Ex Parte Ramji et al

Board of Patent Appeals and Interferences

Mar 29, 2010

10894553 (B.P.A.I. Mar. 29, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte NIVEDITA RAMJI and JAMESINA ANNE FITZGERALD
__________

Appeal 2010-001482
Application 10/894,553
Technology Center 1600
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Decided: March 29, 2010
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Before LORA M. GREEN, RICHARD M. LEBOVITZ, and
STEPHEN WALSH, Administrative Patent Judges.

GREEN, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 9-12 and 30.1 We have jurisdiction
under 35 U.S.C. § 6(b).

1 Claims 1, 3-8, 13-29, 31, and 32 are also pending, and stand withdrawn
from consideration. (App. Br. 2.)
Appeal 2010-001482
Application 10/894,553

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STATEMENT OF THE CASE
Claim 9 is representative of the claims on appeal, and reads as
follows:
9. A method of visually highlighting demineralization lesions, on tooth
surfaces, or a method of detecting the degree of demineralization of teeth, in
a subject in need thereof, by:
1) applying a first dye composition and a second dye composition,
sequentially, to the oral cavity or teeth of a human or animal subject, in need
thereof, wherein:
a. the first dye composition comprises from about 0.001% to about 10% by
weight of the composition of a blue dye or mixtures thereof;
b. the second dye composition comprises from about 0.001% to about 10%
by weight of the composition of a red dye or a yellow dye or mixtures
thereof; and
2) visually observing the teeth to assess demineralized lesions stained by the
dyes.

The Examiner relies on the following evidence:
Yamauchi US 4,347,233 Aug. 31, 1982
Block US 4,064,229 Dec. 20, 1977

We reverse.

ISSUE
Has the Examiner established that it would have been prima facie
obvious to apply two dye compositions sequentially to the oral cavity or
teeth of the subject, in which the first dye composition comprises a blue dye,
and the second dye composition comprises a red dye or yellow dye, in which
both of the dye compositions stain demineralized lesions?

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Application 10/894,553

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FINDINGS OF FACT
FF1 According to the Specification:
The present invention relates to a method for detecting
demineralized lesions. The present invention also relates to
compositions comprising selected blue and red or yellow dye
systems, for detecting demineralized lesions such as early caries
lesions (e.g. white spots), caries lesions, dental erosion, and/or
orthodontically-induced demineralization.

(Spec. 1.)
FF2 The Specification specifically defines demineralized lesions as
including “early caries lesions, caries lesions, frank caries lesions (clinically
relevant lesion), D1, D2, D3 and D4 lesions under DMFS or DMFT scoring
methods, dental erosion, orthodontically-induced demineralized lesions, in
any tooth surface including smooth, occlusal tooth surfaces or roots of
teeth.” (Id. at 4-5.)
FF3 The Specification specifically states that “[t]he term ‘demineralized
lesions’ as used herein does not include plaque and calculus.” (Id. at 5.)
FF4 The Examiner rejects claims 9-12 and 30 under 35 U.S.C. § 103(a) as
being rendered obvious by the combination of Block and Yamauchi. (Ans.2
3.)
FF5 The Examiner finds that Block teaches “dental dye compositions to
reveal plaque on the teeth.” (Id.)
FF6 The Examiner finds further that Block teaches the use of dyes such as
FTC Red No. 3 and FTC Blue No. 1. (Id.)

2 All references to the Examiner’s Answer (Ans.) are to the Examiner's
Answer dated August 4, 2009.
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Application 10/894,553

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FF7 The Examiner notes that Block differs from the claimed invention in
that it “does not disclose the composition was a two-composition system and
the red dye was Acid Red 52.” (Id.)
FF8 The Examiner cites Yamauchi for teaching “dye compositions to
reveal demineralization lesions on teeth.” (Id.)
FF9 The Examiner finds that Yamauchi teaches that the dye used in the
composition may include Acid Red 52. (Id.)
FF10 The Examiner notes that Yamauchi differs from the claimed method
“as it does not disclose using a blue dye solution before the red dye solution
in the method of disclosing [sic, detecting] demineralization lesions.” (Id. at
4.)
FF11 The Examiner concludes:
It would have been obvious to one of ordinary skill in the
art to have used the dye composition comprising the Acid Red
52 dye in conjunction with the dye composition of the primary
reference motivated by the desire to determine plaque build up
by applying the first dye and then highlighting the stains from
demineralization lesions with the vivid red dye to determine the
difference between what stains are due to plaque and what
stains are due to demineralization as taught by the secondary
reference.

(Id.)

PRINCIPLES OF LAW
During prosecution before the Office, claims are to be given their
broadest reasonable interpretation consistent with the Specification as it
would be interpreted by one of ordinary skill in the art. In re American
Academy Of Science Tech Center, 367 F.3d 1359, 1364 (Fed. Cir. 2004).
Appeal 2010-001482
Application 10/894,553

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Claim language, however, “should not [be] treated as meaningless.” Bicon,
Inc. v. Straumann Co., 441 F.3d 945, 951 (Fed. Cir. 2006). Moreover, “the
claims themselves provide substantial guidance as to the meaning of
particular claim terms.” Philips v. AWH Corp., 415 F.3d 1301, 1314 (Fed.
Cir. 2005) (en banc).

ANALYSIS
Appellants argue that the combination of Block and Yamauchi does
not “teach or suggest the sequential use of dyes to detect demineralization
and early lesions.” (App. Br. 3.) According to Appellants, Block uses a
combination of dyes to highlight plaque, wherein the dyes are mixed and
applied at the same time, and Yamauchi uses a single dye to detect dental
caries. (Id.)
Appellants assert further that the claims require detection of
demineralized lesions, which the Specification specifically defines not to
include areas of plaque. (Id.) Appellants assert that both “Block and
Yamauchi fail to teach or suggest combining their dyes to highlight the
extent of demineralization.” (Id. at 4.) Appellants assert the method as
claimed, in which two dyes are applied sequentially, “allow[s] greater dye
uptake and provide[s] improved visualization of demineralization.” (Id. at
5.)
Claim 9, the only independent claim on appeal, is drawn to a method
of visually highlighting demineralization in teeth. In the method, two dye
compositions are applied sequentially to the oral cavity or teeth of the
subject, in which the first dye composition comprises a blue dye, and the
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Application 10/894,553

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second dye composition comprises a red dye or yellow dye. Step 2 of the
claim requires “visually observing the teeth to assess demineralized lesions
stained by the dyes,” thus requiring both the first dye composition
comprising the blue dye, and the second dye composition comprising a red
dye or yellow dye, to stain the demineralized lesions. Neither Block nor
Yamauchi, however, teaches a blue dye composition that stains
demineralized lesions.
The Examiner appears to recognize that fact, concluding that one
would use a composition comprising a blue dye as taught by Block to
determine the difference between what stains are due to plaque and what
stains are due to demineralization. (See FF11.) Thus, the Examiner has
failed to set forth a prima facie case that it would have been obvious to apply
two dye compositions sequentially to the oral cavity or teeth of the subject,
in which the first dye composition comprises a blue dye, and the second dye
composition comprises a red dye or yellow dye, in which both of the dye
compositions stain demineralized lesions. We are thus compelled to reverse
the rejection.

CONCLUSION OF LAW
We conclude that the Examiner has not established that it would have
been prima facie obvious to apply two dye compositions sequentially to the
oral cavity or teeth of the subject, in which the first dye composition
comprises a blue dye, and the second dye composition comprises a red dye
or yellow dye, in which both of the dye compositions stain demineralized
lesions.
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Application 10/894,553

7
We are thus compelled to reverse the rejection of claims 9-12 and 30
under 35 U.S.C. § 103(a) as being rendered obvious by the combination of
Block and Yamauchi.

REVERSED

alw

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