COLGATE-PALMOLIVE COMPANY et al.

Patent Trials and Appeals Board

Mar 29, 2022

2021004600 (P.T.A.B. Mar. 29, 2022)

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. 14/905,770 01/15/2016 Ariel HASKEL T10125-00-US-01-OC 1013 23909 7590 03/29/2022 COLGATE-PALMOLIVE COMPANY 909 RIVER ROAD PISCATAWAY, NJ 08855 EXAMINER LEWIS, RALPH A ART UNIT PAPER NUMBER 3772 NOTIFICATION DATE DELIVERY MODE 03/29/2022 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 ARIEL HASKEL, JESSICA MONK, NAJMA KHAN, KERSTIN BURSEG, PETER DE KOK, and ANN STIJNMAN Appeal 2021-004600 Application 14/905,770 Technology Center 3700 ____________ Before EDWARD A. BROWN, BENJAMIN D. M. WOOD, and MICHAEL J. FITZPATRICK, Administrative Patent Judges. FITZPATRICK, Administrative Patent Judge. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s final decision rejecting claims 2-12 and 30. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. STATEMENT OF THE CASE The Specification The Specification’s disclosure “is directed to a system and method of making an oral care formulation in-situ in a testing environment.” Spec. ¶2. 1 “Appellant” refers to the applicant as defined in 37 C.F.R. § 1.42 and identifies Colgate-Palmolive Company and Nizo Food Research B.V. as real parties in interest. Appeal Br. 3. Appeal 2021-004600 Application 14/905,770 2 The Claims Claims 2-12 and 30 are rejected. Final Act. 1. The only other pending claims, namely claims 15-17, 19, and 22-25, have been withdrawn from consideration. Id. Claim 30, the sole independent claim on appeal, is representative and reproduced below. 30. A method of making an oral care formulation for consumer use, the method comprising: a) providing to a test subject an oral care formulation base and one or more oral care additives; b) obtaining feedback from the test subject regarding effects experienced by the test subject during the performance of step a); and c) creating the oral care formulation for consumer use based, at least in part, on the feedback; wherein: step a) comprises: i) providing a first dose of an oral care formulation base to an oral cavity of a test subject; and ii) dispensing one or more oral care additives to the oral cavity in accordance with a first dispensing regimen during the performance of step i), the one or more oral care additives mixing with the first dose of the oral care formulation base in-situ within the oral cavity of the test subject; wherein the dispensing regimen of step ii) contains instructions, or dispensing parameters, such that the selected oral care additives are dispensed at the same or different temporal times and for the same or different dispensing periods. Appeal Br. 15-16 (Claims App.). Appeal 2021-004600 Application 14/905,770 3 The Examiner’s Rejection The Examiner rejected claims 2-12 and 30 under 35 U.S.C. § 103 as unpatentable over Viltro (US 6,648,641 B1; iss. Nov. 18, 2003) and Haught (US 2012/0082630 A1; pub. Apr. 5, 2012). DISCUSSION In arguing against this rejection, Appellant argues patentability of one subgroup of claims, namely claims 9-12. Appeal Br. 9-10; see 37 C.F.R. § 41.37(c)(1)(iv) (“Under each heading identifying the ground of rejection being contested, any claim(s) argued separately or as a subgroup shall be argued under a separate subheading that identifies the claim(s) by number.”). We choose claim 30 as representative of claims 2-8 and 30, and claim 9 as representative of the subgroup of claims 9-12. 37 C.F.R. § 41.37(c)(1)(iv) (“When multiple claims subject to the same ground of rejection are argued as a group or subgroup by appellant, the Board may select a single claim from the group or subgroup and may decide the appeal as to the ground of rejection with respect to the group or subgroup on the basis of the selected claim alone.”). Claims 2-8 and 30 The Examiner found that Viltro discloses much of the subject matter of claim 30 except for “the method steps of (b) the obtaining feedback from a test subject and ([c]) creating the dental formulation based in part on the feedback.” Final Act. 2-3 (citing Viltro 5:40-50, 6:43-7:14). The Examiner determined that “it would have been obvious to of one of ordinary skill in the art as a matter of ordinary business practice to have first tested and adjusted the formulations of the Vitro [sic] et al prepackaged cartridges prior to packaging and offering for sale to the consumer.” Id. at 3. Appeal 2021-004600 Application 14/905,770 4 In addition, the Examiner determined that the subject matter of claim 30 “would have been particularly obvious” in view of Haught’s teaching (1) “that it is highly desirable for oral care compositions to ‘impart a fresh and clean feeling as this provides consumers with a signal of continuing freshness and cleanliness’” and (2) of “using a 10 person panel to taste of a number of different oral care compositions including different additives and rate them according to a sweetness rating.” Id. (citing Haught ¶¶ 30, 66). Appellant argues “there is no disclosure or suggestion in Viltro that: 1) its device can be used to deliver test formulations for evaluation to a subject; 2) of the adjustment of the formulation based on data so obtained; or 3) that its cartridges can be successfully programmed for such use.” Appeal Br. 7. Appellant’s first assertion, labeled “1),” is not persuasive of error because it is conclusory. Appellant’s assertion implies, but fails to explain or substantiate, that a test formulation differs structurally from a final formulation and in a way that would allow Viltro’s device to be used only for the latter type of formulation. Appellant’s second and third assertions are not persuasive of error because they attack Viltro individually, which the Examiner concedes does not disclose testing and thereafter adjusting oral care formulations. See Final Act. 3 (“Vitro [sic] et al do not disclose the method steps of (b) the obtaining feedback from a test subject and ([c]) creating the dental formulation based in part on the feedback.”); In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (“Non-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references. [A reference] must be read, not in Appeal 2021-004600 Application 14/905,770 5 isolation, but for what it fairly teaches in combination with the prior art as a whole.” (citation omitted)). Rather, the Examiner found that testing and adjusting would have been obvious “as a matter of ordinary business practice” and in view of specific teachings of Haught. Final Act. 3. Turning to Haught, Appellant argues it “provides no suggestion or motivation whatsoever for utilizing a device such as that described in Viltro, which is designed for administration of formulations to an end user, to vary the composition of test formulations in a testing regime.” Appeal Br. 7. However, the rejection is not based on Haught suggesting or motivating a person of ordinary skill in the art to utilize Viltro’s device. As the Examiner explained in the Answer: Appellant has misconstrued the rejection. The rejection is not that one of ordinary skill in the art would have found it obvious to use the Viltro et al device to perform the claimed method, but rather that one of ordinary skill in the art would have found it obvious in view of the teachings by Haught et al to have first tested and modified the oral care formulations used in the Viltro et al method/device prior to investing significant amounts of money to manufacture and market the Viltro et al method/device. Ans. 3. Appellant argues that “neither Viltro nor Haight [sic], alone or in combination, disclose or suggest the step of creating the oral care formulation for consumer use based, at least in part, on the feedback obtained from the test subject.” Appeal Br. 8. This argument is not persuasive of error, as the Examiner specifically addressed how the rejection satisfies this limitation. See, e.g., Final Act. 4 (“One of ordinary skill in the art would have reasonably found it obvious to have tested the Viltro et al device and the formulations dispensed therefrom before manufacturing and marketing it to the public.”); see also Ans. 4 (“It is implicit that such testing Appeal 2021-004600 Application 14/905,770 6 would be used in determining formulations that the producer markets to consumers.”). Appellant next asserts that “nowhere does the Examiner explain why one of skill in the art would be led to use the Viltro device for other than its intended purpose.” Appeal Br. 8. This assertion is erroneous. As the Examiner explained, “[o]ne of ordinary skill in the art would have reasonably found it obvious to have tested the Viltro et al device and the formulations dispensed therefrom before manufacturing and marketing it to the public.” Final Act. 4; see also Ans. 3 (“[O]ne of ordinary skill in the art would have found it obvious in view of the teachings by Haught et al to have first tested and modified the oral care formulations used in the Viltro et al method/device prior to investing significant amounts of money to manufacture and market the Viltro et al method/device.”). Appellant argues that “[n]owhere does Viltro even hint that its system can be used for varying its deliverable components.” Appeal Br. 8. This too is erroneous. Viltro expressly discloses that its system is capable of delivering a variety of dental treatment formulations. Viltro 6:43-65. In fact, Viltro further discloses that its system additionally can be used for non- dental applications such as dispensing “nail, hair and/or skin care” products among others. Id. at 11:9-28. We have considered Appellant’s arguments but they do not apprise us of error in the rejection of claim 30. Accordingly, we affirm the rejection of claim 30, as well as that of claims 2-8, which fall therewith. 37 C.F.R. § 41.37(c)(1)(iv). Appeal 2021-004600 Application 14/905,770 7 Claims 9-12 Claim 9 depends from claim 30 and adds further limitations to “step c)” of claim 30 (Appeal Br. 12), which Appellant paraphrases as requiring “modifying the first dispensing regimen based on the feedback obtained from the test subject to create a second different dispensing regimen, ultimately to create the oral care formulation for consumer use, based at least in part, on the feedback from the test subject.” Id. at 9. Appellant argues: “Neither Viltro nor Haught contain any disclosure or suggestion of using the feedback from of [sic] a first dispensed composition to determine the composition of a subsequent dispensed composition, to create a commercial composition.” Id. We are not persuaded by this argument. Relative to claim 9, the Examiner concluded that “one of ordinary skill in the art would have found it obvious to have reformulated and retested oral compositions that are rated by the tasting panel as being ‘much too sweet’ to formulations that are rated ‘just right’ before packaging and offering for sale to the consumer” with the Viltro device. Final Act. 4 (quoting Haught 9 (table following ¶30)). The Examiner’s conclusion is well supported by the factual findings and reasoning identified for base claim 30 and the additional disclosure by Haught cited for claim 9. More specifically, as discussed above with respect to claim 30, we are not apprised of error in the Examiner’s conclusion that it would have been obvious “to have first tested and adjusted the formulations of the Vitro [sic] et al prepackaged cartridges prior to packaging and offering for sale to the consumer.” Final Act. 3. For those same reasons, and the fact that Haught recognizes good (i.e., “just right”) and poor (i.e., “much too sweet”) test Appeal 2021-004600 Application 14/905,770 8 results, it would have been obvious, as the Examiner determined, to modify a poor-testing formulation to one that is “just right.” We have considered Appellant’s arguments but they do not apprise us of error in the rejection of claim 9. Accordingly, we affirm the rejection of claim 9, as well as that of claims 10-12, which fall therewith. 37 C.F.R. § 41.37(c)(1)(iv). DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 2-12, 30 103 Viltro, Haught 2-12, 30 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