Ex Parte Kohli et alDownload PDFPatent Trial and Appeal BoardJun 7, 201612866609 (P.T.A.B. Jun. 7, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/866,609 08/06/2010 23909 7590 06/09/2016 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. 8548-00-0C 2964 EXAMINER ZISKA, SUZANNE E ART UNIT PAPER NUMBER 1619 NOTIFICATION DATE DELIVERY MODE 06/09/2016 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, RALPH PETER SANTARPIA, JAMES R. BROWN, RICHARD J. SULLIVAN, and MICHAEL PRENCIPE 1 Appeal2014-005506 Application 12/866,609 Technology Center 1600 Before DONALD E. ADAMS, FRANCISCO C. PRATS, and TIMOTHY G. MAJORS, Administrative Patent Judges. MAJORS, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134 involving claims to effervescent compositions, which have been rejected 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. (Appeal Br. 2.) Appeal2014-005506 Application 12/866,609 STATEMENT OF THE CASE The "invention includes effervescent compositions comprising a physiologically acceptable salt of a basic amino acid, an acid source, and a soluble carbonate salt, wherein when the composition is dissolved in a solvent, e.g., water, carbon dioxide is released, and the amino acid is substantially solubilized." (Spec. i-f 5.) Claims 1, 4, 8-10, 12, 14--16, 19, 20, 23-34 are on appeal. Claim 1 is illustrative: 1. An effervescent composition in the form of a toothpaste or mouth rinse comprising a basic amino acid in free or physiologically acceptable salt form and has the L-configuration, an acid source, and a soluble carbonate salt wherein the basic amino acid is selected from arginine, lysine, citrullene, omithine, creatine, histidine, diaminobutanoic acid, diaminoproprionic acid, salts thereof and combinations thereof; and the acid source is selected from the group consisting of citric acid, malic acid, tartaric acid, adipic acid, and fumaric acid wherein carbon dioxide is produced when the composition is dissolved in a saliva. (Br. 11 (Claims App'x).) Claims 1, 4, 8-10, 12, 14, 20, 23-28, 30, and 32 stand rejected as obvious under 35 U.S.C. § 103(a) over Wehling et al., (US 7,815,897 Bl, issued Oct. 19, 2010) ("Wehling"). 2 Appeal2014-005506 Application 12/866,609 Claims 15, 16, 19, 29, 31, 33, and 34 stand rejected as obvious under 35 U.S.C. § 103(a) over Wehling and Giani et al., (US 5,747,004, issued May 5, 1998) ("Giani"). On appeal we determine whether the Examiner established by a preponderance of the evidence that the claims would have been obvious based on the rejections described above. DISCUSSION Findings of Fact2 1. Wehling teaches an effervescent composition, which includes acids and bases, and that generates carbon dioxide when contacted with water. (Wehling, col. 3, 11. 23-29.) Wehling teaches "[ e ]xamples of useful acids include citric acid, ascorbic acid, malic acid, adipic acid ... and mixtures thereof." (Id. at col. 3, 11. 30-34.) The "[e ]xamples of suitable carbonate bases include sodium bicarbonate, sodium carbonate, ... potassium bicarbonate, ... L-lysine carbonate, arginine carbonate ... and mixtures thereof." (Id. at col. 3, 11. 45-50.) Wehling discloses the "effervescent composition can also include other ingredients, e.g., flavor agents ... and sweeteners." (Id. at col. 4, 11. 62---65.) 2. According to Wehling, [a] useful method of using the effervescent composition includes dissolving the composition in excess hot water to form an aqueous solution. A user can then inhale the vapors produced by the solution. Alternatively or in addition, the 2 We also adopt the Examiner's findings as stated in the Answer (Ans. 2--4) and Final Office Action (Final Act. 2-5) that are uncontested on appeal. 3 Appeal2014-005506 Application 12/866,609 aqueous composition can be used as a mouthwash, rinse, or gargle composition, ingested, and combinations thereof. The effervescent composition can also be dissolved [in] water of any suitable temperature. (Id. at col. 5, 11. 35-42.) 3. Giani teaches "a self-heating dentrifice [e.g., toothpaste]. .. used in the oral cavity." (Giani col. 1, 11. 3-5.) Giani teaches the dentrifice may include anti-bacterial agents (id. at col. 2, 1. 65), anti-inflammatory agents like ibuprofen (id. at col. 3, 1. 14), anti-caries agents such as stannous fluoride (id. at col. 3, 1. 17), desensitizing agents such as potassium nitrate (id. at col. 3, 11. 23-25), and may further include "effervescing systems such as sodium bicarbonate/citric acid systems" (id. at col. 3, 11. 33-36). Analysis Claim 1: The Examiner finds all the limitations of claims 1, 4, 8-10, 12, 14, 20, 23-28, 30, and 32 are disclosed or would have been obvious based on the teachings of Wehling. (Ans. 2-3.) The Examiner states the claimed elements herein are known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded predictable results to one of ordinary skill in the art at the time of the invention. (Id. at 3.) Thus, the Examiner finds the claims would have been prima facie obvious over Wehling. Appellants argue: (1) "the Examiner has failed to use the correct analysis framework for evaluating the prior art and claims for obviousness" 4 Appeal2014-005506 Application 12/866,609 (Br. 3); (2) "Wehling and Appellants' invention are directed to two very different technologies" (id. at 4); (3) "there is [no] motivation or suggestion to make the specific individual choices of ingredients from Wehling in such a way to achieve the Appellants' claimed invention" (id.); and (4) "Wehling does not teach or fairly suggest all limitations of Appellants' independent claim 1" (id. at 5---6). We address each argument below. Appellants' first argument cites so-called "tenets of patent law," but fails to explain specifically what was wrong with the Examiner's analysis. (Br. 3--4.) The Examiner described Wehling's effervescent composition, and showed that its ingredients overlap with the claims. (Ans. 2-3; FF 1-2.) The Examiner provided a reason why it would have been obvious to form an effervescent composition with the same ingredients as claimed - in providing "useful" and "suitable" examples of acid/base ingredients to combine in an effervescent composition, that is what Wehling teaches should be done. (Ans. 2; FF 1.) Appellants submitted no evidence of secondary considerations, so there was nothing for the Examiner to consider. We are therefore not persuaded the Examiner's analysis was flawed. Insofar as Appellants suggest a lead-compound analysis was required, we are not persuaded. (Br. 3.) An obviousness analysis is an "expansive and flexible" inquiry. KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 415 (2007). Sometimes a lead-compound analysis is applied, but not always. The authority cited by Appellants is not to the contrary. Unigene Labs., Inc. v. Apotex, Inc., 655 F.3d 1352, 1360 (Fed. Cir. 2011) ("A prima facie case of obviousness in the chemical arts is often based on a known compound, called a 'lead compound,' which serves as a starting point for a person of 5 Appeal2014-005506 Application 12/866,609 ordinary skill developing the claimed invention") (emphasis added). Where, as here, a single reference (Wehling) lists preferred acids and bases and teaches they should be combined to form an effervescent composition, we are not persuaded the Examiner was required to select any one as a starting point. 3 The fact is Wehling teaches multiple "useful" or "suitable" ingredients to combine - and a number of combinations are within the scope of the claims. Merck & Co., Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) ("[D]isclos[ing] a multitude of effective combinations does not render any particular formulation less obvious. This is especially true because the claimed composition is used for the identical purpose taught by the prior art.") Appellants' second argument that Wehling and the present claims "are directed to two very different technologies" also fails. (Br. 4.) Appellants contend "Wehling is directed to therapeutic vapor products such as VICKS VAPORUB ... while Appellant's invention is directed to a different effervescent product such as ALKA-SELTZER." (Id.) Yet this focuses on one embodiment to the exclusion of all that Wehling teaches. Merck, 87 4 F .2d at 807 ("[I]n a section 103 inquiry, the fact that a specific [embodiment] is taught to be preferred is not controlling, since all disclosures of the prior art, including unpreferred embodiments, must be 3 Altana Pharma AG v. Teva Pharms. USA, Inc., 566 F.3d 999, 1008 (Fed. Cir. 2009) ("to the extent Altana suggests the prior art must point to only a single lead compound for further development efforts, that restrictive view of the lead compound test would present a rigid test similar to the teaching- suggestion-motivation test that the Supreme Court explicitly rejected in KSR.") 6 Appeal2014-005506 Application 12/866,609 considered.") (internal quotation marks omitted). Indeed, Wehling describes an effervescent composition used in a mouth rinse like claim 1. As the Examiner points out, Wehling discloses its "composition has intended use as an oral care product such as a mouth wash ... , rinse, gargle composition ... , and can even be ingested." (Ans. 7; FF 2.) Wehling also discloses the composition can include flavors and sweeteners. (FF 2.) Wehling is thus not limited to inhaled vapor products. As to Appellants' argument that there is no motivation or suggestion to choose the ingredients from Wehling to achieve the Appellants' claimed invention, we disagree. As discussed above, Wehling identifies a number of "useful" and "suitable" acids and bases to use in forming its effervescent composition that overlap with the claimed ingredients. (FF 1.) Wehling further teaches that "mixtures" of the identified acids may be combined with "mixtures" of the "suitable carbonate bases," so Wehling instructs that more than one acid or more than one base may be included. (Id.) Although several combinations are possible, Wehling alone provides a suggestion to form compositions having the same ingredients as claimed. And, absent evidence to the contrary, we agree with the Examiner that a person of ordinary skill in the art would have predictably combined these ingredients to produce an effervescent composition within the scope of the claims. 4 4 Appellants presented no factual evidence, for example, showing that a combination of the basic amino acids and acids in claim 1 produces unexpected properties. Abbvie Inc. v. The Mathilda and Terrence Kennedy Inst. of Rheumatology Trust, 764 F.3d 1366, 1380 (Fed. Cir. 2014) ("A species contained in a previously patented genus may be patentable if the species manifests unexpected properties or produces unexpected results.") 7 Appeal2014-005506 Application 12/866,609 Finally, Appellants' argument that Wehling fails to teach all the limitations of claim 1 is unpersuasive. (Br. 5.) Appellants contend "claim 1 requires, inter alia, (1) a basic amino acid in free or physiologically acceptable salt form ... (2) an acid source, and (3) a soluble carbonate salt," and that nothing in Wehling suggests this combination of elements. (Id.) Wehling, in fact, discloses preferred acids (e.g., citric acid) that may be combined with preferred carbonate bases (or mixtures of carbonate bases) and specifically identifies, for example, arginine carbonate and potassium bicarbonate. (FF 1; Ans. 8.) Wehling thus discloses a composition with ingredients (1 }-(3). Appellants also contend the Examiner improperly relied on "Wehling' s disclosure of 'arginine bicarbonate' [to] satisf[y] both elements (1) and (3) ... [because] the same ingredient cannot be used to meet two separate limitations." (Br. 5---6.) This too is unpersuasive. The Specification states that "the basic amino acid may be in carbonate or bicarbonate salt form, in which case it can also serve as all or part of the soluble carbonate salt component of the invention." (Spec. i-f 8.) So, the arginine bicarbonate in Wehling can satisfy both elements (1) and (3) of claim 1 as the Specification expressly confirms. For the reasons above, we conclude the Examiner established, by a preponderance of the evidence, that claim 1 would have been obvious over Wehling. Claim 15: The Examiner finds "Wehling differs from the claims in that the document fails to disclose the composition comprises fluoride ions, 8 Appeal2014-005506 Application 12/866,609 antimicrobial compounds and other agents. However, Giani cures the deficiency." (Ans. 4.) According to the Examiner, [i]t would have been obvious to one of ordinary skill to include fluoride ions, antibacterial agents, anti-inflammatory agents and potassium nitrates [as in Giani] in an oral care composition in order to obtain the benefits provided by each in a single composition, thus promoting patient oral health and reducing the need for multiple compositions to obtain the same effects. (Id. at 4.) Appellants argue there is no motivation to combine Wehling and Giani because "they are directed to different technologies" (Br. 7) and "there is also [no] motivation or suggestion to make the specific individual choices of ingredients from each reference" (Br. 8). The Examiner has the better position. Appellants contend Wehling is "directed toward means for inhaling therapeutic vapors" and thus is different from Giani, \vhich is "directed to a self heating toothpaste." (Id. at 7-8.) We again reject this narrow reading of Wehling. Wehling discloses use of effervescent compositions in a "mouthwash, rinse, or gargle" (FF 2) and, consistent with the Examiner's findings, a skilled person would have reason to include ingredients from Giani' s dentrifice composition in a mouth rinse of Wehling, such as stannous fluoride (FF 3) to help fight cavities and promote oral health. (Ans. 4.) Appellants' argument that there is no suggestion to form a composition as claimed because Giani "does not provide any motivation or direction to use anything other than sodium carbonate" is similarly unpersuasive. (Br. 9.) The Examiner is not relying on Giani for teaching a basic carbonate of the claims - that teaching is supplied by Wehling. Nor 9 Appeal2014-005506 Application 12/866,609 is the Examiner proposing to modify the salts in Giani's toothpaste. In short, Appellants do not address the rejection as presented. For the reasons above, we conclude that the Examiner established, by a preponderance of the evidence, that claim 15 would have been obvious over Wehling in view of Giani. SUMMARY We affirm the rejection of claim 1 under 35 U.S.C. § 103(a) over Wehling. Claims 4, 8-10, 12, 14, 20, 23-28, 30, and 32 were not separately argued and fall with claim 1. We also affirm the rejection of claim 15 under 35 U.S.C. § 103(a) over Wehling and Giani. Claims 16, 19, 29, 31, 33, and 34 are not separately argued and fall with claim 15. 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 10 Copy with citationCopy as parenthetical citation