Ex Parte Rout et alDownload PDFPatent Trial and Appeal BoardJan 24, 201813990475 (P.T.A.B. Jan. 24, 2018) Copy Citation 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. 13/990,475 07/10/2013 Deeleep Kumar Rout G2062(V) 7846 201 7590 01/26/2018 UNILEVER PATENT GROUP 700 SYLVAN AVENUE A4 ENGLEWOOD CLIFFS, NJ 07632-3100 EXAMINER COHEN, MICHAEL P ART UNIT PAPER NUMBER 1612 NOTIFICATION DATE DELIVERY MODE 01/26/2018 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): patentgroupus @ unilever. com pair_unilever@firsttofile.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DEELEEP KUMAR ROUT, MAYA TREESA SAJI, and RITESH KUMAR SINHA1 Appeal 2016-008621 Application 13/990,475 Technology Center 1600 Before JOHN G. NEW, RICHARD J. SMITH, and DAVID COTTA, Administrative Patent Judges. SMITH, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35U.S.C. § 134 involving claims to a mouthwash composition. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 According to Appellants, the real party in interest is Conopco, Inc., d/b/a UNILEVER. (Br. 3.) Appeal 2016-008621 Application 13/990,475 STATEMENT OF THE CASE Claims on Appeal Claims 1 and 2 are on appeal.2 (Br. 15 (Claims Appendix).) Claim 1 is illustrative and reads as follows: 1. A transparent/translucent liquid antimicrobial mouthwash composition in micro emulsion format substantially free of Cl to C3 alcohol comprising: (i) 0.05% to 10% of an antimicrobial active selected from terpineol, thymol, eugenol, bomeol, or limonene; (ii) 0.05 to 10% of an anionic or cationic surfactant; (iii) 0.01 to 10% of a di- or multivalent electrolyte; and (iv) 50 to 99.9% water. Examiner’s Rejections 1. Claims 1 and 2 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Pullen.3 (Ans. 2—3.) 2. Claims 1 and 2 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Mordas.4 (Id. at 3 4.) FINDINGS OF FACT The following findings are provided for emphasis and reference purposes. Additional findings may be found in this Decision and the Examiner’s Answer. FF 1. The Examiner finds that “one of ordinary skill at the time of the instant invention would have recognized that thymol is an effective 2 Claim 3 is cancelled and claims 4—6 are withdrawn from consideration as drawn to a non-elected invention. (Final Act. 1—2, dated June 17, 2015.) 3 Pullen et al., US 5,328,682, issued July 12, 1994 (“Pullen”). 4 Mordas et al., US 2012/0003163 Al, pub. Jan. 5, 2012 (“Mordas”). 2 Appeal 2016-008621 Application 13/990,475 antimicrobial compound.” (Adv. Act. 2 (dated Nov. 27, 2015) (citing Burt5 (Abstract).) FF 2. The Examiner finds that “Pullen teaches a microemulsion mouthwash . . . containing flavoring in 0.6%, sodium lauryl sulfate in 1%, and water in about 78% . . . which has a clear appearance.” (Ans. 2 (citing Pullen, col. 3,11. 5—14; col. 5, Example 1; col. 12, claim 19).) FF 3. The Examiner finds that “Pullen teaches the flavoring agent can be thymol, and . . . that high levels of flavoring oils (0.2% to 1%) can be incorporated into the inventive mouthwash emulsion for a high flavor impact when little or no alcohol co-solvent is present.” {Id. (citing Pullen, col. 3,11. 35—43).) FF 4. The Examiner finds that “Pullen teaches zinc salts such as zinc citrate can be added in amounts of 0.1% to 1% as an antibacterial or anti tartar agent.” {Id. (citing Pullen, col. 3,1. 65—col. 4,1. 9); see also Ans. 7.) FF 5. The Examiner finds that “Mordas teaches a clear, antibacterial mouthwash[] in the form of a microemulsion essentially free of C2-C4 monohydric alcohols.” {Id. at 3 (citing Mordas, Abstract, 17, and claim 1 at page 13).) FF 6. The Examiner finds that “Mordas teaches an alcohol-free composition containing thymol (0.064%); sodium lauryl sulfate (1%); and about 88% water.” {Id. (citing Mordas 8, Table 2, Entry C).) FF 7. The Examiner finds that, with regard to the claimed di- or multivalent electrolyte, Mordas teaches that the composition can contain (1) 5 S. Burt, Essential oils: their antibacterial properties and potential applications in foods—a review, Inf 1 J. Food Microbiology 94, 223—53 (2004). 3 Appeal 2016-008621 Application 13/990,475 zinc salts, such as zinc chloride, zinc acetate or zinc citrate, as an astringent for an “antiseptic cleaning” feeling, as a breath protection enhancer or as an anticalculus agent in an amount of from 0.0025% to 0.1% of the composition, (2) calcium phosphate in 0.1% to 5% as sensitivity reducing agent, and (3) fluoride releasing agents (zinc fluoride, barium fluoride, stannic fluoride, or stannous fluoride) in amounts from 0.001% to 0.1%. (Ans. 3^4 (citing Mordas ]Hf 68—71).) FF 8. The Specification states that “[preferred electrolyte may be chosen from a chloride, sulphate, acetate, or carbonate of an alkali, alkaline earth or transition metal. . . . Examples of electrolytes [include] . . . zinc sulphate ... or zinc acetate.” (Spec. 8,1. 27—9,1. 6.) DISCUSSION We adopt the Examiner’s findings and conclusions as our own, including with regard to the scope and content of and motivation to modify the prior art, as set forth in the Answer (Ans. 2—11). We discern no error in the rejections of claims 1 and 2 as obvious. Issue Whether a preponderance of evidence of record supports the Examiner’s rejections under 35 U.S.C. § 103(a). Analysis We limit our consideration to claim 1 because the claims were not argued separately. 4 Appeal 2016-008621 Application 13/990,475 Rejection No. 1 (Pullen) The Examiner concludes that: It would have been obvious to a person of ordinary skill in the art at the time of the instant invention to add thymol and zinc salts to the microemulsion mouthwash of Pullen comprising substantially no C1 to C3 alcohol since Pullen teaches that thymol is [] useful as a high impact flavoring in the claimed amount in a mouthwash and Pullen also teaches that zinc salts are typically added to mouthwash compositions since they have antibacterial and anti-tartar properties. (Ans. 3; see FF 2-4.) Appellants advance arguments and proffer evidence in response to the Examiner’s rejection, which we address below. Selection of Ingredients Appellants contend that “there is nothing [in Pullen] teaching or suggesting to the POSITA [(person of ordinary skill in the art)] to simultaneously make all of the specific selections which would be required to obtain the specific compositions of our invention.”6 (Br. 11; see also id. 9-12.) In particular, Appellants argue that there is no direction that such compositions be transparent, be in the form of microemulsion, be substantially free of Ci to C3 alcohol and/or comprise multivalent electrolyte. Further, nothing would direct the selection of thymol relative to any other flavoring agent since there is no teaching or suggestion of an antibacterial effect. (Id. at 11.) 6 Appellants’ reliance on the quote from In re O’Farrell (Br. 11—12) is misplaced because the Examiner’s rejection is not based on an “obvious to try” analysis. See In re O’Farrell, 853 F.2d 894, 903 (Fed. Cir. 1988); see also MPEP § 2143. 5 Appeal 2016-008621 Application 13/990,475 We are not persuaded. As an initial matter, we note that selection of components from a group of possible components is permissible in an obviousness rejection. See In re Arkley, 455 F.2d 586, 587 (CCPA 1972) (“picking and choosing may be entirely proper in the making of a 103, obviousness rejection”); see also Merck & Co., Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (“That the [prior art] patent discloses a multitude of effective combinations does not render any particular formulation less obvious”). Moreover, Appellants’ arguments regarding what “Pullen is primarily concerned with” (Br. 9-10) are unavailing, at least because a prior art reference may be read for all that it teaches, including uses beyond its primary purpose. In re Mouttet, 686 F.3d 1322, 1331 (Fed. Cir. 2012). Furthermore, “[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (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.” Id. at 417 (quoting Sakraida v. Ag Pro. Inc., 425 U.S. 273, 282 (1976)). Appellants argue that “the provision of non-alcoholic mouthwashes is not required in Pullen” and “conventional washes use high alcohol.” (Br. 10.) However, Pullen specifically teaches that high levels of flavoring oils, such as thymol, are “particularly advantageous in mouthwashes which are required to have little or no alcohol content but which need to have a high flavour impact.” (Pullen col. 3,11. 37-43.) Moreover, Pullen teaches in Example 1 an alcohol free composition that includes a surfactant, flavouring 6 Appeal 2016-008621 Application 13/990,475 agent and water. (Ans. 5; FF 2.) As to the use of alcohol by “conventional” mouthwashes, the Examiner explains that Pullen teaches the replacement of conventional mouthwashes. (Ans. 6—7 (citing Pullen col. 1,1. 51).) Appellants argue that there is nothing in Pullen driving the POSITA “towards the selection of a microemulsion.” (Br. 10—11.) However, as the Examiner explains, “Pullen clearly teaches the composition in the form of a microemulsion . . . while the inclusion of alcohol is optional.” (Ans. 6 (citing Pullen claim 1).) Moreover, Appellants’ argument that “it is well- known that such microemulsion is best achieved with use of alcohol” is merely attorney argument without evidentiary support. (Br. 11; see In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (attorney argument in a brief cannot take the place of evidence).) Appellants argue that “since Pullen is concerned with abrasive compositions, provision of transparent/translucency compositions is not an issue.” (Br. 11.) However, Pullen teaches a composition having a “clear appearance.” (See Ans. 2, 5; Pullen claim 19; FF 2.) Moreover, Appellants’ argument that “[i]t is well known to the POSITA that clarity is generally provided with high alcohol content” is also attorney argument without evidence (Br. 11; see Pearson, 494 F.2d at 1405), and inconsistent with Pullen’s teaching that the composition be clear regardless of alcohol content (see Pullen, claim 19 (which depends on claim 1)). Appellants argue that there is “nothing in Pullen necessarily driving the POSITA to provide compositions which are antibacterial,” and “[t]o the extent an antibacterial agent may be used, such agents are disclosed to be non-ionic agents such as bromocholorphene or triclosan.” (Br. 11.) However, Pullen expressly teaches the inclusion of an antibacterial agent 7 Appeal 2016-008621 Application 13/990,475 and that a major advantage of its mouthwashes is that an antibacterial agent may be incorporated into non-alcoholic mouthwashes. (Ans. 5; Pullen col. 3,1. 65—col. 4,1. 9.) Moreover, a person of skill in the art would have recognized thymol as an antimicrobial agent. (FF 1.) Selection of Thymol Appellants argue that “[njothing [in Pullen] is directing the POSITA to use of thymol specifically. Thymol is disclosed only as one of 8 or so noted flavorings.” (Br. 11.) Appellants further argue that “the POSITA would never have reasonably contemplated [thymoFs] use as an antimicrobial based simply on a reading of Pullen” and “[selection of thymol would be ‘random.’” {Id. at 12.) Appellants support these arguments with evidence in the form of the Saji Declaration.7 {Id.) The Saji Declaration reflects a comparison of the antibacterial effects of thymol, menthol, and eucalyptol against E. cloacae. (Decl. 4.) According to the Saji Declaration, the test example including thymol provides much better log reduction than examples using menthol or eucalyptol rather than thymol, and the “data clearly demonstrates that random selection of a ‘flavoring agent’ would not provide antibacterial affect.” {Id.) Thus, according to Appellants, the Saji Declaration “demonstrates that not all flavoring agents would behave alike.” (Br. 12.) We are not persuaded. The selection of thymol, a known antimicrobial (FF 1), from the list of eight flavouring agents taught by Pullen would not have been a “random” selection, see Merck, 874 F.2d at 807, and 7 Declaration of Maya Treesa Saji filed under 37 C.F.R. § 1.132, dated Oct. 21, 2015 (“Decl.” or “Saji Declaration”). 8 Appeal 2016-008621 Application 13/990,475 evidence (the Saji Declaration) that two of the remaining flavoring agents may not be as effective as thymol against a particular bacteria is not persuasive of patentability (see Ans. 8; FF 1.). Moreover, the use of “comprising” in claim 1 indicates that its scope is not limited to only one antimicrobial, and may include other antimicrobial agents in addition to thymol or the other listed antimicrobial actives. See Genentech, Inc. v. Chiron Corp., 112 F.3d495, 501 (Fed. Cir. 1997). Here, the skilled artisan would appreciate that thymol may function in a mouthwash as both a flavouring agent and an antibacterial agent. See KSR, 550 U.S. at 421 (“A person of ordinary skill is also a person of ordinary creativity, not an automaton.”); In re Sovish, 769 F.2d 738, 743 (Fed. Cir. 1985) (skill is presumed on the part of one of ordinary skill in the art). Furthermore, the motivation to include thymol need not be the same as Appellants. SeeAlcon Research, Ltd. v. Apotex Inc., 687 F.3d 1362, 1368 (Fed. Cir. 2012) (‘ ‘We have repeatedly held that the motivation to modify a prior art reference to arrive at the claimed invention need not be the same motivation that the patentee had.”). Here, the skilled artisan may have been motivated to include thymol as a flavoring agent in mouthwash, but its inclusion would still meet the claim limitation of “an antimicrobial active.” Summary The mouthwash of claim 1 is taught and suggested by Pullen. As the Examiner explains, the only variables that would be required to modify the base composition of Pullen Example 1 are thymol and zinc, both of which are known as antimicrobials. (Ans. 7.) Claim 1 is thus the combination of familiar or old elements, each performing the same function it has been 9 Appeal 2016-008621 Application 13/990,475 known to perform, yielding predictable results. See KSR, 550 U.S. at 416— 17. Accordingly, for the reasons of record and as set forth above, we affirm the rejection of claim 1 in view of Pullen. Claim 2 was not argued separately and falls with claim 1. Rejection No. 2 (Mordas) The Examiner concludes that it would have been obvious to have included the electrolyte in the composition of Mordas Example 2C because Mordas teaches that addition of a di- or multivalent electrolyte (FF 7) improves the properties of the mouthwash by adding properties such as clean feel, breath enhancement, sensitivity reduction, and cavity protection (Ans. 4). Appellants advance arguments regarding Mordas similar to those advanced with respect to Pullen. (Br. 12—13.) Appellants acknowledge that zinc salts may be present in some embodiments of Mordas (but contend there is no recognition of their criticality), that it is not required that the composition of Mordas be transparent, and that Mordas can contain levels of Ci to C3 alcohol far above those of claim 1. (Id. at 13.) According to Appellants, there is no recognition in Mordas that thymol can be used in a transparent microemulsion, having multivalent electrolyte and substantially free of Ci to C3 alcohol, to result in highly effective antimicrobial mouthwash compositions which are visually desirable and further have acceptable taste. The elements of our claim may be theoretically possible to piece together but, again, the possibility of numerous choices without indication of which parameters to change or which of many 10 Appeal 2016-008621 Application 13/990,475 possible changes will result in success contravenes the patent law. In re O’Farrell, 835 F.2d 894. (Id.) We are not persuaded. As explained by the Examiner, the only modification required is the addition of one of the di- or multivalent electrolytes taught by Mordas to Example 2C of Mordas. (Ans. 4.) Moreover, the motivation to do so is also provided by Mordas. (See FF 7.) Again, claim 1 is the combination of familiar or old elements, each performing the same function it has been known to perform, yielding predictable results. See KSR, 550 U.S. at 416—17. Accordingly, for the reasons of record and as set forth above, we affirm the rejection of claim 1 in view of Mordas. Claim 2 was not argued separately and falls with claim l.8 Conclusions of Law A preponderance of evidence of record supports the Examiner’s rejection of claims 1 and 2 under 35 U.S.C. § 103(a) in view of Pullen. A preponderance of evidence of record supports the Examiner’s rejection of claims 1 and 2 under 35 U.S.C. § 103(a) in view of Mordas. SUMMARY We affirm the rejections of all claims on appeal. 8 We acknowledge, but are unpersuaded by, Appellants’ mention of “hindsight.” (Br. 12, 13.) 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). 11 Appeal 2016-008621 Application 13/990,475 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 12 Copy with citationCopy as parenthetical citation