13884035 (P.T.A.B. Dec. 18, 2018)

Ex Parte Lewus et al

Patent Trial and Appeal BoardDec 18, 2018

13884035 (P.T.A.B. Dec. 18, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/884,035 05/08/2013 23909 7590 12/20/2018 COLGATE-PALMOLIVE COMPANY 909 RIVER ROAD PISCATAWAY, NJ 08855 FIRST NAMED INVENTOR Catherine Lewus 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. 9224-00-US-Ol-OC 6500 EXAMINER COHEN, MICHAEL P ART UNIT PAPER NUMBER 1612 NOTIFICATION DATE DELIVERY MODE 12/20/2018 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 CATHERINE LEWUS, GREGORY SZEWCZYK, SARITA MELLO, KIMDRA SMITH-WEBSTER, JASON NESTA, RENSL DILLON, EVANGELIA S. ARV ANITIDOU, and CHRISTINE CUIULE 1 Appeal 2017-011313 Application 13/884,035 Technology Center 1600 Before JEFFREY N. FREDMAN, DEBORAH KATZ, and JOHN G. NEW, Administrative Patent Judges. NEW, Administrative Patent Judge. DECISION ON APPEAL 1 According to Appellants, the real party in interest is Co lg ate-Palmolive Company (Appeal Br. 2). Appeal 2017-011313 Application 13/884,035 SUMMARY Appellants file this appeal under 35 U.S.C. Â§ I34(a) from the Examiner's Final Rejection of claims 1, 4--8 and 12.2 Specifically, claims 1, 7, 8, and 12 stand rejected as unpatentable under 35 U.S.C. Â§ I03(a) as being obvious over Pan et al. (US 5,891,422, issued April 6, 1999) ("Pan"). Claims 4 and 6 stand rejected as unpatentable under 35 U.S.C. Â§ I03(a) as being obvious over Pan and Prencipe et al. (WO 2009/099454 Al, published August 13, 2009) ("Prencipe"). Claim 5 stands rejected as unpatentable under 35 U.S.C. Â§ I03(a) as being obvious over Pan and Gaffar et al. (US 5,188,821, issued February 23, 1993) ("Gaffar"). We have jurisdiction under 35 U.S.C. Â§ 6(b). We AFFIRM. NATURE OF THE CLAIMED INVENTION Appellants' invention is directed to a mouthwash comprising an aqueous solution of an effective amount of a soluble zinc salt, together with an effective amount of a preservative selected from methylisothiazolinone, benzyl alcohol, and combinations thereof. Abstract. REPRESENTATIVE CLAIM Claim 1 is representative of the claims on appeal and recites: 2 The Examiner also rejected claim 2, which was cancelled in an Amendment after Final Rejection, dated October 25, 2016 entered by the Examiner in the Advisory Action of November 25, 2016. 2 Appeal 2017-011313 Application 13/884,035 1. A mouthwash composition comprising an aqueous solution of a. an effective amount of zinc citrate in an amount corresponding to 0.05 to 2 wt.%; and b. an effective amount of a preservative selected from methylisothiazolinone (MIT) in an amount of from 0.0005- 0.1 wt.%, benzyl alcohol in an amount of from 0.05---0.25 wt.%, and combinations thereof; and wherein the composition is a mouthwash. App. Br. 10. ISSUE AND ANALYSIS We adopt the Examiner's findings and conclusions that Appellants' claims are primafacie obvious over the cited prior art. We address the arguments raised by Appellants on appeal below. Issue Appellants argue that the Examiner has not set forth a legally sufficient motivation to modify the prior art to arrive at Appellants' claimed invention. App. Br. 6, 8. Analysis Appellants assert that Pan is directed to oral care formulations incorporating 1-propanol as an anti-microbial, where the components that overlap with the claimed elements are optional ingredients selected from a long list of possible alternatives. See App. Br. 6, 8. Appellants argue that the Examiner has not set forth any motivation to select the optional 3 Appeal 2017-011313 Application 13/884,035 ingredients of zinc citrate and benzyl alcohol, in particular, from the other alternative ingredients and combine them in the specific amounts claimed. See App. Br. 8. More specifically, Appellants argue that although Pan teaches benzyl alcohol in the amount from about 0.001 % w/v to about 0.1 % w/v, Pan does not teach benzyl alcohol as a preservative. Id. Moreover, Appellants argue Pan does not provide a motivation to select benzyl alcohol from numerous flavor oils. Id. 8. Appellants argue that although Pan teaches zinc citrate as an antimicrobial agent and a zinc compound from about 0.0025% w/v to about 0.75% w/v for use as an astringent, Pan does not teach a concentration range for the antimicrobial agents. App. Br. 7-8. Moreover, Appellants argue Pan does not provide a motivation to select zinc citrate from numerous antimicrobial agents. Id. 8. Appellants further argue that Pan does not disclose benzyl alcohol and zinc citrate "in the concentrations recited in the present claims, or for the same purposes as in the present compositions." Id. The Examiner responds that Pan teaches mouthwash compositions containing: (1) an antimicrobially effect amount of an antimicrobial agent including zinc citrate, (2) from about 0.0025% w/v to about 0.75% w/v zinc as an astringent for an antiseptic cleaning feeling, and (3) from about 0.001 % w/v to about 0.1 % w/v benzyl alcohol as a flavoring. Final Act. 3; Ans. 5 (citing Pan col. 4, 11. 17-19, 25, 33-34; col. 9, 11. 1-3). The Examiner concludes that one of ordinary skill in the art would have arrived at the claimed amounts by routine optimization given the desire to enhance antimicrobial efficacy while maintaining an antiseptic cleaning feeling. Id. 4 Appeal 2017-011313 Application 13/884,035 We agree with the Examiner. "In determining whether the subject matter of a patent claim is obvious, neither the particular motivation nor the avowed purpose of the patentee controls. . . . [ A ]ny 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'! Co. v. Teleflex Inc., 550 U.S. 398, 419-420 (2007). Pan teaches the use of zinc citrate as an antimicrobial agent, as well as an amount of zinc compound for providing an antiseptic feeling overlapping the amount recited by claim 1. Pan col. 4, 11. 17-19, 33-34; col. 9, 11. 1-3. Pan also teaches the use ofbenzyl alcohol as a flavoring in an amount overlapping the range recited by claim 1. Pan col. 8, 11. 20-23, 27. Therefore, Pan provides a reason to use both zinc citrate and benzyl alcohol in the amounts claimed. Because Pan provides a reason to combine the elements of zinc citrate and benzyl alcohol in the manner claimed, we agree with the Examiner that claim 1 is prima facie obvious. See also Iron Grip Barbell Co. v. USA Sports, Inc. 392 F.3d 1317, 1322 (Fed. Cir. 2004) ("[W]here there is a range disclosed in the prior art, and the claimed invention falls within that range, there is a presumption of obviousness."). We therefore agree with the Examiner that it would have been obvious to modify the teachings of Pan to arrive at Appellants' claimed invention to achieve the predictable result of a mouthwash having antimicrobial properties. 3 We consequently affirm the Examiner's rejection 3 Appellants also argue the Examiner erred by failing to apply a "lead formulation" analysis based on Unigene Laboratories, Inc. et al. v. Apotex, Inc., et al., 655 F.3d 1352, 1361-1362 (Fed. Cir. 2011). App. Br. 5; Reply Br. 2. Appellants' argument is inapposite because Unigene, upon which 5 Appeal 2017-011313 Application 13/884,035 of claim 1. Moreover, Appellants make the same arguments with respect to the remaining claims 4--8 and 12, and we similarly affirm the Examiner's rejection of those claims. See App. Br. 8-9. DECISION The Examiner's rejection of claims 1, 4--8, and 12 as unpatentable under 35 U.S.C. Â§ 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. Â§ 1.136(a)(l). See 37 C.F.R. Â§ 1.136(a)(l)(iv). AFFIRMED 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. Moreover, Unigene cannot run counter to the flexible analysis set out by the Supreme Court in KSR that recognizes the obviousness of pursuing known options within the technical grasp of the skilled artisan. KSR, 550 U.S. at 420-421. 6