Ex Parte Boyd et al

Patent Trials and Appeals Board

May 22, 2019

13262493 - (D) (P.T.A.B. May. 22, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/262,493 09/30/2011
23909 7590 05/24/2019
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-US-01-0C 2521
EXAMINER
ARNOLD, ERNST V
ART UNIT PAPER NUMBER
1613
NOTIFICATION DATE DELIVERY MODE
05/24/2019 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):
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
Appeal 2018-003837
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. The Examiner finally rejected the claims for
obviousness.
We have jurisdiction under 35 U.S.C. § 6(b ). We reverse.
STATEMENT OF THE CASE
The sole rejection before us for review is the Examiner's rejection of
claims 1, 2, and 6-14 under 35 U.S.C. § 103(a) for obviousness over Moon
(WO 2007/091856 Al, published Aug. 16, 2007), Katayama (EP O 711 544
1 Appellants identify Colgate-Palmolive Company as the real party in
interest. Appeal Br. 2 (Appeal Brief entered November 13, 2017).
Appeal2018-003837
Application 13/262,493
A2, published May 15, 1996), Szeles (US 2003/0211054 Al, published Nov.
13, 2003), Melman (US 2002/0156130 Al, published Oct. 24, 2002), Doyle
(US 2005/0163727 Al, published July 28, 2005), Nathoo (US 2003/0103913
Al, published June 5, 2003), and Stone (US 2006/0210511 Al, published
Sept. 21, 2006). Final Act. 3-14 (Final Office Action entered May 12,
2017).
Claim 1, the only independent claim on appeal, is representative and
reads as follows (Appeal 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 comprising water,
wherein at least one of the granules and the orally
acceptable vehicle further 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 in an amount of 5 to 35 percent by
weight of the granule; and
wherein the plurality of granules are present in an amount
of 1 to 5 percent by weight of the composition.
DISCUSSION
This application was previously before this Board in an appeal
involving an obviousness rejection of claims 1--4 and 6-14, in which the
Examiner applied the same prior art references relied upon in the rejection in
the present appeal. See Decision on Appeal 1-2 (entered September 28,
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Application 13/262,493
2016 (Appeal 2014-001934)). In the previous appeal, we affirmed the
Examiner's obviousness rejection. See id. at 1-11.
After the previous appeal, Appellants amended representative claim 1
to recite that the claimed dentifrice composition's orally acceptable vehicle
comprises water, and to recite that the composition's granules are present in
an amount of 1 to 5 percent by weight of the composition. See Appeal Br.
10. Those limitations are the subject of the present appeal.
In rejecting amended claim 1 over the same combination of prior art
references as applied in the previous appeal, the Examiner found that the
Moon reference disclosed dentifrice composition embodiments that included
water as a carrier material, as claim l now requires. Final Act. 4--5.
As to claim 1 's requirement for the composition to contain 1 to 5
percent by weight of the polymeric granules, the Examiner reasoned that the
percentage of granules in Moon's water-containing embodiments would
have been routinely optimized, based on the amount of water added to the
compositions, and that the claimed percentage of granules, therefore, would
have been obvious, absent some showing of criticality in relation to the
claimed percentage range. Final Act. 10-11.
Appellants contend that the Moon reference does not teach or suggest
a dentifrice composition that includes water as rejected claim 1 now
requires, but instead teaches dried compositions that only contain water
when the compositions are placed in the user's mouth. See Appeal Br. 5-8;
Reply Br. 2.
Moreover, Appellants contend, because Moon teaches that its
compositions do not contain water until used, the Examiner erred in
concluding that, through routine optimization, a skilled artisan would have
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considered it obvious that Moon's compositions would contain 1 to 5
percent by weight of granules composed of a polymeric binding agent. See
Appeal Br. 7-8.
As stated inJn re Oetiker, 977 F.2d 1443, 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.
Having carefully considered the arguments and evidence advanced by
Appellants and the Examiner, Appellants persuade us that a preponderance
of the evidence does not support the Examiner's conclusion of obviousness
as to claim 1.
As to the first disputed limitation in claim 1, however, we are not
persuaded that Moon fails to teach or suggest a composition that includes
water. We acknowledge, as Appellants contend, that Moon is primarily
directed to a dried polymeric granule-containing tablet that is hydrated when
placed in the user's mouth for oral care purposes, and is distinct from
conventional oral care compositions:
Disclosed herein is an oral care composition that
provides pleasant cooling sensation and easy delivery of an oral
care active ingredient. The tablet-type oral care composition of
the present invention is prepared by compressing porous plastic
granules ... and undergoes in-situ melting and gelling by
saliva or water in the buccal cavity, or by chewing. Upon direct
administration of the composition to the buccal cavity, the
composition undergoes melting and gelling by water or saliva,
or by chewing action, and works to maintain oral health via
gargling or mouth washing. Therefore, the formulation of the
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Application 13/262,493
present invention advantageously reduces inconvenience of
conventional liquid or ointment-like oral care products and also
provides easy portability.
Moon, Abstract.
As the Examiner found, however, Moon also discloses embodiments
in which water may be applied to the tablets before use, including for
gargling and mouth washing purposes:
[T]he oral care agent may be employed for gargling or mouth
washing via melting and gelling by water or saliva, or by
chewing action following direct administration of the agent to
the mouth. Like 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 ( emphasis added); see also id. at 17 ("Alternatively, mouth rinsing
or gargling for oral hygiene is effected by attaching the tablet on a
toothbrush and melting and gelling it while maintaining its original shape.");
Given these teachings, Appellants do not persuade us that "[t]here is
no disclosure or teaching anywhere in Moon of a composition comprising a
plurality of granules and an orally acceptable vehicle comprising water"
(Appeal Br. 5), nor are we persuaded that applying water to Moon's tablet
before use would render the tablet unsuitable for its intended use (see id. at
7).
As to the other disputed limitation in Appellants' claim 1, however,
we find that Appellants have the better position.
Claim 1 requires the claimed dentifrice composition to include, by
weight of the overall composition, 1 to 5 percent granules composed of a
polymeric binding agent. Appeal Br. 10. As noted above, Moon discloses
that its compositions are composed of polymer-containing granules. See
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Moon, Abstract; see also id. at 7-8, 10-11 (listing polymers that may be
present in the granules).
As also noted above, the Examiner reasoned that the percentage of
granules in Moon's water-containing embodiments would have been
routinely optimized, based on the amount of water added to the
compositions, and that the claimed percentage of granules, therefore, would
have been obvious, absent some showing of criticality in relation to the
claimed percentage range. Final Act. 10-11.
We acknowledge, as the Examiner contends, that "where the general
conditions of a claim are disclosed in the prior art, it is not inventive to
discover the optimum or workable ranges by routine experimentation." In re
Aller, 220 F.2d 454, 456 (CCPA 1955). As our reviewing court has
explained, where a claimed range overlaps or abuts a range taught in the
prior art, a prima facie case of obviousness based on optimization may be
present. In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003).
We are not persuaded, however, that the Examiner has identified
sufficient evidence, on this record, teaching or suggesting that the
water-containing embodiments of Moon's oral care compositions (see Moon
1 7, 26) should contain quantities of water sufficient to dilute the granules in
Moon's compositions to a percentage that overlaps or abuts the 1 to 5
percent range recited in Appellants' claim 1. Nor has the Examiner
identified, on this record, evidence suggesting that it would be desirable,
suitable, or even useful, for the water-containing compositions taught by
Moon to have only 1 to 5 percent by weight of the polymeric granules,
particularly given Moon's teaching that its primary embodiments are
composed almost exclusively of the granules. Thus, even assuming for the
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sake of argument that the amount of water in Moon's water-containing
embodiments would have been routinely optimized, we are not persuaded
that the Examiner has shown, on this record, that such optimization would
have led a skilled artisan to a composition having the percentage of granules
required by Appellants' claim 1.
We acknowledge, as the Examiner contends (see Ans. 7-8), that
Moon discloses placing its tablets into water, to test the melting/gelling
times of its tablets (Moon 22). The Examiner, however, points to no
evidence of record that suggests adding, to those test formulations, the other
ingredients required by Appellants' claim 1. Thus, even if it were obvious,
based on Moon, to prepare a test formulation having the percentage of
granules recited by Appellants' claim 1, the Examiner does not explain, on
this record, why a skilled artisan would have used that test formulation as a
base oral care formulation, to which the artisan would have added other oral
care composition ingredients taught in the other cited references, to arrive at
Appellants' claimed composition.
In sum, for the reasons discussed, Appellants persuade us that the
preponderance of the evidence does not support the Examiner's conclusion
of obviousness as to Appellants' claim 1. We, therefore, reverse the
Examiner's rejection of claim 1, and its dependent claims 2 and 6-14, over
the cited references.
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SUMMARY
For the reasons discussed, we reverse the Examiner's rejection of
claims 1, 2, and 6-14 under 35 U.S.C. § 103(a) for obviousness over Moon,
Katayama, Szeles, Melman, Doyle, Nathoo, and Stone.
REVERSED
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