Ex Parte Pilch et al

Patent Trial and Appeal Board

Aug 1, 2016

13501901 (P.T.A.B. Aug. 1, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/501,901 04/13/2012
23909 7590 08/03/2016
COLGATE-PALMOLIVE COMPANY
909 RIVER ROAD
PISCATAWAY, NJ 08855
FIRST NAMED INVENTOR
Shira Pilch
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.
8815-00-0C 2634
EXAMINER
ROBERTS, LEZAH
ART UNIT PAPER NUMBER
1612
NOTIFICATION DATE DELIVERY MODE
08/03/2016 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 SHIRA PILCH, JAMES MASTERS, and BETTY WON
Appeal2015-003292
Application 13/501,901
Technology Center 1600
Before DEMETRA J. MILLS, JOHN G. NEW, and KRISTI L. R. SA WERT
Administrative Patent Judges.
MILLS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134. The Examiner has rejected
the claims for obviousness. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appeal2015-003292
Application 13/501,901
STATEMENT OF CASE
The following claim is representative.
1. An oral care composition comprising L-serine amino acid,
one or more metal chelating agents selected from Zn2+ and Sn2+
-containing compounds and an orally acceptable carrier for a
toothpaste, a dental cream, a mouthwash, a chewing gum or a denture
adhesive, wherein L-serine amino acid is present in the composition at
a concentration of 0.01 to 10% w/w and the one or more metal
chelating agents selected from Zn2+ and Sn2+ -containing compounds
is present in the composition at a concentration of 0.1 to 0.5 % w/w.
Cited References
Asano et al.
Barbeau et al.
Waterfield
Grounds of Rejection
us 4,568,540
US 6,762,160 B2
WO 2006/012987 Al
Feb.4, 1986
("Asano")
July 13, 2004
("Barbeau")
Feb.9,2006
1. Claims 1---6, 8, 10, 12-18, 20, and 22-24 are rejected under
35 U.S.C. § 103(a) as being unpatentable over Waterfield in view
of Barbeau.
2. Claims 1-5, 8-17, 20-24, 26, and 27 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Asano in view of Barbeau.
FINDINGS OF FACT
The Examiner's findings of fact are set forth in the Answer at pages
2-5. We adopt these findings as our own.
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Application 13/501,901
PRINCIPLES OF LAW
In making our determination, we apply the preponderance of the
evidence standard. See, e.g., Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427
(Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings
before the Office).
"In rejecting claims under 35 U.S.C. § 103, the examiner bears the
initial burden of presenting a prima facie case of obviousness. Only if that
burden is met, does the burden of coming forward with evidence or
argument shift to the applicant." In re Rijckaert, 9 F.3d 1531, 1532 (Fed.
Cir. 1993) (citations omitted).
"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).
Case law establishes, that if an examiner considers that he has found
prior art close enough to the claimed invention to give one skilled in the
relevant chemical art the motivation to make close relatives (homologs,
analogs, isomers, etc.) of the prior art compound(s), then there arises what
has been called a presumption of obviousness or a prima facie case of
obviousness. In re Henze, 181F.2d196, (CCPA 1950); In re Hass, 141
F.2d 122, 127 (CCPA 1944). The burden then shifts to the applicant, who
then can present arguments and/ or data to show that what appears to be
obvious, is not in fact that, when the invention is looked at as a whole. In re
Papesch, 315 F.2d 381, 50 CCPA 1084137 USPQ 43 (CCPA 1963). The
cases of Hass and Henze established the rule that, unless an applicant
showed that the prior art compound lacked the property or advantage
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Appeal2015-003292
Application 13/501,901
asserted for the claimed compound, the presumption of unpatentability was
not overcome. In re Dillon, 919 F.2d 688, 696 (Fed. Cir. 1990).
Rejection 1
We agree with, and adopt, the Examiner's fact finding, statement of
the rejection and responses to Appellants' arguments as set forth in the
Answer. We find that the Examiner has provided evidence to support a
prima facie case of obviousness. We provide the following additional
comment to the Examiner's argument set forth in the Final Rejection and
Answer. Appellants do not provide separate argument for dependent claims;
therefore we select claim 1 as representative of these rejections.
The Examiner finds that Waterfield teaches each element claimed,
except that Waterfield teaches inclusion of serine in an oral composition and
not the claimed L-serine. Ans. 2. The Examiner relies on Barbeau for the
disclosure of compositions for removing biofilms comprising L-serine. i~\~ns.
3. 1 The Examiner concludes that
It would have been obvious to one of ordinary skill in the
art to have used L-serine as the serine and hydrogen peroxide as
the bleaching agent in the compositions of Waterfield et al.
motivated by the desire to use a serine that not only acts as
chelating agent but also removes biofilm and to use a peroxy
compound that also has disinfecting properties as disclosed by
Barbeau et al.
Ans. 3.
1 Further evidence of record supports that when the general term "serine" is
used, such as in Waterfield, L-serine is contemplated. Pub Chem "Serine",
(http://pubchem.ncbi.nlm.nih.gov/summary/summary .cgi ?cid=595 l); Ans.
6.
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Appeal2015-003292
Application 13/501,901
In response, Appellants argue that
Waterfield specifically fails to teach Appellants' L-serine
in an oral care composition. To make up for this deficiency, the
Examiner appears to rely on Barbeau's use of L-serine in its
compositions for removing biofilms from a surface. However,
Barbeau is in a completely unrelated field (i.e., cleaning
surfaces susceptible to biofilm coating, such as dental unit
waterlines tubings used in the dental profession) from
Waterfield and Asano (oral compositions for dental
care/hygiene). Thus, one of ordinary skill in the art would not
use Barbeau in this 35 USC 103 analysis and it is improper for
the Examiner to do so as well.
Br. 4. We are not persuaded. Waterfield's oral composition already
includes serine as a chelating agent. Page 4, 1. 10-14. In Waterfield, the
serine chelating agent is used to preserve the bioavailability of zinc ions and
their ability to act as anti-microbial agents. Page 2, 11. 21-24; Col. 3, 11. 4--
14. In Barbeau, the serine is used as an acid for its biofilm dislodging
potency. Col. 3, 11. 45---63. The disclosure of serine in the oral composition
of Waterfield alone is sufficient to support a prima facie case of obviousness
based on the close chemical structure of isomers. In re Dillon, 919 F .2d
688, 696 (Fed. Cir. 1990). Moreover,
[ w ]hen there is a design need or market pressure to solve a
problem and there are a finite number of identified, predictable
solutions, a person of ordinary skill has good reason to pursue
the known options within his or her technical grasp. If this
leads to the anticipated success, it is likely the product not of
innovation but of ordinary skill and common sense.
KSR, 550 U.S. at 421.
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Appeal2015-003292
Application 13/501,901
We agree with the Examiner that it would have been obvious to one of
ordinary skill in the art at the time of the invention to use the L-serine of
Barbeau, an alternative form of the serine, in the oral composition of
Waterfield, in place of the serine in Waterfield. Barbeau discloses it is well-
known to include biofilm prevention compounds in oral compositions such
as mouthwashes. Col. 9, 11. 24-37. Barbeau further discloses that acids,
such as serine, have biofilm dislodging potency. Col. 3, 11. 45-63.
Appellants provide no persuasive evidence of secondary
considerations and do not compare the claimed composition with that of the
closest prior art, Waterfield. Nor do we find that the Examiner has engaged
in hindsight reconstruction of Appellants' invention. The Examiner is
relying on the oral composition of Waterfield comprising serine, and
knowledge that L-serine is useful for removal ofbiofilms in view of
Barbeau. Thus, the Examiner properly relies on the prior art, not
i\.ppellants' disclosure.
Rejection 1 is affirmed for the reasons of record.
Rejection 2
Appellants essentially reiterate the same arguments presented for
Waterfield and Barbeau in response to the rejection in view of Asano and
Barbeau. For the reasons discussed herein, and of record, we affirm the
rejection of Asano in view of Barbeau.
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Application 13/501,901
CONCLUSION OF LAW
The cited references support the Examiner's obviousness rejections,
which are affirmed for the reasons of record. All pending, rejected claims
fall.
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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