Ex Parte Tung

Board of Patent Appeals and Interferences

Apr 1, 2010

10868880 (B.P.A.I. Apr. 1, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte MING S. TUNG
__________

Appeal 2009-013455
Application 10/868,880
Technology Center 1600
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Decided: April 1, 2010
__________

Before DONALD E. ADAMS, FRANCISCO C. PRATS, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal under 35 U.S.C. § 134 involving claims to a calcium
peroxyphosphate compound. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

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Statement of the Case
Background
“Various dental products have been formulated to address plaque
formation and tooth whitening” (Spec. 2, ll. 16-17). According to the
Specification, “[e]specially desired are compositions that comprise a
whitening/stain removal agent (e.g., a source of peroxide and/or active
oxygen) with sources of calcium ions and phosphate ions to remineralize
teeth, thereby filling voids, adding strength, and reducing sensitivity” (Spec.
5, ll. 5-8).
The Claims
Claims 1, 4, and 6 are on appeal. Claims 1, 4, and 6 read as follows:
1. A calcium peroxyphosphate compound or a hydrate or a
peroxyhydrate thereof, wherein said calcium peroxyphosphate
compound is a calcium peroxymonophosphate or a calcium
diperoxymonophosphate compound in solid form and having Formula
(I):
CaqHx(PHOS)y(OH)z (I)

or a hydrate or a peroxyhydrate thereof,
wherein q is ½ • (3y + z -x); x is from 0 to 8; y is an integer from 1 to
3; z is from 0 to 1; x < 3y;
and PHOS is peroxymonophosphate having the formula PO5 or
diperoxymonophosphate having the formula PO6.

4. The calcium peroxyphosphate compound of claim 1, wherein
said compound is a calcium peroxymonophosphate compound.

6. The compound of claim 4, wherein said compound is selected
from the group consisting of CaHPO5, Ca(H2PO5)2, Ca3(PO5)2,
Ca4H(PO5)3, Ca5(PO5)3OH, and hydrates and peroxyhydrates thereof.

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The prior art
The Examiner relies on the following prior art references to show
unpatentability:
Lake et al. US 3,085,856 Apr. 16, 1963
Gaffar et al. US 4,041,149 Aug. 9, 1977
Orlowski et al. US 6,447,757 B1 Sep. 10, 2002

The issue
The Examiner rejected claims 1, 4, and 6 under 35 U.S.C. § 103(a) as
obvious over Orlowski and Gaffar (Ans. 3-4).
The Examiner finds that “Orlowski disclose teeth whitening
compositions comprising peroxide generating compounds comprising
monovalent and divalent metals such as calcium peroxide” (Ans. 3). The
Examiner acknowledges that Orlowski “does not disclose a calcium
peroxymonophosphate compound as the peroxide generating agent” (Ans.
3). The Examiner finds that “Gaffar et al. disclose oral compositions
comprising peroxydiphosphate salts, which hydrolyze in situ to form
peroxymonophosphate ions. The salts include calcium dihydrogen
peroxydiphosphate” (Ans. 3). The Examiner concludes that it would have
been obvious to make “calcium peroxydiphosphate or a calcium
peroxymonophosphate to use in the compositions of Gaffar et al. instead of
the potassium salts of peroxydiphosphate motivated by the desire to make a
peroxyphosphate salt that have a mineralizing effect on dentin as well as a
whitening effect on the teeth” (Ans. 4).
Appellant argues that “[n]either Orlowski nor Gaffar suggests the
claimed calcium peroxymonophosphate compounds in solid form, as
claimed” (App. Br. 10). Appellant argues that “Gaffar does not remedy the
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deficiency of Orlowski in failing to suggest the claimed compounds. Gaffar
describes the generation of peroxymonophosphate anion (i.e., dissolved in
solution), not a solid form of any peroxymonophosphate” (App. Br. 11).
Appellant argues that:
Orlowski’s objective of increasing the rate of
hydrogen peroxide generation is directly at odds with that of
Gaffar. Gaffar specifically teaches the use of
peroxydiphosphate salts because of their (i) “unusually
stability” in aqueous media and (ii) utilization the
phosphatase enzyme found in saliva to continuously
generate hydrogen peroxide “over a prolonged period, e.g.,
several months.”

(App. Br. 13). Appellant argues that “neither Orlowski nor Gaffar puts the
public in possession of the claimed invention, by describing how to make
calcium peroxymonophosphates in solid form” (App. Br. 17).
In view of these conflicting positions, we frame the obviousness issue
before us as follows:
Has Appellant demonstrated that the Examiner erred in concluding
that Orlowski and Gaffar render obvious a calcium peroxyphosphate
compound of formula I in solid form?
Findings of Fact (FF)
1. Orlowski teaches a “new teeth whitening system comprising at
least two parts separated from each other during storage” (Orlowski, col. 4,
ll. 6-8).
2. Orlowski teaches that the “first component, Part 1, is preferably
of a gel or past consistency . . . Part 1 comprises one or more metal peroxide
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. . . [p]referred peroxides include calcium peroxide” (Orlowski, col. 4, ll. 22-
26).
3. Orlowski teaches that “Part 2 comprises a solution of one or
more acids in water or aqueous solution which may be modified to achieve a
desired consistency” (Orlowski, col. 4, ll. 46-48).
4. Orlowski teaches that “[f]ormulations of the present invention
are hydrous because hydrogen peroxide is commercially available only in
aqueous solutions” (Orlowski, col. 6, ll. 1-3).
5. Orlowski teaches that “[c]alcium salts generated during the
synthesis of hydrogen peroxide also have a mineralizing effect on enamel
and dentin, further enhancing the whitening effect and contributing to the
improved health of oral hard tissues” (Orlowski, col. 6, ll. 7-11).
6. Orlowski teaches that “[p]referred whitening compositions are
characterized, in part, by their ability to generate atomic (radical) oxygen at
a significantly faster rate than is possible in conventional hydrogen peroxide
or carbamide peroxide based teeth whitening systems” (Orlowski, col. 3, ll.
25-29).
7. Gaffar teaches “an oral composition containing a non-staining,
non-antimicrobial mouth odor inhibitor” (Gaffar, col. 1, ll. 26-27).
8. Gaffar teaches that “tetrapotassium peroxydiphosphate
(K4P2O8) is an oxidizing agent which slowly releases hydrogen peroxide in
the presence of phosphatase enzymes found in saliva” (Gaffar, col. 1, ll. 41-
44).
9. Gaffar teaches that any “of the alkali metal peroxydiphosphates
or their corresponding acid salts that are water-soluble . . . can be used in the
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composition of this invention. Examples of these are . . . calcium
dihydrogen peroxydiphosphate (CaH2P2O8)” (Gaffar, col. 7, l. 60 to col. 8, l.
15).
10. Gaffar teaches that “the unusual stability of the
peroxydiphosphate in aqueous solution requires the addition of the
phosphatase enzyme which is found in saliva, in order to generate the
peroxymonophsophate [sic] anion (PO5-3) which is slowly hydrolyzed to
hydrogen peroxide and orthophosphate; the rate of peroxymonophosphate
hydrolysis being slow” (Gaffar, col. 2, ll. 33-39).
11. Gaffar teaches that “[e]xtremely low phosphatase concentration
can continue to generate PO5-3 over a prolonged period of time, e.g., several
months” (Gaffar, col. 2, ll. 40-42).
12. The Examiner finds that Gaffar “does not disclose the calcium
peroxymonophosphate, only the peroxymonophosphate ion” (Ans. 4).
Principles of Law
“[T]he [E]xaminer bears the initial burden, on review of the prior art
or on any other ground, of presenting a prima facie case of unpatentability.”
In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). On appeal to this
Board, Appellants must show that the Examiner has not sustained the
required burden. See Ex parte Yamaguchi, 88 USPQ2d 1606, 1608 and 1614
(BPAI 2008) (precedential); Ex parte Fu, 89 USPQ2d 1115, 1118 and 1123
(BPAI 2008) (precedential).
An invention:
composed of several elements is not proved obvious merely
by demonstrating that each of its elements was,
independently, known in the prior art …. [I]t can be
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important to identify a reason that would have prompted a
person of ordinary skill in the relevant field to combine the
elements in the way the claimed new invention does.

KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
Analysis
Orlowski teaches a tooth whitening system which employs hydrogen
peroxide and calcium salts (FF 1-5), but the Examiner acknowledges that
Orlowski “does not disclose a calcium peroxymonophosphate compound as
the peroxide generating agent” (Ans. 3). Gaffar teaches the use of
peroxydiphosphate for reduction of mouth odor (FF 7-9), but the Examiner
acknowledges that Gaffar “does not disclose the calcium
peroxymonophosphate, only the peroxymonophosphate ion” (Ans. 4; FF
12).
Appellant makes two separate arguments for error in the obviousness
rejection. Appellant first argues that “neither Orlowski nor Gaffar puts the
public in possession of the claimed invention, by describing how to make
calcium peroxymonophosphates in solid form” (App. Br. 17).
The Examiner argues that “[t]aking the evidence disclosed by
Applicant into account, one of ordinary skill in the art would be aware that
possible inactivation of the enzyme responsible for generating the
peroxymonophosphate ion in the mouth by calcium would occur and would
be further motivated to actually make the solid form of calcium
monoperoxyphosphate” (Ans. 5).
We find that Appellant has the better position. The Examiner has
provided no evidence that inactivation of phosphatase enzymes in saliva
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occurs or would be expected to occur, and hence no reason why the ordinary
artisan informed by Gaffar of the efficacy of peroxydiphosphate treatments
for mouth odor would have replaced these with the peroxymonophosphate.
Appellant also argues that:
Orlowski’s objective of increasing the rate of
hydrogen peroxide generation is directly at odds with that of
Gaffar. Gaffar specifically teaches the use of
peroxydiphosphate salts because of their (i) “unusually
stability” in aqueous media and (ii) utilization the
phosphatase enzyme found in saliva to continuously
generate hydrogen peroxide “over a prolonged period, e.g.,
several months.”

(App. Br. 13).
The Examiner responds that “[o]ne of skill in the art would recognize
the benefit of using a calcium salt in oral compositions for the promotion of
oral health” (Ans. 5).
We find that here too, Appellant has the better position. Whether the
long term presence of calcium compounds would promote oral health or not
fails to address the disconnect between the Orlowski and Gaffar references.
Orlowski clearly teaches and prefers rapid generation of atomic oxygen for
tooth whitening (FF 6). Gaffar equally clearly teaches exceptional stability
of the peroxydiphosphate, teaching that “[e]xtremely low phosphatase
concentration can continue to generate PO5-3 over a prolonged period of
time, e.g., several months” (Gaffar, col. 2, ll. 40-42; FF 10-11). The
combination of the references does not provide a reason to modify the
peroxydiphosphate of Gaffar for tooth whitening of Orlowski in view of the
very high stability and slow release of the peroxydiphosphate and
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peroxymonophosphate over months relative to the rapid effects desired by
Orlowski (FF 6, 10, 11).
Conclusion of Law
Appellant has demonstrated that the Examiner erred in concluding
that Orlowski and Gaffar render obvious a calcium peroxyphosphate
compound of formula I in solid form.
SUMMARY
In summary, we reverse the rejection of claims 1, 4 and 6 under 35
U.S.C. § 103(a) over Orlowski and Gaffar.

REVERSED

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