Ex Parte Patel et alDownload PDFPatent Trial and Appeal BoardMay 18, 201713518097 (P.T.A.B. May. 18, 2017) Copy Citation 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. 13/518,097 06/21/2012 Madhusudan Patel 8962-OO-OC 9285 23909 7590 05/22/2017 COLGATE-PALMOLIVE COMPANY 909 RIVER ROAD PISCATAWAY, NJ 08855 EXAMINER WEBB, WALTER E ART UNIT PAPER NUMBER 1612 NOTIFICATION DATE DELIVERY MODE 05/22/2017 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 MADHUSUDAN PATEL, ROSA PAREDES, MAHMOUD HAS SAN, and THOMAS BOYD Appeal 2016-004981 Application 13/518,0971 Technology Center 1600 Before ERIC B. GRIMES, RYAN H. FLAX, and DEVON ZASTROW NEWMAN, Administrative Patent Judges. NEWMAN, Administrative Patent Judge. DECISION ON APPEAL This appeal under 35 U.S.C. § 134 involves claims to an oral care composition. The Examiner entered final rejections for obviousness. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 Appellants identify the Real Party in Interest as Colgate-Palmolive Company. Br. 2. Appeal 2016-004981 Application 13/518,097 STATEMENT OF THE CASE Background The Specification discloses: It has now been found that generally regarded as safe (GRAS) dyes, while used conventionally in oral care compositions as colorants, possess strong anti-bacterial activity when irradiated with absorbable, visible light, and that the anti-bacterial activity is administered very rapidly, preferably in less than 2 minutes. The inventors also have found that in the absence of Eradication, the GRAS dyes described herein are silent and exhibit little or no anti-bacterial activity. However, their anti-bacterial properties are turned on in the presence of absor[]bable, visible light. Spec. 111. The Specification discloses “an optically clear oral composition comprising at least one photosensitizing dye, an oxygen generator or oxygen carrier, and an orally acceptable and optically clear carrier.” Id. 112. Claims 1—5, 7—15, and 17—21 are on appeal.2 Sole independent claim 1 is illustrative and reads as follows: 1. An optically clear oral care composition comprising at least one photosensitizing dye, an oxygen generator or oxygen carrier, and an orally acceptable and optically clear carrier, wherein the photosensitizing dye is selected from the group consisting of Tartrazine (FD&C Yellow No.5), Riboflavin 5’-monophosphate sodium salt, Allura Red AC (FD&C Red No. 40), Fast Green FCF (FD&C Green No.3), 2 Claim 16 was withdrawn. See Examiner’s Final Action (“Final Act.”) mailed August 21, 2014. Claim 6 was cancelled. See Br. 7. 2 Appeal 2016-004981 Application 13/518,097 Lissamine Green B, Riboflavin, and mixtures thereof, and wherein the oxygen generator or oxygen carrier is perfluorodecahydro naphthalene. Br. 7 (Claims App’x.) (emphasis original). DISCUSSION The Examiner has rejected claims 1—5, 7—15, and 17—21 under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Kishen3 and Melker.4 Ans. 2. The Examiner finds that Kishen discloses “a composition ‘formulated for use in oral cavity treatment’ [that comprises] a surfactant, an alcohol, at least one photosensitizing agent. . . and an oxygen carrier, where the oxygen carrier includes perfluorodecahydro naphthalene.” Ans. 2 (emphasis original). The Examiner finds that Kishen teaches a “specific embodiment comprising perfluorodecahydro naphthalene as the oxygen carrier and methylene blue as the photosensitizing agent” and that Kishen claims use of the composition as a mouthwash. Id. (emphasis original). The Examiner finds that Kishen discloses that “‘any suitable photosensitizer may be used’” with the disclosed compositions, but that Kishen does not teach tartrazine (FD&C) Yellow No. 5.5 Id. at 3. 3 Kishen et al., WO 2006/135344 Al, published Dec. 21, 2006 (“Kishen”). 4 Richard J. Melker, US 2008/0227856 Al, published Sept. 18, 2008 (“Melker”). 5 Appellants provisionally elected tartrazine as the species of photosensitizing dye in response to the Examiner’s restriction requirement. See Feb. 27, 2013 Response to Restriction Requirement 1. 3 Appeal 2016-004981 Application 13/518,097 The Examiner finds that Melker teaches that “FD&C Yellow No. 5 is recognized as a suitable photosensitive agent.” Id. The Examiner concludes that it “would have been obvious to a person having ordinary skill in the art to use FD&C Yellow No. 5 as the photosensitizing agent in the composition of Kishen et al. since FD&C Yellow No. 5 is a suitable photosensitizing agent, as taught by Melker. Id. The Examiner further concludes that because Kishen’s compositions are “activated by light. . . they are expected to be optically clear.” Id. We agree with the Examiner that Kishen and Melker support a prima facie case of obviousness. Kishen discloses a “composition [that] may be formulated for use in oral cavity treatment. . . . and/or prevention of periodontal and/or halitosis conditions.” Kishen 7,13. Kishen discloses “a photosensitising composition comprising a mixture of: at least one surfactant, at least one alcohol, and optionally water. The composition may further comprise at least one photosensitising compound.” Id. at 5,12. Kishen teaches “[f]or the purposes of the present invention, any suitable photosensitiser may be used.” Id. at 24,12. The composition may further comprise an oxygen carrier that can optionally be perfluorodecahydro naphthalene. Id. at 6—7. The composition can comprise a liquid conduit to “achieve greater penetration of light energy . . . [and] is chosen in such a way that [the compositions] are transparent liquid, low refractive index.” Id. at 30,11. Melker discloses “materials and methods for preparing compositions having a temporary visual indicator customized to an individual user’s needs, where the individual user adds a temporary indicator to a selected 4 Appeal 2016-004981 Application 13/518,097 material so that the location, duration of visible indication, and/or concentration of the material after application to a surface can be determined by the individual user.” Melker 112. Melker discloses that “[preferred compositions of the invention comprise a photosensitive or light unstable dye.” Id. at 125. “Preferred photosensitive or light unstable dyes include . . . FD&C Yellow # 5 (pyrozoine).” Id. We agree with the Examiner that the product of claim 1 would have been obvious based on Kishen and Melker. Kishen suggests a photosensitive composition that meets all of the limitations of claim 1 except that it does not expressly disclose FD&C Yellow # 5 as a photosensitizing agent. However, Kishen expressly teaches that “any suitable photosensitiser may be used.” Kishen at 24 12. Melker teaches that FD&C Yellow # 5 is a known photosensitizer. Thus, it would have been obvious to use FD&C Yellow # 5 as the photosensitizing agent in the composition of Kishen. Appellants argue that the photosensitizing agent is not disclosed in Kishen’s core composition, is not disclosed as “an essential part” of the composition and is “not a required element, but an optional one.” Br. 3, 5. Appellants further argue Melker is “not directed to a photosensitizer composition, but to a tracer-like composition ... for locations and/or concentration of the composition during application” and that Melker teaches “FD&C Yellow No. 5 . . . within the context of combination with a laundry list of other ‘components’.” Id. at 4. These arguments are not persuasive as “[i]t is well settled that a prior art reference is relevant for all that it teaches to those of ordinary skill in the art.” In reFritch, 972 F.2d 1260, 1264 (Fed. Cir. 1992). Melker discloses 5 Appeal 2016-004981 Application 13/518,097 that tartrazine is a photosensitizing agent. Given Kishen’s clear instruction that any suitable photosensitizing agent may be used, we agree the Examiner’s proposed combination of tartrazine as the photosensitizing agent in the composition of Kishen would have been obvious to the skilled artisan at the time of the invention. Appellants also argue that the “claims of this application were subjected to multiple election of species requirement because of the presence of multiple patentably distinct species. However, there is no indication from Kishen or Melker that. . . their composition is directed to a toothpaste.” Br. 4. Appellants are correct that the Examiner imposed a restriction requirement, which Appellants responded to by electing “toothpaste” as the species election. See Feb. 27, 2013 Response to Restriction Requirement 1. Pursuant to M.P.E.P. § 803.02, examination of the claims will be limited to the elected species unless the Examiner determines the elected species is allowable (“[Sjhould the examiner determine that the elected species is allowable, the examination of the Markush-type claim will be extended. If prior art is then found that anticipates or renders obvious the Markush-type claim with respect to a nonelected species, the Markush-type claim shall be rejected.”). As the Examiner has issued a rejection based upon oral care compositions rather than on toothpaste, we presume for the purposes of this appeal that the Examiner has concluded that the claimed toothpaste species is allowable and broadened the search to other oral care compositions. Accordingly, we review the claim scope as presented by the Examiner, and 6 Appeal 2016-004981 Application 13/518,097 agree with the Examiner that Kishen teaches an oral care composition as recited in claim 1. Appellants further argue Kishen teaches away from the claimed invention because “the required elements to provide the photosensitizing effect requires two different alcohols (one of which must be a surfactant) and requires these elements to be in a ratio with water of 10:5:85 to 40:30:30.” Br. 4. According to Appellants, Kishen’s disclosed composition is “not descriptive of combination of chemical components in the appellants’ claimed invention” [and] “there is no indication that Kishen teaches an optically clear toothpaste.” Id. at 4—5. Claim 1 recites an “optically clear oral care composition” and is not limited to a toothpaste. Kishen discloses compositions for oral cavity treatment such as a mouthwash that can be transparent. Kishen 7,13, claim 28; 30,11. Appellants have presented no evidence or persuasive argument that the claimed composition cannot be made according to Kishen’s teaching of alcohols in a ratio with water, which can be optically clear. Moreover, claim 1 employs open-ended “comprising” language, which does not preclude alcohol as a component. With regard to Appellants’ argument that Kishen teaches away from the claimed invention, a reference must actually criticize, discredit, or otherwise discourage the [invention] in order to teach away. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (“The prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed”). Appellants do not 7 Appeal 2016-004981 Application 13/518,097 identify, and we do not find, any teaching in any of the cited prior art which criticizes, discredits, or discourages the use of an alcohol and/or surfactant in the claimed composition. Finally, Appellants claim: each of the remaining dyes cited in the claims have provided evidence of unexpected results with respect to either percent reduction in biofilm (see Table 6) and/or the low percent reduction (and in some cases an increase) in light transmission (see Table 16). While the results themselves can be considered to be unexpected, they are more so when compared against other dyes which not only do not show the unexpected benefits from the dyes within the scope of the claims, but show the opposite effect; a clear teaching away (see e.g. Table 6, Indigo Carmine - the addition of this photosensitizer decreased rather than increased reduction in biofilm). Br. 5. We are not persuaded. Although the Specification refers to the result in the presence of certain photosensitizing dyes as “dramatic . . . compared with the use of just light alone” (Spec. 1101), Appellants did not claim the results were unexpected until post-hoc argument of Appellants’ counsel. Given that Kishen expressly teaches use of a photosensitizing agent in its optically clear composition, we are not persuaded that the results of Tables 6 and 16 are unexpected in light of our findings of fact above regarding the teachings of the prior art or in light of the data itself. Absent evidence, which Appellants have not provided, we are not persuaded that the Examiner’s conclusion of obviousness is not supported by a preponderance of the evidence. 8 Appeal 2016-004981 Application 13/518,097 Conclusion of Law We affirm the rejection of claim 1. Claims 2—5, 7—15, and 17—21 have not been argued separately and therefore fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv). SUMMARY We affirm the rejection of claims 1—5, 7—15, and 17—21 under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Kishen and Melker. 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 9 Copy with citationCopy as parenthetical citation