Ex Parte Boyd et al

Patent Trial and Appeal Board

Sep 26, 2016

13262493 (P.T.A.B. Sep. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/262,493 09/30/2011
23909 7590 09/28/2016
COLGATE-PALMOLIVE COMPANY
909 RIVER ROAD
PISCATAWAY, NJ 08855
FIRST NAMED INVENTOR
Thomas Boyd
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.
8282-00-0C 2521
EXAMINER
ARNOLD, ERNST V
ART UNIT PAPER NUMBER
1613
NOTIFICATION DATE DELIVERY MODE
09/28/2016 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):
Patent_Mail@colpal.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS BOYD,
EVANGELIA ARV ANITIDOU, JOE VAZQUEZ, YING YANG,
QING CLAIRE HE, and MARY HORCHOS 1
Appeal2014-001934
Application 13/262,493
Technology Center 1600
Before FRANCISCO C. PRATS, JACQUELINE T. HARLOW, and
RICHARD J. SMITH, Administrative Patent Judges.
PRATS, Administrative Patent Judge.
DECISION ON APPEAL
This appeal under 35 U.S.C. § 134(a) involves claims to exfoliating
dentifrice compositions, systems including those compositions, and methods
for their use. The Examiner rejected the claims for obviousness.
We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
STATEMENT OF THE CASE
The sole rejection before us for review is the Examiner's rejection of
claims 1--4 and 6-14 under 35 U.S.C. § 103(a) for obviousness over Moon
1 Appellants state that the "real party in interest in this appeal is Colgate-
Palmolive Company." Br. 2.
Appeal2014-001934
Application 13/262,493
et al., (WO 2007/091856 Al, published Aug. 16, 2007), Katayama et al.,
(EP 0 711 544 A2, published May 15, 1996), Szeles et al., (US
2003/0211054 Al, published Nov. 13, 2003), Melman (US 2002/0156130
Al, published Oct. 24, 2002), Doyle et al., (US 2005/0163727 Al, published
July 28, 2005), Nathoo (US 2003/0103913 Al, published June 5, 2003), and
Stone et al., (US 2006/0210511 Al, published Sept. 21, 2006). Final Action
2-11.
Claim 1, the only independent claim on appeal, is representative and
reads as follows (Br. 10):
1. An exfoliating dentifrice composition comprising
(A) a plurality of granules, wherein the granules
comprise at least one polymeric binding agent;
(B) an orally acceptable vehicle,
wherein at least one of the granules and the orally acceptable
vehicle fi1rther comprises at least one abrasive agent and having
an average particle diameter of 0.01 mm to 4 mm and
comprises silica; and
( C) a hydroxyacid,
wherein the granules further comprise a plasticizer selected
from the group consisting of propylene glycol, glycerin and
triacetin.
OBVIOUSNESS
In rejecting claims 1--4 and 6-14 for obviousness, the Examiner found
that Moon described a dentifrice composition including nearly all of the
features recited in claim 1, except that Moon did not disclose that its
compositions included a hydroxyacid, and did not disclose whether the
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abrasive silica particles in its compositions had the average particle diameter
required by claim 1. Final Action 4--5, 7.
The Examiner cited Katayama as evidence of the obviousness of
including, in dentifrice compositions, abrasive silica particles having the
particle size required by claim 1. Id. at 5, 7. In particular, the Examiner
reasoned that an ordinary artisan would have been motivated to include
abrasive particles of the size taught in Katayama
because clearly some particle size of the abrasive must be
present in the composition of Moon et al. and therefore it is
merely routine optimization of the particle sizes for abrasives in
oral compositions to come up with an average particle diameter,
such as the sizes taught by Katayama et al., to get an average
size within the range of 0.01 mm to 4 mm by the ordinary
artisan absent any criticality of the particle diameter.
Id. at 8.
As to the hydroxyacid also required by claim 1, the Examiner cited
l\1elman evidence that hydroxyacids \~1ere kno\~1n in the art to be usefi1l in
dentifrice compositions for the purpose of preventing the formation of
plaque and dental caries, and for inhibiting tooth decay. Id. at 5. The
Examiner reasoned that an ordinary artisan would have been prompted to
include Melman's hydroxyacid in Moon's dentifrice compositions "at least
[for] their additive effect with the anti-carie and agents for prevention of
periodontal diseases of taught by Moon." Id. at 8.
As to the remaining claims, all of which dependent from claim 1, the
Examiner relied primarily on Moon, and cited the additional references to
show the obviousness of including, in dentifrice compositions, features
recited in those dependent claims. See id. at 5 (Szeles cited to show
obviousness in dentifrices of proteolytic enzymes (Appellants' claim 7)); id.
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at 5---6 (Doyle cited to show obviousness in orally applied compositions of
components recited in Appellants' claim 8 and application of such
compositions by syringe as recited in Appellants' claim 9); id. at 6 (Nathoo
cited as evidence of obviousness of "humectants such as glycerin, propylene
glycol, polyethylene glycol, triacetin or any suitable mixture thereof'); id. at
7 (Stone cited as evidence of obviousness of using applicators recited in
claim 12 to apply compositions to mucosal tissue).
Appellants do not present separate arguments as to any of the claims
subject to this ground of rejection. Accordingly, we select claim 1 as
representative of the rejected claims. 37 C.F.R. 41.37(c)(l)(iv).
As stated in Jn re Oetiker, 977F.2d1443, 1445 (Fed. Cir. 1992):
[T]he examiner bears the initial burden . . . of presenting a
prima facie case of unpatentability ....
After evidence or argument is submitted by the applicant
in response, patentability is determined on the totality of the
record, by a preponderance of evidence with due consideration
to persuasiveness of argument.
Appellants' arguments do not persuade us that a preponderance of the
evidence fails to support the Examiner's prima facie case of obviousness as
to claim 1 .
Appellants contend initially that the Examiner erred in finding that
Moon describes a "dentifrice composition" as required by claim 1, because
Moon describes tablet compositions which are not encompassed by
Appellants' definition of "dentifrice" in i-f 8 of the Specification. Br. 3.
We are not persuaded.
Paragraph 8 of Appellants' Specification states that "[t]he term
'dentifrice' shall include toothpastes, gels, and rinses, alone or in
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Application 13/262,493
combination. The dentifrice composition may be in any desired form, such
as but not limited to deep striped, surface striped, multilayered, or any
combination of gel and toothpaste." Spec. i-f 8 (emphasis added). Thus,
rather than being limited to a toothpaste, gel, or rinse, as Appellants appear
to suggest, the definition of "dentifrice" advanced by Appellants, by its
terms, encompasses a composition "in any desired form," and is "not limited
to" gels or toothpastes. Id. Indeed, i-f 8 of the Specification is not
inconsistent with the Examiner's contention that the "plain and ordinary
meaning of 'dentifrice' is any preparation for cleaning the teeth." Ans. 3.
We acknowledge that Moon describes one of its compositions as a
"tablet-type oral care composition ... prepared by compressing porous
plastic granules at a pressure of 500 kg/cm2 or less and [which] undergoes
in-situ melting and gelling by saliva or water in the buccal cavity, or by
chewing." Moon, abstract. Because the broad definition of dentifrice in
Appellants' Specification encompasses a teeth-cleaning oral composition in
any desired form, Appellants do not persuade us that claim 1 fails to
encompass Moon's oral care composition.
To that end, as the Examiner points out (Final Action 4; Ans. 2),
Moon discloses that "[l]ike conventional oral care products, the oral care
agent of the present invention may be formulated into a gel-like oral care
agent by placing the product on a toothbrush and flowing water thereto."
Moon 26. In addition, Moon discloses that its "tablet composition is
contrived to have a gel texture similar to that of conventional toothpaste."
Id. at 5. Accordingly, Appellants do not persuade us that Moon fails to
disclose a dentifrice composition encompassed by claim 1.
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Appellants contend further that the Examiner's rejection improperly
picks and chooses only selected portions of the cited references to support
the asserted conclusion of obviousness, and is therefore based on improper
hindsight. Br. 4. In particular, Appellants contend, the Examiner
mischaracterized the teachings from the cited references as they relate to
Appellants' invention described in the Specification, as evidenced by the
abstracts of each of the cited references. Id. at 4--7. Appellants contend that
the Examiner did not explain adequately why the cited references would
have suggested the claimed compositions. Id. at 7. In particular, Appellants
contend, Moon intended to restrict the ingredients of the granules in its
tablets to "a binder, a gelling agent and a water penetration enhancer (see
e.g. page 4, lines 17-22 and claim 1 of Moon), i.e. even if it was permissible
to pick and choose elements at random, Moon teaches away from making
such arbitrary additions to their compositions." Id.
We are not persuaded that the Examiner has improperly relied on
hindsight to establish the obviousness of the composition of representative
claim 1. Nor are we persuaded that an ordinary artisan would have had to
sift through the collective disclosures of the cited references, or an infinite
number of possible ingredient selections, to arrive at the composition of
claim 1, as Appellants contend. Id. at 8. To the contrary, we are persuaded
that the Examiner has explained adequately why, based on the teachings in
the cited references, an ordinary artisan would have been prompted to
prepare a composition having the ingredients required by representative
claim 1.
As the Examiner found (Final Action 4 (citing Moon's claims 1-3, 11
and13)), Moon describes a dentifrice composition that contains porous
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plastic granules composed of a polymeric binding agent, as claim 1 requires.
See Moon 27 (e.g., claim 3 reciting a "tablet-type oral care composition ...
consisting essentially of a material for porous plastic granules, a binder, a
gelling agent, a water penetration enhancer, an anti-adhesive agent to teeth
and a humectant"); see also Moon 28 (claim 11) (granules can include any
of a number of polymeric binding agents, including cellulose derivatives).
As to claim 1 's requirement for an orally acceptable vehicle, as well
as claim 1 's requirement for a plasticizer selected from propylene glycol,
glycerin, and triacetin, Moon discloses that the humectant in its
compositions can be glycerin or propylene glycol. Moon 29 (claim 16).
As also required by claim 1, and as the Examiner found (Final Action
4 ), Moon discloses that its compositions can include an abrasive composed
of silica. Moon 14 ("An abrasive is very important for cleaning action of
oral care products including removal of plaques, food debris, and the like ...
. Currently, examples of materials for the abrasive suitable for use in oral
care formulations may include silica .... ").
Thus, as the Examiner found (Final Action 7), and Appellants do not
persuasively dispute, Moon differs from Appellants' claim 1 only in not
expressly teaching claim 1 's average particle diameter for the silica abrasive,
and in not including a hydroxyacid.
As the Examiner found, however (id. at 5), Katayama describes
abrasive-containing dentifrice compositions (Katayama, abstract), teaches
using silica particles as a water-insoluble abrasive in its compositions (id. at
4 ), and teaches also that an average particle size range of for those abrasive
particles is from 50 to 500 µm (id. at 19 (claim 12)), a particle size range
that undisputedly overlaps the average abrasive particle diameter range in
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Appellants' claim 1. We agree with the Examiner that an ordinary artisan,
determining a suitable average particle diameter size for the silica abrasive
included in Moon's compositions, would have considered it obvious to use
abrasive silica particles within the size range taught in Katayama, given
Katayama's teaching that abrasive particles of that size were suitable in
dentifrice compositions. Because this suggestion comes from the cited prior
art, rather than Appellants' Specification, Appellants do not persuade us that
the Examiner's rationale in this respect is based on improper hindsight, or
improper picking and choosing from the cited references.
As to the hydroxyacid recited in Appellants' claim 1, as the Examiner
noted (Final Action 4), Moon teaches that a number of additional active
ingredients, beyond those in its most basic composition, would have been
suitable in its formulations, including "an anti-caries agent, an anti-calculus
agent, an agent for prevention of periodontal diseases, an antibacterial agent,
an anti-inflammatory agent and a teeth whitening agent." Moon 29 (claim
17).
Although Moon might not specifically mention a hydroxyacid as its
active ingredient, as the Examiner found (Final Action 5), Melman discloses
a composition that "successfully cleans and brightens teeth while inhibiting
and reducing the growth of plaque bacteria, which is achieved when acetic
acid or other equivalent organic acid is utilized in combination with
conventional dental ingredients in effective concentrations to treat the oral
cavity." Melman i-f 20 (emphasis added). Among organic acids taught by
Melman as being useful for this purpose are lactic, glycolic, and salicylic
acids (id. at i-f 17), all of which are undisputedly hydroxyacids encompassed
by claim 1. See also Br. 9 (Appellants' claim 6).
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Given Moon's disclosure of the suitability in its dentifrice
compositions of an anti-caries agent, an anti-calculus agent, an agent for
prevention of periodontal diseases, an antibacterial agent, an anti-
inflammatory agent, and/or a teeth whitening agent, and further given
Melman's disclosure that hydroxyacids may be included in dentifrice
compositions to provide formulations that clean and brighten teeth, and
inhibit and reduce the growth of plaque bacteria, we agree with the
Examiner that an ordinary artisan would have been prompted to include
Melman's hydroxyacids in Moon's dentifrice compositions. Because this
suggestion comes from the cited prior art, rather than Appellants'
Specification, Appellants do not persuade us that the Examiner's rationale in
this respect is based on improper hindsight, or improper picking and
choosing from the cited references. Moreover, because Moon expressly
teaches the suitability of including these types of active ingredients in its
compositions, Moon's use of the language "consisting essentially of' when
describing its compositions (see Moon 27 (claims 1-3)) does not persuade us
that Moon teaches away from including additional active ingredients beyond
the ingredients expressly recited in its claims 1-3.
In sum, for the reasons discussed, Appellants' arguments do not
persuade us that a preponderance of the evidence fails to support the
Examiner's prima facie case of obviousness as to representative claim 1.
Appellants do not advance secondary evidence of nonobviousness to rebut
the Examiner's prima facie case. Accordingly, we affirm the Examiner's
rejection of claim 1 for obviousness over the cited references.
Because they were not argued separately, claims 2--4 and 6-14 fall
with claim 1. 37 C.F.R. 41.37(c)(l)(iv). In that regard, we note Appellants'
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contention that, "[ w ]ith respect to a means of exfoliation and system claims,
neither Moon nor any combination of references therof is directed toward
this usage nor provides any evidence that they are able to achieve exfoliation
given the different form of their composition or that a system was intended
to be formed." Br. 7.
Technically, however, to present separate argument regarding
appealed claims, "[ u ]nder each heading identifying the ground of rejection
being contested, any claim( s) argued separately or as a subgroup shall be
argued under a separate subheading that identifies the claim( s) by number."
37 C.F.R. 41.37(c)(l)(iv). Appellants have not provided a separate
subheading, as required. Nor have Appellants explained specifically, by
number, which claims constitute the "means of exfoliation and system
claims." Br. 7.
In any event, we note that claim 10 recites "[a] method of exfoliating
an oral cavity soft tissue comprising contacting an exfoliating dentifrice
composition to an oral cavity soft tissue wherein the dentifrice composition
is as defined in claim 1." Br. 10.
We note also that claim 11 recites "[a] system for exfoliation of the
soft tissues of the oral cavity comprising: (A) an oral care implement and (B)
an exfoliating dentifrice composition according to claim 1." Id.
As noted above, we agree with the Examiner that the cited references
render obvious the dentifrice composition of claim 1, expressly recited in
each of claims 10 and 11. As also noted above, Moon teaches that its
composition should be combined with a toothbrush before use in the oral
cavity as a dentifrice. See Moon 26. Thus, not only does Moon suggest
applying its composition to the oral cavity as recited in Appellants' claim 10,
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but also suggests its combination with an oral care implement, as recited in
claim 11. That Moon's suggestion for practicing the invention recited
claims 10 and 11 might not be for Appellants' purpose of exfoliation does
not render those claims any less obvious. See KSR Int'! Co. v. Teleflex
Inc., 550 U.S. 398, 419 (2007). ("In determining whether the subject matter
of a patent claim is obvious, neither the particular motivation nor the avowed
purpose of the patentee controls. What matters is the objective reach of the
claim. If the claim extends to what is obvious, it is invalid under§ 103.").
SUMMARY
For the reasons discussed, we affirm the Examiner's rejection of
claims 1--4 and 6-14 under 35 U.S.C. § 103(a) for obviousness over Moon,
Katayama, Szeles, Melman, Doyle, Nathoo, and Stone.
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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