Ex Parte Chopra et alDownload PDFPatent Trial and Appeal BoardOct 4, 201713262010 (P.T.A.B. Oct. 4, 2017) Copy Citation 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. 13/262,010 09/29/2011 Suman K. Chopra 7996-OO-US-Ol-OC 6348 23909 7590 10/06/2017 COLGATE-PALMOLIVE COMPANY 909 RIVER ROAD PISCATAWAY, NJ 08855 EXAMINER FISHER, MELISSA L ART UNIT PAPER NUMBER 1611 NOTIFICATION DATE DELIVERY MODE 10/06/2017 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): Paten t_Mail @ colpal. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte SUMAN K. CHOPRA, LYNETTE ZAIDEL, and MICHAEL PRENCIPE Appeal 2016-004375 Application 13/262,0101 Technology Center 1600 Before RICHARD M. LEBOVITZ, FRANCISCO C. PRATS, and TIMOTHY G. MAJORS, Administrative Patent Judges. PRATS, Administrative Patent Judge. DECISION ON APPEAL This appeal under 35 U.S.C. § 134(a) involves claims to non-aqueous dentifrice compositions. The Examiner rejected the claims for obviousness. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. STATEMENT OF THE CASE The sole rejection before us for review is the Examiner’s rejection of claims 1, 13—15, 19-21, 23, 24, 46, 47, and 49-52 under 35 U.S.C. § 103(a), 1 Appellants state that the “real party in interest for this appeal and for the above-referenced application is the assignee, Colgate-Palmolive Company, 300 Park Avenue, New York, NY.” Appeal Br. 2. Appeal 2016-004375 Application 13/262,010 for obviousness over Zimmer2 and Jackson.3 Final Action 2—5 (entered April 1,2015). Claim 1 illustrates the appealed subject matter and reads as follows (Appeal Br. 11): 1. A non-aqueous dentifrice composition comprising an effective amount of a bioactive and bio-acceptable glass and a desensitizing effective amount of potassium chloride wherein the bioactive and bio-acceptable glass is calcium sodium phosphosilicate or is a bioactive glass which comprises: SiC>2 from 40-60 wt. %; CaO from 10—30 wt. %; Na20 from 10—35 wt. %; P2O5 from 2—8 wt. %; CaF2 from 0-25 wt. %; and B2O3 from 0-10 wt. %; wherein the potassium chloride is present in an amount of 2 wt. % to 4 wt. % and the bioactive and biocompatible glass is present in an amount of 1 wt. % to 10 wt. %, each based on the total weight of the composition; and the composition further comprises one or more of: (1) one or more fluoride source or (2) one or more sources of silica. OBVIOUSNESS The Examiner’s Prima Facie Case The Examiner found that Zimmer teaches or suggests a composition having substantially all of the ingredients and features required by the rejected claims, and noted in particular that Zimmer “teaches the addition of potassium salts, such as potassium nitrate and potassium citrate, and teaches 2 US 2005/0142077 A1 (published June 30, 2005). 3 US 5,449,509 (issued Sept. 12, 1995). 2 Appeal 2016-004375 Application 13/262,010 that that potassium cations increase the desensitization of the tooth nerves which inhibits tooth pain (see [0065]).” Final Action 4. The Examiner found that Zimmer differs from the rejected claims in that Zimmer “does not teach that the potassium salt is potassium chloride or that the potassium chloride is present in an amount of 2^4% by weight.” Id. As evidence that the rejected claims, nonetheless, would have been obvious, the Examiner further cited Jackson as disclosing an oral hygiene composition for treating dentine hypersensitivity, the composition including “a water soluble, non-toxic, potassium salt (see column 1, lines 55-58).” Id. In particular, the Examiner noted Jackson’s teaching that potassium salts suitable in such compositions include “potassium chloride, potassium citrate, and potassium nitrate and that typically the potassium salt is present in a range to provide from 0.1 to 15%, more preferably 0.5 to 10%, by weight of the composition (see column 2, lines 3-10).” Id. Based on the references’ combined teachings, the Examiner concluded that an ordinary artisan would have considered it obvious “to utilize 0.5 to 10%, by weight of the composition of potassium chloride as taught by Jackson as the potassium salt in the composition of Zimmer.” Id. at 5. The Examiner reasoned that the ordinary artisan would have been “motivated to do so with a reasonable expectation of success as Zimmer et al. teaches that potassium cations increase the desensitization of the tooth nerves which inhibits tooth pain and Jackson teaches that suitable potassium salts include potassium chloride.” Id. Analysis An examiner bears the initial burden of presenting a prima facie case of obviousness. Once the examiner establishes a prima facie case of obviousness, the burden shifts to the 3 Appeal 2016-004375 Application 13/262,010 applicant to rebut that case. The prima facie case is a procedural tool, and requires that the examiner initially produce evidence sufficient to support a ruling of obviousness; thereafter the burden shifts to the applicant to come forward with evidence or argument in rebuttal. In re Kao, 639 F.3d 1057, 1066 (Fed. Cir. 2011) (internal quotations and citations omitted). “[OJnce the applicant has come forward with rebuttal evidence, the examiner must consider the totality of the evidence to determine whether the obviousness rejection should stand. ‘When rebuttal evidence is provided, the prima facie case dissolves, and the decision is made on the entirety of the evidence.’” Id. (quoting In re Kumar, 418 F.3d 1361, 1366 (Fed. Cir. 2005); see also In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) (“After evidence or argument is submitted by the applicant in response, patentability is determined on the totality of the record, by a preponderance of evidence with due consideration to persuasiveness of argument.”). It is well established that an applicant may rebut a prima facie case of obviousness by advancing evidence of “unexpected results,” that is, showing that “the claimed invention exhibits some superior property or advantage that a person of ordinary skill in the relevant art would have found surprising or unexpected.” In re Soni, 54 F.3d 746, 750 (Fed. Cir. 1995). In the present case, for essentially the reasons stated by the Examiner, we are persuaded that Zimmer and Jackson would have suggested preparing a non-aqueous dentifrice composition having the claimed ingredients in the claimed amounts. Appellants persuade us, however, that the claimed combination of ingredients yields unexpected results. As Appellants contend, Example 4 of the Specification presents a comparison between a bioactive glass-containing non-aqueous toothpaste 4 Appeal 2016-004375 Application 13/262,010 that contains 3.7 wt. % potassium chloride (Formula A), and non-aqueous toothpastes with the same ingredients, but lacking potassium chloride (Formula B and Formula C). Spec. 1149 (Table 4). As seen in Table 4, Formula A has a Brookfield viscosity of 26, whereas Formula B has a Brookfield viscosity of only 4, and Formula C has a Brookfield viscosity of only 6. Id. As to this comparison, the Specification states: [T]he potassium unexpectedly helps thicken the non-aqueous bioactive glass formula. . . . Formula A with 3.7% potassium chloride shows acceptable viscosity. However, w[hen] the potassium chloride is removed from the formula (Formula B), the viscosity drops dramatically and is unacceptable. In addition increasing the silica thickener does not improve the viscosity (Formula C). Id. (emphasis added). “[W]hen an applicant demonstrates substantially improved results . . . and states that the results were unexpected, this should suffice to establish unexpected results in the absence of evidence to the contrary.” In re Soni, 54 F.3d at 751 (reversing Board’s affirmance of obviousness rejection where unexpected result was asserted in specification based on comparative data and no persuasive basis provided to question the assertion of unexpectedness). In the present case, as in Soni, the Examiner advances no evidence or argument suggesting that potassium chloride would have been expected to impart the significantly improved thickened properties shown in Appellants’ Specification to a non-aqueous dentifrice. That is, as in Soni, the Examiner provides no persuasive basis to question Appellants’ data and disclosure of unexpectedness evidenced in the Specification. As to the Examiner’s 5 Appeal 2016-004375 Application 13/262,010 contention that Appellants have merely discovered an unappreciated inherent property of an “old composition” (Ans. 6), it is undisputed on this record that the claimed compositions are not “old,” as evidenced by the Examiner’s rejection of those compositions for obviousness, rather than anticipation. The Examiner contends that Appellants must show the criticality of the claimed range of 2—\ % potassium chloride by showing that “1% and 5% KC1 does not work for the instant invention.” Ans. 6. The Examiner also contends that a “showing that compositions with the nitrate and citrate forms do not possess the same physical properties as those with the chloride form would establish that the presence of KC1 provides an unexpected result and overcome the rejection of record.” Id. at 7. On this record, we are not persuaded that Appellants are required to make the comparisons posited by the Examiner. It is well settled that “when unexpected results are used as evidence of nonobviousness, the results must be shown to be unexpected compared with the closest prior art.” Millennium Pharmaceuticals, Inc. v. Sandoz, Inc., 862 F.3d. 1356, 1368 (Fed. Cir. 2017) (quoting Kao Corp. v. Unilever U.S., Inc., 441 F.3d 963, 970 (Fed. Cir. 2006)). Nonetheless, “[ujnexpected results are shown in comparison to what was known, not what was unknown.” Id. That is, an applicant “is not required to create prior art, nor to prove that his invention would have been obvious if the prior art were different than it actually was.” Id. (quoting In re Geiger, 815 F.2d 686, 690 (Fed. Cir. 1987)). We acknowledge Jackson’s disclosure that potassium salts, including potassium chloride, may be used in dentine hypersensitivity-treating 6 Appeal 2016-004375 Application 13/262,010 compositions at a concentration ranging from 0.1—15% which encompass the claimed amounts. Jackson 2:3—10. We also acknowledge Jackson’s suggestion that its compositions may be non-aqueous as is the claimed dentrifice. Id. at 4:40-41 (“If necessary and required, compositions of the invention may include water.”). Jackson’s working examples, however, include water. See id. at 4:60-5:19. We acknowledge Zimmer’s disclosure that bioactive/bioacceptable glass-containing dentifrice compositions may be non-aqueous. See Zimmer | 52 (“The formulations for dental care and/or oral hygiene, in which the glass ceramic according to the present invention is used, may be non- aqueous or even contain water.”); see also id. 1 69 (“An especially preferred use of the glass ceramic powder described is the use in water-free products for oral hygiene and/or dental care such as water-free tooth cream.”); id. 1147 (“The glass ceramic powder according to the present invention is also especially suitable for use in water-free formulations, such as water-free tooth creams, etc.”). We also acknowledge Zimmer’s disclosure that bioactive glass-containing dentifrice compositions may include potassium salts, such as potassium nitrate and potassium citrate, to inhibit tooth pain. Id. 165. However, the Examiner does not identify in the prior art of record, nor do we discern, non-aqueous dentifrice compositions containing 1% and/or 5% potassium chloride to which Appellants might compare their claimed compositions. Nor does the Examiner identify in the prior art of record non- aqueous dentifrice compositions containing potassium citrate or potassium nitrate that Appellants might compare to their claimed compositions. 7 Appeal 2016-004375 Application 13/262,010 Although a single prior art reference might suggest a certain combination of features, an applicant is not required to create an embodiment that includes all of the features suggested by the reference, and then compare that embodiment to an embodiment encompassed by the claims at issue, in order to establish unexpected results. See Millennium Pharms. v. Sandoz, 862 F.3d. at 1368. Specifically, the court in Millennium held that it was error to require a patentee to compare its claimed mannitol ester compound to a prophetic glycerol ester, despite glycerol having been listed in a prior art patent as among ten preferred potential ester moieties. Id. The court reasoned that the posited comparison was not required because the patent at issue did not actually identify, disclose, prepare, or test the glycerol ester. Id. In the present case, as noted, the Examiner does not identify in the prior art of record, nor do we discern, actual preparation of non-aqueous dentifrice compositions containing 1% and/or 5% potassium chloride, or actual preparation of non-aqueous dentifrice compositions containing potassium citrate or potassium nitrate, that Appellants might compare to their claimed compositions. Accordingly, we are not persuaded that Appellants are required to make the comparisons posited by the Examiner. In sum, for the reasons discussed, based on the totality of the record, a preponderance of the evidence supports Appellants’ contention that the compositions recited in the claims have significantly improved viscosity properties that would not have been expected by an ordinary artisan. Because a preponderance of the evidence, therefore, supports Appellants’ contention that the claimed compositions would not have been obvious, we 8 Appeal 2016-004375 Application 13/262,010 reverse the Examiner’s obviousness rejection. REVERSED 9 Copy with citationCopy as parenthetical citation