Ex Parte Prencipe et al

Patent Trial and Appeal Board

Apr 6, 2017

13732804 (P.T.A.B. Apr. 6, 2017)

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.
13/732,804 01/02/2013 Michael Prencipe 8059-01-OC 9359
23909 7590 04/10/2017
COLGATE-PALMOLIVE COMPANY
909 RIVER ROAD
PISCATAWAY, NJ 08855
EXAMINER
ROBERTS, LEZAH
ART UNIT PAPER NUMBER
1612
NOTIFICATION DATE DELIVERY MODE
04/10/2017 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 MICHAEL PRENCIPE and SAYED IBRAHIM1
Appeal 2016-005795
Application 13/732,804
Technology Center 1600
Before RICHARD J. SMITH, TAWEN CHANG, and
DEVON ZASTROW NEWMAN, Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35U.S.C. § 134 involving claims to an oral
composition that have been rejected as anticipated and obvious. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 According to Appellants, the real party in interest is Colgate-Palmolive
Company. (Appeal Br. 2.)
Appeal 2016-005795
Application 13/732,804
STATEMENT OF THE CASE
Claims on Appeal
Claims 1—7, 10, 11, and 13—20 are on appeal. (Claims Appendix,
Appeal Br. 8—11.) Claim 1 is illustrative and reads as follows:
1. An oral composition comprising:
a first abrasive having an Einlehner hardness of greater than
about 5 mg loss per 100,000 revolutions; and
a second abrasive having an Einlehner hardness of less than
about 5 mg loss per 100,000 revolutions;
wherein the ratio of the first abrasive to the second abrasive is
about 1:1.6 to about 1.6:1, and wherein the oral composition has a
pellicle cleaning ratio of greater than about 100 and a radioactive
dentin abrasion of less than about 200,
wherein the first abrasive is present in an amount of about 15%
to about 19% by weight and the second abrasive is present in an
amount of about 15% to about 19% by weight of the oral composition.
(Id. at 8.)
Examiner’s Rejections
1. Claims 1—7, 10, 11, and 13—20 stand rejected under 35 U.S.C.
§ 102(b) as anticipated by Durga,2 as evidenced by Gebreselassie.3 (Ans.
2-3.)
2. Claims 6,1, 11, and 13—20 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Durga, as evidenced by Gebreselassie. (Id. at 4.)
3. Claims 1—7, 10, 11, and 13—20 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Gebreselassie. (Id. at 4—6.)
2 Durga et al., US 6,290,933 Bl, issued Sept. 18, 2001 (“Durga”).
3 Gebreselassie et al., US 6,379,654 Bl, issued April 30, 2002
(“Gebreselassie”).
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Application 13/732,804
FINDINGS OF FACT
We adopt as our own the Examiner’s findings regarding the scope and
content of the prior art. The following findings are included for emphasis
and reference purposes.
FF 1. The Specification states that “[t]he particles of [SYLODENT® XWA
650]. . . [have] an Einlehner hardness of greater than or equal to about 5 to
about 20 mg loss per 100,000 revolutions. . . . Such abrasives are discussed
in United States Patent No. 6,290,933 to Durga.” (Spec. 128.)
FF 2. The Specification states that “ZEODENT®l 15 . . . [has] an Einlehner
hardness of about 2 to 4 mg loss per 100,000 revolutions.” {Id. at 131.)
FF 3. The Examiner finds that claims 1—7, 10, 11, and 13—20 are anticipated
by Durga. (Ans. 2—3.)
FF 4. The Examiner finds that Durga “discloses an oral composition
comprised of substantially the same abrasives at substantially the same
weight percent and ratios . . . which produce substantially the same
[radioactive dentin abrasion] and [pellicle cleaning ratio] of the instant
invention.” (Ans. 3.)
FF 5. The Examiner finds that Durga teaches a dentifrice formulation
(composition 1) comprising 10 wt% of Sylodent XWA 650 and 10 wt% of
Zeodent 115, corresponding to a ratio of 1:1. (Ans. 3; see Durga col. 7,11.
35-67.)
FF 6. Durga teaches that “[t]he total quantity of abrasive present in the
dentifrice compositions of the present invention is at a level of from about
5% to about 40% by weight.” (Durga col. 4,11. 41—43.)
FF 7. The Examiner finds that Gebreselassie teaches the combination of a
dentifrice abrasive, such as Sylodent 650 XWA, with other known dentifrice
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Application 13/732,804
abrasives, such as Zeodent 115, for cleaning teeth. (Ans. 4—5, citing
Gebreselassie Abstract and col. 2,11. 20-33 and 11. 41—49.)
FF 8. Gebreselassie teaches that “[t]he total quantity of abrasive present in
the dentifrice compositions of the present invention is at a level of from
about 5% to about 40% by weight.” (Gebreselassie col. 2,11. 56—58.)
DISCUSSION
We adopt as our own the Examiner’s findings, analysis, and
conclusions as set forth in the Final Action (Final Act. 2—9, dated Feb. 27,
2015) and Answer (Ans. 2—13), except as noted.4 Appellants’ arguments are
addressed below.
Issue
Whether a preponderance of evidence of record supports the
Examiner’s rejection under 35 U.S.C. § 102(b).
Analysis
Appellants contest the anticipation finding by arguing the cited prior
art does not disclose the hardness values and weight percent ranges of the
claimed abrasives.
Hardness
Appellants argue that there is no disclosure in Durga of the
requirement of “a first abrasive having an Einlehner hardness of greater than
about 5 mg loss per 100,000 revolutions, and a second abrasive having an
Einlehner hardness of less than about 5 mg loss per 100,000 revolutions.”
(Appeal Br. 4.) Rather, according to Appellants, both Sylodent 650 XWA
4 We note the Examiner’s position and Appellants’ arguments regarding the
term “about” (see, e.g., Appeal Br. 4—5 and Ans. 8—9), but we do not rely on
that analysis in reaching our decision.
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Application 13/732,804
and Zeodent 115 “have an Einlehner hardness of less than about 5 mg loss
per 100,000 revolutions,” citing Durga’s reference to the number “2” for the
hardness of Sylodent 650 XWA (Durga col. 4,11. 16-17) and a data sheet for
the hardness of Zeodent 115.5 (Id. ) Appellants’ argument is thus that
Durga’s reference to “2” for the hardness of Sylodent 650 XWA contradicts
Appellants’ Specification (FF 1), and that the Examiner has not established
that the Sylodent XWA 650 in Durga possesses the same physical qualities
as the Sylodent XWA 650 referred to in Appellants’ Specification.6 (Reply
Br. 2-A.)
We are not persuaded by Appellants’ argument. It is well settled that
“when the PTO shows sound basis for believing that the products of the
applicant and the prior art are the same, the applicant has the burden of
showing that they are not.” In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990)
(emphasis added). Here, the Examiner points out that Appellants’
Specification describes the properties (e.g., hardness) of Sylodent XWA 650
with knowledge of Durga’s teachings, including its reference to Sylodent
XWA 650 from the same company identified by Appellants as the source of
Appellants’ Sylodent XWA 650. (Ans. 7; Spec. 27, 28; see FF 1: “[s]uch
abrasives are discussed in . . . Durga”.) We thus find that the Examiner has
shown a sound basis for believing that the Sylodent 650 XWA referred to by
5 The data relied on by Appellants for the hardness value of Zeodent 115 is
consistent with the statement made by Appellants regarding hardness of
Zeodent 115 in their Specification. (FF 2.)
6 While arguing that “the formula did not remain the same,” we note for
clarity that Appellants refer to the designation Sylodent 650 XWA
interchangeably with the designation Sylodent XWA 650. (See Reply Br.
3.)
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Application 13/732,804
Durga is the same as the Appellants’ Sylodent XWA 650, with the burden
shifting to Appellants to show that the two substances are not. See Spada,
911 F.2d at 708.
Appellants argue that Durga’s abrasives “differ markedly from those
required by Appellants’ claims,” based on the description of the physical
properties in the Specification and Durga, and that “the evidence . . . seems
to show that the formula did not remain the same.” (Reply Br. 2—3.)
However, a comparison of properties indicates that the Sylodent 650 XWA
described in Durga (Durga col. 4,11. 10-25) has a water content, particle
size, oil absorption, and BET surface area within the respective ranges
described for Appellants’ Sylodent XWA 650 (Spec. 128), and that the
pellicle cleaning ratio (“greater than about 100”) and radioactive dentin
abrasion (“less than about 200”) claimed by Appellants are also satisfied by
the respective properties of the Durga abrasive.7 Accordingly, in view of the
clear statements in Appellants’ Specification, made with knowledge of and
reference to Durga’s disclosure (Spec. 27, 28; FF 1), we are not
persuaded that Appellants have met the burden of showing the Sylodent 650
XWA disclosed in Durga is different than the Sylodent XWA 650 described
in Appellants’ Specification.8
7 Given the Examiner’s discussion of the properties of the abrasive described
in Durga (Final Act. 3—4), we are also unpersuaded by Appellants’ argument
that the Examiner has merely relied on the trade name Sylodent XWA 650 in
considering the disclosure of Durga. (Reply Br. 3).
8 Appellants also argue that “[bjased on the contradictory information
presented in Durga, a person having ordinary skill in the art would actually
be led away from the present claims.” (Reply Br. 2.) To the extent that
argument is directed to the anticipation rejection, it is inapt because a
teaching away argument is inapplicable to an anticipation analysis. See
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Given the forgoing, the abrasives disclosed by Durga have the same
properties (e.g. hardness) as the claimed abrasives. See Spada, 911 F.2d at
708 (“Products of identical chemical composition can not have mutually
exclusive properties.”). Durga thus discloses an oral composition
comprising the combination of abrasives (with the same properties) as
recited in claim 1.
Weight Percent Ranges
Appellants argue that there is no disclosure or suggestion in Durga of
the range of “about 15% to about 19%” by weight of each abrasive, as
recited in claim 1. (Appeal Br. 4.) Moreover, Appellants take issue with the
Examiner’s reference to Example 1 of Durga which discloses the use of the
two abrasives at a ratio of 1:1 because both abrasives are present at 10% by
weight in Durga Example 1, rather than about 15% to about 19% by weight.
{Id.; see FF 5.)
We are not persuaded. The claimed range of about 15% to about 19%
by weight for each abrasive reflects a range of total abrasives of about 30%
to about 38% (15% x 2 to 19% x 2). Durga’s disclosed range of about 5% to
about 40% of total abrasives thus entirely encompasses and does not
significantly deviate from either the range of each abrasive or the combined
range of the abrasives. (FF 6.) See Perricone v. Medicis Pharm. Corp., 432
F.3d 1368, 1377 (Fed. Cir. 2005) (finding anticipation where the prior art
range “entirely encompasses, and does not significantly deviate from”
claimed ranges.) Moreover, Durga discloses that Sylodent XWA 650 and
ClearValue, Inc. v. Pearl River Polymers, Inc., 668 F.3d 1340, 1344 (Fed.
Cir. 2012).
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Zeodent 115 may be included in a dentifrice formulation at a ratio of 1:1.
(FF 5.)
Conclusion
A preponderance of evidence of record supports the Examiner’s
rejection of claim 1 under 35 U.S.C. § 102(b). Claims 2—7, 10, 11, and 13—
20 were not argued separately and fall with claim 1.
Issue
Whether a preponderance of evidence of record supports the
Examiner’s rejections under 35 U.S.C. § 103(a).
Analysis
Rejection No. 2
Claim 79 is dependent on claim 1 and recites “wherein a total amount
of the first and second abrasives in the oral composition is greater than about
30% by weight of the composition.” (Appeal Br. 9.) However, “greater
than about 30% by weight” is encompassed by Durga’s teaching of about
5% to about 40% by weight. See In re Peterson, 315 F.3d 1325, 1330 (Fed.
Cir. 2003) (concluding that “a prior art reference that discloses a range
encompassing a somewhat narrower claimed range is sufficient to establish a
prima facie case of obviousness”). Moreover, claim 7 is anticipated (see
above), and “anticipation is the epitome of obviousness.” In re McDaniel,
293 F.3d 1379, 1385 (Fed. Cir. 2002) (citations omitted).
In view of the forgoing, we are not persuaded by Appellants’
arguments. In particular, we discern no error in the Examiner’s analysis (as
9 Because claims 6, 7, 11, and 13—20 were not argued separately, we select
claim 7 as representative of that claim group. See 37 C.F.R.
§ 41.37(c)(l)(iv).
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Application 13/732,804
opposed to a “lead-modification” analysis), including because the
combination of claimed abrasives (and ranges thereof) are already taught by
Durga.10 (Appeal Br. 5.) We are similarly unpersuaded by Appellants’
argument that “Durga is silent with respect to any guidance in selecting
relative hardness of two abrasives,” and that those of skill in the art would
not be led to select abrasives “with the specific hardness differential” as
claimed. {Id. at 6; see also Reply Br. 2.) To the contrary, Durga teaches the
selection of two abrasives that Appellants indicate have the hardness values
as recited in claim 1. (FF 1 and 2.)
Accordingly, for these reasons and the reasons set forth above in
connection with claim 1, we affirm the rejection of claim 7 under 35 U.S.C.
§ 103(a) as unpatentable over Durga. Claims 6, 11, and 13—20 were not
argued separately and fall with claim 7.
Rejection No. 3
Appellants contest the Examiner’s rejection of claim 1 under 35
U.S.C. § 103(a) based on Gebreselassie by arguing that “Gebreselassie does
not contain any teachings directed to the choice of abrasives with
specifically differing Einlehner hardness values as required by the pending
claims, and provides no suggestion or motivation at all to combine each
abrasive with Einlehner hardness values as required by the pending claims.”
(Appeal Br. 6.) Appellants argue further that
[tjhere is no disclosure or suggestion in [Gebreselassie] to select
the specific range of 15% to about 19% by weight of the oral
composition recited in the present claims, or any suggestion that
10 We note that the “lead-modification” analysis argument is also advanced
in connection with Rejection No. 3, and it is similarly unpersuasive.
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Application 13/732,804
selection of the criticality of a specific range in terms of the
ability to minimize damage to enamel and dentin while still
achieving cleaning and polishing results.
(Id. at 6—7.)
We are not persuaded. In considering motivation in the obviousness
analysis, the problem examined by a skilled artisan need not be the identical
problem addressed in the prior art for the artisan to be motivated to apply the
teachings of the reference. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006) (citing cases). Here, Gebreselassie teaches an oral composition for
cleaning teeth comprising Sylodent 650 XWA in combination with Zeodent
115 (FF 7), and with ranges that overlap Appellants’ claimed ranges (FF 8).
Moreover, those abrasives would have the same hardness values as claimed
by Appellants, as discussed above. (FF 1 and 2.) The combination of those
known abrasives as taught by Gebreselassie thus renders claim 1 obvious.
See KSR Inti Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) (“[W]hen a
patent ‘simply arranges old elements with each performing the same
function it had been known to perform’ and yields no more than one would
expect from such an arrangement, the combination is obvious.”) (citation
omitted).11
Accordingly, we affirm the rejection of claim 1 under 35 U.S.C.
§ 103(a) as unpatentable over Gebreselassie. Claims 2—7, 10, 11, and 13—20
were not argued separately and fall with claim 1.
11 We also acknowledge, but are unpersuaded by, Appellants’ argument
regarding “hindsight.” (Reply Br. 2, 5.) Appellants point to no evidence
that any of the Examiner’s findings were beyond the level of ordinary skill at
the time of the invention or could have been taken only from Appellants’
Specification. See In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971).
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Conclusions of Law
Rejection No. 2: A preponderance of evidence of record supports the
Examiner’s rejection of claim 7 under 35 U.S.C. § 103(a). Claims 6, 11, and
13—20 were not argued separately and fall with claim 7.
Rejection No. 3: A preponderance of evidence of record supports the
Examiner’s rejection of claim 1 under 35 U.S.C. § 103(a). Claims 2—7, 10,
11, and 13—20 were not argued separately and fall with claim 1.
SUMMARY
We affirm the rejections of all claims 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
11