Ex Parte Mello et al

Patent Trial and Appeal Board

Jun 29, 2016

13701844 (P.T.A.B. Jun. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
131701,844 12/04/2012
23909 7590 07/01/2016
COLGATE-PALMOLIVE COMPANY
909 RIVER ROAD
PISCATAWAY, NJ 08855
FIRST NAMED INVENTOR
Sarita V. Mello
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.
8909-00-0C 4642
EXAMINER
WEBB, WALTERE
ART UNIT PAPER NUMBER
1612
NOTIFICATION DATE DELIVERY MODE
07/01/2016 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 SARITA V. MELLO and EV ANGELIA ARV ANITIDOU
Appeal2014-009389
Application 13/701,8441
Technology Center 1600
Before JEFFREYN. FREDMAN, ULRIKE W. JENKS, and
KRISTI L. R. SA WERT, Administrative Patent Judges.
SA WERT, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the rejection of
claims 21, 22, 24--30 and 38.2 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify Colgate-Palmolive Company as the real party in
interest. Br. 2.
2 Appellants erroneously list claims 20 and 23 as rejected. Br. 3. We note
that claim 23 was cancelled in the After Final Amendment filed December
23, 2013, which was entered by the Examiner in the Advisory Action mailed
January 22, 2014.
Appeal2014-009389
Application 13/701,844
STATEMENT OF THE CASE
Claims 21, 22, 24--30 and 38 stand rejected under 35 U.S.C. § 103(a)
for obviousness over Prencipe. 3 Claims 21, 22, 25, 28-30, and 38 stand
rejected under 35 U.S.C. § 103(a) for obviousness over Kleinberg. 4 Claims
26 and 27 stand rejected under 35 U.S.C. § 103(a) for obviousness over
Kleinberg in view of Prencipe. We choose independent claim 21 as
representative. See 37 C.F.R. § 41.37(c)(l)(iv). Claim 21 provides:
21. An oral care composition comprising
at least one arginine compound in free or salt form,
at least one mucoadhesive polymer, and
at least one component selected from the group
consisting of pyrophosphate compounds, and zinc salts,
wherein the arginine compound is present in D or L form,
or as a salt with lauroyl sulfuric acid, and
wherein the arginine compound is present in an amount
within the range of from 0.6% to 1 % by weight;
wherein the oral composition having a flow reduction
above 56% when measured using a hydraulic conductance test
and the oral composition being abrasive free;
wherein the mucoadhesive polymer is selected from one
or more the group consisting of polyvinylmethylether/maleic
anhydride (PVME/MA) copolymer, acrylic
acid/methylacrylate/styrene/2-acryloamido-2-methylpropane
3 Michael Prencipe et al., U.S. Patent Publication No. 2009/0202450 Al
(published Aug. 13, 2009) ("Prencipe").
4 Israel Kleinberg et al., U.S. Patent No. 6,436,370B1 (issued Aug. 20,
2002) ("Kleinberg").
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Application 13/701,844
sufonic acid copolymer, poly(vinylpyrrolidone) (PVP),
carboxymethylcellulose (CMC), xanthan, and mixtures thereof.
Br. 10 (emphases added).
LEGAL STANDARD
A claimed invention is unpatentable if the differences between it and
the prior art are "such that the subject matter as a whole would have been
obvious at the time the invention was made to a person having ordinary skill
in the art." 35 U.S.C. § 103(a) (pre-AIA). To assess whether the subject
matter would have been obvious, the Board follows guidance in Graham v.
John Deere Co., 383 U.S. 1 (1966) andKSRint'l Co. v. Teleflex, Inc., 550
U.S. 398 (2007). "Where a skilled artisan merely pursues 'known options'
from 'a finite number of identified, predictable solutions,' the resulting
invention is obvious under Section 103." In re Cyclobenzaprine
Hydrochloride Extended-Release Capsule Patent Litig., 676 F.3d 1063,
1070 (Fed. Cir. 2012) (quotingKSR, 550U.S. at421).
DISCUSSION
On appeal, the Board "reviews the obviousness rejection for error
based upon the issues identified by appellant, and in light of the arguments
and evidence produced thereon." Ex parte Frye, 94 USPQ2d 1072, 1075-76
(BP AI 2010) (Precedential). We address each issue raised by Appellants
below.
(1) Rejection of claims 21, 22, 24-30, and 38 over Prencipe
Appellants argue that the Examiner relied on impermissible hindsight
as motivation to modify Prencipe's i-f 95 formulation with pyrophosphate.
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Application 13/701,844
Br. 5-7. Appellants assert that if the ordinarily-skilled artisan would have
been motivated to modify the i-f 95 formulation, then that artisan would have
added an abrasive instead of a pyrophosphate because "Prencipe specifically
teaches the advantage of using abrasives and spends far more time on
abrasives ... as opposed to the single mention of a single pyrophosphate
anticalculus chosen by the Examiner." Id. at 6. Appellants also note that
Prencipe teaches that "'small particle abrasive ... may act to help fill
microtubules in the dentin.'" Id. (quoting Prencipe i-f 12).
We disagree with Appellants that the Examiner used impermissible
hindsight in rejecting the claims over Prencipe. "When the Board does not
explain the motivation, or the suggestion or teaching, that would have led
the skilled artisan at the time of the invention to the claimed combination as
a whole, we infer that the Board used hindsight to conclude that the
invention was obvious." In re Kahn, 441 F.3d 977, 986 (Fed. Cir. 2006).
Here, there was no reliance on hindsight because, as the Examiner
explained, Prencipe provides the express motivation for a skilled artisan to
prepare an oral care composition comprising pyrophosphate.
Specifically, Prencipe explicitly teaches a base oral care composition
(i.e., "Composition 1.0") comprising all the components of claim 21 except
for "at least one component selected from the group consisting of
pyrophosphate compounds, and zinc salts." Prencipe i-f 16. Prencipe then
teaches "Composition 1.0.41," that is: "Any of the preceding compositions
further comprising an anti-calculus agent which is a polyphosphate, e.g.,
pyrophosphate, tripolyphosphate, or hexametaphosphate, e.g., in sodium salt
form." Id. Thus, Prencipe suggests an oral care composition comprising the
ingredients of Composition 1. 0 and Composition 1. 0 .41. This express
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Application 13/701,844
teaching to include pyrophosphate in Composition 1.0 confirms the
obviousness of the combination. See, e.g., SIEJA Neurosciences, Inc. v.
Cadus Pharm. Corp., 225 F.3d 1349, 1358-59 (Fed. Cir. 2000) (stating that
an express teaching in the prior art suggesting a particular modification
establishes obviousness). Put differently, this is not a situation where the
Examiner had to "pick and choose isolated elements" from a long laundry
list of potential ingredients, Abbott Labs. v. Sandoz, Inc., 544 F.3d 1341,
1348 (Fed. Cir. 2008), or where a skilled artisan would have been "required
to try all possibilities in a field unreduced by the prior art," Bayer Schering
Pharma AG v. Barr Labs., Inc., 575 F.3d 1341, 1350 (Fed. Cir. 2009).
Instead, Prencipe "plain[ly] enumerate[s]" the addition of pyrophosphate to
the base composition. Final Act. 2.
Prencipe' s focus on the use of abrasives does not convince us of
Examiner error in this case. Although we agree with Appellants that a
skilled artisan would have been motivated to add an abrasive to Prencipe;s
base composition, we disagree that Prencipe' s teaching to add abrasive
necessarily means that a skilled artisan would have been discouraged from
preparing Composition 1.0.41 without abrasive. Prencipe expressly teaches
that Composition 1. 0. 41 is " [a] ny of the preceding compositions further
comprising an anti-calculus agent." Prencipe i-f 16. And of those preceding
compositions, thirty-three---Composition 1.0 to Composition 1.0.33-lack
abrasive. Id. In our view, if abrasive was an essential ingredient in
Prencipe' s oral care compositions, then abrasive would have been included
in base Composition 1.0. Because it was not, we must reject Appellants'
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argument that a skilled artisan would not add pyrophosphate without also
adding an abrasive. 5
(2) Rejection of claims 21, 22, 25, 28-30, and 38 over Kleinberg
Appellants argue that the rejected claims would not have been obvious
over Kleinberg because Kleinberg's compositions are not abrasive free.
Appeal Br. 8. The Examiner argues that Kleinberg teaches that calcium
carbonate may be substituted with sodium calcium pyrophosphate, which is
not an abrasive. Ans. 3--4.
We agree with Appellants that the Examiner did not meet his burden
to show that sodium calcium pyrophosphate is not an abrasive by a
preponderance of the evidence. The Examiner stated that sodium calcium
pyrophosphate "has not been shown to be an abrasive ... nor has it been
described in Kleinberg et al. as such." Ans. 4. But, in our view, Appellants
did provide reasoned scientific explanation based on the teachings of the
5 Appellants raise several new arguments in the Reply Brief with respect to
the rejection over Prencipe: that Prencipe fails to disclose an abrasive-free
composition, Reply Br. 2--4; that there would have been no reasonable
expectation of success in solving the problem that the inventors solved, id. at
4--5; that the Examiner failed to show that any of the claimed ingredients
were result-effective variables, id. at 5; and that the claimed compositions
show unexpected results, id. at 5---6. Because none of these arguments were
presented in the Appeal Brief and because Appellants have not shown good
cause for omission, these new arguments are waived under our rules. See 3 7
C.F.R. § 41.41(2) ("Any argument raised in the reply brief which was not
raised in the appeal brief, or 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.").
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prior art that sodium calcium pyrophosphate is, in fact, an abrasive. Appeal
Br. 8.
Appellants point to Prencipe's explicit teaching that calcium
pyrophosphate is an abrasive. Appeal Br. 8 (citing Prencipe if 42).
Specifically, Prencipe states that that "[t]he Compositions of the Invention
may comprise a calcium phosphate abrasive" or, alternatively, "calcium
carbonate, and in particular precipitated calcium carbonate, may be
employed as an abrasive." Prencipe if 42 (emphases added). And, as further
explained in Appellants' Reply Brief, Kleinberg describes calcium carbonate
as having equivalent solubility to sodium calcium pyrophosphate. Reply Br.
6-7 (citing Kleinberg (col. 4, 11. 24--29)). Specifically, when describing
potential substitutes for calcium carbonate, Kleinberg teaches that those
substitutes (including sodium calcium pyrophosphate) have "equivalent or
closely related solubilities." Kleinberg (col. 4, 11. 24--26).
Based on these teachings of the prior art, we infer that sodium calcium
pyrophosphate acts as an abrasive in Kleinberg's compositions, just as
calcium carbonate acts an abrasive in Prencipe' s compositions. Thus,
because Kleinberg fails to teach or suggest an abrasive-free composition, we
must reverse the Examiner's rejection.
(3) Rejection of claims 26 and 27 over Kleinberg in view of Prencipe
We reverse this rejection for the same reason we reverse the rejection
of claims 21, 22, 25, 28-30, and 38 over Kleinberg.
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Application 13/701,844
SUMMARY
We affirm the final rejection of claims 21, 22, and 24--30 and 38
under 35 U.S.C. § 103(a) over Prencipe.
We reverse the final rejection of claims 21, 22, 25, 28-30, and 38
under 35 U.S.C. § 103(a) over Kleinberg, as well as the final rejection of
claims 26 and 27 under 35 U.S.C. § 103(a) over Kleinberg in view of
Prencipe.
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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