Ex Parte Nowak et al

Patent Trial and Appeal Board

Jul 25, 2016

12992989 (P.T.A.B. Jul. 25, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/992,989 02/08/2011
23909 7590 07/27/2016
COLGATE-PALMOLIVE COMPANY
909 RIVER ROAD
PISCATAWAY, NJ 08855
FIRST NAMED INVENTOR
Andrew Nowak
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.
8363-00-0C 1461
EXAMINER
LOVE, TREVOR M
ART UNIT PAPER NUMBER
1611
NOTIFICATION DATE DELIVERY MODE
07/27/2016 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
uspto@thebellesgroup.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANDREW NOWAK,
JAMES MASTERS, and SHIRA PILCH
Appeal2014-005935
Application 12/992,989
Technology Center 1600
Before FRANCISCO C. PRATS, JEFFREYN. FREDMAN, and
JACQUELINE T. HARLOW, Administrative Patent Judges.
FREDMAN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal 1 under 35 U.S.C. § 134 involving claims to an oral
composition. The Examiner rejected the claims as obvious. We have
jurisdiction under 35 U.S.C. § 6(b). We affirm.
1 Appellants identify the Real Party in Interest as the Colgate-
Palmolive Company (see App. Br. 2).
Appeal2014-005935
Application 12/992,989
Statement of the Case
Background
"Abrasives in oral compositions debride and physically scrub the
external surface of the teeth. This scrubbing action removes organic biofilm
(i.e., the pellicle) on the tooth surface" (Spec. i-f 1 ). "[S]uch physical
removal of the pellicle also removes plaque bacteria on the pellicle surface,
thereby minimizing the potential for gingivitis, periodontitis, and caries
formation. However, oral compositions such as dentifrices should not have
such high abrasiveness that potential damage to the enamel or tissue may
result" (Spec. i-f 1 ).
The Claims
Claims 37, 42, 44, 46-50, and 52-59 are on appeal. 2 Independent
claim 37 is representative and reads as follows:
37. An oral composition comprising an orally-acceptable
carrier and a precipitated silica abrasive, comprising
a precipitated silica compound having an average
particle size of from 6 µm to 9 µm; and
an Einlehner hardness of from 4 to 11 ; and
wherein the mean particle size of the silica compound
is reduced by 16% to 20% after being applied to a hard
surface in an oral cavity;
wherein the silica compound is present in an amount
from 5% to 25% by weight of the composition;
wherein the silica compound has an oil absorption of
from 60cc/100g to 120cc/100g;
wherein the composition has a pellicle cleaning ratio
of from 80 to 105 and has a radioactive dentin abrasion of
less than 150.
2 Claims 1-36, 38--41, 43, and 45 were cancelled and claim 51 was
withdrawn (see App. Br. 9-11).
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Application 12/992,989
The Issues
A. The Examiner rejected claims 37, 42, 44, 46-50, and 52-59 under
35 U.S.C. § 103(a) as obvious over Gebreselassie3 (Ans. 2-5). 4
B. The Examiner rejected claims 58 and 59 under 35 U.S.C. § 112,
second paragraph as indefinite (Ans. 5---6).
A. 35 U.S.C. § 103(a) over Gebreselassie
The Examiner finds that "Gebreselassie, while teaching the instant
components being present, does not directly exemplify said components in a
single embodiment. And while teaching ranges that overlap heavily with the
instant ranges, does not directly exemplify all the instant ranges" (Ans. 3).
The Examiner finds it obvious to "utilize the sodium lauryl sulfate,
polyvinylmethyether maleic acid copolymer, and capsaicin as taught by
Gebreselassie in the composition of Gebreselassie. One would have been
motivated to do so since Gebreselassie clearly teaches that said components
are useful in the composition of Gebreselassie" (Ans. 4).
The issues with respect to this rejection are:
(i) Does the evidence of record support the Examiner's conclusion
that Gebreselassie renders the claims obvious?
3 Gebreselassie et al., WO 2006/022848 Al, published Mar. 2,
2006 ("Gebreselassie").
4 We note that this rejection represents a New Grounds of
Rejection in the Answer, properly signed by the TC director, to
which Appellants responded in the Reply Brief (see Reply Br. 3-
6).
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Application 12/992,989
(ii) If so, have Appellants presented evidence of secondary
considerations that, when weighed with the evidence of obviousness, is
sufficient to support a conclusion of non-obviousness?
Findings of Fact
1. Gebreselassie teaches "oral compositions containing an
effective combination of stain-removing agents. In particular, the invention
is directed to stain-removing and preventing oral compositions including a
film-forming agent; a chelator and an abrasive." (Gebreselassie 1).
2. Gebreselassie teaches that "silica dental abrasives have unique
benefits of exceptional dental cleaning and polishing performance without
unduly abrading tooth enamel or dentin. The silica abrasive polishing
materials ... have an average particle size ranging between about 0.1 to
about 30 microns, and preferably from about 5 to about 15 microns"
(Gebreselassie 15).
3. Gebreselassie teaches that:
An example of such silica is SYLODENT XW A 150, a silica
precipitate having a water content of 4. 7% by weight averaging
from about 7 to about 11 microns in diameter, having an
Einlehner Hardness of 5, a BET surface area of 390 m.sup.2/g
of silica, an oil absorption of less than 70 cm.sup.3/1 OOg of
silica.
(Gebreselassie 16).
4. Gebreselassie teaches that "the abrasive is present in amounts
from about 0.1 to about 30% by weight of the oral composition"
(Gebreselassie 15) and that "the total quantity of abrasive silica present in a
chewing gum composition of the present invention is at a concentration of
from about 0.1 to about 20% by weight" (Gebreselassie 16).
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Application 12/992,989
5. Gebreselassie teaches that "[ o ]ther active stain-removing
components include surface-active agents .... For example, anionic
surfactants typically employed in dentifrice compositions include sodium
lauryl sulfate" (Gebreselassie 2).
6. Gebreselassie teaches that "it is contemplated that any film-
forming polymer, such as a polyvinylmethylether maleic acid copolymer
(PVM/MA copolymer) may be combined with the stain-removing agents
provided herein to further facilitate film-formation" ( Gebreselassie 14 ).
7. Gebreselassie teaches that "[u]seful plasticizers and softeners
include ... glycerine" (Gebreselassie 21 ).
8. Gebreselassie teaches that "[a]mong the useful warming
compounds included are ... capsaicin" (Gebreselassie 31 ).
9. The Specification teaches a "tooth desensitizing agent
selected from ... capsaicin" (Spec. 4).
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'! Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).
"A prima facie case of obviousness typically exists when the ranges
of a claimed composition overlap the ranges disclosed in the prior art." In re
Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003).
Analysis
We agree with Appellants that our consideration is of the merits of the
appealed rejection is limited to the elected species (see Reply Br. 2). See Ex
parte Ohsaka, 2 USPQ2d 1460, 1461 (BP AI 1987). Thus, we read the
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Application 12/992,989
claims as limited to the use of the elected species of surfactant as sodium
lauryl sulfate, the elected humectant as glycerin, the elected polymer as a
polyvinyl methylether maleic acid copolymer and the elected additive as a
desensitizing agent (see Response to Election/Restriction filed on Oct. 18,
2012; cf Reply Br. 2).
We adopt the Examiner's findings of fact and reasoning regarding the
scope and content of the prior art (Ans. 2-5; FF 1-9) and agree that the
claims are rendered obvious by Gebreselassie. We address Appellants'
arguments below.
Prima F acie Case
Appellants contend that "Gebreselassie is little better than a generic
chemical catalog like Aldrich or The Merck Index and fails to show the
identical invention in as complete detail as is contained in the claim, i.e. the
burden of constructing the application from Gebreselassie relies totally on
the skilled artisan, not from any specific disclosure by Gebreselassie" (Reply
Br. 5).
We do not find this argument persuasive because Gebreselassie is less
like a "chemical catalog" and more like a patent application drawn to tooth
whitening compositions (FF 1 ). In teaching these oral compositions,
Gebreselassie identifies a number of components that may be included for
stain removing purposes including silica abrasives (FF 2) with overlapping
ranges of hardness, oil absorption, diameter, and amount (FF 3--4),
surfactants such as sodium lauryl sulfate (FF 5), film forming polymers
including PVM/MA (FF 6), glycerine (FF 7), as well as warming
compounds such as capsaicin (FF 8) that inherently desensitize teeth (FF 9).
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This result is consistent with Wrigley, where the Federal Circuit found
a "strong case of obviousness based on the prior art references of record.
[The claim] recites a combination of elements that were all known in the
prior art, and all that was required to obtain that combination was to
substitute one well-known ... agent for another." Wm. Wrigley Jr. Co. v.
Cadbury Adams USA LLC, 683 F.3d 1356, 1364 (Fed. Cir. 2012). The
instant case is factually better for obviousness than Wrigley because a single
reference, Gebreselassie, suggests all of the claimed elements (FF 1-8). In
Wrigley there was one reference that taught a number of different cooling
agent combinations as well as additional prior art references teaching that
the specific combination of cooling agents was also known. Id. at 1361,
1364.
Secondary Considerations
Appellants contend that they "provided evidence of unexpected results
by comparing the effect of a silica within the scope of the present invention
against a silica outside the scope of the present invention (see Table 1) for
the differences" (Reply Br. 6). Appellants contend that
The resulting tests showed a great reduction in particle size and
% reduction in dio content (see Table 2). Moreover, the
beneficial effects of the silica of the invention were not simply
attributable to using ever increasing amounts of the silica; Table
3 shows that amounts greate[r] than 25% (e.g. 30%) actually
showed a worse PCR/RDA ratio than lesser amounts.
(Id.) Appellants finally contend that "Examples 4-7 showed unexpected
improvements in treating dental sensitivity, whitening polishing effect,
removal of teeth staining and improved PCR/RDA ratio" (id.).
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We are not persuaded. With regard to Table 1, the data displayed
does not represent a comparison with the closest prior art of Gebreselassie.
Gebreselassie teaches a preferred silica is SYLODENT XW A 150, with an
Einlehner Hardness of 5 (FF 3) falling within the range required by claim
37, while the non-preferred "Silica B" in Table 1 of the Specification has an
Einlehner Hardness of 12-18 falling outside the range. See In re Baxter
Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991) ("[W]hen unexpected
results are used as evidence of nonobviousness, the results must be shown to
be unexpected compared with the closest prior art.").
With regard to the amounts of silica abrasive used, Gebreselassie
teaches amounts from 0.1 to 20%, identical in range to the superior results
shown for 10%, 15%, and 20% in Table 3, rendering this range obvious.
Moreover, the Specification does not identify the result as unexpected. See
In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972) ("[i]t is not enough to show
that results are obtained which differ from those obtained in the prior art:
that difference must be shown to be an unexpected difference"). Appellants
have done neither, with no evidence that the result differs from the
composition of Gebreselassie and no evidence that the result was
unexpected.
Finally, with regard to Examples 4--7, only the Briefs identify the
results as secondary considerations (see App. Br. 7; Reply Br. 6). There is
no indication in the Specification that the results would have been
unexpected. Klosak, 455 F .2d at 1080. Moreover, there is no indication that
the results in the Specification were compared to the closest prior art of
Gebreselassie. Baxter Travenol Labs., 952 F.2d at 392. Therefore, the only
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Application 12/992,989
evidence that the results are in any way unexpected is based solely upon the
statements in the briefs, not evidence of record. See In re Geisler, 116 F.3d
1465, 1470 (Fed. Cir. 1997) (Attorney argument is "not the kind of factual
evidence that is required to rebut a prima facie case of obviousness.")
Conclusions of Law
(i) The evidence of record supports the Examiner's conclusion that
Gebreselassie renders the claims obvious.
(ii) Appellants have not presented evidence of secondary
considerations that, when weighed with the evidence of obviousness, is
sufficient to support a conclusion of non-obviousness.
B. 35 U.S.C. § 112, second paragraph
Appellants do not traverse this indefiniteness rejection (see Reply Br.
7). We therefore summarily affirm the indefiniteness rejection based upon
the Examiner's explanation and reasoning (see Ans. 5---6). See 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).
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Application 12/992,989
SUMMARY
In summary, we affirm the rejection of claim 37 under 35 U.S.C.
§ 103(a) as obvious over Gebreselassie. Claims 42, 44, 46-50, and 52-59
fall with claim 37. 37 C.F.R. § 41.37(c)(l)(iv).
We affirm the rejection of claims 58 and 59 under 35 U.S.C. § 112,
second paragraph as indefinite.
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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