11168681 (P.T.A.B. Nov. 18, 2014)

Ex Parte Maitra et al

Patent Trial and Appeal BoardNov 18, 2014

11168681 (P.T.A.B. Nov. 18, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte PRITHWIRAJ MAITRA, SUMAN K. CHOPRA, SAYED IBRAHIM, EUGENE PASHKOVSKI, and MICHAEL PRENCIPE ____________ Appeal 2012-006540 Application 11/168,681 Technology Center 1600 ____________ Before DONALD E. ADAMS, ERIC B. GRIMES, and ROBERT A. POLLOCK, Administrative Patent Judges. ADAMS, Administrative Patent Judge. DECISION ON APPEAL1 This appeal under 35 U.S.C. § 134 involves claims 1–6, 9, 11–18, 21, and 23–25 (App. Br. 3). Examiner entered rejections under the written description provision of 35 U.S.C. § 112, first paragraph and 35 U.S.C. § 103(a). We have jurisdiction under 35 U.S.C. § 6(b). We reverse. 1 The Real Party in Interest is “COLGATE-PALMOLIVE COMPANY” (App. Br. 3). Appeal 2012-006540 Application 11/168,681 2 STATEMENT OF THE CASE The claims are directed to a tooth-coating composition, a method of altering the color of a tooth surface, and a method of preparing a tooth- coating composition. Claims 1, 13, and 25 are representative and are reproduced in the Claims Appendix of Appellants’ Brief. Claims 1–6, 9, 11–18, 21, 23, and 24 stand rejected under the written description provision of 35 U.S.C. § 112, first paragraph. Claims 1–3, 5, 6, 9, 11–15, 17, 18, 21, and 23–25 stand rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Yoshiharu2 and Barsa.3 Claims 4 and 16 stand rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Yoshiharu, Barsa, and BASF Tech Literature.4 Written Description: ISSUE Does the preponderance of evidence on this record support Examiner’s finding that Appellants’ Specification fails to provide written descriptive support for the claimed invention? FACTUAL FINDINGS (FF) FF 1. Examiner finds that Appellants’ Specification supports an acrylate co-polymer “amount,” but not “concentration,” of from 60% to 99% by weight of the composition (Ans. 5 (emphasis removed)). 2 Yoshiharu et al., EP 1 153 594 A2, published Nov. 14, 2001. 3 Barsa et al., US 4,046,858, Sep. 6, 1997. 4 BASF, Technical Information MEMC 050411e-00, Luvimer® 100 P, Luvimer® 36 D, and Luvimer® 30 E, 1-12 (July 2005). Appeal 2012-006540 Application 11/168,681 3 ANALYSIS Examiner finds that Appellants’ amendment changing the term “amount” to “concentration” is not supported by Appellants’ Specification (Ans. 5; FF 1). We are not persuaded. As Appellants explain, “[t]he claimed subject matter need not be described ‘in haec verba’ in the original specification in order to satisfy the written description requirement” and “when read in the context of the recited phrase, both ‘concentration’ and ‘amount’ clearly convey to those skilled in the art that the recited acrylate co-polymer represented 60% to 99% of the weight of the claimed composition” (Reply Br. 11-12). CONCLUSION OF LAW The preponderance of evidence on this record fails to support Examiner’s finding that Appellants’ Specification fails to provide written descriptive support for the claimed invention. The rejection of claims 1–6, 9, 11–18, 21, 23, and 24 under the written description provision of 35 U.S.C. § 112, first paragraph is reversed. Obviousness: ISSUE Does the preponderance of evidence relied upon by Examiner support a conclusion of obviousness? FACTUAL FINDINGS (FF) FF 2. Yoshiharu relates “to a cosmetic coating composition for exalting the quality of . . . teeth by whitening, coloring, or lustering the surface thereof” and “a remover for removing the applied layer of a coating composition” (Yoshiharu ¶¶ 1–2; see Ans. 5). Appeal 2012-006540 Application 11/168,681 4 FF 3. Yoshiharu’s coating composition comprises at least one polymer I, at least one polymer II, and an alcohol solvent (Yoshiharu ¶ 17; see generally Ans. 6). FF 4. Yoshiharu suggests that polymer I may be “t-butyl acrylate-ethyl acrylate-methacrylic acid copolymer,” wherein the “content of . . . polymer I in the composition is in the range of 0.1-50 mass %” (Yoshiharu ¶¶ 42 and 44; see Ans. 6). FF 5. Yoshiharu suggests that “if the content [of polymer I] exceeds 50 mass %, the solubility and dispersibility of the composition in a solvent are degraded, thereby to render difficult the formation of a uniform film and form a cause for uneven application of the composition” (Yoshiharu ¶ 44). FF 6. Yoshiharu suggests that “polymer II is a pyrrolidone type [ ]copolymer which never fails to contain a 2-pyrrolidyl group,” wherein “[t]he content of the polymer II in the composition is in the range of 1-70 mass %” (Yoshiharu ¶¶ 45 and 48; see Ans. 6). FF 7. Yoshiharu suggests that the coating composition may contain “a powdered pigment (white type) . . . includ[ing], but not limited to, titanium dioxide, mica titanium, silicon dioxide, talc, kaolin, aluminum oxide, titanium oxide sol, zinc oxide, low-temperature sintered zinc oxide, silicic anhydride, and sericite” (Yoshiharu ¶ 51; see Ans. 6). FF 8. Yoshiharu’s remover may comprise “dentin reinforcing agents and caries preventing agents such as . . . hdyroxy [sic] apatite” (Yoshiharu ¶ 98; Ans. 6). FF 9. Examiner finds that “Yoshiharu . . . does not teach that the hydroxy apatite is crystalline hydroxyapatite” (Ans. 7). Appeal 2012-006540 Application 11/168,681 5 FF 10. Barsa suggests that “synthetic crystalline hydroxyapatite in significant amounts which are identical to natural tooth enamel” can be used as a “tooth restorative material” (Barsa, col. 2, ll. 40–44). FF 11. Examiner finds that Yoshiharu suggests “the use of Luvimer 100P as the preferred t-butyl acrylate, ethyl acrylate, and methacrylic acid copolymer” and relies on BASF as evidence that Luvimer 100P has equal concentrations of t-butyl acrylate, ethyl acrylate, and methacrylic acid (Ans. 8). ANALYSIS Based on the combination of Yoshiharu and Barsa, Examiner concludes that, at the time Appellants’ invention was made, it would have been prima facie obvious “to have used crystalline hydroxyapatite as the dentin reinforcing agent in the [coating] composition of Yoshiharu” (Ans. 7). We are not persuaded. As Appellants explain, Yoshiharu suggests hydroxyapatite as a component of the remover for removing the applied layer of a coating composition, not a component of the coating composition itself (see Reply Br. 5; see FF 8). In addition, neither Yoshiharu nor Barsa suggest that hydroxyapatite is a whitening agent (Reply Br. 5–6; Cf. FF 7 and 10). Further, Appellants correctly assert that Yoshiharu teaches away from the use of a composition comprising Yoshiharu’s polymer I at a concentration or amount greater than 50 mass percent (App. Br. 8; FF 5). Appellants also correctly assert that the polymer II of Yoshiharu’s composition contains a 2- pyrrolidyl group, which is specifically excluded from Appellants’ claimed acrylate co-polymer that consists of monomers of t-butyl acrylate, ethyl acrylate, and methacrylic acid (Reply Br. 7; Appellants’ claim 1; FF 6). Appeal 2012-006540 Application 11/168,681 6 Examiner failed to establish that BASF makes up for the foregoing deficiencies in the combination of Yoshiharu and Barsa (see FF 11). CONCLUSION OF LAW The preponderance of evidence relied upon by Examiner fails to support a conclusion of obviousness. The rejection of claims 1–3, 5, 6, 9, 11–15, 17, 18, 21, and 23–25 under 35 U.S.C. § 103(a) as unpatentable over the combination of Yoshiharu and Barsa is reversed. The rejection of claims 4 and 16 under 35 U.S.C. § 103(a) as unpatentable over the combination of Yoshiharu, Barsa, and BASF Tech Literature is reversed. REVERSED lp