Ex Parte Chopra et al

Patent Trial and Appeal Board

Jan 5, 2017

11236082 (P.T.A.B. Jan. 5, 2017)

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.
11/236,082 09/27/2005 Suman K. Chopra 7590-00-US-01-OC 5884
23909 7590 01/09/2017
COLGATE-PALMOLIVE COMPANY
909 RIVER ROAD
PISCATAWAY, NJ 08855
EXAMINER
WEBB, WALTER E
ART UNIT PAPER NUMBER
1612
NOTIFICATION DATE DELIVERY MODE
01/09/2017 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 SUMAN K. CHOPRA, LYNETTE ZAIDEL, and
MICHAEL PRENCIPE1
Appeal 2015-005161
Application 11/236,082
Technology Center 1600
Before DONALD E. ADAMS, MELANIE L. McCOLLUM, and
RACHEL H. TOWNSEND, Administrative Patent Judges.
TOWNSEND, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35U.S.C. § 134 involving claims to a single
phase whitening dentrifice, which have been rejected as obvious. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
STATEMENT OF THE CASE
“Many individuals desire a ‘bright’ smile and white teeth, and
consider dull and stained teeth cosmetically unattractive.” (Spec. 11.)
“There are a variety of compositions described in the art for preventing or
1 Appellants identify the Real Party in Interest as Colgate-Palmolive
Company. (Br. 2.)
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Application 11/236,082
treating the discoloration of teeth.” (Spec. 12.) “The materials most
commonly used in teeth whitening today are peroxides.” (Id.) Appellants
claimed invention is directed to a single phase whitening dentrifice that
includes hydrogen peroxide in complex with cross-linked polyvinyl
pyrrolidone.
Claims 1,7, 13, 14, and 24—292 are on appeal. Claim 1 is
representative and reads as follows:
1. A single phase whitening dentifrice comprising:
a bound peroxide comprising hydrogen peroxide in complex
with a cross-linked polyvinyl pyrrolidone;
an abrasive having an average particle size of about 1 to about
20 pm and is selected from the group consisting of silica, calcium
pyrophosphate and dicalcium phosphate; and
an orally acceptable substantially anhydrous carrier wherein the
carrier comprises a polyethylene glycol/ethylene oxide copolymer
or an ethylene oxide/propylene oxide copolymer.
(Br. 12.)
The following ground of rejection by the Examiner is before us on
review:
Claims 1,7, 13, 14, and 24—29 under 35 U.S.C. § 103(a) as
unpatentable over Merianos3 and Vermeer.4
2 Claims 10 and 23 are pending, but stand withdrawn from consideration.
(Br. 12-13.)
3 Merianos et al., US 5,008,106, issued Apr. 16, 1991.
4 Vermeer, US 5,624,906, issued Apr. 29, 1997.
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DISCUSSION
The Examiner finds that Merianos teaches an anhydrous toothpaste
composition that includes among other things anhydrous PVP-Hydrogen
peroxide, abrasive silica, a surfactant and the anhydrous carrier polyethylene
glycol. (Final Action 2; Ans. 2—3.) The Examiner notes that Merianos does
not provide the particle size of the abrasive and does not teach the anhydrous
carrier comprises one of the two copolymers claimed. (Final Action 2.)
However, the Examiner contends that these compositional elements would
have been obvious to one of ordinary skill in the art in light of the teachings
of Vermeer, which teaches oral hygiene products. (Final Action 3; Ans. 3—
4). In particular, the Examiner finds that Vermeer teaches abrasive silica
used in an oral hygiene product that is in the range of from about 1 to about
20 pm. (Final Action 3.) The Examiner explains that “it isprima facie
obvious to select a known material based on its suitability for its intended
use.” (Final Action 3; Ans. 3.) The Examiner concludes that “it would have
been obvious to a person having ordinary skill in the art to select an abrasive
having an average particles size of about 1 to about 20 pm” in light of the
teaching of Vermeer for use in the Merianos toothpaste composition. (Final
Action 3.)
As to including polyethylene glycol/ethylene oxide copolymer (one of
the orally acceptable substantially anhydrous carriers recited in claim 1), the
Examiner finds that Vermeer teaches “[i]n general nonionic surfactants are
customarily added to conventional oral hygiene compositions to solubilize
flavor” and that polyethylene glycol/ethylene oxide copolymer was such a
known ingredient. (Ans. 3—4.) The Examiner contends that “it is generally
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obvious to add known ingredients to known compositions with the
expectation of obtaining their known function.” (Final Action 3; Ans. 3.)
The Examiner concludes that in light of the teaching of Vermeer, it would
have been obvious to include polyethylene glycol/ethylene oxide copolymer
in the composition of Merianos. (Final Action 3; Ans. 3—4.)
We agree with the Examiner’s factual findings and conclusion that the
composition of claim 1 would have been obvious from the teachings of
Merianos and Vermeer.
Appellants argue that the Examiner’s factual findings regarding
Merianos are “misleading at best.” (Br. 4.) Appellants then provide a chart
comparing the Examiner’s alleged characterization of Merianos and the text
from Merianos, and conclude that the Examiner erred in his determination of
what Merianos teaches because “the claims from Merianos do not correlate
to the element referred to by the Examiner.” (Br. 3—5.) We are not
persuaded. As the Examiner explained in the Final Action, “[t]he
parenthetical claim numbers in the body of the Office action refer to
[Appellants’] claims,” not Merianos’ disclosure. (Final Action 4; see also
Ans. 2—3.) Moreover, in repeating verbatim the formulation 6 disclosure
from Merianos in the comparative disclosure table, Appellants necessarily
acquiesce that Merianos, in fact, teaches an anhydrous toothpaste
composition in formulation 6 that includes the elements the Examiner found
were taught to be exemplified in a dentrifice by Merianos (Br. 5).
Appellants argue that the Examiner’s “acknowledgment] that
Merianos does not teach at least two elements of the claimed whitening
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dentrifice” “is highly suggestive of non-obviousness.” (Br. 6.)5 We
disagree. The fact that prior art does not anticipate does not suggest
obviousness. As the Supreme Court held, “[t]he combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results.” KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 416 (2007). Appellants do not provide persuasive evidence
establishing that “the elements worked together in an unexpected and fruitful
manner,” id., to support a conclusion that the combination of the anhydrous
toothpaste composition of Merianos that includes a silica abrasive and an
anhydrous carrier when including the abrasive at an average particle size of
about 1 to about 20 pm and also includes polyethylene glycol/ethylene oxide
copolymer was not obvious to those of ordinary skill in the art.
We disagree with Appellants’ contention that data in the Specification
“demonstrates that the claimed compositions . . . provide an unexpectedly
stable singlephase product,” and that the Zaidel Declaration6 “further
highlights]” the “surprising results.” (Br. 9.) As the Examiner indicated,
Merianos provides strong evidence of the “stability [of] Anhydrous 1:1
5 Appellants also argue that the Examiner’s election of species requirement,
when claim 1 broadly recited a composition including an unspecified
“abrasive” and “substantially anhydrous orally acceptable carrier” (Claim 1
filed Sept. 27, 2005; Office Action dated Mar. 17, 2008)) necessarily means
“appellants’ claims [reciting two specific copolymers that can be the carrier]
are unobvious over Merianos and Vermeer.” (Br. 6.) No such conclusion
can be drawn from the Examiner’s species restriction made with respect to
the originally claimed composition reciting an unspecified “substantially
anhydrous orally acceptable carrier.”
6 The Declaration of Lynette Zaidel was filed September 25, 2012. (Br. 9.)
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PVP-H2O2 Complex in regard to the retention of peroxide.” (Ans. 4—5;
Merianos 4:35 42.) Example 5 of Merianos quite clearly indicates that what
was tested for stability was the “Anhydrous Complex of Example 1”—a
composition of a water soluble H2O2-PVP complex containing 23.4% by
weight H2O2 and 0.5% by weight water (Merianos 4:35—36 and 3:41—59),
and was not limited to testing stability of a vaginal suppository, as suggested
by Appellants (Br. 8: “No evidence that the stability data of Meriano’s
vaginal suppository would apply to Meriano’s anhydrous toothpastes.”)
Merianos discloses that
[ajfter 43 days at 60° C. the anhydrous complex of Example 1
lost only 15% of its H2O2 activity, which demonstrates an
excellent stability toward decomposition. At room temperature,
decomposition was only 1.5% after 60 days.
(Merianos 4:38-42.) While it is true that Merianos “never mentions that this
stability is maintained when the PVP-hydrogen peroxide is mixed with the
other compounds which form Merianos other example formulations” (Br. 8),
the import of the disclosure as a whole would have lead one of ordinary skill
in the art to expect excellent stability toward decomposition in at least the
anhydrous formulations disclosed, which includes “Formulation 6
Anhydrous Toothpaste,” and particularly in light of Merianos’ discussion of
that at least one problem with the prior art was “the complex had product
stability problems” (Merianos 1:47—54). The Specification data does not
provide any comparative evidence; rather, it simply notes that after aging the
dentrifice that includes the “peroixde incompatible silica abrasive” for two
weeks, “peroxide recovery was 77% of the initially present amount.” (Spec.
31.) The Specification does not even indicate that this recovery was
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“unexpected.” “[I]t is well settled that unexpected results must be
established by factual evidence.” In re Geisler, 116 F.3d 1465, 1470 (Fed.
Cir. 1997). “Attorney’s argument in a brief cannot take the place of
evidence.” In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974). And, in any
event, based on the teaching of Merianos that an anhydrous complex of
H2O2-PVP lost only 15% of its H2O2 activity after 43 days at 60° C and only
1.5% after 60 days at room temperature, the stability of the peroxide
complex in the anhydrous composition demonstrated in the specification
would have been expected.
Regarding the data in the Zaidel Declaration, as the Examiner notes,
the claimed invention was not compared against “the closest prior art, i.e.,
the dentrifice of Merianos, i.e., Formulation 6.” (Ans. 5.) The comparative
composition included urea peroxide, not PVP-H2O2 complex, as disclosed in
the Merianos formulation 6, and there was not any indication that the
“anhydrous carrier” of the comparative composition was polyethylene glycol
400, which is the carrier identified in Merianos’ formulation 6. (Zaidel
Deck 11 5-7.)
Appellants’ argument that Vermeer as a whole would not have
suggested to one of ordinary skill in the art to make “BOTH the selection of
the appropriate particle size for the abrasive AND polyethylene
glycol/ethylene oxide copolymer for use in Merianos” because Vermeer’s
“invention is directed toward novel foaming compositions which comprise
novel alkyl aldonamide compounds” (Br. 6 (emphasis in original) and
because Vermeer does not mention “that the use of these optional
ingredients is suitable for compositions which do not contain an alkyl
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aldonamide” (Br. 7) is equally unavailing. Vermeer notes that “[i]n general
nonionic surfactants are customarily added to conventional oral hygiene
compositions to solubilize flavor” (Vermeer 25:63—64) and does not indicate
the debris removal effect of an abrasive polishing agent having an average
particle size from about 1 to about 20 pm (Vermeer) is at all affected by the
alkyl aldonamide, which does not have a disagreeable taste and renders
plaque on dental surfaces more susceptible to removal during a subsequent
brushing regimen employing a conventional dentrifice (Vermeer 3:21—34).
Thus, as the Examiner noted, these components are generally known
ingredients in the dentrifice art (Ans. 4; Final Action 3), regardless of the
fact that Vermeer suggests their use in a “new oral hygiene compositions
that have improved foam, viscosity: clarity and good taste due to the
inclusion of a new type of alkyl aldonamide compound” (Vermeer Abs.).
For the foregoing reasons, Appellants do not persuade us that the Examiner
erred in rejecting claim 1 for obviousness over Merianos and Vermeer.
Claims 7, 13, 14, and 24—29 have not been argued separately and,
therefore, fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
SUMMARY
We affirm the rejection of claims 1,7, 13, 14, and 24—29 under
35 U.S.C. § 103(a) as unpatentable over Merianos and Vermeer.
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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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