Ex Parte Zimmer et al

Patent Trial and Appeal Board

Mar 25, 2013

10498167 (P.T.A.B. Mar. 25, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/498,167 02/28/2005 Jose Zimmer 0002046USU/4100 3104
27623 7590 03/25/2013
OHLANDT, GREELEY, RUGGIERO & PERLE, LLP
ONE LANDMARK SQUARE, 10TH FLOOR
STAMFORD, CT 06901
EXAMINER
KRASS, FREDERICK F
ART UNIT PAPER NUMBER
1612
MAIL DATE DELIVERY MODE
03/25/2013 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte JOSE ZIMMER and JORG HINRICH
__________

Appeal 2012-001315
Application 10/498,167
Technology Center 1600
__________

Before TONI R. SCHEINER, LORA M. GREEN, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

GREEN, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner’s rejection of claims 1-9 and 14-19. We have jurisdiction under
35 U.S.C. § 6(b).
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STATEMENT OF THE CASE
Claim 1 is representative of the claims on appeal, and reads as
follows:
1. A method of using glass ceramic in oral hygiene and/or dental care,
comprising:
applying a composition selected from the group consisting of a
toothpaste, a tooth cream, a gel, a mouthwash, a dental floss, dental tape,
antiseptic solutions, chewing gum, and a tooth treatment agent to the mouth
of a user, said composition comprising, on an oxide basis:
SiO2 30 to 70 weight-percent;
Na2O 0 to 40 weight-percent;
K2O 0 to 40 weight-percent;
CaO 5 to 40 weight-percent;
MgO 0 to 40 weight-percent;
Al2O3 0 to 5 weight-percent;
P2O5 0 to 20 weight-percent;
B2O3 0 to 5 weight-percent;
ZnO 0 to 10 weight-percent; and

0 to 30 weight-percent XFy, wherein X is selected from the group
consisting of Na, K, Mg, and Ca, and y is equal to 1 or 2, and the sum of
Na2O + K2O + CaO is greater than 10 weight-percent and less than 70
weight-percent.

The following grounds of rejection are before us for review:
I. Claims 1-9, 14, 15, 17, and 18 stand rejected under 35 U.S.C.
§ 103(a) as being rendered obvious by the combination of
Broemer1 and Litkowski2 (Ans. 5).

1 Broemer et al., US Patent No. 3,981,735, issued September 21, 1976.
2 Litkowski et al., US Patent No. 6,086,374, issued July 11, 2000.
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II. Claim 16 stands rejected under 35 U.S.C. § 103(a) as being
rendered obvious by the combination of Broemer and Litkowski as
further combined with Simon3 (Ans. 8).
III. Claim 19 stands rejected under 35 U.S.C. § 103(a) as being
rendered obvious by the combination of Broemer and Litowski as
further combined with Hench4 (Ans. 9).

We affirm.
ANALYSIS
Obviousness over the combination of Broemer and Liktowski
The Examiner relies on Broemer for teaching a glass ceramic
material, wherein the sum of Na2O + K2O + CaO is greater than 10 weight-
percent and less than 70 weight-percent (Ans. 5). The Examiner also finds
that Broemer teaches that the ceramic material may be used to replace teeth,
and has the Apatite structure required for intimate intergrowth (id. at 6). The
Examiner notes that Broemer does not teach “that the composition is applied
as a toothpaste” (id.).
The Examiner finds that Litkowski “teaches bioactive glass
compositions that can be used in conjunction with toothpastes for the
reduction of dentin sensitivity, tooth surface remineralization and as a
component in tooth restorative materials” (id.). The Examiner also finds that
Litkowski teaches that the “bioactive and biocompatible glass can be
formulated into toothpastes, mouthwashes, and gels” (id.).

3 Simon et al., US Patent No. 4,592,487, issued June 3, 1986.
4 Hench et al., US Patent No. 6,190,684 B1, issued February 20, 2001.
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The Examiner concludes that it would have been obvious to use the
bioactive glass ceramic of Broemer in a toothpaste composition as the
bioactive glass of Litkowski and the bioactive glass ceramic of Broemer
“both function to remineralize teeth and can also be used in dental
restoration” (id. at 7).
As to claims 1, 5, 6, 14, 15, 17, and 18, of which we choose claim 1 as
representative, Appellants argue that the Examiner improperly combined
Broemer and Litkowski, as the references are non-analogous (App. Br. 5).
Specifically, Appellants assert that Broemer “describes a biocompatible
glass ceramic material that is exclusively used as replacement material for
replacing bones and teeth and for prosthetic purposes in humans and
animals” (id. at 6).
Appellants further assert that even though Broemer discloses that the
glass ceramic may be milled, Broemer fails to teach or suggest the use of the
milled particles in a toothpaste or gel (id. at 8). Appellants argue that
deficiency is not remedied by Litkowski, as Litkowski is drawn to glass
compositions (id.). Appellants assert that “the glass compositions of
Litkowski cannot reasonably be equated with the glass ceramic material”
required by claim 1, “such that one skilled in the art would have any
motivation to think that the glass material of Litkowski could be replaced by
the replacement material of Broemer, which would need to be modified to be
used as an abrasive” (id.).
Appellants’ arguments are not convincing.
“‘A reference is reasonably pertinent if, even though it
may be in a different field from that of the inventor’s endeavor,
it is one which, because of the matter with which it deals,
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logically would have commended itself to an inventor’s
attention in considering his problem.’ In re Clay, 966 F.2d 656,
659 (Fed.Cir.1992). In other words, ‘familiar items may have
obvious uses beyond their primary purposes.’ KSR Int’l Co. v.
Teleflex, Inc., 550 U.S. 398, [402], 127 S.Ct. 1727, 1742
(2007).”

In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379-80 (Fed. Cir.
2007) (a reference describing a folding bed found pertinent to appellants’
folding treadmill).
Here, Litkowski teaches glass phosphate cement compositions and
their use as surgical implant materials to fill cavities in bone and canals in
teeth, and also teaches that various bioactive and biocompatible glass
materials have been developed as bone replacement materials (Litkowski,
col. 2, ll. 22-34). Litkowski thus directs the ordinary artisan to bone
replacement materials, such as the glass ceramic materials of Broemer.
Thus, Broemer is not nonanalogous art to Litkowski.
Moreover, as found by the Examiner, Broemer specifically teaches
that the glass ceramic material may be used as a bone or tooth replacement
(Broemer, col. 4, ll. 57-59). Broemer also teaches that the glass ceramic
material can be milled (id. at col. 10. ll. 3-7). Thus, we agree with the
Examiner that the ordinary artisan would have replaced the biocompatible
glass of Litkowski with the biocompatible glass ceramic of Broemer to
arrive at the method of claim 1.
Appellants also argue that there is nothing in Broemer that would
teach or suggest the limitation of claim 1 that “the sum of Na2O + K2O +
CaO is greater than 10 weight-percent and less than 70 weight-percent”
(App. Br. 9). Specifically, Appellants assert that “one would have to
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selectively pick and choose from among the stated ranges for its various
components to achieve the claimed sum, yet there is no disclosure or
suggestion in Broemer regarding limiting its composition by the claimed
range for this summation” (id.).
Appellants’ arguments are again not convincing. As found by the
Examiner (Ans. 5), Broemer teaches that Na2O is about 2.7 to 12%, K2O is
about 0.4 to 6.8%, and CaO is about 10.0 to 23.6% calcium oxide, and thus
the sum of Na2O + K2O + CaO is greater than 10 weight-percent and less
than 70 weight-percent. That is, the sum is between 13.1 to 42.4%, which is
greater than 10 weight-percent and less than 70 weight-percent.
Appellants also point to Figures 19-21 and 24-26, as well as Table 9
of the present Specification, asserting that “the present application provides
evidence that a glass ceramic, as claimed, provides completely different
properties compared with an equivalent glass, as disclosed by Litkowski”
(App. Br. 8).
The burden of demonstrating unexpected results rests on the party
asserting them. In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). It is well
settled that results must be established by factual evidence. Mere argument
or conclusory statements in the specification does not suffice. In re
DeBlauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). In addition, “when
unexpected results are used as evidence of nonobviousness, the results must
be shown to be unexpected compared with the closest prior art.” In re
Baxter-Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991).
Here, Appellants do not explain how Figures 19-21 and 24-26, as well
as Table 9 are unexpected, nor do they point to data comparing the use of the
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glass ceramic material, such as that taught by Broemer, to the glass material
as taught by Litkowski.
As to claims 2-4 and 7-9, Appellants essentially reiterate the
arguments made with respect to claim 1 (App. Br. 12-14). Those arguments
are not found to be convincing for the reasons set forth with respect to claim
1.

Obviousness over the combination of Broemer, Litkowski, and Simon
Claim 16 is drawn to the method of claim 1, “wherein said
composition further comprises metal ions selected from the group consisting
of Ag, Au, I, Cu, and Ce, said metal ions comprising less than 2 weight-
percent.”
The Examiner relies upon the combination of Broemer and Litkowski
as set forth above (Ans. 8). The Examiner notes that the combination does
not teach “a composition comprised of iodine” (id.).
The Examiner relies on Simon for teaching the use of iodophor as a
source of iodine in dentifrices (id.). The Examiner finds that Simon teaches
that “[i]odine has activity against microbes and plaque which results from
gradual buildup of microorganisms on the enamel and adjacent surfaces of
the dental structure of teeth” (id. at 8-9). The Examiner thus concludes it
would have been obvious to use iodophor in the composition used in the
method taught by the combination of Broemer and Litkowski because of its
antimicrobial properties (id. at 9).
Appellants argue that the claim recites, in relevant part, “that the
composition further comprises ‘metal ions selected from the group
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consisting of Ag, Au, I, Cu, and Ce, said metal ions comprising less than 2
weight-percent’” (App. Br. 10). Appellants assert that Simon does not cure
the deficiency of Broemer and Litkowski (id.). Specifically, Appellants
argue that “Simon is directed to a dentifrice having iodophor as a source of
derived iodine,” and “has nothing to do with glass ceramics as in claim 16”
(id.). Appellants argue that “there is no hint or suggestion in Simon that the
glass ceramic replacement material of Broemer could be successfully
modified to include the ions recited by claim 16, while maintaining this
property” (id.).
Appellants’ arguments are not convincing. As noted by the Examiner,
the claims are drawn to a method of using a composition that comprises a
glass ceramic, and also comprises one of the recited metal ions. Stated
differently, there is nothing in claim 16 that requires the iodophor to be
incorporated into the glass ceramic, but only into the toothpaste, a tooth
cream, a gel, a mouthwash, a dental floss, dental tape, antiseptic solutions,
chewing gum, or a tooth treatment agent, to be used in the method of claim
1.

Obviousness over the combination of Broemer, Litkowski, and Hench
Claim 19 requires that “the glass ceramic has a particle size that is
larger than 100 μm.”
The Examiner relies upon the combination of Broemer and Litkowski
as set forth above (Ans. 9). The Examiner notes that the combination does
not teach “the size of the glass ceramic particle is greater than 100 μm” (id.).
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The Examiner relies on Hench for teaching “suspensions of bio-active
glass for the repair of hard tissues in mammals” (id.). The Examiner finds
further that “[a] preferred range for particles is between about 10 and 350
microns” (id. at 10).
The Examiner concludes that it would have been obvious to mill the
glass ceramic material of Broemer for use in the method of the combination
of Broemer and Litkowski since Broemer teaches that the glass ceramic
material can be milled, and Hench teaches a “preferred size of particle from
about 10 to 350 microns for incorporation into compositions, such as pastes,
for dental restoration, i.e. dental care” (id.). The Examiner also notes that it
would have been obvious to optimize the particle size through routine
experimentation to achieve the desired remineralization (id.).
Appellants argue that the claim requires “that the glass ceramic has ‘a
particle size that is larger than 100 μm’” (App. Br. 11). Appellants assert
that Hench is drawn to “injectable suspensions of bio-active glass for the
repair of hard tissue in mammals,” and does not relate to glass ceramic (id.).
Appellants also point to Figures 19-21 and 24-26, as well as Table 9 of the
present Specification, asserting that “the present application provides
evidence that a glass ceramic, as claimed, provides completely different
properties compared with an equivalent glass, such as the glass disclosed by
Hench” (id.).
Appellants’ arguments are not convincing. As to Figures 19-21 and
24-26, as well as Table 9 of the present Specification, Appellants attention is
directed to the response to that argument above. Moreover, as to the
combination, Hench teaches that preferred size of particle from about 10 to
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350 microns for incorporation into compositions for dental restoration,
defects in bone, etc. (Hench, col. 2, ll. 40-46). “[W]here 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.” In re Aller, 220
F.2d 454, 456 (CCPA 1955).

SUMMARY
The rejections on appeal are affirmed.

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

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