Ex Parte Chopra et al

Patent Trial and Appeal Board

Oct 4, 2017

13262010 (P.T.A.B. Oct. 4, 2017)

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.
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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).
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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
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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
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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
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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
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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.
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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
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reverse the Examiner’s obviousness rejection.
REVERSED
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