Ex Parte Fisher et al

Patent Trial and Appeal Board

Sep 4, 2018

14365187 (P.T.A.B. Sep. 4, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/365,187 06/13/2014
23909 7590 09/06/2018
COLGATE-PALMOLIVE COMPANY
909 RIVER ROAD
PISCATAWAY, NJ 08855
FIRST NAMED INVENTOR
Steven Fisher
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.
9302-00-US-Ol-OC 6364
EXAMINER
WEBB, WALTERE
ART UNIT PAPER NUMBER
1612
NOTIFICATION DATE DELIVERY MODE
09/06/2018 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 STEVEN FISHER, MARY COLLIGAN,
MICHAEL PRENCIPE, and GARY TAMBS 1
Appeal2017-008152
Application 14/365, 187
Technology Center 1600
Before: FRANCISCO C. PRATS, TA WEN CHANG, and
RYAN H. FLAX, Administrative Patent Judges.
FLAX, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision under 35 U.S.C. § 134(a) involving claims directed
to an oral care composition. Claims 1 and 3-12 are on appeal as rejected
under 35 U.S.C. § 103. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify the Real Party in Interest as "Colgate-Palmolive
Company." Appeal Br. 2. Herein we reference the Specification of June 13,
2014 ("Spec."); the Final Office Action of July 11, 2016 ("Final Action");
the Appeal Brief of Dec. 12, 2016 ("Appeal Br."); the Examiner's Answer of
Mar. 7, 2017 ("Answer"); and Reply Brief of May 8, 2017 ("Reply Br.").
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Application 14/365, 187
STATEMENT OF THE CASE
The Specification states,
Microbial contamination of oral care products poses a serious
threat to the health of consumers. Thus, there is a need for oral
care products that provide consistent and reproducible resistance
to bacterial growth, while maintaining their efficacy and
consumer acceptability.
Benzyl alcohol is known to be bacteriostatic and is used as a
preservative for intravenous solutions. Benzyl alcohol is taught
as being an effective preservative in high water content food
products (US patent no. 4,446,161). Benzyl alcohol is also
disclosed as being an ingredient in oral care compositions, but
typically for its flavor properties (US patent no. 7,803,353).
W0/2011/152819 teaches benzyl alcohol as part of a
preservative system with other ingredients for use in an oral care
composition; however, the water levels disclosed are no higher
than 30%.
Spec. ,r 1-2.
Independent claim 1 is representative and is reproduced below:
1. An oral care composition comprising:
from 50% to about 80%, by weight, water;
from about 0.1 to about 1 %, by weight, benzyl alcohol;
and
from about 3 to about 25 %, by weight of a silica abrasive.
Appeal Br. 10 (Claims Appendix).
The following rejection is appealed:
Claims 1 and 3-12 stand rejected under 35 U.S.C. § 103(a) over
Roberts2 and Masters. 3 Final Action 3.
2 US 3,622,662 (issued Nov. 23, 1971) ("Roberts").
3 US 5,601,803 (issued Feb. 11, 1997) ("Masters").
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DISCUSSION
Arguments made by Appellants in the Appeal Brief and properly
presented in the Reply Brief have been considered in this Decision;
arguments not so presented in the Brief are waived. See 37 C.F.R.
§ 4I.37(c)(l)(iv) (2015); see also Ex parte Borden, 93 USPQ2d 1473, 1474
(BP AI 2010) (informative) ("Any bases for asserting error, whether factual
or legal, that are not raised in the principal brief are waived."). "[T]he
examiner bears the initial burden, on review of the prior art or on any other
ground, of presenting a prima facie case of unpatentability. If that burden is
met, the burden of coming forward with evidence or argument shifts to the
applicant." In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
"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'! Co. v. Teleflex Inc., 550 U.S. 398,416 (2007). "In determining
whether the subject matter of a patent claim is obvious, neither the particular
motivation nor the avowed purpose of the patentee controls. What matters is
the objective reach of the claim. If the claim extends to what is obvious, it is
invalid under§ 103." Id. at 419. It is obvious to those skilled in the art to
substitute one known equivalent for another. See In re Omeprazole Patent
Litigation, 483 F.3d 1364, 1374 (Fed. Cir. 2007) ("[T]his court finds no ...
error in the ... conclusion that it would have been obvious to one skilled in
the art to substitute one ARC [alkaline reactive compound] for another.").
"A prima facie case of obviousness typically exists when the ranges of
a claimed composition overlap the ranges disclosed in the prior art. . . . The
normal desire of scientists or artisans to improve upon what is already
generally known provides the motivation to determine where in a disclosed
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Application 14/365, 187
set of percentage ranges is the optimum combination of percentages." In re
Peterson, 315 F.3d 1325, 1329-30 (Fed. Cir. 2003).
Expressed preference for certain embodiments within a disclosed
genus does not teach away from rest of embodiments within the genus. In re
Susi, 440 F .2d 442, 446 n.3 (CCP A 1971 ). "The use of patents as references
is not limited to what the patentees describe as their own inventions or to the
problems with which they are concerned. They are part of the literature of
the art, relevant for all they contain." In re Lemelson, 397 F.2d 1006, 1009
(CCP A 1968). "[A] reference is not limited to the disclosure of specific
working examples." In re Mills, 470 F.2d 649, 651 (CCP A 1972)).
The Examiner determined that claims 1 and 3-12 would have been
obvious over Roberts and Masters. Final Action 3-5; Answer 2-5
(collectively citing Roberts Abstract, 1:38-39, 1:51-58, 2:22-35, 4:1---6:38;
Masters Abstract). We discern no error in the Examiner's determinations
and adopt the Examiner's findings of fact and rationale. Final Action 3-5;
Answer 2-5. We address Appellants' arguments below.
Appellants argue:
Roberts teaches that the liquids in the dental cream will comprise
chiefly not only water but also four other ingredients (glycerine,
aqueous solutions of sorbitol, propylene glycol, polyethylene
glycol 400). Significantly, Roberts teaches that it is
advantageous to use a mixture of both water and a humectant or
binder such as glycerine or sorbitol. It is thus evident that the
percentage (about 20-75 percent) does not refer to the amount of
water but rather refers to the total amount of liquid contents
including not only water but also glycerine, aqueous solutions of
sorbitol, propylene glycol, polyethylene glycol 400, etc. There
is no teaching or suggestion anywhere in Roberts that the dental
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Application 14/365, 187
cream would have a high amount ( 50-80%) of water as recited in
claim 1.
Appeal Br. 5-6. Appellants argue that the examples in Roberts include no
more than 19 .4 % water and also other liquid ingredients and contend that
more water "could affect the thickness and stability of the dental cream" of
Roberts. Id. at 6.
While Appellants might have a point that the Examiner's quotation
from column 2 of Roberts focuses on the water ingredient to the exclusion of
the other listed liquids, Appellants' argument is not persuasive. As noted
above, a prior art reference's disclosure is not limited to its working
examples or preferred embodiments. See In re Mills, 4 7 0 F .2d at 651; see
also In re Susi, 440 F.2d at 446 n.3. Here, Roberts discloses several liquid
components that may be combined or mixed in any suitable way to
constitute the chief component of the dental cream disclosed by the
reference. Water is a primary ingredient. The fact that none of the working
examples indicates that more than half of the composition is water or that
Roberts discloses a preference for mixing water and humectant or binder is
not determinative as to obviousness. We agree with the Examiner's position
that Roberts's disclosure of a liquid content of20-75%, noting water as the
first optional liquid (that can be suitably mixed with others), renders the
claim element of having 50-80% water in an oral care composition obvious.
In re Peterson, 315 F.3d at 1329-30.
Appellants further argue that the Specification, at paragraph 4 and in
the Examples, provides evidence of unexpected results, namely that benzyl
alcohol in a silica based formulation containing high amounts of water have
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higher MRT values4 compared to similar compositions with other
preservatives. Appeal Br. 7-8.
Appellants' argument is not persuasive. It is unclear just how
improved the Specification's experimental data (i.e., formulations including
benzyl alcohol) are compared to the comparative data (i.e., formulations
including other preservatives). See Spec. ,r,r 65-71. All that is apparent
from Appellants' experimental results data is that using benzyl alcohol is
better than using potassium sorbate, sodium benzoate, or cetylpryidinium
chloride. "Mere improvement in properties does not always suffice to show
unexpected results. When an applicant demonstrates substantially improved
results ... and states that the results were unexpected, this should suffice to
establish unexpected results in the absence of evidence to the contrary." In
re Soni, 54 F.3d 746, 751 (Fed. Cir. 1995). Here, however, we have no
evidence of what results were expected or that the +0.21 MR T value
improvement shown by using benzyl alcohol compared to sodium benzoate
is a substantially improved result.
Moreover, "[ m Jere recognition of latent properties in the prior art does
not render nonobvious an otherwise known invention." In re Baxter
Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991). "To be particularly
probative, evidence of unexpected results must establish that there is a
difference between the results obtained and those of the closest prior art, and
that the difference would not have been expected by one of ordinary skill in
the art at the time of the invention." Bristol-Myers Squibb Co. v. Teva
4 The MRT value provides "a quantitative measure of [a] formula's ability to
withstand microbial insult." Spec. ,r 69.
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Pharms. USA, Inc., 752 F.3d 967, 977 (Fed. Cir. 2014). "[I]t is well settled
that unexpected results must be established by factual evidence. 'Mere
argument or conclusory statements in the specification does not suffice.'" In
re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (quoting In re De Blauwe,
736 F.2d 699, 705 (Fed. Cir. 1984)). "Although it is well settled that
comparative test data showing an unexpected result will rebut a prima facie
case of obviousness, the comparative testing must be between the claimed
invention and the closest prior art." In re Fenn, 639 F.2d 762, 765 (CCPA
1981 ).
Here, Appellants have not compared the claimed invention to the
closest prior art, namely Roberts, which discloses a dental cream with 0.5-
10% benzyl alcohol, up to 75% polishing agent, and 20-75% water.
Appellants contend Roberts is not the closest prior art and infer that the
comparative examples of the Specification are, but such comparative
examples are not identified as prior art, but merely as different from the
invention as claimed. See Appeal Br. 7; see also Spec ,r,r 65-71.
"Attorneys' argument is no substitute for evidence." Johnston v. IVAC
Corp., 885 F.2d 1574, 1581 (Fed. Cir. 1989). Thus, it is not clear on this
record that what Appellants claim as their invention is unexpectedly better
than what is expressly disclosed in Roberts, particularly because Roberts
discloses using benzyl alcohol in amounts overlapping that claimed. See
Roberts 1 :54--58.
For the reasons above, we conclude the Examiner has established a
prima facie case for the obviousness of the claims and Appellants have not
persuasively established any error in the Examiner's determinations.
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Application 14/365, 187
SUMMARY
The obviousness rejection under 35 U.S.C. § 103 is affirmed.
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)(l)(iv).
AFFIRMED
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