Ex Parte Arvanitidou et al

Patent Trial and Appeal Board

Nov 29, 2016

12983460 (P.T.A.B. Nov. 29, 2016)

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.
12/983,460 01/03/2011 Evangelia S Arvanitidou 7603-00-US-Cl-OC 1418
23909 7590 12/01/2016
COLGATE-PALMOLIVE COMPANY
909 RIVER ROAD
PISCATAWAY, NJ 08855
EXAMINER
FIEBIG, RUSSELL G
ART UNIT PAPER NUMBER
1655
NOTIFICATION DATE DELIVERY MODE
12/01/2016 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 EVANGELIA S. ARVANITIDOU and MICHAEL PRENCIPE
Appeal 2015-006346
Application 12/983,460
Technology Center 1600
Before DONALD E. ADAMS, DEMETRA J. MILLS, and
JEFFREY N. FREDMAN, Administrative Patent Judges.
ADAMS, Administrative Patent Judge.
DECISION ON APPEAL1
This appeal under 35 U.S.C. § 134(a) involves claims 1, 3—6, 10, 12,
13, and 17—19 (Final Act. I).2 Examiner entered rejections under 35 U.S.C.
§ 103(a). We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
STATEMENT OF THE CASE
Appellants disclose “dentrifrice[] compositions containing antioxidant
active ingredients. In particular, . . . non-aqueous dentrifrices showing
1 Appellants identify “[t]he real party in interest in this appeal [as] the
Colgate-Palmolive Company” (Br. 2).
2 Claims 9 and 20—28 stand withdrawn from consideration (Final Act. 1).
Appeal 2015-006346
Application 12/983,460
oxidation stability” (Spec. 11). Claim 1 is representative and reproduced
below:
1. An oral composition comprising
at least one humectant;
at least one abrasive compound;
0.001% to 5% by weight of at least one plant extract
selected from the group consisting of rosemary, oregano,
Baikal skullcap, S. lateriflora, S. orthocalyz, grape seed,
and grape skin;
an antioxidant selected from the group consisting of
stannous compounds, stannate compounds, ammonium
sulfates, BHT, and sodium metabisulfite; and less than
6% by weight water
wherein the composition undergoes no observable
discoloration upon storage for three days at a temperature
of 50°C.
(Br. 9.)
The claims stand rejected as follows:
Claims 1,3,6, 10, 12, and 17—19 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Zhu ’494,3 greentea-
extract.info,4 Rababah,5 and Yilmaz.6
3 Zhu et al., WO 01/17494 Al, published Mar. 15, 2001.
4 “greentea-extract.info,” http://www.greentea-extract.info/antioxidant.html
(accessed 4/5/2012). See Apr. 11, 2012 PTO-892.
5 Rababah et al., Total Phenolics and Antioxidant Activities of Fenugreek,
Green Tea, Black Tea, Grape Seed, Ginger, Rosemary, Gotu Kola, and
Ginkgo Extracts, Vitamin E, and tert-Butylhydroquinone, 52 J. Agric. Food
Chem. 5183-5186 (2004).
6 Yilmaz et al., Major Flavonoids in Grape Seeds and Skins: Antioxidant
Capacity of Catechin, Epicatechin, and Gallic Acid, 52 J. Agric. Food
Chem. 255-260 (2004).
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Appeal 2015-006346
Application 12/983,460
Claims 1, 3—6, 10, 12, 13, and 17—19 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Zhu ’494, greentea-
extract.info, Zhu 1998,7 Claus,8 Rababah, and Yilmaz.
We vacate, and will not further discuss, the rejection over the
combination of Zhu ’494, greentea-extract.info, Rababah, and Yilmaz as
cumulative to the rejection over the combination of Zhu ’494, greentea-
extract.info, Zhu 1998, Claus, Rababah, and Yilmaz.
ISSUE
Does the preponderance of evidence relied upon by Examiner support
a conclusion of obviousness?
FACTUAL FINDINGS (FF)
FF 1. Zhu ’494 “relates to oral compositions comprising tea polyphenol for
providing breath protection and freshness, as well as other oral health
benefits” (Zhu ’494 1: 11—13; Ans. 2—3 and 6—7; see also Ans. 3 (Zhu ’494
“further teaches that the polyphenols in green tea extract are thought to
provide [] physiological efficacious effects”); Zhu ’494 2: 4—7).
FF 2. Zhu ’494 exemplifies an oral composition comprising glycerin as a
humectant; silica as an abrasive compound; 2% Tea Extract, and 7% water
(Zhu ’494 20—21 (Example 7); Ans. 2).
FF 3. Zhu ’494 discloses that an oral composition within the scope of Zhu
’494’s disclosure “contain[s] a water [content] of from about 5% to about
20%” (Zhu ’494 14: 13-14; Ans. 3).
7 Zhu, “PHARMACOLOGY,” Chinese Materia Medica 128 (1998). See
Apr. 11, 2012 PTO-892. Google Webpage relied upon by Examiner.
8 Claus, Understanding microbes: a laboratory textbook for microbiology
423 (1989). See Apr. 11, 2012 PTO-892. Google Webpage relied upon by
Examiner.
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Application 12/983,460
FF 4. Zhu ’494 discloses that additional compounds may be added to Zhu
’494’s compositions including Vitamins E, C, and A, as well as, stannous
salts (Zhu ’494 15: 26—31 and 17: 27—18: 13; Ans. 3).
FF 5. Examiner relies on Rababah to disclose that “both grape seed and
rosemary extracts [have] higher phenolic content than that of green tea
extracts (Ans. 4; Rababah 5185: Tables 1 and 2).
FF 6. Examiner relies on Yilmaz to “disclose the major flavonoids
extracted from grape seeds and skins,” wherein, “[t]he phenolic acid gallic
acid and monomers catechin an[d] epicatechin are the plant phenolic
compound in grape seeds and skins” and that “catechin has free radical
scavenging activities” (Ans. 4; citing Yilmaz 255: col. 1 and 258: Tables 1
and 2).
FF 7. Examiner relies on Zhu 1998 to disclose:
[T]hat the root of Scutellaria baicalensis (Baikal skullcap) has
wide antibacterial spectrum and that a decoction of the root
showed in vitro antibacterial activity against hemolytic
streptococcus, among other organisms and that an extract of S.
baicalensis was effective against oral bacteria. Zhu further
teaches that baicalin (a B ring flavonoid) is the major
antibacterial active component.
(Ans. 7, citing Zhu 1998 128.)
FF 8. Examiner relies on Claus to disclose “that S. mutans can be
hemolytic” (Ans. 7 (emphasis added); see also id. at 6 (Zhu ’494 discloses
that “tea polyphenol is believed to deliver breath protection due to its ability
to inhibit certain bacteria such as S. mutans (emphasis added))).
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Appeal 2015-006346
Application 12/983,460
ANALYSIS
Zhu ’494, greentea-extract.info, Zhu 1998, Claus, Rababah, and Yilmaz:
Based on the combination of Zhu ’494, greentea-extract.info, Zhu
1998, Claus, Rababah, and Yilmaz, Examiner concludes that, at the time
Appellants’ invention was made, it would have been prima facie obvious “to
formulate the oral composition disclosed in example 7 of Zhu [] with less
than 6% by weight water,” because, Zhu’s composition “may comprise 5-
25% [] water” (Ans. 4; FF 3). Iron Grip Barbell Co. v. USA Sports, Inc.,
392 F.3d 1317, 1322 (Fed. Cir. 2004) (“[W]here there is a range disclosed in
the prior art, and the claimed invention falls within that range, there is a
presumption of obviousness”).
Examiner further finds that at the time Appellants’ invention was
made, it would have been prima facie obvious to (a) “substitute other
polyphenol/flavonoid-rich plant extracts other than green tea based on the
common knowledge[,] as evidenced by the teachings of Rababah and
Yilmaz[,] that rosemary and [grape seed extract] both contain substantial
amounts of various beneficial flavonoids,” (b) “add the additional
ingredients [as] suggested by Zhu [], including additional antioxidants such
as vitamins A, C, or E, stannous salts,” etc., and (c) “add an extract of
Scutellaria baicalensis and/or the compound baicalin (a free B ring
flavonoid)[, as suggested by Zhu 1998,] to the oral breath freshening
compositions rendered obvious by [the combination of] Zhu [’494, greentea-
extract.info, Rababah, and Yilmaz]” as an anti-S mutans bacterial agent
(Ans. 4-5 and 7-8; FF 1-8).
Appellants recognize Zhu’s “belief that catechines [sic] are important
for green tea’s health benefits,” but, contend that Zhu discloses that “other
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Appeal 2015-006346
Application 12/983,460
classes of phenolics are believed to act synergistically with the catechines
[sic] and also to provide independent health benefits” (Br. 6). Based on the
foregoing, Appellants contend that because Zhu did not identify the specific
“phenolic compounds produced by green tea plants [that] provide[]
physiological benefits” a person of ordinary skill in this art would not
substitute green tea extract for other extracts that contain higher levels of
phenolic compounds (see Br. 5). Initially, we note that the composition of
Appellants’ claim 1 does not identify any specific purpose for the addition of
at least one plant extract selected from the group consisting of, inter alia,
rosemary and grape seed (see Br. 9 (Claim 1)). In this regard, Appellants’
claim 1 does not require a specific phenolic compound to be present in the
claimed composition, a specific method for the preparation of the foregoing
extract, or the achievement of a synergistic effect among any components
that may be present in such an extract {id.). Thus, all that is required by
Appellants’ claim 1 is that some component of rosemary and/or grape seed
be present in the form of an extract for inclusion in the composition of claim
1. The evidence relied upon by Examiner, therefore, meets the requirements
of Appellants’ claim 1 {see generally FF 1,2, 5, and 6). Appellants fail to
provide persuasive evidence or argument to support a contrary conclusion.
For the foregoing reasons, we are not persuaded by Appellants’
contentions that Rababah and Yilmaz fail to make up for Appellants’ alleged
deficiencies in the combination of Zhu ’494, greentea-extract.info or that
Zhu 1998 and Claus fail to make up for Appellants’ alleged deficiencies in
the combination of Zhu ’494, greentea-extract.info, Rababah and Yilmaz
(Br. 6 and 7).
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Application 12/983,460
To be complete, we recognize Appellants’ contention that Example 2,
and the corresponding Table 2, of their Specification reports that the “only
[disclosed] formulation to achieve a rating of ‘5’ (no observable
discoloration) was the formulation containing sodium meta-bisulfite” (Br. 7,
citing Appellants’ Specification 154). Appellants’ claim 1, however, is not
limited to a composition that contains sodium metabisulfite (see Br. 9
(Claim 1)). To the contrary, Appellants’ claim 1 lists sodium metabisulfite
as one of many alternative antioxidant compounds that may be included in
Appellants’ composition (id.). Therefore, we find that Appellants’
contentions are not commensurate in scope with Appellants’ claim 1. In
order to establish unexpected results for a claimed invention, objective
evidence of non-obviousness must be commensurate in scope with the
claims which the evidence is offered to support. In re Greenfield, 571 F.2d
1185, 1189 (CCPA 1978).
CONCLUSION OF LAW
The preponderance of evidence relied upon by Examiner supports a
conclusion of obviousness.
The rejection of claim 1 under 35 U.S.C. § 103(a) as unpatentable
over the combination of Zhu ’494, greentea-extract.info, Zhu 1998, Claus,
Rababah, and Yilmaz is affirmed. Claims 3—6, 10, 12, 13, and 17—19 are not
separately argued and fall with claim 1.
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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