Ex Parte Stephenson

Patent Trial and Appeal Board

Aug 16, 2016

09489310 (P.T.A.B. Aug. 16, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
09/489,310 0112112000
27752 7590 08/18/2016
THE PROCTER & GAMBLE COMPANY
Global IP Services
Central Building, C9
One Procter and Gamble Plaza
CINCINNATI, OH 45202
FIRST NAMED INVENTOR
Gary Stephenson
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.
7922 5677
EXAMINER
LIU, TRACY
ART UNIT PAPER NUMBER
1612
NOTIFICATION DATE DELIVERY MODE
08/18/2016 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):
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
Exparte GARY STEPHENSON
Appeal2014-009479
Application 09/489,310
Technology Center 1600
Before ADRIENE LEPIANE HANLON, MICHAEL P. TIERNEY, and
TIMOTHY G. MAJORS, Administrative Patent Judges.
HANLON, Administrative Patent Judge.
DECISION ON APPEAL
A. STATEMENT OF THE CASE
The Appellant filed an appeal under 35 U.S.C. § 134(a) from an Examiner's
decision finally rejecting claim 23 under 35 U.S.C. § 103(a) as unpatentable over
Chang 1 in view of Kupper et al. 2 and Brody. 3 We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.
1 US 5,336,510, issued August 9, 1994 ("Chang").
2 US 4,612,205, issued September 16, 1986 ("Kupper").
3 Jane E. Brody, Vitamin C: Is Anyone Right on Dose?, N.Y. Times, April 16,
1996, http://www.nytimes.com/ 1996/04/ 16/ science/vitamin-c-is-anyone-right-on-
dose.html ("Brody").
Appeal2014-009479
Application 09/489,310
Claim 23 is directed to a method of treating dental erosion by directing a
human to orally administer an effective amount of a particular beverage
composition. The Appellant defines "dental erosion" as "loss, softening, and/or
demineralization of mammalian tooth substance" and defines "treating" as
"inhibiting (either partially or completely), reversing, and/or protecting against
dental erosion." Spec. 4, 11. 10-12, 22-24.
Claim 23 is reproduced below from the Claims Appendix of the Appeal
Brief dated May 15, 2014 ("App. Br."). The limitations at issue are italicized.
23. A method of treating dental erosion comprising:
(a) a physician or dental professional directing a human, in
need thereof due to loss or softening of tooth enamel and its
demineralization caused by direct action of acid on the tooth, to orally
administer an effective amount of a carbonated beverage composition
comprising citric acid and having a pH from 3.3 to about 3.5 at least
once daily for the purpose of treating dental erosion;
(b) the human ingests the beverage composition based on
such direction for the purpose of treating said dental erosion;
wherein the beverage composition comprises sodium
hexametaphosphate:
ll:
and wherein the beverage composition is substantially free of calcium,
phosphate derived from one or more compounds other than the
aforesaid hexametaphosphate and fluoride; and wherein the beverage
composition further comprises a sweetener.
App. Br. 8.
2
Appeal2014-009479
Application 09/489,310
B. DISCUSSION
The Examiner finds the beverage composition disclosed in Chang, as
modified by Kupper, is substantially the same as the beverage composition recited
in claim 23. 4 Ans. 2--4. The Examiner relies on Brody to show that it would have
been obvious to one of ordinary skill in the art to administer Chang's modified
beverage at least once daily. See Ans. 4 ("Brody disclose[ s] it is necessary for
individuals to consume 200 milligrams a day of vitamin C and the carbonated
beverage of Chang in view of Kupper ... comprises 100-170 mg of vitamin C").
The Examiner finds that Chang, as modified by Kupper and Brody, differs
from the claimed invention "insofar as it does not disclose the directing step [i.e.,
step (a)] of the instant claim." Ans. 4. Nonetheless, the Examiner concludes that:
[O]ne of ordinary skill in the art would reasonably conclude that these
compositions would also treat dental erosion, with a reasonable
expectation of success, because the compositions of Chang in view of
Kupper ... and in further in view of Brody are substantially the same
as the compositions of the instant claim and therefore should have
substantially the same properties.
Ans. 5. In other words, "by ingesting the beverage composition of the prior art,
one would also be treating dental erosion as that would be an inherent property of
the prior art's composition, absent evidence to the contrary." Ans. 7.
The Appellant argues that "nothing in any possible combination of the cited
documents suggest the choosing of [the claimed composition] and to use it on a
prescribed, daily basis to combat dental erosion." App. Br. 5 (emphasis added). In
4 The Examiner finds the difference between the beverage composition disclosed in
Chang and the beverage composition recited in claim 23 is the pH. The Examiner
relies on Kupper to show that carbonated beverages, like the carbonated beverages
disclosed in Chang, have a pH from about 2.0 to about 5.0. Examiner's Answer
dated August 18, 2014 ("Ans."), at 3.
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Appeal2014-009479
Application 09/489,310
this regard, the Appellant argues that the claimed invention "flies in the face of so
much accepted wisdom in this field." 5 App. Br. 6.
In response, the Examiner directs our attention to the following findings
made by the Board in a previous Decision in the instant Application: 6
"The Appellant recognizes that the average consumer of an acidic
beverage, e.g., a cola product, appreciates the need for enamel erosion
control." Therefore ... "it is reasonable to find that the average
consumer of the acidic beverages of the prior art would also
appreciate the need for enamel erosion control and thus be 'in need of'
enamel erosion control" [as that phrase is interpreted in Jansen].[7, SJ
5 See, e.g., App. Br. 6 (arguing that conventional wisdom in this field includes the
knowledge that "' [l]ow pH causes erosion of dental enamel and low pH carbonated
beverages are particularly bad.' Appellants' method[, however,] uses an acidic,
carbonated composition.").
6 Decision on Appeal dated September 26, 2007, in Appeal 2007-4245
(Application 09/489,310) ("Decision").
7 In Jansen v. Rexall Sundown, Inc., 342 F.3d 1329, 1330 (Fed. Cir. 2003), the
claims recited "[a] method of treating or pre-venting macrocytic-megaloblastic
anemia in humans ... which comprises administering a daily oral dosage of a
vitamin preparation to a human in need thereof . ... " The Court held that
"administering the claimed vitamins in the claimed doses for some purpose other
than treating or preventing macrocytic-megaloblastic anemia is not practicing the
claimed method, because Jansen limited his claims to treatment or prevention of
that particular condition in those who need such treatment or prevention." Jansen,
342 F .3d at 1334 (emphasis added).
8 The sole issue in the previous Appeal was whether the phrase "'in need thereof"'
in claim 23 (which has been subsequently amended to add "directing" step (a))
defined over US 3,681,091 to Kohl et al. Decision 2. During prosecution, the
Examiner had indicated that "the rejection would be overcome if claim 23 were
amended to read, 'A method for treating dental erosion, comprising orally
administering to a mammal in need thereof an effective amount of a beverage'
(emphasis added)." Decision 5 (relying on Office Action dated November 1, 2004,
at 3). However, after claim 23 was amended by the Appellant to include the phrase
"in need thereof," the Examiner found that a statement made by the Appellant
"'casts doubt- on the record- on the adequacy of 'in need thereof' as
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Appeal2014-009479
Application 09/489,310
Ans. 7 (quoting Decision 7). Based on those findings, the Examiner concludes that
"it would have been obvious to have been 'directed' to drink the prior art
beverages for that purpose." Ans. 7.
Suffice it to say that the mere appreciation of the need for enamel control, by
an average consumer of acidic beverages, would not have informed one of ordinary
skill in the art that the modified beverage composition of Chang is useful for the
purpose of treating dental erosion. To the extent that drinking Chang's modified
beverage composition inherently treats dental erosion, claim 23, in its current form,
recites the additional step of "a physician or dental professional directing a human
... to orally administer an effective amount of [the claimed beverage composition]
for the purpose of treating dental erosion" (i.e., step (a)). App. Br. 8 (emphasis
added). On this record, the Examiner has not directed us to any credible evidence
establishing that the claimed beverage composition, and thus Chang's modified
beverage composition, was known, or would have been expected, to treat dental
erosion at the time of the Appellant's invention. Therefore, the evidence of record
does not support the Examiner's conclusion that the "directing" step recited in
claim 23 would have been obvious to one of ordinary skill in the art.
On appeal, the Examiner also directs our attention to King Pharm., Inc. v.
Eon Labs, Inc., 616 F.3d 1267 (Fed. Cir. 2010). The Examiner finds that
"Applicant's step (a) in claim 23 of a physician or dental professional 'informing'
a patient to orally administer a carbonated beverage for its inherent property of
treating dental erosion is not patentable per the King Pharm. holding." Ans. 8.
distinguishing language," in contrast to Jansen. Decision 6 (quoting Office Action
dated June 6, 2005, at 2).
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Appeal2014-009479
Application 09/489,310
The facts in King, however, are different from the facts in this case. In King,
the following claim limitation was at issue: "'informing the patient that
administration of a therapeutically effective amount of metaxalone in a
pharmaceutical composition with food results in an increase in the maximal plasma
concentration ( Cmax) and extent of absorption ... compared to administration
without food."' King, 616 F.3d at 1277 (emphasis added). The Court found that
taking metaxalone with food was known in the art. King, 616 F.3d at 1275. Thus,
the Court found that "[i]nforming a patient about the benefits of a drug in no way
transforms the process of taking the drug with food. Irrespective of whether the
patient is informed about the benefits, the actual method, taking metaxalone with
food, is the same." King, 616 F.3d at 1279.
In this case, claim 23 recites a "directing" step, not an "informing" step as in
King. The method recited in claim 23 comprises, inter alia, the step of "a
physician or dental profession directing a human, in need thereof . .. , to orally
administer an effective amount of [the claimed beverage composition] at least once
daily for the purpose of treating dental erosion." App. Br. 8 (emphasis added). As
discussed above, the Examiner has failed to show that orally administering or
drinking the claimed beverage composition was known to treat dental erosion at
the time of the Appellant's invention. Therefore, in contrast to the facts in King,
the "directing" step recited in claim 23 distinguishes over the prior art of record.
For the reasons set forth above, the § 103(a) rejection of claim 23 is not
sustained.
C. DECISION
The decision of the Examiner is reversed.
REVERSED
6