Ex Parte Pan et al

Patent Trial and Appeal Board

Jan 22, 2018

14365074 (P.T.A.B. Jan. 22, 2018)

United States Patent and Trademark Office
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.
14/365,074 06/12/2014 Guisheng Pan 9482-OO-US-Ol-OC 3837
23909 7590 01/24/2018
COLGATE-PALMOLIVE COMPANY
909 RIVER ROAD
PISCATAWAY, NJ 08855
EXAMINER
JUSTICE, GINA CHIEUN YU
ART UNIT PAPER NUMBER
1617
NOTIFICATION DATE DELIVERY MODE
01/24/2018 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):
Paten t_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, GREGORY SZEWCZYK,
and NORA LIN
Appeal 2016-008382
Application 14/365,0741
Technology Center 1600
Before DONALD E. ADAMS, JOHN SCHNEIDER, and
RACHEL H. TOWNSEND, Administrative Patent Judges.
TOWNSEND, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to an
orally acceptable powder-coated dissolvable single-layer film, which have
been rejected as obvious. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
STATEMENT OF THE CASE
Appellants’ invention is directed at a powder-coated dissolvable film
that includes a pigment released from the film upon its dissolution, which
film can be added to a toothpaste composition. (Spec. Tflf 2—4.) The release
1 Appellants identify Colgate-Palmolive Company as the real party in
interest. (Appeal Br. 3.)
Appeal 2016-008382
Application 14/365,074
of the pigment after sufficient brushing time is desired to encourage users to
brush their teeth for a long period of time. (Id. || 2—3.)
Claims 1, 4—11, and 13—19 are on appeal.2 Claim 1 is representative
and reads as follows:
1. An orally acceptable powder-coated dissolvable single-layer film;
wherein the film comprises a polymer matrix and
wherein the matrix comprises a pigment that is released upon
dissolution of the matrix;
wherein the powder coating comprises a pigment;
wherein the matrix comprises a hydroxyalkyl cellulose which is
hydroxypropylmethylcellulo se.
(Appeal Br. 11.)
The following grounds of rejection by the Examiner are before us on
review:
Claims 1, 4—9, 11, and 13—15 under 35 U.S.C. § 103(a) as
unpatentable over Boyd ’9293 and Ebine.4
Claim 10 under 35 U.S.C. § 103(a) as unpatentable over Boyd ’929,
Ebine, and Regner.5
Claims 16—19 under 35 U.S.C. § 103(a) as unpatentable over Boyd
’929, Ebine, and Boyd ’266.6
2 Claim 12 is withdrawn as being directed to a non-elected invention. (Final
Action 3; Appeal Br. 5.)
3 Boyd et al., US 6,669,929 Bl, issued Dec. 30, 2003 (“Boyd ’929”).
4 Ebine et al., JP 60016912 A, published Jan. 28, 1985.
5 Regner et al., US 2007/0224134 Al, published Sept. 27, 2007.
6 Boyd et al., US 8,741,266 B2, issued June 3, 2014 (“Boyd ’266”).
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Application 14/365,074
Claims 1, 4—9, 11, and 13—19 on the ground of non-statutory double
patenting as being unpatentable over claims 1—7 of US 9,744,112 and
Ebine.7
Claim 10 provisionally on the ground of non-statutory double
patenting as being unpatentable over claims 1—7 of US 9,744,112, Ebine,
and Regner.
DISCUSSION
Claims 1, 4—9, 11, and 13—15 are Obvious
The Examiner finds that Boyd ’929 teaches a dentrifice composition
that includes, distributed in it, film flakes of a matrix made from a water
soluble hydroxyalkyl cellulose polymer and starch that has entrained within
it a pigment or colorant. (Final Action 3.) The Examiner notes that Boyd
’929 does not teach a powder coating over the film flakes. (Final Action 4.)
The Examiner, however, finds that such a coating on particles included in a
dentrifice, which particles include a pigment, would have been obvious to
one of ordinary skill in the art in light of the teachings of Ebine. (Id.)
In particular, the Examiner explains that Ebine teaches a dentrifice
composition that includes a polymer particle film with a pigment therein,
which film is surface-coated where the coating layer can be disintegrated by
brushing to display the color. (Final Action 4—5.) The Examiner further
notes that Ebine teaches the inclusion of such a coated pigment film in the
7 The Examiner’s rejection was based on the application, No. 14/365,116,
prior to its issuance as a patent, which was Aug. 29, 2017, and over claims
1—14, which were pending at that time. That application has since issued as
US 9,744,112 with claims 1—7, which were claims 1, 3, 5, 10-12 and 14.
See Application No. 14/365,116, Response filed Feb. 2, 2017.
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Application 14/365,074
dentrifice enables controlling the brushing time of the teeth as the pigment is
revealed after the coating layer is disintegrated and that the coating layer
provides for an aesthetically pleasing product. {Id.at 4.) The Examiner
concludes that Ebine “clearly teaches, suggests and provides motivation to
powder coat an orally acceptable polymer film for providing a visual cue for
sufficient brushing time.” {Id. at 5.)
We agree with the Examiner’s factual findings and conclusion of
obviousness set forth above.
Appellants argue that the Boyd ’929 film “is intended to dissolve
rapidly upon initiation of brushing” whereas the Ebine polymer layer “is not
and could not be soluble, or else it would collapse immediately, and not after
a definite time of brushing.” (Appeal Br. 7.) Thus, according to Appellants
(1) “the importation of the Ebine powder coating onto the Boyd soluble film
would be unsatisfactory for Boyd’s intended use, i.e., immediate release of
components upon brushing,” and (2) “the importation of the Boyd film in
place of the insoluble polymer in Ebine also would not comport with Ebine’s
intended use, because the replacement of the insoluble Ebine matrix with the
soluble Boyd soluble matrix would be expected to also [speed up] the
release rate [of the pigment].” {Id.; see also Reply Br. 2—3.)) We do not
find these arguments persuasive because Boyd teaches that agents may be
entrained in the “rupturable” film matrix to be released with “mechanical
agitation created during tooth brushing.” (Boyd ’929 4:19-27.) While Boyd
discloses some embodiments in which the agent is released immediately, e.g.
flavorants, Boyd does not teach away from a delayed release of other
entrained agents held within the matrix. Ebine teaches why one would want
to have a delayed release of a pigment in a dentrifice composition, such as
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decorative colorants that Boyd adds to provide an “aesthetically decorative
effect” that can be viewed by a user {id. at 1:36-42), i.e., to “control[] the
brushing time of the teeth” by having the color of the pigment being made
visible only “after a definite time of brushing” (Ebine Abstract). Such
control is possible, as the Examiner explains (Final Action 4), by providing
an inorganic powder layer such as titanium dioxide over the matrix that
contains the entrained pigment. (Ebine Abstract.) When such a powder
layer is made to “collapse” after a definite time of brushing as taught by
Ebine, Boyd’s decorative colorant would become visible to a user
manifesting the aesthetically decorative effect.
Appellants further argue that the claimed invention “is in the form of a
single layer, while the combined teachings of prior art would yield a
composition of at least two layers” and, thus, the claimed invention differs
from the Examiner’s combination. (Appeal Br. 8; Reply Br. 3—4.) We do
not find this argument persuasive. As the Examiner noted (Ans. 8), claim 1
is directed to a “powder coated” dissolvable single-layer film, where the film
is a polymer matrix with an entrained pigment. Consequently, the powder
coating would add a layer to the single-layer polymer film entraining a
pigment. Appellants’ assertion that the Specification teaches at paragraph
17 that the powder color coating is adsorbed to the film surface without
“creating additional film layers appended to the core film” does not persuade
us that the powder coating is not an additional layer. We understand
paragraph 17 to simply indicate that the powder coating is not applied as an
additional film layer. (Spec. 117.) However, as the Specification explains
at paragraph 20, the powder is a layer that “creates a coating that turns the
film” a different color. (Spec. 120.) The coating is created by wetting the
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powder and adding it to the film such that the powder is “glue[d]” to the
film. Whether the coating is “adsorbed” as Appellants argue or “glue[d]” as
the Specification explains, the powder colorant is an additional layer on the
outside surface of the polymer film with the pigment entrained therein.
Appellants also argue that there would be no reasonable expectation
of success in the combination because the Ebine “particles” are not films as
claimed, and the powder coating is disposed on a “water insoluble or hardly
soluble polymer” in Ebine and “there is no evidence of record that one could
simply import the powder coating of the insoluble particles of Ebine onto the
soluble film flakes disclosed in Boyd, with [a] reasonable expectation of
success.” (Appeal Br. 8.) We do not find the foregoing argument
persuasive. First, as to “particles” versus “films,” we note that while the
claims recite the term “film,” there is no special definition in the
Specification regarding the dimensions of such a film that is formed by the
polymer matrix and pigment combination. The Specification does note that
the film may be “particles” such as small squares of 2-4 mm across that can
be added to a dentrifice composition. (Spec. 1 8; see Ans. 8.) Boyd ’929
teaches the use of film flakes in which pigment or other chemicals are
encapsulated in a polymer matrix and which are added to a dentrifice
composition. (Boyd ’929 1:30-42.) The size of the flakes used in the
dentrifice can have a “particle size of 0.01 to 0.50 inches.” (Id. at 2:28—32.)
While Ebine labels its polymer and pigment compositions that are added to a
dentrifice “particles,” we do not find this nomenclature to exclude these
particles that are a polymer matrix entraining a pigment, which are the same
components as the claimed “film,” from being a film that is required by the
claims in light of (a) Boyd ’929’s teaching that films can be small flakes of
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the size the Specification indicates are films and (b) the Specification’s
indication of small size particles being film particles.
Regarding Appellants’ position that the Examiner has provided no
evidence that a powder coating such as is used to coat the polymer matrix of
Ebine would be expected to be able to coat the particles of Boyd ’929, we
note that the Examiner was not required to provide evidence that Ebine’s
powder coating that was used to coat the disclosed polymeric matrix would
also be able to coat Boyd ’929’s polymeric matrix to establish a prima facie
case of obviousness. The test of obviousness is “whether the teachings of
the prior art, taken as a whole, would have made obvious the claimed
invention.” In re Gorman, 933 F.2d 982, 986 (Fed. Cir. 1991). Ebine
teaches the use of a coating layer to cover a pigmented film which layer will
be disintegrated upon brushing over a period of time thereby ensuring a
visual cue for sufficient brushing time to clean “the oral cavity.” (Ebine
Abstract; see Final Action 5.) Boyd ’929 recognizes consumer interest in
aesthetic effects of dentrifices to promote their use in practicing oral
hygiene. (Boyd ’929 1:8—27.) In light of these teachings, we agree with the
Examiner that the combination of references “clearly teaches, suggests and
provides motivation to powder coat an orally acceptable polymer film
[having a colorant entrained therein].” (Final Action 5.)
In light of the Examiner’s evidence, to overcome the Examiner’s
prima facie obviousness case, Appellants should have come forward with
evidence or argument to rebut the Examiner’s position, such as by facts
establishing a reason that one of ordinary skill in the art would not have
expected that powder coatings could be layered over Boyd ’929’s polymer
matrix entraining pigment. In re Piasecki, 745 F.2d 1468, 1475 (Fed. Cir.
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Application 14/365,074
1984). Appellants’ statement that Ebine’s particles are insoluble, whereas
Boyd ’929’s flakes are soluble does not explain sufficiently why one of
ordinary skill in the art would not have expected a powder to be able to coat
the polymer matrix prior to its use.
In light of the foregoing, Appellants do not persuade us that the
Examiner erred in rejecting claim 1 for obviousness over Boyd ’929 and
Ebine and the rejection is affirmed.
Claims 4—9, 11, and 13—15 have not been argued separately and
therefore fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
Claim 10 is Obvious
Appellants contend that the Examiner’s reliance on Regner does not
cure the alleged deficiencies with the Examiner’s rejection of claim 1.
(Reply Br. 4; Appeal Br. 8—9.) For the reasons discussed above, however,
we do not find any deficiency with the Examiner’s obviousness rejection of
claim 1. Therefore, we affirm the Examiner’s rejection of claim 10 as
unpatentable over Boyd ’929, Ebine, and Regner.
Claims 16—19 are Obvious
Appellants contend that the Examiner’s reliance on Boyd ’266 does
not cure the alleged deficiencies with the Examiner’s rejection of claim 1.
(Reply Br. 4—5; Appeal Br. 9.) For the reasons discussed above, however,
we do not find any deficiency with the Examiner’s obviousness rejection of
claim 1. Therefore, we affirm the Examiner’s rejection of claims 16—19 as
unpatentable over Boyd ’929, Ebine, and Boyd ’266.
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Provisional non-statutory double patenting
Appellants do not present any argument against the Examiner’s
provisional rejections based on the judicially created doctrine of
obviousness-type double patenting. (Appeal Br. 9). Accordingly, we
presume that Appellants acquiesce to these provisional rejections and thus
summarily affirm the Examiner’s provisional rejections based on the
judicially created doctrine of obviousness-type double patenting for the
reasons advanced by the Examiner in the Final Rejection (Final Action 10—
12). See MPEP § 1205.02 (“If a ground of rejection stated by the examiner
is not addressed in the appellant’s brief, appellant has waived any challenge
to that ground of rejection and the Board may summarily sustain it, unless
the examiner subsequently withdrew the rejection in the examiner’s
answer.”); see also 37 C.F.R. § 41.41(b)(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, including any designated new
ground of rejection, will not be considered by the Board for purposes of the
present appeal, unless good cause is shown.”).
SUMMARY
We affirm the rejection of claims 1, 4—9, 11, and 13—15 under 35
U.S.C. § 103(a) as unpatentable over Boyd ’929 and Ebine.
We affirm the rejection of claim 10 under 35 U.S.C. § 103(a) as
unpatentable over Boyd ’929, Ebine, and Regner.
We affirm the rejection of claims 16—19 under 35 U.S.C. § 103(a) as
unpatentable over Boyd ’929, Ebine, and Boyd ’266.
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We affirm the rejection of claims 1, 4—9, 11, and 13—19 on the ground
of non-statutory double patenting as being unpatentable over claims 1—7 of
US 9,744,112 and Ebine.
We affirm the rejection of claim 10 on the ground of non-statutory
double patenting as being unpatentable over claims 1—7 of US 9,744,112,
Ebine, and Regner.
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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