COLGATE-PALMOLIVE COMPANY et al.

Patent Trials and Appeals BoardAug 18, 2020

15108098 - (D) (P.T.A.B. Aug. 18, 2020)

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. 15/108,098 06/24/2016 Hans Stettler T10159-00-US-01-OC 3478 23909 7590 08/18/2020 COLGATE-PALMOLIVE COMPANY 909 RIVER ROAD PISCATAWAY, NJ 08855 EXAMINER LIU, TRACY ART UNIT PAPER NUMBER 1612 NOTIFICATION DATE DELIVERY MODE 08/18/2020 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 HANS STETTLER, WIM TEUGHELS, MARC QUIRYNEN, and NICO BOON ________________ Appeal 2020-000731 Application 15/108,098 Technology Center 1600 ________________ Before RICHARD M. LEBOVITZ, JASON V. MORGAN, and DEBORAH KATZ, Administrative Patent Judges. MORGAN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Introduction Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1, 28, and 30–34. Claims 2–27, 29, and 35–37 are canceled. Appeal Br. 9–10. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 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 2020-000731 Application 15/108,098 2 Summary Of The Disclosure Appellant’s claimed subject matter relates to an oral care composition comprising monomethyl succinate, a carboxylic acid, for purposes of selectively promoting beneficial bacteria growth. Spec. Abstract, ¶ 17. Illustrative Claim (Key Limitation Emphasized with bold-italics) 1. An oral care composition comprising monomethyl succinate present in the composition in a concentration of from 0.01 weight % to 10 weight%, based on the weight of the oral composition; and wherein the composition is effective for: (a) selectively promoting, in an oral cavity: growth, metabolic activity or colonization of S. mitis bacteria that have beneficial effects on oral health, relative to growth, metabolic activity or colonization of pathogenic oral bacteria; (b) selectively promoting, in an oral cavity, biofilm formation by S. mitis bacteria that have beneficial effects on oral health comprising [S. mitis], relative to biofilm formation by pathogenic oral bacteria; or (c) maintaining and/or re-establishing a healthy oral microbiota comprising S. mitis; wherein the composition further comprises at least one species of bacteria that has beneficial effects on oral health. The Examiner’s rejections and cited references The Examiner rejects claims 1, 28, and 30–34 under 35 U.S.C. § 103 as being unpatentable over Mane (US 5,725,865; issued Mar. 10, 1998) and Wikström (US 2009/0324547 A1; published Dec. 31, 2009). Ans. 3; see also Final Act. 2–6, as modified by Adv. Act. 1–3 (May 30, 2019). Appeal 2020-000731 Application 15/108,098 3 ANALYSIS The Examiner’s rejection of independent claim 1 rests on the faulty premise that Mane teaches monomethyl succinate as recited in the claim. See, e.g., Final Act. 3; Ans. 4. Mane, however, teaches monomenthyl succinate. See, e.g., Mane, Abstract. The Examiner’s findings fail to show that monomethyl succinate and monomenthyl succinate have the same structure, or that Mane, even in combination with Wikström, teaches or suggests monomethyl as a substitute for monomenthyl. Accordingly, we do not sustain the Examiner’s 35 U.S.C. § 103 rejection of claim 1, and claims 28 and 30–34, which depend from it. CONCLUSION Claims Rejected 35 U.S.C. § References Affirmed Reversed 1, 28, 30–34 103 Mane, Wikström 1, 28, 30–34 REVERSED