Ex Parte Scott et al

Patent Trials and Appeals Board

Jun 20, 2019

13529064 - (D) (P.T.A.B. Jun. 20, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/529,064 06/21/2012
27752 7590 06/24/2019
THE PROCTER & GAMBLE COMPANY
Global IP Services
Central Building, C9
One Procter and Gamble Plaza
CINCINNATI, OH 45202
FIRST NAMED INVENTOR
Douglas Craig Scott
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.
12502 5263
EXAMINER
ALAWADI, SARAH
ART UNIT PAPER NUMBER
1619
NOTIFICATION DATE DELIVERY MODE
06/24/2019 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):
centraldocket.im @pg.com
pair_pg@firsttofile.com
mayer.jk@pg.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DOUGLAS CRAIG SCOTT, NIRANJAN RAMJI, and BRUCE
ERNEST TEPPER
Appeal2019-000619
Application 13/529,064
Technology Center 1600
Before ULRIKE W. JENKS, TIMOTHY G. MAJORS, and
MICHAEL A. VALEK, Administrative Patent Judges.
VALEK, Administrative Patent Judge.
DECISION ON APPEAL
Appellants submit this appeal 1 under 35 U.S.C. § 134 involving
claims to oral care mouth rinse composition, which have been rejected as
obvious. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify the real party in interest as The Procter & Gamble
Company. App. Br. 1. Herein we refer to the Amendment filed May 22,
2017 ("Amendment"), Declaration of Douglas Craig Scott under 37 C.F.R.
§ 1.132 filed May 22, 2017 (" 132 Declaration") Office Action mailed Aug.
7, 2017 ("Non-Final Act."), Appeal Brief filed Nov. 6, 2017 ("App. Br."),
and Examiner's Answer mailed Mar. 9, 2018 ("Ans.").
Appeal2019-000619
Application 13/529,064
STATEMENT OF THE CASE
Claims 1, 4--10, and 12 are on appeal. Claim 1 is representative and
reads as follows:
1. An oral care mouth rinse composition comprising:
(a) from about 0.025% to about 0.1 % by weight of
cetylpyridinium chloride,
(b) from about 0.1 % to about 1 % by weight of an
essentially water-insoluble volatile flavor oil, and
( c) an orally-acceptable carrier comprising water at a level of
least 50% by weight of the composition,
wherein the composition is a stable oil-in-water emulsion
having a dispersed phase comprising oil droplets having an average
mean particle size of about 30 to 350 nm, and a total level of oils from
about 0.05% to about 5%;
wherein the composition has a bioavailability of the
cetylpyridinium chloride of at least 50% as measured using an in vitro
Disk Retention Assay (DRA);
wherein after three cycles of freeze-thaw the oil droplets retain
an average mean particle size of about 30 to 350 nm.
Amendment 2.
Appellants seek review of Examiner's rejection2 of claims 1, 4--10,
and 12 under 35 U.S.C. § 103 as unpatentable over Rout3 and Hall4
2 Appellants do not seek review of the provisional obviousness-type double
patenting rejection of claims 1, 4--10, and 12 over claims 1, 4, 5, and 7-10 of
co-pending Patent Application No. 13/529,044. Non-Final Act. 17-18. We,
therefore, summarily affirm this rejection. See MPEP § 1205.02 ("If a
ground of rejection stated by the examiner is not addressed in the appellant's
brief, appellant has waived any challenge to that ground of rejection and the
Board may summarily sustain it, unless the examiner subsequently withdrew
the rejection in the examiner's answer.").
3 Deeleep Kumar Rout et al., WO 2012/076295 Al, published June 14, 2012
("Rout").
4 William Gerald Hall, WO 95/17159, published June 29, 1995 ("Hall").
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Application 13/529,064
Appellants do not argue any claim separately from claim 1 so claims 4--10
and 12 stand or fall with claim 1. 37 C.F.R. § 41.37 (c)(l)(iv).
The issue is: Does the preponderance of evidence of record support
Examiner's conclusion that the cited prior art renders obvious the claimed
composition?
Findings of Fact
FF 1. Rout teaches an "antimicrobial mouthwash composition in micro
emulsion format" comprising, inter alia, 0.05 to 10% "essential oils ...
having a solubility in water of less than 2000 ppm at 25°C," 0.05 to 10%
cationic surfactant, and 50 to 99.9% water. Rout 3, 11. 13-23. Rout teaches
that its composition is preferably transparent with "dispersed phase droplets
in the microemulsion ... in the size range of 6 to 125 nm." Id. at 5, 11. 7-13.
FF2. Rout teaches that an alkyl pyridinium chloride may be used as the
cationic surfactant in its oil-in-water emulsions. Rout 8, 1. 1. "Without
wishing to be bound by theory," Rout explains that the cationic surfactant
acts synergistically with the anti-microbial agent "to provide the desired anti-
microbial efficacy" and "interact[s] with the electroly[t]e" to provide "the
desired microemulsion stability." Id. at 8, 1. 4--10.
FF3. Like Rout, Hall teaches "oil-in-water emulsions suitable for use as
oral mouthrinses comprising," inter alia, a "cationic antimicrobial agent" and
"flavor oils." Hall 2, 11. 28-29, 3, 1. 35. Hall teaches that pyridinium
compounds are preferred cationic antimicrobials for such emulsions with "the
most preferred being cetylpyridinium chloride." Id. at 5, 11. 5-7.
Analysis
Examiner finds that Rout teaches the flavor oil, carrier and oil droplet
size limitations of claim 1. Non-Final Act. 6, 8. Examiner further
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Application 13/529,064
determines that cetylpyridinium chloride (CPC) is a species of the "genus of
alkyl pyridinium chloride" compounds that Rout teaches for use in its mouth
rinse emulsions. Ans. 4; see also Non-Final Act. 7 ("Rout teaches alkyl
pyridinium chloride is present in the composition, however does not specify
a C16 alkyl also known as cetylpyridinium chloride."). According to
Examiner, one of skill would be motivated to use CPC as "the type of alkyl
pyridinium chloride in Rout's composition" and have a reasonable
expectation of success in doing so because Hall teaches that CPC is a
preferred cationic antimicrobial for mouth rinse compositions. Non-Final
Act. 7-8; Ans. 4. Regarding the limitations in the wherein clauses of claim
1, Examiner notes that as "modified Rout discloses the structural limitations
of the claims" and thus such properties "would necessarily occur" in the
prior art combination. Ans. 7-8 ( emphasis omitted).
Appellants argue that Rout does not teach "the desirability of selecting
an alkyl pyridinium chloride, let alone CPC, in view of all the disclosed
surfactants and antimicrobials, nor the desire to keep CPC stable in an
emulsion with a high level of bioavailability." App. Br. 4. In addition,
Appellants contend Rout does not "disclose how to provide a mouth rinse
emulsion formulation that contains CPC, has long term stability, and a high
level ofbioavailable CPC." Id. at 5. In particular, Appellants urge that Rout
requires an electrolyte to provide stability, which "teaches away from the
present invention." Id. Finally, Appellants argue that "the 132 Declaration
submitted with the response of 22 May 2017" shows that Rout's
compositions do not meet the stability and particle size requirements of
claim 1. Id. at 6-7.
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Application 13/529,064
We are not persuaded by Appellants' arguments and agree with
Examiner's statement of the rejection and responses to Appellants'
arguments in both the Answer and Non-Final Action, which we adopt and
incorporate by reference. We provide the following additional comments to
Appellants' arguments.
We are not persuaded by Appellants' argument that Rout fails to teach
the desirability of using CPC in an oil-in-water mouth rinse emulsion. As
Examiner found, Rout teaches mouth rinse emulsions comprising water, a
water insoluble flavor oil, and alkyl pyridinium chloride. FF1-FF2. CPC is
an alkyl pyridinium chloride. Moreover, we agree with Examiner that Hall's
teaching of CPC as a preferred "antimicrobial cationic agent" in other mouth
rinse emulsions would motivate a skilled artisan to select CPC as the
specific alkyl pyridinium chloride to use in Rout's emulsions. See FF3.
Contrary to Appellants' argument, it is of no moment that Rout refers to
alkyl pyridinium chloride as a "surfactant" rather than an "antimicrobial."
See App. Br. 3. Appellants' claims are directed to a composition comprising
CPC-there is no requirement that the CPC serve a particular purpose in that
composition. Moreover, Rout teaches that the cationic surfactant, such as
alkyl pyridinium chloride, interacts synergistically with the flavor oil to
provide "the desired anti-microbial efficacy." FF2. Thus, Rout, in fact,
teaches that the alkyl pyridinium chloride is integral to the antimicrobial
properties of the emulsion.
We are also not persuaded by Appellants' argument that the cited
prior art fails to teach an emulsion with the stability and bioavailability
recited in the wherein clauses of claim 1. Rout teaches oil-in-water
emulsions comprising the same ingredients in amounts that overlap with the
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claimed weight percentage ranges. FF 1. In addition, Rout teaches that these
emulsions have oil drop particle sizes (5-125 nm) that overlap with the
claimed range of 30-350 nm. FF2. Thus, as modified by Hall's teachings to
use CPC as the alkyl pyridinium chloride, Rout teaches an emulsion with the
same structural features as the composition recited in claim 1. Given this
structural similarity, Examiner has made a prima facie showing that the prior
art will have the same properties as that recited in Appellants' claims. See In
re Dillon, 919 F.2d 688, 692-93 (Fed. Cir. 1990) (en bane) ("[S]tructural
similarity between claimed and prior art subject matter, proved by
combining references or otherwise, where the prior art gives reason or
motivation to make the claimed compositions, creates a prima facie case of
obviousness and that the burden (and opportunity) then falls on an applicant
to rebut that prima facie case.").
Appellants' evidence and arguments are insufficient to overcome
Examiner's prima facie showing. Appellants argue that Rout teaches that
the stability of its emulsions "is tied to electrolyte and surfactant
concentrations," whereas the Specification teaches away from the use of an
electrolyte. App. Br. 5. But it is the "differences between the prior art and
the claims at issue," not the Specification, that are assessed in an
obviousness analysis. KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 399--400
(2007) (quoting Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17-
18 (1966)). The claims here are "comprising" claims. They do not exclude
electrolytes from the claimed emulsions. Therefore, Rout's teaching to
include an electrolyte in such emulsions does not distinguish the present
claims from the prior art.
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Appellants' 132 Declaration is also insufficient to overcome
Examiner's prima facie showing of obviousness. That declaration purports
to show that the initial particle size and particle size after "three cycle
freeze-thaw stress testing" of emulsions made according to Rout examples
19, 21, and 22 exceeds the particle size limitations in claim 1. 132 Deel. 2-
4. But the emulsions in Rout examples 19, 21, and 22 are different than the
ones on which Examiner based the rejection. In particular, Rout examples
19, 21, and 22 do not contain an alkyl pyridinium chloride, much less CPC
specifically. Moreover, they contain electrolytes in quantities that far
exceed the lower end of electrolyte range (0.01 % wt) taught in Rout. As
such, the 132 Declaration does not test an emulsion prepared according to
Examiner's stated combination of Rout and Hall, nor even the closest prior
art emulsion taught by Rout alone. Accordingly, the findings described
there do not show that the prior art teachings on which the obviousness
rejection was based would have resulted in an emulsion having a different
particle size, either initially or after three freeze-thaw cycles, from that
recited in the claims. The 132 Declaration is therefore insufficient to
overcome the presumption that those structurally similar emulsions would
exhibit the same stability, particle size and bioavailability as recited in
Appellants' claims.
For all these reasons, Appellants' arguments fail to persuade us that
Examiner erred in rejecting the claims and we therefore affirm.
SUMMARY
We affirm the rejection of claims 1, 4--10, and 12 under 35 U.S.C.
§ 103 as unpatentable over Rout and Hall.
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Application 13/529,064
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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