Ex Parte Mackles et alDownload PDFPatent Trial and Appeal BoardFeb 7, 201312905803 (P.T.A.B. Feb. 7, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARKOFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 12/905,803 10/15/2010 Leonard Mackles CHAV3.0-050 8726 47375 7590 02/07/2013 OMRI M. BEHR 325 PIERSON AVENUE EDISON, NJ 08837-3123 EXAMINER DELCOTTO, GREGORY R ART UNIT PAPER NUMBER 1761 MAIL DATE DELIVERY MODE 02/07/2013 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte LEONARD MACKLES and William Bess (Application 12/905,803) ____________ Appeal 2013-001998 from Technology Center 1700 Gregory R. Del Cotto, Examiner ____________ Before RICHARD TORCZON, JAMES C. HOUSEL and DONNA M. PRAISS, Administrative Patent Judges. TORCZON, Administrative Patent Judge. DECISION ON APPEAL The appellants (Mackles) seek relief from the final rejection of claims 1-9. We AFFIRM. OPINION BACKGROUND Mackles addresses tasteless denture cleansers.1 Typical denture cleansers are powders or tablets added to warm water in which the dentures are then soaked 1 Spec. 1:4. Appeal 2013-001998 Application 12/905,803 2 until clean.2 Mackles reports that it was well known in the art to use sodium sulfite as a deodorizer for chlorine odor from hair, skin and denture care consumer products, but notes that the sodium sulfite could create a sulfurous odor instead.3 Precipitated silica gel adsorbs both the chlorine and sulfurous odors.4 Mackles recommends using silica gel amounts of 0.05-5%, preferably 0.1-0.5%, by composition weight.5 Claim 1 defines the invention as:6 In a denture cleanser comprising a water soluble cleansing agent for cleansing a denture immersed in a solution thereof, comprising a member selected from the group consisting of hypochlorite and a hypochlorite generating agent which releases hypochlorite in the presence of a pharmacologically acceptable source of an agent capable of oxidizing said hypochlorite generating agent to hypochlorite, and a source of sulfite, the improvement comprising further providing precipitated silica gel sufficient to remove both sulfurous and chlorine odor from said solution. The claim is drafted in improvement format, which indicates that the portion of the claim before "the improvement comprising"—the preamble—describes the prior 2 Id. at ¶¶01-02. 3 Id. at ¶03. 4 Id. at ¶06. 5 Id. at ¶09; claims 5-8. The numbering of the claims in the claims appendix of the brief (Br. 9) does not make sense. The examiner pointed out the problem and directs us (Ans. 3) to the amendment dated 26 July 2011. In this opinion, we refer to the claims as they appear in this amendment. 6 Indenting has been added, consistent with 37 C.F.R. § 1.75(i). Appeal 2013-001998 Application 12/905,803 3 art.7 Hence, the claimed subject matter would have been obvious if there were a reason to provide precipitated silica gel to the denture cleanser of the preamble in an amount sufficient to remove sulfurous and chlorine odors from the solution. The claim requires the capacity to remove, not necessarily eliminate, odor. The examiner has rejected all of the claims as having been obvious,8 relying on the disclosures of a Kawasaki patent.9 Mackles has not relied on the limitations of the other claims in urging relief so we treat claims 2-9 as standing or falling with claim 1. FACTS AND FINDINGS Mackles reports that it was well known in the art to use sodium sulfite as a deodorizer for chlorine odor from hair, skin and denture care consumer products, but notes that it may create a sulfurous odor instead.10 Pharmaceutical grade silica gel addresses both the chlorine and sulfurous odors.11 Kawasaki discloses a microbicide for a denture detergent having an inorganic carrier and an antimicrobial metal ion.12 Kawasaki teaches using a bleaching agent.13 The bleaching agent could be a peroxide and a persulfate, such as potassium hydrogen monopersulfate, available from DuPont under the name 7 In re Glatt Air Techniques, Inc., 630 F.3d 1026, 1027-28 (Fed. Cir. 2011); Br. 2 ("The generic claim in issue is a Jepson claim which sets up a very specific improvement to overcome a perceived defect in the prior art."). 8 Final Rej. 3. 9 K. Kawasaki, M. Kubo & T. Fujitani, Denture detergents containing antimicrobial metal ions, US 6,468,950 B1 (2002). 10 Spec. at ¶03. 11 Spec. at ¶06. 12 Kawasaki, abstract. 13 Id. at 4:52-60. Appeal 2013-001998 Application 12/905,803 4 OXONE.14 Alternatively, it could be a chlorine microbicide, such as sodium hypochlorite or OXONE.15 Kawasaki is concerned with adding a metal ion antimicrobial agent, such as silver ion. Silica gel is a known inorganic carrier for the metal ion, although not one that Kawasaki prefers.16 Nevertheless, Kawasaki gives examples using a commercially available silver ion-silica gel complex.17 The antimicrobial complex can be 0.05-10%, preferably 0.1-3%, by weight of the detergent.18 More inorganic carrier would interfere with various desirable physical properties of the detergent in manufacturing, distribution and use.19 The examiner found that Kawasaki's silica gel would inherently have chlorine and sulfurous odor removing properties.20 The examiner also found, as a difference, that Kawasaki does:21 not teach, with sufficient specificity, a composition and method of using such a composition to clean dentures containing hypochlorite or a hypochlorite generating agent, a source of sulfite and precipitated silica gel in the specific amounts as recited by the instant claims. The examiner nevertheless concludes that such a composition and a method would have been obvious to a person having ordinary skill in the art.22 Mackles cites an Oka abstract regarding the properties of Amenitop.23 Oka reports that Amenitop: 14 Id. at 4:52-56. 15 Id. at 4:57-60. 16 Id. at 3:1-12. 17 Id. at 3:36-50 (Amenitop VerIII). 18 Id at 3:63-4:1. 19 Id. at 4:1-12. 20 Final Rej. 4. 21 Id. 22 Id. at 5. Appeal 2013-001998 Application 12/905,803 5 is an inorganic material originally developed to prevent bacterial contamination on the surface of appliances such as telephone and facsimile machines, and consists of silica gel microspheres containing silver-thiosulfate complex (AT-1). It has a coating layer of tetraethoxysilane[] that enables gradual release of AT-1 on the surface. AT-1 showed bactericidal effect on various kinds of bacteria such as E. coli, S. aureus, methicillin resistant S. aureus (MRSA). Mackles cites a technical encyclopedia to show that tetraethoxysilane takes about ten days to completely hydrolyze.24 ANALYSIS Much of the briefing is directed to limitations that appear in the preamble of claim 1. Kawasaki need not teach or suggest each and every limitation of the preamble because the preambular elements are presumptively part of the prior art. Similarly, much briefing is directed to whether Kawasaki, particularly the Amenitop embodiments, would work. The Kawasaki patent is part of the prior art and is presumptively enabled. To the extent the Amenitop embodiments do not work as well as others, it is not surprising because Amenitop was formulated for a different use: long-term release on telephones and other equipment rather than short-term use on dentures.25 Even assuming, arguendo, that a person having 23 Br. 3, text & n.1, citing H. Oka et al., Inactivation of enveloped viruses by a silver-thiosulfate complex, 1 Metal Based Drugs 511 (1994) (available at http://www.ncbi.nlm.nih.gov/pmc/articles/PMC2364937/, visited February 2013). 24 Br. 3 text & n. 2, citing Silicon Esters, 22 KIRK-OTHMER ENCYCL. CHEM. TECH. 69, 71 (4th ed. 1997). 25 As an aside, Kawasaki appears to have used Amenitop VerIII because it was commercially available and thus expedient, not because it was ideally formulated. A person having ordinary skill in the denture cleansing art would have known enough to appreciate that, in actual practice, the hydrolysis-resistant coating on Amenitop was unnecessary and even counterproductive in a denture-soaking application. When Kawasaki expressly lists coating agents, they are readily water- soluble or hygroscopic (e.g., salts, surfactants, sugars and starches). Kawasaki 4:61-67 & 5:16-23. Appeal 2013-001998 Application 12/905,803 6 ordinary skill in the art would have considered the Amenitop embodiments as poor choices, they remain part of the scope and content of the prior art.26 More importantly, however, Kawasaki's teachings and suggestions are not limited to using Amenitop VerIII. Kawasaki teaches using silica gel as the inorganic carrier for a metal ion as a microbicide in a denture cleanser, simply giving Amenitop VerIII as a commercially available example. The examiner found that it was the silica gel in Kawasaki, rather than specifically the Amenitop, that would have had the capacity to adsorb at least some of the chlorine and sulfurous odors. Kawasaki teaches using silica gel in amounts the same as or greater than those Mackles discloses and claims. Mackles has not shown that the metal-ion in the silica gel complex would interfere with the odor adsorption capability of the silica gel. The preponderance of the evidence of record supports an inference that if Kawasaki's metal ion/silica gel complex were used in the preambular denture cleanser, the silica gel would be capable of removing at least some of the chlorine and sulfurous odors generated in use. HOLDING The examiner did not prejudicially err in rejecting the claims. Final rejection of claims 1-9 is— AFFIRMED bar For the appellant: OMRI M. BEHR, The Behr Office, of Edison, New Jersey. 26 In re Applied Materials, Inc., 692 F.3d 1289, 1298 (Fed. Cir. 2012) (rejecting argument directed to putative inadequacies in the reference). Copy with citationCopy as parenthetical citation