COLGATE-PALMOLIVE COMPANY

Patent Trials and Appeals BoardMar 8, 2021

2020004586 (P.T.A.B. Mar. 8, 2021)

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. 14/654,527 06/20/2015 Brian Bloch 9782-00-US-01-TB 3290 23909 7590 03/08/2021 COLGATE-PALMOLIVE COMPANY 909 RIVER ROAD PISCATAWAY, NJ 08855 EXAMINER HENSON, KATINA N ART UNIT PAPER NUMBER 3723 NOTIFICATION DATE DELIVERY MODE 03/08/2021 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 BRIAN BLOCH and LARS RALF RAINER LIEBERWIRTH Appeal 2020-004586 Application 14/654,527 Technology Center 3700 ____________ Before MICHAEL L. HOELTER, BENJAMIN D. M. WOOD, and BRETT C. MARTIN, Administrative Patent Judges. HOELTER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 48–67, which constitute all the claims pending in this application. See Appeal Br. 1. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM the Examiner’s rejections of these claims. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as “Colgate- Palmolive Company.” Appeal Br. 2. Appeal 2020-004586 Application 14/654,527 2 CLAIMED SUBJECT MATTER The disclosed subject matter pertains to “[o]ral care implements, especially toothbrushes, [] used by many people on a daily basis.” Spec. ¶ 1. Method claim 48, apparatus claim 56, and “kit” claim 66 are independent. Claim 48 is illustrative of the claims on appeal and is reproduced below. 48. A method of manufacturing an oral care implement, comprising: (a) providing a first part of a handle having a head connected to a distal end of the handle, the first part having a first surf ace and a power source disposed in a chamber of the first part; (b) providing the head with at least one cleaning element; and (c) providing a second part of the handle, the second part having a second surface and an assembly mounted within the second part, the assembly comprising a timer, an electrically conductive contact, and a user-notification device that is configured to output a notification in dependence on a state of the timer; (d) attaching the second part of the handle to the first part of the handle so that (1) the second part defines a proximal end of the handle; (2) the first and second surfaces together define an exterior surface of the handle; and (3) the electrically- conductive contact of the assembly is brought into surface contact with the power source. EVIDENCE Name Reference Date White et al. (“White”) US 4,476,604 Oct. 16, 1984 Daniel US 6,106,294 Aug. 22, 2000 Kumagai US 2004/0000017 A1 Jan. 1, 2004 Nanda US 2008/0250591 A1 Oct. 16, 2008 Appeal 2020-004586 Application 14/654,527 3 Gatzemeyer et al. (“Gatzemeyer”) US 8,137,109 B2 Mar. 20, 2012 Wu et al. (“Wu”) WO 2009/142643 A1 Nov. 26, 2009 Zheng CN 201602908 U Oct. 13, 2010 REJECTIONS Claims 48, 49, 52, 54–56, 59, and 61 are rejected under 35 U.S.C. § 103 as unpatentable over by Wu and Kumagai. Claims 50, 53, 57, 58, and 60 are rejected under 35 U.S.C. § 103 as unpatentable over Wu, Kumagai, and Nanda. Claim 51 is rejected under 35 U.S.C. § 103 as unpatentable over Wu, Kumagai, and White. Claim 62 is rejected under 35 U.S.C. § 103 as unpatentable over Wu, Kumagai, and Zheng. Claim 63–65 are rejected under 35 U.S.C. § 103 as unpatentable over Wu, Kumagai, and Gatzemeyer. Claims 66 and 67 are rejected under 35 U.S.C. § 103 as unpatentable over Wu and Daniel. ANALYSIS The rejection of claims 48, 49, 52, 54–56, 59, and 61 as unpatentable over by Wu and Kumagai Appellant presents arguments for independent claim 48. See Appeal Br. 6–8. Regarding independent claim 56, Appellant contends that “[f]or at least the reasons stated above with respect to claim 48, claim 56 is similarly patentable.” Appeal Br. 9. Appellant does not present any separate argument regarding dependent claims 49, 52, 54, 55, 59, and 61. See Appeal Br. 4–5 (“Appellants will not be separately arguing the patentability of Appeal 2020-004586 Application 14/654,527 4 dependent claims 49–55, 57–65, and 67”). Accordingly, we select claim 48 for review, with the remaining claims (i.e., claims 49, 52, 54–56, 59, and 61) standing or falling with claim 48. See 37 C.F.R. § 41.37(c)(1)(iv). The Examiner primarily relies on Wu for teaching the limitations of claim 48, including that of “an assembly (25 with 25a),” but acknowledges that “Wu does not teach an assembly mounted within the second part comprising a timer, and a user-notification device” as recited. Final Act. 3; Ans. 14. The Examiner relies on Kumagai for such teachings and provides a reason for their combination. See Final Act. 3–4; Ans. 14–15. Appellant contends that “[a] person of ordinary skill would not substitute the battery contact 25a of Wu for an assembly comprising a timer and a user-notification device” as disclosed in Kumagai. Appeal Br. 7. This is because, as per Appellant, “they would merely be duplicative on the toothbrush of Wu, which already incorporates a timer and related features.” Appeal Br. 7. Indeed, Wu already discloses a timing circuit, but this timing circuit “causes the pump 18 to operate for a period of time which, in turn, causes a predetermined amount of the medium containing the active agent to be pumped from the reservoir 15” to the bristles 5. Wu ¶ 22; see also Wu Fig. 9. Kumagai’s assembly 40, on the other hand, includes a timer (i.e., counter 3) that measures the amount of time engaged in brushing. See Kumagai ¶ 50 (assembly 40 “is configured so as to output different voice messages such as ‘not enough’, ‘keep brushing’, ‘a little more’, and ‘brushed enough’”). Thus, while it is true that Wu already employs a timer, it is for a different purpose altogether, and thus does not preclude the addition of another timer for a different purpose as expressed by the Examiner. See Final Act. 4; Ans. 15. Furthermore, Appellant does not explain how the Appeal 2020-004586 Application 14/654,527 5 Examiner’s reason to combine the two teachings (i.e., “to provide a device that can activate the user-notification”) is faulty or lacks rational underpinning. Final Act. 4; Ans. 15. Consequently, Appellant’s contention regarding duplication of parts is not persuasive of Examiner error since the parts are not really duplicative of each other since they perform wholly different purposes and/or functions. Appellant also contends that the Examiner is engaging in the substitution of additional batteries and other equipment, and that doing so would “add needless cost without any apparent improvement in functionality.” Appeal Br. 7. First, the Examiner states that Wu has batteries “so it would not be necessary to add additional batteries as argued by the Appellant.” Ans. 16. As such, “Appellant is arguing what has not been set forth as the rejection.” Ans. 15. Further, regarding additional equipment incurring additional cost “without any apparent improvement in functionality,” Appellant does not explain how including Kumagai’s timing assembly (so that a user would know when sufficient brushing has transpired (see above)) fails to improve the functionality of the toothbrush. Additionally, simply because such inclusion may cost more is not indicative that the combination of features fails to be obvious. In this vein, we have been instructed by our reviewing court that the relevant inquiry is whether or not a person having ordinary skill in the art would be motivated to combine references despite drawbacks that the combination might present (i.e., more cost). See Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 (Fed. Cir. 2000). In such cases, we are informed that the Board must weigh the benefits and drawbacks of the modification against each other, to determine whether Appeal 2020-004586 Application 14/654,527 6 there would be a motivation to combine. See Winner, 202 F.3d. at 1349 n.8; see also Henny Penny Corp. v. Frymaster LLC, 938 F.3d 1324, 1331–32 (Fed. Cir. 2019). Here, as stated above, the motivation to combine, as expressed by the Examiner, is to notify the user when sufficient brushing has occurred. See Final Act. 4; Ans. 15. Appellant does not explain why or how this motivation is faulty or unreasonable or lacks rational underpinning. Furthermore, we agree with the Examiner that “the expected benefits of including the second part comprising a timer, and a user-notification device . . . as taught by Kumagai . . . will likely perform in the same manner to produce the same benefits.” Ans. 17. Appellant further contends, “[t]he Final Rejection improperly cherry picks only those features which are required to read on the invention without considering the full implications of the combination of these two references.” Appeal Br. 7. Appellant, instead, contends that if these references were combined, the result would be “to incorporate the entirety of the hollow holding portion 1A of Kumagai into the handle 10 of Wu” and not just select “features which would read on the claims.” Appeal Br. 7. We disagree with Appellant’s argument that a combination of references necessarily involves the bodily incorporation of the one into the other. We have been instructed that “it is not necessary that [two pieces of prior art] be physically combinable to render obvious” the asserted patent. Allied Erecting and Dismantling Co., Inc. v. Genesis Attachments, LLC, 825 F.3d 1373, 1381 (Fed. Cir. 2016) (quoting In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983)). Rather, the question is “whether the claimed inventions are rendered obvious by the teachings of the prior art as a whole.” See In re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (noting that whether one prior art Appeal 2020-004586 Application 14/654,527 7 reference can be incorporated into another is “basically irrelevant”). Again, as above, Appellant does not explain why it would not have been obvious to combine Wu and Kumagai for the reasons expressed by the Examiner. See Final Act. 4; Ans. 15. Appellant also contends that “the accepted wisdom” is for the “user notification devices, timers, and other active circuitry [be] in the same part as the batteries.” Appeal Br. 8. However, Wu belies this assertion by clearly teaching that “closure part 25 may be provided with a threaded stub 25a,” and that stub 25a, when closure part 25 is screwed into the handle, comes into contact with “the battery 21 inserted into the sleeve 20” of the handle. Wu ¶ 49. Thus, Wu teaches that part of the active circuitry is in the end cap closure part 25, while the remaining part (i.e., battery) is located in the handle. See also Wu Fig. 10. Hence, Appellant’s reliance on “the accepted wisdom” that all these parts be in the one or the other (but not split between them) is contradicted by the explicit teachings of Wu. Accordingly, we are not persuaded by Appellant’s presumably patentable distinction that “the entirety of the electronics assembly and the battery [of prior art devices] are in a single handle portion, not split across two separate handle portions.” Appeal Br. 8. Thus, based on the record presented, we are not persuaded the Examiner erred in rejecting claims 48, 49, 52, 54–56, 59, and 61 as being unpatentable over by Wu and Kumagai. Appeal 2020-004586 Application 14/654,527 8 The rejections of: (a) claims 50, 53, 57, 58, and 60 as unpatentable over Wu, Kumagai, and Nanda; (b) claim 51 as unpatentable over Wu, Kumagai, and White; (c) claim 62 as unpatentable over Wu, Kumagai, and Zheng; (d) claim 63–65 as unpatentable over Wu, Kumagai, and Gatzemeyer; and, (e) claims 66 and 67 as unpatentable over Wu and Daniel As noted above, Appellant does not present an argument for any of the above dependent claims. See Appeal Br. 4. At best, Appellant separately discusses independent claim 66, but then only by repeating the argument above regarding the various electronic components all typically being in a single part, and not split between two parts of the toothbrush, as recited. See Appeal Br. 9. As this argument is not persuasive for the reasons expressed above, we are not persuaded the Examiner erred in rejecting the above claims based on the cited art. We sustain their rejections. CONCLUSION In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 48, 49, 52, 54–56, 59, 61 103 Wu, Kumagai 48, 49, 52, 54–56, 59, 61 50, 53, 57, 58, 60 103 Wu, Kumagai, Nanda 50, 53, 57, 58, 60 51 103 Wu, Kumagai, White 51 62 103 Wu, Kumagai, Zheng 62 63–65 103 Wu, Kumagai, Gatzemeyer 63–65 66, 67 103 Wu, Daniel 66, 67 Overall Outcome 48–67 Appeal 2020-004586 Application 14/654,527 9 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