Ex Parte Pan et al

Patent Trial and Appeal Board

May 17, 2018

14443835 (P.T.A.B. May. 17, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/443,835 05/19/2015
23909 7590 05/21/2018
COLGATE-PALMOLIVE COMPANY
909 RIVER ROAD
PISCATAWAY, NJ 08855
FIRST NAMED INVENTOR
Guisheng Pan
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.
9783-00-US-Ol-OC 5859
EXAMINER
WEBB, WALTERE
ART UNIT PAPER NUMBER
1612
NOTIFICATION DATE DELIVERY MODE
05/21/2018 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 GUISHENG PAN, DIP AK PATEL,
GREGORY SZEWCZYK, and NORA C. LIN
Appeal2018-003497
Application 14/443,835
Technology Center 1600
Before JOHN G. NEW, RICHARD J. SMITH, and
TIMOTHY G. MAJORS, Administrative Patent Judges.
MAJORS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 submit this appeal under 35 U.S.C. § 134(a) involving
claims to an oral film. The Examiner rejected the claims as anticipated and
obvious. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
STATEMENT OF THE CASE
Appellants' "invention relates to orally acceptable films, to a method
of making such films, and to dentifrice compositions including such films."
1 Appellants identify the real party in interest as Colgate-Palmolive
Company. App. Br. 2.
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Application 14/443,835
Spec. ,r 1. The Specification explains that "[t]here is a need for improved,
consumer-friendly products and methods to encourage adults and children to
brush their teeth for a longer period of time," and "an aim of the present
invention [is] to provide a color changing film ... [that] can provide a color
change signal to increase the brushing time." Id. ,r,r 5---6.
Claims 1-20 and 50 are on appeal. Claim 1, the only independent
claim, is illustrative:
1. An orally acceptable film, wherein the film comprises a
film substrate comprising a water-soluble polymer matrix which
includes a first pigment that is released upon dissolution of the
matrix, a second pigment which at least partially masks at least
one surface of the film substrate, and a polymeric material
adhering the second pigment to the at least one surface of the film
substrate.
App. Br. 13 (Claims App.).
The claims stand rejected as follows:
I. Claims 1-5, 11-15, 17, and 18 under 35 U.S.C. § I02(b) as
anticipated by Pearce. 2
II. Claims 1-20 and 50 under 35 U.S.C. § I03(a) as obvious over
Pearce.
2 Pearce et al., US 2003/0224090 Al, published Dec. 4, 2003.
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Application 14/443,835
I - ANTICIPATION
Issue
Has the Examiner established by a preponderance of the evidence that
Pearce describes the subject matter recited in claims 1-5, 11-15, 17, and 18?
Findings of Fact (FF)
The Examiner's findings of fact and statement of the rejection are
provided at pages 2--4 of the Final Rejection dated April. 13, 2017. See also
Adv. Act. (dated July 5, 2017) 2; Ans. 2--4. 3 The following findings are
provided for emphasis and convenient reference.
FF 1. Pearce describes various snacks of orally soluble edible films.
Pearce, Abstract. More specifically, Pearce discloses that "[ t ]he snacks may
include one or more layers of film that is orally soluble and disintegrates
quickly upon placement in a human mouth." Id.; see also id. at Fig. 2, ,r 6
( describing Figure 2 as a "film having a first layer and a second layer of like
or different films laminated, bonded or laid together.").
FF 2. Pearce discloses that "[t]he film may include pullulan as a film-
forming agent, and may also include water, additional film-forming agents,
plasticizing agents, flavoring agents ... thickening agents, binding agents,
coloring agents, sweeteners, fragrances, and the like." Id. ,r 26. 4 Pearce
teaches that the film-forming agents can include, inter alia, pullulan,
3 The pages in the Examiner's December 14, 2017, Answer are not
consecutively numbered. For clarity, we treat the pages of the Answer as
being consecutively numbered (1-8) starting with the caption page.
4 Pearce also teaches that "[ f]urther ingredients may be added to accomplish
the purposes of the film," such as for "breath freshening" and "oral
hygiene." Pearce ,r 27.
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hydroxypropyhnethyl cellulose, polyvinyl pyrrolidone, and mixtures thereof.
Id. ,I 28.
FF 3. Pearce also describes "useful binding agents" as including,
inter alia, pullulan. Id. ,r,r 37-38. Pearce also describes polyvinyl
pyrrolidone as a as a useful polymeric thickening agent for the described
films. Id. ,r,r 39--40.
FF 4. Pearce teaches that the films "can use bright or multiple
colors," and that "the pigment or dye may be included within the film itself
in sufficient intensity to be bright and pleasing to the eye." Id. ,r 134.
Pearce describes "using multiple feed streams of different colors" and also
forming "a multiple-layer film with each layer of a different color." Id.
Pearce describes that "the film can be co-cast or co-extruded, or can be
bonded together with a water soluble edible binder." Id.; see also id. ,r 135.
FF 5. Example 8 of Pearce describes a two-layer film formulation.
Id. ,r 228. In a first film layer, Base B (about 95% pullulan) is combined
with, among other ingredients, a beef flavoring and 0.15 parts of an FD&C
dye formulated to make a brown dye. Id.; see also id. ,r,r 212-213
(describing ingredients of Base Film Formulation B). In a second film layer,
Base B is combined with, among other ingredients, a green pepper flavoring
and 0.20 parts of FD&C green dye. Id. ,r 228. Pearce teaches that "[t]he
beef-flavored component is made into a film, dried on line, and then the
green pepper-flavored component is cast onto top of it, making a two-layer,
two-color, two-flavor film." Id. Pearce further teaches that "[t]he dried
[two-layer] film is spooled into rolls" and then fed into an automated
cutter/packager. Id.
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FF 6. Example 22 of Pearce describes another two-layer film
formulation. Id. ,r 242; Ans. 3. In a first film layer, Base A is combined
with an apple flavoring and 0.3 parts of FD&C green dye. Id.; see also id.
,r,r 197-211 ( describing Base A as a "pullulan-free" film formulation). In a
second film layer, Base A is combined with a cranberry flavoring and 0.17
parts of FD&C blue dye. Id. ,r 242. Pearce teaches that the "films are then
adhered to one another with a mixture of binder (such as pullulan)." Id.
Analysis
Claim 1
The Examiner finds that Pearce anticipates claim 1. Final Act. 2--4.
According to the Examiner, Pearce, describes two-layer, two-color, two-
flavor films where at least one layer includes pullulan, adhering the
pigment/dye in that layer to the surface of the other layer. Id. at 3 (citing
Example 8 of Pearce). 5 The Examiner notes that Pearce describes pullulan
as a useful film-forming and binder agent. Id. at 2-3. The Examiner further
notes that Pearce describes multi-layer films that can be bonded together
with a water soluble edible binder. Id. at 3.
We agree with the Examiner's findings and reasoning in support of
the rejection of claim 1 as anticipated by Pearce. Final Act. 2--4; Adv. Act.
2; Ans. 2--4; FF 5. In short, Pearce's Example 8 discloses a two-layer, two-
color film. Each layer includes approximately 95% pullulan and a distinct
pigment/dye. FF 5. Pearce describes pullulan as a useful binding agent, and
5 According to the Examiner, Example 22 of Pearce also describes all the
limitations of claim 1. Ans. 3--4. In Example 22, the two film layers are
specifically adhered to one another with a binding mixture including
pullulan. FF 6.
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describes the two pullulan-containing films as becoming a single film, with
one layer partially covering the other. FF 3, 5. We agree with the Examiner
that pullulan ( a polymeric material) in this example would adhere the green-
colored film to the surface of the other brown pullulan-containing film ( a
water-soluble polymer matrix) absent evidence to the contrary. Final Act. 3;
Adv. Act. 2. Further, as the green film overlays at least a portion of brown
film in this example, the "second pigment at least partially masks at least
one surface of the film substrate" as recited in claim 1.
We address Appellants' arguments below.
Appellants argue Pearce does not disclose all the elements of claim 1.
According to Appellants, in Example 8 of Pearce, "[ t ]he second layer of film
containing FD&C green dye is cast onto top of the first layer of film." App.
Br. 5. Appellants contend the "two layers of film in Example 8 of Pearce are
not bonded with a binder." Id. So, Appellants contend, "the film in
Example 8 does not contain a polymeric material adhering the second
pigment to the at least one surface of the film substrate." Id.
We are not persuaded. As an initial matter, claim 1 recites
"adhering," not "bonding" or "binding." App. 13. That aside, Pearce
identifies pullulan as a preferred binding agent and describes the two
pullalan-containing films in Example 8 as becoming a single film product
(0.002 inches thick) that is dried and spooled into rolls. Pearce ,r 228; FF 5.
The preponderance of the evidence suggests that, at minimum, pullulan in
the green-film layer would bind - and thus adhere - to the surface of the
brown-film layer. Appellants provide no evidence otherwise. In any event,
even assuming claim 1 required the two differently pigmented film layers be
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"bonded with a binder," that is expressly disclosed and exemplified in
Pearce. FF 4, 6; see also Pearce ,r 106.
Appellants argue that, even if two layers of film in Pearce's Example
8 were bonded together with a water soluble edible binder, the resulting film
"would be different from the film as recited in claim 1." App. Br. 6.
Appellants cite a method of preparation allegedly disclosed in the
Specification, wherein "the films can be prepared, e.g., by adsorbing a
second pigment ( e.g., Ti02 powder) onto at least one surface of a film
substrate that comprises a water-soluble polymer matrix." Id. According to
Appellants, "[a] 'pigment' is different than a 'film' ... [and] Pearce
nowhere discloses or suggests that a pigment be adhered to at least one
surface of a film substrate by a polymeric material ( e.g., PVP)." Id.
We remain unpersuaded. Insofar as Appellants suggest that claim 1
excludes the bonding of a pullulan film layer (in which a second pigment is
dispersed/mixed) to the polymer matrix, we are not persuaded claim 1 is so
narrow. Claim 1 does not recite that the second pigment be directly bonded
to the surface of the polymer matrix/film substrate. And the preparation
method described by Appellants - where a second pigment is adsorbed to
the polymer matrix's surface - is just an example and fails to structurally
distinguish the broader film recited in claim 1 from the prior art.
Appellants argue "Pearce neither discloses nor suggests utilizing a
pigment to mask (i.e., hide) the color of a film." App. Br. 6. Appellants
contend "[a] film does not inherently mask a pigment of the other film when
they are layered over each other." Id. at 7.
This argument is unpersuasive. "[T]he patentability of apparatus or
composition claims depends on the claimed structure, not on the use or
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purpose of that structure." Catalina Mktg. Int'!, Inc. v. Coolsavings.com,
Inc., 289 F.3d 801, 809 (Fed. Cir. 2002). Claim 1 is to a film composition,
not a method of its use. Neither does claim 1, as written, recite that the
second pigment masks the first pigment. Instead, claim 1 recites "a second
pigment which at least partially masks at least one swface of the film
substrate." App. Br. 13 (emphasis added); Spec. ,r 4 (describing a prior-art
color changing film with a layered sandwich structure where "[t]he
outermost white films partially mask or hide the black film in the middle.").
Pearce's second pigment (e.g., green dye) that is mixed throughout a
pullulan film layer that is cast upon, and thus at least partially covers,
another pullulan film layer (e.g., brown-colored film) satisfies this claim
limitation. FF 5.
In Appellants' Reply Brief, Appellants contend Pearce's Example 8
fails to anticipate claim 1 because that example uses dyes not pigments.
Reply Br. 2. This is an untimely new argument, which Appellants waived
by failing to raise it in their principal brief. 3 7 C.F .R. § 41.41 (b )( 1) & (2 );
ExparteBorden, 93 USPQ2d 1473, 1477 (BPAI2010) (informative)
("Properly interpreted, the Rules do not require the Board to take up a
belated argument that has not been addressed by the Examiner, absent a
showing of good cause"); Ex parte Nakashima, 93 USPQ2d 1834, 1837
(BP AI 2010) (informative) ( explaining that arguments not timely presented
in the principal brief will not be considered when filed in a reply brief,
absent a showing of good cause explaining why the argument could not have
been presented in the principal brief).
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Claim 3
Claim 3 depends from claim 1 and adds "wherein the polymeric
material comprises polyvinylpyrrolidone." App. Br. 13. Appellants contend
Example 8 of Pierce does not contain polyvinylpyrrolidone (PVP) and that
Pierce does not disclose the use of PVP as a binder. Id. at 7.
Appellants' argument is unpersuasive. Pearce identifies both pullulan
and PVP as suitable film formers, and discloses that they may be used
alternatively or in combination. FF 2. Pearce further teaches that PVP is a
useful thickening polymer for its films. FF 3. On this record, we find that
the use of both pullulan and PVP in the multi-layer edible films (e.g., like
those described in Examples 8 or 22) would be immediately apparent to the
skilled artisan. Wm. Wrigley Jr. Co. v. Cadbury Adams USA LLC, 683 F.3d
1356, 1361 (Fed. Cir. 2012); In re Petering, 301 F.2d 676, 681-82 (CCPA
1962) (holding a disclosure that allows a skilled artisan to "at once envisage
each member of [a] limited class" can anticipate). Moreover, claim 3
requires a polymeric material that comprises PVP. Hence, the polymeric
material may include other polymers as part of a mixture, including pullulan,
which is a known binder. FF 3. Claim 3 does not require that PVP be the
sole "adhering" polymer and whether Pearce described PVP as a binder is
immaterial to the rejection on appeal. See also Adv. Act. 2 (finding that,
because the prior art teaches compositions comprising PVP, "the properties
applicant discloses [i.e., adhering or binding] ... are necessarily present.").
Conclusion
We conclude that the preponderance of the evidence on this record
supports the Examiner's finding that Pearce anticipates claims 1 and 3.
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Claims 2, 4, 5, 11-15, 17 and 18 have not been argued separately and
therefore fall with claim 1. 37 C.F.R. § 4I.37(c)(l)(iv).
II - OBVIOUSNESS
The Examiner rejected claim 1-20 and 50 as obvious over Pearce.
Final Act. 5-7; Adv. Act. 2; Ans. 4--8.
Most of Appellants' arguments repeat those addressed above related
to anticipation, and Pearce's alleged lack of disclosure of all the limitations
of claims 1 and 3. App. Br. 7-9. Those arguments remain unpersuasive for
reasons already explained. "It is well settled that 'anticipation is the epitome
of obviousness."' In re McDaniel, 293 F.3d 1379, 1385 (Fed. Cir. 2002)
(quoting Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir.
1983)). Indeed, Appellants' arguments are even weaker here for a rejection
under § 103. Even if the working example cited by the Examiner (Example
8) did not expressly describe the layers as "bonded together" or use PVP in
that example formulation, Pearce explicitly teaches that its multi-layer films
may be bonded together with edible binders ( e.g., pullulan) and Pearce
identifies PVP as a suitable film-forming and thickening agent. FF 1--4.
Absent persuasive argument or evidence to the contrary, it would have been
obvious to combine Pearce's teachings, thus arriving at a film with the
structure and properties claimed. 6
6 Here again, it is not necessary that Pearce describe PVP's use "as a binder"
(App. Br. 10-11). We conclude that it would have been obvious to use PVP
with pullulan in a film-forming composition (such as exemplified in
Example 8) because Pearce teaches that combination, which meets the
limitations of claim 3 as already explained.
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Appellants also argue Pearce's film is like the layered color-changing
films described in the background section of the Specification, and that
Pierce's film lacks the invention's advantages. App. Br. 9--10. Appellants
describe the problem their invention is aimed at solving (providing a visual
cue to extend brushing time for teeth), and also describe an embodiment of
the invention ( e.g., "PVP polymeric material coating on the dried film
fragments acts to adhere the second pigment onto the surface ... so that the
black color of the film fragments was substantially entirely masked, on all
exposed surfaces of the fragments, and the dried film fragments appear
white to the naked eye."). App. Br. 10; see also Reply Br. 3 ("Bottom line,
the Pearce films are not designed for controlled release of a pigment.").
According to Appellants, "[t]hese beneficial effects of the claimed film are
not taught by Pearce" as the "Pearce films are designed to display all their
colors." App. Br. 10.
As pointed out above, the pending claims are to a composition, not a
method of use. And the intended use of Appellants' films fails to show a
clear structural difference between the film composition of claim 1 and the
Pearce films. Moreover, the embodiment of the invention that Appellants
describe (requiring, for example, film fragments that are substantially
entirely masked on all exposed surfaces) is different from - and structurally
narrower than- claim 1. Appellants cannot overcome the Examiner's
rejection by arguing limitations that are absent in the claims. In re Self, 671
F.2d 1344, 1348 (CCPA 1982) ("[A]ppellant's arguments fail from the
outset because ... they are not based on limitations appearing in the
claims.").
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For the above reasons, the preponderance of the evidence supports the
Examiner's conclusion that claims 1 and 3 would have been obvious over
Pearce. Claims 2, 4--20, and 50 have not been argued separately and fall
with claim 1.
SUMMARY
We affirm the rejections for anticipation and obviousness on appeal.
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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