Ex Parte Xu et al

Patent Trials and Appeals Board

Jun 18, 2019

15234362 - (D) (P.T.A.B. Jun. 18, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
15/234,362 08/11/2016
23909 7590 06/20/2019
COLGATE-PALMOLIVE COMPANY
909 RIVER ROAD
PISCATAWAY, NJ 08855
FIRST NAMED INVENTOR
Shaopeng Xu
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.
10710-00-US-01-0C 9052
EXAMINER
RONEY, CELESTE A
ART UNIT PAPER NUMBER
1612
NOTIFICATION DATE DELIVERY MODE
06/20/2019 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):
Patent_Mail@colpal.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SHAOPENG XU and PENG YAN
Appeal 2019-001199
Application 15/234,362
Technology Center 1600
Before JEFFREY N. FREDMAN, JOHN G. NEW, and JAMIE T. WISZ,
Administrative Patent Judges.
WISZ, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellants 1 seek review of claims
1-7 and 9.2 We have jurisdiction under 35 U.S.C. § 6(b).
For the reasons set forth below, we affirm.
1 Appellants identify the real party in interest as Colgate-Palmolive
Company. App. Br. 2.
2 Claims 8, 11, and 12 have been canceled and claim 10 has been withdrawn.
Appeal 2019-001199
Application 15/234,362
STATEMENT OF THE CASE
The Specification describes oral care compositions comprising 4-
(aminomethyl)benzoic acid in an amount of from 0.05 weight% to 5 weight
%, based on the total weight of the composition. Spec. ,-J 3. Claim 1, the
only independent claim, is set forth below:
An oral care composition comprising 4-(aminomethyl)benzoic
acid in an amount of from 0.05 weight% to 5 weight%, based
on the total weight of the composition, wherein the composition
is a toothpaste, tooth gel, mouth wash, mouth rinse, spray, strip,
chewing gum, lozenge, chewable tablet, dissolvable tablet, or
confectionary item.
App. Br. 11 (Exhibit 1 ). Dependent claims 2-4 recite compositions with 4-
( aminomethyl)benzoic acid at lower weight %'s. Id.
The Examiner rejected claims 1-7 and 9 under 35 U.S.C. § 103(a) as
being obvious over Shapiro3 in view of the Scientific Committee on
Consumer Products ("SCCP"). 4
ISSUES AND ANALYSIS
We affirm the Examiner's obviousness rejection. We address the
arguments raised by Appellants below.
3 Howard K. Shapiro, US 2005/0090553 Al, published Apr. 28, 2005
("Shapiro").
4 Scientific Committee on Consumer Products SCCP Opinion on 4-
Aminobenzioc acid (PABA), EUROPEAN COMMISSION, HEALTH & CONSUMER
PROTECTION DIRECTORATE-GENERAL 3-48 (2006), https://ec.europa.eu/
health/ph risk/committees/04 seep/docs/seep o 058.pd f;6/20/06)
- - --
("SCCP").
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Appeal 2019-001199
Application 15/234,362
Obviousness
The Examiner finds that Shapiro discloses compositions comprising
p-aminobenzoic acid, including p-aminomethyl benzoic acid ( also known as
4-aminomethyl benzoic acid), as an orally consumed therapeutic agent.
Final Act. 2 ( citing Shapiro, Abstract, ,i,i 93, 248). The Examiner also finds
that Shapiro, at Example 1, discloses a composition with 11 % p-
aminomethylbenzoic acid. Id. at 2-3. The Examiner further finds that the
compositions disclosed in Shapiro are formulated as a mouthwash or
toothpaste. Id. at 3 ( citing Shapiro ,i 242).
The Examiner concedes that Shapiro does not disclose the amount of
active ingredient as recited in claim 1 (e.g., 0.05-5%); however, the
Examiner relies on SCCP for this disclosure. Id. Specifically, the Examiner
finds that SCCP "teaches that 4-aminobenzoic acid is safe for the consumer
in a concentration of up to 5% (page 3, number 2.2)." Id.
The Examiner concludes that:
Shapiro is not silent as the amount of the p-aminomethyl
benzoic acid, as discussed above, though not as specific as the
amount instantly recited. However, the Scientific Committee on
Consumer Products advises that this ingredient is safe for
consumers in amounts of up to 5 %, an amount that overlaps
that which is instantly recited. This ingredient, and its amount,
is recognized to have different effects (greater or less consumer
safety, as advised by the SCCP) with changing amounts used.
Thus, the general condition (the concentration) is known and is
recognized to be result effective. As such, result effective
variables can be optimized by routine experimentation, and it
would have been prima facie obvious to have optimized the
amount of the p-aminomethyl benzoic acid present in the
composition taught by Shapiro, as advised by the SCCP.
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Application 15/234,362
Id. The Examiner also finds that "the compositions of the instant claims and
those of the prior art would reasonably be expected to have substantially the
same physical and chemical properties ( e.g., reduce or inhibit gum
bleeding)." Id. at 4.
Appellants assert that "Shapiro does not disclose or suggest a
composition comprising 0.05-5% (0.1-1 %, 0.1-0.5%, or about 0.3%)
p-aminomethylbenzoic acid, as recited in claims 1-4" and that SCCP does
not cure this deficiency because "SCCP only discloses a range of 4-
aminobenzoic acid in cosmetic products but does not disclose or suggest
anything at all regarding the amount of 4- aminomethylbenzoic acid. SCCP
does not even disclose 4- aminomethylbenzoic acid. Thus, the range
disclosed in SCCP does not apply to 4-aminomethylbenzoic acid." App. Br.
5.
Appellants also argue that:
SCCP relates to safety evaluation of 4-aminobenzoic acid as a
UV filter in cosmetic products, whereas Shapiro relates to
compositions that can be used for clinical treatment of a class of
chronic inflammatory diseases. Since 4-aminobenzoic acid is
used for different purposes in SCCP and Shapiro, one of skill in
the art would not be motivated to modify the amount of 4-
amino benzoic acid, much less the amount of 4-
aminomethylbenzoic acid, in Shapiro's composition for clinical
treatment based on the amount of 4-aminobenzoic acid used as
a UV filler in cosmetic products.
App. Br. 7.
The Examiner concedes that 4-aminomethylbenzoic acid and 4-
aminobenzoic acid are different compounds, but finds that Shapiro generally
discloses 4-aminobenzoic acid and "it is reasonable to assume that the
SCCPs disclosure of a safe amount of 4-aminobenzoic acid could be
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Appeal 2019-001199
Application 15/234,362
included within Shapiro's disclosure of compositions containing 4-
aminomethylbenzoic acid." March 8, 2018 Adv. Act. 2. The Examiner also
finds that "SCCP teaches oral compositions formulated as liquids, and as
such, the SCCP teaches compositions exclusive of cosmetic UV filters."
Ans. 10.
Lastly, Appellants argue that "the present application provides data
demonstrating that the toothpaste containing 0.3 weight% 4-
aminomethylbenzoic acid has a significantly lower Prothrombin time than
the control toothpaste (Table 2)" and that "a low amount of 4-
aminomethylbenzoic acid, which falls within the ranges recited in claims 1-
4, can be applied in toothpaste to deliver gum bleeding relief efficacy."
App. Br. 9. Appellants conclude that "[t]here is no teaching or suggestion in
the cited references that a low amount (0.3%) of 4-aminomethylbenzoic acid
in an oral care composition would deliver gum bleeding relief efficacy.
Thus, Appellants submit that the data in the present application is
unexpected." Id. at 9-10.
Having considered Appellants' arguments, we are not persuaded of
any reversible error in the Examiner's rejection of claim 1. Shapiro
discloses the use of p-aminomethylbenzoic acid in a composition used to
treat chronic gingivitis and/or chronic periodontitis. Shapiro ,-J,-J 226, 248.
Shapiro also discloses the use of p-aminobenzoic acid in these compositions.
Id. SCCP similarly discloses the use of p-aminobenzoic acid, including in
oral formulations (see, e.g., SSCP 13-14, 17-18, 24-25), and states that "the
maximum authori[ z Jed concentration in finished cosmetic products is 5 %. "
SSCP 3. Therefore, it would have been obvious to one of skill in the art to
look to the teachings of S SCP in determining the amount of 4-
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Application 15/234,362
aminomethylbenzoic acid to include in its compositions. Although
Appellants assert that SCCP is directed to p-aminobenzoic acid rather than
p-aminomethylbenzoic acid, they have not pointed to any meaningful
differences in the compounds that would have led one of skill in the art to
discredit the teachings of SCCP.
Even assuming arguendo that one of skill in the art would not look to
SCCP to determine the appropriate weight %, Shapiro discloses
compositions for treating chronic gingivitis and/or chronic periodontitis with
11 % p-aminomethylbenzoic acid and it would have been obvious to one
skilled in the art to optimize the weight % of the p-aminomethylbenzoic acid
in these compositions. Schapiro indicates that such optimization is routine
in stating that "the optimum dosage must be determined on an individualized
basis, and may be below or above the dosage range generally recognized for
public use." Schapiro ,i 225. See In re Aller, 220 F.2d 454,456 (CCPA
1955) ("[W]here the general conditions of a claim are disclosed in the prior
art, it is not inventive to discover the optimum or workable ranges by routine
experimentation.").
Furthermore, "a prima facie case of obviousness exists when the
claimed range and the prior art range do not overlap but are close enough
such that one skilled in the art would have expected them to have the same
properties." In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003). While
the amount of p-aminomethylbenzoic acid in Shapiro does not fall within the
claimed range of claim 1, the 11 % p-aminomethylbenzoic acid of Shapiro is
reasonably interpreted as close enough to the claimed 0.05 to 5% such that
the composition of Shapiro would, absent evidence to the contrary, be
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Appeal 2019-001199
Application 15/234,362
expected to have the same properties regarding reducing gum bleeding. As
discussed below, Appellants have not presented any such evidence.
Appellants argue that the 11 % p-aminomethylbenzoic acid
composition of Shapiro does not fall within the claimed 0.05-5% range;
however, Appellants have not submitted evidence establishing criticality of
the claimed range or comparing representative samples of the claimed
compositions with representative samples of the compositions disclosed in
the prior art to establish unexpected results, nor is there such exemplification
in Appellants' Specification. "The law is replete with cases in which the
difference between the claimed invention and the prior art is some range or
other variable within the claims. These cases have consistently held that in
such a situation, the applicant must show that the particular range is critical,
generally by showing that the claimed range achieves unexpected results
relative to the prior art range." In re Woodruff, 919 F. 2d 1575, 1578 (Fed.
Cir. 1990).
Although Appellants point to data from their Specification as
evidence of unexpected results, none of this data compares compositions
having 0.05-5% p-aminomethylbenzoic acid as claimed, with compositions
having 11 % p-aminomethylbenzoic acid as taught by Shapiro. Therefore,
Appellants do not provide comparative evidence of unexpected results
relative to the closest prior art. See In re Baxter Travenol Labs., 952 F.2d
388, 392 (Fed. Cir. 1991) ("[W]hen unexpected results are used as evidence
of nonobviousness, the results must be shown to be unexpected compared
with the closest prior art."). Consequently, we do not find that Appellants
have established unexpected results or other criticality of the claimed range.
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Appeal 2019-001199
Application 15/234,362
For the reasons described herein and those already of record, we
affirm the Examiner's rejection of claim 1. With regard to claims 2-4,
which recite different weight% ranges for p-aminomethylbenzoic acid, we
find that the same rationale with respect to claim 1 above applies.
Therefore, we also affirm the rejection of claims 2-4. Claims 5-7 and 9 are
not argued separately, and fall with claim 1. See 37 C.F.R. § 41.37(c)(l)(iv).
CONCLUSION
We affirm the Examiner's obviousness rejections of claims 1-7 and 9.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l .136(a)(l )(iv).
AFFIRMED
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