Ex Parte Mirajkar et al

Patent Trial and Appeal Board

Sep 29, 2016

13260822 (P.T.A.B. Sep. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/260,822 09/28/2011
23909 7590 10/03/2016
COLGATE-PALMOLIVE COMPANY
909 RIVER ROAD
PISCATAWAY, NJ 08855
FIRST NAMED INVENTOR
Yelloji-Rao K. Mirajkar
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.
8319-00-0C 6377
EXAMINER
LIU, TRACY
ART UNIT PAPER NUMBER
1612
NOTIFICATION DATE DELIVERY MODE
10/03/2016 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 YELLOJI-RAO K. MIRAJKAR, JAIRAJH MATTA!, and
MICHAEL PRENCIPE
Appeal2015-003146
Application 13/260,822 1
Technology Center 1600
Before RICHARD M. LEBOVITZ, ULRIKE W. JENKS, and
RICHARD J. SMITH, Administrative Patent Judges.
LEBOVITZ, Administrative Patent Judge.
DECISION ON APPEAL
This appeal involves claims directed to an oral composition. The
Examiner finally rejected the claims as obvious under 35 U.S.C. § 103(a).
We have jurisdiction under 35 U.S.C. § 134. The obviousness rejection is
affirmed.
STATEMENT OF CASE
Appellants appeal from the Examiner's final rejection of claims
1-9, 14--18, and 20. The claims stand rejected under 35 U.S.C.
§ 103(a) (pre-AIA) as obvious in view ofCaserio (EP 0 278 744 A2,
publ. Aug. 17, 1988) and Nelson et al. (EP 0 803 243 A2, publ. Oct.
1 "The '822 Application."
Appeal2015-003146
Application 13/260,822
29, 1997) ("Nelson"). Ans. 2. All other rejections have been
withdrawn. Id.
Claim 1 is representative of the appealed subject matter and
reads as follows:
1. An oral composition comprising an orally acceptable
vehicle, an effective therapeutic amount of an antibacterial
compound, an effective therapeutic amount of a source of
potassium cations, an anionic surfactant and a cyclodextrin,
wherein the source of potassium cations comprises a
water soluble potassium salt, wherein said potassium salt is
potassium chloride or potassium nitrate, which potassium salt is
present in the composition at a concentration of 3 wt% to 15
wt% based on the weight of the composition, and
wherein the anionic surfactant is sodium lauryl sulfate,
present in the composition at a concentration of 0.5 wt% to 2
wt% based on the weight of the composition.
REJECTION
Claim 1 is directed to an oral composition which comprises the
following five components:
1) an orally acceptable vehicle;
2) an antibacterial compound, which in dependent claim 4 is 2,4,4' -
trichloro-2'-hydroxy-diphenyl ether ("Triclosan");
3) potassium chloride or potassium nitrate present at a concentration
of 3 wt% to 15 wt% based on the weight of the composition;
4) an anionic surfactant which is sodium lauryl sulfate (SLS) present
at a concentration of 0.5 wt% to 2 wt% based on the weight of the
composition; and
5) cyclodextrin.
2
Appeal2015-003146
Application 13/260,822
The Examiner found that Caserio describes a dentifrice ("an oral
composition") comprising 1) an orally acceptable vehicle (water), 2)
triclosan, 3) potassium nitrate at a concentration of 5 wt%, and 4) SLS at a
concentration of 1. 7 wt%. Final Rej. 6; Caserio 3 (Example 1 ), the same
components as 1), 2), 3) and 4) of rejected claim 1. The Examiner found
that Caserio does not describe 5) cyclodextrin present in its oral
composition. Final Rej. 6. However, the Examiner found that Nelson
describes a dentifrice with 2) triclosan and 5) cyclodextrin. Id. The
Examiner found that Nelson teaches that 5) cyclodextrin improves the
solubility of 2) triclosan and other phenolic compounds without the use of
high alcohol levels, high surfactant levels or other co-solvents. Id. at 6-7.
Based on these teachings, the Examiner determined it would have been
obvious to one of ordinary skill in the art to have include cyclodextrin in
Caserio's composition to improve the solubility of triclosan without the use
of high levels of alcohol and surfactants. Id. at 7.
Appellants contend that the rejection should be withdrawn because the
Examiner improperly engaged in "picking and choosing" from the cited
references "to the exclusion of other parts necessary to the full appreciation
of what such reference fairly suggests to one of ordinary skill in the art." Br.
4--5. Appellants contend that the Examiner "ignores the significance of
Appellants' discovery- i.e., that the combination of an anionic surfactant
(which is normally incompatible with potassium salts) with a cyclodextrin
can act as a solubilizing agent for an antibacterial compound even in the
presence of a potassium salt[.]" Id. at 5. Appellants argue that the "state of
the art" teaches that potassium salts and the sodium lauryl sulfate (SLS)
detergent form insoluble potassium lauryl sulfate, reducing the potassium
3
Appeal2015-003146
Application 13/260,822
available to desensitize the teeth. Id. at 6-7. Appellants also contend that
while SLS and cyclodextrins "were known to individually increase the
solubility of an antibacterial like triclosan, the state of the art was such that it
was believed that combining two solubilizers would have decreased the
solubility of triclosan." Id. at 7.
DISCUSSION
The '822 Application teaches that "potassium salts, such as potassium
chloride or potassium phosphates, are incompatible with sodium lauryl
sulfate [SLS] due to the formation of potassium lauryl sulfate, a molecule
which is insoluble in water." '822 Application i-f 6. Table 3 of the '822
Application shows that, when potassium chloride is added to SLS at specific
concentrations, a precipitate formed. Id. i-f 52 (pp. 12-13). The '822
Application acknowledges the cyclodextrin is known to increase the
solubility of triclosan, but the Application states:
it has been reported that the combined use of two solubilizing
agents, a surfactant (such as sodium lauryl sulfate) and
cyclodextrin, results in a much lower solubility of hydrophobic
ingredients than when either one is used along at the same
concentration.
Id. i-f 7. The '822 Application does not disclose where such a result was
reported.
Despite the teaching in the '822 Application that a precipitate forms
between SLS and potassium salts, Caserio explicitly describes a dentifrice
having both these components in the claimed amounts (SLS at 1. 7% and
potassium nitrate at 5%; SLS at 1.7% and potassium chloride at 3.7%).
Caserio 3 (Examples 1 and 3). Even had precipitation occurred and made
the resulting product inferior, it still would have been obvious to have
4
Appeal2015-003146
Application 13/260,822
utilized the combination of SLS and potassium in a dentifrice because they
had been used for that purpose.2
Caserio' s composition also comprises triclosan. Caserio 3 (Example
1 ). Nelson teaches the triclosan is poorly water soluble and must be
solubilized with alcohol or a surfactant such as SLS. Nelson, col. 2, 1. 55 to
col. 3, 1. 3. Nelson teaches that cyclodextrins solubilize triclosan, allowing
high levels in solution "without the use of high alcohol levels, high
surfactant levels or the use of other co-solvents." Id. at col. 4, 11. 32--42.
Based on this teaching, the Examiner made the fact-based and reasonable
determination that it would have been obvious to have added cyclodextrin to
Caserio' s dentifrice to increase the solubility and availability of triclosan.
We find no error in this determination.
Appellants state "it has been reported that the combined use of two
solubilizing agents, a surfactant (such as sodium lauryl sulfate) and
cyclodextrin, results in a much lower solubility of hydrophobic ingredients
than when either one is used along at the same concentration." '822
Application i-f 7.
This argument does not persuade us that the Examiner erred.
2 Simply because a product is described as "inferior" in some respects does
not by itself constitute a teaching away from using the "inferior" product. In
re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). "[J]ust because better
alternatives exist in the prior art does not mean that an inferior combination
is inapt for obviousness purposes." In re Mouttet, 686 F.3d 1322, 1334
(Fed. Cir. 2012). While such a product might have been inferior, that alone
does not by itself constitute a teaching away from using them, as long as the
material was taught in the prior art as "usable" and had "been used" for the
stated purpose as it had been here as specifically taught by Caserio. Gurley,
27 F.3d at 553.
5
Appeal2015-003146
Application 13/260,822
Nelson explicitly teaches that its dentifrice, comprising cyclodextrin
and triclosan, can further comprise a surfactant, such as SLS, in a range
which overlaps with the range which is claimed:
Oral surfactants useful in the present invention include nonionic
and anionic surfactants .... Other oral surfactants include
soluble alkyl sulfonates having 10 to 18 carbon atoms, such as
sodium lauryl sulfate [SLS] .... These ingredients are
generally present from about 0% by weight to about 4% by
weight, preferably from about 0% by weight to about 1 % by
weight for oral rinses and from about 0.5% by weight to about
4% by weight for dentifrice.
Nelson, col. 6, 11. 41-55. Claim 7 ofNelson is drawn to dentifrice
comprising triclosan, cyclodextrin, and a surfactant. Based on these
teachings, the Examiner had a factual basis to conclude that it would have
been obvious to add cyclodextrin to Caserio' s dentifrice comprising triclosan
and surfactant.
Appellants did not identify the disclosure which reported that a
surfactant and cyclodextrin resulted in lower solubility for a hydrophobic
compound (i.e., such as triclosan) as compared to either alone. Br. 7. An
argument made by counsel in a brief does not substitute for evidence lacking
in the record. Estee Lauder, Inc. v. L 'Orea!, S.A., 129 F.3d 588, 595 (Fed.
Cir. 1997). Thus, this argument has not been ignored as asserted by
Appellants. Id. Rather, it is given little weight because no factual evidence
has been provided to support it. On the other hand, Nelson describes a
surfactant and cyclodextrin to solubilize triclosan, providing evidence that
both solubilizing compounds are compatible with triclosan. Thus, a
preponderance of the evidence supports the Examiner's determination that it
would have been obvious to combined cyclodextrin, SLS, and triclosan.
6
Appeal2015-003146
Application 13/260,822
Because Appellants did not identify a reversible error in the
Examiner's rejection, we affirm the rejection of claim 1 as obvious. Claims
2-9, 14--18, and 20 fall with claim 1 because separate reasons for their
patentability were not provided. 37 C.F.R. § 41.37(c)(iv).
TIME PERIOD
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
7