Ex Parte Prencipe et al

Patent Trial and Appeal Board

Dec 13, 2018

12866757 (P.T.A.B. Dec. 13, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/866,757 08/09/2010
23909 7590 12/17/2018
COLGATE-PALMOLIVE COMPANY
909 RIVER ROAD
PISCATAWAY, NJ 08855
FIRST NAMED INVENTOR
Michael Prencipe
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.
8560-00-US-01-0C 4245
EXAMINER
CHIANG, JENNIFER C
ART UNIT PAPER NUMBER
3754
NOTIFICATION DATE DELIVERY MODE
12/17/2018 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 MICHAEL PRENCIPE,
RICHARD SCOTT ROBINSON,
RICHARD J. SULLIVAN,
RAJNISH KOHLI, and
DIANE CUMMINS 1
Appeal2018-003453
Application 12/866,757
Technology Center 3700
Before MICHAEL L. HOELTER, LYNNE H. BROWNE, and
LISA M. GUIJT, Administrative Patent Judges.
HOELTER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from the
Examiner's Final Rejection of claims 1, 3, 7-9, 11-14, and 38-56. Final
Act. 1 (Office Action Summary). We have jurisdiction under 35 U.S.C.
§ 6(b ). For the reasons explained below, we do not find error in the
1 "The real party in interest for this appeal and for the above-referenced
application is Colgate-Palmolive Company by virtue of an assignment."
Appeal Br. 2. This is confirmed by the Application Data Sheet dated August
9, 2010. From this, and in accordance with 37 C.F.R. § 1.46, we understand
"Colgate-Palmolive Company" as the Appellant.
Appeal2018-003453
Application 12/866,757
Examiner's rejections of these claims. Accordingly, we AFFIRM the
Examiner's rejections.
THE CLAIMED SUBJECT MATTER
The disclosed subject matter "relates generally to toothbrushes, and,
more particularly, to a toothbrush which may have an oral care dispenser for
arginine." Spec. ,r 1. Apparatus claim 1 and method claim 38 are
independent. Claim 1 is illustrative of the claims on appeal and is
reproduced below.
1. A toothbrush comprising:
a handle having a reservoir disposed therein;
a head disposed at an end of the handle; and
an oral care element extending from an outer surface of the
head, the head having an outlet that is in fluid communication
with the reservoir;
wherein the reservoir contains a gel capsule comprising an
oral care composition comprising a basic amino acid in free or
salt form; and
wherein the handle includes a passageway leading from
the reservoir to the outlet of the head, and the oral care
composition being flowable from the reservoir to the outlet of the
head via the passageway.
REFERENCES RELIED ON BY THE EXAMINER
Hohlbein et al.
Gatzemeyer et al.
McCormack
US 7,331,731 B2
US 2008/0176183 Al
GB 2 354 441 A
THE REJECTIONS ON APPEAL
Feb. 19,2008
July 24, 2008
Mar. 28, 2001
Claims 1, 3, 7-9, 11-14, 38--46, 48-51, and 53-56 are rejected under
35 U.S.C. § I03(a) as unpatentable over Hohlbein and McCormack.
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Application 12/866,757
Claims 47 and 52 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Hohlbein, McCormack, and Gatzemeyer.
ANALYSIS
The rejection of claims 1, 3, 7-9, 11-14, 38--46, 48-51, and 53-56
as unpatentable over Hohlbein and McCormack
Appellant argues all the claims together. See App. Br. 5-9.
Accordingly, we select claim 1 for review, with the remaining claims (i.e.,
claims 3, 7-9, 11-14, 38--46, 48-51, and 53-56) standing or falling with
claim 1. See 37 C.F.R. § 4I.37(c)(l)(iv).
The Examiner primarily relies on the teachings of Hohlbein as
disclosing the limitations of claim 1 (including the disclosure of "a gel
capsule (Col 9, Ln 22--45)"), but relies on the teachings of McCormack for
teaching "an oral composition comprising a basic amino acid in free or salt
form in gel form." Final Act. 2--4. The Examiner states that it would have
been obvious "to substitute the oral care composition used in Hohlbein's
device with a gel oral care composition" in accordance with McCormack' s
teachings. Final Act. 4.
Appellant does not dispute the teachings of McCormack, but instead
addresses the teachings of Hohlbein. See App. Br. 5-8; see also App. Br. 9
("McCormack does not cure the deficiency of Hohlbein."). Appellant
contends, "Hohlbein does not teach or suggest a toothbrush having a gel
capsule in a reservoir located in the handle." App. Br. 5; see also id. at 7;
Reply Br. 2--4. Instead, Appellant contends, "[i]n Hohlbein's toothbrush, the
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Application 12/866,757
dispenser is located in the toothbrush head ... whereas claims 1 and 3 8
require that a handle has a reservoir disposed therein."2 App. Br. 5.
To be clear, when addressing Hohlbein, the Examiner referenced the
embodiment depicted in "Fig 11" which discloses a toothbrush handle
"having a reservoir (46) disposed therein." Final Act. 2; see also Ans. 9.
Indeed, Hohlbein describes the Figure 11 embodiment stating, "FIG. 11
illustrates another practice of the invention wherein the handle 14 has a
hollow chamber 46 in which the oral care material could be contained."
Hohlbein 9:22-24. Hence, Appellant's above contention regarding the lack
of "a handle [that] has a reservoir disposed therein" (App. Br. 5) is not
persuasive of Examiner error.
Thereafter, Appellant acknowledges the Examiner's reliance on
Figure 11 of Hohlbein, and replicates certain passages in Hohlbein that
describe this figure. App. Br. 5 (replicating, with emphasis, Hohlbein 9:22-
46). Nevertheless, Appellant contends, "[t]here is no indication in the above
disclosure that oral care products such as the gel capsule 32 could be
dispensed from the reservoir located in the handle." App. Br. 6 ( emphasis
added); see also id. at 7.
The referenced passages in Hohlbein which address the Figure 11
embodiment discuss the handle having "sufficient resiliency so that it can be
squeezed thereby forcing the material from the handle to the head."
Hohlbein 9:27-32. As regarding "gel capsule 32," the referenced passages
continue, "[a]ny suitable oral care products could be dispensed from the
2 "There is no explicit disclosure anywhere in Hohlbein of a gel capsule
dispenser placed in the hollow chamber in the handle of the toothbrush as
asserted by the Examiner." Reply Br. 3.
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Application 12/866,757
dispenser" and, more importantly, "[ s ]uch products include, but are not
limited to the gel capsule 32 as previously described." Hohlbein 9:33-35
( emphasis added). One such previous description states that a toothpaste, a
mouthwash "or similar dentifrice or oral hygiene product [maybe] contained
in the rupturable capsule 32." 3 Hohlbein 5:49-51.
Such express teachings readily contradict Appellant's contention, but
Appellant disagrees stating again that "Hohlbein explicitly discloses that an
oral care material dispenser is mounted in the head." App. Br. 6; see also
Reply Br. 2. Although Appellant's argument may be persuasive for other
embodiments disclosed in Hohlbein, Hohlbein's disclosure with respect to
the Figure 11 embodiment, (i.e., a squeezable reservoir in Hohlbein's
handle, and Hohlbein's teaching of a "dispensing cavity or one or more
dispensing openings" through which the dentifrice is forced (Hohlbein 9:30-
32)), supports the Examiner's findings.
Next, Appellant seeks to distinguish Hohlbein' s usage of the term
"oral care material" from "oral care product" and argues, "[t]here is no
teaching or suggestion anywhere in Hohlbein that an oral care product ( e.g.,
gel capsule) can be placed in the reservoir in the handle as asserted by the
Examiner." App. Br. 6; see also id. at 7; Reply Br. 2, 3. A closer inspection
of Hohlbein reveals that Hohlbein uses the terms "material" and "product"
interchangeably. For example, at one location, Hohlbein states, "[s]uch
products include, but are not limited to the gel capsule 32 as previously
described and could contain toothpaste, tooth powder or could be a small
3 "Preferably gel capsule 32 is a liquid-filled gel capsule having frangible,
thin walls that easily rupture or burst" such as when rubbed against teeth.
Hohlbein 5:51-54.
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vial of mouthwash having a gel, a powder or a liquid.". Hohlbein 9:33-36
(emphasis added). Elsewhere, Hohlbein states, "[t]he materials making up
gel capsule 32 and the oral or mouth care solution contained therein" are
consumable. Hohlbein 5:54--56 (emphasis added). Thus, Hohlbein uses
both terms interchangeably when describing the gel capsule and its contents.
See also Ans. 9. Hence, Appellant's desire to distinguish Hohlbein' s use of
"oral care material" from "oral care product" (see App. Br. 6; Reply Br. 2) is
not a fair reading of Hohlbein. Additionally, Appellant's effort to define
Hohlbein's usage of the term "chamber" (see Hohlbein 9:23, i.e., "handle 14
has a hollow chamber 46") to mean "a large room used for formal or public
events" (App. Br. 6) is simply not a reasonable definition when directed to
Hohlbein' s toothbrush.
In short, Appellant's attempt to contort the teachings of Hohlbein into
arguments that might support Appellant's position is not persuasive because,
as shown above, such contortions are not reasonably based, and thus are not
persuasive of Examiner error.
Appellant also contends the Examiner's conclusion of obviousness is
based on hindsight reasoning. See App. Br. 8. Appellant acknowledges that
"Hohlbein's toothbrush has a rupturable dispenser e.g., a rupturable gel
capsule." App. Br. 8. However, Appellant contends that because Hohlbein
teaches that this gel capsule is ruptured "or burst when rubbed against the
teeth," "Hohlbein does not disclose or teach anything regarding a gel
capsule placed in a reservoir located in the handle." App. Br. 8. In other
words "the Examiner's reasoning has been improperly gleaned from the
present specification and is thus improper." App. Br. 8.
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To better understand Appellant's contention, Appellant is basing the
above argument on Hohlbein's dispenser being located only in the head (i.e.,
"[a]s a whole, it is evident that Hohlbein relates to toothbrushes having an
oral care dispenser such as a gel capsule located in the toothbrush head."). 4
App. Br. 8; see also Reply Br. 2. However, Appellant is disregarding the
embodiment relied on by the Examiner (i.e., Hohlbein's Figure 11
embodiment (Final Act. 2, Ans. 9)) which clearly illustrates a reservoir and
passageway extending from head 12 into and along handle 14. Hence, in the
Figure 11 embodiment, Hohlbein' s oral care dispenser extends beyond just
the head of the toothbrush. Further, Hohlbein explicitly provides written
support for dispensing from a gel capsule stating:
[ a ]ny suitable oral care products could be dispensed from the
dispenser. Such products include, but are not limited to the gel
capsule 32 as previously described and could contain
toothpaste, toothpowder [ or the like].
Hohlbein 9:32-37. Accordingly, we are not persuaded by Appellant's
argument that the Examiner "improperly gleaned" the basis of the rejection
from Appellant's specification. App. Br. 8.
In summation, we are not persuaded the Examiner improperly rejected
claims 1, 3, 7-9, 11-14, 38--46, 48-51, and 53-56 as being obvious over
Hohlbein and McCormack. We sustain their rejection.
4 "There is no indication at all in in the disclosure [ of Hohlbein] that a gel
capsule would be located in the reservoir located in the handle." Reply Br.
3; see also App. Br. 7.
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Application 12/866,757
The rejection of claims 47 and 52
as unpatentable over Hohlbein, McCormack, and Gatzemeyer
Appellant does not separately argue the rejection of these claims.
Accordingly, we likewise sustain the Examiner's rejection of claims 47 and
52 as being obvious over Hohlbein, McCormack, and Gatzemeyer.
DECISION
The Examiner's rejections of claims 1, 3, 7-9, 11-14, and 38-56 are
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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