Ex Parte Evans et al

Patent Trials and Appeals Board

Jan 30, 2019

14974723 - (D) (P.T.A.B. Jan. 30, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/974,723 12/18/2015
23909 7590 02/01/2019
COLGATE-PALMOLIVE COMPANY
909 RIVER ROAD
PISCATAWAY, NJ 08855
FIRST NAMED INVENTOR
Lauren Evans
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.
10927-00-US-01-0C 6259
EXAMINER
WEBB, WALTERE
ART UNIT PAPER NUMBER
1612
NOTIFICATION DATE DELIVERY MODE
02/01/2019 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 LAUREN EV ANS AND MAHMOUD HASSAN1
Appeal 2018-001578
Application 14/974,723
Technology Center 1600
Before RICHARD M. LEBOVITZ, JEFFREY N. FREDMAN, and
JOHN E. SCHNEIDER, Administrative Patent Judges.
LEBOVITZ, Administrative Patent Judge.
DECISION ON APPEAL
This appeal involves claims directed to a tooth whitening composition
which comprises a peroxide complex, sodium percarbonate, and a
hydrophobic polymer carrier. The Examiner rejected the claims as obvious
under 35 U.S.C. § 103(a). Pursuant to 35 U.S.C. § 134(a), Appellant appeals
the Examiner's determination that the claims are unpatentable. We have
jurisdiction under 35 U.S.C. § 6(b ). The Examiner's decision is affirmed.
1 The Appeal Brief ("Br."; entered May 30, 2017) lists Colgate-Palmolive
Company as the real party in interest.
Appeal 2018-001578
Application 14/974,723
STATEMENT OF THE CASE
The Examiner finally rejected claims 1-7 under 35 U.S.C. § I03(a) as
obvious in view of Zaidel et al., (US 2006/0045854 Al, published Mar. 2,
2006) ("Zaidel"). Final Act. 3.
Claim 1, the only independent on appeal, is reproduced below:
1. A tooth whitening composition comprising:
(a) a peroxide complex comprising hydrogen peroxide
and an N-vinyl heterocyclic polymer;
(b) sodium percarbonate; and
( c) at least one hydrophobic polymer carrier,
wherein the hydrogen peroxide of the peroxide complex
is present in the tooth whitening composition in an amount
ranging from about 3% to about 5% by weight and
wherein the sodium percarbonate is present in an amount
ranging from about 0.1 % to about 6% by weight.
DISCUSSION
The Examiner found that Zaidel describes an oral care composition
with the same ingredients which are claimed and in amounts which make the
claimed amounts obvious. Final Act. 3.
Specifically, the Examiner found that Zaidel describes (a) hydrogen
peroxide complex in an amount of about 0.1 % to about 25% which, while it
doesn't disclose how much hydrogen peroxide is present, would make the
claimed amount of about 3 % to about 5% obvious in view of the broad range
of complex disclosed by Zaidel. 2 Final Act. 3. Appellants concede that
Zaidel discloses an amount of hydrogen peroxide which falls within the
amount required by the claims. Br. 5.
2 The Examiner cited "cPVP-H20/' as one example of the claimed
"peroxide complex comprising hydrogen peroxide and an N-vinyl
heterocyclic polymer." Final Act. 3; Zaidel 33, 92, and 105 (Example 2).
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Application 14/974,723
The Examiner also found that Zaidel describes (b) sodium
percarbonate in an amount of about 0.1 % to about 20% which encompasses
the claimed amount of about 0.1 % to about 6%. Id. Appellants state that the
"crux of this Appeal comes down to Appellant's limitation that the
whitening composition comprises about 0.1 to 6% by weight of sodium
percarbonate." Id.
Appellants acknowledge that Zaidel discloses a second whitening
agent, in addition to the required peroxide complex, but argue that Zaidel
"teaches a vast number of these additional whitening agents, including both
peroxide and non-peroxide compounds." Br. 6. Based on these broad
disclosures, Appellants contend:
Br. 7.
one skilled in the art would have had no motivation to select
any specific one of Zaidel' s whitening agents over any other
one, nor would one skilled in the art have any expectation of
success that a composition comprising cPVP-peroxide with any
of these whitening agents would result in superior whitening
compared to a composition comprising cPVP-peroxide as the
sole whitening agent.
To begin, we do not agree that the selection of sodium percarbonate as
the second whitening agent would not have been obvious to one of ordinary
skill in the art. Although there is a long list of whitening agents in Zaidel,
contrary to Appellants contention that "Zaidel does not teach or express any
basis for selecting any one of these whitening agents over the others" (Br. 7),
example 2 of Zaidel specifically exemplifies cPVP-peroxide and sodium
percarbonate as the second whitening agent (i-f 102), the same agents which
are claimed. In addition, in the "Introduction" section of Zaidel, hydrogen
peroxide and sodium percarbonate are listed among four commonly accepted
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Application 14/974,723
chemicals used in teeth whitening, making their choice obvious to one of
ordinary skill in the art. Zaidel ,r 4. In Corkill, an obviousness rejection was
affirmed in light of prior art teachings that "hydrated zeolites will work" in
detergent formulations, even though "the inventors selected the zeolites of
the claims from among 'thousands' of compounds." In re Corkill, 771 F .2d
1496, 1500 (Fed. Cir. 1985). For these reasons, a preponderance of the
evidence supports the Examiner's determination that it would have been
obvious to one of ordinary skill in the art to have selected sodium
percarbonate in combination with hydrogen peroxide.
Appellants also contend that they have demonstrated an "unexpected
synergistic effect." Br. 8. Appellants argue that, based on Zaidel's
disclosure, there would have been no expected difference in effect between
the whitening agents disclosed in Zaidel. Id. at 7. However, Appellants
state that the data in the Specification demonstrates:
Br. 8.
the addition of either sodium peroxy disulfate or sodium
monoperoxysulfate to a composition comprising cPVP-
peroxide complex results in decreased whitening efficacy
compared to cPVP-peroxide complex alone. Specification,
Comparative Example 1. In contrast, Appellant's data shows
that combining cPVP peroxide complex with 2% sodium
percarbonate results in enhanced whitening efficacy compared
to cPVP peroxide complex alone. Specification, Example 3
Comparative Example 1 in the Specification compares a single
concentration of hydrogen peroxide ("HP") of 4.5% complexed to PVP to
PVP combined with three different whitening agents, PDS (sodium peroxy
disulfate ), MPS (sodium monoperoxysulfate ), and TKPP (sodium
pyrophosphate) in an in vitro test for teeth bleaching. Spec. ,r 78. Each of
PDS, MPS, and TKPP are present in the amount of 1 %. Id.
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Appeal 2018-001578
Application 14/974,723
Table 1, summarizing the results, shows that after 8 treatments, the
hydrogen peroxide alone (5.66) was greater in whitening teeth than any of
the combinations with it (5.10 for PDS, 4.36 for MPS, and 3.81 for TKPP).
Spec. ,r 78.
With regard to the TKPP, Appellants did not identify where in Zaidel
TKPP is listed as a whitening agent. We found it to be listed as a pH
modifying agent (i-f 67), an abrasive (i-f 78), and tartar control agent (i-f 79).
Thus, we do not find the comparison in Table 1 to be pertinent to the issue of
the obviousness of combining two different whitening agents as claimed.
Table 1 shows that HP alone was higher in its teeth whitening effect
than either combination of HP/PDS and HP/MPS. Spec. ,r 78. It was not
disclosed how many trials for each treatment were performed nor whether
the differences are statistically significant. The table did not show the effect
on whitening of PDS and MPS, alone.
Example 3 in the Specification (i-f 83) compared the effect on teeth
bleaching of a composition comprising 4.5% HP to a composition containing
the same amount of HP combined with 2.5% sodium percarbonate by
weight. Spec. ,r,r 20-21. The HP is in the form of a complex of 20.5% PVP
and 4.5% HP. The results, summarized in Table 4, show that the
combination of 4.5% HP and 2.0% sodium percarbonate was better at
whitening teeth than the 4.5% HP alone. The table did not show the effect
on whitening of sodium percarbonate, alone. It was not disclosed how many
trials for each treatment were performed nor whether the differences are
statistically significant.
We do not find this data persuasive.
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Application 14/974,723
Appellants contend that sodium percarbonate increased whitening
combined with HP while whitening was decreased when PDS or MPS were
present. Br. 8. However, the comparison between the different whitening
agents are not side by side. In Table 1, the amounts of PDS and MPS
utilized are 1 %, while the amount of sodium percarbonate in Table 4 is 2%.
Thus, it cannot be determined whether the percarbonate performed better
because it was present in larger amounts or if there was another reason for
its improvement in whitening as compared to PDS and MPS. Further,
neither agent alone was tested so the individual contribution of the whitening
agent cannot be discerned.
The composition used in the experiments summarized Table 4
comprised 20.5% PVP, but the amount of PVP utilized in the results
displayed in Table 1 is not disclosed. Additional ingredients are also listed
in Table 4 which are not said to present in the compositions used to generate
the results in Table 1. Thus, there appear to be differences in the
compositions utilized in the experiments summarized in Tables 1 and 4
(additional amounts and ingredients in the composition of Example 3).
Therefore, it cannot be determined whether the results differ because of the
whitening agent or other differences in the compositions used to whiten the
teeth.
In addition, as indicated by the Examiner, Zaidel teaches that its
compositions "afford advantages over oral care compositions among known
in the art, including one or more of enhanced whitening efficacy, providing a
higher available concentration of bleaching agent." Zaidel ,r 16 (see Ans. 3).
Thus, it would have been expected that the addition of sodium percarbonate,
a preferred whitening agent of Zaidel - exemplified in Example 2 of Zaidel
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Application 14/974,723
- would show a greater affect than HP, alone. Appellants state that the
results are synergistic - not cumulative as expected by Zaidel (Br. 8) - but
the data in Table 4 does not demonstrate synergy because the effect of the
sodium percarbonate alone is not measured. Therefore, it cannot be
determined from the data in Table 4 whether the effect of the HP and sodium
percarbonate is additive or more than would be expected from each agent
alone (synergistic). Indeed, as pointed out by the Examiner, Zaidel shows
whitening values which exceed those shown in Tables 1 and 4. See Zaidel ,r
11; Ans. 3.
Only one concentration of each of HP and sodium percarbonate were
compared in the experimental results shown in Table 4. Appellants did not
demonstrate that single amount of sodium percarbonate tested shows
properties any different from the amounts in the disclosed range of peroxide
compounds described by Zaidel (at ,r 38).
The law is replete with cases in which the difference between the
claimed invention and the prior art is some range or other
variable within the claims . . . . These cases have consistently
held that in such a situation, the applicant must show that the
particular range is critical, generally by showing that the claimed
range achieves unexpected results relative to the prior art range.
In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990) (internal citations
omitted.)
Appellants have not established the criticality of the claimed amount
by showing that it is any different from amounts disclosed by Zaidel which
are outside the claimed range.
Claim 3 and 4
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Claim 3 depends from claim 1 and further recites "sodium
percarbonate is present in an amount ranging from about 1 % to about 2 % by
weight." Claim 4 depends from claim 1 and further recites "the sodium
percarbonate is present in an amount of about 2 % by weight." While these
ranges are narrower than in claim 1, the results described in the Specification
are insufficient for the reasons stated above, namely, Appellants have not
done a side-by-side comparison of sodium percarbonate to PDS and MPS
( differences in amount of whitener and differences in the ingredients in
compositions), the amount of 2% percarbonate was not established to be
synergistic, and criticality of the 2% was not established.
Accordingly, the obviousness rejection of claims 1-7 is affirmed.
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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