Ex Parte Yamane et al

Patent Trial and Appeal Board

Aug 23, 2016

13699012 (P.T.A.B. Aug. 23, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/699,012 11120/2012
23909 7590 08/25/2016
COLGATE-PALMOLIVE COMPANY
909 RIVER ROAD
PISCATAWAY, NJ 08855
FIRST NAMED INVENTOR
Odete Tieko Yamane
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.
9058-00-0C 1902
EXAMINER
WEBB, WALTERE
ART UNIT PAPER NUMBER
1612
NOTIFICATION DATE DELIVERY MODE
08/25/2016 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
uspto@thebellesgroup.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ODETE TIEKO YAMANE, FERNANDA CRISTINA GERALDO
CORREA, SANDRA PEREIRA RAMOS, KATRIN CHAVES DA
COSTA, ENZO TOSHIO UTIMA, ERICO VIEIRA PRAT, MICHAEL
PRENCIPE, and RICHARD SCOTT ROBINSON
Appeal2014-008032
Application 13/699,012
Technology Center 1600
Before DEMETRA J. MILLS, ULRIKE W. JENKS and
JOHN E. SCHNEIDER, Administrative Patent Judges.
MILLS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134. The Examiner has rejected
the claims for obviousness. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appeal2014-008032
Application 13/699,012
STATEMENT OF CASE
The following claim is representative.
4. An oral care composition comprising:
from about 30% to about 50%, by weight, calcium carbonate;
from about 0.2% to about 0.3% by weight, benzyl alcohol;
from about 0.05% to about 2%, by weight, of one or more
precipitation agents selected from sodium silicate and
tetrasodium pyrophosphate; and
from about 0.05% to about 2%, by weight, of one or more
calcium ion scavenging agents selected from monosodium
phosphate, disodium hydrogen phosphate and sodium
bicarbonate;
one or more pH modifying agents selected from the group
consisting of sodium hydroxide, potassium hydroxide, phosphoric
acid, benzoic acid and citric acid;
and wherein the pH of the composition is from about 9 .3 to
about 9.6.
Cited References and Grounds of Rejection
Claims 4, 5, 14, 17, 37 and 38 are rejected under 35 U.S.C. 103(a) as
being unpatentable over Prencipe et al. (WO 2009/099455 Al, published
Aug. 13, 2009 ("Prencipe")), in view of Roberts et al. (US 3,622,662, issued
Nov. 21, 1969 ("Roberts").
FINDINGS OF FACT
The Examiner's findings of fact are set forth in the Answer at pages
2-7. The following facts are highlighted.
1. The Appellants' Specification states that the oral care composition
may contain, "from about 0.2% to about 0.5%, by weight, benzyl
alcohol." ,-r 23.
2. The Appellants' Specification states that the pH of the oral care
composition
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Application 13/699,012
iT 27.
is from about 9 to about 10. In other embodiments, the pH of the
composition is from about 9 .2 to about 9 .8. Still other
embodiments provide compositions wherein the pH of the
composition is from about 9 .3 to about 9 .6. In some
embodiments, the pH of the composition is about 9.5.
3. Prencipe teaches an oral care composition wherein the pH is about
6 to about 9, e.g., about 6.5 to about 7.4 or about 7.5 to about 9.
i-fl .0.30.
4. Roberts teaches an oral care composition comprising "said benzyl
alcohol being present in an amount of about 0.5-10 percent by
weight." Claim 1.
5. Roberts, teaches that "[b ]enzyl alcohol is incorporated into the
dental cream to effect mild desensitization of tender membranes in
the oral cavity. It is generally employed in amounts of about 0.5-
10 per cent by \veight, preferably about 0.75-5.0 percent, and most
preferably about 1.0-2 percent." Col. 1, 11. 54-57.
PRINCIPLES OF LAW
In making our determination, we apply the preponderance of the
evidence standard. See, e.g., Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427
(Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings
before the Office).
"The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results."
KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).
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Application 13/699,012
The term, "about" is not an arbitrary term, but rather is a flexible word
with a meaning similar to "approximately" or "nearly." Ex parte Eastwood,
163 USPQ 316, 317 (BPAI 1968,)
Rejection - Obviousness
We agree with the Examiner's fact finding, statement of the rejection
and responses to Appellants' arguments as set forth in the Answer. We find
that the Examiner has provided evidence to support a prima facie case of
obviousness. We provide the following additional comment to the
Examiner's argument and rebuttal as set forth in the Final Rejection and
Answer. Appellants do not argue the claims separately, therefore, we select
claim 1 as representative claim.
The Examiner finds that Prencipe teaches an oral care composition
having each element claimed except benzyl alcohol. Ans. 2. The Examiner
relies on Roberts to make up for the deficiency of Prencipe. Roberts teaches
the inclusion of benzyl alcohol in an oral care composition to effect mild
desensitization of tender membranes in the oral cavity. Ans. 2-3. The
Examiner concludes that
It would have been obvious to a person having ordinary skill in
the art at the time of applicant's invention to add the benzyl alcohol of
Roberts to the oral compositions of Prencipe et al. for the advantage
of providing the oral compositions of Principe with an agent that has a
mild desensitizing effect on the gums to permit facile cleansing of
tender areas of the oral cavity, as taught in Roberts.
Ans. 3.
Appellants contend that there is no motivation to combine the cited
references because Principe is concerned with reducing bacterial attachment
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Application 13/699,012
and biofilm formation and Appellants' compositions are directed toward
providing resistance or reducing bacterial growth. Br. 6. We are not
persuaded. Both of the prior art compositions are directed to oral care
compositions. The Examiner has explained that the motivation to combine
the cited references is for the advantage of providing the oral compositions
of Principe with an agent that has a mild desensitizing effect on the gums to
permit facile cleansing of tender areas of the oral cavity, as taught in
Roberts. The law does not require that the teachings of the reference be
combined for the reason or advantage contemplated by the inventor, as long
as some suggestion to combine the elements is provided by the prior art as a
whole. In re Beattie, 974 F.2d 1309, 1312 (Fed. Cir. 1992); In re Kronig,
539 F.2d 1300, 1304 (CCPA 1976).
Appellants contend that
Both Prencipe and Roberts, individually and in combination,
fail to teach all of the limitations of Appellants' claims. Specifically,
claims 4 and 5 recite "about 0.2% to about 0.3%, by weight, benzyl
alcohol." While Prencipe completely fails to teach or suggest any
benzyl alcohol, Roberts teaches using benzyl alcohol in an amount of
at least 0.5%. (Roberts, col. 1, lines 56-58, "about 0.5-10% by
weight, preferably about 0.75-5.0 percent, and most preferably about
1.0-2 percent." Examples 1-3, claims 1, 3, 9, 14). In other words,
Roberts teaches to benzyl alcohol in an amount that is at least more
than 60% higher than Appellants' claims. As such, the combination
of Prencipe in view of Roberts fails to teach this limitation.
Br. 8-9.
The Examiner responds arguing that
Appellant is incorrect in stating that Roberts limits benzyl
alcohol to at least 0.5%. Roberts clearly teaches an amount of "about
0.5" percent (col. 1, lines 54-57). As indicated above, the term
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Application 13/699,012
"about" is inclusive of amounts above and below the recited number.
Thus, Roberts teaches amounts below 0.5%, which establishes a prima
facie case obviousness insofar as the about 0.5 overlaps with about
0.3, as claimed. MPEP 2131.03 goes further stating that a prima facie
case of obviousness exists where the claimed ranges and prior art
ranges do not overlap but are close enough that one skilled in the art
would have expected them to have the same properties. Arguably,
"about 0.5" overlaps with "about 0.3", but given the proximity of the
values and their ranges, one skilled in the art would have also
expected an amount of about 0.3 and about 0.5 to provide the same
properties.
Ans. 6-7. Furthermore, Appellants' Specification indicates that the amount
of benzyl alcohol in the oral composition ranges "from about 0.2% to about
0.5%, by weight, benzyl alcohol." i-fi-122, 23. Appellants do not indicate any
criticality in the claimed range endpoints for the amount of benzyl alcohol in
the Specification, and higher amounts ofbenzyl alcohol, about 0.5%, are
acceptable. The term, "about" is not an arbitrary term, but rather is a flexible
\'l/ord \'l1ith a meaning similar to "approximately" or "nearly." Ex parte
Eastwood, 163 USPQ 316, 317 (BP AI 1968). We therefore agree with the
Examiner that the claim 1 requirement of "about 0.3% by weight, benzyl
alcohol," reads on Roberts "about 0.5%, by weight, benzyl alcohol" in an
oral care composition.
"[I]t is not inventive to discover the optimum or workable ranges by
routine experimentation." In re Aller, 220 F.2d 454, 456 (CCPA 1955). In
re Boesch, 617 F.2d 272, 276 (CCPA 1980). "[T]he discovery of an
optimum value of a variable in a known process is normally obvious."
Exceptions to this rule include (1) the results of optimizing a variable were
unexpectedly good and (2) the parameter optimized was not recognized in
the prior art as one which would affect the results. In re Antonie, 559 F.2d
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Application 13/699,012
618, 620 (CCP A 1977). Appellants have not established any exceptions to
the rule apply with respect to the optimization of the amount of benzyl
alcohol in the present case.
The Examiner makes a similar argument with respect to the claimed
pH finding that, "the term 'about' includes amounts above and below the
value recited. Accordingly, a prima facie case of obviousness exists insofar
as the claimed range of 'about 9.3 to about 9.6' overlaps with the prior art
[Prencipe] range of 'about 9'." Ans. 6. Furthermore, the Appellants'
Specification states that the pH of the oral care composition is from about 9
to about 10, disclosing no criticality in the pH endpoints, and contemplating
endpoints of a pH of about 9. FF2. Appellants provide no evidence of
criticality with respect to the pH values, particularly given that the
"[a]pplication's use of the term 'about' shows that the applicants did not
intend to limit the claimed ranges to their exact end-points." In re Harris,
409 F.3d 1339, 1343 (Fed. Cir. 2005). 1A .. ppellants have come forth \vith no
evidence to rebut the Examiner's prima facie case of obviousness with
respect to either the amounts of benzyl alcohol or the pH of the prior art oral
care compositions.
With respect to Appellants' sodium hydroxide arguments on pages 4-
5 of the Brief, we note that the claim 1 is not limited to sodium hydroxide, as
claim 1 recites that the "one or more pH modifying agents selected from the
group consisting of sodium hydroxide, potassium hydroxide, phosphoric
acid, benzoic acid and citric acid." Emphasis added. Prencipe discloses the
inclusion of phosphoric acid in an oral care composition. Ans. 2; Prencipe i-f
81.
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Application 13/699,012
Additional arguments presented by Appellants have been responded to
by the Examiner in the Answer at pages 3-7. We adopt the Examiner's
responses to these arguments as our own. In sum, we agree that the
Examiner has established a prima facie case of obviousness, with proper
motivation in the prior art to combine the cited references, which has not
been rebutted by Appellants. The preponderance of the evidence weighs in
favor of the Examiner's findings.
The obviousness rejection is affirmed for the reasons of record.
CONCLUSION OF LAW
The cited references support the Examiner's obviousness rejection,
which are affirmed for the reasons of record. All pending, rejected claims
fall.
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