Ex Parte Shastry et al

Patent Trial and Appeal Board

Sep 12, 2016

13521320 (P.T.A.B. Sep. 12, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/521,320 07/10/2012
23909 7590 09/14/2016
COLGATE-PALMOLIVE COMPANY
909 RIVER ROAD
PISCATAWAY, NJ 08855
FIRST NAMED INVENTOR
Ramachandra Shastry
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.
7520-00-0C 6150
EXAMINER
RONEY, CELESTE A
ART UNIT PAPER NUMBER
1612
NOTIFICATION DATE DELIVERY MODE
09/14/2016 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 RAMACHANDRA SHASTRY and JAMES MASTERS 1
Appeal2014-006850
Application 13/521,320
Technology Center 1600
Before ERIC B. GRIMES, ULRIKE W. JENKS, and
TIMOTHY G. MAJORS, Administrative Patent Judges.
GRIMES, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a
dentifrice composition, which have been rejected as obvious. We have
jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
STATEMENT OF THE CASE
The Specification states that "the use of carboxypeptidase and a zinc-
containing compound in oral compositions provides enhanced anti-plaque
and fresh breath effects over a prolonged period of time, while reducing
1 Appellants identify the Real Party in Interest as Colgate-Palmolive
Company. (Appeal Br. 2.)
Appeal2014-006850
Application 13/521,320
astringent taste." (Spec. i-f 5.) The Specification states that "'dentifrice'
refers to a paste, gel, lozenge, gum, or liquid formulation." (Id. i-f 6.)
Claims 1 and 3-15 are on appeal. Claim 1 is illustrative and reads as
follows:
1. A dentifrice composition comprising a zinc-containing salt and
carboxypeptidase, wherein said zinc-containing salt is not
sequestered, and wherein the zinc is present in the amount of 0.3-0.6%
by weight.
DISCUSSION
The Examiner has rejected claims 1, 3-8, and 10-15 under 35 U.S.C.
§ 103(a) as obvious based on Pader2 and Budny. 3 (Ans. 2.) The Examiner
has rejected claim 9 under 35 U.S.C. § 103(a) as obvious based on Pader,
Budny, and Giani. 4 (Ans. 3.) The same issue is dispositive for both
rejections.
The Examiner finds that Pader discloses "oral compositions
comprising zinc ions and enzymes, such as protease, carbohydrase, lipase or
mixtures thereof, for reducing dental plaque." (Id. at 2.) The Examiner
finds that the range of concentrations for zinc compounds disclosed by Pader
overlaps the range recited in claim 1. (Id.) The Examiner finds that Budny
discloses "a composition comprising carboxypeptidase as a protease enzyme
for controlling bacterial growth in the oral cavity." (Id.)
2 Pader, US 4,154,815, issued May 15, 1979.
3 Budny et al., US 6,159,447, issued Dec. 12, 2000.
4 Giani et al., US 5,747,004, issued May 5, 1998.
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Application 13/521,320
The Examiner concludes that it would have been obvious "to combine
the zinc salts of Pader et al with the carboxypeptidase of Budny et al in a
dentifrice composition for treating dental plaque and oral malodor, because
both are taught to be oral care actives that provide the same function (i.e.
reduction of plaque and calculus, thereby reducing dental caries and
associated oral malodor)." (Id. at 3.)
We agree with the Examiner that the composition of claim 1 would
have been obvious based on Pader and Budny. Pader discloses that "dental
plaque and calculus can be greatly reduced by contacting the teeth for a
relatively short time with a combination of zinc ions and an enzyme, which
may be a protease, a carbohydrase, or a lipase." (Pader 3:38--42.) "Zinc
ions may be furnished by any pharmaceutically acceptable zinc salt having
sufficient solubility in an aqueous medium to provide an effective level of
zinc ions." (Id. at 6:37--40.)
"[O]ral preparations are contemplated containing ... from 0.1 % to
30% zinc salts. In addition, there will be present an amount of a hydrolytic
enzyme which in coaction with zinc ions is effective to retard plaque and
calculus formation." (Id. at 4:54--59.) Thus, Pader discloses dentifrice
compositions comprising an enzyme such as a protease, together with zinc
salts in a concentration range that overlaps that of claim 1.
Budny discloses "compositions for controlling bacterial colonization,
particularly, but not restricted to, an oral application for reducing dental
plaque." (Budny 1: 14--16.) Budny states that "any effective enzyme which
prevents or reduces bacterial colonization may be used in this invention.
Preferably, a group of enzymes which have a hydrolytic action, or
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Appeal2014-006850
Application 13/521,320
hydrolases, are used." (Id. at 8: 11-14.) Preferred enzymes (id. at 8: 18)
include "peptide bond cleaving enzymes where proteins are the substrate"
(id. at 8:23-24), including carboxypeptidase (id. at 8:41).
Based on these teachings, it would have been obvious to include
carboxypeptidase as the enzyme in Pader's anti-plaque oral composition,
because Budny discloses that carboxypeptidase is a protease (i.e., a peptide
bond-cleaving enzyme where proteins are the substrate) that is useful in
compositions for reducing dental plaque.
Appellants argue that "nothing in Pader discloses or suggests
including non-sequestered zinc salts." (Appeal Br. 4.)
This argument is not persuasive. Pader expressly discloses zinc salts
as a source of zinc ions. (See Pader 6:37--40.) Appellants have pointed to
no evidence that Pader' s zinc salts were sequestered, which is defined in the
Specification as meaning "the encapsulation, isolation, segregation, etc. of
[the zinc salt], from the remainder of the components or ingredients in a
particular formulation." (Spec. i-f 8.)
Appellants also argue "Budny does not teach the use of the enzyme
per se in the dental compositions. Instead, Budny teaches anchoring the
enzyme to an anchor molecule .... To uncouple the carboxypeptidase
enzyme from the anchor molecule of Budny would render the Budny
invention unsuitable for its intended purpose." (Appeal Br. 5.)
Similarly, Appellants argue that "the unique technical aspect of Budny
is finding a means of retaining an enzyme in the oral cavity . . . . In contrast,
Pader is aimed at the discovery that plaque and calculus can be reduced 'by
contacting the teeth for a relatively short time with a combination of zinc
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Application 13/521,320
ions and an enzyme.'" (Reply Br. 5 8.) Appellants argue that "there would
[be] no motivation to combine Pader, which describes free and nascent
enzymes, with Budny, which specifically and strongly teaches against free
and nascent enzymes, to arrive at the Appellants' present invention." (Id.
at 9.)
This argument is also unpersuasive. It is true that Budny emphasizes
retaining enzymes in the oral cavity as a key aspect of its invention. (See
Budny 4: 12-18.) However, both Budny and Pader disclose enzyme-
containing antiplaque compositions, and both include the same general
classes of enzymes in their compositions. For example, Budny states that
hydrolases are preferred enzymes (id. at 8: 13-15), including "esterases ...
glycolytic cleavage enzymes ... peptide bond cleaving enzymes ... carbon-
nitrogen bond cleavage ... acid anhydride cleaving enzymes," etc. (Id. at
8:18-29.)
Similarly, Pader teaches that "[t]he enzymes useful in the practice of
this invention are those well known catalytically active protein substances
within the class of hydro lases, which break down or hydrolyze proteins
(proteases), carbohydrates ( carbohydrases ), fatty substances (lipases ), or
complexes of these types of substances." (Pader 7:20-25.) Pader also
5 The Reply Brief raises several arguments that were not raised in the Appeal
Brief and are not responsive to arguments made by the Examiner. We have
not considered the arguments that were newly raised in the Reply Brief. See
37 C.F .R. § 41.41 (b )(2) ("Any argument raised in the reply brief which was
not raised in the appeal brief, or is not responsive to an argument raised in
the examiner's answer ... will not be considered by the Board for purposes
of the present appeal, unless good cause is shown.").
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Appeal2014-006850
Application 13/521,320
discloses that long-term retention of the enzyme in the mouth is not
necessary to effectively reduce plaque and calculus:
It has now been discovered that dental plaque and calculus can
be greatly reduced by contacting the teeth for a relatively short
time with a combination of zinc ions and an enzyme, which may
be a protease, a carbohydrase, or a lipase, or mixtures thereof.
The combination of zinc salt with various enzymes has been
found experimentally to be so active as an antiplaque and
anticalculus agent to demonstrate practical efficacy for the
control of plaque and calculus formation.
(Id. at 3:38--46.)
Thus, a person of ordinary skill in the art, viewing Pader and Budny
together, would have recognized that carboxypeptidase would be useful in
Pader's composition even without Budny's anchor molecule.
Appellants also argue that the Examiner erred in relying on "Merck &
Co., Inc. v. Biocraft Labs., Inc., 874 F.2d 804 (Fed. Cir. 1989), for the
proposition that 'the prior art's disclosure of a multitude of combinations
does not necessarily render any particular formulation less obvious."'
(Reply Br. 6.) Appellants argue that "Merck does not apply here because
Budny is a different reference, addressing a different problem, to be solved
by evaluating a different result-effective variable." (Id. at 7.)
This argument is also unpersuasive. Both Pader and Budny are
directed to enzyme-containing antiplaque compositions, and both disclose
that hydrolases generally, and proteases specifically, are useful in such
compositions. In addition, Budny discloses that carboxypeptidase is a
protease that is useful in such compositions. Thus, the references would
have made obvious the composition of claim 1.
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We affirm the rejection of claim 1 under 35 U.S.C. § 103(a) based on
Pader and Budny. Claims 3-8 and 10-15 have not been argued separately
and therefore fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
With respect to the separate rejection of claim 9, Appellants rely on
the same arguments addressed above with respect to claim 1, and have
waived arguments directed to Giani. (See Appeal Br. 6-7.) We therefore
affirm the rejection of claim 9. Hyatt v. Dudas, 551F.3d1307, 1314 (Fed.
Cir. 2008) ("In the event of such a waiver, the PTO may affirm the rejection
of the group of claims that the examiner rejected on that ground without
considering the merits of those rejections.").
SUMMARY
We affirm both of the rejections on appeal.
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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