Ex Parte Karlinsey

Patent Trial and Appeal Board

May 9, 2018

13711001 (P.T.A.B. May. 9, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
131711,001 12/11/2012 Robert L. Karlinsey
77741 7590 05/11/2018
Brannon Sowers & Cracraft PC
47 South Meridian Street
Suite 400
Indianapolis, IN 46204
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.
44-11408 7679
EXAMINER
BARHAM, BETHANY P
ART UNIT PAPER NUMBER
1611
NOTIFICATION DATE DELIVERY MODE
05/11/2018 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):
docket@bscattorneys.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT L. KARLINSEY
Appeal2017-005140
Application 13/711,001 1
Technology Center 1600
Before DONALD E. ADAMS, ERIC B. GRIMES, and
JENNIFER MEYER CHAGNON, Administrative Patent Judges.
ADAMS, Administrative Patent Judge.
DECISION ON APPEAL
This Appeal under 35 U.S.C. § 134(a) involves claims 1--4 and 16-22
(Final Act. 2 2; App. Br. 3 6). Examiner entered a rejection under 35 U.S.C.
§ 103(a). We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellant identifies "Robert L. Karlinsey" as the real party in interest
(App. Br. 4).
2 Office Action mailed September 6, 2016.
3 Appellant's October 31, 2016 Appeal Brief.
Appeal2017-005140
Application 13/711,001
STATEMENT OF THE CASE
Appellant discloses "a method and composition for remineralizing
teeth and dentition" (Spec. 1 ). Appellant's claim 1 is representative and
reproduced below:
1. A dental remineralization composition, comprising:
a beta tricalcium phosphate portion; and
an organic portion;
wherein the beta tricalcium phosphate portion is present
in concentrations between about 0.5 ppm to about 2,000 ppm;
and
wherein the organic portion is selected from the group
including aspartic acid, glutamic acid, polypeptides, polymers
containing functional groups, and combinations thereof;
wherein the organic portion is percent in concentrations
between about 0.5 ppm to about 10,000 ppm.
(App. Br. 26.)
The claims stand rejected as follows:
Claims 1--4 and 16-22 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Kannar4 and Chaput. 5
ISSUE
Does the preponderance of evidence relied upon by Examiner support
a conclusion of obviousness?
4 Kannar et al., WO 2007/068062 Al, published June 21, 2007.
5 Chaput et al., US 2003/0199615 Al, published Oct. 23, 2003.
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Application 13/711,001
FACTUAL FINDINGS (FF)
Examiner's findings concerning the scope and content of the prior art
are set forth in the Final Action (see Final Act. 6-12; see also Ans. 3---6).
We reproduce the following findings for emphasis.
FF 1. Kannar "describes the preparation of stable complexes of inorganic
phosphates, particularly calcium phosphates, by their reaction with
complexing agents comprising nitrogen" and the use of such complexes to,
inter alia, "facilitate[] tooth remineralization" (Kannar 6: 13-18; see Final
Act. 6-7).
FF 2. Kannar's
preferred inorganic phosphate is selected from the group
consisting of calcium phosphates. More preferably, the
inorganic phosphate is selected from the group consisting of
calcium phosphate monobasic (Ca(H2P04)2), calcium
[phosphate] dibasic (CaHP04), calcium phosphate tribasic
(Ca3(P04)2), superphosphates of calcium, fluorinated calcium
superphosphate, calcium phosphate salts either in amorphous or
crystalline forms (including apatites and hydroxyapatites) and
mixtures thereof.
(Kannar 7: 18-23 (emphasis added); see Final Act. 7.)
FF 3. Kannar discloses that "complexing agents containing amine groups
or other nitrogen functional groups" include "amino acids," "proteins which
are formed from a mixture of amino acids," and "peptides formed from the
hydrolysis of proteins" (Kannar 8: 14--21; see Final Act. 7).
FF 4. Examiner finds that Kannar "does not expressly teach [a] calcium
phosphate [that] is B-TCP" (B-Ca3(P04)2) and relies on Chaput to make up
for this deficiency in Kannar (Final Act. 9).
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Application 13/711,001
FF 5. Kannar discloses:
The concentration of the complex in [a] composition is
dependent upon the format of administration. In the treatment
of dental caries, the composition may be administered by
exposing the teeth to a gel comprising a very high concentration
of the complex with concentrations of up to 99.5% w/w. When
administered in the form of a toothpaste the concentration of the
complex composition would preferably be in the range of from
0 .1 % to 10%. When administered in the form of a chewing
gum, the concentration of the complex composition would
preferably be in the range [of] up to 10% w/w. When
administered as a dental mouthwash, typical concentrations
would lie within the range [of from] 0.1 % to 4% w/w.
Accordingly, depending on the form of the composition, the
concentration can lie within the range [of] up to 99.5%.
(Kannar 12: 1-10; see Final Act. 11.)
FF 6. Chaput "relates generally to the preparation and use of an injectable
self-setting mineral-polymer composition for repairing, replacing or
therapeutically treating tissues and body parts" (Chaput i-f 2; see id. i-f 149
(Chaput's "compositions may be useful for medical and dental indications");
see also Final Act. 9).
FF 7. Chaput's composition comprises a water-based liquid component
and a powder component, "wherein when said components ... are
intimately and uniformly mixed together, said components ... form an
injectable thermo-setting slurry, said slurry when heated turns into a solid
material" (see Chaput i-fi-1 42--45; see generally Final Act. 9).
FF 8. Chaput discloses that the powder component of its composition
"compris[ es] at least two calcium phosphate sources selected from apatites
and apatitic calcium phosphates, octacalcium phosphates, amorphous
calcium phosphates, tetracalcium phosphates, tricalcium phosphates,
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Appeal2017-005140
Application 13/711,001
dicalcimn phosphates and monocalcimn phosphates" (Chaput i-f 44
(emphasis added); see generally Final Act. 9).
FF 9. Chaput discloses that the tricalcium phosphate may be "beta-
Ca3(P04)2" (Chaput i-f 122; see Final Act. 9).
FF 10. Chaput discloses that calcium phosphates, including B-tricalcium
phosphate, are useful in remineralizing systems (see Chaput i-fi-1 15-16; see
generally Final Act. 10).
ANALYSIS
Based on the combination of Kannar and Chaput, Examiner concludes
that, at the time Appellant's invention was made, it would have been prima
facie obvious to use B-TCP, as disclosed by Chaput, as the calcium
phosphate component of Kannar's complex (see Final Act. 10). In this
regard, Examiner reasons that
replacing [Kannar's] calcium phosphate ... with [Chaput's] B-
TCP ... constitutes a simple substitution of one known
remineralization promoting agent (calcium phosphate ... ) with
another known remineralization promoting agent B-TCP ... to
give [a] predictable remineralization composition that is
capable of facilitating tooth remineralization ... as taught by
Kannar.
(Final Act. 10.) "[W]hen a patent claims a structure already known in the
prior art that is altered by the mere substitution of one element for another
known in the field, the combination must do more than yield a predictable
result." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007); see also In
re Mayne, 104 F.3d 1339, 1340 (Fed. Cir. 1997) ("Because the applicants
merely substituted one element known in the art for a known equivalent, this
court affirms [the rejection for obviousness]").
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Application 13/711,001
Examiner further finds that Kannar discloses a mouthwash comprising
its complex in the range of from 0.1 % to 4% w/w, which is equivalent to
1,000 ppm to 40,000 ppm (see Final Act. 11; see FF 5). Thus, Examiner
reasons that because the complex suggested by the combination of Kannar
and Chaput comprises a B-TCP portion and an organic portion, both of the B-
TCP and organic portions of the complex will be present in a composition in
the range of between 1,000 ppm to 40,000 ppm, which overlaps the ranges
of each portion as required by Appellant's claimed invention (see Ans. 4--5;
see also Final Act. 11). See In re Geisler, 116 F.3d 1465, 1468 (Fed. Cir.
1997) (overlapping ranges support a prima facie case of obviousness).
Appellant contends that Examiner
attempts to convert Kannar's disclosure of0.1%to4% dental
concentrations of calcium and/or phosphate in solution in
mouthwash into an equivalent range of 1000 ppm to 10,000
ppm B-TCP, but since Kannar does not disclose B-TCP as an
ingredient of the mouthwash, such a conversion is meaningless,
and the burden of showing all elements of Appellant's claims
has not been met.
(App. Br. 23; see also id. at 24 ("Kannar et al. does not disclose any range of
B-TCP. Thus, no combination of Kanner et al. and Chaput et al. can satisfy
all of the required claim elements of Appellant's independent claims").) We
are not persuaded for the reasons set forth above (see also Ans. 4--5).
Calcium phosphate tribasic (Ca3(P04)2), i.e., TCP, is a calcium
phosphate within the scope ofKannar's disclosure (FF 2; cf App. Br. 24
(Appellant "is specifically claiming a range of B-TCP, with all of its
attendant physical properites [sic]")). Kannar discloses a calcium phosphate
complex, wherein the calcium phosphate may be TCP, for use in facilitating
tooth remineralization (FF 1-2). Chaput discloses that calcium phosphates,
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Application 13/711,001
including B-tricalcimn phosphates, i.e., B-TCP, are useful in remineralizing
systems (FF 10). Thus, we find no error in Examiner's conclusion that it
would have been prima facie obvious to use B-TCP in Kannar' s calcium
phosphate, i.e. TCP, complex (Final Act. 10). Therefore, we are not
persuaded by Appellant's contention that Examiner "conflat[es] calcium
and/or phosphate ions in solution with solid, crystalline B-TCP" (App. Br.
23; cf Ans. 4).
The combination ofKannar and Chaput makes obvious a B-TCP-
amino acid complex (FF 1-3 and 9; see also FF 3 (Kannar discloses amino
acid, protein, and peptide complexing agents)). Stated differently, the
combination of Kannar and Chaput makes obvious an amino acid
functionalized B-TCP (cf App. Br. 28). Therefore, we are not persuaded by
Appellant's contention that Appellant's "independent claim 19 requires the
B-TCP to be functionalized with amino acids" that "[t]his claim element has
been thus far ignored by Examiner [], and is not disclosed or suggested by
the references of record, either individually or in combination" (App. Br. 24;
cf Ans. 6). For the same reason, we are not persuaded by Appellant's
contention that Appellant's "organic portion," i.e., amino acid or polypeptide
portion, "is missing from Kannar" and "combining an organic portion, such
as an amino acid, with Kannar, would render Kannar's inorganically
complexed calcium phosphate material inoperable" (Reply Br. 4--5).
We recognize that Appellant's Reply Brief addresses the solubility of
B-TCP (see Reply Br. 3--4), but find no specific argument addressing B-TCP
solubility in Appellant's Brief (see App. Br. 23-24). Therefore, we decline
to address Appellant's belated argument. See 37 C.F.R. § 41.41(b) ("Any
argument raised in the reply brief which was not raised in the appeal brief, or
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Application 13/711,001
is not responsive to an argument raised in the Examiner's answer, ... will
not be considered by the Board for purposes of the present appeal, unless
good cause is shown."); Ex parte Borden, 93 USPQ2d 14 73, 14 7 4 (BP AI
2010) (informative).
CONCLUSION
The preponderance of evidence relied upon by Examiner supports a
conclusion of obviousness. The rejection of claim 1and19 under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Kannar and Chaput is
affirmed. Claims 2--4, 16-18, 21, and 22 are not separately argued and fall
with claim 1. Claim 20 is not separately argued and falls with claim 19.
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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