Ex Parte Mondin et al

Patent Trial and Appeal Board

May 22, 2017

14117069 (P.T.A.B. May. 22, 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.
14/117,069 06/18/2014 Myriam Mondin 9352-OO-US-Ol-OC 2754
23909 7590 05/24/2017
COLGATE-PALMOLIVE COMPANY
909 RIVER ROAD
PISCATAWAY, NJ 08855
EXAMINER
WEBB, WALTER E
ART UNIT PAPER NUMBER
1612
NOTIFICATION DATE DELIVERY MODE
05/24/2017 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 MYRIAM MONDIN, MARIE CHRISTINE HOUBEN,
and PIERRE LAMBERT
Appeal 2017-002086
Application 14/117,069
Technology Center 1600
Before ERIC B. GRIMES, DEBORAH KATZ, and DAVID COTTA,
Administrative Patent Judges.
KATZ, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 seek our review, under 35 U.S.C. § 134(a), of the
Examiner’s decision to reject claims 1 and 3—16. We have jurisdiction under
35 U.S.C. § 6(b). We affirm.
Appellants’ specification is directed to toothpaste having “improved
clarity.” (Spec. 13.)
Appellants’ claim 1 recites:
A toothpaste gel composition comprising, by weight:
1 The real party in interest is said to be Colgate-Palmolive Company. (App.
Br. 2.)
Appeal 2017-002086
Application 14/117,069
i) gel base comprising
from about 6 to about 10% of a low abrasive silica;
from about 6 to about 10% of a fine silica thickener,
wherein a low abrasive silica and a fine silica thickener
are in a ratio of 1.5:1 to 1:1.5;
and
ii) elements suspended in said gel, selected from beads,
capsules, and film fragments,
wherein the composition is substantially free of high
cleaning silica;
wherein the gel is substantially clear; and
wherein the gel has a turbidity measurement of less than
200 NTU.
(App. Br. 10, Claims App’x.)
The Examiner rejected claims 1 and 3—16 as being obvious under 35
U.S.C. 103(a) over Stanier2 in view of Grimm.3 In addition to arguing that
claim 1 is patentable over the prior art, Appellants address dependent claims
3 and 16. We focus on these claims below. See 37 C.F.R. § 41.37(c)(l)(iv).
Findings of Fact
1. The abstract of Stanier teaches that “ [a]n amorphous silica
having an RDA value of between 30 and 70, [a recited range of oil
absorption capacity and moisture loss] can be incorporated at a 10% to 25%
loading into a transparent toothpaste. ...” (Stanier abstract.)
2. Stanier teaches a dentifrice formulation in Example 4 with
10.0% low abrasive silica and 10.0% SorbosilTC15, which is described as a
thickening silica. (Stanier, 9:39-64.)
2 U.S. Patent 5,964,937, issued October 12, 1999.
3 U.S. Patent 3,957,964, issued May 18, 1976.
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Application 14/117,069
3. The ratio of low abrasive silica to thickening silica taught in
Stanier Example 4 is 1:1.
4. The dentrifrice taught in Example 4 of Stanier is opaque, not
transparent. (Stanier 9:40-42.)
5. The toothpaste taught in Example 4 of Stanier includes titanium
dioxide (Ti02). (Stanier, 9:59.)
6. Stanier teaches a dentifrice formulation in Example 5 that is
transparent and includes 20% low abrasive silica and 2% SorbosilTC15, but
no Ti02. (Stanier 9:65—10:14.)
7. Grimm teaches visually clear gel dentifrices that include
encapsulated flavorings. (Grimm, 1:58—63.)
Analysis
Stanier provides examples of dentifrice formulations that include an
amorphous silica, which Appellants do not dispute is a low abrasive silica.
(Stanier 9:39-10:14; See App. Br. 5 (“Stanier teaches the use of... an
amorphous silica (low abrasive silica) for a transparent toothpaste... .”).)
Example 4 of Stanier teaches a dentifrice with low abrasive silica and
thickening silica in amounts and ratios within the scope of Appellants’
claims. (Stanier 9:40-64; FFs2-3.) Example 4 also includes Ti02 and is
described as producing an opaque dentifrice formulation. {Id.; FFs 4—5.)
Example 5 of Stanier teaches another dentifrice formulation that includes
more low abrasive silica and less thickening silica, but no Ti02, which is
transparent. (Stanier 9:66—10:14; FF 6.) Stanier teaches in its abstract that
amorphous, low abrasive silica, can be used in transparent toothpaste at a
10-25% loading. (Stanier abstract; FF 1.)
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Application 14/117,069
Appellants argue that the Examiner failed to provide any reason why
one of skill in the art would have reformulated the dentifrice of Example 4
as a transparent toothpaste, especially given that Stanier provides a different
example for a transparent toothpaste. (App.Br. 5—6.) We are not persuaded
that the Examiner erred. It is clear from Stanier that transparent toothpastes
were known in the art. (See Ans. 3-4 and 7.) Thus, we are persuaded that
there was a reason to make transparent toothpastes. Indeed, Stanier featured
transparent toothpastes in its abstract. “[I]f a technique has been used to
improve one device, and a person of ordinary skill in the art would recognize
that it would improve similar devices in the same way, using the technique is
obvious unless its actual application is beyond his or her skill.” KSRInt'l
Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). The fact that some of
Stanier’s examples are opaque does not mean that modification to be
transparent would have been non-obvious.
Appellants also argue that Stanier does not teach including low
abrasion silica to impart transparency. (App. Br. 6; Reply Br. 2—3.) We are
not persuaded by this argument because Appellants claim a composition, not
a method of making a composition transparent. If the resulting composition
would have been obvious, the reasons for adding the recited components and
elements are not relevant.
Appellants argue further that the Examiner failed to demonstrate why
one of skill in the art would have reasonably concluded that a composition
with 10 % low abrasive silica and 10% of the thickening SorbosilTC15
would be transparent even if TiC>2 were removed. (App. Br. 6-7; Reply Br.
3.) Appellants assert that the Examiner failed to show why, given that the
transparent dentifrice of Stanier Example 5 has less thickening silica (2.0%),
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Appeal 2017-002086
Application 14/117,069
one of skill in the art would not believe the claimed levels of fine silica
thickener, which are higher (“from about 6 to about 10%”), would alter
transparency. (Id.) We are not persuaded by this argument because
Appellants agree that Ti02 is added to toothpaste to make it white. (App.
Br. 7.) Thus, Appellants do not dispute that Ti02 is an opacifier. We agree
with the Examiner that it would have been obvious to one of ordinary skill in
the art to remove Ti02 to achieve a transparent composition. (See Ans. 4.)
When there is a design need or market pressure to solve a
problem and there are a finite number of identified, predictable
solutions, a person of ordinary skill has good reason to pursue
the known options within his or her technical grasp. If this leads
to the anticipated success, it is likely the product not of
innovation but of ordinary skill and common sense. In that
instance the fact that a combination was obvious to try might
show that it was obvious under § 103.
See KSR, 550 U.S.at421.
Appellants argue that the concentrations of low abrasive silica and
fine silica thickener recited in dependent claims 3 and 16 (“from 7—9%” for
each component) would not have been obvious because the only teaching of
a transparent toothpaste in Stanier has 5—25% amorphous (low abrasive)
silica. (App. Br. 8.) We are not persuaded by Appellants’ argument
because, as discussed above, we are persuaded it would have been obvious
to one of ordinary skill in the art to have excluded the Ti02 in other
compositions taught in Stanier, to achieve a transparent formulation.
To the extent that Appellants argue for the separate patentability of
claim 3 due to the limitation of “from about 0.5 to about 1.5% of suspended
elements” in the Reply Brief, we do not consider these arguments. “Any
argument raised in the reply brief which was not raised in the appeal brief, or
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Application 14/117,069
is not responsive to an argument raised in the examiner's answer . .. will not
be considered by the Board for purposes of the present appeal, unless good
cause is shown.” 37 C.F.R. § 41.41(b)(2).
Conclusion
Upon consideration of the record and for the reasons given, the
rejection of claims 1 and 3—16 under 35 U.S.C. § 103(a) is sustained.
Therefore, we affirm the decision of the Examiner.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136.
AFFIRMED
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