Ex Parte Scott et al

Patent Trial and Appeal Board

Feb 24, 2015

11006919 (P.T.A.B. Feb. 24, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte DOUGLAS CRAIG SCOTT and CHANCHAL KUMAR GHOSH
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Appeal 2012-005524
Application 11/006,919
Technology Center 1600
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Before DONALD E. ADAMS, ERIC B. GRIMES, and
LORA M. GREEN, Administrative Patent Judges.

PER CURIAM.

DECISION ON APPEAL
This is a decision on appeal
1
under 35 U.S.C. § 134 from the
Examiner’s rejection of claims 1, 4, 5, 8, 11, 12, 14, 15, 19, 21, 23, 25, 26,
28,
2
30, and 32–47. We have jurisdiction under 35 U.S.C. § 6(b).

1
The Real Party in Interest is The Procter & Gamble Company (App. Br. 3).
2
Appellants state that claim 28 has been cancelled (App. Br. 3), which the
Examiner appears to agree with (Ans. 3). The Examiner, however, rejects
claim 28 in the statement of the rejection (Ans. 4), and we cannot find where
in the prosecution history the claim was cancelled. We, therefore, include it
in this appeal.
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2
We affirm.
STATEMENT OF THE CASE
The claims are directed to methods of whitening teeth, and to related
oral care compositions. Claim 1 is representative of the claims on appeal,
and reads as follows:
1. A method of whitening teeth comprising:
applying a composition to a plurality of teeth, the composition
comprising:
a. a bleaching agent;
b. a water insoluble solid phase; and
c. a water soluble liquid phase;
wherein the ratio of the weight percentage of the water insoluble solid
phase to the water soluble liquid phase in the composition is from 1:4 to 4:1
and the composition is adapted to be worn from 3 minutes to 12 hours.

Issue
The Examiner rejected claims 1, 4, 5, 8, 11, 12, 14, 15, 19, 21, 23, 25,
26, 28, 30, and 32–47 under 35 U.S.C. § 103(a) as obvious in view of
Rajaiah
3
(Ans. 4). Claims 4, 5, 8, 11, 12, 14, 15, 19, 21, 23, 25, 26, 28, 30,
and 32–47 have not been argued separately from claim 1, and, therefore,
stand or fall with that claim. 37 C.F.R. § 41.37(c)(1)(vii).
The issue presented is: Has the Examiner established by a
preponderance of the evidence that Rajaiah would have made obvious a
method of whitening teeth comprising applying to teeth a composition
comprising a bleaching agent, a water insoluble solid phase, and a water

3
US Patent publication 2003/0082113 A1 published May 1, 2003.
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soluble liquid phase, “wherein the ratio of the weight percentage of the water
insoluble solid phase to the water soluble liquid phase in the composition is
from 1:4 to 4:1,” as required by claim 1?
Findings of Fact
FF1. The Specification discloses “a method of increasing efficacy of
a bleaching agent in the oral cavity . . . [by applying] a composition to a
plurality of teeth for a sufficient period of time to achieve whitening” (Spec.
1:13–15).
FF2. The Specification discloses that the “composition comprises a
bleaching agent; a water insoluble solid phase; and a water soluble liquid
phase; wherein the ratio of the water insoluble solid phase to the water
soluble liquid phase is from about 1:4 to about 4:1” (id. at 1:16–18).
FF3. The Specification discloses that “[s]uitable materials for the
water insoluble solid phase include polyolefins (e.g., thermoplastic
polymers, polymers derived from simple olefins, polyethylene . . . ) and
polyester, and mixtures thereof” (id. at 8:12–15).
FF4. The Specification discloses that “the present invention may
increase the ‘effective’ concentration of the bleaching agent on the surface
of the teeth due to the replacement of some of the aqueous phase with a
water insoluble solid phase” (id. at 6:29–31).
FF5. The Examiner finds that Rajaiah discloses oral care
compositions comprising “polybutene and an oral care active” for
application to the tooth surface (Ans. 5 (citing Rajaiah, Abstract)).
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FF6. The Examiner finds that Rajaiah discloses that a “whitening
agent, such as peroxide is included . . . in amounts from about 0.1 % to about
35%” (id. (citing Rajaiah at 5, ¶ 0040)).
FF7. The Examiner finds that Rajaiah discloses that “[p]igments and
colorants which are suitable for modifying the color of the denture to satisfy
the consumer, such as polyethylene powder, are added in the range of about
0.001% to about 20%” (id. (citing Rajaiah at 6, ¶¶ 0047 and 0048)).
FF8. The Examiner finds that Rajaiah discloses that “[a]brasive
polishing materials such as tricalcium phosphate are included in amounts of
about 6% to about 70%” (id. (citing Rajaiah at 6, ¶ 0052)).
FF9. The Examiner finds that Rajaiah discloses that “[w]ater
comprises from about 5% to about 70%” of the composition (id. at 5 (citing
Rajaiah at 7, ¶ 0055)).
FF11. The Examiner concludes that “it would have obvious to have
selected various combinations of various disclosed ingredients [including]
bleaching agents such as peroxide; polyethylene powder; thickening silica,
tricalcium phosphate, water and glycerin from within” the Rajaiah disclosure
to thereby arrive at the method of claim 1 (id. at 6–7).
FF12. The Examiner reasons that,
[r]egarding the limitation of water insoluble solid phase to
water soluble liquid phase and the time of application, based on
the weight percentages taught by Rajaiah et al., it would have
been within the purview of one of ordinary skill in the art to
formulate compositions that meet the limitations of weight ratio
of the insoluble solid phase and the soluble liquid phase

(Id. at 7.)
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FF13. Rajaiah discloses “oral care kits and compositions that
effectively coat and protect the teeth from buildup of plaque and other
debris” (Rajaiah 1, ¶ 0006).
FF14. Rajaiah discloses that “lower molecular weight polybutene is
incorporated in oral care kits and compositions to provide a protective
coating on the teeth” (id. at 1, ¶ 0005).
FF15. Rajaiah discloses that the “present invention can also be used
to deliver an oral care active to the teeth and oral cavity through
incorporation of said active within the polybutene-containing component”
(id. at 1, ¶ 0006).
FF16. Rajaiah discloses that the oral care actives include whitening
agents, among others (id. at 1, ¶ 0008).
FF17. Rajaiah discloses that whitening agents are “selected from the
group consisting of peroxides, metal chlorites, perborates, percarbonates,
peroxyacids, persulfates, and combinations thereof” (id. at 5, ¶ 0040).
FF18. Rajaiah discloses that “[p]igments, dyes, colorants and lakes
may also be added to modify the appearance of the compositions” (id. at 6,
¶ 0047).
FF19. Rajaiah discloses that the “levels of pigments and colorants
may be in the range of about 0.001 % to about 20%,” by weight of the total
composition (id.).
FF20. Rajaiah discloses that the “[p]igments and colorants include
inorganic white pigments, inorganic colored pigments, pearling agents, filler
powders and the like . . . Specific examples are selected from the group
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consisting of talc, mica, magnesium . . . [and] polyethylene powder,” among
others (id. at 6, ¶ 0048).
FF21. Rajaiah discloses that “[o]ral care carriers” that are “suitable
for use in the present invention may include, but are not limited to, abrasive
polishing materials . . . [and] water,” among others (id. at 1, ¶ 0049).
FF22. Rajaiah discloses that the “abrasive in the toothpaste
compositions described herein is generally present at a level of from about
6% to about 70% by weight of the composition” (id. at 6, ¶ 0052).
FF23. Rajaiah discloses that “[o]ral care carriers typically comprise
from about 10% to about 99% . . . by total weight of the oral composition”
(id. at 6, ¶ 0051).
FF24. Rajaiah discloses that “[w]ater will generally comprise from
about 5% to about 70% . . . by weight of the oral care carrier component of
the oral care composition” (id. at 7, ¶ 0055).
Analysis
Appellants argue that the Rajaiah disclosure “would not lead one of
ordinary skill in the art to the present invention, as Rajaiah only discloses the
use of bleaching agents to bleach teeth, and does not disclose, suggest, or
teach that increasing amounts of an insoluble solid phase will increase the
bleaching effect of a bleaching agent” (App. Br. 5). Appellants argue that
the instant invention “discloses a composition having a reduced aqueous
phase and increased insoluble solid phase, to provide a composition with
greater bleaching capability” (id.). Appellants argue that although Rajaiah
“disclose[s] the use of bleaching agents and polyethylene powder in its
composition . . . [Rajaiah] does not disclose, teach, or suggest that increased
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amounts of insoluble solid phase and reduced amounts of aqueous phase
increase the effectiveness of a bleaching agent in a composition” (id.
(emphasis removed)). Appellants argue that, in Rajaiah, “polyethylene
powder is listed as a pigment,” wherein pigment levels are selected to have a
desirable impact on the consumer (id. (citing Rajaiah at 6, ¶ 0048)).
Appellants argue that the Rajaiah pigment is not selected to “increase the
‘effective’ concentration of a bleaching agent on the surface of the teeth, due
to the replacement of some of the aqueous phase (with a water insoluble
solid phase . . .),” as disclosed in the instant Specification (id.).
Appellants’ arguments are not persuasive. As noted by the Examiner,
Rajaiah discloses oral care compositions that coat and protect the teeth and
that comprise a whitening agent or bleaching agent (FFs 13–16). Rajaiah
also discloses that the compositions may contain widely varying amounts of
solid components such as such as abrasives (about 6% to about 70% by
weight) and pigments (up to 20% by weight), e.g. polyethylene powder (FFs
18–20 and 22). Thus, Rajaiah discloses that the compositions may comprise
widely varying amounts of a water insoluble solid phase. Rajaiah also
discloses that the oral care compositions typically comprise oral carriers in
an amount of about 10% to about 99% by weight and that water will
generally comprise from about 5% to about 70% by weight of the oral care
carrier component (FFs 23 and 24). Thus, Rajaiah also discloses that the
compositions may comprise widely varying amounts of a water soluble
liquid phase. In view of the Rajaiah disclosure that oral care compositions
may comprise widely varying amounts of a water insoluble solid phase and a
water soluble liquid phase, we agree with Examiner the composition of
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claim 1 with a recited ratio of water insoluble solid phase to the water
soluble liquid phase of from 1:4 to 4:1 would have obvious to one of skill in
the art. See Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d
801, 809 (Fed. Cir. 2002) (“[T]he patentability of apparatus or composition
claims depends on the claimed structure, not on the use or purpose of that
structure.”).
Appellants’ argument that the solid components of Rajaiah, e.g. the
pigment, are not selected to increase the effective bleaching agent
concentration on the surface of the teeth due to the replacement of a portion
of the aqueous phase with solid phase is not persuasive. See In re Woodruff,
919 F.2d 1575, 1578 (Fed. Cir. 1990) (“It is a general rule that merely
discovering and claiming a new benefit of an old process cannot render the
process again patentable.”); see also Perricone v. Medicis Pharm. Corp.,
432 F.3d 1368, 1377–78 (Fed. Cir. 2005) (noting that the realization of a
new benefit of an old process does not render that process patentable);
Bristol-Myers Squibb Co. v. Ben Venue Laboratories, Inc., 246 F.3d 1368,
1376 (Fed. Cir. 2001) (stating in the context of a claimed process that was
drawn to the same use comprising the same steps of the prior art, “[n]ewly
discovered results of known processes directed to the same purpose are not
patentable because such results are inherent.”). Here, it appears that
Appellants are trying to claim the benefits of methods made obvious by
Rajaiah.
Appellants argue that, even if the Rajaiah compositions were modified
“to include more polyethylene powder as a pigment . . . such additional
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pigment could just as reasonably be expected to negatively affect the
appearance of the product” (id.).
Appellants’ arguments are not persuasive. Rajaiah expressly discloses
that a pigment such as polyethylene powder may be included in an amount
of up to 20%. Rajaiah also discloses that the compositions may comprise
other solid components such as abrasives. Thus, one of skill in the art would
have had a reasonable expectation of success in formulating a composition
with the claimed ratio of water insoluble solid phase to water soluble liquid
phase.
Appellants argue that, from the teachings and disclosure of Rajaiah,
“there could be no reasonable expectation of success at improving the
bleaching efficiency of the overall product by modifying the level of
pigment” (App. Br. 5).
Appellants’ arguments are not persuasive because claim 1 does not
require any particular bleaching efficiency.
Thus, we affirm the rejection of claim 1 as being obvious in view of
Rajaiah. Claims 4, 5, 8, 11, 12, 14, 15, 19, 21, 23, 25, 26, 28, 30, and 32–47
have not been argued separately from claim 1 and therefore fall with that
claim. 37 C.F.R. § 41.37(c)(1)(vii).
Conclusion of Law
The preponderance of the evidence supports the Examiner’s
conclusion that Rajaiah would have made obvious a method of whitening
teeth comprising applying to teeth a composition comprising a bleaching
agent, a water insoluble solid phase, and a water soluble liquid phase,
“wherein the ratio of the weight percentage of the water insoluble solid
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phase to the water soluble liquid phase in the composition is from 1:4 to
4:1,” as required by claim 1.
SUMMARY
We affirm the rejection of claims 1, 4, 5, 8, 11, 12, 14, 15, 19, 21, 23,
25, 26, 28, 30, and 32–47 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

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