Ex Parte Patel et al

Patent Trials and Appeals Board

May 10, 2019

14654316 - (D) (P.T.A.B. May. 10, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/654,316 06/19/2015
23909 7590 05/14/2019
COLGATE-PALMOLIVE COMPANY
909 RIVER ROAD
PISCATAWAY, NJ 08855
FIRST NAMED INVENTOR
Madhusudan Patel
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.
9509-00-US-Ol-OC 2190
EXAMINER
ROBERTS, LEZAH
ART UNIT PAPER NUMBER
1612
NOTIFICATION DATE DELIVERY MODE
05/14/2019 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 MADHUSUDAN PATEL, MAHMOUD HASSAN, and
ROSA PAREDES 1
Appeal2019-002162
Application 14/654,316
Technology Center 1600
Before FRANCISCO C. PRATS, TA WEN CHANG, and JOHN E.
SCHNEIDER, Administrative Patent Judges.
SCHNEIDER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal2 under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1-8, 13, 14, 16-25, 28-36, 21--42, and 44--54 to an oral
1 Appellants identify the Real Party in Interest as The Colgate-Palmolive
Company. Appeal Br. 2.
2 We have considered and herein refer to the Specification of June 19, 2015
("Spec."); Final Office Action of Mar. 1, 2018 ("Final Act."); Appeal Brief
of July 2, 2018 ("Appeal Br."); Examiner's Answer of Nov. 14, 2018
("Ans."); and Reply Brief Jan. 14, 2019 ("Reply Br.").
Appeal2019-002162
Application 14/654,316
care composition which have been rejected as obvious. We have jurisdiction
under 35 U.S.C. § 6(b ).
We AFFIRM.
STATEMENT OF THE CASE
Dental plaque is formed from a biofilm precursor and comprises a
mass of microorganisms embedded in a polysaccharide matrix. Spec. ,r 4.
The buildup of plaque can lead to periodontal disease as well as dental caries
and dental calculus. Id. The Specification describes an oral care
composition for removing or reducing plaque. Spec. ,r 19.
Claims 1-11, 13, 14, 16-39, 41, 42, and 44--54 are on appeal. Claim
1 is representative of the rejected claims and reads as follows:
1. An oral care composition comprising an ionic liquid and
an orally acceptable carrier, wherein the ionic liquid comprises:
a) an imidazolium cation and
b) an anion selected from the group consisting of acetate,
bromide, methyl sulfate, ethyl sulfate, octyl sulfate, diethyl
phosphate, and tosylate, wherein the cation is an imidazolium
ion having the formula,
wherein R1, R2 and R3 are independently selected from H, alkyl
and alkenyl, wherein the ionic liquid is present in the oral care
composition at a concentration of 1 mM to 500 mM, and
wherein the oral care composition is a provided as a mouth
rinse, a toothpaste, oral beads or strips, an irrigation fluid, a
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Application 14/654,316
plaque removal liquid, a tongue spray, a dental floss, candy, a
lozenge, chewing gum, patches or lollipop, wherein the orally
acceptable carrier comprises a humectant, and wherein the oral
care composition comprises an abrasive in an amount of less
than 0.1 wt% by total weight of the composition, and wherein
the composition does not contain any antibacterial or whitening
agent aside from the ionic liquid.
(Appeal Br. 10 (Claims App'x).)
Claims 1-8, 13, 14, 16-25, 28-36, 41, 42, and 44--54 have been
rejected under 35 U.S.C. § I03(a) as unpatentable over Elder3 in view of
Earle4 as evidenced by Buelo. 5 Final Act. 2.
DISCUSSION
Issue
The issue with respect to this rejection is whether a preponderance of
the evidence supports the Examiner's conclusion that the subject matter of
the claims would have been obvious over Elder combined with Earle.
The Examiner finds that Elder teaches the preparation of antimicrobial
compositions containing imidazolium ionic liquids such as 1,3-
disubstitutued imidazolium cations. Final Act. 2. The imidazolium cations
include compounds with the structure
3 Elder et al., US 2008/0070966 Al, pub. Mar. 20, 2008 ("Elder").
4 Earle et al., WO 2009/125222 A2, pub. Oct. 15, 2009 ("Earle").
5 Buelo et al., US 2013/0189201 Al, pub. July 25, 2013 ("Buelo").
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+
Where R' may be a Cl-18 alkyl, n is 1, 2, 3, 4, 5, or 6, X- is an anion and R
may be a C 1-18 alkyl. Final Act. 3. The Examiner finds that Elder teaches
that the anions can be halides such as bromide and chloride and also alkyl
sulfate. Id. The Examiner finds that Elder teaches that the compositions can
be formulated as mouth care preparations and the ionic compositions may
comprise from 0.01 % to 15% by weight of the mouth care preparation. Id.
The Examiner finds that Earle teaches the preparation of ionic liquids
which eradicate biofilms which may comprise ethyl-3-methyl imidazolium
acetate. Id.
Id.
The Examiner concludes:
It would have been obvious to one of ordinary skill in the art to
have used or tried ethyl-3-methyl imidazolium as the ionic
liquid in the compositions of Elder et al. because it is a 1,3-
disubstituted imidazolium that eradicates and disrupts biofilm
because plaque is a biofilm on the teeth.
Principles of Law
[T]he examiner bears the initial burden, on review of the
prior art or on any other ground, of presenting a prima facie
case ofunpatentability. If that burden is met, the burden of
coming forward with evidence or argument shifts to the
applicant.
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After evidence or argument is submitted by the applicant
in response, patentability is determined on the totality of the
record, by a preponderance of evidence with due consideration
to persuasiveness of argument.
In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
Analysis
We adopt the Examiner's findings of fact, reasoning on scope and
content of the prior art, and conclusions set out in the Final Action and
Answer regarding this rejection. We find the Examiner has established that
the subject matter of the claims would have been obvious to one of ordinary
skill in the art at the time the invention was made over Elder combined with
Earle. Appellants have not produced evidence showing, or persuasively
argued, that the Examiner's determinations on obviousness are incorrect.
Only those arguments made by Appellants in the Briefs have been
considered in this Decision. Arguments not presented in the Briefs are
waived. See 37 C.F.R. § 41.37(c)(l)(iv) (2015). We have identified claim 1
as representative; therefore, all claims fall with claim 1. We address
Appellants' arguments below.
Appellants argue that Elder does not teach the use of imidazolium
compounds for personal care preparations broadly but is limited to ester
derivatives of imidazolium. Appeal Br. 4. Appellants contend that while
Earle teaches that other imidazolium derivatives have antimicrobial
properties, there is nothing in the references which teach of suggest the use
of the compounds of Earle in the personal care preparations of Elder. Id.
Appellants argue that given the unpredictable nature of the art, the Examiner
improperly combined the teachings of the reference. Id. at 4--5.
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We have considered Appellants' argument and are unpersuaded.
While Elder is directed to ester derivatives of imidazolium, Elder also
teaches that ionic liquids containing imidazolium cations are effective as
antimicrobial agents. Elder ,r,r 9 and 13. Elder teaches that the disclosed
imidazolium derivatives can be used in personal care preparations such as
"dental care, denture-care and mouth-care preparations, e.g. toothpastes, gel
toothpastes, tooth powders, mouthwash concentrates, anti-plaque
mouthwashes, denture cleaners or denture fixatives." Id. ,I6I.
Earle teaches the preparation of antimicrobial compositions
containing an ionic liquid comprising an imidazolium cation. Earle, 3--4.
Earle discloses 1-ethyl-3-methylimidazolium cation as one of the cations
useful in the practice of the invention. Earle, 13.
As the Examiner points out, the imidazolium derivatives of Elder and
Earle are structurally similar in that they share a common imidazolium
central structure. Ans. 12-13. In addition, the imidazolium derivatives both
exhibit antimicrobial activity. Elder ,r 13; Earle, 3. Given the structural
similarity of the imidazolium derivatives and the common antimicrobial
activity, the substitution of the derivatives disclosed in Earle for the
derivatives disclosed in Elder would have been prima facie obvious. In re
Wood, 582 F.2d 638, 641 (CCPA 1978).
Appellants next contend that the Examiner failed to use a lead-
modification analysis in reaching a conclusion of obviousness. Appeal Br.
5-6. Again, we are unpersuaded. As the Examiner points out, while the
lead-compound analysis can be helpful, it is not the only analysis that may
be used to determine whether the subject matter of the claim 1 would have
been obvious. Ans. 7-8. "[W]hen a patent claims a structure already known
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in the prior art that is altered by the mere substitution of one element for
another known in the field, the combination must do more than yield a
predictable result." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,416 (2007),
citing United States v. Adams, 383 U.S. 39, 50-51 (1966). Here the
invention involves substituting one known, structurally similar antimicrobial
agent for another. Appellants have offered no persuasive evidence that the
substitution yields more than a predictable result.
Appellants argue that the ester derivative of Elder would have
significantly different properties that the alkyl substituted derivative of Earle
and one skilled in the art would not expect one to be readily substituted for
the other. Appeal Br. 7. Appellants urge that one skilled in the art would
expect the derivatives to have different anti-plaque activities. Id.
Again, we are not persuaded by Appellants' argument. Elder teaches
that the ester derivatives disclosed therein can be used as an anti-plaque
mouthwash. Elder ,r 61. Plaque is a biofilm. Buelo ,r 12. Earle teaches that
the derivatives disclosed therein are highly effective against biofilms. Earle
5. Based on the teachings of the references, we find that one skilled in the
art would have expected the derivatives of Earle to exhibit similar antiplaque
activity as the derivatives of Elder.
Appellants contend that the Examiner has not properly explained why
one skilled in the art would select the specific anions recited in the claims.
Appeal Br. 7. Appellants contend that the references recited no less than 35
different anions many of which are listed generically. Id.
Appellants' argument is unpersuasive. Elder specifically references
alkyl and aryl sulfates including tosylate, mesylate and octyl sulfate. Elder
,r 32. Elder recites a bromide in Example 2. Elder ,r 86. Earle also cites
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bromides in its examples and specifically claims bromides, acetates and
sulfates including tosylate. Earle 32 and claims 13-15. Based on these
teachings in the references, we find that one skilled in the art would have
been lead to use the anions recited in claim 1.
Finally, Appellants argue that the Examiner has improperly
determined that the chemical core of the claimed compounds and the prior
art is the imidazolium ring. Appeal Br. 7-8. Appellants contend that one
skilled in the art would conclude that the core of the derivative disclosed in
Elder is the ester imidazolium and that one skilled in the art would not
conclude that derivatives without an ester group would have the desired
antimicrobial activity. Id.
Again, we find Appellants' argument unpersuasive. Elder describes
the disclosed invention as an "anti-microbial compositions comprising
certain imidazolium ionic liquids." Elder ,r 2 ( emphasis added). Elsewhere
Elder refers to the imidazolium ionic liquids or imidazolium salts of the
invention. Elder ,r,r 33, 35. We agree with the Examiner that one skilled in
the art would view the core of the derivatives as being the imidazolium ring.
Ans. 12-13.
Conclusion of Law
We conclude that a preponderance of the evidence supports the
Examiner's conclusion that the subject matter of claim 1 would have been
obvious over Elder combined with Earle.
Claims 2-11, 13, 14, 16-39, 41, 42, and 44--54 have not been argued
separately and therefore fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
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DECISION
We affirm the rejection of claims 1-8, 13-14, 16-25, 28-36, 21--42,
and 44--54 under 35 U.S.C. § 103(a).
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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