Ex Parte Fruge et al

Patent Trial and Appeal Board

Oct 25, 2016

13503801 (P.T.A.B. Oct. 25, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/503,801 04/24/2012
23909 7590 10/27/2016
COLGATE-PALMOLIVE COMPANY
909 RIVER ROAD
PISCATAWAY, NJ 08855
FIRST NAMED INVENTOR
Linh Fruge
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.
8276-00-0C 2636
EXAMINER
ROBERTS, LEZAH
ART UNIT PAPER NUMBER
1612
NOTIFICATION DATE DELIVERY MODE
10/27/2016 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 LINH FRUGE, STEVEN WADE FISCHER,
and MICHAEL PRENCIPE. 1
Appeal2015-005978
Application 13/503,801
Technology Center 1600
Before DONALD E. ADAMS, TA WEN CHANG and
JOHN E. SCHNEIDER, Administrative Patent Judges.
SCHNEIDER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to
dentifrice compositions which have been rejected as obvious. We have
jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
STATEMENT OF THE CASE
The present invention is directed to "dentifrice compositions having a
low water phase comprising effective amounts of polyphosphate and ionic
1 Appellants identify the Real Party in Interest as Colgate-Palmolive
Company. Appeal Br. 2.
Appeal2015-005978
Application 13/503,801
active ingredients. The ionic active ingredients may include fluoride ions
and metal ions such as stannous and zinc ion source." Spec. ,-r 1.
Claims 1, 4, and 5-19 are on appeal. Claim 1 is illustrative and reads
as follows:
1. A dentifrice composition comprising in a single phase:
an orally acceptable vehicle;
a source of fluoride ions;
a source of stannous ions;
a source of zinc ions; and
at least one polyphosphate salt selected from the group
consisting of inorganic polyphosphate salts which have equal to
or less than three phosphorous atoms;
wherein
the dentifrice composition has a total water content of
less than about 10% based on the weight of the composition;
and
the vehicle comprises a thickening agent comprising, in
combination, a cross-linked polyvinylpyrrolidone and a gum.
The claims stand rejected as follows:
Claims 1, 4, 5, and 8-19 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Glandorf2 in view of Miller3.
Claims 6 and 7 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Glandorf in view of Miller in further view of Trivedi.4
2 Glandorf et al., US 2007 /025928 Al, published Feb. 1, 2007 ("Glandorf').
3 Miller et al., US 2007/0014740 Al, published Jan. 18, 2007 ("Miller").
4 Trivedi et al., US 2006/0134025 Al, published June 22, 2006 ("Trivedi").
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Application 13/503,801
Issue
DISCUSSION
In rejecting claims 1 and 4--195 as obvious, the Examiner finds that
Glandorf teaches all the elements of the claims with the exception of the use
of crosslinked polyvinyl pyrrlidone ("PVP"). Final Act. 3. The Examiner
goes on to find that Miller teaches the use of crosslinked PVP as a thickener
for oral compositions. Final Act. 4. The Examiner concludes that it would
have been obvious to one skilled in the art to use cross-linked PVP taught in
Miller in the composition of Glandorf. Id.
Appellants contend that Glandorf fails to teach a combination of PVP
and xanthan gum and that the examples of Glandorf are primarily directed to
water levels in excess of those set forth in the instant claims. Appeal Br. 5.
Appellants go on to argue that Miller does not teach using crosslinked PVP
in combination with xanthan gum as a thickener and that there is no
suggestion to combine the teachings of Miller with those of Glandorf. Id.
Appellants conclude by arguing that there is strong evidence of secondary
considerations, namely a teaching away and unexpected results. Id. at 5---6.
The issue with respect to this rejection is whether the Examiner has
established by a preponderance of the evidence that claims 1 and 4--19
would have been obvious over Glandorf combined with Miller as defined by
35 U.S.C. § 103(a).
5 While claims 6 and 7 are the subject of a separate rejection, Appellants
concede that these claims stand or fall with the rejection of claims 1, 4, 5,
and 8-19. Appeal Br. 2-3. Therefore we shall address all the rejected
claims together.
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Appeal2015-005978
Application 13/503,801
Findings of Fact
We adopt as our own the Examiner's findings and analysis. The
following findings are included for emphasis and reference convenience.
FF 1. Glandorf teaches a low water dentifrice composition comprising
stannous fluoride, sodium polyphosphate, zinc lactate, glycerin, carrageenan
and xanthan gum. Glandorf, Example II, formula D.
FF2. Glandorf identifies carrageenan and xanthan gum as thickeners.
Glandorf i-f 7 4.
FF3 Miller discloses an oral composition containing cationic
compatible thickeners including crosslinked PVP. Miller i-f 52.
FF4. Miller discloses that the oral composition can contain other
thickeners such as xanthan gum in addition to crosslinked PVP. Id.
Principles of Law
"The factual predicates underlying an obviousness determination
include the scope and content of the prior art, the differences between the
prior art and the claimed invention, and the level of ordinary skill in the art."
In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998).
It is obvious to those skilled in the art to substitute one known
equivalent for another. See In re Omeprazole Patent Litigation, 483 F.3d
1364, 1374 (Fed. Cir. 2007) ("[T]his court finds no ... error in [the]
conclusion that it would have been obvious to one skilled in the art to
substitute one ARC [alkaline reactive compound] for another.").
"Although a reference that teaches away is a significant factor to be
considered in determining unobviousness, the nature of the teaching is
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Appeal2015-005978
Application 13/503,801
highly relevant, and must be weighed in substance. A known or obvious
composition does not become patentable simply because it has been
described as somewhat inferior to some other product for the same use." In
re Gurley, 27 F.3d 551,553 (Fed. Cir. 1994).
"The evidence presented to rebut a prima facie case of obviousness
must be commensurate in scope with the claims to which it pertains." In re
Dill, 604 F.2d 1356, 1361 (CCPA 1979).
Analysis
Claim 1 is representative of the rejected claims and related to a
dentifrice which includes crosslinked PVP as a thickener.
We agree with the Examiner that that subject matter of claim 1 would
have been obvious to one skilled in the art at the time the invention was
made. Glandorf teaches all of the claim limitations except the use of
crosslinked PVP as a thickener. FF 1. Miller teaches the use of crosslinked
PVP as a thickener. FF3. It would have been obvious to one skilled in the
art to use crosslinked PVP as a thickener in the composition of Glandorf as it
would involve substituting one known thickener for another.
Appellants contend that Glandorf does not teach the use of PVP with
xanthan gum. Appeal Br. 5. While this may be true, Glandorf does teach
the use of two thickeners, carrageenan and xanthan gum, in a water free
composition. FFl and 2. Miller teaches that crosslinked PVP and xanthan
gum can be used together as thickeners. FF3 and 4. It would have been
obvious to one skilled in the art to substitute the crosslinked PVP/xanthan
gum mixture of Miller for the carrageenan/xanthan gum combination
disclosed in Glandorf.
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Application 13/503,801
Appellants argue that, while Glandorf teaches a composition
containing PVP as a chelating agent, crosslinked PVP and PVP are not
interchangeable. Reply Br. 2-3. While this may be true, we are not
persuaded that the instant claims are thereby rendered unobvious. As
discussed above, both Glandorf and Miller teach the use of a mixture of two
thickeners, and Miller teaches crosslinked PVP as a thickener. FF2--4. It
would have been obvious to one skilled in the art to substitute one known
thickener mixture for another.
Appellants argue that Miller does not teach the reason for adding
crosslinked PVP as a thickener in combination with xanthan gum. Appeal
Br. 5. We are unpersuaded. Miller specifically teaches that crosslinked PVP
can be used with xanthan gum. FF4. With respect to Miller not teaching
minimizing viscosity, we note that viscosity is not a claim limitation.
Appellants next argue that the art teaches away from the proposed
combination. Appeal Br. 5-6. Again we are unpersuaded. While the
Specification discussed some of the apparent disadvantages of the prior art,
Appellants have pointed to no persuasive evidence that the art teaches
against the proposed combination. At best Appellants have shown that
certain compositions may be considered inferior alternatives. This does not
constitute a teaching away. In re Gurley, 27 F.3d at 553.
Finally, Appellants argue that the compositions of the claimed
invention exhibit unexpected results when compared with the prior art.
Once again, we are unpersuaded. Appellants only present data for a single
formulation that uses crosslinked PVP and xanthan gum. However, claim 1
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Application 13/503,801
refers to gum broadly, not just xanthan gum. Thus the evidence of
unexpected results is not commensurate with the scope of the claims.
Conclusion of Law
We conclude that the subject matter of claim 1 would have been
obvious over Glandorf in combination Miller under 35 U.S.C. § 103(a).
Claims 4--19 have not been argued separately and therefore fall with
claim 1. 37 C.F.R. § 41.37( c )(1 )(iv).
SUMMARY
We affirm the rejections based on 35 U.S.C. § 103(a).
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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