Colgate-Palmolive Company

Patent Trials and Appeals Board

Aug 6, 2020

15528604 - (D) (P.T.A.B. Aug. 6, 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.
15/528,604 05/22/2017 Nilza Shimohirao 10576-00-US-01-OC 1900
23909 7590 08/06/2020
COLGATE-PALMOLIVE COMPANY
909 RIVER ROAD
PISCATAWAY, NJ 08855
EXAMINER
LIU, TRACY
ART UNIT PAPER NUMBER
1612
NOTIFICATION DATE DELIVERY MODE
08/06/2020 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 NILZA SHIMOHIRAO, MOHAMAD BAZAZAN,
and ERICO PRAT

Appeal 2020-0000301
Application 15/528,604
Technology Center 1600
Before ERIC B. GRIMES, LINDA M. GAUDETTE and
FRANCISCO C. PRATS, Administrative Patent Judges.
GRIMES, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to a
method of reducing bacteria in a precipitated calcium carbonate slurry,
which have been rejected as obvious. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.

1 Appellant identifies the real party in interest as Colgate-Palmolive
Company. Appeal Br. 2. We use the word “Appellant” to refer to “applicant”
as defined in 37 C.F.R. § 1.42.
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Application 15/528,604

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STATEMENT OF THE CASE
“Precipitated calcium carbonate or PCC is manufactured on a
commercial scale for use in a variety of industrial, cosmetic and
pharmaceutical products.” Spec. ¶ 1. The Specification describes the
conventional process of making precipitated calcium carbonate as follows:
(a) limestone is heated to form lime (CaO); (b) water is added to the CaO to
yield Ca(OH)2; (c) the Ca(OH)2 is treated with carbon dioxide (CO2) gas,
causing calcium carbonate to precipitate; the resulting slurry of calcium
carbonate is then neutralized and dried. Id.
“Slurries of precipitated calcium carbonate are susceptible to
bacteria.” Id. ¶ 2. “Ozone, which is capable of effectively killing . . . bacteria
and which decomposes rapidly, has been reported to be effective for some
clinical uses, such as ozone sterilization of medical equipment.” Id. ¶ 4. The
Specification states, however, that “ozone has not been contemplated for use
in PCC slurries, likely because of the high concentration of solids in the
slurry.” Id. ¶ 5.
Claims 1–7, 9–16, 18, and 19 are on appeal. Claim 1, reproduced
below, is illustrative (emphasis added):
1. A method for reducing bacteria in a precipitated calcium
carbonate (CaCO3) slurry, the method comprising:
adding water to calcium oxide (CaO) to form
Ca(OH)2;
treating the Ca(OH)2 with CO2 gas to form a slurry
comprising precipitated CaCO3;
neutralizing the slurry; and
exposing the slurry that was neutralized to ozone
in an amount sufficient to reduce bacteria in the
precipitated calcium carbonate slurry,
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Application 15/528,604

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wherein a solid concentration of precipitated CaCO3 in the
slurry ranges from about 12% w/w to about 40% w/w;
wherein the concentration of ozone in the neutralized slurry
ranges from about 5 ppm to about 25 ppm.

The claims stand rejected as follows:2
Claims 1–4, 6, 7, 9, 11, 18, and 19 under 35 U.S.C. § 103 as obvious
based on Shimohirao,3 Price,4 Skrzypczak,5 and Drew6 (Ans. 3);
Claim 5 under 35 U.S.C. § 103 as obvious based on Shimohirao,
Price, Skrzypczak, Drew, and Long7 (Ans. 3);
Claim 10 under 35 U.S.C. § 103 as obvious based on Shimohirao,
Price, Skrzypczak, Drew, and Boast8 (Ans. 4);
Claims 12 and 13 under 35 U.S.C. § 103 as obvious based on
Shimohirao, Price, Skrzypczak, Drew, and Lynch9 (Ans. 4);
Claim 14 under 35 U.S.C. § 103 as obvious based on Shimohirao,
Price, Skrzypczak, Drew, and Shiba10 (Ans. 4); and
Claims 15 and 16 under 35 U.S.C. § 103 as obvious based on
Shimohirao, Price, Skrzypczak, Drew, and Jasra11 (Ans. 5).

2 Appellant contends that all of the rejections except that of claim 9 are new
grounds of rejection. Reply Br. 2–3. This issue can be reviewed only by way
of petition, 37 CFR § 41.40(a), but the issue is moot in view of our reversal
of the rejections on appeal.
3 Shimohirao et al., US 2012/0276023 A1; pub. Nov. 1, 2012.
4 Price et al., US 4,793,985; iss. Dec. 27, 1988.
5 Skrzypczak et al., WO 2012/175490 A1; pub. Dec. 27, 2012.
6 Drew et al., US 5,647,895; iss. July 15, 1997.
7 Long, Jr. et al., US 5,147,563; iss. Sept. 15, 1992.
8 Boast et al., US 2008/0213125 A1; pub. Sept. 4, 2008.
9 Lynch et al., US 2003/0143164 A1; pub. July 31, 2003.
10 Shiba et al., US 2013/0189200 A1; pub. July 25, 2013.
11 Jasra et al., US 2003/0082091 A1; pub. May 1, 2003.
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Application 15/528,604

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OPINION
Obviousness based on Shimohirao, Price, Skrzypczak, and Drew
The Examiner finds that Shimohirao teaches the first three steps of
claim 1: adding water to CaO to form Ca(OH)2, treating the Ca(OH)2 with
CO2 gas to yield a slurry of precipitated calcium carbonate (CaCO3), and
neutralizing. Final Action12 3. The Examiner finds that Shimohirao also
teaches adding a polymeric biguanide to the slurry to “provide[] lasting
antimicrobial action,” but does not disclose treating the neutralized slurry
with ozone. Id. at 3–4.
The Examiner finds that Price discloses a process for producing
ultrafine ground calcium carbonate in which calcium carbonate solids are
contacted with ozone gas, which serves to destroy organic matter or
microorganisms that might be contained in it. Id. at 4. The Examiner
concludes that it would have been obvious to expose Shimohirao’s slurry to
ozone “since ozone is effective in destroying microorganism[s] which may
be contained in calcium carbonate as taught by Price.” Id.
The Examiner finds that Shimohirao and Price do not disclose a solids
concentration within the specific range recited in claim 1, but that a
precipitated calcium carbonate slurry with a solids content of 5–30% would
have been obvious based on Skrzypczak. Id. at 5.
Finally, the Examiner finds that none of these references disclose a
concentration of ozone in the neutralized slurry of 5 ppm to 25 ppm. Id. at 9.
“However, Drew et al. disclose a kaolin clay slurry having enhanced
microbiological control and produced by a process which comprises adding

12 Office Action mailed December 11, 2018.
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Application 15/528,604

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a microbiocide to the cooled slurry, wherein the amount of microbiocide
added is at least 20 ppm.” Id. The Examiner concludes that it would have
been obvious “to have incorporated at least 20 ppm of ozone into the slurry
since at least 20 ppm is an effective concentration of a microbiocide used on
slurries as taught by Drew et al.” Id.
Appellant argues that “the Examiner has not demonstrated that Drew
teaches or suggests the use of ozone nor that the effective amount for any
and all microbicides falls with[in] the claimed range – e.g., regardless of the
microbicide or the context.” Appeal Br. 9. Appellant argues that “Drew does
not suggest the use of ozone for reducing bacteria,” but instead discloses four
specific chemical microbiocides. Id. Appellant reasons that
[s]imply because Drew may disclose the use of a particular
microbiocide (e.g., Ucarcide or Proxel) in one particular context
(e.g., with kaolin clay), and at a particular concentration, the
Examiner has not effectively shown how this would motivate
one of skill in the art to use a different microbiocide (e.g.,
Ozone), in a different context (e.g., reducing bacteria in a
(CaCO3) slurry[)], at some particular concentration.
Id. at 9–10. Appellant concludes that “the Examiner has not demonstrated
that Drew teaches or suggests that the concentration of 20ppm for the
microbiocide allegedly taught by Drew would be effective for any and all
microbiocides – much less specifically for ozone.” Id. at 10.
We agree with Appellant that the Examiner has not provided
sufficient evidence to show that a skilled artisan would have had a reason to
treat a precipitated calcium carbonate (PCC) slurry with ozone, at a
concentration of 5–25 ppm, with a reasonable expectation that doing so
would have an antibacterial effect. As the Examiner found, Shimohirao
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discloses that PCC is generally made by heating limestone, which yields
lime (CaO) and CO2:
Addition of the water to the lime (a process called “slaking”)
yields Ca(OH2). The slaked lime . . . is treated with carbon
dioxide gas. The resulting calcium carbonate precipitates from
the aqueous solution, yielding a slurry of precipitated calcium
carbonate that can be neutralized [and further processed].
Shimohirao ¶ 2.
Shimohirao also discloses that “[s]lurries of precipitated calcium
carbonate are susceptible to microorganisms” and “[p]olymeric biguanides
can effectively preserve oral care compositions that include precipitated
calcium carbonate.” Id. ¶¶ 3, 5. Shimohirao discloses using polymeric
biguanides at concentrations ranging from 0.01% to 0.04%. Id. ¶ 21. A
concentration of 0.01% (0.01 parts per 100) is equivalent to 100 ppm.
Price discloses a method of making ultrafine ground calcium
carbonate. Price 1:15–16. Price’s process begins with dry crushed calcium
carbonate, which is slurried, dispersed, and ground, and the output product is
classified by particle size. Id. at 2:42–57. The process then includes a step of
contacting said output product with ozone in sufficient amount
and for a sufficient time to (1) brighten said calcium carbonate
product, (2) destroy any dispersant contained in the mixture, (3)
destroy any flocculent contained in the mixture, and (4) destroy
any organic matter or microorganisms contained in the mixture.
Id. at 2:58–63.
Price states that “[t]he ozone is preferably added in sufficient amounts
to provide about 3 to 10 pounds per ton of solids.” Id. at 5:23–25. Three
pounds per ton (3 pounds per 2000 pounds, or 1.5 pounds per 1000 pounds)
is equivalent to 1500 ppm.
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Application 15/528,604

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The Examiner does not cite Skrzypczak for any disclosure relevant to
the ozone concentration recited in the claims, but rather cites Drew’s
disclosure of microbiocides in kaolin clay. Final Action 5, 9. Drew discloses
“a process for the reduction of microorganisms in kaolin clay slurries.”
Drew 1:8–9. Drew states:
The amount of microbiocide added to the slurry is at least 20
ppm (weight of microbiocide as received to total slurry weight).
The microbiocides added can be selected from conventional
microbiocides, such as 1,5-pentanediol ( . . . Ucarcide); 1,2-
benzisothiazolin-3-one ( . . . Proxel); 5-chloro-2-methyl-4-
isothiazolin-3-one/2-methyl-4-isothiazolin-3-one ( . . . AMA-
415); tetrahydro-3,5-dimethyl-2H-1,3,5-thiadiazine-2-thione
( . . . AMA-35D); or other commercially available
microbiocides.
Id. at 3:48–60 (emphasis added).
Thus, the microbiocide concentrations suggested by Drew for kaolin
clay are for “conventional” or “commercially available” microbiocides. The
Examiner has not pointed to evidence showing that a skilled artisan would
have considered ozone to be a conventional or commercially available
microbiocide, in the context of PCC slurries, and thus comparable to the
examples provided by Drew. Nor has the Examiner pointed to other
evidence to show that a skilled artisan would have reasonably expected
ozone to be an effective microbiocide in a precipitated calcium carbonate
slurry if it were used at a concentration of 20–25 ppm (the part of the
claimed range that is above the 20 ppm minimum suggested by Drew).
As discussed above, Shimohirao and Price provide evidence that not
every microbiocide is used at the same concentration. Shimohirao suggests
using polymeric biguanides in a precipitated calcium carbonate slurry at a
concentration equivalent to at least 100 ppm, while Price suggests treating a
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Application 15/528,604

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slurry of calcium carbonate particles with ozone at a concentration
equivalent to at least 1500 ppm.
In response to Appellant’s argument on this point, the Examiner states
that “it would have taken no more than the relative skills of one of ordinary
skill in the art to determine how effective the concentration disclosed by
Drew is with ozone.” Ans. 12. However, without a reasonable expectation
that the concentration disclosed by Drew would be successful as a
microbiocide in Shimohirao’s composition, a skilled artisan would have had
no reason to modify Shimohirao by using ozone (as suggested by Price) at
the concentration suggested by Drew.
We therefore conclude that the Examiner has not shown that the
method of claim 1 would have been obvious based on Shimohirao, Price,
Skrzypczak, and Drew. We reverse the rejection of claim 1, and dependent
claims 2–4, 6, 7, 9, 11, 18, and 19, under 35 U.S.C. § 103(a).
Remaining Obviousness Rejections
Each of the other pending rejections relies on the combination of
Shimohirao, Price, Skrzypczak, and Drew, and adds an additional reference
to meet the limitations of the rejected dependent claims. See Final Action 8,
10–13. The Examiner points to nothing in the other cited references that
makes up for the deficiency discussed above. We therefore reverse the rest
of the rejections on appeal for the same reasons discussed above with respect
to the rejection of claims 1–4, 6, 7, 9, 11, 18, and 19.
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Application 15/528,604

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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–4, 6, 7–9,
11, 18, 19
103 Shimohirao, Price,
Skrzypczak, Drew
1–4, 6, 7–9,
11, 18, 19
5 103 Shimohirao, Price,
Skrzypczak, Drew,
Long
5
10 103 Shimohirao, Price,
Skrzypczak, Drew,
Boast
10
12, 13 103 Shimohirao, Price,
Skrzypczak, Drew,
Lynch
12, 13
14 103 Shimohirao, Price,
Skrzypczak, Drew,
Shiba
14
15, 16 103 Shimohirao, Price,
Skrzypczak, Drew,
Jasra
15, 16
Overall
Outcome
1–7, 9–16,
18, 19

REVERSED