Ex Parte Giniger

Patent Trial and Appeal Board

Oct 15, 2012

11355500 (P.T.A.B. Oct. 15, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte MARTIN S. GINIGER
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Appeal 2011-010552
Application 11/355,500
Technology Center 1600
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Before DEMETRA J. MILLS, FRANCISCO C. PRATS, and MELANIE L.
McCOLLUM, Administrative Patent Judges.

McCOLLUM, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a multi-
component oral care composition. The Examiner has rejected the claims as
obvious.
1
We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
STATEMENT OF THE CASE
Claims 1-7 and 10-20 are on appeal (App. Br. 2).
2
The claims subject
to each rejection have not been argued separately and therefore stand or fall

1
In the Appeal Brief, Appellant requests that the Election/Restriction
Requirements be reversed (App. Br. 4). However, this is not an appealable
matter and is therefore not addressed further herein.
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2
together. 37 C.F.R. § 41.37(c)(1)(vii). Claims 1 and 3 are representative
and read as follows:
1. A multi-component oral care composition comprising separately
and discretely applied:
a discrete enhancing component to be preliminarily applied to
dentition within an oral cavity,
a discretely applied oral care component to be discretely applied to the
dentition within an oral cavity after the enhancing component; and
a discretely applied finishing component, discrete from the enhancing
component and discrete from the oral care component, the finishing
component to be discretely applied to the dentition within an oral cavity
after the discretely applied oral care component.
3. A multi-component oral care composition according to claim 1
wherein the oral care component includes a two-component composition.
Claims 1, 2, and 10-20 stand rejected under 35 U.S.C. § 103(a) as
obvious over Curtis et al. (US 6,174,516 B1, Jan. 16, 2001) in view of
Georgiades (US 2002/0061282 A1, May 23, 2002) and Eaton
(US 3,894,550, Jul. 15, 1975) (Ans. 4).
Claims 3-7 stand rejected under 35 U.S.C. § 103(a) as obvious over
Curtis in view of Georgiades, Eaton, and Zaidel et al. (US 2004/0136929
A1, Jul. 15, 2004) (Ans. 7).
The Examiner relies on Curtis for teaching “a method for effecting
heightened whitening of teeth wherein there is first applied to the teeth an
aqueous rinse composition having an alkaline pH and thereafter brushing the
teeth with a peroxide dentifrice” (Ans. 4).

2
Claims 8 and 9 are also pending but have been withdrawn from
consideration (App. Br. 2).
Appeal 2011-010552
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3
The Examiner relies on Georgiades for teaching “a tooth whitening
composition . . . comprised of at least one dicarboxylic acid such as tartaric
acid and a buffer” (id. at 5). The Examiner finds that the “compositions help
to maintain the teeth white by hindering deposition of extrinsic stains on the
external surface of teeth” (id.).
The Examiner relies on Eaton for teaching “an oral care disease
prevention motivating kit including a compartmented cabinet containing oral
disease preventing supplies” (id.). In particular, the Examiner finds that “the
kit comprises a brush, toothpaste, and oral rinse” (id.).
The Examiner concludes:
It would have . . . been obvious to modify the composition and
methods of Curtis et al. to include the rinse of Georgiades, i.e.
the third discrete component, . . . motivated by the desire to
provide heightened whitening of the peroxide containing
composition as taught by Curtis et al., and then in a final step
applying a rinse that maintains teeth whiteness by hindering
deposition of stains on teeth as taught by Georgiades.
(Id. at 6.) The Examiner also concludes that it “would have been obvious to
modify the composition suggested by combining Curtis et al. and
Georgiades to be used in the kit of Eaton motivated by the desire for
providing an effective oral disease preventing program” (id.).
In rejecting claims 3-7, the Examiner additionally relies on Zaidel for
teaching “a dual composition peroxide composition that provides enhanced
whitening efficacy” (id. at 7).
ISSUE
With regard to both grounds of rejection, the issue raised by Appellant
is: Does the evidence support the Examiner’s conclusion that Curtis,
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4
Georgiades, and Eaton suggest a product comprising three discrete
components?
PRINCIPLES OF LAW
As indicated by the Supreme Court, “any need or problem known in
the field of endeavor at the time of invention and addressed by the patent can
provide a reason for combining the elements in the manner claimed.” KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007).
ANALYSIS
Curtis discloses a method “for effecting heightened whitening of teeth
wherein there is first applied to the teeth an aqueous rinse composition
having an alkaline pH and thereafter brushing the teeth with a peroxide
dentifrice” (Curtis, Abstract). Thus, Curtis teaches two discrete components.
Georgiades discloses a “tooth-whitening composition includ[ing] at
least one dicarboxylic acid” (Georgiades, Abstract). In addition, Georgiades
teaches that its compositions “are effective for whitening teeth by removing
extrinsic stains from external surfaces of the teeth” and that they “also help
to maintain the teeth white by hindering the deposition of extrinsic stains on
the external surfaces of teeth” (id. at ¶ [0069]).
We agree with the Examiner’s conclusion that it would have been
obvious to modify the method of Curtis to additionally apply Georgiades’s
composition to “maintain[] teeth whiteness by hindering deposition of stains
on teeth as taught by Georgiades” (Ans. 6). As a result, we agree with the
Examiner that a multi-component oral care composition comprising Curtis’s
alkaline rinse and peroxide dentifrice and Georgiades’s acid composition
would have been obvious (id.).
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5
Appellant argues, however, “that the acid whitening (stain etching) of
Georgiades is . . . completely incompatible with the alkaline peroxide
whitening (oxygen coloration) of Curtis. Thus, the respective very different
whitening processes of the two asserted references necessarily teach against
and away from their combination.” (App. Br. 8.) We are not persuaded.
Instead, we agree with the Examiner that Appellant has provided “no
reason for one of ordinary skill in the art to believe that once the whitening
is completed by the discrete components of Curtis et al. that it would be
affected in any way by administrating an acidic composition such as that of
Georgiades to maintain said whitening effect” (Ans. 12). In fact, we agree
with the Examiner that “the alkaline versus acidic argument . . . actually
provides motivation for applying the composition of Georgiades discretely”
(id.).
CONCLUSION
The evidence supports the Examiner’s conclusion that Curtis,
Georgiades, and Eaton suggest a product comprising three discrete
components. We therefore affirm the obviousness rejections.
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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