoided simply by a showing of some degree of unpredictability in the art so
long as there was a reasonable probability of success." Pfizer, Inc. v.
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Apotex, Inc., 480 F.3d 1348, 1364 (Fed. Cir. 2007). The Examiner stated
that a skilled artisan would have had a reasonable expectation of success in
making the claimed invention "because the base composition of Prencipe et
al. is sufficiently viscous to keep the film flakes dispersed or suspended."
Ans. 6 (citing Prencipe (col. 1, 11. 63---68) ). Appellants have presented no
evidence or scientific reasoning tending to show that a skilled artisan would
doubt that combining Boyd's zinc-containing film flakes with Prencipe' s
dentifrice composition would fail to sufficiently "deliver a pleasing burst of
... breath freshening flavor into the oral cavity" that Boyd suggests or fails
to provide any of the other beneficial properties associated with zinc. See
FF8. Thus, we must reject Appellants' arguments related to "presumed
unpredictability."
Appellants also argue that neither Lokken nor Boyd '201 make up for
the deficiencies of Prencipe and Boyd '273, because Lokken "provides no
direction for enhancing the deiivery of zinc," whiie Boyd '273 "provides the
film, but with no specificity for zinc within the film ... nor a reason as to
why the film should be added to the oral care compositions of Prencipe."
Br. 6-7. Appellants' arguments are not well taken, however, because the
Examiner did not rely on those references for the reasons Appellants
criticize. Specifically, the Examiner relied on Lokken for its explicit
teaching that a blend of polymers having different molecular weights
provides advantageous properties, not for a means to enhance zinc delivery.
Ans. 14; see also FF12. And the Examiner relied on Boyd '201 to teach zinc
oxide as the preferred zinc source, not for a reason to add film flakes to
Prencipe's composition. Ans. 13-14; see also FFl 1. Appellants' argument
that Boyd '201 provides "no specificity for zinc within the film" because
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"zinc is mentioned as part of a Markush group," Br. 7, also lacks merit. It is
true that Boyd '201 lists zinc oxide in a Markush group of more than 50 zinc
ion sources. Boyd '201 (i-f 15); FF 11. But, out of all those sources, Boyd
'201 lists zinc oxide as the sole zinc-ion source that is preferable. Id.
Finally, Appellants argue that, even if combined, the prior art
references present a "virtually infinite number of possible combinations,"
Br. 7, and that "it was never adequately explained why one of ordinary skill
in the art was directed toward Applicants' particular oral care composition,"
Br. 9. But again, the Examiner provided a preponderance of the evidence
showing that an ordinarily-skilled artisan would have been motivated to
combine Boyd '273 's film flakes with Prencipe's dentifrice combination, to
use zinc oxide as the zinc-ion source per Boyd '201, and to employ a
combination of two different molecular weight HPMC polymers per
Lokken. Ans. 20-21. And for the reasons articulated above, Appellants
have not sufficientiy rebutted the Examiner's evidence and reasoning. Thus,
we reject Appellants' argument that the Examiner has failed to articulate a
sufficient reason to combine the prior art references.
(2) Evidence of unexpected results
As to the second issue, we are unable to agree with Appellants that the
alleged evidence of unexpected results presented in the Specification favors
non-obviousness. At the outset, we note that evidence of unexpectedly
superior results may be used to rebut a prima facie case of obviousness.
Pfizer, 480 F.3d at 1369. But, "the burden of showing unexpected results
rests on he who asserts them ... it is not enough to show that results are
obtained which differ from those obtained in the prior art: that difference
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must be shown to be an unexpected difference." In re Klosak, 455 F.2d
1077, 1080(CCPA1972).
Here, we agree with the Examiner that Appellants have not adequately
explained how the property of increased zinc solubility is unexpected or
necessarily superior. See Ans. 17-18. As the Examiner explained, Table 1
purports to show that soluble zinc levels do not exhibit a dose response, Ans.
15-16 (reproducing Spec. i-f 100); Table 2 purports to show that the inclusion
of xanthan gum/Gantrez® polymer system increases the level of soluble zinc
as well as the level of total zinc, Ans. 16-17 (reproducing Spec. i-f 1008); and
Table 3 purports to show a dose response in the amount of soluble zinc is
achieved with compositions according to the claimed invention, Ans. 17
(reproducing Spec. i-f 101). See also FF5.
But because several important questions about the evidence presented
have gone unanswered, we agree with the Examiner that "there is no
credibie way to determine the meaning iet aione the non-obviousness of
Appellants' results." Ans. 16. Specifically, as to Tables 1 and 2, the
contents of Max Fresh® are unknown, the nature of the measurements and
comparisons leading to the data provided in the "Soluble Zinc" and "Total
Zinc" columns are unknown, and the amount of soluble zinc and total zinc in
each row does not appear to equal the amount of zinc added to the product.
Id. For example, the Examiner noted that "it is unclear how 2% of a film
comprising 50% zinc oxide[,] which implies a total of 1 % zinc oxide[,] can
result in 1 % total zinc and 0.3% soluble zinc." Ans. 25. And as to Tables 2
and 3, Appellants have provided no information about whether "Soluble
8 The Specification includes two paragraphs numbered 100.
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Zinc" refers to zinc ions or zinc oxide in solution or, for that matter, the
solubility data itself. Ans. 17.
We note that the Examiner pointed out many of these concerns about
the submitted evidence in the Final Office Action. See Act. 11-12.
Moreover, the Examiner explained that "[ o ]ne of ordinary skill in the
chemical arts would recognize that different chemical compositions have
different properties and Appellant has failed to articulate a reason why the
enhancement of soluble zinc is unexpected or beneficial" in the Answer.
Ans. 17. Appellants did not address any of these concerns, other than
continuing to refer to the results as "surprising[]" and "unexpected." Br. 9.
For these reasons, we cannot find that Appellants carried their burden of
showing unexpected results.
Double Patenting
The Examiner provisionally rejected claims 1 and 6 under the doctrine
of obviousness-type double-patenting ("ODP") over claims 1, 3, 5, 6, 8-16,
18-27, and 30 ofthen-copending application 13/266,942 ("the '942
application"). We take notice that on January 13, 2015-while the final
rejection of the claims of the present application was pending before the
Board-the '942 application issued as United States Patent No. 8,932,563
("the '563 patent"). We note that the claims of the '563 patent adhere to the
description the Examiner provided, except that the claims do not specify the
form of the film (i.e., film flakes or strips). Compare Ans. 8 with '563
patent (col. 26, 1. 30-col. 27, 1. 5).
As an initial matter, we reject Appellants' argument that an
obviousness-type double patenting rejection may not rely on the prior art to
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teach missing elements. See Br. 10-11. Specifically, Appellants argue that
secondary references may only be used for "Jn re Schneller-type rejections
and for clarification/dictionary purposes." Br. 11. The Federal Circuit
explained in Abbvie Inc. v. Mathilda & Terence Kennedy Inst. of
Rheumatology Trust, 764 F.3d 1366, 1374 (Fed. Cir. 2014), that the
obviousness-type double patenting analysis involves two steps: first, the
decision-maker must determine the differences between the earlier claim( s)
and the later claim(s), and second, the decision-maker must determine
whether those differences render the later claims "patentably distinct." With
respect to the second step, the Court explained that "the law of obviousness-
type double patenting looks to the law of obviousness generally" and "is
analogous to an inquiry into the obviousness of a claim under 35 U.S.C.
§ 103:"
Thus, if the later expiring [application] is merely an obvious
variation of an invention disclosed and claimed in the reference
patent, the later expiring patent is invalid for obviousness-type
double patenting. But the nonclaim portion of the earlier patent
ordinarily does not qualify as prior art against the patentee.
Id. at 1378-79 (quotations and internal citation omitted). Thus, because the
ODP analysis is essentially the same as an obviousness analysis (except that
the previous patent specification is not considered prior art), there is no
prohibition against using secondary references to show that certain elements
of the rejected claim would have been obvious. See In re Langi, 759 F.2d
887, 893 (Fed. Cir. 1985) ("[W]e must direct our inquiry to whether the
claimed invention in the application for the second patent would have been
obvious from the subject matter of the claims in the first patent, in light of
the prior art." (emphasis added)). In Langi, for example, the Federal Circuit
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upheld the Board's ODP rejection of pending claims over commonly-owned
patent claims in view of four prior art references. Id. at 896.
The claims of the '562 patent place no limitations on the carrier
composition. Ans. 9. Thus, the previous claims do not recite that the carrier
comprises a polysaccharide thickening agent with less than 0.4 charged
groups per sugar residue comprising xanthan gum, nor do the previous
claims recite a maleic anhydride copolymer comprising a methyl vinyl
ether/maleic anhydride copolymer having a molecular weight of 30,000 to
5,000,000 g/mole. Id. The Examiner stated that it would have been obvious
"to entrain the zinc-loaded polymer film flakes in the carrier composition of
Prencipe et al. because the composition of Prencipe et al. has excellent shelf
stability, keeping dissolved, dispersed or suspended particles from settling."
Id. (citing Prencipe (col. 1, 11. 63-68)).
Appellants present no arguments with respect to whether the rejected
claims are obvious variants of the now-patented eariier claims. See Br. 10-
11. Instead, Appellants' main argument is that an 0 DP rejection cannot
include secondary references. Id. Nevertheless, in the interest of justice, we
believe that the appropriate course of action is to vacate the pending
provisional ODP rejection to allow the Examiner to compare the issued
claims of the '562 patent with the pending claims in light of the prior art,
and to determine whether the pending claims recite obvious variants of the
'562 patent claims.
SUMMARY
We affirm the rejection of claims 1 and 6 under 35 U.S.C. § 103(a) on
appeal. We vacate the provisional rejection of claims 1 and 6 under the
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doctrine of obviousness-type double-patenting over claims 1, 3, 5, 6, 8-16,
18-27, and 30 of the then-copending '942 application.
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).
AFFIRMED
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