Ex Parte Moya Argilagos et al

Patent Trial and Appeal Board

Oct 29, 2018

13985570 (P.T.A.B. Oct. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/985,570 08/14/2013
23909 7590 10/31/2018
COLGATE-PALMOLIVE COMPANY
909 RIVER ROAD
PISCATAWAY, NJ 08855
FIRST NAMED INVENTOR
Dally Moya Argilagos
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.
9199-00-US-Ol-GB 1020
EXAMINER
ROBERTS, LEZAH
ART UNIT PAPER NUMBER
1612
NOTIFICATION DATE DELIVERY MODE
10/31/2018 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 DALLY MOY A ARGILAGOS, CORNELIA SCHEFFEL,
TURAN MATUR, and ANDRE BRUNELLA 1
Appeal2017-006602
Application 13/985,570
Technology Center 1600
Before JEFFREY N. FREDMAN, ULRIKE W. JENKS, and
TA WEN CHANG, Administrative Patent Judges.
JENKS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims directed
to a dentifrice. Examiner rejects the claims as obvious. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, the Real Party in Interest is Colgate-Palmolive
Company. Appeal Br. 2.
Appeal2017-006602
Application 13/985,570
STATEMENT OF THE CASE
Claims 1, 5-8, 19, and 20 are on appeal, and can be found in the
Claims Appendix of the Appeal Brief. Claim 1, the sole independent claim,
is representative of the claims on appeal, and reads as follows:
1. A dentifrice comprising chitosan or pharmaceutically
acceptable acid addition salt thereof, fluoride ions and an
abrasive, for use against erosive tooth demineralization, wherein
the dentifrice is a toothpaste comprising a liquid phase and
comprising tin dissolved in the liquid phase;
wherein the chitosan or pharmaceutically acceptable acid
addition salt thereof and the fluoride ions are dissolved in the
liquid phase; and
the chitosan comprises unmodified chitosan.
The claims stand rejected as follows:
I. Claims 1, 5-8, 19, and 20 under 35 U.S.C. § I03(a) as unpatentable
over Glandorf2 and Davison. 3 Final Act. 4 5-8.
II. Claims 1, 5-8, 19, and 20 under 35 U.S.C. § I03(a) as unpatentable
over Strand 5 and Davison. Final Act. 8-11. 6
I. Obviousness over Glandorf and Davison
Examiner finds that Glandorf teaches an oral care composition such as
toothpaste that contains stannous fluoride ions (a.k.a tin fluoride), water, an
abrasive as well as thickening agents. Ans. 2-3. Examiner acknowledges
2 Glandorf et al., US 6,350,436 B 1, issued Feb. 26, 2002 ("Glandorf').
3 Davison et al., US 2003/0104020 Al, published June 5, 2003 ("Davison").
4 Final Office Action mailed February 10, 2016 ("Final Act.").
5 Strand et al., US 2009/0136432 Al, published May 28, 2009 ("Strand").
6 The rejection of claim 1 under 35 U.S.C. I02(b) as being anticipated by
Davison was withdrawn in the Notice of Panel Decision from Pre-Appeal
Brief Review dated Aug. 3, 2016.
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Application 13/985,570
that Glandorf does not disclose chitosan. Id. at 3. Examiner relies on the
teachings of Davison to formulate toothpaste containing chitosan. Id.
Examiner concludes that it would have been obvious to one of
ordinary skill in the art at the time the invention was made to formulate
Glandorf's toothpaste with chitosan in order to "provide[] improved general
gum and teeth health, treat[] halitosis and gingivitis, statin [sic] reduction
and provide[] anti-caries, anti-plaque and anti-calculus benefits in humans or
other animal" as taught in Davison. Id. at 4.
The issue is: Does the preponderance of evidence of record support
Examiner's conclusion that the combination of Glandorf and Davison
renders a dentifrice composition containing chitosan, fluoride, and an
abrasive dissolved in a liquid phase obvious?
Findings of Fact
FPL Glandorf discloses a dentifrice containing stannous fluoride (a.k.a tin
fluoride). Glandorf' s Example V, second dentifrice table is
reproduced below.
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Application 13/985,570
fog.redie.nt
F!nvor
FD&C :Blue, #J Dye Sol 'n
I., -, , DfJ11U :a
l
Fo.rmula Fonm,b Fnn:nu.la
4
0.200
49.158 J.750 .HL100
0.50D 1,JOD J .200 LlOU
0~300 0.3{JD 0 . .100 0.~5{}0
90A85 22.0UO 77.31D 24.240
Pcilvethvkne Olvcd 6JK)O
•' .. ~ ...
PEG 4-D I-Ivdmue1:Hi.tcd Castor Oil
.~' ........
PolmG1me.r 407
Sodium Laurvl Sulfatt,(1)
Silie.rs
Sci diu.m GI w:ona te:
A.:nhyd.mus (:\trk Ackl
Smli.m:n Cilrate
StJii1liOUS Fluo:d.Je.
StannDLlS Chloride
St3 ntJJ)ll8 SuU)nc
Sodium HvdrnxideP•)
e'
Sodium &'"icc.ba.ri.n
Sod1.trn1 Fluoride
Scnbitcit
1'etmsodiun1 Pymph0sphatc
Hydro;;,.yethyl CeHulnfie
<~>17.9(;0 sohs.tion
(t,}5fYX, sohifio:n
Glandorf 12:35--60 (Example V).
l .. 420
0.300
6J}00
17' .500
2.500 4 c;;:;nn 5.400
10JJUD 20.000
L 760 0.560
J,{)62
.1~32fJ
0,700
Cl,400
(LSOO
0.940
0.700
0,300
(1,600
0,600
0.531
2.657
CJ.940
0.560
0.400
Hi,941
0.500
lJ.00
0.500
FF2. Glandorf teaches that the water content in the dentifrice can be
anywhere from 5% to about 70%. Glandorf 5:1-2; see Ans. 2.
FF3. Glandorf teaches inorganic polyphosphates salts such as
tetrapolyphosphate and hexametaphosphate, among others. Glandorf
4: 19-21. "The amount of polyphosphate required is an effective
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Application 13/985,570
amount which will reduce the staining of [the teeth with] the
stannous." Id. at 4:38-39.
FF4. Example 12 of Davison, reproduced below, shows a dentifrice
composition containing chitosan.
Ingredient
\Valer
Sodium Ch1ori.te
Sodium Fluoride
Chi.tosan
Hydrated Silica
Xanthan Gum
Carbomcr 956 1
Sodiurn alkyl
sulfate (27 ,9t;&
Sol'n)
Titanium Dioxide
Sodimn Saccharin
Flavor
Sodimn Hydroxide
(50% Sol'n)
'fotal
1 Available from B. F Goodrich.
Id. ,T 213.
\Vt.%
62.277
2.750
0.243
1.00
25.00iJ
0.600
0.20iJ
4.000
J.000
0.13CJ
J .000
1.80iJ
100.00
FF5. Davison discloses that chitosan has many benefits in oral care
composition such as toothpaste gels and mouth rinses. Benefits
include:
improvement of general gum and teeth health, treatment
of halitosis and gingivitis, stain reduction, and for
providing anti-caries, anti-plaque and anti-calculus
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Application 13/985,570
benefits, in humans or other animals. It has been found that
the chitosan compositions used herein have improved
effect on the inhibition of cariogenic bacteria such as
Streptococcus mutans[;] this effect combined with its pH
buffering capacity make the chitosan compositions very
effective in prevention of dental caries.
Davison ,r 117. One aspect of Davison's invention is "the use of the
chitosan compositions for in situ film formation on a substrate to
provide surface protection, surface modification, [and] anti-bacterial
properties." Id. ,r 170.
FF6. Davison teaches optional agent(s) to be used in place of or in
combination with a pyrophosphate salt, these agents include
polyacrylates and polyphosphates ( e.g., tripolyphosphate;
hexametaphosphate ). Id. ,r 159.
Principle of Law
"If the claim extends to what is obvious, it is invalid under§ 103."
KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,419 (2007).
Analysis
We generally agree with and adopt Examiner's findings of fact,
reasoning on scope and content of the prior art, and conclusions set out in
the Final Office Action, Advisory Action,7 and Examiner's Answer. Any
findings of fact set forth above (Findings of Fact) are provided only to
highlight certain evidence. We address Appellants' arguments below.
Appellants contend that the combination of references lacks a
reasonable expectation of success. "Hydroxyethyl cellulose is a neutral
polysaccharide, and thus differs considerably from chitosan ... [a charged
7 Advisory Action mailed June 13, 2016 ("Advisory Act").
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Appeal2017-006602
Application 13/985,570
polysaccharide]. The substitution of a charged polysaccharide for an
uncharged polysaccharide is obviously significant, ... [ and there is no
teaching] that such a substitution would be successful." Appeal Br. 6
( emphasis omitted); see Reply Br. 2.
We are not persuaded by Appellants' contention that there is a lack of
reasonable expectation of success when adding a charged molecule into the
toothpaste composition. Glandorf teaches that the tetrasodium phosphate
shown in the dentifrice of formula 4 could reasonably be replaced with
another polyphosphate such as hexametaphosphate. See FF I and FF3.
Glandorf teaches the inclusion of inorganic phosphates such as
hexametaphosphate in their compositions containing stannous ions. FF3.
As explained by Examiner, Davison discloses the use of polyphosphates that
can be used in compositions containing chitosan. Ans. 7; FF6. Indeed,
Davison teaches that optional agents can be used in place of pyrophosphate
salt and these agents include polyacrylates and polyphosphates such as, for
example, hexametaphosphate. FF6. Therefore, we agree with Examiner's
position that Davison reasonably supports the inclusion of a polyphosphate
in combination with a chitosan without deleterious effect.
Examiner recognizes that, while Davison may not "specifically name
... [a] longer linear polyphosphate, Davison does contemplate
polyphosphates in general." Ans. 8. Because Davison contemplates
phosphates as well as polyacrylates, both of which are charged molecules, in
combination with chitosan, one of skill in the art would not be led away
from using charged molecules in conjunction with chitosan. See Ans. 8.
Therefore, we do not agree with Appellants' contention that there is no
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Application 13/985,570
reasonable expectation of success in the combination proposed by the
Examiner.
Appellants contend that "[i]t may be expected that the chitosan would
form complexes with the polyphosphate, and perhaps [form] a precipitate."
Appeal Br. 5; Reply Br. 2.
We are also not persuaded by this argument because it is not
supported by evidence. Arguments of counsel cannot take the place of
evidence in the record. In re Schulze, 346 F.2d 600,602 (CCPA 1965); In re
Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) ("An assertion of what seems
to follow from common experience is just attorney argument and not the
kind of factual evidence that is required to rebut a prima facie case of
obviousness.").
Appellants contend that neither Glandorf nor Davison discuss that the
compositions can be used to prevent tooth erosion. Appeal Br. 7.
We are not persuaded. Glandorf teaches dentifrice compositions
containing fluoride. FF1-FF3. Similarly, Davison teaches dentifrice
compositions such as toothpaste and gels that also contain fluoride. FF4.
"[F]luoride, ... is used against erosion." Ans. 9. Davison discloses that
chitosan has many benefits in toothpaste compositions. FF5. Specifically,
chitosan can help improve gum and teeth heath as well as have anti-caries
effect. FF5.
Examiner interprets the limitation "for use against erosive tooth
demineralization" as an intended use limitation. Ans. 9. 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 case law does not support
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Appeal2017-006602
Application 13/985,570
requiring the prior art to perform a method step recited in a product claim.
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."). Examiner is also
not relying on the use of the compositions as providing the motivation to
include chitosan disclosed in Davison (FF4-FF6) in Glandorf s dentifrice.
FF1-FF3. Here, Examiner finds motivation in Davison to add chitosan into
a composition for treating teeth because the chitosan composition without
anything else is already effective at preventing dental caries. See Ans. 3.
Appellants contend that the data in the Specification, especially
comparison of "Entry 2 ( comprising tin and fluoride) with those of Entry 3
(comprising tin, fluoride and chitosan)" shows that the compositions
containing chitosan have improved demineralization properties. Appeal
Br. 7; Reply Br. 4.
We are not persuaded that the evidence in the Specification shows
unexpected results. We agree with Examiner's position that the evidence
relied on by Appellants is not sufficient to overcome the prima facie case.
See Ans. 10 ("the numbers for Entry 2 and Entry 3 appear to be close to the
same"). Here, the comparative toothpaste formulations disclosed in the
Specification do not show improved demineralization values that would lead
us to conclude that the results are unexpected. The examples show a
reduction in demineralization from 31.6% for Entry 2 and 27.8% for Entry 3.
We agree with the Examiner that these numbers appear to not show a
"differen[ ce] in kind" sufficient to establish unexpected results. See In re
Harris, 409 F.3d 1339, 1344 (2005) (quoting In re Huang, 100 F.3d 135,
139 (Fed. Cir. 1996) (holding that claimed ranges must "produce a new and
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Appeal2017-006602
Application 13/985,570
unexpected result which is different in kind and not merely in degree from
results of the prior art")).
We conclude that the evidence cited by Examiner supports a prima
facie case of obviousness with respect to claim 1, and Appellants have not
provided sufficient rebuttal evidence that outweighs the evidence supporting
the Examiner's conclusion of obviousness. As Appellants do not argue the
claims separately, claims 5-8, 19, and 20 fall with claim 1. 37 C.F.R.
§ 41.37 (c)(l)(iv).
II. Obviousness over Strand and Davison
Examiner finds that Strand teaches an oral care composition such as
toothpaste that contains a fluoride source, an abrasive agent, a chelating
agent, and water. Ans. 4--5. Examiner acknowledges that Strand does not
disclose chitosan. Id. at 5. Examiner relies on the teachings of Davison to
include chitosan into the formulation of Strand. Id.
Examiner concludes that it would have been or obvious to one of
ordinary skill in the art at the time the invention was made to formulate
Strand's toothpaste with chitosan in order to "provide[] improved general
gum and teeth health, treat[] halitosis and gingivitis, statin [sic] reduction
and provide[] anti-caries, anti-plaque and anti-calculus benefits in humans or
other animal" as taught in Davison. Id. at 5.
The issue is: Does the preponderance of evidence of record support
Examiner's conclusion that the combination of Strand and Davison renders a
dentifrice composition containing chitosan, fluoride, and an abrasive
dissolved in a liquid phase obvious?
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Application 13/985,570
Findings of Fact
FF7. Strand teaches toothpaste compositions:
SG.rbito~ SC'! l. ( 7Ci~~·i,)
Pl1ytie ;1.dd (50% sok,!
Zi.nc c,i,.rnk
/:i;ic fa,,t:.:,,
Potassium nkr,1k'
S1a.1mm.1s f1E1oridc
Sodium flumidc
Sa.diam glucnrnik
SL~nr,m1s chiorid\11:11:cts<.',)
SLS (21\<\-i, ,oln. I
'N:, S:1cdwri;;
MitV(>f
1'faOH 51)",;,
\Vatcr and mmors,
e.g., C()[or snLn.
Tom! wc;t<:1·
Targ<:t pH
Tot,il n1tlull ion,;
(mnwl 0 -e,':1
Tuhl c.J1dm1i i(!,;,;
{mrncl ':t .... ~~ti(UJ. t cr-~~J..f).$
lOHS.
A B C D E F G H
4D .. 'l7 4,i.57 4l .6J 40.Sil 40.57 40.57 40.57 40.:57
tU,:1(; U.80f: 11.8111_1 il.8GU 11.St:n 1:i_g111) 0.1<:0!)
U.9S:'i U.5.D 0.5.n O 7f;8 O.S.D 0.5.\1 0.533
O.Tl6
s .. ou
0.454
;).243 G.243 n. "43 0.243 u.243 0.243 tl243
L064 U.:64 0.699 LOIA 1J,(4 1J.675 l.064
[.16 LI6 0.7{)2 0.209 1.16 L16
;;,'.l;) (:.10 0.11, 1),31) ().](i ,,.'.i{: 0.30 (l..10
0.27
i .JD l .31, 1.30 L"JO l .31: 1.JG L.30 t .:rn
n. ,o ,_;_ 70 o.7f.i o. 7i.l u.5n i_;_5i:_; o. 71.l c,.rc.1
U.5:1 12.:-0 ll 51, 17{J11 12.:-0 U,5t: 12.511 12.:iO
U.S.'> USJ 0.5.1 U :i.1 0Sl OS, U 5] OSJ
5{,() :5.f.C! 5.00 5{10 :5Jlf! SDG 5.00 ."iJ)(.1
ti.Ji) ii,30 U.30 0.30 ilJO ruu CUI) IIJO
l.1 ;} L lCI l . 11, l.{Jll l . lO 1. H.: 1. ](I L lO
l.0D 0. 16 u.84 O.~O u.9(, 0.\.1u 1.10
qs gs qs qs qs qs qs gs
4B.2•) 48.60 4~.n 47.53 4'>.7B 4,J.7!; 43Y) 43 .. 60
5,8 5.8 5.8 5.S 5.8 5.8 5.3 6/1
98.l"I 77.fiO 59.97 47.99 TJ.f,fi 60.10 77.60 T?.60
8'.'.% 72.30 55.57 15.14 7210 90.77 -:;4.47 72.JC1
~
26
8(.; 81
17
97
111
!Jij
na
na
11:1.
lM
Jl,'l.
~'(\.V.hole n1onth ave.rage .G.·v~rage score.
Strand ,r 54
FF8. Strand teaches thickening agents or binders such as hydroxyethyl
cellulose (HEC) or carrageenan. See Strand ,r 45.
FF9. Strand teaches that the dentifrice composition contains from about
20% to about 65% water. Id. ,r 38.
FFlO. Strand discloses fluoride ions including stannous fluoride at a
concentration from 0.01 % to 0.35% (100 to 3500ppm). Id. ,r 23.
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Application 13/985,570
Analysis
We generally agree with and adopt the Examiner's findings of fact,
reasoning on scope and content of the prior art, and conclusions set out in
the Final Office Action, Advisory Action, and Examiner's Answer. Any
findings of fact set forth above (Findings of Fact) are provided only to
highlight certain evidence. We address Appellants' arguments below.
Appellants contend that the combination of references lacks a
reasonable expectation of success. Appellants contend that "carrageenan is a
sulfated polysaccharide, and thus bears a negative charge at physiological
pH," while chitosan is of opposite charge. Appeal Br. 6; see Reply Br. 6.
"Thus, even considering the Strand Examples, those of skill in the art would
not have a reasonable expectation of success that combining the Davison
chitosan with the Strand compositions would preserve function." Reply
Br. 6.
Examiner is not relying on substitution of one component for another
in Strand's composition, but instead is suggesting the addition of Davison's
chitosan for its beneficial qualities into Strand's composition. As Examiner
points out, Strand's examples do not use linear polyphosphates. Ans. 12
Therefore, the inclusion of chitosan into any of the compositions in the
examples would not defeat the purpose of Strand's composition. See Ans.
12.
Appellants contend that the examples provided in Strand utilize
phytate which is a saturated cyclic acid having six phosphate groups. Reply
Br. 5, see Strand ,r 29.
We are not persuaded. Even though not all the examples in Strand are
polyphosphate-free as asserted by Examiner, at least one of the examples
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Application 13/985,570
does not contain phytic acid. See Ans. 12; see Strand ,r 54 (Table
composition D). Because "Davison discloses that polyphosphates may be
used in compositions comprising chitosan," there is a reasonable expectation
that the inclusion of chitosan into Strand's compositions, including even
those containing phytate, would not have any detrimental effect. Ans. 12.
Appellants contend that neither Strand nor Davison discuss that the
compositions can be used to prevent tooth erosion. Appeal Br. 7.
We are not persuaded, as Examiner points out "Strand discloses that
stannous ions reduce coronal and root dental caries and erosion." Ans. 14;
see Strand ,r 2.
Appellants contend that the data in the Specification shows
unexpected results, especially when comparing "the claimed invention
(Entry 3) with the closest prior art (Entry 2 comprising tin and fluoride).
Appeal Br. 9-10.
We are not persuaded that the evidence in the Specification shows
unexpected results. We agree with Examiner's position that the evidence
relied on by Appellants is not sufficient to overcome the prima facie case.
See Ans. 14--15 ("the numbers for Entry 2 and Entry 3 appear to be close to
the same"). The examples show a reduction in demineralization from 31.6%
for Entry 2 and 27.8% for Entry 3. We agree with the Examiner that these
numbers do not show a "differen[ ce] in kind" sufficient to establish
unexpected results. See Harris, 409 F.3d at 1344.
We conclude that the evidence cited by the Examiner supports a prima
facie case of obviousness with respect to claim 1, and Appellants have not
provided sufficient rebuttal evidence that outweighs the evidence supporting
the Examiner's conclusion of obviousness. As Appellants do not argue the
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claims separately, claims 5-8, 19, and 20 fall with claim 1. 37 C.F.R.
§ 41.37 (c)(l)(iv).
SUMMARY
We affirm the rejection of claims 1, 5-8, 19, and 20 under 35 U.S.C.
§ 103(a) as unpatentable over Glandorf and Davison.
We affirm the rejection of claims 1, 5-8, 19, and 20 under 35 U.S.C.
§ 103(a) as unpatentable over Strand and Davison.
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
14