Ex Parte Prencipe et al

Patent Trial and Appeal Board

Aug 31, 2016

12866757 (P.T.A.B. Aug. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/866,757 08/09/2010
23909 7590 09/02/2016
COLGATE-PALMOLIVE COMPANY
909 RIVER ROAD
PISCATAWAY, NJ 08855
FIRST NAMED INVENTOR
Michael Prencipe
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.
8560-00-0C 4245
EXAMINER
CHIANG, JENNIFER C
ART UNIT PAPER NUMBER
3754
NOTIFICATION DATE DELIVERY MODE
09/02/2016 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
uspto@thebellesgroup.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL PRENCIPE,
RICHARD SCOTT ROBINSON,
RICHARD J. SULLIVAN,
RAJNISH KOHLI, and,
DIANE CUMMINS
Appeal2014-006645
Application 12/866,757
Technology Center 3700
Before MICHAEL L. HOELTER, LYNNE H. BROWNE, and
LISA M. GUIJT, Administrative Patent Judges.
HOELTER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from a final
rejection of claims 1-3, 7-9, 11-14, and 38-52. 1 Br. 4--5. Claims 4--6, 10,
1 The amended claims attached to the Appeal Brief were not entered. See
Advisory Action mailed September 9, 2013. The claims on appeal are those
submitted on June 5, 2013 which were finally rejected on June 20, 2013.
See Ans. 2; Final Act. 1 (Office Action Summary). Appellants' desire to
instead consider the non-entered amended claims is a petitionable matter that
Appeal2014-006645
Application 12/866,757
and 15-37 have been canceled. See Amendment to the Claims dated June 5,
2013. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
THE CLAIMED SUBJECT MATTER
The disclosed subject matter "relates generally to toothbrushes, and,
more particularly, to a toothbrush which may have an oral care dispenser for
arginine." Spec. i-f 1. Claims 1 and 3 8 are independent. Claim 1 is
illustrative of the claims on appeal and is reproduced below:
1. A toothbrush comprising:
a handle;
a head disposed at an end of the handle; and
an oral care element extending from an outer surface of
the head, the head having an outlet that is in fluid
communication with a reservoir to dispense an oral care
composition contained in the reservoir; and
wherein the oral care composition comprises arginine in
free or salt form; and
wherein
the oral care composition comprises a viscosity of
about 0.0025 poise to about 10,000 poise when measured
at a sheer rate of 1 seconds-1;
the oral care composition comprises a viscosity of
about 0.0025 poise to about 1000 poise when measured
at a sheer rate of 100 seconds-1; and
the oral care compositions comprises a viscosity of
about 0.0025 poise to about 500 poise when measured at
a sheer rate of 10,000 seconds-1.
is not within our authority to address. See In re Mindick, 371 F.2d 892, 894
(CCPA 1967) (holding that the refusal of an examiner to enter an
amendment of claims is reviewable by petition under 3 7 C.F .R. § 1.181, and
not by appeal to the Board).
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Application 12/866,757
REFERENCES RELIED ON BY THE EXAMINER
Dillingham US 6,679,642 Bl Jan. 20, 2004
Zeh US 2005/0232687 Al Oct. 20, 2005
Cai US 2007/0154863 Al July 5, 2007
Gatzemeyer US 2008/0176183 Al July 24, 2008
McCormack GB 2354441 A Mar. 28, 2001
THE REJECTIONS ON APPEAL
Claims 38--40 are rejected under 35 U.S.C. § 102(e) as anticipated by
Cai.
Claims 1-3, 7, 9, 11-14, 38--46, and 48-51 are rejected under 35
U.S.C. § 103(a) as unpatentable over Zeh and McCormack.
Claim 8 is rejected under 35 U.S.C. § 103(a) as unpatentable over the
modified device of Zeh (i.e., Zeh and McCormack) and Dillingham.
Claims 47 and 52 is rejected under 35 U.S.C. § 103(a) as unpatentable
over the modified device of Zeh (i.e., Zeh and McCormack) and
Gatzemeyer.
ANALYSIS
The rejection of claims 38-40 as anticipated by Cai
Appellants argue claims 38--40 together. Br. 5. We select
independent claim 38 for review with dependent claims 39 and 40 standing
or falling with claim 38. See 37 C.F.R. § 41.37(c)(l)(iv).
Appellants contend that Cai fails to anticipate claim 3 8 because "the
combination of arginine and composition viscosities are not shown in as
complete detail as is described in amended claim 1." Br. 5. First, amended
claim 1 is not before us for review. Ans. 2. Second, claim 38 is the claim
rejected under Cai, not claim 1. Final Act. 2. Third, claim 38 (even as
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Application 12/866,757
amended) lacks a recitation directed to "composition viscosities." See also
Ans. 10. Fourth, Appellants do not explain how the Examiner erred in
relying on Cai, paragraphs 23 and 25, for teaching the use of arginine as an
active agent which can be used in a toothpaste. Final Act. 3; see also Ans.
11. For the above reasons, Appellants' contention is not persuasive the
Examiner erred in rejecting claims 38--40 as being anticipated by Cai. We
sustain the Examiner's rejection of these claims.
The rejection of claims 1-3, 7, 9, 11-14, 38--46, and 48-51
as unpatentable over Zeh and McCormack
Appellants argue (a) claims 1-3, 7, 9, 11-14, 43--45, and 48-50; (b)
claims 38--42; and, (c) claims 46 and 51 under separate headings. Br. 5-10.
We address each grouping separately.
Claims 1-3, 7, 9, 11-14, 43--45, and 48-50
Appellants argue these claims together. Br. 5-8. We select
independent claim 1 for review with the remaining claims standing or falling
with claim 1.
The Examiner primarily relies on Zeh for disclosing the recited
limitations but acknowledges that Zeh does not disclose an "oral care
composition comprises arginine." Final Act. 4. The Examiner relies on
McCormack for teaching "wherein the oral care composition comprises
arginine in free or salt form (Page 3, Ln 9-10; Page 4, Ln 9-10)." Final Act.
4; see also Ans. 11. The Examiner concludes that it would have been
obvious "to substitute the oral care composition used in Zeh's device with an
oral care composition comprising arginine in free or salt form ... in view of
McCormack's teaching." Final Act. 5; see also Ans. 11. The Examiner
finds that Zeh's composition and McCormack's composition are "art-
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Application 12/866,757
recognized equivalents" and that it would have been obvious "to make the
substitution on the basis of its suitability for the intended use." Final Act. 5.
Regarding the viscosities recited in claim 1, the Examiner finds these values
obvious because the difference between the prior art and that which is
claimed "was a recitation of [the] relative dimension of the claimed device."
Final Act. 5. The Examiner further states, "the device having the claimed
relative dimension would not perform differently than the prior art device."
Final Act. 5; Ans. 12. Additionally, the Examiner addresses the claimed
viscosities stating, "where the general conditions of a claim are disclosed in
the prior art, discovering the optimum or workable ranges involves only
ordinary skill in the art."2 Final Act. 6.
Appellants contend, "[t]he Examiner has failed to provide an
articulated rationale" (Br. 6) for the stated substitution of oral care
compositions. However, Appellants do not address the Examiner's
articulated rationale based on a simple substitution of known equivalents.
Final Act. 5. Accordingly, we are not persuaded of Examiner error.
Appellants also contend that there is "no teaching or suggestion within
Zeh" and that there is "nothing within McCormack" that would have
suggested this substitution. Br. 7. Not only have Appellants not addressed
the Examiner's rationale regarding the substitution of known equivalents
(see supra), but, the Supreme Court has further indicated that the rationale
2 Regarding this 'optimization' rationale, the Examiner references paragraphs
23 and 24 of Zeh as disclosing the use of different oral compositions and how
these oral compositions may have different viscosities. See Ans. 11.
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need not arise from the references themselves, as Appellants argue. 3
Accordingly, Appellants' contentions are not persuasive of Examiner error.
Appellants further seem to contend that the Examiner relied on
impermissible hindsight when stating that the skilled artisan, "unlike the
Examiner, does not have the benefit of the applicants' claims as the answer
key." Br. 7. However, Appellants do not further elaborate on this point or
otherwise identify that which might have been gleaned only from
Appellants' disclosure. See In re McLaughlin, 443 F.2d 1392, 1395 (CCPA
1971 ). Accordingly, Appellants' contention is not persuasive of Examiner
error.
Appellants also contend, "there was no showing in the final rejection
that the prima facie holding had been reestablished in light of the arguments
and evidence presented during prosecution." Br. 8. More particularly,
Appellants contend that the Examiner "never adequately explained why one
of ordinary skill in the art was directed toward the Applicants' particular
abrasive used in their composition." Br. 8. As indicated supra, the
Examiner relied on the theories of substitution, changes in dimension
without a showing of criticality, and optimization of a result-effective
variable for the rejection of claim 1. See Final Act. 5---6; Ans. 11-12. There
is no indication that the Examiner's rationales failed to establish (or
"reestablished") a prima facie case of obviousness. Further, it is noted that
Appellants do not indicate where, how, or why the Examiner erred in relying
3 "The obviousness analysis cannot be confined by a formalistic conception
of the words teaching, suggestion, and motivation, or by overemphasis on
the importance of published articles and the explicit content of issued
patents." KSR, 550 U.S. at 419 (emphasis added).
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on McCormack for teaching an abrasive in the referenced composition. See
Final Act. 4, referencing McCormack 3 :24--26.
Accordingly, and based on the record presented, we are not persuaded
the Examiner erred in rejecting claims 1-3, 7, 9, 11-14, 43--45, and 48-50 as
being obvious over Zeh and McCormack.
Claims 38--42
We select independent claim 38 for review with dependent claims 39-
42 standing or falling with claim 38. Appellants rely on the reasons
provided with respect to apparatus claim 1 supra as a basis for contending,
"the method of using that apparatus and oral care composition is novel and
nonobvious." Br. 9. Appellants present no other arguments specific to the
steps recited in method claim 38. Accordingly, and because we are not
persuaded of Examiner error with respect to apparatus claim 1, we are
likewise not persuaded of Examiner error with respect to method claim 38.4
We sustain the Examiner's rejection of claims 38--42.
Claims 46 and 51
We select dependent claim 46 for review. Appellants rely on the
reasons expressed supra with respect to claim 1 as to why these claims
should be allowed. Br. 10. Appellants also contend the Examiner erred
because the Examiner acknowledged that Zeh does not disclose a
composition that "comprises a sodium ion, a potassium ion, a fluoride ion
and an abrasive." Br. 10, referencing Final Act. 4. The Examiner did not
rely on Zeh for such teachings; instead, the Examiner relied on McCormack
4 "The methods as claimed are obvious steps during the normal use and
operation of the modified Zeh reference since the apparatus includes all
structural limitations as discussed supra." Final Act. 7.
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for such teachings. Final Act. 4. Appellants do not indicate how the
Examiner might have erred in relying on McCormack for disclosing such
limitations, or that the Examiner erred in substituting McCormack's
composition for Zeh's composition. Accordingly, we sustain the Examiner's
rejection of claims 46 and 51.
The rejection of claim 8
as unpatentable over Zeh, McCormack, and Dillingham
Claim 8 depends directly from claim 1 and is directed to a toothbrush
head "disposed at an acute angle with respect to a longitudinal axis of the
handle." Appellants do not address the Examiner's reliance on Dillingham
for such teaching. See Final Act. 6. Instead, Appellants contend that Zeh
fails to disclose a composition comprising "a sodium ion, a potassium ion, a
fluoride ion and an abrasive." Br. 9. Not only did the Examiner rely on
McCormack for such teachings (see supra), but claim 8 and its parent claim
1 do not even include such a limitation. Accordingly, Appellants'
contention is not persuasive of Examiner error. We sustain the Examiner's
rejection of claim 8 as being obvious over Zeh, McCormack, and
Dillingham.
The rejection of claims 47 and 52
as unpatentable over Zeh, McCormack, and Gatzemeyer
We select claim 47 for review. Claim 47 depends directly from claim
1 and includes the additional limitation of "a vibrating head." Appellants do
not address the Examiner's reliance on Gatzemeyer for such teaching. Br.
10. Instead, Appellants contend that Zeh fails to disclose a composition
comprising "a sodium ion, a potassium ion, a fluoride ion and an abrasive."
Br. 11. Not only did the Examiner rely on McCormack for such teachings
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(see supra), but claim 4 7 and its parent claim 1 do not even include such a
limitation. Accordingly, Appellants' contention is not persuasive of
Examiner error. We sustain the Examiner's rejection of claims 47 and 52 as
being obvious over Zeh, McCormack, and Gatzemeyer.
DECISION
The Examiner's rejections of claims 1-3, 7-9, 11-14, and 38-52 are
affirmed.
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
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