Ex Parte Pasetti et al

Patent Trial and Appeal Board

Mar 12, 2018

13162355 (P.T.A.B. Mar. 12, 2018)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/162,355 06/16/2011 Marco PASETTI 108907.00066 7304
4372 7590 03/14
ARENT FOX LLP
1717 K Street, NW
WASHINGTON, DC 20006-5344
EXAMINER
SOROUSH, LAYLA
ART UNIT PAPER NUMBER
1627
NOTIFICATION DATE DELIVERY MODE
03/14/2018 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):
patentdocket @ arentfox. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARCO PASETTI, ROBERTO CERINI, ANTONELA
ANTONINI, and MARIA ROSARIA FEDELE
Appeal 2017-002734
Application 13/162,35s1
Technology Center 1600
Before JEFFREY N. FREDMAN, JOHN G. NEW, and DAVID COTTA,
Administrative Patent Judges.
COTTA, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 relating to a method for
controlling strains of bacterial flora of the oral cavity. The Examiner
rejected the claims on appeal under 35 U.S.C. § 103(a) as obvious and on
ground of non-statutory double patenting.
We AFFIRM
1 According to Appellants, the real party in interest is Farmaceutici Dott
Ciccarelli S.P.A. App. Br. 1.
Appeal 2017-002734
Application 13/162,355
STATEMENT OF THE CASE
The Specification discloses “the present invention relates to the use in
formulations for the hygiene of the oral cavity of zinc compounds having
high antibacterial activity and high activity also on yeasts such as Candida
[ajlbicans, combined with improved formulation stability, without requiring
the addition of surfactants as essential components.” Spec. 1.
Claims 1-17 are on appeal. Claim 1 is illustrative and reads as
follows:
1. A method for controlling bacterial strains of bacterial flora
of the oral cavity, comprising:
administering a composition wherein a zinc
compound having formula:
[R-0CH2CH2)n-0S03] • A Zn2+ (I)
wherein R is a linear or branched saturated or
unsaturated C6-C2o aliphatic chain, n is an integer in
the range from zero to 20,
is used as a substitute of Triclosan in inhibiting the growth
of the bacterial strains of the oral cavity.
App Br. 13.
The claims were rejected as follows:
Claim 1 was rejected under 35 U.S.C. § 112(b) as failing to
particularly point out and distinctly claim the subject matter which the
inventors regard as their invention.2
2 The Examiner has withdrawn this rejection. Ans. 8. Accordingly, this
rejection is no longer part of this appeal.
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Appeal 2017-002734
Application 13/162,355
Claims 1-9, 16 and 17 were rejected under 35 U.S.C. § 103(a) as
obvious over the combination of Rigano3 and Petrus.4
Claims 10-15 were rejected under 35 U.S.C. § 103(a) as obvious over
the combination of Rigano, Petrus, and Pasetti.5
Claims 1-17 were rejected on the ground of non-statutory
obviousness-type double patenting over claims 1-19 of US Patent No.
6,350,437 (Pasetti) in view of Rigano.
OBVIOUSNESS OVER RIGANO AND PETRUS
Appellants argue claims 1-9, 16 and 17 together. App. Br. 6. We
designate claim 1 as representative.
In finding claim 1 obvious, the Examiner found that Rigano disclosed
that hydro-soluble zinc alkyl ether sulfate, i.e. zinc lauryl ether sulphate, was
useful for inhibiting bacterial growth and reducing odor without the use of
common bactericides. Ans. 3. The Examiner found that Rigano disclosed
that zincs are used in toothpastes, but acknowledged that Rigano did not
expressly teach the use zinc lauryl ether sulphate in the oral cavity. Id.
The Examiner found that Petrus disclosed that zinc can inhibit the
growth of Streptococci and of Actinomyces bacteria (bacterial flora of the
oral cavity) when used as a dentrifice. Id. at 4. Based on the combined
disclosures of Rigano and Petrus, the Examiner concluded:
It would have been obvious to one of ordinary skill in the art at
the time of the invention to incorporate the Zinc lauryl ether
sulphate in treating bacterial growth of Streptococci and
Actinomyces bacteria and reducing odour. The motivation
3 Rigano et al., Zinc lauryl ether sulphate: A new approach to skin care,
128(4) SOFW Journal 1-12 (2002) (“Rigano”).
4 Petrus, US Patent No. 6,930,099 B2, issued Aug. 16, 2005 (“Petrus”).
5 Pasetti et al., US Patent No. 6,350,437 Bl, issued Feb. 26, 2002 (“Pasetti”).
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Appeal 2017-002734
Application 13/162,355
comes from the teaching of Rigano et al. that zincs are used in
toothpastes and further that Zinc lauryl ether sulphate treats
bacterial growth and reduces odour; and by Petrus that zinc can
inhibit the growth of Streptococci and Actinomyces bacteria
(bacterial flora of the oral cavity) when used as a dentifrice.
Hence, a skilled artisan would have had [a] reasonable
expectation of successfully achieving similar efficacy and
results in the oral cavity.
Id.
We agree with the Examiner that claim 1 would have been obvious
over the combination of Rigano and Petrus. We address Appellants’
arguments below.
Appellants argue that Rigano does not disclose or suggest using zinc
lauryl ether sulphate in formulations for the hygiene of the oral cavity. App.
Br. 7. Thus, according to Appellants, “one of ordinary skill with Rigano
before him would have no motivation to use [zinc] lauryl ether sulphate as
[a] substitute for Triclosan.” Id. We are not persuaded.
Rigano discloses that zinc lauryl ether sulphate inhibits the growth of
bacteria. Rigano 1. While Rigano does not expressly disclose using zinc
lauryl ether sulphate in the oral cavity, it does disclose that zinc citrate can
be used in toothpaste. Id. 6. Moreover, Petrus discloses that “[z]inc can
inhibit the growth of Streptococci and Actinomyces bacteria when used as a
dentrifice.” Petrus col. 7,11. 48-50.6 We agree with the Examiner that these
disclosures, taken together, would have motivated the skilled artisan to use
zinc lauryl ether sulphate as claimed with a reasonable expectation of
successfully inhibiting bacterial growth in the oral cavity. Ans. 10.
6 This is consistent with the disclosure in the Specification that “[i]t is
known to use zinc compounds in formulations for the oral hygiene.” Spec.
1.
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Appeal 2017-002734
Application 13/162,355
Appellants argue that unexpected results demonstrate the claimed
method to be nonobvious. More specifically, Appellants contend a
comparison of the claimed compounds to Triclosan “shows that the
compounds of the presently claimed invention unexpectedly provide the
same efficacy as Triclosan in inhibiting growth of the above-listed bacteria
of the oral cavity.” App. Br. 8. Appellants argue that zinc ions were known
to be unstable, and thus it was “surprising and unexpected that formulations
containing the compounds recited in claim 1 have not only been found to be
stable, but have been found to be as stable as oral formulations containing
Triclosan.” Id. We are not persuaded.
Given Rigano’s teaching that zinc lauryl ether sulphate inhibits
bacteria, we do not find it unexpected that zinc lauryl ether sulphate inhibits
bacteria in the oral cavity. Moreover, the present record does not support a
finding of unexpected results because the data presented is not
commensurate with the scope of the claims (which encompass more than
just the 2.16% zinc lauryl ether sulphate tested) and because Appellants have
not provided a comparison to the closest prior art (Rigano’s zinc lauryl ether
sulphate and/or the zinc compounds disclosed in Petrus (see, Petrus col. 11,
11. 50-58 (claim 3)). See, In re Baxter TravenolLabs, 952 F.2d 388, 392
(Fed. Cir. 1991) (finding that when “unexpected results are used as evidence
of nonobviousness, the results must be shown to be unexpected compared
with the closest prior art”); In re Huai-Hung Kao, 639 F.3d 1057, 1068 (Fed.
Cir. 2011) (“Evidence of secondary considerations must be reasonably
commensurate with the scope of the claims.”).
Appellants argue that Petrus states only that “zinc can inhibit the
growth of Streptococci and Actinomyces bacteria when used as a dentifrice”
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Application 13/162,355
and thus the skilled artisan would only have been motivated to “test the
specific zinc salts disclosed in Petrus.” App. Br. 9. We are not persuaded
because, as discussed above, the combined teachings of Rigano and Petrus
would have given the skilled artisan a reasonable expectation of successfully
inhibiting bacterial growth in the oral cavity using zinc lauryl sulphate. In re
O’Farrell, 853 F.2d 894, 903-04 (Fed. Cir. 1988) (“Obviousness does not
require absolute predictability of success. ... For obviousness under § 103,
all that is required is a reasonable expectation of success.”)
Accordingly, we affirm the Examiner’s rejection of claim 1. Because
they were not argued separately, claims 2-9, 16, and 17 fall with claim 1.
OBVIOUSNESS OVER RIGANO, PETRUS, AND PASETTI
Appellants argue that the Examiner’s rejection of claims 10-15 as
obvious over the combination of Rigano, Petrus, and Pasetti should be
reversed because Pasetti does not mention Triclosan and does not remedy
the alleged deficiencies in the combination of Rigan and Petrus. App. Br.
10. For the reasons already provided, we are not persuaded that the
combination of Rigano and Petrus is deficient. Moreover, the alleged failure
of Pasetti to mention Triclosan is not persuasive because the claims do not
require Triclosan. Put another way, the use of the claimed composition in a
formulation that lacks Triclosan reads on the limitation requiring that the
compound be “used as a substitute [for] Triclosan in inhibiting the growth of
the bacterial strains.” Accordingly, we affirm the Examiner rejection of
claim 10-15 as obvious over the combination of Rigano, Petrus, and Pasetti.
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Application 13/162,355
DOUBLE PATENTING
Appellants argue that the Examiner’s double patenting rejection
should be reversed because neither Pasetti nor Rigano “disclose, suggest, or
mention Triclosan.” Id. at 11. We are not persuaded because, as discussed
above, the claims do not require Triclosan. The use of the claimed
composition in a formulation that lacks Triclosan reads on the limitation
requiring that the compound be “used as a substitute [for] Triclosan in
inhibiting the growth of the bacterial strains.” Accordingly, we affirm the
Examiner’s rejection of claims 1-17 on the ground of non-statutory
obviousness-type double patenting.
SUMMARY
For the reasons set forth herein, and those set forth in the Examiner’s
Answer and Final Office Action, we affirm the Examiner’s rejection of
claims 1-9, 16 and 17 under 35 U.S.C. § 103(a) as obvious over the
combination of Rigano and Petrus, claims 10-15 under 35 U.S.C. § 103(a)
as obvious over the combination of Rigano, Petrus, and Pasetti, and claims
1-17 on the ground of non-statutory obviousness-type double patenting over
claims 1-19 of US Patent No. 6,350,437 (Pasetti) in view of Rigano.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. §
1.136(a)(l)(iv).
AFFIRMED
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