Strand, Ross et al.

Patent Trials and Appeals Board

Mar 31, 2020

14312763 - (D) (P.T.A.B. Mar. 31, 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.
14/312,763 06/24/2014 Ross Strand AA891 8413
27752 7590 03/31/2020
THE PROCTER & GAMBLE COMPANY
GLOBAL IP SERVICES
CENTRAL BUILDING, C9
ONE PROCTER AND GAMBLE PLAZA
CINCINNATI, OH 45202
EXAMINER
PHAN, DOAN THI-THUC
ART UNIT PAPER NUMBER
1613
NOTIFICATION DATE DELIVERY MODE
03/31/2020 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):
centraldocket.im@pg.com
mayer.jk@pg.com
pair_pg@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte ROSS STRAND, YUJUN LI, YIQUN ZHANG,
XIAOXIAO LI, and HANBO BAO
__________

Appeal 2019-003512
Application 14/312,7631
Technology Center 1600
__________

Before ULRIKE W. JENKS, RACHEL H. TOWNSEND, and
MICHAEL A. VALEK, Administrative Patent Judges.

TOWNSEND, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to an oral
care composition, which have been rejected as anticipated and/or obvious.
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
STATEMENT OF THE CASE
“Tooth cleaning . . . involves the removal of dental plaque from teeth
with the intention of preventing cavities (dental caries), gingivitis,
periodontal disease, and even some systemic diseases.” (Spec. 1) “Incorrect

1 We use the word “Appellant” to refer to “Applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as The
Proctor & Gamble Company. (Appeal Br. 1.)
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or insufficient brushing may be not able to adequately remove the plaque or
stop plaque from building up, and even may be harmful to the tooth surface,
the gum, and other delicate intraoral membranes.” (Id.) Appellant’s
invention “relates to the use of particulate materials in manufacturing an oral
composition for encouraging proper tooth cleaning.” (Id.)
Claims 1, 4–6, 11, and 21 are on appeal. Claim 21 is representative
and reads as follows:
21. An oral care composition comprising:
(a) silica agglomerates comprising thickening silica; and
(b) from 0.1 % to 2%, by weight, thickening agent
consisting of carboxymethyl cellulose, hydroxyethylcellulose,
and carrageenan;
wherein the silica agglomerates are breakable under a
brushing action with a brushing force from 0.lN to 5N, wherein
the silica agglomerates have a particle size distribution
characterized by
(1) a change ratio of mean particle size before and after
the brushing action is at least 20%,
(2) a change ratio of D90 before and after the brushing
action is at least 20%,
(3) at least 5% of the silica agglomerates have a particle
size greater than 200μm before the brushing action, and
(4) no more than 30% of the silica agglomerates have a
particle size greater than 200μm after the brushing action,
wherein the oral care composition has a viscosity ranging
from 15 to 28 BKU; and wherein the oral care composition
comprises a toothpaste.
(Appeal Br. 9–10.)

The prior art relied upon by the Examiner is:
Name Reference Date
Vernon US 5,976,506 Nov. 2, 1999
Niemi US 6,342,205 B1 Jan. 29, 2002
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The following grounds of rejection by the Examiner are before us on
review:
Claims 1, 4–6, 11, and 21 under 35 U.S.C. § 102(a)(1) as anticipated
by or, alternatively, under 35 U.S.C. § 103 as obvious over Vernon.
Claims 1, 4–6, 11, and 21 under 35 U.S.C. § 103(a) as unpatentable
over Niemi and Vernon.
Claims 1, 4–6, 11, and 21 provisionally on the ground of non-statutory
obviousness-type double patenting as being unpatentable over claims 1, 3–
15, and 20 of US Application No. 14/312,749.2

DISCUSSION
Unpatentability over Vernon
The Examiner finds that Vernon teaches an oral care composition, a
toothpaste, that contains (a) silica agglomerates, where the agglomerates
include abrasive silicas (precipitated silicas) and thickening silicas, and (b)
thickening agents such as sodium carboxymethylcellulose in an amount of
from 0.1 to about 5%. (Final Action 4, 8.) The Examiner found further that
a specific example of such a composition is taught in Vernon where the
amount of sodium carboxymethylcellulose is present at 0.8% w/w. (Id.)
The Examiner further finds that Vernon teaches the agglomerates have a
hardness of 3.7, and a D10, D50 and D90 of the silica agglomerates are
268 μm, 391 μm and 539 μm, respectively. (Final Action 4.)
The Examiner further finds that when the composition in Vernon is
used, “the agglomerates break up under the action of shear and/or crush

2 This rejection was made in the Examiner’s Answer dated January 4, 2019.
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forces” and the resultant “average particle size diameter will typically be less
than about 60 microns.” (Id. at 5.) The Examiner also notes that Vernon
teaches that prior to breaking-down into smaller particles, the agglomerates
have a gritty-feel. (Id.)
The Examiner concludes that, based on the fact that “‘[p]roducts of
identical chemical composition cannot have mutually exclusive properties. .
. . In re Spada, 911 F.2d 705, 709 (Fed. Cir. 1990),’” the foregoing
compositions taught by Vernon, which have the same compositional
elements claimed, would implicitly have the breakability, particle
distribution properties, and viscosity recited by the claims. (Id. at 4, 8
(citing In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (“[w]here the claimed
and prior art products are identical or substantially identical in structure or
composition, or are produced by identical or substantially identical
processes, a prima facie case of either anticipation or obviousness has been
established.”).)
In the alternative, the Examiner contends that the claimed composition
would have been obvious to one having ordinary skill in the art from the
teachings of Vernon. (Id. at 5) In particular, the Examiner explains that
Vernon additionally teaches that the D90 of the agglomerates “is equal to or
smaller than 2000 micrometers” and that the average particle size after use is
less than about 60 microns, and that one of ordinary skill in the art would
have arrived at a particle size distribution as a matter of routine optimization
that would be practiced by one of ordinary skill in the art to achieve the
desired results. (Id. (citing, inter alia, In re Wertheim, 541 F.2d 257 (CCPA
1976) and In re Aller, 220 F.2d 454, 456 (CCPA 1955).)
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Appellant contends that the Examiner’s rejection is in error because
(a) Vernon teaches the agglomerates must be formed from two or more
particulate materials, (b) does not disclose “viscosity in combination with
agglomerates of specific particulate materials,” and (c) there is no disclosure
in Vernon “on how to provide the claimed agglomerate properties,” but,
rather, only the manner in which it achieves the sensory benefit of its
agglomerates. (Appeal Br. 3.3)
Appellant further contends that evidence in the Specification (namely
Example 6) establishes that “not all silica agglomerates provide the claimed
properties,” which “demonstrates that the claimed properties are not
inherently present for agglomerates in an oral care composition.” (Id. at 3–
4.)
We conclude that the Examiner has the better position. As Appellant
does not argue the claims separately, we focus on representative claim 21.
Regarding Appellant’s argument that Vernon’s composition includes two
silica components, we agree with the Examiner that Appellant’s claim does
not restrict the agglomerates to a single type of silica. (Ans. 20–21.) That is
because Appellant’s claim recites the agglomerate “comprising.”
“‘Comprising’ is a term of art used in claim language which means that the
named elements are essential, but other elements may be added and still
form a construct within the scope of the claim.” Genentech, Inc. v. Chiron
Corp., 112 F.3d 495, 501 (Fed. Cir. 1997).
Vernon teaches a dentrifice composition that includes the
compositional elements claimed (silica agglomerates comprising thickening

3 We note that Appellant did not file a Reply Brief in this Appeal.
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silica and from 0.1%–2% thickening agent “selected from the group
consisting of carboxymethyl cellulose . . .”). For instance, Example 1
teaches a dentrifice composition that includes an agglomerate of precipitated
silica (Sorbosil AC77), a thickening silica (Sorbosil TC15), and a
carboxymethyl cellulose thickener (cellulose gum, CMC9) at 0.8%.
(Vernon col. 6–8.) In addition, Vernon teaches that (1) the size of 50% of
the particles (D50) is between 80 and 1500 microns and that no more than
90% of the particles (D90) is equal to or smaller than 2000 microns (Vernon
1:55–57) and (2) the agglomerates collapse when normal forces are
“produced in the relevant brushing regime” (id. at 3:39–42), and (3) “[w]hen
the agglomerates break up” under those forces “the resulting average particle
size (diameter) will typically be less than about 60 microns” (id. at 3:54–56).
In light of the foregoing, we conclude that the Examiner had a sound
basis for believing that the composition of Vernon disclosed in Example 1
has the particle size distribution claimed and a viscosity within the claimed
range, and will break under the brushing forces claimed, and thus established
a prima facie case of anticipation. In re Best, 562 F.2d at 1255; In re Spada,
911 F.2d at 709. That is true regardless of the undisputed fact that Vernon
does not teach how to provide the claimed agglomerate properties. “From
the standpoint of patent law, a compound and all of its properties are
inseparable; they are one and the same thing.” In re Papesch, 315 F.2d 381,
391 (CCPA 1963). Thus, whether or not the prior art discloses the claimed
properties of its disclosed compositions, or how to achieve the claimed
properties, is irrelevant to whether the claimed composition is taught by the
prior art. In re Spada, 911 F.2d at 709 (“When the claimed compositions are
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not novel they are not rendered patentable by recitation of properties,
whether or not these properties are shown or suggested in the prior art.”).
Consequently, we look to see whether Appellant has provided
sufficient evidence “to prove that the prior art [composition] does not
necessarily or inherently possess the characteristics claimed.” In re Best,
562 F.2d at 1255.
We agree with the Examiner that Appellant has not provided
sufficient proof to establish that Vernon’s composition does not possess the
claimed properties. In particular, Appellant’s evidence in the Specification
provides six examples. Four examples are compositions in which a silica
thickener is included (in amounts ranging from 2 to 8% w/w) but without the
presence of a precipitated silica. (Spec. 18 (Table 2: examples 2–5)) One
example is a composition in which two precipitated silicas (in a total amount
of 11% w/w) were present together as separate agglomerates, but without the
presence of a silica thickener (id. (Example 1)). Each of these Examples had
all of the properties recited by the claim. (Id. at 18 (Table 3 (viscosity) 4), 20
(Table 4) (reporting the D90 and mean particle size before and after
brushing), 21 (Table 5) (characterization of the particle size distribution).)
The one Example that did not meet all of the claimed properties,
Example 6, included both types of silicas (i.e., precipitated and thickener

4 Appellant’s Specification defines BKU, which the claim identifies as the
viscosity measure, as a unit of measure that is “the unit of Brookfield
viscosity.” (Spec. 11.) This is not a standard measure for viscosity. The
centipoise is, which we understand a Brookfield instrument, like the one
described as being used in Appellant’s experiments (id. at 18) is capable of
determining. Thus, we are not altogether certain what the BKU value is a
measure of.
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silicas), like the Vernon example 1 composition. Example 6 did not have a
“viscosity” within the claimed “BKU” range, a D90 change ratio before and
after brushing of at least 20%, or no more than 30% of the agglomerates
having a particle size greater than 200 microns after brushing. (See Spec.
Table 3 and Table 5.) In Example 6, however, the precipitated silica is an
agglomerate in and of itself that is present at 6.96% w/w and the silica
thickener is a separate agglomerate that is present in the composition at
14.78 w/w%. In other words, in Example 6 of the Specification, there is not
an agglomerate that is composed of both precipitated silica and a silica
thickener as there is in Vernon Example 1. Moreover, the single
agglomerate of Vernon, that is a combination of precipitate silica and silica
thickener, is present in about 7%, whereas the amount of agglomerated
material in Example 6 of the Specification is present in three times that
amount and includes two different types of agglomerates. Furthermore, the
single data point provided by Example 6 of the Specification, which does not
even compare the same agglomerated silica as present in Vernon, is
insufficient “to ascertain a trend in the exemplified data which would allow
[one having ordinary skill in the art] to reasonably extend the probative
value thereof” to similar compositions, In re Kollman, 595 F.2d 48, 56 (Fed.
Cir. 1979), much less the composition of Vernon. Consequently, we agree
with the Examiner (Ans. 23, 27), that the Example 6 data in the
Specification does not establish that Vernon’s Example 1 composition does
not have the claimed properties.
Thus, we affirm the Examiner’s rejection of claim 1, 4–6, 11, and 21
under 35 U.S.C. § 102(a)(1) as anticipated by Vernon.
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Because we affirm the rejection under 35 U.S. C. § 102, we do not
reach the alternative rejection of those claims under 35 U.S.C. § 103 as
obvious over Vernon.

Unpatentability over Niemi and Vernon
The Examiner finds that Niemi teaches a high water content
toothpaste having a viscosity greater than 200,000 cP. (Final Action 13.)
The Examiner finds further that the Niemi toothpaste includes “amorphous
precipitated silica such as Zeodent® 165 silica (a silica thickener), abrasive
silicas, and binders or gum thickeners selected from the group consisting of
carrageenan, carboxymethylcellulose, hydroxyethylcellulose, and
combinations thereof. (Id.) The Examiner notes that Niemi discloses that
the binder is used “in an amount of about 0.5–1.5% w/w.” (Id. at 13–14.)
The Examiner acknowledges that Niemi does not teach the silica
agglomerates as claimed, but concludes that it would have been obvious to
one having ordinary skill in the art “to add silica agglomerates as taught by
Vernon to the composition of Niemi.” (Id. at 14.) The Examiner finds that
one of ordinary skill would have been motivated to add such agglomerates
because Vernon teaches that the addition of silica agglomerate
to a toothpaste composition provides an improved sensorially-
perceived cleaning benefit, as upon use, the gritty feeling
agglomerates will break-down into smaller particles, thus
giving the consumer the feeling of initial cleaning and
subsequent polishing (Vernon: abstract; column 3, lines 30-59).
(Id.) Moreover, the Examiner notes that
“[i]t is prima facie obvious to combine two compositions each
of which is taught by the prior art to be useful for the same
purpose, in order to form a third composition to be used for the
very same purpose . . . . [T]he idea of combining them flows
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logically from their having been individually taught in the prior
art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069,
1072 (CCPA 1980).
(Id.) Consequently, the Examiner finds that because both Niemi and Vernon
are “drawn to a high water content oral care composition for use as a
toothpaste” including both silica thickeners and gum thickeners that it would
have been prima facie obvious to combine the compositions taught by these
references. (Id.)
Appellant argues that this rejection is in error because neither Niemi
nor Vernon teaches or suggests the oral care composition has the “low”
viscosity claimed, Niemi “[a]s admitted in the office action . . . doesn’t even
disclose the use of agglomerates, let alone the desirability for the
agglomerates to have the claimed properties,” and Vernon has “no disclosure
on how to provide the claimed agglomerate properties.” (Appeal Br. 5.) In
addition, Appellant again argues that evidence in the Specification
establishes that “not all silica agglomerates provide the claimed properties,”
which “demonstrates that the claimed properties are not inherently present
for agglomerates in an oral care composition.” (Id. at 6.)
We again conclude that the Examiner has the better position. Niemi
teaches a dentrifice composition that includes water, abrasive silicas and
silica thickeners (Niemi 2:35–45), and a “gum thickener” such as an alkali
metal carboxymethyl cellulose (id. at 5:55–60). (Id. at col. 8 (Example 1).)
Vernon is also a dentifrice composition, as discussed above.
Although it is true that Niemi does not teach silica agglomerates, that
alone does not establish non-obviousness because the Examiner relied on the
teachings of Vernon for inclusion of such material in a dentrifice. As the
Examiner explained “[i]t is prima facie obvious to combine two
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compositions each of which is taught by the prior art to be useful for the
same purpose, in order to form a third composition which is to be used for
the very same purpose.” In re Kerkhoven, 626 F.2d at 850. We agree with
the Examiner that it would have been obvious to combine the two similar
dentrifice compositions of Niemi and Vernon to form a third dentrifice
composition that would include agglomerates and have the viscosity
described by Niemi.5
Furthermore, as discussed above, we do not find Appellant’s evidence
establishes that the Vernon Example 1 composition does not have the
claimed properties. Consequently, we do not find Appellant’s evidence to
establish that a combination of Niemi and Vernon Example 1 does not have
the claimed properties.
Thus, we affirm the Examiner’s rejection of claim 1, 4–6, 11, and 21
under 35 U.S.C. § 103 as being obvious over Niemi and Vernon.

Obviousness-Type Double Patenting
Appellant did not respond to the Examiner’s obviousness-type double
patenting rejection. Accordingly, we summarily affirm the rejection for the
reasons advanced by the Examiner. See MPEP § 1205.02 (“If a ground of
rejection stated by the examiner is not addressed in the appellant’s brief,

5 We note that the Examiner identifies Examples 2D and 2E of Niemi as
having a BKU measure within the ranges claimed. In particular, the
Examiner contends that the cP measurements can be converted to BKU’s by
dividing by a factor of 10,000. (Ans. 29–30.) Appellant does not contest the
Examiner’s finding in this regard.
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appellant has waived any challenge to that ground of rejection and the Board
may summarily sustain it.”).

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 4–6, 11,
21
102 Vernon 1, 4–6, 11,
21

1, 4–6, 11,
21
103 Niemi and Vernon 1, 4–6, 11,
21

1, 4–6, 11,
21
Provisional
Obviousness-type
Double Patenting
1, 4–6, 11,
21

Overall
Outcome
1, 4–6, 11,
21

AFFIRMED