Ex Parte Birbara et al

Patent Trials and Appeals Board

May 24, 2019

14215984 - (D) (P.T.A.B. May. 24, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/215,984 03/17/2014
23117 7590 05/29/2019
NIXON & V ANDERHYE, PC
901 NORTH GLEBE ROAD, 11 TH FLOOR
ARLINGTON, VA 22203
FIRST NAMED INVENTOR
Philip J. Birbara
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
GPK-5655-47 1629
EXAMINER
WEBB, WALTERE
ART UNIT PAPER NUMBER
1612
NOTIFICATION DATE DELIVERY MODE
05/29/2019 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):
PTOMAIL@nixonvan.com
pair_nixon@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PHILIP J. BIRBARA and JEFFREY CUMMINGS
Appeal2018-000814
Application 14/215,9841
Technology Center 1600
Before DEBORAH KATZ, JOHN G. NEW, and DAVID COTTA,
Administrative Patent Judges.
COTTA, Administrative Patent Judge.
DECISION ON APPEAL
This appeal under 35 U.S.C. § 134 involves "oral compositions for
treating various oral inflammatory conditions, such as gingivitis and
periodontitis." Spec. 1. The Examiner rejected the claims on appeal under
35 U.S.C. § 103(a) as obvious.
We AFFIRM.
1 According to the Appellants, the real party in interest is Vizuri Health
Sciences LLC. App. Br. 3.
Appeal2018-000814
Application 14/215,984
STATEMENT OF THE CASE
Claims 1-10, 12-14, 16-18, and 22-24, 46-54, and 57-86 are
on appeal. Claim 1 is illustrative and reads as follows:
1. A composition comprising:
i) a poorly soluble aglycone polyphenol, said polyphenol
selected from the group consisting of flavonoids, stilbenes,
curcumins and lignans,
ii) an abrasive agent, and
iii) an orally acceptable carrier,
wherein said composition is in the form of a toothpaste or gel,
wherein said polyphenol comprises at least one form selected
from the group consisting of
an alkali metal salt,
a concentrate, and
mixtures of the alkali metal salt and the concentrate, and
wherein the composition has a pH greater than 8.
App. Br. 14 (Claim App'x).
The claims stand rejected as follows.
Claims 1-10, 12-14, 16-18, 46-54, 57-72, 76-84 were rejected under
35 U.S.C. § 103(a) as obvious over the combination of Casper,2 Birbara,3
and Gurol.4
Claims 22-24 and 73-35 were rejected under 35 U.S.C. § 103(a) as
obvious over the combination of Casper, Birbara, Gurol, and Williams. 5
2 Casper et al., US Patent No. 6,716,883 Bl, issued Apr. 6, 2004 ("Casper").
3 Birbara, US Patent Publication No. 2011/0311592 Al, published Dec. 22,
2011 ("Birbara").
4 Gurol, US Patent No. 6,669,928 Bl, issued Dec. 30, 2003 ("Gurol").
5 Williams et al., US Patent No. 5,616,313, issued Apr. 1, 1997
("Williams").
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Appeal2018-000814
Application 14/215,984
Claims 1-10, 12-14, 16-18, 46-54, 57-72, and 76-86 were rejected
under 35 U.S.C. § 103(a) as obvious over the combination of Casper,
Bribara, and Degenhardt. 6
OBVIOUSNESS OVER CASPER, BIRBARA, AND GUROL
Appellants argue claims 1-10, 12-14, 16-18, 46-54, 57-72, and 76-
84 together. 7 App. Br. 7-10. We designate claim 1 as representative.
In finding claim 1 obvious, the Examiner found that Casper disclosed
most of the elements of claim 1. Final Act. 8 3-5. The Examiner
acknowledged, however, that Casper does not disclose a specific pH for its
compositions. Id. at 4. The Examiner found that Gurol disclosed
periodontal compositions having 'at least one alkaline agent to render a gel
or paste having a pH of at least 9.0 to 11.0, and preferably 9.5 to 10.0." Id.
According to the Examiner, Gurol teaches that its compositions are
"effective at inhibiting periodontal disease caused by lactic acid forming
bacteria that thrive along the gum line and in gum pockets" and that the "pH
adjustment provided by the composition is believed to not only neutralize
the acids formed by the bacteria, but also to inhibit the growth of bacteria
itself because periodontal bacteria thrives in an acidic environment." Id.
6 Degenhardt et al., US Patent No. 5,093,170, issued Mar. 3, 1992
("Degenhardt").
7 Appellants argue, under a separate heading, that 85 and 86 are
independently patentable. Claims 85 and 86 recite that the composition
further comprises glycerin. Appellants argue that claims 85 and 86 are
independently patentable because Gurol teaches the exclusion of glycerin
and thus "Gurol would not have been part of a combination that includes
glycerin." App. Br. 11. This argument is moot because the Examiner did
not reject claims 85 and 86 over a combination of prior art including Gurol.
8 Office Action mailed Jan. 6, 2017 ("Final Act.").
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Appeal2018-000814
Application 14/215,984
Based on the combination of Casper and Gurol, the Examiner
concluded that it would have been obvious to provide Casper's composition
at a pH greater than 8 as claimed because "the compositions of Casper et al.
are used for treating periodontal disease and Gural teaches that providing a
pH greater than 8, i.e. at least 9 to 11, is effective for treating periodontal
disease by neutralizing acids formed by periodontal bacteria and inhibiting
growth of periodontal bacteria." Id. at 5.
We adopt the Examiner's findings of fact and reasoning regarding the
scope and content of the prior art and agree that the claims would have been
obvious over Casper, Birbara, and Gurol. We address Appellants'
arguments below.
Appellants contend that "Casper teaches that its pH should be neutral,
e.g., by explaining that a suitable component includes a 'buffer to retain the
pH at an acceptable value including as an example potassium phosphate."'
App. Br. 9. According to Appellants "[p]ersons having ordinary skill in the
art would know that a composition buffered with potassium phosphate does
not permit a basic pH of greater than 8.0 as recited in the pending claims."
Id. at 9-10. Appellants argue that "Gurol is thus incompatible with Casper,
and Casper's neutral pH would not have been modified to be basic." App.
Br. 10.
We are not persuaded because the identification of potassium
phosphate in Casper is only exemplary. Casper 5:45-48 ("buffer to retain
the pH at an acceptable value including as an example potassium
phosphate") ( emphasis added). Moreover, Casper does not disclose a pH
preference for its compositions, teaching only to "retain the pH at an
acceptable value." Id. Accordingly, we agree with the Examiner that Caper
leaves the determination of pH "to the discretion of the skilled artisan."
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Application 14/215,984
Ans. 3. In addition, even if Casper were limited to compositions including
potassium phosphate, Appellants do not provide any evidence that presence
of potassium phosphate prohibits a pH greater than 8.0. See, Johnston v.
IVAC Corp., 885 F.2d 1574, 1581 (Fed. Cir. 1989) ("Attorneys' argument is
no substitute for evidence."); In re Pearson, 494 F.2d 1399, 1405 (CCPA
1974). Accordingly, we have no basis on which to conclude that the pH of
Casper's compositions is incompatible with that of Gurol's compositions.
Accordingly, we affirm the Examiner's rejection of claim 1. Because
they were not argued separately, claims 2-10, 12-14, 16-18, 46-54, 57-72,
and 7 6-84 fall with claim 1.
OBVIOUSNESS OVER CASPER, BIRBARA,
GUROL, AND WILLIAMS
In rejecting claims 22-24 and 73-75 as obvious over the combination
of Casper, Birbara, Gurol, and Williams, the Examiner applied the art as
discussed above adding Williams to address elements in dependent claims
22-24 and 73-75. Appellants do not provide separate arguments addressing
claims 22-24 and 73-75. Accordingly, we affirm the Examiner's rejection
of claims 22-24 and 73-75 for the reasons discussed above.
OBVIOUSNESS OVER CASPER, BIRBARA, AND DEGENHARDT
Appellants argue claims 1-10, 12-14, 16-18, 46-54, 57-72, and 76-
86 together. App. Br. 11-12. We designate claim 1 as representative.
In finding claim 1 obvious, the Examiner found that Casper disclosed
most of the elements of claim 1. Final Act. 6-8. The Examiner
acknowledged, however, that Casper does not disclose a specific pH for its
compositions. Id. at 7. The Examiner found that Degenhardt disclosed that
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Application 14/215,984
"[t]he pH of the present compositions and/or its pH in the mouth should be a
pH which is safe for the mouth's hard and soft tissues" and that "[s]uch pH's
are generally neutral or acidic and are typically in the range of from about 3
to about 10, preferably about 4 to about 9." Id. at 7.
Based on the combination of Casper and Degenhardt, the Examiner
concluded that it would have been obvious to provide Casper's composition
at a pH greater than 8 as claimed because Degenhardt "teaches that
providing a pH greater than 8, i.e. about 3 to about 10 and about 4 to about
9, is 'typically' safe for the mouth's hard and soft tissues." Id. at 8. The
Examiner reasoned that the ordinary artisan "would have been motivated to
provide a pH that is recognized as typically safe for the mouth's hard and
soft tissues, as taught in Degenhardt." Id.
We adopt the Examiner's findings of fact and reasoning regarding the
scope and content of the prior art and agree that the claims would have been
obvious over Casper, Birbara, and Degenhardt. We address Appellants'
arguments below.
Appellants argue that "Degenhardt teaches the use of a particular
carboxy-substituted polymer" and there is "no disclosure, teaching or
suggestion in the references that these carboxy-substituted polymer active
agents are equivalent or substitutable with any type of polyphenol." App.
Br. 11. Appellants further argue that "Degenhardt' s teachings relating to pH
would not have been understood as applying to the recited compositions
involving polyphenols." Id. at 12. According to Appellants, "the 'generally
neutral or acidic' pH of Degenhardt would be understood as preventing the
chemical breakdown of the carboxy-substituted polymer active agent." Id.
We are not persuaded.
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Application 14/215,984
We acknowledge that Degenhardt teaches that one of the benefits of
maintaining a pH in the range of 3-10 is that it will "not cause chemical
breakdown of the carboxy-substituted polymer active agent." Degenhardt
10:4-5. However, "the use of patents as reference is not limited to what the
patentees describe as their own inventions ... [t]hey are part of the literature
of the art, relevant for all they contain." In re Heck, 699 F.3d 1331, 1332-
33 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006, 1009, (CCPA
1968). Here, preventing the breakdown of Degenhardt' s carboxy-substituted
polymer is not the only benefit Degenhardt teaches of maintaining a pH in
this range. Degenhardt also teaches thus such pH's are "safe for the mouth's
hard and soft tissues. Id. at 10:1-3. We agree with the Examiner that the
ordinary artisan "would have been motivated to provide a pH that is
recognized as typical and safe for use in a patient's mouth." Ans. 5.
Accordingly, we affirm the Examiner's rejection of claim 1. Because
they were not argued separately, claims 2-10, 12-14, 16-18, 46-54, 57-72,
and 76-86 fall with claim 1.
SUMMARY
In summary, we affirm the Examiner's rejection of claims 1-10, 12-
14, 16-18, 46-54, 57-72, 76-84 under 35 U.S.C. § 103(a) as obvious over
the combination of Casper, Birbara, and Gurol.
We affirm the Examiner's rejection of claims 22-24 and 73-35 under
35 U.S.C. § 103(a) as obvious over the combination of Casper, Birbara,
Gurol, and Williams.
We affirm the Examiner's rejection of claims 1-10, 12-14, 16-18,
46-54, 57-72, and 76-86 under 35 U.S.C. § 103(a) as obvious over the
combination of Casper, Birbara, and Degenhardt.
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Appeal2018-000814
Application 14/215,984
No period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § l.136(a). See 37 C.F.R.
§ l.136(a)(l )(iv).
AFFIRMED
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