Ex Parte Strand et al

Patent Trial and Appeal Board

Feb 25, 2016

12034882 (P.T.A.B. Feb. 25, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/034,882 02/21/2008
27752 7590 02/29/2016
THE PROCTER & GAMBLE COMPANY
Global Patent Services - Legal IP
Central Building, CS
One Procter and Gamble Plaza
CINCINNATI, OH 45202
FIRST NAMED INVENTOR
Ross Strand
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.
CM3160M 8955
EXAMINER
ROBERTS, LEZAH
ART UNIT PAPER NUMBER
1612
NOTIFICATION DATE DELIVERY MODE
02/29/2016 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
Ex parte ROSS STRAND, SHANE MICHAEL DE LA HARPE,
and PELIN GUNENC 1
Appeal2014-000035
Application 12/034,882
Technology Center 1600
Before JEFFREY N. FREDMAN, JOHN G. NEW, and
RICHARD J. SMITH, Administrative Patent Judges.
NEW, Administrative Patent Judge.
DECISION ON APPEAL
1 Appellants state the real party-in-interest is The Procter & Gamble
Company of Cincinnati, Ohio. App. Br. 1.
Appeal2014-000035
Application 12/034,882
SUMMARY
Appellants file this appeal under 35 U.S.C. § 134(a) from the
Examiner's Final Rejection of claims 1-11. Specifically, claims 1-11 stand
rejected as unpatentable under 35 U.S.C. § 103(a) as being obvious over Yue
et al. (US 2003/0003061 Al, January 2, 2003) ("Yue").
Claims 9-11 stand rejected as unpatentable under 35 U.S.C. § 103(a)
as being obvious over Day et al. (WO 02/091847 Al, November 21, 2002)
("Day").
We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM-IN-PART and enter a NEW GROUND OF
REJECTION.
NATURE OF THE CLAIMED INVENTION
Appellants' invention is directed to orally acceptable polyphosphate
salts for use in dentifrice compositions. Abstract.
REPRESENTATIVE CLAIM
Claim 1 is representative of the claims on appeal, and recites:
1. A dentifrice composition comprising:
a) a water soluble polyphosphate salt in particulate
form, the polyphosphate salt comprising a polyphosphate
anion comprising at least about 10 phosphate units;
b) an orally acceptable carrier;
wherein the polyphosphate salt has a particle size
distribution wherein less than about 10% by volume of the
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Application 12/034,882
App. Br. 10.
salt has a particle size of greater than about 160 µm and
less than about 20% by volume of the salt has a particle
size of less than about 5 µm and wherein the dentifrice is
in the form of an aqueous toothpaste or gel having reduced
grittiness and acceptable rheology and mouthfeel.
Appellants also argue claims 9--11 together. Claims 10 and 11
depend from claim 9, which recites:
9. An orally acceptable, water soluble polyphosphate salt in
particulate form, the polyphosphate salt comprising a
polyphosphate anion comprising at least about 10 phosphate
units and having a particle size distribution wherein less than
about 10% by volume of the salt has a particle size of greater than
about 160 µm and less than about 20% by volume of the salt has
a particle size of less than about 5 µm.
App. Br. 11.
THE EXi\1\1TI'JER'S PRil\1i\. Fi\.CIE Ci\.SE OF OBVIOUSNESS
With respect to the rejection of claims 9--11, the Examiner finds Day
teaches use of a 50 µm (or smaller) mesh to sort the particles, thereby
teaching the limitation of less than about 10% by volume of the salt has a
particle size of greater than about 160 µm. Final Act. 3.
With respect to claims 1-11 over Yue, the Examiner finds Yue
teaches oral compositions comprising one or more linear polyphosphates
having an average chain length of 4 or greater, approximately 0.15% - 5%
of a fluoride ion source, and a total water content of approximately 1 % -
20%. Final Act. 7. The Examiner also finds Yue teaches compositions
having a pH ranging from 6.5 to 10, and that the pyrophosphate may be used
as a buffering agent. Id. at 8 (citing Yue if 38). The Examiner also finds
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Application 12/034,882
Yue teaches the fluoride ion sources include sodium fluoride and stannous
fluoride. Id. (citing Yue i-f 29).
The Examiner further finds Appellants' Specification discloses the
polyphosphates Glass H and Hexaphos, which are the same polyphosphates
taught by Yue; consequently, the polyphosphates disclosed by Yue should
have a similar pH, in a 1 % aqueous solution, of approximately 5. 8 - 6. 7.
Final Act. 8 (citing Yue i-f 38). Id.
The Examiner finds Yue teaches the pyrophosphate salt (a
polyphosphate (citing Yue i-f 24) is undissolved and therefore should have a
particle size small enough to be aesthetically acceptable and readily soluble
during use. The Examiner finds the particle size of the components is
therefore a result effective variable. Final Act. 9. The Examiner finds that it
would have taken no more than the skill of an ordinary artisan to have
adjusted the particle size of the polyphosphate salt taught by Yue to obtain
the desired aesthetic effect and also to obtain the desired solubility to
achieve the desired therapeutic effect when the polyphosphate is used in the
oral cavity. Id. Therefore, the Examiner concludes it would have been
obvious to one of ordinary skill in the art to have used the particle size range
of polyphosphates recited in the claims. Id.
We agree with the Examiner's reasoning and conclusions with respect
to claims 9-11. However, as we explain infra with respect to claims 1-11,
we conclude the Examiner has not established a prima facie case of
obviousness.
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Appeal2014-000035
Application 12/034,882
A. Claims 9--11
Issue
Appellants argue Day neither teaches nor suggests the limitations of
the claimed invention. App. Br. 5.
Analysis
Appellants argue the Examiner erred in finding Day provides the
requisite motivation to use a specific particulate polyphosphate having the
particle size distribution recited in claim 9 as a solution to a problem that the
inventors have discovered. App. Br. 3.
Appellants argue Day does not recognize the problems associated
with formulating particulate polyphosphates into dentifrice compositions or
the solution to these problems, being a specific particle distribution of the
polyphosphate. App. Br. 4. According to Appellants, Day does not
specifically disclose the particulate long-chain polyphosphate specified in
the claims, i.e., one having a particle size distribution in which less than
about 10% by volume of the salt has a particle size of greater than about 160
µm and less than about 20% by volume of the salt has a particle size of less
than about 5 µm. Id.
Appellants further contend that, when a range of particle sizes is
subjected to size selection by sieving, as taught by Day, only the larger
particles (i.e., those larger than the size of the sieve) will be removed,
leaving behind the lower end of a normal distribution of particle sizes. App.
Br. 4. Appellants assert that, in the particulate polyphosphate taught by Day,
the particles are sorted by sieving such that all of the particles of
polyphosphate present are less than 50 µm. Id. Appellants contend Day
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Application 12/034,882
does not teach or suggest Appellants' claimed polyphosphate, the particle
distribution of which is selected such that up to about 10% of the particles
larger than 160 µm; rather, assert Appellants, Day's particle size distribution
does not allow for particles larger than 50 µm. Id. at 9.
Appellants point to their Specification, which, they argue
demonstrates the claimed polyphosphate solves the problem of formulating a
"non-gritty" dentifrice composition by having particles that are sufficiently
large to not be susceptible to hydrolysis but not too large to be perceived as
gritty. App. Br. 5. Appellants contend Day neither teaches nor suggests
compositions that would lead a skilled person to the present invention
directed to polyphosphates having the specified particle distribution to solve
the problems of (1) polyphosphate hydrolytic instability and unacceptable
thickening of the composition derived from small polyphosphate particles
and (2) grittiness of the composition. Id. at 6.
The Examiner responds that Day discloses polyphosphates with a
particle size of less than 50 µm, which meets the limitation of claim 9
requiring less than about 10% by volume of the salt having a particle size of
greater than about 160 µm. Ans. 8. The Examiner finds, with respect to the
lower particle size limit, the claims are directed to the salt itself. Id. The
Examiner therefore finds the distribution of particle sizes taught by Day is
within the scope of the claims. Id.
The Examiner further finds Day teaches the polyphosphates create a
hydrophilic tooth surface for extended periods of time. Ans. 8. Therefore,
the Examiner finds, Day teaches the polyphosphates are stable (from which
one would reasonably conclude that the polyphosphate would not undergo
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Application 12/034,882
hydrolysis). Id. We note that no particular standard for stability is required
by either the claims or the Specification.
The Examiner also finds it would have taken no more than the skill of
an ordinary artisan to have sieved the polyphosphate salt to obtain the
desired particle size with the desired aesthetics and stability to arrive at the
particle size recited by the instant claims. Ans. 10. Specifically, the
Examiner finds Appellants' Specification shows no difference in hydrolytic
stability between Appellants' inventive examples and the comparative
examples other than the grittiness. Id. at 11. However, the Examiner finds
that Day teaches particles that are less gritty because the particle size taught
is less than 50 µm.
Claim 9 requires the
polyphosphate salt have a particle size distribution "wherein less than about
10% by volume of the salt has a particle size of greater than about 160 µm
and less than about 20% by volume of the salt has a particle size of less than
about 5 µm." Day teaches:
If a polyphosphate is used in the compositions of the present
invention it is preferred that it has a particle size such that it
passes through a 50 µm mesh, preferably a 25 µm mesh and more
preferably 10 µm mesh. Polyphosphates such as those described
not only have an anti-calculus benefit but they also provide
surface conditioning effects to the teeth and other surfaces of the
oral cavity.
Day 9--10, 11. 28-2. Day thus teaches a preferred embodiment where all of
the particles are sieved such that the maximum particle size is 50 µm, which
is within the scope of "less than about 10% by volume of the salt has a
particle size of greater than about 160 µm," because 0% is less than 10%.
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Application 12/034,882
With respect to Appellants' arguments that the claimed polyphosphate
solves the problem of formulating a "non-gritty" dentifrice composition by
having particles that are sufficiently large to not be susceptible to hydrolysis
but not too large to be perceived as gritty (see App. Br. 5), the grittiness or
susceptibility of the particles to hydrolysis is not recited in the limitations of
the claim (as grittiness is in claim 1). Appellants may not attempt to import
limitations from the Specification into the claims. See CollegeNet, Inc. v.
ApplyYourself, Inc., 418 F.3d 1225, 1231 (Fed. Cir. 2005). Claim 9 recites
no more than a polyphosphate salt with particles of a given size range. We
agree with the Examiner's reasoning that the scope of the claims fall within
the teachings of Day, and we consequently affirm the Examiner's rejection
of claims 9--11.
B. Claims 1-11
Issue
Appellants argue the Examiner erred because Yue neither teaches nor
suggests the requisite motivation to "specifically use a particulate
polyphosphate having the specified particle size distribution as a solution to
a problem that the inventors have discovered." App. Br. 7.
Analysis
Appellants argue Yue does not recognize the problems associated
with formulating particulate polyphosphates into dentifrice compositions or
the solution to these problems, that being a specific particle distribution of
the polyphosphate. App. Br. 7. Appellants point out that the Examiner
admits Yue does not specifically disclose the particulate long chain
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Application 12/034,882
polyphosphate specified in the claims. Id. Appellants assert the importance
of the particle size selection made should not be ignored, because the size
range recited in claim 1 solves the problem of formulating a "non-gritty"
dentifrice composition by having particles that are sufficiently large to not
be susceptible to hydrolysis but not too large to be perceived as gritty. Id. at
8.
Appellants point to the Examiner's finding that Yue discloses
undissolved pyrophosphate salts that may be present in the composition and
the particle size should be "small enough" to be aesthetically acceptable and
readily soluble during use. App. Br. 8. However, Appellants assert Yue is
silent with respect to the hydrolytic instability of pyrophosphate or the effect
of undissolved pyrophosphate particles on the grittiness of the composition,
much let alone the effect of the polyphosphate particle size distribution. Id.
Appellants maintain particles size distribution of neither the pyrophosphate
nor long chain polyphosphate is taught or suggested by Yue as a result
effective variable. Id. Appellants contend that, without the benefit of
Appellants' Specification, the effectiveness of the claimed particle size
distribution of the polyphosphate would not be recognized. Id.
Finally, Appellants argue that even if one of ordinary skill reading
Yue would be inclined to select a particle size in an attempt to reduce
grittiness, it is reasonable to assume they would look to the particle size of
other materials disclosed by Yue. App. Br. 8. Appellants point to
Paragraph [0050] of Yue, which teaches silica dental abrasives having an
average particle size ranging from between approximately 0.1-30 µm, and
preferably from approximately 5-15 µm. Id. Appellants argue such
particles are well below the particle size distribution found useful in the
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Application 12/034,882
present invention and as they are for abrasives, the teachings of Yue would
clearly encourage one of ordinary skill to reduce the particle size even
further than this ifthe only goal was to reduce grittiness. Id. at 9.
The Examiner responds that Yue discloses that the particle size of the
pyrophosphate is a particle size that is preferably small enough to be
aesthetically acceptable and readily soluble during use. Ans. 13. The
Examiner finds one of ordinary skill in the art could reasonably conclude,
because Yue teaches pyrophosphates are polyphosphates, that this teaching
would also apply to the polyphosphate particles that Yue teaches may be
used in the compositions. Id. Therefore, the Examiner reasons, the particle
size of the components in the compositions of Yue has been recognized as a
result effective variable. Id.
The Examiner finds further that Yue discloses abrasives (silica) have a
particle size between 0.1-30 µm. Ans. 13. The Examiner finds one of
ordinary skill in the art could reasonably conclude that this size is suitable
for other particles incorporated into the compositions. Id. Therefore, the
Examiner finds, it would have been within the skill of an ordinary artisan to
have made the particles of the compositions of Yue, with a particle of less
than 30 µm, sufficient to be aesthetically pleasing and having the desired
solubility characteristics. Id.
We disagree with the Examiner's findings and conclusions on this
ground. Yue teaches:
The present invention includes a polyphosphate source. A
polyphosphate is generally understood to consist of two or more
phosphate molecules arranged primarily in a linear
configuration, although some cyclic derivatives may be present.
Although pyrophosphates are a polyphosphate, the
polyphosphates desired are those having 4 or more phosphate
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Application 12/034,882
molecules. The pyrophosphates are discussed separately. The
inorganic polyphosphate salts desired include
tetrapolyphosphate and hexametaphosphate, among others.
Polyphosphates larger than tetrapolyphosphate usually occur as
amorphous glassy materials. Preferred in this invention are the
linear "glassy" polyphosphates having the formula:
wherein X is lithium, magnesium, sodium, potassium. or
ammonium. preferably sodium or potassium. and n averages
from about 6 to about 125.
Yue i-fi-125-26. With respect to pyrophosphates (which Yue teaches are a
species of polyphosphate), Yue teaches:
Compositions comprising predominately undissolved
pyrophosphate refer to compositions containing no more than
about 20% of the total pyrophosphate salt dissolved in the
composition, preferably less than about 10% of the total
pyrophosphate dissolved in the composition.
The salt is in its solid particle form, which may be its crystalline
and/or amorphous state, with the particle size of the salt
preferably being small enough to be aesthetically acceptable and
readily soluble during use.
Yue i-f 42. Yue thus teaches pyrophosphate crystalline/amorphous particles
that are small enough to be "aesthetically pleasing," but Yue neither teaches
nor suggests anything further about what size range of pyrophosphate or
polyphosphate might be "aesthetically pleasing," or indeed, anything to do
with polyphosphate particle size. Yue does teach a preferred range of
abrasive silica particles of 0.1-30 µm, but we do not agree with the
Examiner's reasoning that this range is obviously similar applies to the
preferred range of polyphosphate particle sizes.
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We can find nothing in Yue, nor does the Examiner convincingly
point to, any teaching or suggestion of the size range of polyphosphate
particles in the range required by claim 1. Consequently, we do not uphold
the Examiner's findings that Yue teaches or suggests the limitations of claim
1 and we reverse the Examiner's rejection of the claims.
NEW GROUND OF REJECTION
We enter the following new ground of rejection for independent claim
1 under the provisions of37 C.F.R. § 41.50(b).
Claim 1 is rejected under 35 U.S.C. § 103(a) as being obvious over
the combination of Yue and Day. As discussed supra, Day teaches
polyphosphate particles within the size range recited by claim 1. Yue
teaches polyphosphate particle size can be adjusted to be aesthetically
acceptable.
Appellants' Specification discloses that it is well-known in the art
that: "[l]arge particles can create perceptions of grittiness by users of the
products though, leading to lowered consumer acceptance" and can thus not
be "aesthetically pleasing." We therefore conclude that a person of ordinary
skill, upon reading the combined teachings of Day and Yue, together with
what is well-known in the art, would be motivated to combine the teachings
to arrive at the invention of claim 1.
We have entered the new grounds only for independent claim 1 and
leave it to the Examiner to evaluate the patentability of the other claims in
view of this reference alone or in combination with other newly found or
previously cited references.
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Application 12/034,882
CONCLUSION
We agree with the Examiner's findings and conclusions establishing a
prima facie case of obviousness with respect to claims 9--11 and we do not
find Appellant's arguments to the contrary persuasive. We disagree with the
Examiner's findings or conclusion that a prima facie case exists with respect
to the rejection of claims 1-11 over Yue. We consequently affirm-in-part
the Examiner's rejection and enter a new ground of rejection.
DECISION
The Examiner's rejection of claims 9-11 as unpatentable under 35
U.S.C. § 103(a) is affirmed.
The Examiner's rejection of claims 1-11 as unpatentable under 35
U.S.C. § 103(a) is reversed.
We have also entered a new ground of rejection under 37 C.F.R.
§ 41.50(b) for claim 1.
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides that "[a] new ground of
rejection ... shall not be considered final for judicial review."
37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new ground of rejection
to avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an
appropriate amendment of the claims
so rejected or new evidence relating
to the claims so rejected, or both, and
have the matter reconsidered by the
examiner, in which event the
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proceeding will be remanded to the
exammer ....
(2) Request rehearing. Request that
the proceeding be reheard under
§ 41.52 by the Board upon the same
record ....
AFFIRMED-IN-PART
37 C.F.R. § 41.50(b)
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