Ex Parte Campbell et al

Patent Trial and Appeal Board

Aug 11, 2016

13262502 (P.T.A.B. Aug. 11, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/262,502 09/30/2011
23909 7590 08/15/2016
COLGATE-PALMOLIVE COMPANY
909 RIVER ROAD
PISCATAWAY, NJ 08855
FIRST NAMED INVENTOR
Thomas S. Campbell
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.
8402-00-0C 1093
EXAMINER
ROBERTS, LEZAH
ART UNIT PAPER NUMBER
1612
NOTIFICATION DATE DELIVERY MODE
08/15/2016 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
uspto@thebellesgroup.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS S. CAMPBELL,
ANDREW NOW AK, and STEVEN FISHER
Appeal2014-008607
Application 13/262,502
Technology Center 1600
Before DONALD E. ADAMS, DEMETRA J. MILLS, and JOHN G. NEW,
Administrative Patent Judges.
ADAMS, Administrative Patent Judge.
DECISION ON APPEAL 1
This appeal under 35 U.S.C. § 134(a) involves claims 1, 3, 8-10, 13-
16, 20, and 21 (Final Rej. 1). 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 "invention relates to dentifrice compositions comprising
zinc ions" and a method of using such compositions (Spec. i-f 4; see
1 Appellants identify the Real Party in Interest as "the Colgate-Palmolive
Company" (Br. 2).
Appeal2014-008607
Application 13/262,502
Appellants' independent claims 1 and 20). Claim 1 is representative and
reproduced in the Claims Appendix of Appellants' Brief.
Claims 1, 3, 8-10, 13-16, 20, and 21 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Cummins.2
Claims 1, 3, 8-10, 13-16, 20, and 21 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Garlick3 and Cummins.
ISSUE
Does the preponderance of evidence relied upon by Examiner support
a conclusion of obviousness?
FACTUAL FINDINGS (FF)
FF 1. Cummins discloses "an oral composition" that comprises, inter alia,
"Triclosan," a "pharmaceutically acceptable carrier[,]" and "thickeners such
as . . . xanthan gum" (Cummins 1 : 10-11 and 60-6 2; id. at 1 : 3 4-3 6
("Triclosan is a well-known anti-bacterial agent, used in oral compositions
to reduce or inhibit the growth of dental plaque"); see Spec i-f 3 7
("Halogenated diphenyl ether antibacterial compounds that are useful for the
preparation of the oral care compositions of the present invention ... include
... triclosan"); Ans. 2).
FF 2. Cummins discloses that "[p]referred compositions for use in
[Cummins'] invention contain Triclosan together with a zinc salt such as
zinc citrate," wherein "[t]he amount of zinc salt used in such combination
ranges from 0.01-5% by weight of the composition" (Cummins 2: 60-63;
Ans. 2).
2 Cummins et al., US 5,500,448, issued Mar. 19, 1996.
3 Garlick, Jr. et al., US 5,695,746, issued Dec. 9, 1997.
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Application 13/262,502
FF 3. Cummins "[a]lso prefer[s] for use in [Cummins'] invention[: ]
compositions which contain Triclosan and a copolymer of
polyvinylmethylether with maleic anhydride" (Cummins 3: 1-3; id. at
Abstract ("Preferably the Triclosan is used together with a zinc salt such as
zinc citrate, and or a polymer that enhances the delivery of the Triclosan");
id. at 2: 28-31; Ans. 2-3).
FF 4. Cummins exemplified a composition comprising: xanthan gum
(1.00%), zinc citrate (0.75%), triclosan, and water (i.e., an orally acceptable
vehicle) (Cummins 3: Example 1; see Ans. 7-8).
FF 5. Garlick "relates to a liquid dentifrice composition with flavor impact
similar to a mouthwash for freshening breath" (Garlick 1: 7-9).
FF 6. Garlick discloses compositions that contain, inter alia, thickeners
such as, preferably, "xanthan and guar gums" in the range of from "0.1 to
2% ... by weight" of the composition; an orally acceptable vehicle, such as
water; tartar control agents, such as phosphorous or zinc; and "antigingivitis
actives such as triclosan" (Garlick 3: 29, 33-38, and 53-55; id. at 4: 13-14;
see Ans. 3--4).
FF 7. Examiner finds that Garlick exemplifies "a composition comprising
water (an orally acceptable vehicle), zinc citrate (2.00%) and xanthan gum
(0.55%)" (Ans. 3, citing Garlick 5: Table 1).
FF 8. Examiner finds that Garlick fails to suggest a the use of a particular
amount of triclosan or a maleic anhydride copolymer and relies on Cummins
to suggest an oral care composition comprising, inter alia, a copolymer of
polyvinylmethylether with maleic anhydride and "[t]riclosan [in an amount
of] from 0.1-2% by weight of the oral composition" (Ans. 4).
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Application 13/262,502
The rejection over Cummins:
ANALYSIS
Based on Cummins, Examiner concludes that, at the time Appellants'
invention was made, it would have been prima facie obvious to include
copolymers of polyvinylmethylether with maleic anhydride in Cummins'
exemplified composition "because Cummins [] disclose[ s] the copolymer
enhances the delivery of the anti-bacterial agent, triclosan" (Ans. 3; FF 1--4).
We recognize Appellants' contention that "Cummins is completely
silent as to the characteristic and concentrations of xanthan gum to be
employed as a thickening agent" (Br. 4). Notwithstanding Appellants'
contention to the contrary, Cummins exemplifies a composition comprising
1 % xanthan gum, which falls within the range required by Appellants'
claimed invention (FF 4; see Ans. 7). Appellants fail to provide persuasive
evidence or argument to support a conclusion that the characteristics of
Cummins' xanthan gum are different that the xanthan gum required by
Appellants' claimed invention (see Br. 4; cf FF 4; Ans. 10 ("one of ordinary
skill in the art would reasonably conclude that the compositions of Cummins
comprising xanthan gum would have substantially the same characteristics
as that of the instant claims")).
We recognize, but are not persuaded by, the data presented in
Appellants' Specification and contentions regarding the viscosity of a
composition within the scope of Appellants' claimed invention relative to
comparative examples comprising carboxymethyl cellulose (CMC) alone or
in combination with carrageenan instead of xanthan gum (see Spec. i-fi-1 55-
61 and Table 1; Br. 5-7). As Examiner explains, on this record, Cummins
exemplifies a composition comprising each component of Appellants'
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Application 13/262,502
claimed composition, with the exception of a maleic anhydride copolymer
(Ans. 6 and 8; FF 4). In this regard, Examiner further explains that a person
of ordinary skill in this art would have "add[ ed] a copolymer of
polyvinylmethylether with maleic anhydride to [Cummins' exemplified]
composition[] because Cummins suggests" the beneficial result a person of
ordinary skill in this art would have expected from doing so, specifically
"enhanc[ing] the delivery of the Triclosan" (Ans. 5 and 7 ("The addition of
the copolymer of polyvinylmethylether with maleic anhydride would [have]
be[ en] obvious because Cummins discloses using the copolymer in
compositions that comprise Triclosan, which is incorporated into
EXAMPLE 1"); FF 3).
Notwithstanding Appellants' contention to the contrary, Examiner did
not ignore Appellants' assertion of unexpected results (see Br. 7
("Examiner's refusal to consider the unexpected results found in
[Appellants'] [S]pecification is unsupported by any evidence or facts
presently of record")). To the contrary, Examiner found Appellants'
evidence unpersuasive given the weight of the evidence supporting a
conclusion of obviousness (see Ans. 11 ("Examiner has considered
[A]ppellants['] evidence of secondary considerations and has not found them
persuasive"); see also FF 1--4). "Evidence of secondary considerations,
including evidence of unexpected results ... , are but a part of the 'totality of
the evidence' that is used to reach the ultimate conclusion of obviousness."
Richardson-Vicks Inc. v. Upjohn Co., 122 F.3d 1476 1483 (Fed. Cir. 1997).
"Although [secondary evidence] must be considered, [it] do[ es] not control
the obviousness conclusion." Newell Companies, Inc. v. Kenny Mfg. Co.,
864 F.2d 757, 768 (Fed. Cir. 1988). The weight of the secondary
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considerations, as here, may be of insufficient weight to override a
determination of obviousness based on primary considerations. Ryko Mfg.
Co. v. Nu-Star, Inc., 950 F.2d 714, 719 (Fed. Cir. 1991). On this record, we
find that, when this record is considered as a whole, including Appellants'
secondary considerations, the evidence relied upon by Examiner weighs in
favor of a conclusion of obviousness.
The rejection over the combination of Garlick and Cummins:
Based on the combination of Garlick and Cummins, Examiner
concludes that, at the time Appellants' invention was made, it would have
been prima facie obvious "to have used a copolymer of
polyvinylmethylether with maleic anhydride when using triclosan ... to
enhance[] the delivery of the triclosan to the oral cavity" (Ans. 4; FF 3 and
5-8).
Initially, we note that, for the foregoing reasons, we find the subject
matter of Appellants' claimed invention prima facie obvious in view of
Cummins alone. The Board may rely upon less than all the references cited
by the Examiner. See In re May, 574 F.2d 1082, 1090 (CCPA 1978).
Nevertheless, to be complete, we find that the combination of Garlick and
Cummins also supports a conclusion of obviousness.
Garlick exemplifies a liquid dentifrice composition comprising water,
2% zinc citrate, and 0.5% xanthan gum (FF 7). As Examiner explains,
Garlick fails to exemplify a composition comprising triclosan and a maleic
anhydride copolymer (FF 8). Cummins, however, discloses that triclosan is
a well-known anti-bacterial agent and a copolymer of polyvinylmethylether
with maleic anhydride, when used in combination with zinc citrate and
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triclosan, enhances the delivery of triclosan (FF 3). Therefore, we agree
with Examiner's conclusion that, at the time of Appellants' claimed
invention, a person of ordinary skill in this art would have found it prima
facie obvious to include triclosan, an antigingivitis agent, in the dentifrice
composition exemplified by Garlick and, thereby, also include a copolymer
of polyvinylmethylether with maleic anhydride to Garlick' s dentifrice
composition to enhance the delivery of the triclosan (FF 3 and 5-8).
Because both Garlick and Cummins exemplify the use of xanthan
gum in the range required by Appellants' claimed invention, we are not
persuaded by Appellants' contention that "it is clear that the combination of
Garlick[] and Cummins, still would not have taught or suggested selecting
... xanthan gum" for inclusion in a dentifrice composition (Br. 8).
For the same reasons as set forth above, the weight of evidence on this
record outweighs Appellants' assertion of unexpected results (see Br. 9-10;
cf FF 3 and 5-8).
CONCLUSION OF LAW
The preponderance of evidence relied upon by Examiner support a
conclusion of obviousness.
The rejection of claim 1 under 35 U.S.C. § 103(a) as unpatentable
over Cummins is affirmed. Claims 3, 8-10, 13-16, 20, and 21 are not
separately argued and fall with claim 1.
The rejection of claim 1 under 35 U.S.C. § 103(a) as unpatentable
over the combination of Garlick and Cummins is affirmed. Claims 3, 8-10,
13-16, 20, and 21 are not separately argued and fall with claim 1.
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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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