Ex Parte Miller et al

Patent Trial and Appeal Board

Jan 11, 2019

13518971 (P.T.A.B. Jan. 11, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/518,971 06/25/2012
23909 7590 01/15/2019
COLGATE-PALMOLIVE COMPANY
909 RIVER ROAD
PISCATAWAY, NJ 08855
FIRST NAMED INVENTOR
Jeffrey M. Miller
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.
863 2-00-US-01-0C 6882
EXAMINER
WEBB, WALTERE
ART UNIT PAPER NUMBER
1612
NOTIFICATION DATE DELIVERY MODE
01/15/2019 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 JEFFREY M. MILLER, LYNETTE ZAIDEL,
BERNIE BLACKWELL, BARBARA HEPLER, and
PRAKASARAO MANDADI 1
Appeal2018-002333
Application 13/518,971
Technology Center 1600
Before JEFFREY N. FREDMAN, JOHN G. NEW, and
ELIZABETH A. LA VIER, Administrative Patent Judges.
NEW, Administrative Patent Judge.
DECISION ON APPEAL
1 Appellants state that the real party-in-interest is the Colgate-Palmolive
Company. App. Br. 2.
Appeal2018-002333
Application 13/518,971
SUMMARY
Appellants file this appeal under 35 U.S.C. § I34(a) from the
Examiner's Final Rejection of claims 1, 6, 8, 10, 13, 14, 16-19, and 24--27.
Specifically, the claims stand rejected as unpatentable under 35 U.S.C.
§ I03(a) as being obvious over Zaidel et al. (US 2008/0145321 Al, June 19,
2008) ("Zaidel").
The claims also stand rejected as unpatentable under 35 U.S.C.
§ I03(a) as being obvious over the combination of Zaidel and Lokken (US
2006/0062744 Al, March 23, 2006) ("Lokken").
The claims stand further rejected as unpatentable under 35 U.S.C.
§ I03(a) as being obvious over the combination of Zaidel and Chopra et al.
(US 2006/0062744 Al, March 29, 2007) ("Chopra"). 2
We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
NATURE OF THE CLAIMED INVENTION
Appellants' invention is directed to oral care compositions with
improved flavor release characteristics and improved taste, and methods of
using the same. Abstr.
REPRESENTATIVE CLAIM
Claim 1 is representative of the claims on appeal and recites:
2 The Examiner also rejected claims 1, 6, 8, 1 0, 13, 14, 16-19, and 24--2 7 as
unpatentable under 35 U.S.C. 112, first paragraph, as failing to comply
with the written description requirement. Final Act. 2. This rejection was
withdrawn by the Examiner. See Ans. 2.
2
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Application 13/518,971
1. An oral care composition comprising:
a whitening agent, wherein the whitening agent is bound
to a cross-linked polymer;
[wherein] the whitening agent is a bound peroxide in an
amount from 1 % to 2% w/w, wherein the peroxide is hydrogen
peroxide, and said peroxide is bound to a crosslinked polymer;
and
[and]
an anionic surfactant present in an amount of 2% w/w;
wherein the anionic surfactant is sodium lauryl sulfate;
an orally acceptable carrier having a total concentration of
water of0% to 4% w/w and wherein the water content of the oral
care composition is less than 4% w/w;
wherein the orally acceptable carrier comprises a mixture
of polyethylene glycol and one or more ethylene oxide/propylene
oxide copolymers in a net amount of 2 to 35% w/w; and
wherein the composition further comprises 2% w/w
tetrasodium pyrophosphate; and
wherein the composition further comprises about 0.20%
phosphoric acid, and further comprises calcium pyrophosphate
abrasive. 3
3 For the sake of clarity and for the convenience of the reader, we have
slightly rearranged the order of the limitations of claim 1, and added
appropriate conjunctions (in brackets) so that subordinate limitations
immediately follow the limitations that they further modify. Claim 1
originally reads:
3
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Application 13/518,971
App. Br. 13.
1. An oral care composition comprising:
a whitening agent, wherein the whitening agent is bound
to a cross-linked polymer;
an anionic surfactant present in an amount of2% w/w; and
an orally acceptable carrier having a total concentration of
water of0% to 4% w/w and wherein the water content of the oral
care composition is less than 4% w/w;
wherein the anionic surfactant is sodium lauryl sulfate;
and
the whitening agent is a bound peroxide in an amount from
1% to 2% w/w,
wherein the peroxide is hydrogen peroxide, and said
peroxide is bound to a crosslinked polymer; and
wherein the orally acceptable carrier comprises a mixture
of polyethylene glycol and one or more ethylene oxide/propylene
oxide copolymers in a net amount of 2 to 35% w/w; and
wherein the composition further comprises 2% w/w
tetrasodium pyrophosphate; and
wherein the composition further comprises about 0.20%
phosphoric acid, and further comprises calcium pyrophosphate
abrasive.
4
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Application 13/518,971
ISSUES AND ANALYSES
We are persuaded by, and expressly adopt, the Examiner's findings,
reasoning, and conclusions establishing that Appellants' claims are prima
facie obvious over the cited prior art. We address the arguments raised by
Appellants below.
A. Rejection of the claims as being obvious over Zaidel
Issue 1
Appellants argue that the Examiner erred because Zaidel fails to teach
all of the components of the claimed composition in the concentration ranges
claimed. App. Br. 3.
Analysis
The Examiner finds that Zaidel teaches oral care compositions
comprising a cross-linked polymer peroxide, i.e., a complex of peroxide and
N-vinyl heterocyclic polymer, and an orally acceptable carrier, and that the
carrier is non-aqueous, which addresses the "less than 4% water" limitation.
Final Act. 4 (citing Zaidel Abstr.; ,r 49). The Examiner notes that the term
"non-aqueous" is defined by Zaidel as "not contain[ing] appreciable
amounts of chemically-unbound water," and "less than about 5% water in
the carrier." Id. (citing Zaidel ,r 63).
The Examiner finds that Zaidel also teaches use of "peroxydone XL-
10," a cross-linked polymer containing vinylpyrrolidone ("PVP")4
4 Also referred to as N-vinylpyrrolidone, N-vinyl-2-pyrrolidione and N-
vinyl-2-pyrrolidinone. See Zaidel ,r 32.
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Application 13/518,971
complexed with hydrogen peroxide, in which the peroxide complex is
present in an amount of about 0.5% to about 40% of the total weight of the
composition. Final Act. 4 (citing Zaidel ,r,r 25, 27, 32).
The Examiner further finds that Zaidel teaches inclusion of orally
acceptable carriers, including surfactants such as sodium lauryl sulfate,
which are preferably present in an amount of "about 0.1 % to about 2%."
Final Act. 4 ( citing Zaidel ,r 64 ). The Examiner finds that Zaidel also
teaches that its compositions comprise adhesion agents such as hydrophilic
block copolymers of polyethylene glycols and ethylene oxide/propylene
oxide, having an average molecular weight from 2,000 to about 15,000, e.g.,
Pluraflo L 1220, including polyethylene glycol 600, which are preferably
present from about 0.001 % to about 75%. Id. (citing Zaidel ,r,r 50-53; 46).
The Examiner finds that Zaidel differs insofar as it does not require
the cross-linked polymer peroxide and sodium lauryl sulfate or the mixture
of polyethylene glycol and ethylene oxide/propylene oxide copolymers to
fall within the claimed range. Final Act. 5. However, the Examiner finds,
the damed range for the whitening agent, "from 1 % to 2%," and surfactant,
of "1.75% to 2.0%," overlaps or lies inside the ranges taught by Zaidel, i.e.,
"about 0.5% to about 40%" for the whitening agent and about "0.1 % to
about 2%" for the surfactant. Id. The claimed range of 2 to 35% for the
mixture of polyethylene glycol and ethylene oxide/propylene oxide
copolymers falls within Zaidel's range of about 0.001 % to about 75%. Id.
Finally, the Examiner finds that the claimed amounts for the
anticalculus agents, i.e., tetrasodium pyrophosphate and sodium
tripolyphosphate also overlap or lie within ranges taught by Zaidel. Final
Act. 5.
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Appellants argue, as an initial matter, that Zaidel provides little
motivation for a person of ordinary skill in the art to select sodium lauryl
sulfate as a surfactant, and even less does it provide motivation for any
combination of sodium lauryl sulfate, polyethylene glycol, and ethylene
oxide/propylene oxide copolymers in Appellants' narrowly claimed range of
concentrations. App. Br. 3. According to Appellants, Zaidel teaches that
materials "useful in carriers include adhesion agents, viscosity modifiers,
diluents, surfactants, foam modulators, peroxide activators, peroxide
stability agents, abrasives, pH modifying agents, humectants, mouth feel
agents, sweeteners, flavorants, colorants, and combinations thereof." Id.
( quotomg Zaidel ,r 45). Appellants contend that, from this teaching of
optional ingredients, Zaidel further teaches that "[ s ]urfactants among those
useful herein include anionic, nonionic, and amphoteric surfactants," but
"[p]referably, the surfactant is nonionic." Id. (quoting Zaidel ,r 64).
Appellants point out that Zaidel further teaches that suitable anionic
surfactants include any C8-20 alkyl sulfate, e.g., sodium lauryl sulfate, but
that this example is one of several suggested surfactants provided by Zaidel
( others include sodium coconut mono glyceride sulfonate, sodium
dodecylbenzene sulfonate, and cocamidopropylbetaine ). App. Br. 3 ( citing
Zaidel ,r 64 ). Appellants assert that none of the exemplary compositions
demonstrated in Zaidel include any anionic surfactant. Id. ( citing Zaidel
,r,r 103-109).
Appellants point out that Zaidel similarly teaches that adhesion agents
include "hydrophilic organic polymers, hydrophobic organic polymers,
silicone gums, silicone adhesives, silica, and combinations thereof." App.
Br. 3 (quoting Zaidel ,r 46). Appellants contend that this teaching
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Application 13/518,971
encompasses a vast number of chemically and physically distinct species.
Id. Appellants argue that Zaidel further teaches that, within the hydrophilic
organic polymers category there are "polyethylene glycols, nonionic
polymers of ethylene oxide, block copolymers of ethylene oxide and
propylene oxide, carboxymethylene polymers, N-vinyl heterocyclic
polymers, and mixtures thereof." Id. at 3--4 (quoting Zaidel ,r 50).
Appellants note that, of Zaidel's three exemplary compositions, only two
include any hydrophilic organic polymer (Pluracare L-1220) and both of
these are present at 1.0 weight percent, which is outside of Appellants'
claimed range. Id. at 3--4 ( citing Zaidel, ,r,r 106, 108). Appellants point out
that Pluracare L-1220 is a block copolymer of ethylene oxide and propylene
oxide, and that none of Zaidel' s examples include any polyethylene glycol.
Id. at 4.
Therefore, Appellants argue, a person skilled in the art would have
had little, if any, motivation from Zaidel to specifically combine sodium
lauryl sulfate surfactant with polyethylene glycol and ethylene
oxide/propylene oxide copolymer, as the Examiner suggests. App. Br. 4.
Furthermore, contend Appellants, a skilled artisan would have had no
motivation to select Appellants' claimed amounts of 2% sodium lauryl
sulfate and 2-35% polyethylene glycol and ethylene oxide/propylene oxide
copolymer. Id.
Appellants argue further that the concentrations of both sodium lauryl
sulfate and the two polymers recited by Appellant's claims would have been
non-obvious in view of the much broader ranges disclosed in Zaidel. App.
Br. 4. According to Appellants, Zaidel broadly teaches the use of any
combination of surfactants in any amount from 0.01 % to 10%, for example,
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Application 13/518,971
0.05% to 5% or 0.1 % to 2%. Id. (citing Zaidel, ,r 64). Appellants assert
that Zaidel teaches these broad ranges in connection with anionic, nonionic
and amphoteric surfactants, or any combination of these. Id. Furthermore,
argue Appellants, no teaching or suggestion of Zaidel would have
specifically guided a person of ordinary skill in the art toward selecting a
particular surfactant or surfactants at a particular concentration. Id.
Similarly, Appellants argue, Zaidel teaches that adhesion agents are
"preferably present at a level of from about 0.01 % to about 75%, optionally
from about 1 % to about 40%." App. Br. 4 ( quoting Zaidel ,r 46).
Appellants assert that, despite the fact that hydrophilic and hydrophobic
organic polymers might be expected to have different properties and
different effective concentrations as adhesion agents, Zaidel provides no
additional guidance to selecting a suitable concentration. Id. Furthermore,
contend Appellants, none of Zaidel' s exemplary compositions include a
hydrophilic organic polymer at a concentration other than 1.0 weight
percent, or include a combination of hydrophilic organic polymers, or a
combination of a hydrophilic organic polymer and an anionic surfactant. Id.
We are not persuaded by Appellants' arguments. Claim 1 requires:
(1) hydrogen peroxide as a whitening agent in an amount from 1 % to 2%
w/w and bound to a cross-linked polymer; (2) sodium lauryl sulfate as an
anionic surfactant at a concentration of 2% w/w; (3) an orally acceptable
carrier comprising a mixture of polyethylene glycol and one or more
ethylene oxide/propylene oxide copolymers in a net amount of 2 to 35%
w/w and a water content of the oral care composition of less than 4%; (4)
2% w/w tetrasodium pyrophosphate; (5) about 0.20% phosphoric acid; and
( 6) a calcium pyrophosphate abrasive.
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With respect to (1 ), Zaidel teaches: "[A] a peroxide complex ... ,
wherein said complex comprises hydrogen peroxide and an N-vinyl
heterocyclic polymer." Zaidel Abstr. Zaidel further teaches that: "The
peroxide complex comprises a peroxide component and a porous cross-
linked polymer. As referred to herein, a 'peroxide component' is any
oxidizing compound comprising a bivalent oxygen-oxygen group. Peroxide
components include peroxides and hydroperoxides, such as hydrogen
peroxide." Id. at ,r 26. Furthermore:
The peroxide complex is preferably present at a level of
from about 0.5% to about 40%, optionally from about 20% to
about 30%. In a preferred embodiment, the concentration of the
peroxide complex is such that the peroxide component of the
peroxide complex is present at a level of about 10% of the total
composition weight, optionally from about 1 % to about 6% of
the total composition weight.
Id. at ,r 25. Zaidel thus teaches limitation ( 1) in concentrations that
encompass the claimed range of 1 % to 2% w/w.
With respect to (2), Zaidel teaches:
Surfactants among those useful herein include amomc,
nonionic, and amphoteric surfactants.. . . Suitable anionic
surfactants include water-soluble salts of C8-20 alkyl sulfates,
sulfonated monoglycerides of C8-20 fatty acids, sarcosinates,
taurates, and mixtures thereof. Illustrative examples of these and
other surfactants are sodium lauryl sulfate, sodium coconut
monoglyceride sulfonate, sodium lauryl sarcosinate, sodium
lauryl isoethionate, sodium laureth carboxylate and sodium
dodecyl benzenesulfonate, and mixtures thereof. ... One or more
surfactants are optionally present in a total amount of about
0.01% to about 10%, for example about 0.05% to about 5% or
about 0.1 % to about 2%.
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Application 13/518,971
Zaidel ,r 64 ( emphases added). Zaidel thus expressly teaches limitation (2)
in concentration ranges that encompass the claimed range of 2% w/w.
With respect to limitation (3), Zaidel teaches:
As referred to herein, an adhesion agent is a material or
combination of materials that enhance the retention of the
peroxide complex on the oral cavity surface onto which the
composition is applied. Such adhesion agents include adhesives,
film forming materials, viscosity enhancers and combinations
thereof. Such materials include hydrophilic organic polymers .. ..
Adhesion agents are preferably present at a level of from about
0.01 % to about 75%, optionally from about 1 % to about 40%.
Zaidel ,r 46 ( emphasis added). With respect to the hydrophilic organic
polymers, Zaidel teaches: "Hydrophilic organic polymers useful herein
include polyethylene glycols, nonionic polymers of ethylene oxide, block
copolymers of ethylene oxide and propylene oxide, carboxymethylene
polymers, N-vinyl heterocyclic polymers, and mixtures thereof." Id. at ,r 50.
Zaidel thus teaches: "an orally acceptable carrier comprising a mixture of
polyethylene glycol and one or more ethylene oxide/propylene oxide
copolymers in a net amount of 2 to 35% w/w," as required by limitation (3).
Furthermore, Zaidel teaches: "The present invention can tolerate small
amounts of water and for the purposes of this disclosure the term anhydrous
is intended to mean a water content of less than about 2 % by weight of the
overall solution." Zaidel ,r 16. Zaidel thus expressly teaches: "wherein the
water content of the oral care composition is less than 4% w/w," as recited in
claim 1.
With respect to limitation (4) and (5), Zaidel teaches:
pH modifying agents among those useful herein include
acidifying agents to lower pH, basifying agents to raise pH, and
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Application 13/518,971
buffering agents to control pH within a desired range. Any orally
acceptable pH modifying agent can be used, including
carboxylic, phosphoric and sulfonic acids, acid salts (e.g.,
monosodium citrate, disodium citrate, mono sodium malate,
etc.), alkali metal hydroxides such as sodium hydroxide,
carbonates such as sodium carbonate, bicarbonates,
sesquicarbonates, borates, silicates, phosphates (e.g.,
monosodium phosphate, trisodium phosphate, pyrophosphate
salts, etc.), imidazole, and mixtures thereof.
Zaidel ,r 68. Although Zaidel does not expressly teach a specific weight
percentage of tetrasodium pyrophosphate or phosphoric acid, Zaidel teaches,
with respect to such pH-balancing compounds:
For example, one or more compounds selected from
acidifying, basifying and buffering agents can be included to
provide a pH of about 2 to about 10, or in various embodiments
from about 2 to about 8, from about 3 to about 9, from about 4 to
about 8, from about 5 to about 7, from about 6 to about 10, and
from about 7 to about 9.
Id. Appellants' Specification discloses that:
pH modifying agents among those useful herein include
acidifying agents to lower pH, basifying agents to raise pH, and
buffering agents to control pH within a desired range. For
example, one or more compounds selected from acidifying,
basifying and buffering agents can be included to provide a pH
of 2 to 10, or in various embodiments from 2 to 8, from 3 to 9,
from 4 to 8, from 5 to 7, from 6 to 10, and from 7 to 9. Any orally
acceptable pH modifying agent can be used, including without
limitation carboxylic, phosphoric and sulfonic acids, acid salts
( e.g., mono sodium citrate, disodium citrate, mono sodium
malate, etc.), alkali metal hydroxides such as sodium hydroxide,
carbonates such as sodium carbonate, bicarbonates,
sesquicarbonates, borates, silicates, phosphates (e.g.,
monosodium phosphate, trisodium phosphate, pyrophosphate
salts, etc.), imidazole and mixtures thereof. One or more pH
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Application 13/518,971
modifying agents are optionally present in a total amount
effective to maintain the composition in an orally acceptable pH
range.
Spec. ,r 40. The language of the Specification in this respect is virtually
identical to the language of paragraph [0068] of Zaidel, and we agree with
the Examiner that a person of ordinary skill in the art would understand that
the amounts of tetrasodium pyrophosphate or phosphoric acid required to
reach the pH ranges desired would necessarily fall into the recited amounts.
Finally, with respect to ( 6), Zaidel teaches:
The compositions of the present invention optionally
comprise an abrasive. In various embodiments, an abrasive is
useful for example as a polishing agent. Any orally acceptable
abrasive can be used, but type, fineness (particle size) and
amount of abrasive should be selected so that tooth enamel is not
excessively abraded in normal use of the composition ....
Illustrative examples are dicalcium orthophosphate dihydrate,
calcium pyrophosphate, /J-calcium pyrophosphate, tricalcium
phosphate, calcium polymetaphosphate and insoluble sodium
polymetaphosphate.
Zaidel ,r 79 ( emphasis added). Zaidel thus teaches: "further comprises
calcium pyrophosphate abrasive," as recited in claim 1.
Our reviewing court has held that: "In cases involving overlapping
ranges, we and our predecessor court have consistently held that even a
slight overlap in range establishes a prima facie case of obviousness." In re
Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003). The ranges cited by Zaidel
encompass the ranges recited in Appellants' claims. We consequently agree
with the Examiner that the claims on appeal are obvious over Zaidel.
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Application 13/518,971
Issue 2
Appellants next argue that their Specification discloses evidence of
unexpected results sufficient to overcome the Examiner's conclusion that the
claims are primafacie obvious over the cited prior art. App. Br. 5.
Analysis
Appellants argue that their Specification data that show a comparison
between compositions comprising 1.2%, 1.75% and 2.0% sodium lauryl
sulfate in an evaluation of organoleptic properties. App. Br. 5 ( citing Spec.
Ex. 2, Table 2). Appellants contend that the Specification discloses that the
use of a low-water composition in order to preserve whitening agent stability
results in "negative taste attributes due to low flavor release and peroxide
taste." Id. (citing Spec. ,r 7). By way of example, Appellants' Specification
notes that prior art low water compositions comprising 1.2% sodium lauryl
sulfate ("SLS") "showed poor flavor release in spite of containing a flavor
content of 2.25% by weight, which exceeds the normal flavor level of 1 % to
1.5%." Id.
Appellants assert that the data presented in the Specification
demonstrates the unexpected result that the use of 2.0% SLS in a
composition according to claim 1 results in dramatically improved
organoleptic rating compared to a composition comprising only 1.2% SLS.
App. Br. 5 (citing Spec. Ex. 2, ,r 53). Appellants assert that none of the prior
art cited by the Examiner is directed to the problem of improving
organoleptic properties of low-water peroxide compositions, nothing in the
cited art would suggest or motivate one skilled in the art to the unexpected
conclusions found by Appellants. Id. at 6.
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Nor, Appellants argue, could a person of ordinary skill in the art have
arrived at Appellant's narrowly-claimed range by routine experimentation,
because "a particular parameter must be first recognized as a result-oriented
variable ... before the determination of the optimum or workable ranges of
said variable might be characterized as routine experimentation." App. Br. 6
(citing MPEP § 2144.05 (II)(B); also citing In re Antonie, 559 F.2d 618
(C.C.P.A. 1977)). According to Appellants, nothing in Zaidel would have
motivated the skilled artisan to arrive at Appellants' claimed concentration of
2%, because Zaidel makes no teaching or suggestion that the anionic
surfactant concentration of a composition has any desirable effects on the
compositions taught therein. Id. Appellants repeat that Zaidel does not
include any surfactants in its exemplified compositions, much less a specific
anionic surfactant at a specific concentration, and therefore, Appellants
argue, Zaidel would have provided no motivation to a person of ordinary
skill to optimize the amount of anionic surfactant. Id.
We are not persuaded. Example 2 of the Specification is provided in
its entirety below.
Example 2
[0053] Table 2 (below) reports organoleptic evaluation
scores/ratings obtained from an experienced flavorist. In these
compositions, the sodium lauryl sulfate ("SLS") content was
varied, while the flavoring agent content remained constant
(2.25% w/w). The experienced flavorist rated these compositions
on a scale of 0-6, with a rating of 6 being most preferred. As
shown in Table 2, the compositions possessing an SLS content
equal to or greater than 1.75% w/w, demonstrated dramatic
improvement in rating compared to compositions containing
1.2% w/w SLS.
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'lablt\ 2
rw.····················rw.••·.,w•·.•·.·•.•·.·.·.wi
I ~ ... ;, SLS l Rating !
lJ:~"L~j
"When unexpected results are used as evidence of nonobviousness,
the results must be shown to be unexpected compared with the closest prior
art." In re Baxter Travenol Labs., 952 F.2d 388,392 (Fed. Cir. 1991); see
also Iron Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317, 1322 (Fed.
Cir. 2004) (A showing of "new and unexpected results" must be "relative to
the prior art."). Example 2 of Appellants' Specification does not specify
whether the materials used in the test from which Table 2 is constructed
contains the other ingredients recited in the claims, nor does it expressly or
implicitly compare the compositions tested to those taught by Zaidel.
More importantly, Zaidel expressly teaches the optional use of
surfactants, including SLS: "in a total amount of about 0.01 % to about
10%, for example about 0.05% to about 5% or about 0.1 % to about 2%."
Zaidel ,r 64. Zaidel thus teaches the use of SLS within the concentration
range disclosed by Table 2. Appellants have not shown that the
compositions of Zaidel did not have the organoleptic properties disclosed by
Table 2, or that the properties they claim are "unexpected" would not have
been present in the prior art. Appellants merely argue that it was not
previously appreciated that certain concentrations within the range taught by
Zaidel are more preferred by a (single) experienced flavorist than others.
That is insufficient to demonstrate unexpected results. First, a
demonstration of unexpected results requires the demonstration of a
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"difference in kind," rather than a mere difference in degree. See In re
Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005). Here, Appellants demonstrate
that a concentration of 2% SLS is somewhat more preferred ( on an arbitrary
scale of 1 to 6) by an experienced flavorist, than concentrations of 1. 7 5% or
1.2% (differences of 1.0 and 3.0 arbitrary preferability units respectively).
That is insufficient to show a "difference in kind" required to be probative of
unexpected results.
Furthermore, "[ w ]hen the claimed compositions are not novel they are
not rendered patentable by recitation of properties, whether or not these
properties are shown or suggested in the prior art." In re Spada, 911 F .2d
705, 709 (Fed. Cir. 1990). In the appeal before us, Zaidel teaches the
optional use of SLS in the range of concentrations encompassed by the claim
and Example 2 of Appellants' Specification. The fact that 2.0% SLS may
present a more preferable taste than lower concentrations in the range taught
by Zaidel is not sufficient to overcome the Examiner's prima facie case of
obviousness.
We consequently affirm the Examiner's rejection of the claims on this
ground.
B. Rejection of the claims as being obvious over Zaidel and Lokken
Appellants repeat their arguments with respect to Zaidel supra, and
argue that Lokken fails to cure the alleged deficiencies of Zaidel. App. Br.
9--10. Because, for the reasons we have explained, we conclude that the
claims on appeal are obvious over Zaidel, we similarly conclude that the
claims are obvious over the combination of Zaidel and Lokken. We
consequently affirm the Examiner's rejection of the claims.
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C. Rejection of the claims as being obvious over Zaidel and Chopra
Appellants repeat their arguments with respect to Zaidel supra, and
argue that Chopra fails to cure the alleged deficiencies of Zaidel. App. Br.
10-11. Because, for the reasons we have explained, we conclude that the
claims on appeal are obvious over Zaidel, we similarly conclude that the
claims are obvious over the combination of Zaidel and Chopra. We
consequently affirm the Examiner's rejection of the claims.
DECISION
The Examiner's rejection of claims 1, 6, 8, 10, 13, 14, 16-19, and 24--
27 under 35 U.S.C. § 103(a) is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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