Ex Parte Bergeron et al

Patent Trial and Appeal Board

Apr 4, 2016

12150920 (P.T.A.B. Apr. 4, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/150,920
89737 7590
Tom's of Maine
Patent Department
909 River Road
Piscataway, NJ 08855
05/01/2008
04/06/2016
FIRST NAMED INVENTOR
Chantal Bergeron
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
8819-01-TM 8580
EXAMINER
DA VIS, DEBORAH A
ART UNIT PAPER NUMBER
1655
NOTIFICATION DATE DELIVERY MODE
04/06/2016 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 CHANT AL BERGERON and STEP AN GAFNER 1
Appeal2014-001454
Application 12/150,920
Technology Center 1600
Before FRANCISCO C. PRATS, ULRIKE W. JENKS and
JOHN E. SCHNEIDER, Administrative Patent Judges.
SCHNEIDER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to use of
licorice extracts in dental compositions, which have been rejected as obvious
and for nonstatutory double patenting. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We affirm.
STATEMENT OF THE CASE
The Specification discloses that licorice extracts have been found to
possess good antimicrobial activity against at least some of the bacteria
1 Appellants have identified the real-party-in-interest as Colgate-Palmolive
Company.
Appeal2014-001454
Application 12/150,920
associated with various dental health issues such as caries and periodontitis.
(Spec. i-f 19.) The present invention involves the use of licorice extracts as
an antimicrobial agent in dental compositions such as tooth paste or
mouthwash. (Id. i-fi-135, 45--48.)
Claims 21, 23, 24, 26-31, and 37 are on appeal. (Br. 12-13.) Claim
21 is illustrative and reads as follows:
An oral care composition comprising one or
both or [sic] licoricidin and licorisoflavan A
isolated from an extract of the root of the plant
Glycyrrhiza sp.,
wherein one or both of said licoricidin and
licorisoflavan A are present at a concentration of
0.005 wt.% to 10 wt.%; and
wherein said composition is selected from:
toothpaste, a denture cleaner, dental floss, a
toothpick, mouthwash, mouth-rinse, a pastille,
chewing gum, a dissolvable tablet, a chewable
tablet, and a lozenge; and
wherein the licoricidin and licorisoflavan A
are isolated from an extract of the root of the plant
Glycyrrhiza sp. and wherein the root was extracted
by supercritical C02 extraction process.
The claims stand rejected as follows:
I. Claims 21, 23, 24, 26-31, and 37 stand rejected under 35
U.S.C. § 103(a) as unpatentable over U.S. 4.454,979 to Ambike et al.
("Ambike") in view of Fukai, et al., Antimicrobial Activity of Licorice
Flavonoids against Methicillin-Resistant Staphylococcus aureus., 73
FITOTERAPIA 536 (2002) (hereinafter "Fukai-2")
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Application 12/150,920
II. Claims 21, 23, 24, and 26-31 stand provisionally rejected on
the ground of nonstatutory double patenting as being unpatentable over
claims 1,2, 4,5, and 21-29 of copending Application No. 11/799,524 (now
U.S. Pat. 8,236,360).
I
Issue
The Examiner has rejected claims 21, 23, 24, 26-31, and 37 under 35
U.S.C. § 103(a) as unpatentable over Ambike in view ofFukai-2. The
Examiner finds that Ambike "teaches a dental hygiene composition
comprising dodecyl sulphate salt having antimicrobial activity against oral
plaque forming microorganisms. The microorganisms include
Staphylococcus aureus, and Pseudomonas aeruginosa bacteria." (Final
Action 4.)2
The Examiner acknowledges that "Ambike does not teach the
particular claimed antimicrobial licoricidin." (Id.) The Examiner finds that
Fukai-2 teaches "licoricidin is an antimicrobial against Staphylococcus
aureus, and Pseudomonas aeruginosa bacteria." (Id.) The Examiner
concludes
It would have been obvious to one of
ordinary skill in the art at the time the invention
was made to substitute the antimicrobial of
dodecyl sulphate salt of Ambike for the
antimicrobial licoricidin taught by Fukai because it
is known to put antimicrobials into dental
compositions .... Therefore it would have been
obvious to substitute one equivalent antimicrobial
2 Final Action entered Nov. 26, 2012.
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Application 12/150,920
(Id. at 4--5.)
for another or to even further add another
antimicrobial to the dental composition of Ambike,
since they are known to be useful for the same
purpose of combating microbes in dental plaque.
Appellants contend that there is no reason one skilled in the art would
select licoricidin or licorisoflavan A from Fukai 3 as Fukai does not teach that
the licorice extracts are effective antimicrobial agents against
Staphylococcus aureus and Pseudomonias aeruginosa but only shows the
effectiveness of licorice extracts against Helicobacter pylori, which is not
associated with dental plaque. (Br. 9.) Given the lack of teaching that
licoricidin or licorisoflavan A possess activity against bacteria associated
with plaque formation, there would be no reason to substitute these extracts
for the anti-microbial agent in Ambike, Appellants assert. (Br. 10.)
3 In their Appeal Brief, Appellants refer to Fukai, et al., Anti-Helicobacter
pylori Flavonoids from Licorice Extract, 71 LIFE SCIENCES 1449-1463
(2002)(hereinafter "Fukai-1 "). As the Examiner pointed out in the
Examiner's Answer, this is not the correct Fukai reference applied to the
rejection. (Ans. 10) The Examiner, rather, has relied on Fukai-2 in
formulating the rejection. Appellants were put on notice that the Examiner
was relying on the Fukai-2 reference in the Official Action mailed on May
24, 2012. See List of Reference Cited attached to the Official Action mailed
on May 24, 2012. In addition, in both the Final Action and the Answer the
Examiner referred to page 537 and Table 1 of the Fukai-2 reference (see
Final Act. 4 and Ans. 10). Because only the Fukai-2 reference published in
FITOTERAPIA contains a page 537 it is reasonable to conclude that Appellants
had sufficient guidance to determine the correct reference applied in the
rejection.
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Application 12/150,920
Appellants also argue that Fukai does not teach the use of supercritical C02
extraction as called for in the instant claims. (Br. 9.)
The issue with respect to this rejection is whether the Examiner has
established by a preponderance of the evidence that Ambike in combination
with Fukai-2 renders the claimed composition obvious within the meaning
of§ 103(a).
Findings of Fact
FF 1. Ambike disclose dental compositions containing antimicrobial
agents effective against plaque-forming microorganism. (Ambike, col. 2:41-
47.)
FF2. The antimicrobial agents of Ambike are present in amounts
ranging from 0.1to2.0 percent. (Ambike, col. 2:41-47.)
FF3. Staphylococcus aureus is a known plaque-forming
microorganism. (See Ambike, col. 6:59-65.) Specifically, Ambike teaches
using "a standard quantity of plaque-forming microorganisms. . . . [T]he
inoculum consists of 0.5 ml from human saliva, and bacterial cultures of
S. aureus, St.faecalis, Ps. aeruginosa, E.coli, C. albicans, S. cerevisiae, and
A. viscosus, each containing uniform number of cells." (Id.)
FF4. Fukai-2 teaches that licorice extracts such as licoricidin exhibit
antimicrobial activity against Staphylococcus aureus. (Fukai-2, p. 538,
table 1.)
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Appeal2014-001454
Application 12/150,920
Principles of Law
"The test for obviousness is what the combined teachings of the
references would have suggested to one of ordinary skill in the art." In re
Young, 927 F.2d 588, 591 (Fed. Cir. 1991).
"The patentability of a product does not depend on its method of
production. If the product in a product-by-process claim is the same as or
obvious from a product of the prior art, the claim is unpatentable even
though the prior product was made by a different process." In re Thorpe,
777 F.2d 695, 697 (Fed. Cir. 1985).
Analysis
The Examiner has maintained that it would have been obvious to one
of ordinary skill in the art to create the claimed composition by substituting
the antimicrobial agents disclosed in Ambike with the licorice extracts
disclosed in Fukai-2. (Final Rej. 4--5; Ans. 4--5.) We agree.
Ambike teaches the use of antimicrobial agents in dental compositions
to reduce the formation of dental plaque. (FF 1.) One of the organisms that
create plaque in the oral cavity is Staphylococcus aureus. (FF3.) Fukai-2
teaches that licorice extracts including licoricidin act as antimicrobial agents
against Staphylococcus aureus. (FF4). We agree with the Examiner's
conclusion that it would have been "obvious to one of ordinary skill in the
art at the time the invention was made to substitute the antimicrobial of
dodecyl sulphate salt of Ambike for the antimicrobial licoricidin taught by
Fukai because it is known to put antimicrobials into dental compositions"
with a "reasonable expectation of success." (Ans. 4--5.)
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Application 12/150,920
As noted above, Appellants argue that there is no reason for one
skilled in the art to select Licoricidin or Licorisoflavan A from Fukai-1 in
that Fukai does not teach their effectiveness against Staphylococcus aureus.
(Br. 8-9.) We find the Appellants' argument to be without merit. Fukai-2
clearly demonstrates that licorice extracts, including licoricidin are effective
antimicrobial agents against S. aureus. (FF4.) Thus, there is sufficient
reason for one skilled in the art to select licoricidin, a known antimicrobial
agent effective against S. aureus, and substitute licoricidin for an art
recognized equivalent that is known to also be effective against S. aureus
(see FF 1-3.)
Appellants next argue that there is no reason to substitute or add an
element of Fukai-2 to Ambike. (Br. 9.) We are unpersuaded by Appellants'
argument. As noted above, Fukai-2 contains a specific teaching that
licoricidin is effective against S. aureus, a known microorganism that forms
plaque (FF4). Given the teaching of Ambike about the desire to include
antimicrobial agents to dental compositions to prevent plaque, one skilled in
the art would have had reason to substitute a licorice extract, like licoricidin,
for any of the antimicrobial agents disclosed in Ambike.
Appellants have also argued that the combination of Ambike and
Fukai-1 cannot render the instant claims obvious as Fukai-1 does not
disclose supercritical C02 extraction but instead teaches the use of solvent
extraction methods. (Br. 9.) Again we are unpersuaded. In determining the
patentability of a product claimed by a product by process claim, one looks
only at the product of the claim. If the product is the same or obvious from a
product of the prior art, the claim is unpatentable, even if the process used to
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Application 12/150,920
make the product is different. In re Thorpe, 777 F .2d at 697. As shown
above, the antibacterial compound in the product of the instant claims,
licoricidin, is the same compound taught in the prior art. That the claimed
compound is made by a different process does not demonstrate that the
claimed compound is different from the compound described in the prior art
as having antibacterial properties.
Conclusion of Law
We conclude that the Examiner has established that Ambike in
combination with Fukai-2 renders the claimed compositions obvious within
the meaning of35 U.S.C. § 103(a).
II
Issue
The Examiner has rejected claims 21, 23, 24, and 26-31 on the
ground of nonstatutory double patenting as unpatentable over claims 1, 2, 4,
5, and 21-29 of copending Application No. 11/799,524 (now U.S. Pat. No.
8,236,360). The Examiner finds that the claims of the copending application
are "drawn to a composition comprising the flavonoids licorisoflavan A and
licoricidin. The flavonoids are incorporated into such formulations as
toothpaste, mouthwash, and other oral compositions disclosed therein. The
formulations are essentially free of glycyrrhizic acid and the plant
Glycyrrhiza species is extracted by supercritical C02 extraction process."
(Final Action 3.)
Appellants contend that the claims of the instant application are
patentably distinct from those of the '524 application. To support this
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argument, Appellants point to the fact that the same claims in the '524
application were subject to a restriction requirement in the present
application. Appellants argue that since the Examiner found claims 1-20 of
the present application to be patentably distinct from claims 21, 23, 24, and
26-31, and that claims 1-20 of the present application are identical to the
conflicting claims of the '524 application, it holds that the instant claims are
patentably distinct from the claims of the '524 application. (Br. 3-7.)
The issue with respect to this rejection is whether the Examiner
properly rejected claims 21, 23, 24, and 26-31 for nonstatutory obviousness-
type double patenting.
Findings of Fact
FF5. Claims 1-20 of U.S. Patent No. 8,236,360, which issued from
the '524 application, are directed to oral care or body care compositions
comprising a supercritical C02 extract of the root of the plant Glycyrrhizia
sp., wherein said extract comprises an antibacterial effective amount of a
plurality of prenylated flavonoids, including licoricidin or licorisoflavin A,
wherein the composition is substantially free of glycyrrhizic acid. (See U.S.
Pat. No. 8,236,360, col. 13, 1. 43 to col. 14. 1 65.)
Principles of Law
"Obviousness-type double patenting is a judge-made doctrine that
prevents an extension of the patent right beyond the statutory time limit. It
requires rejection of an application claim when the claimed subject matter is
not patentably distinct from the subject matter claimed in a commonly
owned patent. Its purpose is to prevent an unjustified extension of the term
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Application 12/150,920
of the right to exclude granted by a patent by allowing a second patent
claiming an obvious variant of the same invention to issue to the same owner
later." In re Berg, 140 F.3d 1428, 1431-32 (Fed. Cir. 1998) (citation
omitted).
In deciding if a nonstatutory double patenting rejection is proper, one
should ask if any claim in the application defines merely an obvious
variation of an invention disclosed and claimed in the patent. See In re
Vogel, 422 F.2d 438, 441 (C.C.P.A. 1970).
Analysis
The Examiner has found that the claims of the instant application are
merely obvious variations of the claims of the '524 application. We agree.
Both sets of claims are directed to oral care compositions containing
flavonoids, including licoricidin or licorisoflavin A, extracted from
Glycyrrhiza sp. using supercritical C02. Appealed claim 23 calls for the
composition to be essentially free of glycyrrhizic acid. Because the instant
claims recited the same types of compositions containing the same
ingredients, the instant claims are merely an obvious variation of the
invention claimed in the now issued '524 application. In re Vogel, 422 F. 2d
at 441.
Applicants' arguments have been considered but are not persuasive.
As noted in the Examiner's Answer, the Examiner implicitly withdrew the
restriction requirement in the instant case when the Examiner issued her
nonstatutory obviousness-type double patenting rejection. (Ans. 7.) This is
an acknowledgement by the examiner that the two sets of claims are not
patentably distinct. In addition, the protections against double patenting
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Application 12/150,920
outlined in MPEP § 804.01 do not apply. The present application is a
continuation-in-part and the protections of 35 U.S.C. § 121 is limited to
divisional applications. Pfizer, Inc. v. Teva Pharmaceuticals USA, Inc., 518
F.3d 1353, 1362 (Fed. Cir. 2008).
Conclusion of Law
We hold that the Examiner has properly rejected claims 21, 23, 24,
and 26-31 for nonstatutory double patenting.
SUMMARY
We affirm the Examiner's rejections of claims 21, 23, 24, 26-31, and
37.
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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