Ex Parte Rabenhorst et al

Patent Trial and Appeal Board

Sep 28, 2016

11812085 (P.T.A.B. Sep. 28, 2016)

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.
11/812,085 06/14/2007 Jurgen Rabenhorst 1507-71 8104
28249 7590 09/29/2016
DILWORTH & BARRESE, LLP
Dilworth & Barrese, LLP
1000 WOODBURY ROAD
SUITE 405
WOODBURY, NY 11797
EXAMINER
SIMMONS, CHRIS E
ART UNIT PAPER NUMBER
1629
MAIL DATE DELIVERY MODE
09/29/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte JÜRGEN RABENHORST, ARNOLD MACHINEK,
GERHARD SCHMAUS, MARTINA HERRMANN,
GABRIELE VIELHABER, and RAVIKUMAR PILLAI.1
__________

Appeal 2015-000098
Application 11/812,085
Technology Center 1600
__________

Before DONALD E. ADAMS, RICHARD J. SMITH and
JOHN E. SCHNEIDER Administrative Patent Judges.

SCHNEIDER, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to an oral
hygiene composition which have been rejected obvious. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.

1 Appellants identify the Real Party in Interest as Intematix Corporation. Br.
1.
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STATEMENT OF THE CASE
The present invention is directed to an oral hygiene composition for
controlling or preventing bad breath. Spec. 1. The oral hygiene composition
contains one or more anthranilic acid amides in an amount effective against
the bacteria that cause bad breath. Spec. 7. The oral hygiene composition
may comprise dental cream, toothpaste, tooth gel, mouthwash, mouth rinse,
liquid for gargling, mouth or throat sprays (pump-action or aerosol sprays),
sucking lozenge sucking tablet, sweet, chewing gum, chewing sweet and
dental care chewing gum. Spec. 10.

Claims 1–3, 9, 11, 17, 19, 20, 24, 25, and 29 are on appeal. Claim 1 is
illustrative and reads as follows:
1. An oral hygiene composition comprising an oral formulation
for controlling or preventing bad breath adapted for oral
delivery to a person in need thereof, a flavoring agent and an
antimicrobial agent comprising a compound of the Formula
1 or of a mixture of two or more different compounds of the
Formula 1

1

in which for the compound of the Formula 1 or for each
compound of the Formula 1 in the mixture,
m = 0, 1, 2 or 3,
p = 0, 1or2,
n = 0, 1 or 2,
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in which if n = 1 or 2 then in each case the pair R1 and R2 in
each case denote H or together form a further chemical bond,
in which if m = 1, 2 or 3 each X, independently of the other,
denotes OH, Oalkyl or Oacyl,
in which if p = 1 or 2 each Y, independently of the other,
denotes OH, Oalkyl or Oacyl,
in which E =H or denotes a radical –COOR3,
R3 =H or alkyl, in which R3 = H also for the corresponding
pharmaceutically acceptable salts and solvates, wherein said
compound or compounds of Formula 1 are included in an
amount to inhibit and/or prevent the growth of microorganisms
in the oral cavity for controlling or preventing bad breath, and
where said composition is selected from the group consisting of
dental cremes, toothpastes, tooth gels, mouthwashes, mouth
rinses, liquids for gargling, mouth or throat sprays (pump-
action or aerosol sprays), sucking lozenges, sucking tablets,
sweets, chewing gums, chewing sweets and dental care chewing
gums.

The claims stand rejected as follows:
Claims 1–3, 9, 11, 17, 19, 20, 24, 25, and 29 stand rejected under 35
U.S.C. § 103(a) as unpatentable over Harita2 in view of Schmaus ‘8333 and
Yamamoto4.

2 Harita et al., US 4,070,484, issued Jan. 24, 1978 (“Harita”).
3 Schmaus et al., WO 2004/047833 A2, published Jun. 10, 2004 (“Schmuas
‘833”).
4 Yamamoto at al., US 2003/0138511 A1, published Jul. 24, 2003
(“Yamamoto”).
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Claims 1–3, 9, 11, 17, 19, 20, 24, 25, and 29 stand rejected under 35
U.S.C. § 103(a) as unpatentable over Harita in view of Schmaus ‘4135 and
Yamamoto.6

DISCUSSION
Issue
In rejecting the pending claims the Examiner finds that Harita
discloses anti-allergic compositions containing aromatic carboxylic amide
derivatives of the general formula

which are useful in treating allergic disorders. Final Act. 8. The Examiner
finds that the compositions of Harita can be administered orally. Id. With
respect to Schmaus, the Examiner finds that Schmaus teaches the use of the
same class of compounds as recited in claim 1 in anti-allergic compositions.
Final Act. 5–6. The Examiner finds that Schmaus also teaches that same
compounds disclosed in Harita. Final Act. 9. The Examiner goes on to find
that Yamamoto discloses the use of anti-allergic agents in oral hygiene

5 Schmaus et al., US 2006/0089413 A1, published Apr. 27, 2006 (“Schmaus
‘413”).
6 Schmaus ‘413 is the English language version of Schmaus ‘833. Final Act.
7. The two rejections are identical and we shall treat them together. For
convenience we will refer to Schmaus ‘413 and Schmaus ‘833 collectively
as “Schmaus”.
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compositions such as toothpaste and mouthwash. Final Act. 9–10. The
Examiner concludes that
One of ordinary skill in the art would have had a reasonable
expectation of success in arriving at the claimed invention
because Harita, Schmaus and Yamamoto are all directed to the
treatment of allergic responses that involve[] the use of an
antiallergic compound[]. Harita and Schmaus teach in
particular the use of many of the same compounds such as
Tranilast (which meets a compound of formula 1) for their
antiallergic activity. Harita generally teaches that the
compounds work by inhibiting the release chemical mediators
from mast cells, while Schmaus more specifically teaches the
chemical mediator is histamine. Harita discloses that one
advantage of the compounds is that they maintain strong
antiallergic activity when administered orally unlike previously
used oral antiallergic agents. Yamamoto discloses that
histamine release inhibitors can be used for their antiallergic
utility in toothpaste formulations. One of ordinary skill in the
art would have recognized from Harita and Schmaus that
antiallergic compounds that fall within general formula 1 such
as Tranilast (both references) and Compound 27 (Schmaus) are
effective in treating allergic disorders because they inhibit the
release of the chemical mediator, histamine, from mast cells
that may be present in the skin or in the mucosa of the GI
system. The skilled artisan would further recognize that
because antiallergic compounds can be administered orally (see
Harita) they can be formulated in oral compositions known to
be useful as carriers for histamine-release inhibitors to provide
antiallergic compositions (see Yamamoto). Accordingly, the
claimed invention as a whole would have been prima facie
obvious to one of ordinary skill in the art at the time of the
invention.

Final Act. 10.
Appellants contend that Harita does not teach that the disclosed
compounds exhibit an anti-microbial effect nor does Harita teach an oral
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hygiene composition as called for in the claims. Br. 15. Appellants argue
that Yamamoto does not teach the treatment of bad breath. Br. 16.
Appellants also argue that there is nothing to suggest that the anti-allergic
agents of Harita and/or Schmaus would be effective in the compositions of
Yamamoto. Id. Appellants argue that the teachings of Schmaus are limited
to topical compositions and that there would be no reason to use them in the
compositions of Yamamoto. Appellants go on to argue that the Examiner
has failed to provide any evidence to support the conclusion that one skilled
in the art would have combined the references to arrive at the claimed
invention. Br. 17
With respect to claims 3 and 25, Appellants argue that the Examiner
has failed to identify where the references teach that the claimed compound
are effective against the specific species of bacteria recited in the claims. Br.
18–19, and 22.
With respect to claim 17, 19, and 24 Appellants argue that nothing in
the reference teaches holding the oral hygiene composition in the oral cavity
for a specific time followed by either swallowing or removing the
composition from the oral cavity. Br. 19.
Finally, with respect to claim 29, Appellants argue that the references
do not teach the use of a compound corresponding to formula 27 in the
Specification. Br. 22
The issue with respect to this rejection is whether the Examiner has
established by a preponderance of the evidence that claims 1–3, 9, 11, 17,
19, 20, 24, 25, and 29 would have been obvious over Harita combined with
Schmaus and Yamamoto under 35 U.S.C. § 103(a).
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Findings of Fact
We adopt as our own the Examiner’s findings and analysis. The
following findings are included for emphasis and reference convenience.

FF1. Harita discloses anti-allergic compositions having the general
formula

wherein each of R1 and R2 is a hydrogen atom or an alkyl group
having 1-4 carbon atoms, R3 and R4 are hydrogen atoms or
together form another chemical bond, each X is a hydroxyl
group, a halogen atom, an alkyl group having 1-4 carbon atoms
and an alkoxyl group containing 1-4 carbon atoms, and may be
the same or different, and n is an integer of 1-3, provided that
when two Xs are alkyl or alkoxyl groups, the alkyl groups
thereof may be connected together into an alkylene group.
Harita, col. 1, ll. 58–67.
FF2. The compounds of Harita “possess an antiallergic action and are
effective for the therapeutic treatment of diseases caused by allergies such as
asthma, hay fever, urticarial and atopic dermatitis.” Harita col. 2, ll. 11–14
FF3. The compositions of Harita can be administered orally. Harita
col. 1, ll. 34–37.

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FF4. Schmaus ‘413 discloses histamine-release inhibitors having the
general formula

(“Formula 1”)
Wherein
m=O, 1, 2 or 3,
p=O, 1 or 2,
n=O, 1 or 2,
with the proviso that, when n = l or 2, the sum of
p+m >0,
where, when n = l or 2, R1 and R2, in each case in pairs, in each
case denote H or together denote a further chemical bond (such
as, for example, in cinnamic acid derivatives);
where, when m=l, 2 or 3, each X, independently of the others,
denotes OH, Oalkyl or Oacyl,
where, when p=l or 2, each Y, independently of the others,
denotes OH, Oalkyl or Oacyl,
with the proviso that, when p+m >0, X or Y has been selected
at least once from the group that consists of OH and Oacyl;
R3=H or alkyl (in particular --CH3, as well as straight-chain or
branched alkyl chains with 2 to 30 C atoms).

Schmaus ¶¶ 1–13.
FF5. Schmaus ‘413 teaches that the inhibitors are present in final
compositions in amounts ranging from 0.1 to 10%. Schmaus ¶ 309
FF6. Schmaus teaches the inclusion of plant extracts which include
flavorings. Schmaus ¶ 130.
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FF7. Yamamoto discloses compositions containing “tomato-based
anti-allergic agents, histamine-release inhibitors or leukotriene-release
inhibitors.” Yamamoto ¶ 1.
FF8. The anti-allergic agents of Yamamoto can be include in
toothpaste or mouthwash. Yamamoto ¶ 92.
FF9. Yamamoto discloses a toothpaste composition containing 1 %
tomato extract and sodium saccharin, a sweetener. Yamamoto ¶¶ 176–178.
FF10. The Specification teaches that the amount of compounds of the
formula reflected in claim 1 range from 0.0005 to 5.0 weight percent for oral
hygiene products. Spec. 28.
FF11. The Specification teaches that saccharin can be used as a
sweetener in the practice of the invention. Spec. 37, 41.

Principles of Law
The “discovery that a claimed composition possesses a property not
disclosed for the prior art subject matter, does not by itself defeat a prima
facie case.” In re Dillon, 919 F.2d 688, 693 (Fed. Cir. 1990). The same
standard applies to compounds. Id. at 693, n.3 (inherent, inherency)
“In determining whether the subject matter of a patent claim is
obvious, neither the particular motivation nor the avowed purpose of the
patentee controls. . . . [A]ny need or problem known in the field of endeavor
at the time of invention and addressed by the patent can provide a reason for
combining the elements in the manner claimed.” KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 419–20 (2007).
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“[W]hen a patent claims a structure already known 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’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007), citing United States v.
Adams, 383 U.S. 39, 50-51 (1966).
“[W]hile an analysis of obviousness always depends on evidence that
supports the required Graham factual findings, it also may include recourse
to logic, judgment, and common sense available to the person of ordinary
skill that do not necessarily require explication in any reference or expert
opinion.” Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329
(Fed. Cir. 2009).
Analysis
Claim 1 is representative of the rejected claims and is directed to an
oral hygiene composition comprising an effective amount of a compound of
Formula 1.
We agree with the Examiner that the subject matter of claim 1 would
have been obvious at the time the invention was made. Compounds of
Formula 1 were known in the art as anti-allergic compositions exhibiting
histamine-release inhibiting properties. FF1–4. Yamamoto teaches the
inclusion of anti-allergic compounds into oral hygiene products such as
toothpaste or mouthwash. FF8. We agree with the Examiner’s conclusion
that one skilled in the art would have found it obvious to substitute the anti-
allergic compounds of Harita or Schmaus for the anti-allergic compounds of
Yamamoto. Ans. 6.
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Appellants contend that none of the references teach the use of the
claimed compounds to treat bad breath or that the compounds have
antimicrobial properties. Br. 15–17. We are unpersuaded. As the Examiner
points out, Appellants claims are based on the discovery of a property that
the claimed compounds already possessed. Ans. 3. We agree with the
Examiner that the prior art suggests the use of oral hygiene compositions
containing the claimed compounds in amounts to be effective against the
microbes that cause bad breath. Ans. 4.
Appellants also argue that there is no motivation to combine the
references as there is no teaching that the compounds of Harita and Schmaus
‘413 can be substituted for the tomato extract of Yamamoto or that the
resulting composition would control bad breath. Br. 17–18. Again we are
unpersuaded. The combination of Harita, Schmaus ‘413 and Yamamoto
merely involves using one know anti-allergic compound for another known
compound and thus is prima facie obvious. Ans. 8. “[W]hen a patent claims
a structure already known 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’l Co. v. Teleflex Inc.,
550 U.S. at 416.
With respect to claims 3 and 25, Appellants contend that the
references do not teach that the claimed compounds would be effective
against the recited microorganisms. Br. 18–19 and 22. We agree. The
Examiner has pointed to nothing in any of the references that teaches or
suggests that the claimed compounds would be effective against the recited
microorganisms.
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Turning to claims 17, 19, and 24, Appellants argue that none of the
references teaches keeping the oral hygiene composition in the oral cavity
for a specific time and then removing the composition from the oral cavity.
Br. 19. We are unpersuaded. It would be common knowledge to one skilled
in the art that using an oral hygiene product such as mouthwash or
toothpaste involves keeping the composition in the oral cavity for a period of
time and the removing it from the oral cavity by either swallowing it or by
some other means.
Finally, with respect to claim 29, Appellants argue that none of the
references teach the use of compound 27 in the Specification in toothpaste.
Br. 22. We are unpersuaded. As the Examiner points out, Compound 27 is
specifically disclosed by Schmaus. Ans. 9. As discussed above, the
combined references teach the preparation of a toothpaste using the
compounds disclosed in Schmaus.
Conclusion of Law
We conclude that the Examiner has established by a preponderance of
the evidence that claims 1, 17, 19, 24, and 29 would have been obvious over
Harita combined with Schmaus and Yamamoto under 35 U.S.C. § 103(a).
We also conclude that the Examiner has failed to establish that claims
3 and 25 would have been obvious over Harita combined with Schmaus and
Yamamoto under 35 U.S.C. § 103(a).
Claims 2, 9, 11, and 20 have not been argued separately and therefore
fall with claim 1. 37 C.F.R. § 41.37(c)(1)(iv).
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SUMMARY
We affirm the rejection of claims 1, 2, 9, 11, 17, 19, 20, 24, and 29
under 35 U.S.C. § 103(a).
We reverse the rejection of claims 3 and 25 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-IN-PART