Johansson, Patrik et al.

Patent Trials and Appeals Board

Jan 23, 2020

14925457 - (D) (P.T.A.B. Jan. 23, 2020)

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.
14/925,457 10/28/2015 Patrik Johansson 10245-00-US-01-OC 9273
23909 7590 01/23/2020
COLGATE-PALMOLIVE COMPANY
909 RIVER ROAD
PISCATAWAY, NJ 08855
EXAMINER
FOLGMANN, DREW S
ART UNIT PAPER NUMBER
3772
NOTIFICATION DATE DELIVERY MODE
01/23/2020 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 PATRIK JOHANSSON, STACEY LAVENDER, SCOTT
DEMAREST, RICHARD ADAMS, THOMAS BOYD, and
MADHUSUDAN PATEL
Appeal 2019-002150
Application 14/925,457
Technology Center 3700
Before JENNIFER D. BAHR, WILLIAM A. CAPP, and
JEREMY M. PLENZLER, Administrative Patent Judges.
PLENZLER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 32–35, 37–42, 44, 45, 47–49, and 51–
55. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Colgate-Palmolive
Company. Appeal Br. 2.
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Application 14/925,457

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CLAIMED SUBJECT MATTER
The claims are directed to a method of whitening teeth. Claim 32,
reproduced below, is illustrative of the claimed subject matter:
32. A method of whitening teeth comprising:
a) applying a tooth whitening agent to the tooth, the tooth
whitening agent comprising hydrogen peroxide in a
concentration ranging from of 2 wt. % to 10 wt. % based on the
total weight of the tooth whitening agent; and
b) continuously irradiating a tooth with light generated by a
light source for an irradiation time period, the light having a
wavelength that ranges from 375 nm to 420 nm and the light
source emitting the light at an irradiance density ranging from
0.3 mW/cm2 to 8.1 mW/cm2.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Montgomery ’955 US 8,562,955 B2 Oct. 22, 2013
Soukos US 2005/0064371 A1 Mar. 24, 2005
Montgomery ’253 US 2008/0032253 A1 Feb. 7, 2008
REJECTIONS2
Claims 32–35, 37–42, 44, 52, and 53 are rejected under 35 U.S.C.
§ 103 as being unpatentable over Montgomery ’253 and Montgomery ’955.

2 The Final Office Action includes rejections under 35 U.S.C. § 112. Final
Act. 2–3. Those rejections were overcome by an amendment as
acknowledged by the Advisory Action mailed June 7, 2018. Nevertheless,
the Examiner’s Answer repeats those rejections. Ans. 2–3. In view of the
amendment and Advisory Action noted above, however, we understand this
portion of the Examiner’s Answer to be an error.
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Claims 45, 47–49, 51, 54, and 55 are rejected under 35 U.S.C. § 103
as being unpatentable over Montgomery ’253, Montgomery ’955, and
Soukos.
OPINION
Appellant argues claims 32–35, 37–42, 44, 52, and 53, as a first
group. Appeal Br. 6–11. We select claim 32 as representative of the first
group. Claims 33–35, 37–42, 44, 52, and 53 stand or fall with claim 32. See
37 C.F.R. § 41.37(c)(1)(iv). Similarly, Appellant argues claims 45, 47–49,
51, 54, and 55 as a second group. Appeal Br. 6–11 (arguing claims 45 and
55 with claim 32 without distinguishing between those claims and
additionally providing a separate heading for claims 45 and 55 without
additional meaningful argument). We select claim 45 as representative of
the second group. Claims 48, 49, 51, 54, and 55 stand or fall with claim 45.
Appellant provides a separate heading for claim 47, but does not allege any
particular error in the rejection of that claim, and, instead, appears to rely on
the alleged deficiencies in the rejection of claim 45. Id. at 12.
Independent claims 32 and 45 are each directed to “[a] method of
whitening teeth” that includes “applying . . . hydrogen peroxide in a
concentration ranging from of 2 wt. % to 10 wt. %” and “irradiating a tooth
with light emitted from a light source . . . at an irradiance density ranging
from 0.3 mW/cm2 to 8.1 mW/cm2.”
In each of the rejections, the Examiner finds that Montgomery ’253
teaches a method of whitening teeth by applying an unspecified
concentration of hydrogen peroxide and also irradiating a tooth with light
emitted from a light source at an irradiance density ranging from 1.0
mW/cm2 to 20 mW/cm2. Final Act. 4, 6 (citing Montgomery ¶¶ 24, 66).
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The Examiner also finds that the light emitted in Montgomery ’253 has a
wavelength that ranges from 350 nm to 700 nm, and that Montgomery ’253
teaches that select wavelengths, such as a range from 400 nm to 505 nm can
be used. Id. at 4, 6 (citing Montgomery ¶ 65). Because the hydrogen
peroxide concentration is unspecified in Montgomery ’253, the Examiner
looks to Montgomery ’955. Id. at 4–7. The Examiner finds that
Montgomery ’955 also teaches a method of whitening teeth using light at a
wavelength range between 350 nm and 500 nm, along with hydrogen
peroxide at a concentration of 6%. Id. at 6–7. The Examiner uses
Montgomery ’955 to fill in the unspecified hydrogen peroxide concentration
in Montgomery ’253, as both Montgomery references relate to a method of
tooth whitening and have a similar light wavelength range. Id.
Appellant’s sole dispute with the Examiner’s rejections relates to
whether it would have been obvious to use a 6% hydrogen peroxide
concentration in Montgomery ’253. Specifically, Appellant contends that in
“Montgomery ’253 . . . there is no recognition that a 6% hydrogen peroxide
concentration can be used at the relied upon power levels” and that
“Montgomery ’955 . . . makes explicitly clear that whitening teeth at 6 %
hydrogen peroxide requires a minimum power density of 10 mW/cm2
(preferably at least 100 mW/cm2). Reply Br. 2–3. As made clear in the
Appeal Brief, “Appellant does not dispute that whitening treatments using
light and 6 % hydrogen peroxide were known at the time the present
application was filed.” Appeal Br. 8. Rather, Appellant’s contention is that
neither Montgomery reference, individually, teaches the recited hydrogen
peroxide in a concentration and the recited irradiance density. Id. at 8–9.
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That is not persuasive of error, because the Examiner relies on the combined
teachings of the Montgomery references.
Contrary to Appellant’s representation, Montgomery ’955 does not
require a minimum power density of 10 mW/cm2. Rather, Montgomergy
describes a preferred embodiment including a minimum power density of 10
mW/cm2. See Montgomery ’955, 11:45–48. The Examiner’s determination,
noted above, that one skilled in the art would look to another teeth whitening
method (e.g., Montgomery ’955) to determine a hydrogen peroxide
concentration for teeth whitening for use in a teeth whitening method (e.g.,
Montgomery ’235) that teaches using hydrogen peroxide without specifying
concentration, is reasonable. Appellant’s contention that “the Examiner's
requirement that Appellant provide separate factual evidence demonstrating
that Montgomery ’253 does ‘not contemplate such concentrations’ is entirely
improper” is misguided. Appeal Br. 9. The Examiner has provided a
reasonable basis as to why one skilled in the art would have looked to the
6% hydrogen peroxide concentration for the reasons explained above. It is
Appellant’s burden to identify error in that determination. See In re Jung,
637 F.3d 1356, 1365–66 (Fed. Cir. 2011).
Appellant’s contention that “the claimed combination . . . provides an
unexpected advantage over the prior art discovered by Appellant” (Appeal
Br. 10) is also unpersuasive of Examiner error. Appellant notes that
“[r]ebuttal evidence and arguments can be presented in the specification.”
Id. at 9 (citing In re Soni, 54 F.3d 746, 750 (Fed. Cir. 1995)). Referencing
Tables 1 and 3 from its Specification, Appellant contends that “it has been
unexpectedly discovered that a light having the specific wavelength and
irradiation density, as well as hydrogen peroxide concentration will reach an
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asymptotic whitening value, indicating superior whitening has been
achieved,” which “is critical because the unexpected synergy between
wavelength, hydrogen peroxide concentration, and low power density not
only provides a more effective method of getting teeth to change color, but it
does so at power levels that are lower than what is expected by the prior art.”
Appeal Br. 10–11.
As the authority cited by Appellant explains,
[t]he basic principle behind [unexpected results supporting non-
obviousness] is straightforward—that which would have been
surprising to a person of ordinary skill in a particular art would
not have been obvious. The principle applies most often to the
less predictable fields, such as chemistry, where minor changes
in a product or process may yield substantially different results.
In re Soni, 54 F.3d at 750. “Mere improvement in properties does not
always suffice to show unexpected results,” but, rather, “when an applicant
demonstrates substantially improved results . . . and states that the results
were unexpected, this should suffice to establish unexpected results in the
absence of evidence to the contrary.” Id. at 751. Appellant fails to explain,
in its briefs, how the purported evidence of unexpected results in the
Specification demonstrates substantially improved results.
For example, Appellant does not explain over what the claimed
arrangement is an improvement. Further, our review of Appellant’s Table 1
shows, for example, that the claimed arrangement can also provide degraded
performance (i.e., no improvement). Table 1 from Appellant’s Specification
is reproduced below.
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Table 1 is a summary of whitening results for “treatment includ[ing] a
whitening agent comprising 4.5 wt. % of H2O2 and irradiating a tooth
surface with light from an LED for a period of 15 minutes, wherein the light
at the surface of the LED had a irradiance density of 4 mW/cm2.” Spec.
¶ 57. Appellant explains that “a larger negative value indicates superior
whitening performance.” Appeal Br. 10.
Claim 32, for example, recites “the light having a wavelength that
ranges from 375 nm to 420 nm.” As seen in Table 1, a wavelength outside
the recited range (470 nm) has better whitening than a wavelength within the
recited range (420 nm). Although claim 45 provides a broader range of “375
nm to 500 nm,” we have essentially no data for wavelengths outside the
recited range, other than 505 nm. Moreover, based on the upper limit in the
table (505 nm), it seems that the whitening provided by no light would be
approximately equal to, or perhaps even better than, that provided by the
upper end of the wavelength range (500 nm) recited in claim 45.
Accordingly, we are not persuaded that the arrangement recited in claims 32
and 45 provides substantially improved results.
Appellant’s Table 3, discussed in the Appeal Brief, focuses on a
single wavelength (405 nm). Spec. ¶¶ 60–61. To the extent Appellant relies
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solely on the specific 405 nm wavelength results, that is not commensurate
with the scope of the claims. As explained above, claims 32 and 45 are not
limited to only the 405 nm wavelength.3 Moreover, that table also shows
significant variation in whitening performance for irradiance values at the
405 nm wavelength. See id. ¶ 60.
For at least these reasons, we are not apprised of Examiner error.
CONCLUSION
The Examiner’s rejections are affirmed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
32–35, 37–
42, 44, 52,
53
103 Montgomery ’253,
Montgomery ’955
32–35, 37–
42, 44, 52,
and 53

45, 47–49,
51, 54, 55
103 Montgomery ’253,
Montgomery ’955,
Soukos
45, 47–49,
51, 54, 55

Overall
Outcome
32–35, 37–
42, 44, 45,
47–49, 51–
55

3 As explained in the discussion of claim grouping, we do not address claims
that are not argued separately.
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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). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED