Ex Parte Giniger et al

Patent Trial and Appeal Board

Jun 6, 2013

11355925 (P.T.A.B. Jun. 6, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte MARTIN S. GINIGER and MATTHEW S. SPAID
__________

Appeal 2012-009723
Application 11/355,925
Technology Center 1600
__________

Before LORA M. GREEN, JEFFREY N. FREDMAN, and
ULRIKE W. JENKS, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal1 under 35 U.S.C. § 134 involving claims to an
effervescent foamable two-component oral care composition. The Examiner
rejected the claims as obvious. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 The Real Party in Interest is GRINrx Corporation (see App. Br.
2).
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Statement of the Case
Background
The Specification teaches “two-component foamable compositions
having a first component including at least one acid compound; and a second
component including an alkaline source such as a carbonate. A surfactant
may also be included in either one or both of the first and or second
components. A peroxide may be added to the acid component to provide a
tooth whitening composition.” (Spec. 5 ¶ 0019).
The Claims
Claims 1-3, 8-18, 39, and 51-53 are on appeal. The claims have not
been argued separately and therefore stand or fall with claim 1. 37 C.F.R.
§ 41.37(c)(1)(vii). Claim 1 is representative and reads as follows:
1. An effervescent foamable two-component oral care
composition comprising: a first component containing an
acid; and a second component containing an alkaline source;
wherein one or both of the first and second components also
contains a surfactant; wherein the first and second
components are combinable to spontaneously form an
effervescing oral care foam chemically without any
mechanical mixing or agitation added, wherein said first
component further comprises at least one peroxide
compound in an aqueous solution and at least one peroxide
stabilizer in the form of an ion scavenger; said second
component comprises at least one foaming agent and at least
one peroxide activator, wherein said activator promotes the
rapid decomposition of the peroxide compound and
additional foaming action not related to the foaming agent;
and wherein the first and second components are each
liquids having viscosity of 5000 centipoise to provide for
assisting in providing the spontaneous foaming. (emphasis
omitted).

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The issues
A. The Examiner rejected claims 1-3, 8-18, 39, and 51-53 under 35
U.S.C. § 112, first paragraph as failing to comply with the written
description requirement (Ans. 5-6).
B. The Examiner rejected claims 1-3, 8-18, 39, and 51-53 under 35
U.S.C. § 103(a) as obvious over Kiozpeoplou,2 Christina-Beck,3 and Dana4
(Ans. 6-9).
C. The Examiner provisionally rejected claims 1-3, 8-11, 13-18, 38, and
39 on the ground of nonstatutory obviousness-type double patenting over
claims 1-13, 20, and 29 of copending US application 11/355,924 (Ans. 9-
10).
D. The Examiner provisionally rejected claims 1-3, 8-11, 13-18, 38, and
39 on the ground of nonstatutory obviousness-type double patenting over
claims 1-4 and 6-13 of copending US application 11/355,500 (Ans. 10).
E. The Examiner provisionally rejected claims 1-3, 8-11, 13-18, 38, and
39 on the ground of nonstatutory obviousness-type double patenting over
claims of copending US application 11/355,502 (Ans. 11).
A. 35 U.S.C. § 112, first paragraph, new matter
The Examiner finds that “[t]here is no support in the disclosure for the
term ‘spontaneously’” in claim 1, line 5 (Ans. 5). The Examiner finds that
the Specification provides no indication “that components are combined to
‘spontaneously’ form an effervescing oral care foam. Consequently, the

2 Kiozpeoplou, D., US 4,487,757, issued Dec. 11, 1984.
3 Christina-Beck et al., US 5,766,574, issued Jun. 16, 1998.
4 Dana, F., US 2003/0003059 A1, published Jan. 2, 2003.
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term constitutes new matter” (Ans. 5). The Examiner also finds that
“Applicant has amended claim 1 to recite the phrase ‘chemically without any
mechanical mixing or agitation added’. There is no support in the disclosure
for this phrase” (Ans. 5). The Examiner finds that:
Applicant has amended claim 1 to recite the phrase “to
provide for assisting in providing spontaneous foaming” at
line 11. There is no support in the disclosure for this phrase.
In regard to viscosity, the specification at pg. 15, paragraph
[0053] states “any thickener will also preferably have a low
viscosity so as not to inhibit the available active peroxides.”
There is no indication here that a viscosity of 5000
centipoise is intended to assist in providing spontaneous
foaming. Consequently, the phrase constitutes new matter.

(Ans. 6; see Final Rej. 3).
The issue with respect to this rejection is: Does the evidence of record
support the Examiner’s conclusion that the argued limitations represent new
matter?
Findings of Fact
1. The Specification teaches
An effervescent foaming composition hereof generally
includes compositions which evolve gas by means of a
chemical reaction between an acid and a base which takes
place upon exposure of the acid and the base to each other.
Thus, the acid and base are maintained separate (even if but
merely in separate phases in a common compartment) until
use when the separate components are brought into contact
with each other to create a foaming oral care composition.

(Spec. 6 ¶ 0021).
2. The Specification teaches that “[s]uch a two-component
composition may then provide an effervescent foam when the first and
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second components are brought into contact with each other. Indeed, no
agitation or external gas need be added in many such embodiments” (Spec. 7
¶ 0023).
Principles of Law
“[I]t is the specification itself that must demonstrate possession. And
while the description requirement does not demand any particular form of
disclosure, ... or that the specification recite the claimed invention in haec
verba, a description that merely renders the invention obvious does not
satisfy the requirement” Ariad Pharmaceuticals, Inc. v. Eli Lilly and Co.,
598 F.3d 1336, 1352 (Fed. Cir. 2010).
Analysis
While the Examiner is correct that the specific language of the claims
was not disclosed ipsis verbis in the Specification, ipsis verbis support is not
required. Fujikawa v. Wattanasin, 93 F.3d 1559, 1570 (Fed. Cir. 1996). In
this case, we agree with Appellants that the teaching of two separate
compositions brought into contact (FF 1) where “no agitation or external gas
need be added” (Spec. 7 ¶ 0023; FF 2) reasonably supports the claim phrases
“spontaneously” and “without any mechanical mixing or agitation”. That is,
“no agitation” generically comprises the absence of any type of agitation,
whether that agitation is mechanical mixing, mixing with an external gas, or
some other type of mixing.
However, Appellants do not explain where the Specification supports
the phrase “liquids having viscosity of 5000 centipoise to provide for
assisting in providing the spontaneous foaming” (Claim 1). Appellants
provide no argument, evidence, or other comment to explain where the
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relationship of a 5000 centipoise viscosity and spontaneous foaming finds
support in the Specification. We therefore treat this argument as waived.
See Hyatt v. Dudas, 551, F.3d 1307, 1313 (Fed. Cir. 2008)(“ Under well-
established rules of waiver, the Board is not required on remand to consider
grounds of rejection that were not contested by . . . appeals to the Board.”)
Also see 37 C.F.R. § 41.37(c)(iv) (“[A]any arguments or authorities not
included in the appeal brief will be refused consideration by the Board for
purposes of the present appeal.”).
Conclusion of Law
The evidence of record does not support the Examiner’s conclusion
that the phrases “spontaneously” or “without any mechanical mixing or
agitation” represent new matter.
The evidence of record supports the Examiner’s conclusion that the
phrase “liquids having viscosity of 5000 centipoise to provide for assisting
in providing the spontaneous foaming” represents new matter.
B. 35 U.S.C. § 103(a) over Kiozpeoplou, Christina-Beck, and Dana
The Examiner finds that “Kiozpeoplou teaches a container of
toothpaste comprising two portions, one containing a stabilized alkali metal
bicarbonate (alkaline source), and the other containing an acid, where upon
dispensing, and mixing effervesce strongly” (Ans. 6). The Examiner finds
that Kiozpeoplou teaches that the “composition may also comprise coloring
and whitening agents” (Ans. 7).
The Examiner finds that Kiozpeoplou “does not teach where the
whitening agent is peroxide” (Ans. 7). The Examiner finds that Christina-
Beck teaches “a dual component tooth whitening dentifrice comprising
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peroxide as the whitening agent” (Ans. 7). The Examiner finds that “Dana
teaches oral care compositions which provide a means to deliver actives
which are useful in treatment and/or management of dental and related tissue
conditions (see Abstract). A gelled composition has a viscosity ranging from
about 250 cps to about 10,000 cps” (Ans. 8).
The Examiner finds it obvious to “use peroxide as the whitening agent
in the composition of Kiozpeoplou, since Kiozpeoplou teaches adding
peroxide, a well-known whitening agent, which is shown to be efficacious in
whitening teeth, as taught by Christina-Beck. The artisan would have also
been motivated to provide a peroxide activator and stabilizer, as taught by
Christina-Beck, to improve the quality of the peroxide composition” (Ans.
8). The Examiner finds it obvious to “adjust the viscosity of the composition
of Kiozpeoplou to 5000 centipoise, since gelled compositions having a
viscosity 5000 cps would have allowed the composition to adhere to or coat
the teeth and/or gums of the subject or patient” (Ans. 8-9).
The issue with respect to this rejection is: Does the evidence of
record support the Examiner’s conclusion that Kiozpeoplou, Christina-Beck,
and Dana render claim 1 obvious?
Findings of Fact
3. Kiozpeoplou teaches
a dispensing container of components of a toothpaste which
effervesce in the human mouth during toothbrushing,
comprises two separate toothpaste portions, which are
maintained separate and out of contact with each other in
different sections of the toothpaste container prior to
extrusion and which are dispensable together from the
container in contact with each other

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(Kiozpeoplou, col. 2, ll. 21-28).
4. Kiozpeoplou teaches a container
in one part of which sodium bicarbonate has been
successfully stabilized due to the presence of a suitable
water insoluble dental abrasive, and in a second part of
which there is contained an ingredient to induce a reaction
with the previously stabilized bicarbonate and thereby
provide the user with an effervescent sensation and the
desirable cleaning effects of the in situ generated carbon
dioxide gas

(Kiozpeoplou, col. 3, ll. 14-21).
5. Kiozpeoplou teaches that the “vehicle of the first portion of the
toothpaste includes a suitable liquid, preferably containing a thickening
agent, e.g., a gelling agent. The vehicle is preferably aqueous but it is within
the broader scope of the invention to employ non-aqueous vehicles . . .
useful materials include . . . xanthan” (Kiozpeoplou, col. 7, ll. 8-36).
6. Kiozpeoplou teaches that “[e]xamples of suitable flavoring
constituents include the flavoring oils, for example . . . lemon and orange”
(Kiozpeoplou, col. 9, ll. 28-32).
7. Kiozpeoplou teaches “[v]arious other materials may be
incorporated into the dentifrice preparations of this invention. Non-limiting
examples thereof include coloring and whitening agents” (Kiozpeoplou, col.
9, ll. 63-65).
8. Kiozpeoplou teaches that the
second portion of the toothpaste of the invention, which is
maintained physically separate from the first portion prior to
extrusion from the toothpaste container, comprises a vehicle
of a liquid selected from the group consisting of water, at
least one viscous water miscible polyol humectant, and a
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mixture thereof, and about 1 to 20% by weight of said
second portion of an acidic compound which has a pH of
about 1.5 to 5.5 in water at a concentration from about 0.5 to
10%, and which is reactive with the sodium bicarbonate of
the first portion when in contact therewith to cause the
bicarbonate to effervesce with the formation of carbon
dioxide.

(Kiozpeoplou, col. 10, ll. 11-23).
9. The formula in Example 11 of Kiozpeoplou is reproduced
below:

The formula shows that portion 1 comprises sodium bicarbonate (i.e. baking
soda) and flavor oils in one chamber and that portion 2 comprises malic acid
and xanthan gum (see Kiozpeoplou, col. 11, ll. 40-60).
10. Kiozpeoplou teaches that the “second portion may optionally
contain amounts of other ingredients which were described as includable in
the first portion, providing that they are non-reactive with the acidic
compound” (Kiozpeoplou, col. 10, ll. 36-39).
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11. Kiozpeoplou teaches that “[a]cidic compounds which can be
present in the second portion are . . . citric acid . . . The acidic compounds
will comprise about 1 to 20% by weight of the second portion, preferably 2
to 15% and more preferably about 4 to 10% thereof” (Kiozpeoplou, col. 11,
ll. 1-10).
12. Kiozpeoplou teaches that “[e]ffervescence does not occur or
occurs only slightly on dispensing but with increasing contact between the
sodium bicarbonate and the acidic compound as the teeth are brushed
effervescence increases dramatically” (Kiozpeoplou, col. 3, ll. 33-37).
13. Christina-Beck teaches “a dual component dental whitening
composition for home use which when applied to teeth contains a
combination of a peroxide compound and an abrasive material normally
incompatible with the peroxide compound whereby both heightened
whitening and stain removal from teeth is attained” (Christina-Beck, col. 2,
ll. 30-36).
14. Christina-Beck teaches “[c]helating agents used to prepare the
peroxide dentifrice component include sodium acid pyrophosphate,
disodium calcium ethylene diamine tetraacetic acid (Na2Ca EDTA),
phosphoric acid, citric acid” (Christina-Beck, col. 4, ll. 1-4).
15. Dana teaches “to provide compositions which contain
ingredients which maximize the surface and duration of coverage of the
compositions on the teeth of the subjects in order to enhance delivery of
active agents for preventing and/or treating dental diseases and/or conditions
and reducing microbial flora, tartar, plaque and the like” (Dana 1 ¶ 0022).
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16. Dana teaches a “gelled composition . . . having a viscosity
ranging from about 250 cps to about 10,000 cps . . . it is the gelled
composition which has a viscosity high enough to allow the formulation to
adhere to or coat the teeth and/or gums of the subject or patient using the
composition” (Dana 3 ¶ 0037).
17. The Specification teaches that “[o]ral care compositions hereof
may generally include a surfactant which may be a part of or define a
foaming agent. Suitable surfactants may be anionic . . . Examples of anionic
surfactants include sodium lauryl sulfate” (Spec. 8-9 ¶¶ 0028-0029).
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
ordinary skill can implement a predictable variation, § 103 likely bars its
patentability.” Id. at 417.
Analysis
We begin with claim interpretation. Claim 1 is a product claim with
the limitations that two chemical components “spontaneously form an
effervescing oral care foam chemically without any mechanical mixing or
agitation” and that the two components are “liquids having viscosity of 5000
centipoise to provide for assisting in providing the spontaneous foaming.”
Both of these limitations represent either method steps or intended
uses that are embedded in a composition claim. In interpreting these
limitations, we therefore treat them as imposing functional requirements but
the caselaw does not support requiring the prior art to perform the claimed
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method step. See In re Dilnot, 300 F.2d 945, 950 (1962) (“The addition of a
method step in a product claim, which product is not patentably
distinguishable from the prior art, cannot impart patentability to the old
product.”); Also see In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997)
(“It is well settled that the recitation of a new intended use for an old product
does not make a claim to that old product patentable.”)
Kiozpeoplou teaches an effervescent two-component oral care
composition (FF 3-4) comprising a first component containing an acid (FF 8,
11) and a second component comprising an alkaline source, sodium
bicarbonate (FF 4, 9), where the components are combinable and form some
level of effervescence chemically without mixing or agitation (FF 12).
Kiozpeoplou teaches inclusion of the “foaming” agent sodium laureth sulfate
(FF 9, 17). Kiozpeoplou teaches inclusion of a whitening agent in either the
first or second component (FF 7, 10). Kiozpeoplou also teaches the use of a
gelling agent to increase viscosity (FF 5).
Christina-Beck teaches a dual component whitening system (FF 13)
where “[c]helating agents used to prepare the peroxide dentifrice component
include sodium acid pyrophosphate, disodium calcium ethylene diamine
tetraacetic acid (Na2Ca EDTA), phosphoric acid, citric acid” (Christina-
Beck, col. 4, ll. 1-4; FF 14).
Dana teaches a “gelled composition . . . having a viscosity ranging
from about 250 cps to about 10,000 cps . . . it is the gelled composition
which has a viscosity high enough to allow the formulation to adhere to or
coat the teeth and/or gums of the subject or patient using the composition”
(Dana 3 ¶ 0037; FF 16).
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Applying the KSR standard of obviousness to the findings of fact, we
agree with the Examiner that ordinary artisan would have reasonably
selected “peroxide as the whitening agent in the composition of
Kiozpeoplou” (Ans. 8) since Kiozpeoplou teaches citric acid (FF 11)
Christina-Beck teaches that peroxide is a known whitener which is stable in
acids such as citric acid (FF 13-14). We also agree with the Examiner that
the ordinary artisan would have found it obvious to “to adjust the viscosity
of the composition of Kiozpeoplou to 5000 centipoise, since gelled
compositions having a viscosity 5000 cps would have allowed the
composition to adhere to or coat the teeth and/or gums of the subject or
patient using the composition, as taught by Dana” (Ans. 8-9; FF 5, 15, 16).
These combinations are merely a “predictable use of prior art elements
according to their established functions.” KSR, 550 U.S. at 417.
Appellants contend that
Kiozpeoplou not only fails to teach or suggest “wherein the
first and second components are combinable to form an
effervescing oral care foam chemically without any
mechanical mixing or agitation added,” it rather actually
teaches away from this where in its Abstract, it specifically
calls out that there is “little or no effervescent reaction at the
interface of the two phases, but effervesce strongly during
intimate mixing of the portions during toothbrushing”; a
very distinct outside-added mechanical mixing requirement.

(App. Br. 7).
We are not persuaded. Kiozpeoplou in light of Christina-Beck and
Dana uses the same components in the same amounts in a dual compartment
device, identical to the elements of claim 1. Appellants have provided no
evidence that the obvious composition would differ in properties, nor have
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Appellants identified how the claimed composition would effervesce while
the composition of Kiozpeoplou in light of Christina-Beck and Dana would
not inherently effervesce under the same circumstances. There are no
mechanical or apparatus components in claim 1 which would achieve
different results. See In re Best, 562 F.2d 1252, 1255 (CCPA 1977)
(“Where, as here, the claimed and prior art products are identical or
substantially identical, or are produced by identical or substantially identical
processes, the PTO can require an applicant to prove that the prior art
products do not necessarily or inherently possess the characteristics of his
claimed product. . . . Whether the rejection is based on ‘inherency’ under 35
U.S.C. § 102, on ‘prima facie obviousness' under 35 U.S.C. § 103, jointly or
alternatively, the burden of proof is the same, and its fairness is evidenced
by the PTO’s inability to manufacture products or to obtain and compare
prior art products.”) Appellants have provided no evidence to satisfy this
burden.
Appellants contend that “‘[L]ittle or no effervescent reaction’ is not
effective effervescence; and, does not enable effective effervescence” (App.
Br. 8).
We are not persuaded. Claim 1 is not limited to “effective
effervescence” but only to “effervescing”. Claim 1 requires no particular
level or amount of “effervescing”, only that it occurs at all. Kiozpeoplou
teaches that “[e]ffervescence does not occur or occurs only slightly on
dispensing but with increasing contact between the sodium bicarbonate and
the acidic compound as the teeth are brushed effervescence increases
dramatically” (Kiozpeoplou, col. 3, ll. 33-37; FF 12). This slight amount of
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effervescence is sufficient to render the claim obvious, in the absence of any
limitation regarding an amount or degree of “effervescing” being required.
“[A]ppellant’s arguments fail from the outset because . . . they are not based
on limitations appearing in the claims” In re Self, 671 F.2d 1344, 1348
(CCPA 1982).
Conclusion of Law
The evidence of record supports the Examiner’s conclusion that
Kiozpeoplou, Christina-Beck, and Dana render claim 1 obvious
C.-E. Double Patenting
We summarily affirm the obviousness-type double patenting
rejections since no arguments were presented. 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.”); See also In re Berger, 279 F.3d
975, 984 (Fed. Cir. 2002) (in which the Board affirmed an uncontested
rejection of claims under 35 U.S.C. 112, second paragraph, and on appeal
the Federal Circuit affirmed the Board’s decision and found that the
appellant had waived his right to contest the indefiniteness rejection by not
presenting arguments as to error in the rejection on appeal to the Board).
SUMMARY
In summary, we affirm the rejection of claim 1 under 35 U.S.C. § 112,
first paragraph as failing to comply with the written description requirement.
Pursuant to 37 C.F.R. § 41.37(c)(1), we also affirm the rejection of claims 2,
3, 8-18, 39, and 51-53, as these claims were not argued separately.

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We affirm the rejection of claim 1 under 35 U.S.C. § 103(a) as
obvious over Kiozpeoplou, Christina-Beck, and Dana. Pursuant to 37 C.F.R.
§ 41.37(c)(1), we also affirm the rejection of claims 2, 3, 8-18, 39, and 51-
53, as these claims were not argued separately.
We summarily affirm the rejection of claims 1-3, 8-11, 13-18, 38, and
39 on the ground of nonstatutory obviousness-type double patenting over
claims 1-13, 20, and 29 of copending US application 11/355,924.
claims 1-4 and 6-13 of copending US application 11/355,500.
claims of copending US application 11/355,502.

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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