Ex Parte Kohli et al

Patent Trial and Appeal Board

Jun 13, 2016

12866775 (P.T.A.B. Jun. 13, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/866,775 08/09/2010
23909 7590 06/15/2016
COLGATE-PALMOLIVE COMPANY
909 RIVER ROAD
PISCATAWAY, NJ 08855
FIRST NAMED INVENTOR
Rajnish Kohli
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.
8546-00-0C 4421
EXAMINER
WEBB, WALTERE
ART UNIT PAPER NUMBER
1612
NOTIFICATION DATE DELIVERY MODE
06/15/2016 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 RAJNISH KOHLI and JOSE EDER FONT ANA 1
Appeal2014-005597
Application 12/866,775
Technology Center 1600
Before FRANCISCO C. PRATS, JOHN G. NEW, and
JOHN E. SCHNEIDER, Administrative Patent Judges.
NEW, Administrative Patent Judge.
DECISION ON APPEAL
1Appellants state the real party-in-interest is the Colgate-Palmolive
Company. App. Br. 2.
Appeal2014-005597
Application 12/866,775
SUMMARY
Appellants file this appeal under 35 U.S.C. § 134(a) from the
Examiner's Final Rejection of claims 1, 9-12, and 19-28 as unpatentable
under 35 U.S.C. § 103(a) as being obvious over the combination of
Kleinberg et al. (US 6,524,558 B2, February 25, 2003) ("Kleinberg") and
Curtis et al. (US 6,270,890 B 1, August 7, 2001) ("Curtis").
We have jurisdiction under 35 U.S.C. § 6(b)
We AFFIRM.
NATURE OF THE CLAIMED INVENTION
Appellants' invention is directed to a dental floss comprising a basic
amino acid or a salt thereof. Abstract.
REPRESENTATIVE CLAIM
Claim 1 is representative of the claims on appeal, and recites:
1. A dental floss comprising a polymer; and a composition
compnsmg arginine or a physiologically acceptable salt of
argmme,
wherein the polymer is selected from group consisting of
polytetrafluoroethylene, polypropylene, polyethylene, styrene
butadience [sic] copolymers, nylon or mixtures thereof and the
polymer is coated or impregnated with said composition; and
the dental floss has a denier in the range selected from the group
consisting of about 450 to about 1350 and about 100 to about
900.
App. Br. 8.
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Application 12/866,775
ISSUES AND ANALYSIS
We adopt the Examiner's findings and conclusions that Appellants'
claims are primafacie obvious over the combined cited prior art. We
address the arguments raised by Appellants on appeal below.
Issue 1
Appellants argue the Examiner failed to articulate a reasonable
rationale explaining why a person of ordinary skill in the art would have
combined the teachings of the cited prior art to arrive at Appellants' claimed
invention. App. Br. 4.
Analysis
Appellants assert that Kleinberg teaches compositions intended to
prevent or treat dental hypersensitivity: key components for these
compositions are a combination of a guanidinium alkaline salt (e.g. arginine)
and a calcium salt (e.g. calcium carbonate). App. Br. 4 (citing Kleinberg
col. 1, 11. 11-12; col. 2, 11. 55---65). Appellants admit that, although
Kleinberg teaches dental flosses, Kleinberg does not teach or suggest the
details of the polymer as recited in Appellants' claims. Id. Moreover,
Appellants argue Kleinberg teaches dental floss coated with the
hypersensitivity medicaments as part of an "extensive list of potential
vehicles." Id. (citing Kleinberg col. 6, 11. 27-34).
Appellants argue further that Curtis is cited by the Examiner as
teaching dental floss, with limited teachings concerning any additional
ingredients which could be added to the floss. App. Br. 5. Moreover, assert
Appellants, even insofar as Curtis teaches medicaments added to the dental
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Appeal2014-005597
Application 12/866,775
floss, there is no mention of arginine or arginine salt. Id. (citing Curtis col.
3, 11. 5-23).
Appellants contend that, lacking any sort of direction to combine the
requisite components of the Appellants' claimed floss from the disclosures
of Kleinberg and Curtis, one of ordinary skill in the art would have been
reduced to picking and choosing from amongst the many variable within the
combination of Kleinberg and Curtis, i.e., the references cited can be relied
upon for all that each teaches, and not just the specific components
necessary to meet the elements of the Applicants' claims. App. Br. 5.
The Examiner responds that Kleinberg explicitly teaches: (1)
compositions for treating dental hypersensitivity comprising arginine
bicarbonate; and (2) applying the compositions to dental floss. Ans. 4.
However, the Examiner finds, Kleinberg does not teach or suggest the
details of the dental floss' composition. Id.
The Examiner finds that Curtis explicitly teaches dental floss
consisting of polytetrafluoroethylene having a denier in the range of about
450 to about 1350. Ans. 4. The Examiner therefore concludes that it would
have been obvious to a person of ordinary skill in the art to combine the
teachings of Kleinberg concerning applying an arginine salt to dental floss,
with those of Curtis, which teaches dental floss of the properties recited in
claim 1, which can be combined with medicaments. Id.
We agree. "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). Kleinberg teaches an arginine-based medicament for treating dental
hypersensitivity which can, inter alia, be administered by application to
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Appeal2014-005597
Application 12/866,775
dental floss. Kleinberg, col. 6, 11. 29-32. Curtis teaches a dental floss in
which: "[t]he floss is made of a plurality of polytetrafluoroethylene
filaments and non-polytetrafluoroethylene filaments. The
polytetrafluoroethylene filaments provide for a lubricity for the floss to enter
more spaces and the nonpolytetrafluoroethylene filaments provide for a case
in gripping." Curtis Abstr. Curtis also teaches that: "[t]he filaments range
from about 100 denier to about 800 denier," which substantially overlaps the
range recited in claim 1. Curtis col. 2, 11. 10-11. Curtis further teaches that
its dental floss may be combined with medicaments. Curtis col. 3, 11. 5-23.
We therefore agree with the Examiner that it would have been obvious to
combine the known teachings of Kleinberg and Curtis to arrive at
Appellants' claimed invention to achieve the predictable result of a dental
floss with the superior qualities taught by Curtis with a dental floss-applied
medicament for the treatment dental hypersensitivity.2
Issue 2
Appellants next argue the Examiner erred by impermissibly applying
an "obvious to try" or "hindsight" rejection. App. Br. 6.
2 Appellants also argue the Examiner erred by failing to designate a "lead
compound" based upon an explicit rationale. App. Br. 3--4 (citing Uni gene
Laboratories, Inc. et al. v. Apotex, Inc., et al., 655 F.3d 1352, 1361-1362
(Fed. Cir. 2011)) (applying the analytical framework of Takeda Chemical
Industries, Ltd. v. Alphapharm Pty., Ltd., 492 F.3d 1350, 1356 (Fed. Cir.
2007)). Appellants' argument is inapposite because Takeda and its progeny
apply to chemical modification of chemical compounds and not to
compositions of the sort claimed by Appellants. Furthermore, Unigene,
upon which Appellants rely, held that a reference composition analysis is
appropriate only in certain infringement contexts, which are not applicable
here. See Unigene, 655 F.3d at 1361---62.
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Application 12/866,775
Analysis
Appellants assert that: "an obvious to try rationale may be proper
when the possible options for solving a problem were known and finite.
However, if the possible options were not either known or finite, then an
obvious to try rationale cannot be used to support a conclusion of
obviousness." App. Br. 6 (citing Examination Guidelines Update:
Developments in the Obviousness Inquiry After KSR v. Teleflex, Fed. Reg.
vol. 75, no. 169 (September 1, 2010)). Appellants contend the combined
cited art provides "either no indication of which parameters were critical or
no direction as to which of many possible choices is likely to be successful."
Id. (citing In re Kubin, 561F.3d1351, 1359 (Fed. Cir. 2009) (quoting In re
O'Farrell, 853 F.2d 894, 903 (Fed. Cir. 1988))). For this reason, argue
Appellants, and given the myriad of potential permutations of active
additives and substrates, and the silence of all cited references in articulating
a problem to be solved by providing dental floss comprising arginine or a
physiologically acceptable salt of arginine, the ordinary artisan would not
have had known which options to select. Id. at 7
The Examiner finds Curtis teaches coating dental floss with
medicaments for treating teeth, e.g., fluorides, anti-plaque agents,
desensitizing agents, etc. Ans. 5 (citing Curtis col. 3, 11. 5-23). The
Examiner finds Kleinberg explicitly teaches desensitizing compositions
comprising the arginine or an arginine salt would have been suitably applied
on dental floss. Id. Accordingly, the Examiner concludes it would have
been obvious to a person of ordinary skill to combine the desensitizing
compositions of Kleinberg with the dental floss of Curtis. Id.
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Application 12/866,775
We agree with the Examiner. Kleinberg teaches:
Acceptable oral vehicles include any conventional oral
delivery system, such as dental care products, food products, and
chewing gum. Examples of dental care products include, for
example, dentifrices, topical solutions or pastes, mouthwashes in
the form of liquids or sprays or slurries, powders, gels or tablets,
and dental flosses. Examples of food products which may
contain oral compositions described herein include, for example,
lozenges and confections.
Kleinberg col. 6, 11. 27-34 (emphasis added). Curtis teaches dental flosses
corresponding to the remaining physical characteristics of claim 1, which
Appellants do not dispute, and further recites:
The medicaments that can be applied to the floss include
anti-bacterial agents, ... coagulants, ... calcium ions in the form
of a water soluble calcium salt, blood factors, fluorides, ...
antibiotics, . . . anti-inflammatory [agents], . . . anti calculus
agents, ... desensitizing agents, ... local anesthetic agents,
peroxides, ... coolants astringents and polishing agents.
Curtis col. 3, 11. 5-18 (emphasis added). We agree with the Examiner that
the combination of the known and finite teachings of Kleinberg with those
of Curtis would yield merely a predictable result, viz., dental floss with
superior qualities, which can be combined with a medicament (including
desensitizing agents), as taught by Curtis, with a desensitizing agent
comprising arginine or an arginine salt (which can be combined with dental
floss) as taught by Kleinberg. We consequently affirm the Examiner's
rejection of claim 1. Moreover, Appellants make the same arguments with
respect to the remaining claims 9-12 and 19-28, and we similarly affirm the
Examiner's rejection of those claims. See App. Br. 5.
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Application 12/866,775
DECISION
The Examiner's rejection of claims 1, 9-12, and 19-28 as
unpatentable under 35 U.S.C. § 103(a) is affirmed.
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). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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