Ex Parte Mello et al

Patent Trial and Appeal Board

Nov 13, 2012

11847935 (P.T.A.B. Nov. 13, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte SARITA V. MELLO and EVANGELIA S. ARVANITIDOU
__________

Appeal 2012-001610
Application 11/847,935
Technology Center 1600
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Before LORA M. GREEN, FRANCISCO C. PRATS, and MELANIE L.
McCOLLUM, Administrative Patent Judges.

McCOLLUM, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a
dentifrice and an oral cavity cleaning method. The Examiner has rejected
the claims as obvious. We have jurisdiction under 35 U.S.C. § 6(b). We
affirm-in-part.
STATEMENT OF THE CASE
Claims 1, 4-11, 19-23, and 25 are pending and on appeal (App. Br. 4-
5). The claims subject to each rejection have not been argued separately and
therefore stand or fall together. 37 C.F.R. § 41.37(c)(1)(vii). Claims 1, 20,
and 25 are representative and read as follows:
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1. A dentifrice in the form of a solid tape or strip capable of adhering
to the surface of the oral cavity, comprising at least one abrasive, and at least
one fluoride source, wherein said dentifrice is capable of cleaning the teeth
and/or oral cavity and is capable of dissolution upon brushing.
20. The dentifrice of claim 1, wherein the at least one fluoride source
is present in an amount of about 0.01 to 5 wt. %[.]
25. A method of cleaning the oral cavity of a mammal, the method
comprising:
(i) applying the dentifrice of claim 1 to a surface of the oral cavity;
and
(ii) apply agitation to the dentifrice, so as to mechanically rupture
and/or facilitate dissolution of the dentifrice.
Claims 1, 4-11, 19, 21, and 23 stand rejected under 35 U.S.C. § 103(a)
as obvious over Perna
1
in view of NICNAS
2
(Ans. 5).
Claims 20 and 22 stand rejected under 35 U.S.C. § 103(a) as obvious
over Perna in view of Oniki
3
(Ans. 8).
Claim 25 stands rejected under 35 U.S.C. § 103(a) as obvious over
Perna in view of Boyd
4
(Ans. 9).
I
In rejecting claims 1, 4-11, 19, 21, and 23, the Examiner relies on
Perna for teaching “a tooth whitening system comprising a dissolvable
matrix that supports a whitening material, which is adhered to the teeth so
that the whitening material is exposed to the teeth over time as the
dissolvable matrix slowly dissolves” (Ans. 5). In particular, the Examiner

1
Perna, US 2003/0228264 A1, published Dec. 11, 2003.
2
NICNAS, EXISTING CHEMICALS INFORMATION SHEET SODIUM LAURYL
SULFATE (2003).
3
Oniki et al., US 2004/0219112 A1, published Nov. 4, 2004.
4
Boyd et al., US 2007/0140985 A1, published Jun. 21, 2007.
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finds that Perna teaches that the “[t]eeth whitening units may be . . . a sheet
of suitable size or shape for application to the teeth”; that “constituent
materials are mixed and the mixture is shaped into the desired solid form”;
that a “suitable whitening compound is peroxide”; that “peroxide and about
5 to approximately 20% of an alkaline abrasive such as an alkali metal
carbonate are included in [the] whitening compound”; and that “the
whitening material may include fluoride salts, such as sodium fluoride,
potassium fluoride, monofluorophosphate and sodium fluorosilicate” (id. at
5-6).
The Examiner relies on NICNAS as evidence that sodium lauryl
sulfate, as disclosed by Perna, “is an art recognized surfactant with foaming
activity” (id. at 5).
The Examiner concludes that “it would have [been] obvious to have
selected various combinations of various disclosed ingredients [including]
abrasive, i.e. silica; fluoride source, i.e. sodium fluoride; [and] surfactant,
i.e. sodium lauryl sulfate; . . . from within a prior art disclosure, to arrive [at]
compositions „yielding no more than one would expect from such an
arrangement‟” (id. at 7).
Findings of Fact
1. Perna discloses a “teeth whitener compris[ing] a dissolvable
matrix that is capable [of] adhering to a dental surface and dissolving in the
presence of oral fluids over a time period of minutes or hours, and a
whitening material supported by the dissolvable matrix” (Perna, ¶ [0010]).
2. Perna also discloses:
For the various type of dissolvable substrate 102 that is
selected, constituent ingredients are mixed and the mixture is
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shaped into a desired solid form by a conventional technique.
. . . The application units may be various shapes including
tooth-shaped, rectangular, square, round, triangular, or any
other suitable shape for application to one or more teeth. The
units may be individual or connected, for example at a
perforation, crease, or fold, so that individual units may be torn
apart for application to a single tooth, or left connected for
application to multiple teeth.
(Id. at ¶ [0045].)
3. In addition, Perna discloses that “a peroxide compound may be
included in combination with an alkaline abrasive agent” (id. at ¶ [0056]).
4. Perna also discloses that “the whitening material 104 may
include fluoride salts . . . , for example, sodium fluoride, potassium fluoride,
sodium monofluorophosphate and sodium fluorosilicate” (id. at ¶ [0061]).
Analysis
In view of the foregoing findings of fact (FF), we agree with the
Examiner that “it would have [been] obvious to have selected various
combinations of [Perna‟s] various disclosed ingredients,” specifically to
include both an abrasive (FF 3) and a fluoride source (FF 4) in Perna‟s teeth
whitener (Ans. 7).
Appellants argue, however, that “the dentifrice of the invention is
claimed as [] „. . . a solid tape or strip capable of adhering to the surface of
the oral cavity. . .‟. This is quite different physically from the product of
Perna, which appears to be a gel or paste applied to a support matrix.”
(Reply Br. 5.) We are not persuaded.
Perna discloses a “teeth whitener compris[ing] a dissolvable matrix
that is capable [of] adhering to a dental surface” (FF 1). To form a
dissolvable substrate, Perna discloses that “constituent ingredients are mixed
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and the mixture is shaped into a desired solid form” (FF 2 (emphasis
added)). Perna also discloses:
The application units may be various shapes including tooth-
shaped, rectangular, square, round, triangular, or any other
suitable shape for application to one or more teeth. The units
may be individual or connected, for example at a perforation,
crease, or fold, so that individual units may be torn apart for
application to a single tooth, or left connected for application to
multiple teeth.
(Id.) Appellants have not adequately explained why this fails to teach or
suggest a solid tape or strip capable of adhering to the surface of the oral
cavity.
Appellants also argue:
[T]he Perna compositions are not intended to be used for
cleaning teeth while brushing - they are intended to remain on
the teeth until the matrix dissolves. In fact, brushing would
result in the Perna compositions being removed from the teeth
before the whitening material is delivered and render them
unsatisfactory for their intended purpose. As a result, Perna
could not have provided the suggestion or motivation required
to render the claimed invention obvious.
(App. Br. 8.) We are not persuaded.
“[T]he patentability of apparatus or composition claims depends on
the claimed structure, not on the use or purpose of that structure.” Catalina
Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed. Cir.
2002). Appellants have not adequately explained why the composition
suggested by Perna, which contains both an abrasive and a fluoride source,
is not capable of being used as a dentifrice.
We note Appellants‟ argument that “the intended use is clearly
relevant to identifying the relevant art” (Reply Br. 6). However, given that
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both Appellants‟ product and Perna are in the field of tooth care, we
conclude that Perna is analogous art.
Conclusion
The evidence supports the Examiner‟s conclusion that claim 1 would
have been obvious. We therefore affirm the obviousness rejection of claim 1
and of claims 4-11, 19, 21, and 23, which fall with claim 1.
II
In rejecting claims 20 and 22, the Examiner relies on Perna as
discussed above and relies on Oniki for teaching a tooth whitening
composition containing “sodium monofluorophosphate in amounts of 0.7%”
and “a flavor such as saccharine in amounts of 0.1%” (Ans. 8). The
Examiner concludes that “it would have been obvious to use the amounts of
fluoride source, i.e. sodium monofluorophosphate, and flavoring agent,
i.e. saccharin, of Oniki et al., i.e. 0.7% and 0.1% respectively, in the
composition of Perna since they are art recognized amounts for oral
compositions delivered by films” (id. at 9).
Findings of Fact
5. Oniki discloses a tooth whitening composition comprising
“metal monofluorophosphate (such as sodium monofluorophosphate and
potassium monofluorophosphate)” (Oniki, Abstract & ¶ [0032]).
6. In particular, Oniki discloses a whitening composition
comprising 0.7% sodium monofluorophosphate (id. at ¶ [0047]).
Analysis
Appellants argue that, like Perna, Oniki describes a whitening
product, not a dentifrice, and that “[t]here is no indication that the product of
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Oniki would be capable of cleaning, as opposed to simply bleaching the
teeth and/or oral cavity, or that the solid strip which holds the gel would be
capable of dissolution upon brushing” (Reply Br. 7). We are not persuaded.
Perna discloses a tooth whitener comprising a matrix that is capable of
“dissolving in the presence of oral fluids over a time period of minutes or
hours” (FF 1). Given that it dissolves without brushing, we conclude that
the Examiner provided adequate reason to believe that Perna‟s tooth
whitener, as modified by Oniki, would be capable of dissolution upon
brushing (Ans. 11-12). In addition, we conclude that the Examiner provided
adequate reason to believe that the tooth whitener that would result from the
combination of Perna with Oniki could also be used as a dentifrice (id.).
Appellants have not provided sufficient evidence that the resulting tooth
whitener would not possess these characteristics. See In re Best, 562 F.2d
1252, 1254-55 (CCPA 1977).
Conclusion
The evidence supports the Examiner‟s conclusion that claim 20 would
have been obvious. We therefore affirm the obviousness rejection of
claim 20 and of claim 22, which falls with claim 20.
III
In rejecting claim 25, the Examiner relies on Perna as discussed above
(Ans. 9). However, the Examiner finds that “Perna does not teach a method
of applying agitation to the oral strip or tape” (id.).
The Examiner relies on Boyd for teaching a composition for cleaning
or polishing tooth enamel comprising a carrier and first and second
abrasives, wherein the second abrasive is in a film and “may be activated
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when at least a portion of the film disintegrates[, which] is achieved by
mechanical disruption” (id.). The Examiner concludes:
[I]t would have been obvious to modify the method of Perna to
include the step of applying physical force, such as tooth
brushing, to the water-soluble dissolvable film since it would
serve to create finer or smaller particles which maximizes the
effectiveness of the abrasives in the composition to clean and
polish the teeth as taught by Boyd et al.
(Id. at 10.)
Findings of Fact
7. Perna discloses that the “combination of dissolvable matrix and
whitening material is attached to one or more teeth so that the whitening
material is exposed to the one or more teeth over time as the dissolvable
matrix slowly dissolves” (Perna, Abstract).
8. Perna also discloses that the dissolvable substrate “operates not
only to sustain the application of the whitening material 104 to the teeth by
virtue of a slow dissolving action, but also functions as an adhesive for
holding the whitening material 104 to the teeth” (id. at ¶ [0023]).
9. Boyd discloses a composition for “cleaning and/or polishing . . .
oral surfaces, such as tooth enamel,” the composition comprising “a first
abrasive, a film comprising a second abrasive, and a carrier” (Boyd, ¶ [0019]
& Abstract).
10. Boyd also discloses that the second abrasive “may be activated
when at least a portion of the film disintegrates to expose a portion of the
second abrasive. . . . The disintegration may be achieved by chemical
disruption, mechanical disruption, or both, simultaneously or serially.” (Id.
at ¶ [0021].)
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11. In addition, Boyd discloses:
A method of cleaning and/or polishing an oral surface
comprises introducing an oral composition into an oral cavity.
. . . [T]he oral composition comprises a film that comprises a
second abrasive, such as a polishing abrasive. The film is then
contacted with an oral surface and saliva. The film degrades
into a plurality of successively smaller film fragments during
the contacting with the oral surface and/or the saliva. . . . [I]t is
believed that the successively smaller film fragments that are
produced via the disintegration process improve polishing
efficacy by exposing the surface to continuously smaller
fragments containing the particles. The kinetically delayed
release of the polishing particles is believed to improve
polishing performance, by increasing local concentration of the
polishing abrasive near the oral surface following the treatment
with the larger, softer, cleaning abrasive particles, which may
occur during the earlier stage of brushing.
(Id. at ¶ [0047].)
12. Boyd also discloses:
In some embodiments, a film comprises at least one film-
forming material; in certain embodiments, this film-forming
material comprises a polymer. . . . In some embodiments, the
polymer is soluble in a solvent, for example, water. For
example, a water-soluble, breakable polymer that dissolves
during application of physical force during use, such as during
tooth brushing[,] . . . may be desirable.
(Id. at ¶ [0050].)
Analysis
As discussed above, Appellants argue:
[T]he Perna compositions are not intended to be used for
cleaning teeth while brushing - they are intended to remain on
the teeth until the matrix dissolves. In fact, brushing would
result in the Perna compositions being removed from the teeth
before the whitening material is delivered and render them
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unsatisfactory for their intended purpose. As a result, Perna
could not have provided the suggestion or motivation required
to render the claimed invention obvious.
(App. Br. 8.)
As also discussed above, we are not persuaded by this argument in the
context of product claim 1. However, claim 25 is directed to a method.
Perna discloses a teeth whitener that “is attached to one or more teeth so that
the whitening material is exposed to the one or more teeth over time as the
dissolvable matrix slowly dissolves” (FF 1 & 7). Boyd, on the other hand,
discloses an oral care composition for cleaning and/or polishing teeth (FF 9).
Although Boyd clearly discloses applying agitation to its composition
(FF 10-12), we agree with Appellants that the Examiner has not adequately
explained why it would have been obvious to apply agitation in the context
of Perna‟s whitener.
In particular, the Examiner finds that the “method step of brushing
would not remove the actives from teeth, but would only increase the rate at
which the film dissolves and the actives are delivered to the teeth,” thus
increasing the speed of the method (Ans. 13-14). However, given that Perna
states that the dissolvable substrate operates “to sustain the application of the
whitening material 104 to the teeth by virtue of a slow dissolving action”
(FF 8), we do not agree with the Examiner that the evidence supports the
conclusion that faster dissolution would be desired. See In re Gordon, 733
F.2d 900, 902 (Fed. Cir. 1984) (there is no suggestion to make a proposed
modification if it would render the prior art being modified “inoperable for
its intended purpose”).
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Conclusion
The evidence does not support the Examiner‟s conclusion that
claim 25 would have been obvious. We therefore reverse the obviousness
rejection of claim 25.
SUMMARY
We affirm the obviousness rejections of claims 1, 4-11, and 19-23, but
reverse the obviousness rejection of claim 25.
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-IN-PART

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