Ex Parte GinigerDownload PDFPatent Trial and Appeal BoardMay 10, 201611356468 (P.T.A.B. May. 10, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 111356,468 02/15/2006 81325 7590 05/12/2016 Peter B. Scull HAMILTON DESANCTIS & CHA LLP 225 Union Boulevard, Ste. 150 Financial Plaza at Union Square LAKEWOOD, CO 80228 FIRST NAMED INVENTOR Martin S. Giniger 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. SGRO.OOlOOUS 1592 EXAMINER ROBERTS, LEZAH ART UNIT PAPER NUMBER 1612 NOTIFICATION DATE DELIVERY MODE 05/12/2016 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): pscull@hdciplaw.com pbsteam@hdciplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Exparte MARTINS. GINIGER Appeal2013-007516 Application 11/356,468 Technology Center 1600 Before DONALD E. ADAMS, DEMETRA J. MILLS, and JEFFREY N. FREDMAN, Administrative Patent Judges. ADAMS, Administrative Patent Judge. DECISION ON APPEAL 1 This appeal under 35 U.S.C. § 134(a) involves claims 1, 5, 7, and 9- 14 (App. Br. 2).2 Examiner entered rejections under 35 U.S.C. § 102(b) and 35 U.S.C. § 103(a).3 We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE the anticipation rejection and AFFIRM the obviousness rejection. 1 Appellant identifies the Real Party in Interest as "GRINrx Corporation" (App. Br. 2). 2 "Claims 22-24, 26 and 27 stand withdrawn from consideration under restriction requirement" (App. Br. 2). 3 Office Records indicate that Application No. 11/356,316 was abandoned on July 14, 2014. Therefore, the provisional rejection under the judicially created doctrine of obviousness-type double patenting on this record is moot. Appeal2013-007516 Application 11/356,468 STATEMENT OF THE CASE Appellant disclosure relates to "improvements in oral care compositions, and more particularly []to a composition for tooth cleaning" (Spec. i-f 1 ). Claim 1 is representative and reproduced in the Claims Appendix of Appellant's Brief. Claims 1, 5, and 9-14 stand rejected under 35 U.S.C. § 102(b) as anticipated by White. 4 Claims 1, 5, 7, and 9-14 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Sanker. 5 Restriction Requirement and Objection: We recognize Appellant's contentions regarding the restriction requirement and objection of record (App. Br. 4--5). We, however, are not persuaded for the reasons set forth by Examiner (Ans. 7). Anticipation: ISSUE Does the preponderance of evidence on this record support Examiner's finding that White teaches Appellant's claimed invention? ANALYSIS The oral cleaning agent of Appellant's claimed invention has a pH "between 9.5 and 10.0" (see Appellant's claim 1). Appellants' claims 5 and 9-14 depend directly from Appellant's claim 1. In contrast to Appellant's claimed invention, White discloses a composition having a pH of from 6.5 to 4 White, Jr. et al., US 5,939,052, issued Aug. 17, 1999. 5 Sanker, et al., US 6,042,812, issued Mar. 28, 2000. 2 Appeal2013-007516 Application 11/356,468 10 (see White 2: 15-23; id. 3: 45--48; Ans. 3). See Atojzna v. Great Lakes Chem. Corp., 441 F.3d 991, 999 (Fed. Cir. 2006) (citations omitted) (A temperature range of over 100 degrees, namely, 100 to 500°C, was held not to anticipate a temperature range, namely, 330 to 450°C, encompassed entirely within the disclosed range). More specifically, the Atofina, court held that a disclosed preferred range of 150 to 3 50°C did not anticipate the claimed range of 330 to 450°C even though the upper end point fell within the claimed range. See id., 441 F.3d at 1000 (finding that "[t]he disclosure is only that of a range, not a specific temperature in that range, and the disclosure of a range is no more a disclosure of the end points of the range than it is of each of the intermediate points"). On this record, Examiner failed to establish that White teaches a composition having Appellant's claimed range. Therefore, we are compelled to reverse the anticipation rejection on this record. CONCLUSION OF LAW The preponderance of evidence on this record fails to support Examiner's finding that White teaches Appellant's claimed invention. The rejection of claims 1, 5, and 9-14 under 35 U.S.C. § 102(b) as anticipated by White is reversed. Obviousness: ISSUE Does the preponderance of evidence relied upon by Examiner support a conclusion of obviousness? 3 Appeal2013-007516 Application 11/356,468 FACTUAL FINDINGS (FF) FF 1. Sanker relates to "an oral care composition comprising a flavor system" (Sanker 1: 16-17). FF 2. Sanker exemplifies a composition comprising: water, poloxamer 407, sodium alkyl sulphate, sodium bicarbonate; tetrasodium pyrophosphate, and calcium peroxide (Sanker 12: Example VI; Ans. 4). FF 3. Sanker discloses that suitable "[a]nionic surfactants[, for use in Sanker' s composition,] include [] water-soluble salts of alkyl sulfates having from 8 to 20 carbon atoms in the alkyl radical (e.g., sodium alkyl sulfate)," wherein "[ s ]odium lauryl sulfate" is an example of this type of anionic surfactant (Sanker 6: 54--60; Ans. 4). FF 4. Examiner finds that tetrasodium pyrophosphate is a chelating agent (Ans. 4). FF 5. Examiner finds that Sanker' s composition has a "pH range of from about 9.0 to about 10.5" (Sanker 6: 3--4; see Ans. 4--5). ANALYSIS Based on Sanker, Examiner concludes that, at the time Appellant's invention was made, it would have been prima facie obvious to "adjust[] the pH of [Sanker's] composition to [between] 9.5 to 10.0" (Ans. 5). The oral cleaning agent of Appellant's claimed invention comprises: an orally-acceptable cleaning solvent, which may be water (see Appellant's claims 1 and 9; cf FF 1 and 2 (Sanker suggests a composition comprising water); an orally-acceptable surfactant, which may be sodium lauryl sulfate or poloxamer 407 (see Appellant's claims 1, 11, and 12; cf FF 1-3 (Sanker suggests a composition comprising sodium lauryl sulfate and poloxamer 407); an orally-acceptable alkaline builder, which may be sodium 4 Appeal2013-007516 Application 11/356,468 bicarbonate (see Appellant's claim 1; cf FF 1and2 (Sanker discloses a composition comprising sodium bicarbonate)); a peroxygen compound (see Appellant's claim 1; cf FF 1 and 2 (Sanker discloses a composition comprising calcium peroxide)); and a chelating agent (see Appellant's claim 1; cf FF 1--4 (Sanker discloses a composition comprising a pyrophosphate chelating agent)). As discussed above, Sanker suggests a composition comprising a "cleaning solvent" and "chelating agent" within the scope of Appellant's claimed invention (FF 1--4). Therefore, we are not persuaded by Appellant's contention that "Sanker [] fails to [] teach, suggest, motivate, or provide any reason [or] direction toward a 'cleaning solvent' or a 'chelating agent' as set forth in Appellant's claims" (App. Br. 16-19; see Reply Br. 9-12). In addition, notwithstanding Appellant's contention to the contrary, Appellant fails to establish an evidentiary basis on this record to support a conclusion that Sanker's composition, and the reagents contained therein, will perform differently that the composition and reagents set forth in Appellant's claim 1 (see App. Br. 16-19; Reply Br. 12). "Products of identical chemical composition cannot have mutually exclusive properties. See In re Papesch, 315 F.2d 381, 391 [] (CCPA 1963)." In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990). Appellant's claim 1 also requires the foregoing composition to be "in a single part, not kept separately" and have a pH "between 9.5 and 10.0" (see Appellant's claim 1; cf FF 1-5 (Sanker discloses a composition having a pH between 9.0 and 10.5, in a single part, not kept separately)). Sanker discloses a composition comprising a pH of "from about 9. 0 to about 10.5" (FF 5). Appellant's claim 1 requires the pH of the oral cleaning 5 Appeal2013-007516 Application 11/356,468 agent be between 9.5 and 10.0 (see Appellant's claim 1). "[W]here there is a range disclosed in the prior art, and the claimed invention falls within that range, there is a presumption of obviousness." Iron Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317, 1322 (Fed. Cir. 2004). Therefore, we recognize, but are not persuaded by Appellant's contentions regarding the pH of Sanker's composition which fails to establish non-obviousness based on the pH ranges (App. Br. 19; Reply Br. 12-13). CONCLUSION OF LAW The preponderance of evidence relied upon by Examiner supports a conclusion of obviousness. The rejection of claim 1 under 35 U.S.C. § 103(a) as unpatentable over Sanker is affirmed. Claims 5, 7, and 9-14 are not separately argued and fall with claim 1. 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 6 Copy with citationCopy as parenthetical citation