Ex Parte Kohli et al

Patent Trial and Appeal Board

Mar 7, 2016

12866760 (P.T.A.B. Mar. 7, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/866,760 08/09/2010
23909 7590 03/09/2016
COLGATE-PALMOLIVE COMPANY
909 RIVER ROAD
PISCATAWAY, NJ 08855
FIRST NAMED INVENTOR
Rajnish Kohli
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.
8558-00-0C 4257
EXAMINER
MILLIGAN, ADAM C
ART UNIT PAPER NUMBER
1612
NOTIFICATION DATE DELIVERY MODE
03/09/2016 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
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RAJNISH KOHLI, RICHARD SCOTT ROBINSON,
DIANE CUMMINS, and NAGARAJA JAY ARAMAN 1
Appeal2013-003056
Application 12/866,760
Technology Center 1600
Before MELANIE L. McCOLLUM, JEFFREY N. FREDMAN, and
JACQUELINE T. HARLOW, Administrative Patent Judges.
McCOLLUM, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal2 under 35 U.S.C. § 134 involving claims to a
beverage. The Examiner has rejected the claims as obvious. We have
jurisdiction under 35 U.S.C. § 6(b). We affirm.
1 Appellants identify the real party in interest as Colgate-Palmolive
Company (Br. 3).
2 Appellants argue that the finality of the rejection was premature (Br. 9-10).
However, as noted by the Examiner, this is not an appealable issue (Ans. 6).
Appeal2013-003056
Application 12/866,760
STATEMENT OF THE CASE
Claims 1--4, 6, 8-13, 15, and 16 are on appeal (Br. 5). 3 The claims
subject to each rejection have not been argued separately and therefore stand
or fall together. 37 C.F.R. § 41.37(c)(l)(iv). Claims 1, 8, and 16 are
representative and read as follows:
1. A beverage comprising an effective amount of
a. arginine in free or salt form, in an amount of at least 0 .1 % (by
weight of free base),
b. a calcium salt and
c. a sugar alcohol selected from xylitol and sorbitol
wherein the effective amount is an amount effective to promote oral health.
8. The beverage of claim 1 wherein the arginine in free or salt form is
arginine bicarbonate.
16. The beverage of claim [ 1 further comprising a fluoride source],
wherein said fluoride ion source is selected from stannous fluoride, sodium
fluoride, potassium fluoride, sodium monofluorophosphate, sodium
fluorosilicate, ammonium fluorosilicate, amine fluoride, ammonium
fluoride, and combinations thereof.
Claims 1-3, 10, 12, 13, and 15 stand rejected under 35 U.S.C.
§ 103(a) as obvious over Manning '8244 in view of Manning '5745 (Ans. 3).
Claims 4, 11, and 16 stand rejected under 35 U.S.C. § 103(a) as
obvious over Manning '824 in view of Manning '574 and Burgess6 (id. at 4).
3 Claim 14 is also pending but has been withdrawn from consideration
(Br. 5).
4 Manning et al., US 2006/0083824 Al, Apr. 20, 2006.
5 Manning et al., US 2006/0088574 Al, Apr. 27, 2006.
6 Burgess, US 6,723,369 B2, Apr. 20, 2004.
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Application 12/866,760
Claims 6, 8, and 9 stand rejected under 35 U.S.C. § 103(a) as obvious
over Manning '824 in view of Manning '574 and Kleinberg7 (id. at 5).
I
With regard to representative claim 1, the Examiner relies on
Manning '824 for teaching "a nutritional supplement beverage composition
for glucose intolerant individuals comprising 0.39% L-arginine, calcium,
magnesium phosphate, potassium chloride, inositol, pantothenic acid, citric
acid, and sweetener (Example 1 ... ), wherein the calcium source is taught
to be a mineral salt" (Ans. 3). The Examiner relies on Manning '574 for
teaching "a nutritional beverage composition for glucose intolerant humans
which may aide in avoiding elevated glucose levels that could otherwise
cause them to experience undesirable symptoms or diabetes related
complications," wherein the "composition may include a sweetener to
improve the taste of the product" (id. at 4). In particular, the Examiner finds
that Manning '574 teaches that a "'sugar alcohol' is a sweetener that
produces a smaller rise in blood glucose than other carbohydrates, and [that]
'sugar alcohols' include sorbitol and xylitol" (id.). The Examiner concludes
that it "would have been obvious to one of ordinary skill in the art
formulating the beverage composition of Manning '824 to use the sweeteners
disclosed by Manning '574, given both Manning '824 and Manning '574 are
directed to beverages for glucose intolerant individuals" (id.).
7 Kleinberg et al., US 6,436,370 Bl, Aug. 20, 2002.
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Application 12/866,760
Findings of Fact
1. Manning '824 "relates to nutritional supplements, such as
nutritional ready-to-drink beverages," particularly "to nutritional
supplements which are especially formulated to meet the specific needs of
glucose intolerant individuals" (Manning '824 i-f 2).
2. In Example 1, Manning '824 discloses a "vanilla flavored
nutritional drink for glucose intolerant individuals" comprising 0.39 wt. %
L-arginine, Calcium D, and synthetic sweetener (id. i-f 94).
3. Manning '824 also discloses that "vitamins and minerals are
included ... so as to provide, based on a 2000 calorie diet, at least about 5%,
more preferably at least about 10%, most preferably at least about 25% up to
about 100% of their respective individual recommended daily values" (id.
,-r 63).
4. In addition, Manning '824 discloses that minerals, such as
calcium, "may be used in their pure form or as salts thereof' (id. i-f 65).
5. Manning '824 also discloses:
Flavoring and taste-masking agents ... may be employed in the
nutritional supplements of the invention ... and include, but are
not limited to, high fructose com syrup, com syrup,
oligofructose, honey, cocoa powder, coffee, sugar (white, brown,
powdered, etc.), chocolate, unsweetened chocolate,
maltodextrins, natural flavors, for example, citrus, acidic and
other natural flavors (grapefruit, grapefruit rind, lemon, lemon
rind, lime, lime rind, orange, orange rind, tangerine, cherry,
raspberry, blueberry, banana, mango, grape, apple, pear, peach,
plum, watermelon, pineapple, coconut, kiwi, etc., or the juice
from any of the foregoing) and other components that are known
to flavor food products, or to mask the taste of unpleasant tasting
food product ingredients.
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Application 12/866,760
(Id. if 72.)
6. Manning '57 4 discloses "nutritional supplements for an oral
consumption by ... humans, particularly humans that are diabetic,
borderline diabetic or in the geriatric population, or that otherwise have, or
are at risk for, glucose intolerance or cardiovascular disease" (Manning '57 4
ii 117).
7. In particular, Manning '57 4 discloses "a ready-to-drink liquid
nutritional supplement for an administration to a human comprising"
L-arginine and minerals, such as calcium, "in an elemental, salt or other
form" (id. iii! 119--125 & 209).
8. Manning '574 also discloses that the "phrase 'palatability
enhancer' as used herein means an ingredient present in a food item or food
product, such as a nutritional supplement, for example, a sweetener or
flavoring agent, that is employed for the purpose of improving the taste of
the food item or food product" (id. if 213).
9. In addition, Manning '574 discloses: "The phrase 'sugar
alcohol' as used herein means a sweetener that produces a smaller rise in
blood glucose than other carbohydrates .... Sugar alcohols include, for
example, erythritol, hydrogenated starch hydrolysates, isomalt, lactitol,
maltitol, mannitol, sorbitol, and xylitol." (Id. if 235.)
Analysis
Manning '824 and '574 each disclose a nutritional supplement
beverage for glucose intolerant individuals comprising arginine and a
calcium salt (Finding of Fact (FF) 1, 2, 4, 6, & 7). In addition, Manning '824
and '574 each disclose including a sweetener (FF 2, 5, & 8). Manning '574
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Application 12/866,760
also discloses that a sugar alcohol, such as xylitol or sorbitol, "is a sweetener
that produces a smaller rise in blood glucose than other carbohydrates"
(FF 9). We conclude that the Examiner has set forth a prima facie case that
it would have been obvious to include a sugar alcohol, such as xylitol or
sorbitol, in the nutritional supplement beverage of Manning '824 (Ans. 4).
Appellants argue, however, that the Examiner has failed to apply the
appropriate legal standard (Br. 10). In particular, Appellants argue that the
Examiner "fails to utilize the analytical framework set forth by the Federal
Circuit in [Unigene Labs., Inc. v. Apotex, Inc., 655 F.3d 1352 (Fed. Cir.
2011)]" (Br. 11). We are not persuaded.
In Unigene, the Federal Circuit's analysis started with a "reference
composition," which they stated was a more appropriate term "than 'lead
compound' when considering obviousness for a chemical composition that
[an] infringer deliberately imitates." Id. at 1362. However, we do not agree
with Appellants that the Examiner's analysis in a chemical composition case
must always start with a specific reference composition. In any event, we
note that the Examiner's analysis does start with a "reference composition" -
Example 1 of Manning '824 - and explains why it would have been obvious
to modify that formulation (Ans. 3--4).
Appellants also argue that "the Examiner has failed to address the
limitation in the claims that the arginine, the calcium salt, and the sugar
alcohols must be provided in an 'effective amount', 'wherein the effective
amount is an amount effective to promote oral health[]"' (Br. 11 ). We are
not persuaded.
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Application 12/866,760
The Examiner finds:
[T]he prior art teaches using 0.39% L-arginine and calcium
carbonate as a mineral. ... The minerals are present in amounts
sufficient to provide at least 10% of the recommended daily
value. Given that the specification does not disclose amounts
which are "effective amount to promote oral health" other than
requiring 0.1 % arginine, the amounts described by Manning are
reasonably expected to promote oral health, as they too require
over 0.1 % arginine.
(Ans. 7.) We agree with the Examiner that Appellants do not adequately
explain why the amounts taught by the Manning references would not be
"effective to promote oral health," as recited in claim 1.
In addition, Appellants argue that "[ t ]here is nothing in Manning 824
or Manning 574, to suggest optimization or modification of the formulation
ingredients or amounts to promote oral health" (Br. 12). We are not
persuaded.
As noted by the Examiner, the "rejection does not rely on
optimization or modification of the ingredients" - that is, the Examiner is
not suggesting that the nutritional supplement of Manning '824 and '57 4 be
somehow modified to make it an oral care composition (Ans. 8). Instead,
the Examiner finds that the "rejection is simply based on choosing a
sweetener disclosed by Manning '574 for use in the composition of
Manning '824" (id.). Appellants have not adequately explained why it
would not have been obvious to include the sweetener of Manning '574 in
the composition of Manning '824.
Appellants also argue that the Manning references are not analogous
art (Br. 13). We are not persuaded.
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"In order to rely on a reference as a basis for rejection of the
applicant's invention, the reference must either be in the field of the
applicant's endeavor or, if not, then be reasonably pertinent to the particular
problem with which the inventor was concerned." In re Oetiker, 977 F .2d
1443, 1447 (Fed. Cir. 1992). The Examiner finds that both the instant
claims and the applied art "are drawn to a beverage composition" (Ans. 8).
We conclude that Appellants have not adequately explained why beverage
compositions would not be considered the field of Appellants' endeavor.
We note Appellants' reliance on In re Klein, 647 F.3d 1343 (Fed. Cir.
2011) (Br. 13). However, this case concerned whether the applied art "was
reasonably pertinent to the problem [applicant] addresses," not whether the
applied art was in the field of applicant's endeavor. Id. at 1347. Thus, we
do not consider this case to be particularly relevant to the present situation.
Conclusion
The evidence supports the Examiner's conclusion that Manning '824
and '574 suggest the beverage of claim 1. We therefore affirm the
obviousness rejection of claim I. Claims 2, 3, 10, 12, 13, and 15 fall with
claim 1.
II
With regard to representative claim 16, the Examiner relies on
"Manning '824 and Manning '574 a[s] discussed above" (Ans. 4). In
addition, the Examiner finds that "Manning '57 4 additionally teaches the
inclusion of a fluoride" (id.).
The Examiner relies on Burgess for teaching "a carbonated beverage
for strengthening the acid resistance of teeth comprising water, carbon
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Application 12/866,760
dioxide, tea and sweetener," wherein the "beverage also contains fluoride
from sodium fluoride or calcium fluoride" (id. at 5). The Examiner
concludes that it would have been obvious "to combine the nutritional
supplement beverage of Manning '824 and Manning '574 with the beverage
of Burgess in order to impart the benefit of strengthening teeth to the
beverage of Manning" (id.).
Findings of Fact
10. Manning '57 4 discloses that "vitamins and/or minerals that may
be included in the nutritional supplements of the invention include, for
example, ... Fluoride" (Manning '574 i-f 300).
11. Burgess "relates to a storage-stable carbonated beverage that
will provide fluoride and polyphenols of tea to the population to strengthen
the acid resistancy of teeth" (Burgess, col. 2, 11. 40-42).
12. Burgess discloses that fluoride "can be added in the form of
Sodium Fluoride (NaF), Calcium Fluoride (CaF), Fuorsilicic acid (H2SiF6),
Fluorine (F) or other fluorides" (id. at col. 3, 11. 64---66).
Analysis
Appellants argue that "[ n ]othing in Burgess suggests that it should be
combined with formulations such as disclosed in the Manning references for
glucose intolerant individuals" (Br. 13-14). We are not persuaded.
Manning '57 4 discloses that its nutritional supplements may include
fluoride (FF 10). Burgess discloses that sodium fluoride, as recited in
claim 16, is a known edible source of fluoride (FF 11-12). We agree with
the Examiner that it would have been obvious to include a fluoride source,
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Application 12/866,760
such as sodium fluoride, in the nutritional supplement beverage of
Manning '824 and '574 (Ans. 5).
Conclusion
The evidence supports the Examiner's conclusion that Manning '824
and '574 and Burgess suggest the beverage of claim 16. We therefore affirm
the obviousness rejection of claim 16. Claims 4 and 11 fall with claim 16.
III
With regard to representative claim 8, the Examiner relies on
"Manning '824 and Manning '574 a[s] discussed above" (Ans. 5). The
Examiner relies on Kleinberg for teaching "mouthwash ... with arginine
being added in the form of arginine phosphate or arginine bicarbonate" (id.
at 6). The Examiner concludes that it would have been obvious to one of
ordinary skill in the art formulating the beverage composition of
Manning '824 and Manning '57 4 to use a known source of arginine such as
those taught by Kleinberg, given that Kleinberg teaches use of such sources
in formulating a liquid composition" (id.).
Findings of Fact
13. Kleinberg discloses "an oral composition ... capable of
reducing or preventing dentinal hypersensitivity," containing "arginine
bicarbonate (or equivalents thereof) and calcium carbonate (or equivalents
thereof)" (Kleinberg, col. 3, 1. 63, to col. 4, 1. 2).
14. Kleinberg also discloses that "[a]cceptable oral vehicles include
any conventional oral delivery system, such as dental care products, food
products, and chewing gum" (id. at col. 6, 11. 26-29).
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Analysis
Appellants argue: "Manning is directed to nutritional supplements,
meant to be ingested. Kleinberg is directed to dentifrice or mouthwash,
meant to be spit out. These references are not analogous to each other, or to
the claimed invention. The Examiner provides no rationale for combining
them and applying them to this case." (Br. 15.) We are not persuaded.
As discussed above, Manning '824 and '574 each disclose a nutritional
supplement beverage comprising arginine and a calcium salt (FF 1, 2, 4, &
7). Kleinberg also discloses a food product comprising arginine and a
calcium salt (FF 13-14). We do not agree with Appellants that Kleinberg is
non-analogous art. In particular, Kleinberg relates to sources of arginine that
can be included in an orally administered composition (id.).
Specifically, Kleinberg discloses that arginine bicarbonate, as recited
in claim 8, is a known edible source of arginine (id.). We conclude that the
Examiner has set forth a prima facie case, which Appellants have not
rebutted, that it would have been obvious to include arginine bicarbonate as
the arginine source in the nutritional supplement beverage of Manning '824
and '574 (Ans. 6).
Conclusion
The evidence supports the Examiner's conclusion that Manning '824
and '574 and Kleinberg suggest the beverage of claim 8. We therefore
affirm the obviousness rejection of claim 8. Claims 6 and 9 fall with
claim 8.
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Application 12/866,760
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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