Ex Parte Fei et al

Patent Trial and Appeal Board

Aug 11, 2016

13575671 (P.T.A.B. Aug. 11, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/575,671 07/27/2012
23909 7590 08/15/2016
COLGATE-PALMOLIVE COMPANY
909 RIVER ROAD
PISCATAWAY, NJ 08855
FIRST NAMED INVENTOR
LinFei
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.
8521-00-0C 4856
EXAMINER
LIU, TRACY
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 LIN PEI, RA VI SUBRAMANY AM, and GUOFENG XU
Appeal2015-003320
Application 13/575,671
Technology Center 1600
Before DEMETRA J. MILLS, RICHARD J. SMITH, and
RACHEL H. TOWNSEND, Administrative Patent Judges.
MILLS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134. The Examiner has rejected
the claims for obviousness. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appeal2015-003320
Application 13/575,671
STATEMENT OF CASE
The following claims are representative.
1. An oral composition comprising:
from about 0.05 to about 7% by weight propylene glycol;
from about 0.05 to about 5% by weight of at least one or more active
ingredients found in magnolia extract or a synthetic analogue thereof,
selected from: 5,5'-di-n-butyl-biphenyl-2,2'- diol, isopropyl magnolol,
isobutyl magnolol; and
an orally acceptable carrier;
wherein the amount of the propylene glycol in the composition is
sufficient to enhance the solubility of the active ingredient therein.
8. The oral composition of claim 1, wherein at least one of the one or
more active ingredients is 5,5'-di-n-butyl-biphenyl-2,2'-diol.
Cited References
Xu et al.
Subramanyam et al.
Zhu et al.
Grounds of Rejection
US 2006/0127329 Al June 15, 2006
("Xu")
US 2006/0140880 Al June 29, 2006
WO 01/82922 Al November 8, 2001
("Zhu")
1. Claims 1-14 are rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Xu.
2. Claim 8 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Xu in view of Subramanyam.
3. Claims 1-3 and 8-12 are provisionally rejected on the ground of
nonstatutory double patenting as being unpatentable over claims 1-
11 of copending Application No. 13/577621 in view of Zhu.
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Application 13/575,671
FINDINGS OF FACT
The Examiner's findings of fact are set forth in the Answer at pages
2-10.
PRINCIPLES OF LAW
In making our determination, we apply the preponderance of the
evidence standard. See, e.g., Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427
(Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings
before the Office).
"The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results."
KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).
Where ... the claimed and prior art products are identical or
substantially identical, or are produced by identical or substantially
identical processes, the PTO can require an applicant to prove that the
prior art products do not necessarily or inherently possess the
characteristics of his claimed product. ... Whether the rejection is
based on "inherency" under 35 U.S.C. § 102, on "prima facie
obviousness" under 35 U.S.C. § 103, jointly or alternatively, the
burden of proof is the same, and its fairness is evidenced by the PTO' s
inability to manufacture products or to obtain and compare prior art
products.
In re Best, 562 F.2d 1252, 1255 (CCPA 1977).
"From the standpoint of patent law, a compound and all of its
properties are inseparable; they are one and the same thing." In re Papesch,
315 F.2d 381, 391(CCPA1963).
Applicants can rebut a prima facie case of obviousness based on
overlapping ranges by showing the criticality of the claimed range. "The law
is replete with cases in which the difference between the claimed invention
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Application 13/575,671
and the prior art is some range or other variable within the claims .... In
such a situation, the applicant must show that the particular range is critical,
generally by showing that the claimed range achieves unexpected results
relative to the prior art range." In re Woodruff, 919 F.2d 1575 (Fed. Cir.
1990).
Rejection 1
We agree with the Examiner's fact finding, statement of the rejection
and responses to Appellants' arguments as set forth in the Answer. We find
that the Examiner has provided evidence to support a prima facie case of
obviousness. Appellants do not argue individual claims separately. We
select claims 1 and 8 as representative claims. We provide the following
additional comment to the Examiner's argument set forth in the Final
Rejection and Answer.
i\.ppellants contend that
Xu does not teach or suggest 5,5'-di-n-butyl-biphenyl-2,2'diol,
isopropyl magnolol and isobutyl magnolol as active ingredients.
Specifically, claims 1 and 11 require that the one or more active
ingredients found in magnolia extract, or a synthetic analogue
thereof, are selected from 5,5'-di-n-butyl-biphenyl-2,2'diol,
isopropyl magnolol and isobutyl magnolol. Further, since Xu
does not teach or suggest the presence of polypropylene glycol
in an amount that would enhance the solubility of the active
ingredient, the claimed invention is distinguished from Xu. Xu
merely suggests polypropylene glycol as a humectant.
Br. 3. We are not persuaded. We agree with the Examiner that
that given the teachings of Xu, one of ordinary skill in the art
would have had little to no difficulty in in [sic] arriving at a
composition comprising isobutyl magnolol, isopropyl magnolol
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Appeal2015-003320
Application 13/575,671
and 5,5'-di-n-butylbiphenyl-2,2'-diol. Xu disclosed a
composition comprising at least one active compound found in
an extract of magnolia. Extract of magnolia is an extract from
dried cortex, or bark, of a plant from the Magnoliaceae family.
The active compound may be a synthetic or semi-synthetic
equivalent of such an extract or an active component thereof (ii
[00014 ]). In one embodiment, the magnolia extract is isolated
by supercritical fluid extraction (SFE) using carbon dioxide
(C02) (ii [00016]). The instant specification disclosed wherein
5,5'-di-n-butyl-biphenyl-2,2'-diol is an active ingredient found
in magnolia extract and isopropyl magnolol and isobutyl
magnolol are synthetic analogue of an active compound of
magnolia extract (ii [0001 OJ). "Extract of magnolia" denotes an
extract from dried cortex, or bark, of a plant from the
Magnoliaceae family (ii [00018] of instant specification). The
instant specification also disclosed wherein the magnolia
extract is isolated by supercritical fluid extraction (SFE) using
carbon dioxide (C02) (ii [00022]). Because Xu disclosed the
same extract of magnolia and the same extraction process for
that extract of magnolia as what is disclosed in the instant
specification and wherein the active compound may be a
synthetic equivalent of such extract or an active component
thereof, the at least one active compound found in an extract of
magnolia of Xu would also inherently include 5,5'-di-n-butyl-
biphenyl-2,2'-diol, isopropyl magnolol and isobutyl magnolol.
Ans. 3--4. Appellants have not shown that magnolia cortex extract of Xu
obtained by supercritical fluid extraction (SFE) using carbon dioxide
( C02}-the same process by which Appellants' specification indicates the
claimed active ingredients may be obtained---does not inherently include the
claimed 5,5'-di-n-butyl-biphenyl-2,2'-diol. In re Best, 562 F.2d 1252, 1255
(CCPA 1977). Compare, Spec. ii 18-22.
Appellants argue that Xu does not teach or suggest the presence of a
polypropylene glycol in an amount that would enhance the solubility of the
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Appeal2015-003320
Application 13/575,671
active ingredient. Xu merely suggests polypropylene glycol as a humectant.
Appellants argue that
the data [comparative Examples] provided by the instant patent
application, at Example 5 (for magnolia extract), Example 6
(for magnolol) and Example 7 (for butyl magnolol) confirms
that the claimed ranges represent a critical range of propylene
glycol concentrations not taught or suggested by Xu for
achieving a fully solubilized oral composition - where the
appearance of a clear composition confirms that the
components of the composition are fully solubilized.
Br. 6. We are not persuaded. The Appellants motivation for combining the
cited references does not have to be the same as that of the Examiner, and
vice versa. The law does not require that the teachings of the reference be
combined for the reason or advantage contemplated by the inventor, as long
as some suggestion to combine the elements is provided by the prior art as a
whole. In re Beattie, 974 F.2d 1309, 1312 (Fed. Cir. 1992); In re Kronig,
539 F.2d 1300, 1304 (CCPi\. 1976). \Ve agree \vith the Examiner that Xu
teaches that propylene glycol may be present from about 5 to about 40% by
weight overlapping with the claimed amount of propylene glycol in an
amount of from about 0.05 to about 7% by weight. Ans. 4. Appellants have
not established the criticality of the claimed propylene glycol amounts.
We are not convinced by Appellants' data or comparative examples in
the Specification for the reasons given by the Examiner in the Answer, as
reproduced below.
The Examiner disagrees that the data provided in the instant
specification confirms that the claimed ranges represent a critical
range of propylene glycol concentrations. Examples 5-7 in the instant
specification demonstrate the effect of propylene glycol on the
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Appeal2015-003320
Application 13/575,671
solubility of magnolia extract, magnolol and butyl magnolol,
respectively. None of the examples in the instant specification show
the effect of propylene glycol on the solubility of the active
ingredients recited in the instant claims. Also, Appellant claims from
about 0.05 to about 7% by weight propylene glycol. Example 6 (Table
6) discloses wherein 5.28% propylene glycol has phase separation,
while 8.18% propylene glycol is homogenous. Therefore, it appears
that 8.18% propylene glycol, which is outside of the claimed range, is
better than 5.28%, which is within the claimed range, at solubilizing
the active ingredient. Example 7 (Table 7) discloses wherein 0%,
1.46% and 3.34% propylene glycol leads to a very cloudy or cloudy
formulation, while 7% propylene glycol leads to a clear and
transparent formulation. Therefore, it appears that 7% propylene
glycol, which is outside of the claimed range, is better than 1.46% and
3.34% propylene glycol, which is within the claimed range, at
solubilizing the active ingredient. Example 8 (Table 8) discloses
wherein 1.46%, 3.35%, and 6.97% propylene glycol leads to a clear
and transparent formulation. Therefore, it appears that the amount of
propylene glycol does not affect the solubility of the active ingredient
since 1 .46% and ~3.35% propylene glycol can lead to a cloudy or
clear formulation. This is further evidenced by paragraph [00010] of
the instant specification disclosing \~1herein the composition does not
need to comprise propylene glycol.
Ans. 6-7.
Rejection 1 is affirmed for the reasons of record.
Rejection 2- obviousness
Appellants raise the same argument concerning the lack of disclosure
of a 5,5'-dibutyl-2,2'dihydroxyl-1, 1 'biphenyl compound in Xu. For the
reasons indicated with respect to this argument in rejection 1, we are not
persuaded. Furthermore, Subramanyam discloses the use of 5,5'-dibutyl-2,2'-
dihydroxy-l, 1 '-biphenyl compound from Magnolia officinalis, as an
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Appeal2015-003320
Application 13/575,671
antibacterial and antiinflammatory ingredient of an oral composition. i-fi-1 5-
8. Rejection 2 is affirmed for the reasons of record.
Rejection 3- Obviousness-type Double Patenting
Appellants do not argue the merits of this rejection, therefore it is
summarily affirmed.
CONCLUSION OF LAW
The cited references support the Examiner's obviousness rejections,
and obviousness-type double patenting rejections, which are affirmed. All
pending, rejected claims fall.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
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