Swapna Basa et al.

Patent Trials and Appeals Board

Oct 18, 2019

15347824 - (D) (P.T.A.B. Oct. 18, 2019)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
15/347,824 11/10/2016 Swapna Basa AA1044 7229
27752 7590 10/18/2019
THE PROCTER & GAMBLE COMPANY
Global IP Services
Central Building, C9
One Procter and Gamble Plaza
CINCINNATI, OH 45202
EXAMINER
LIU, TRACY
ART UNIT PAPER NUMBER
1612
NOTIFICATION DATE DELIVERY MODE
10/18/2019 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):
centraldocket.im@pg.com
mayer.jk@pg.com
pair_pg@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte SWAPNA BASA, ROSS STRAND, JAMES ALBERT BERTA,
and HONGMEI YANG
__________

Appeal 2019-0043761
Application 15/347,824
Technology Center 1600
__________

BEFORE DONALD E. ADAMS, RYAN H. FLAX, and
CYNTHIA M. HARDMAN, Administrative Patent Judges.
HARDMAN, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1–20. Final Act. 1. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 This appeal is related to Appeal No. 2019-004377 (Application
15/347,837), which is also presently before the Board.
2 We use the word “Appellant” to refer to “Applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies the real party in interest as “The
Procter & Gamble Company.” Appeal Br. 1.
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STATEMENT OF THE CASE
The claims are directed to dentifrice compositions. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A dentifrice composition comprising:
(a) 45% to 75%, by weight of the composition, of water;
(b) 25% to 50%, by weight of the composition, of a
calcium carbonate,
wherein the calcium carbonate has a particle distribution
size of D98 greater than 26.0 microns as measured by
laser diffraction particle sizing per method ISO 13320-1-
1999;
(c) 0.0025% to 2%, by weight of the composition, of a
fluoride ion source; and
a pH greater than 8.
Appeal Br. 4 (Claims Appendix).
Claims 1–20 are on appeal. Final Act. 2. The claims stand rejected as
follows:
Claims 1–4, 9, 10, and 13–20 are rejected under 35 U.S.C. § 103 as
being unpatentable over Midha,3 Gerard,4 Fahnestock,5 and Snorek.6 Final
Act. 3.
Claims 5–8 are rejected under 35 U.S.C. § 103 as being unpatentable
over Midha, Gerard, Fahnestock, Snorek, and Deckner.7 Final Act. 9.

3 Midha et al., US 2014/0308321 A1, published Oct. 16, 2014 (“Midha”).
4 Gerard et al., EP 3,045,503 A1, published July 20, 2016 (“Gerard”).
5 Fahnestock et al., US 2010/0247589 A1, published Sept. 30, 2010
(“Fahnestock”).
6 Snorek et al., PQRI Recommendations on Particle-Size Analysis of
Drug Substances Used in Oral Dosage Forms, 96(6) J. Pharm. Sci. 1451–67
(2007) (“Snorek”).
7 Deckner et al., US 2010/0136069 A1, published June 3, 2010 (“Deckner”).
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Claims 11 and 12 are rejected under 35 U.S.C. § 103 as being
unpatentable over Midha, Gerard, Fahnestock, Snorek, and Robinson.8 Final
Act. 10.
Claims 1–20 are provisionally rejected on the ground of nonstatutory
double patenting over each of (1) claims 1 and 4–15 of copending
Application No. 15/347,823, (2) claims 1, 7, 10 and 16–20 of copending
Application No. 15/347,837,9 (3) claim 1 of copending Application No.
15/347,830, (4) claims 1 and 8–20 of copending Application No. 15/347,821
(now US 10,213,370), (5) claims 1, 10–14, and 17–19 of copending
Application No. 15/347,840 (now US 10,226,410), (6) claims 1–3, 6–9, and
16–19 of copending Application No. 15/347,897, and (7) claims 1, 5–8, 11,
14, and 17–19 of copending Application No. 14/830,831 (now US
10,226,414), in view of Midha, Gerard, Fahnestock, and Snorek.10 Final
Act. 13.

8 Robinson et al., US 2013/0224270 A1, published Aug. 29, 2013
(“Robinson”).
9 The Examiner cited Application No. 15/347,827, rather than Application
No. 15/347,837. This appears to have been a typographical error.
Application No. 15/347,827 is not commonly-owned with the present
application, and does not relate to dentifrice compositions. Further, upon
review of the record in the related Appeal No. 2019-004377 (Application
15/347,837), the Examiner made a corresponding provisional nonstatutory
double patenting rejection over the claims of the instant application.
10 Although the Examiner listed “Koyasu et al. (Dental Materials Journal,
Mar. 4, 2014)” as one of the nonstatutory double patenting references, this
appears to have been an error, because the Examiner’s analysis is based on
the specified copending applications, in view of Midha, Gerard, Fahnestock,
and Snorek. Final Act. 13–14.
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ANALYSIS
Obviousness
Because the same issues are dispositive of all three obviousness
rejections, we address the rejections together. Appellant argued the claims
as a group. See Appeal Br. 2–3. We select claim 1 as representative, and
the remaining claims stand or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(iv).
According to the Examiner, Midha discloses an oral composition for
cleaning and polishing dental enamel, comprising from about 10% to about
99% by weight of the composition of water (Midha ¶ 111); about 0.0025%
to about 5.0% by weight of the composition of a fluoride ion source (Midha
¶ 56); about 0.1% to about 60% calcium carbonate (Midha ¶ 100); and a pH
from about 3 to about 10 (Midha ¶ 57). Final Act. 3–4. The Examiner
found, however, that Midha discloses neither the claimed particle
distribution size for calcium carbonate, nor the claimed method of measuring
the particle distribution size. Id. at 4.
The Examiner found that Gerard discloses surface-treated calcium in
the form of “particles having a volume determined top cut particle size d98
from 40 to 2,000 μm and a volume determined median particle size d50
from 1 to 1,500 μm (¶ [0119]).” Final Act. 4. The Examiner found that it
would have been prima facie obvious to use such particles, because Gerard
teaches that this is an effective size of calcium carbonate for use as an
abrasive in oral care compositions. Id. The Examiner also found that
Fahnestock and Snorek disclose laser diffraction methods for particle size
analysis, including the claimed method. Id. at 4–5. The Examiner found
that it would have been prima facie obvious to use ISO 13320-1-1999 to
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measure the particle size distribution of calcium carbonate in view of these
references. Id. at 5.
We adopt the Examiner’s findings of fact and reasoning regarding the
scope and content of the prior art (Final Act. 3–11; Ans. 4–6), and agree that
the claims would have been obvious over the cited prior art for the reasons
the Examiner articulated. We address Appellant’s arguments below.
Appellant argues that “the cited references provide no expectation of
success that in high water and high carbonate dentifrice formulations
fluoride stability can be improved by calcium carbonate particle size and a
pH greater than 8.0.” Appeal Br. 2. We are not persuaded by this argument,
because it is divorced from the claimed invention. “The reasonable
expectation of success requirement refers to the likelihood of success in
combining references to meet the limitations of the claimed invention.”
Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359,
1367 (Fed. Cir. 2016) (emphasis added). Claim 1 does not recite any
limitations directed to improved fluoride stability.
Appellant additionally argues that “[t]here is no reason why one
skilled in the art would use Midah et al. to associate calcium carbonate
particle size and a pH greater than 8.0 with improved fluoride stability in a
high water and high carbonate dentifrice formulation.” Appeal Br. 3. We
are also not persuaded by this argument, because to render an invention
obvious, the prior art does not have to address the same problem addressed
by a patent applicant. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419
(2007) (“In determining whether the subject matter of a patent claim is
obvious, neither the particular motivation nor the avowed purpose of the
patentee controls. What matters is the objective reach of the claim. If the
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claim extends to what is obvious, it is invalid under § 103.”). As
summarized above, the Examiner provided adequate reasons why a person
of ordinary skill in the art would have combined the cited prior art,
regardless of whether a person of ordinary skill in the art would have been
motivated to combine the art to achieve improved fluoride stability.
Appellant points to Table 1 of the Specification, noting that Example
2 in Table 1 has a “relatively larger calcium carbonate Mesh size 325
compared to the comparative examples 1 and 3 (having the smaller particle
size of Mesh size 600).” Id. at 3. Mesh size, however, is divorced from the
claims. Claim 1 recites a particular particle distribution size for calcium
carbonate; it does not recite a mesh size. See Appeal Br. 4 (Claims
Appendix); Ans. 5 (noting that “the instant claims do not recite a mesh size
for calcium carbonate”). We agree with the Examiner that “Appellant has
not explained or shown how a mesh size of 600 M relates to a particle
distribution size of D98 greater than 26.0 microns such that it is shown that a
particle distribution size of D98 greater than 26.0 microns is unexpected.”
Ans. 5–6.
Appellant also notes that “[a]s between the comparative examples,
example 3 contains more of the calcium carbonate (at 42 wt%) compared to
example 1 (at 32 wt%).” Id. This statement does not persuade us of
Examiner error. To the extent Appellant is arguing unexpected results, these
data do not demonstrate unexpected results for the claimed subject matter.
Unexpected 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). Appellant appears to be suggesting that greater amounts of calcium
carbonate (e.g. 42% vs. 32%) lead to greater fluoride instability, but both
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42% and 32% calcium carbonate are within the claimed range. Thus,
Appellant has not demonstrated that the claimed amounts of calcium
carbonate show unexpected results compared with the closest prior art.
For the reasons discussed above, we affirm the Examiner’s
obviousness rejections.
Nonstatutory Double Patenting
The Examiner provisionally rejected claims 1–20 on the ground of
nonstatutory double patenting as being unpatentable over each of seven
different copending applications, together with Midha, Gerard, Fahnestock,
and Snorek. Final Act. 13–14.
On appeal, Appellant did not address the double patenting rejections.
Arguments not presented in a brief are waived. See 37 C.F.R.
§ 41.37(c)(1)(iv) (2015) (“Except as provided for in §§ 41.41, 41.47 and
41.52, any arguments or authorities not included in the appeal brief will be
refused consideration by the Board for purposes of the present appeal.”).
Three of the copending applications on which the Examiner’s
rejections are based have now issued as patents. Those applications are:
Application No. 15/347,821, which issued as US 10,213,370 on February
26, 2019, with 18 claims; Application No. 15/347,840, which issued as US
10,226,410 on March 12, 2019, with 13 claims; and Application No.
14/830,831, which issued as US 10,226,414 on March 12, 2019, with 20
claims. Because these applications have now issued as patents, the
rejections over these applications are no longer deemed to be “provisional.”
In view of Appellant’s lack of response to the double patenting
rejections, we summarily affirm the rejections of claims 1–20 over (1)
claims 1 and 4–15 of copending Application No. 15/347,823, (2) claims 1, 7,
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10 and 16–20 of copending Application No. 15/347,837, (3) claim 1 of
copending Application No. 15/347,830, (4) claims 1 and 8–20 of copending
Application No. 15/347,821 (now US 10,213,370), (5) claims 1, 10–14, and
17–19 of copending Application No. 15/347,840 (now US 10,226,410), (6)
claims 1–3, 6–9, and 16–19 of copending Application No. 15/347,897, and
(7) claims 1, 5–8, 11, 14, and 17–19 of copending Application No.
14/830,831 (now US 10,226,414), in view of Midha, Gerard, Fahnestock,
and Snorek.
CONCLUSION
We affirm the rejection of claims 1–4, 9, 10, and 13–20 under 35
U.S.C. § 103 as being unpatentable over Midha, Gerard, Fahnestock, and
Snorek.
We affirm the rejection of claims 5–8 under 35 U.S.C. § 103 as being
unpatentable over Midha, Gerard, Fahnestock, Snorek, and Deckner.
We affirm the rejection of claims 11 and 12 under 35 U.S.C. § 103 as
being unpatentable over Midha, Gerard, Fahnestock, Snorek, and Robinson.
We affirm the nonstatutory double patenting rejections.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–4, 9,
10, and
13–20
103 Midha, Gerard,
Fahnestock, Snorek
1–4, 9, 10,
and 13–20

5–8 103 Midha, Gerard,
Fahnestock, Snorek,
Deckner
5–8
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Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
11, 12 103 Midha, Gerard,
Fahnestock, Snorek,
Robinson
11, 12
1–20 Nonstatutory double
patenting over (1) claims
1 and 4–15 of copending
Application No.
15/347,823, (2) claims 1,
7, 10 and 16–20 of
copending Application
No. 15/347,837, (3)
claim 1 of copending
Application No.
15/347,830, (4) claims 1
and 8–20 of copending
Application No.
15/347,821 (now US
10,213,370), (5) claims
1, 10–14, and 17–19 of
copending Application
No. 15/347,840 (now US
10,226,410), (6) claims
1–3, 6–9, and 16–19 of
copending Application
No. 15/347,897, and (7)
claims 1, 5–8, 11, 14, and
17–19 of copending
Application No.
14/830,831 (now US
10,226,414), in view of
Midha, Gerard,
Fahnestock, and Snorek
1–20
Overall
Outcome
1−20
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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). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED