Ex Parte Swaine et al

Patent Trial and Appeal Board

Aug 9, 2013

11825278 (P.T.A.B. Aug. 9, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte ROBERT LESLIE SWAINE, JR., MARC HESTER,
STEVE HOKE, DENISE McCLENATHAN, NIRANJAN RAMJI, and
GERHARD NORBERT ZEHENTBAUER1
__________

Appeal 2012-003198
Application 11/825,278
Technology Center 1600
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Before TONI R. SCHEINER, ERIC GRIMES, and FRANCISCO C.
PRATS, Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims relating to a
flavor composition. The Examiner has rejected the claims as obvious. We
have jurisdiction under 35 U.S.C. § 6(b). We reverse.

1 Appellants identify the Real Party in Interest as The Procter & Gamble
Company (Appeal Br. 2).
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STATEMENT OF THE CASE
Claims 1, 2, 6, 7, 9-11 and 13 are on appeal. Claims 1 and 7, the only
independent claims, read as follows (emphasis added):
1. A flavor composition for use in oral care products comprising one
or more flavor oil(s) or extract(s) comprising no more than 1 ppm by weight
dimethyl sulfoxide (DMSO) that is a precursor for generation of malodor and
off taste in said composition or products, wherein the one or more flavor
oil(s) or extract(s) are subjected to a process consisting essentially of one or
a combination of washing the flavor oil(s) or extract with an aqueous phase
comprising water and no more than about 20% of solvent and filtration
through an adsorbent material comprising a metal oxide to substantially
eliminate dimethyl sulfoxide.

7. An oral care product comprising
(a) an oral care agent having chemical reducing capability selected
from a stannous ion source and phenolics from sources selected from tea,
cranberry, pomegranate and oak bark,
(b) a flavor system comprising flavor oil(s) or extract(s) comprising
no more than 1 ppm by weight dimethyl sulfoxide that is a precursor for
generation of malodor and off-taste, and
(c) an orally-acceptable carrier.

The claims stand rejected under 35 U.S.C. § 103(a) as follows:
• Claims 1 and 2 in view of Shimizu;2
• Claim 6 in view of Shimizu and Netherwood;3
• Claims 7, 9, 10, and 13 in view of Vlock4 and Shimizu; and

2 Shimizu, JP 57200321A, Dec. 8, 1982 (Derwent, Abstract). Although an
English-language translation of Shimizu is of record, the Examiner expressly
relies only on the English abstract of Shimizu, and did not make the full
translation of record until after the Answer was mailed. We therefore rely
only on the Derwent abstract cited in the Answer.
3 Netherwood et al., US 4,476,142, Oct. 9, 1984.
4 Vlock, US 4,242,323, Dec. 30, 1980.
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• Claim 11 in view of Vlock, Shimizu and Sanker.5
In rejecting claims 1 and 2 as obvious in view of Shimizu, the
Examiner finds that Shimizu discloses, but does not exemplify, a “process
for treating peppermint oil wherein the peppermint oil is subjected to a water
washing treatment” (Answer 4-5). The Examiner concludes that it would
have been “obvious to a person of ordinary skill in the art … to use water
washing as the method of purifying the reaction product … because Shimizu
suggests water washing as one of two named methods of purifying the
reaction product” (id. at 5). The Examiner also concludes that the result
would be a flavor oil composition with no more than 1 ppm of DMSO
because Shimizu’s water washing is the same step as recited in claim 1 (id.
at 4).
Appellants argue, among other things, that “Shimizu discloses a
completely different process with a different sequence of steps and process
conditions aimed at achieving a different end result, i.e., removing menthone
present in a dementholated peppermint oil residue” (Appeal Br. 7).
Appellants argue that the “Examiner has not pointed out where in the
Shimizu disclosure would a person of skill in the art be apprised that the
DMSO content of a flavor oil would be reduced to no more than 1 ppm
following Shimizu’s process” (id. at 9).
We agree with Appellants that the Examiner has not provided a
sufficient basis, in evidence or sound technical reasoning, to support the
finding that Shimizu discloses a peppermint oil containing no more than 1
ppm DMSO, as required by claim 1. The Examiner reasons that if a flavor

5 Sanker et al., US 6,042,812, Mar. 28, 2000.
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Application 11/825,278

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oil is “subjected to either [water washing or filtration through a metal oxide
absorbent material], then the flavor oil or extract must necessarily have a
DMSO content of no more than 1 ppm” (Answer 10). The evidence does
not support this reasoning.
The Specification provides evidence that commercially available
peppermint oils have DMSO levels ranging from 181 to 318 ppm (Spec. 7,
Table 1). The Specification provides two working examples of treating a
commercially available peppermint oil by water washing in order to reduce
DMSO levels (see id. at 27-28). In the first example, a peppermint oil
having a starting DMSO level of 307 ppm was mixed with water and stirred;
samples were taken at 35 minutes, 1 hour, and 2 hours (id. at 27:21-25;
28, table). The results showed that only the sample taken after stirring for 2
hours had a DMSO level of <1 ppm, as required by claim 1 (id. at 28, table).
In the second example, a peppermint oil sample “was subjected to water
washing for 5 hours followed by an additional 7 hour washing step with
fresh water” (id. at 28:9-12) in order to reduce its DMSO content by over
99% (id. at 29, Table 2).
The evidence provided by the Specification, therefore, shows that the
washing step recited in claim 1 must be carried out for an extended period
(e.g., 2 hours) in order to achieve the “no more than 1 ppm” DMSO required
by claim 1. In view of this evidence, Shimizu’s passing reference to a water
washing step in its process (“purifying the reaction prod. by water washing,
distn., etc.”; Shimizu 2) is not a sufficient basis to shift the burden to
Appellants to show a difference between the claimed and prior art products.
See In re Best, 562 F.2d 1252, 1255 (CCPA 1977):
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Where … the claimed and prior art products are identical or
substantially identical, or are produced by identical or
substantially identical processes, the PTO can require an
applicant to prove that the prior art products do not necessarily
or inherently possess the characteristics of his claimed product.
(Emphasis added.)
Here, the Examiner has not shown that Shimizu discloses a
peppermint oil product that is substantially identical to the claimed product,
or that is produced by a substantially identical process. The evidence of
record is therefore insufficient to shift the burden of proof to Appellants.
The other rejections on appeal all depend on the Examiner’s finding
that Shimizu discloses a peppermint oil containing no more than 1 ppm
DMSO (Answer 5, 7, 8) and are therefore reversed for the reason discussed
above.
SUMMARY
We reverse all of the rejections on appeal.

REVERSED

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