Ex Parte Robinson et al

Patent Trial and Appeal Board

Apr 28, 2017

13817266 (P.T.A.B. Apr. 28, 2017)

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.
13/817,266 02/15/2013 Richard Scott Robinson 9100-00-OC 4628
23909 7590 05/02/2017
COLGATE-PALMOLIVE COMPANY
909 RIVER ROAD
PISCATAWAY, NJ 08855
EXAMINER
WEBB, WALTER E
ART UNIT PAPER NUMBER
1612
NOTIFICATION DATE DELIVERY MODE
05/02/2017 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):
Paten t_Mail @ colpal. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RICHARD SCOTT ROBINSON, RICHARD J. SULLIVAN, and
RAJNISH KOHLI1
Appeal 2016-006227
Application 13/817,266
Technology Center 1600
Before ULRIKE W. JENKS, JOHN E. SCHNEIDER,
And RACHEL H. TOWNSEND, Administrative Patent Judges.
SCHNEIDER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35U.S.C. § 134 involving claims to oral care
compositions, which have been rejected as anticipated and as obvious. We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
STATEMENT OF THE CASE
The addition of basic amino acids such as arginine to oral care
composition is believed to help promote the growth of beneficial bacteria
1 Appellants identify the Real Party in Interest as Colgate-Palmolive
Company, Inc. Br. 2.
Appeal 2016-006227
Application 13/817,266
such as S. sanguis. Spec. 19. However, the use of amino acids in oral care
compositions has proved problematic in that the amino acid can raise the pH
of the composition which can cause undesirable interactions between
components such as strontium and fluoride. Spec. 11. The present
invention is directed to an oral care composition which overcomes the
problems encountered using basic amino acids.
Claims 1, 2, 4, 5, 8, 9, 11, and 15—21 are on appeal. Claim 1 is the
sole independent claim and reads as follows:
1. An oral care composition comprising
a. an effective amount of a basic amino acid, in free or
salt form,
b. a water soluble strontium salt in an amount of from 0.1
% to 15% by weight; wherein the water soluble strontium salt is
selected from strontium acetate; strontium chloride; strontium
nitrate; strontium lactate; strontium bromide; and a combination
of two or more thereof;
the oral care composition being in the form of a
dentifrice or a mouth rinse.
The claims stand rejected as follows.
Claim 1 has been rejected under 35 U.S.C. § 102(b) as anticipated by
Hahn.2
Claim 1 has also been rejected under 35 U.S.C. § 103(a) as
unpatentable over Hahn,
2 Hahn et al., US 5,804,203, issued Sept. 8, 1998 (“Hahn”).
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Application 13/817,266
Claims 1, 2, 4, 5, and 15—17 have been rejected under 35 U.S.C. §
103(a) as unpatentable over Gibbs3 in view of Hartlaub.4
Claims 8, 9, 18, and 19 have been ejected under 35 U.S.C. § 103(a) as
unpatentable over Gibbs in view of Hartlaub in further view of Norfleet.5
Claims 11, 20, and 21 have been rejected under 35 U.S.C. § 103(a) as
unpatentable over Gibbs in view of Hartlaub and Norfleet in further view of
Hill.6
ANTICIPATION
Issue
The issue with respect to this rejection is whether a preponderance of
evidence supports the Examiner’s finding that claim 1 is anticipated by
Hahn.
The Examiner finds that Hahn discloses topical compositions
containing strontium salts such as strontium nitrate and lysine, a basic amino
acid. Final Act. 2. The Examiner finds that Hahn teaches that the
composition can take the form of gargles and mouthwashes. Id. The
Examiner concludes that Hahn is anticipatory in that it teaches a
composition comprising “an effective amount of a basic amino acid in free
or salt form, a water soluble strontium in an amount from 0.1% to 15% by
weight.” Final Act. 3.
3 Gibbs, EP 0711543 Al, published May 15, 1996 (“Gibbs”).
4 Hartlaub et al., US 4,871,531, issued Oct. 3, 1989 (“Hartlaub”).
5 Norfleet et al., US 5,240,697, issued Aug. 31, 1993 (“Norfleet”).
6 Hill et al., US 2009/0208428 Al, published Aug. 20, 2009 (“Hill”).
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Application 13/817,266
Appellants contend that Hahn does not anticipate in that the
compositions of example 18 contain ingredients that render the compositions
unsuitable for use as an oral care product. Appeal Br. 6. Appellants argue
that the presence of glycolic acid and Germaben II are not appropriate for
use in ingestible compositions. Id. Appellants also argue that the pH of the
composition in Hahn renders it unsuitable as an oral care product. Id.
Analysis
We adopt the Examiner’s findings of fact, reasoning on scope and
content of the prior art, and conclusions set out in the Final Action and
Answer regarding this rejection. We find the Examiner has established that
the claims are anticipated by Hahn. Appellants have not produced evidence
showing, or persuasively argued, that the Examiner’s determinations on
anticipation are incorrect. Only those arguments made by Appellants in the
Briefs have been considered in this Decision. Arguments not presented in
the Briefs are waived. See 37 C.F.R. § 41.37(c)(l)(iv). We address
Appellants’ arguments below.
Appellants contend that the composition recited in example 18 of
Hahn does not anticipate in that it is not suitable for use as a gargle or
mouthwash. Appeal Br. 6. Appellants point to the inclusion of glycolic acid
and Germaben II as evidence that the composition is not suitable for
ingestion. Id. We are unpersuaded. As the Examiner points out, it was
known in the art that preservatives such as glycolic acid and antimicrobials
such as Germaben II have been used in oral care compositions. Ans. 7. We
agree with the Examiner that the compositions encompassed in example 18
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Application 13/817,266
of Hahn would have been suitable for oral application. Id. We also not
persuaded by Appellants contention that the Examiner’s citation to Vermeer
and Glandorf somehow establishes that Hahn’s disclosure is inadequate. See
Reply Br. 2. Here, the Examiner merely proffered evidence to rebut
Appellants position that glycolic acid is indeed suitable for oral application.
See Ans. 7.
With respect Appellants’ argument regarding the pH of example 18,
again we are unpersuaded. Appellants have offered no evidence other than
attorney argument that the recited pH would be detrimental to teeth. Appeal
Br. 6. “Attorneys’ argument is no substitute for evidence.” Johnston v.
IVAC Corp., 885 F.2d 1574, 1581 (Fed. Cir. 1989).
Conclusion of Law
We conclude that a preponderance of the evidence supports the
Examiner’s conclusion that clam 1 is anticipated by Hahn.
OBVIOUSNESS
HAHN
Having affirmed the Examiner’s conclusion that claim 1 is anticipated
by Hahn we also affirm the Examiner’s conclusion that claim 1 would have
been obvious over Hahn. “It is well settled that ‘anticipation is the epitome
of obviousness.’” In re McDaniel, 293 F.3d 1379, 1385 (Fed. Cir. 2002)
(quoting Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir.
1983)).
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Application 13/817,266
GIBBS COMBINED WITHHARTLAUB
Issue
The issue with respect to this rejection is whether a preponderance of
the evidence supports the Examiner’s conclusion that claims 1, 2, 4, 5, and
15—17 would have been obvious over Gibbs combined with Hartlaub under
35 U.S.C. § 103(a)
The Examiner finds that Gibbs teaches oral preparations comprising
pyruvic acid or a salt thereof and arginine. Ans. 3. The Examiner finds that
Hartlaub teaches an oral composition which containing strontium salts such
as strontium chloride. Id. The Examiner concludes that it would have been
obvious to one skilled in the art to add strontium to the composition of Gibbs
to enhance the anti-caries capability of Gibbs. Id.
Appellants contend that the Examiner has not set forth a proper reason
to combine the references in that Gibbs and Hartlaub use strontium for
different purposes. Appeal Br. 9. Appellants also argue that one skilled in
the art would not have a reasonable expectation of success in combining the
teachings of the two references. Appeal Br. 10.
Analysis
We adopt the Examiner’s findings of fact, reasoning on scope and
content of the prior art, and conclusions set out in the Final Action and
Answer regarding this rejection. We find the Examiner has established that
the claims would have been obvious over Gibbs combined with Hartlaub.
Appellants have not produced evidence showing, or persuasively argued,
that the Examiner’s determinations on anticipation are incorrect. Only those
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Application 13/817,266
arguments made by Appellants in the Briefs have been considered in this
Decision. Arguments not presented in the Briefs are waived. See 37 C.F.R.
§ 41.37(c)(l)(iv) (2015). We have identified claim 1 as representative;
therefore, all claims fall with claim 1. We address Appellants’ arguments
below.
We find Appellants’ contention that there is no motivation to
combine the teachings of Gibbs with Hartlaub unpersuasive. Appeal Br. 8—
9. Both Gibbs and Hartlaub are directed to oral care compositions. Gibbs
Abstract, Hartlaub Abstract. Gibbs teaches the use of basic amino acids
such as arginine to improve the anti-caries capability of an oral care
composition. Gibbs 1. Similarly, Hartlaub teaches that strontium salts can
enhance the anti-caries and remineralization activity of fluoride used in oral
care compositions. Hartlaub col. 1,11. 16—18. The claimed combination is
nothing more than a combination of familiar elements according to known
methods which is generally found to be obvious when the results are as
predicted. KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). Here
Appellants have offered no evidence that the claimed composition offers
unexpected results.
We are also not persuaded by Appellants’ contention that one skilled
in the art would not have a reasonable expectation of success. Appeal Br.
10. Appellants contend that Hartlaub does not teach that strontium would
enhance the benefit of fluorine in the presence of arginine. Id. As the
Examiner points out, Appellants have offered no evidence that arginine
would “derail the reasonable expectation of success from the combination of
strontium chloride and the compositions of Gibbs.” Ans. 9. Appellants have
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only presented attorney argument that arginine might interfere with the
action of strontium.
Conclusion of Law
We conclude that a preponderance of the evidence supports the
Examiner’s conclusion that claim 1 would have been obvious over Gibbs
combined with Hartlaub under 35 U.S.C. § 103(a).
GIBBS COMBINED WITH HARTLA UB AND NORFLEET and
GIBBS COMBINED WITH HARTLAUB, NORFLEET AND HILL
Appellants’ arguments with respect to these rejections are that neither
Norfleet nor Hill cure the deficiencies of Gibbs and Hartlaub. As we found
above, the combination of Gibbs and Hartlaub is not deficient. We therefore
affirm these rejections.
SUMMARY
We affirm the rejection under 35 U.S.C. § 102(b).
We affirm the rejections under 35 U.S.C. § 103(a)
TIME PERIOD FOR RESPONSE
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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