Ex Parte Santarpia et al

Patent Trials and Appeals Board

May 22, 2019

15101449 - (D) (P.T.A.B. May. 22, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
15/101,449 06/03/2016
23909 7590 05/24/2019
COLGATE-PALMOLIVE COMPANY
909 RIVER ROAD
PISCATAWAY, NJ 08855
FIRST NAMED INVENTOR
Ralph Peter Santarpia
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.
10049-00-US-01-0C 4555
EXAMINER
ROBERTS, LEZAH
ART UNIT PAPER NUMBER
1612
NOTIFICATION DATE DELIVERY MODE
05/24/2019 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
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RALPH PETER SANTARPIA III, RICHARD J. SULLIVAN,
IRENE PETROU, WILBENS JOSIAS, and RICHARD S. ROBINSON
Appeal2019-000349
Application 15/101,449
Technology Center 1600
Before JEFFREY N. FREDMAN, JOHN G. NEW, and JAMIE T. WISZ,
Administrative Patent Judges.
WISZ, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellants 1 seek review of claims
1-4, 6-15, 17, and 18.2 We have jurisdiction under 35 U.S.C. § 6(b).
For the reasons set forth below, we AFFIRM.
STATEMENT OF THE CASE
The Specification describes dentifrice formulations comprising
arginine together with fluoride, phosphate and pyrophosphate salts, in a
1 Appellants identify the Real Party in Interest as Colgate-Palmolive
Company. App. Br. 2.
2 Claim 5 has been canceled and claim 16 has been withdrawn.
Appeal2019-000349
Application 15/101,449
dentifrice base with a calcium-free silica abrasive for providing enhanced
remineralization. Spec. 1. Claim 1, the only independent claim, is set forth
below:
1. A dentifrice composition comprising
an effective amount of arginine, in free or orally
acceptable salt form;
an effective amount of a fluoride ion source;
an effective amount of a mixture of orally acceptable
phosphate and pyrophosphate salts;
in a dentifrice base with a calcium-free silica abrasive,
wherein the arginine is present in an amount of 4% to 10%, by
weight of the composition ( calculated by weight of free
arginine base equivalent when the arginine is in salt form).
App. Br. 12 (Exhibit 1 ). Claim 13, which depends from claim 1,
recites additional ingredients in varying percentage ranges.
The Examiner rejected claims 1-4, 6-15, 17, and 18 under 35 U.S.C.
§ 103(a) as being obvious over Deckner. 3
ISSUES AND ANALYSIS
We affirm the Examiner's obviousness rejection. We address the
arguments raised by Appellants below.
Obviousness
The Examiner finds that Deckner discloses fused silica oral care
compositions, which may also include arginine as a tubule blocking or anti-
bacterial agent, sodium fluoride as an active, tetrasodium pyrophosphate as
an anti-calculus agent, and monosodium phosphate and trisodium phosphate
3 Deckner et al., US 2010/0135932 Al, published June 3, 2010 ("Deckner").
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Application 15/101,449
as buffering agents. Final Act. 2-3 (citing Deckner,i,i 83, 89, 101, 104).
According to the Examiner, Deckner also discloses that anti-bacterials, such
as arginine, can comprise 0.1 % to about 5% by weight of the compositions.
Id. at 3. The Examiner concludes that, because the examples disclosed in
Deckner include compositions comprising silica, fluoride, and phosphate, it
would have been obvious to one of skill in the art to add arginine as an anti-
bacterial and pyrophosphate as an anti-calculus agent, as disclosed in
Deckner, with a reasonable expectation of success. Ans. 5.
With regard to claim 13, the Examiner finds that Deckner discloses all
of the components recited in the claim (in overlapping ranges); therefore,
this claim is also found to be obvious. Final Act. 2-3; Ans. 15.
Appellants argue that Deckner does not provide any guidance or
motivation to select the components of the present claims but "merely
includes the ingredients among the myriad alternatives in its vast
disclosure." App. Br. 6. Specifically, Appellants argue that "nowhere does
Deckner disclose or suggest using a mixture of orally acceptable phosphate
and pyrophosphate salts, much less in combination with 4% to 10% arginine,
and even less in a dentifrice base with a calcium-free silica abrasive." Id.
Appellants also argue that the Examiner improperly uses the range disclosed
in Deckner of from about 0.1 % to about 5% by weight for use of arginine as
an antibacterial agent as opposed to use an anti-tubule agent. Id. at 7.
Lastly, Appellants argue that there would be no reasonable expectation of
success in obtaining the present invention by picking and choosing from the
exhaustive list in Deckner and that the efficacy of the claimed combination
is shown in the Specification examples. Id. at 8-10. With regard to claim
13, Appellants argue that the Examiner has not provided any motivating
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Appeal2019-000349
Application 15/101,449
disclosure in Deckner that would lead the skilled artisan to select the
particular compounds and amounts recited in the claim. Id. at 10.
We are not persuaded by Appellants' arguments. As found by the
Examiner, Deckner discloses calcium-free silica oral care compositions that
include fluoride and phosphate. Ans. 5. These compositions are disclosed
as providing sensitivity and polishing benefits (Deckner ,-J 2), which are also
listed as benefits of the claimed formulations. (Spec. ,-J,-J 14, 35). It would
have been obvious to a person of skill in the art to add arginine as an anti-
bacterial agent and pyrophosphate as an anti-calculus agent to these
compositions with a reasonable expectation of success. "The combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results." KSR Int'! Co. v. Teleflex,
Inc., 550 U.S. 398, 416 (2007). Obviousness under 35 U.S.C. § 103 requires
an inquiry into "'whether the improvement is more than the predictable use
of prior-art elements according to their established functions.'" Monolithic
Power Sys., Inc. v. Micro Int'! Ltd., 558 F.3d 1341, 1352 (Fed. Cir. 2009)
(quoting KSR, 550 U.S. at 417). Applying this standard, we conclude that
the Examiner did not err in determining that the claims would have been
obvious to an ordinarily-skilled artisan over the cited prior art.
With regard to the amount of arginine recited in the claims,
Appellants' argument that the Examiner improperly used the range disclosed
in Deckner for use of arginine as an antibacterial agent, as opposed to an
anti-tubule agent, is merely arguing intended use. "It is well settled that the
recitation of a new intended use for an old product does not make a claim to
that old product patentable." In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir.
1997). Since Deckner discloses that arginine can be included in 0.1 % to
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Application 15/101,449
about 5% by weight (as an anti-bacterial), it renders obvious the claimed
range of 4% to 10%. See In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir.
2003) ("In cases involving overlapping ranges, we and our predecessor court
have consistently held that even a slight overlap in range establishes a prima
facie case of obviousness.").
We are also not persuaded by Appellants' arguments regarding the
benefits shown in the Specification examples because the pending claims are
not commensurate in scope with the formulation showing the best result in
these examples (i.e., a formulation comprising 5% arginine+ 1450 ppm
NaF/Silica (with added phosphates)). (Spec. 19).
For the reasons described herein and those already of record, we
affirm the Examiner's rejection of claim 1. With regard to claim 13,
Deckner also discloses all of the claimed ingredients (in overlapping ranges)
recited therein. Final Act. 2-3; Ans. 15. Thus, for the reasons stated above
for claim 1, we affirm the Examiner's rejection of claim 13. Claims 2-4, 6-
12, 14, 15, 17, and 18 are not argued separately, and fall with claim 1. See
37 C.F.R. § 41.37(c)(l)(iv).
CONCLUSION
We affirm the Examiner's obviousness rejections of claims 1-4, 6-15,
17, and 18.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l .136(a)(l )(iv).
AFFIRMED
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