Ex Parte Prencipe et al

Patent Trial and Appeal Board

Mar 2, 2016

12866624 (P.T.A.B. Mar. 2, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/866,624 08/06/2010
23909 7590 03/04/2016
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.
8575-00-0C 3080
EXAMINER
ROBERTS, LEZAH
ART UNIT PAPER NUMBER
1612
NOTIFICATION DATE DELIVERY MODE
03/04/2016 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
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,
RAJNISH KOHLI, RICHARD J. SULLIVAN, and DIANE CUMMINS
Appeal2014-002694
Application 12/866,624
Technology Center 1600
Before DEMETRA J. MILLS, JEFFREY N. FREDMAN, and
JACQUELINE T. HARLOW, 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.
Appeal2014-002694
Application 12/866,624
STATEMENT OF CASE
The following claims are representative.
1. An instrument selected from a toothbrush, a toothpick, a tongue
cleaner, a mouth guard, and an orthodontic corrective device, wherein at least
a portion of the instrument is coated with a composition comprising a basic
amino acid in free or salt form embedded in a bioerodable polymer.
7. The instrument of claim 1 wherein the basic ammo acid is selected
from arginine, lysine, citrullene, omithine, creatine, histidine,
diaminobutanoic acid, diaminopropionic acid, salts thereof and combinations
thereof.
Cited References
Kleinberg et al. US 6,217,851 Bl Apr. 17, 2001
(hereinafter "Kleinberg")
Brown et al. US 2007/0181144 Al Aug. 9, 2007
(hereinafter "Brown")
Forward, Non-Fluoride Anticaries Agents, 8 ADV. DENT. RES. 208-
214 (1994).
Grounds of Rejection
1. Claims 1, 2, 8-11, 13-19, 25, and 29-32 are rejected under
35 U.S.C. § 103(a) as being unpatentable over Brown in view of
Kleinberg.
2. Claim 12 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Brown, Kleinberg and Forward.
FINDINGS OF FACT
The Examiner's findings of fact are set forth in the Answer at pages
3---6. The following facts are highlighted.
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Application 12/866,624
1. The Examiner concludes that the term "embedded" means, "to
make something an integral part of' (Webster's Ninth New
Collegiate Dictionary, Merriam-Webster INC, Springfield,
Massachusetts, USA, pg. 405). "' Ans. 6---7.
2. According to the Specification, the bioerodable polymer is
dissolved or monomer thereof in a solvent to form a solution and a
basic amino acid is admixed in said solution. Spec. i-f 10.
3. No specific definition of "embedded" is provided in the
Specification.
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). The Board "determines the scope of claims in patent
applications not solely on the basis of the claim language, but upon giving
claims their broadest reasonable construction 'in light of the specification as
it would be interpreted by one of ordinary skill in the art."' Phillips v. AWH
Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (quoting In re Am. Acad. of Sci.
Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).
"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). In order to determine whether a prima facie
case of obviousness has been established, we consider the factors set forth in
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Application 12/866,624
Graham v. John Deere Co., 383 U.S. 1, 17 (1966): (1) the scope and content
of the prior art; (2) the differences between the prior art and the claims at
issue; (3) the level of ordinary skill in the relevant art; and ( 4) objective
evidence of nonobviousness, if present.
"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).
Rejection 1
We agree with the Examiner's fact finding, statement of the rejection
and responses to Appellants' arguments as set forth in the Answer. We
provide the following additional comment to the Examiner's argument set
forth in the Final Rejection and Answer.
We find that the Examiner has provided sufficient evidence to support
a prima facie case of obviousness. Bro\'l/n teaches a disposable, dental
device, including brushes. i-fi-12, 11, 162. The device incorporates a dry-to-
the-touch film former, which includes methyl cellulose and other cellulosics.
i-f l 01. The Brown brushes may also include a chemotherapeutic agent in
addition to a flavoring, "wherein said chemotherapeutic ingredient is
selected from the group consisting of antimicrobials, anti-tartar substances,
antiplaque substances, remineralizing agents, desensitizing agents, NSAIDs,
antibiotics, nutraceuticals and combinations thereof." i-f 113, claim 19.
Buffering ingredients may also be added to the coatings. i-f l 07. Buffering
ingredients include alkali metal salts of a weak organic acid, and weak
organic acids or salts of weak bases. i-f l 07.
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Application 12/866,624
Kleinberg teaches that it is well known in the art to include cariostatic
agents to combat dental caries. Col. 2, 11. 45-56. The cariostatic oral
compositions of Kleinberg contain therapeutic amounts of calcium, arginine
and a cariostatic anion. Id. According to Kleinberg,
Arginine favors the formation of base by the dental
plaque bacteria and the proliferation of an alkali producing
microflora in plaque. . . . The acids produced by many of the
plaque bacteria are neutralized by the alkli compounds
produced from arginine, whether or not the amino acid is found
free or becomes available from peptides or proteins, especially
from saliva.
Id. The cariostatic anions of Kleinberg may
(i) provide buffering which enhance the acid neutralizing
activity of the arginine as well as neutralizing the acid itself, (ii)
provide an organic phosphate source to act as a surface
covering or "poison" or to be hydrolyzed by the plaque bacteria
to release inorganic orthophosphate which inhibits tooth
dissolution and enhances tooth remineralization.
(Col. 3, 11. 4--12.)
We agree with the Examiner that it would have been obvious "to
combine two compositions, each of which is taught by the prior art to be
useful for same purpose, in order to form a third composition to be used for
the very same purpose." Ans. 4. The idea of combining them flows
logically from their having been individually taught in the prior art for the
same purpose, treatment of dental caries. In re Kerkhoven, 626 F .2d 846,
850 (CCPA 1980). Alternatively, we find that it would have been obvious to
one of ordinary skill in the art at the time of the invention to include an
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Application 12/866,624
arginine buff er as suggested by Kleinberg into the coating of the brush of
Brown which may include a buffering agent to treat dental caries.
Appellants argue that the Examiner provides no evidence of a basic
amino acid in free or salt form embedded in a bioerodable polymer. Br. 3.
We are not persuaded. No specific definition of "embedded" is provided in
the Specification. According to the Specification, the bioerodable polymer
is dissolved or monomer thereof in a solvent to form a solution and a basic
amino acid is admixed in said solution. The solution is then dried. Spec.
iT 10.
The Examiner concludes that the term "embedded" means, "to make
something an integral part of (Webster's Ninth New Collegiate Dictionary,
Merriam-Webster INC, Springfield, Massachusetts, USA, pg. 405). "' Ans.
6-7. Appellants have fail to distinguish the addition of arginine to the
coating of Brown from the Examiner's definition of "embedded" or the
incorporation of the amino acid into the polymer as set forth in the Spec. i-f
10. See In re Zletz, 893 F.2d 319, 322 (Fed. Cir. 1989) ("[D]uring patent
prosecution when claims can be amended, ambiguities should be recognized,
scope and breadth of language explored, and clarification imposed.")
The obviousness rejection is affirmed for the reasons of record.
Rejection 2
With respect to the rejection of claim 12, Appellants essentially
reiterate their arguments with respect to rejection 1. Appellants argue that,
"[t]here is no teaching that the arginine of Kleinberg would adsorb to the
coatings of Brown like the volatile flavors taught in Brown." Br. 9. As
discussed herein, we are not persuaded. Buffering ingredients and
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cariostatic agents may be added to the Brown coatings. i-f 107. Brown
cariostatic agents/buffering ingredients include alkali metal salts of a weak
organic acid, and weak organic acids or salts of weak bases. i-f 107.
Kleinberg discloses it is known and desired to include arginine buffering
agents in dental compositions. (Col. 3, 11. 4--12.)
Appellants have failed to rebut the Examiner's prima facie case of
obviousness of Claim 12, and the rejection is affirmed.
Claim 7
With respect to claim 7, Appellants argue that the Examiner has
provided no reason for rejection of claim 7, which was not specifically
mentioned in the final rejection. Br. 11. Claims 7 and 9 include overlapping
subject matter and require that the basic ammo acid is selected from
arginine. Kleinberg was specifically added to the Examiner's rejection to
address the subject matter of claims 7 and 9. \Ve consider the partial
omission of claim 7 from the final rejection 1 and its correction in the
Answer, page 3, to be merely a typographical error. Appellants had a full
and fair opportunity to address the rejection of the subject matter of claim 7,
as it is a broader version of the subject matter of claim 9, and they were
aware of the typographical error, as indicated in the Brief. Br. 11-12.
1 As noted by Appellants, claim 7 was included in the cover sheet
accompanying the final rejection. Br. 11.
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CONCLUSION OF LAW
The cited references support the Examiner's obviousness rejections,
which are affirmed. All pending 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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