Ex Parte Prencipe et al

Patent Trial and Appeal Board

Sep 26, 2012

11745158 (P.T.A.B. Sep. 26, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte MICHAEL PRENCIPE, ISABELLE VAN RICKEY, and
RICHARD LOVELL
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Appeal 2012-000185
Application 11/745,158
Technology Center 1600
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Before TONI R. SCHEINER, ERIC GRIMES, and FRANCISCO C.
PRATS, Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to methods
of cleaning an oral surface, which the Examiner has rejected as obvious. We
have jurisdiction under 35 U.S.C. § 6(b). We reverse.
STATEMENT OF THE CASE
Claims 1-14 are on appeal. Claim 1, the only independent claim,
reads as follows:
1. A method of cleaning an oral surface, maintaining oral health and/
or increasing oral health comprising:
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a. contacting an oral surface with a primary oral care composition at
least once daily, and
b. contacting the oral surface with a periodic oral care composition at
least once within a period of about 42 days but less than once daily;
wherein the periodic oral care composition (but not the primary oral
care composition) comprises a first abrasive having an Einlehner hardness of
greater than 5 mg loss per 100,000 revolutions and a second abrasive having
an Einlehner hardness of less than about 5 mg loss per 100,000 revolutions,
wherein a ratio of the first abrasive to the second abrasive ranges from
about 1:1.6 to about 1.6:1,
wherein the periodic oral composition has a pellicle cleaning ratio of
greater than about 100 and a radioactive dentin abrasion of less than 200,
and
wherein the first abrasive and the second abrasive each comprise
silica.

The Examiner has rejected claims 1-14 under 35 U.S.C. § 103(a) as
obvious in view of Durga ‘9931 and Pocrovsky.2 The Examiner has also
rejected claims 1-14 under 35 U.S.C. § 103(a) as obvious in view of Durga
‘1153 and Pocrovsky. The same issue is dispositive for both rejections.
The Examiner finds that both Durga references disclose, or would
have made obvious, a dentifrice composition that meets the limitations of the
periodic oral care composition of claim 1 (Answer 5-6, 7-8). The Examiner
finds that Pocrovsky discloses that teeth should be brushed twice a day using
toothpaste (the “primary oral care composition” of claim 1) (id. at 6, 8).
The Examiner concludes that it “would have been obvious to one of
ordinary skill in the art … to have utilized the primary oral care composition

1 Durga et al., US 6,290,933 B1, Sept. 18, 2001.
2 Pocrovsky, Kratkaya meditsiskaya encyklopediya, ACAD. RAMN, T.II, M.,
284 (1994), English language translation.
3 Durga et al., WO 01/85115 A2 Nov. 15, 2001.
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as disclosed by Pocrovsky … in addition to [Durga’s] periodic oral care
composition … because the secondary reference teaches oral health
promotion by using dentifrices and tooth pastes at least two times” per day
(id. at 6, 9). The Examiner also reasons that “it would have been within
[the] purview of [a] skilled artisan to optimize the contact time of the two
compositions comprising silica abrasives and composition comprising other
beneficial dentifrice components in order to achieve the best possible oral
health effects” (id. at 7, 9).
Appellants argue that the cited references would not have made
obvious “any methods involving administration of different dentifrices at
different times, let alone the specific regimen claimed” (Appeal Br. 11).4
Appellants argue that “Durga is directed to a particular dentifrice,” and does
not disclose “methods of oral hygeine [sic], apart from the use of the novel
dentifrice in the manner in the manner a dentifrice would normally be used”
(id. at 8-9). Appellants argue that Durga does not disclose “a periodic or
monthly dentifrice, nor use in a regimen in conjunction with another
dentifrice” (id.) and Pocrovsky suggests only twice-daily use of toothpaste
(id. at 9-10).
We agree with Appellants that the Examiner has not persuasively
shown that the cited references would have made obvious the method of
claim 1. Durga ‘993 discloses “dentifrice compositions containing a silica

4 Appellants note that Durga ‘115 “is the PCT publication document for the
international patent application that claims priority from Serial No.
09/567402,” the patent application that resulted in the issuance of Durga
‘993 (Appeal Br. 11), and thus both Durga references contain essentially the
same disclosure.
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abrasive, which provides improved oral cleaning and a safe level of
abrasivity” (Durga ‘993, col. 1, ll. 4-6). Similarly, Durga ‘115 discloses “a
dentifrice composition having superior cleaning functionality,” which
comprises silica hydrogel particles (Durga ‘115 4:1-5). However, the
Examiner has not pointed to anything in either Durga reference to suggest a
particular schedule of use for the dentifrice composition, or a particular
regimen that comprises using two dentifrice compositions.
Pocrovsky provides the unremarkable disclosure that “[t]eeth are
cleaned by a tooth brush using toothpastes and dentifrices.… At the age of
4-5 teeth should be cleaned two times: in the evening before sleep and in the
morning after breakfast.” (Pocrovsky 1.)
Thus, the Examiner has not pointed to a disclosure in any of the
references of periodic (other-than-daily) use of toothpaste or dentifrice
compositions, or of a disclosure of using two different toothpaste or
dentifrice compositions. The Examiner argues that Pocrovsky’s disclosure
of cleaning the teeth twice a day would have made it obvious “to utilize
Durga’s composition (reads on periodic oral care composition) for added
benefits of dental hygiene, stain removal, plaque removal and for treatment
of gingivitis in addition to regular use of primary oral cleaning composition
as taught by Pocrovsky” (Answer 12). However, the Examiner has not
persuasively explained why it would have been obvious, based on the cited
references, to “contact[ ] the oral surface with a periodic oral care
composition at least once within a period of about 42 days but less than once
daily,” as required by claim 1. We therefore reverse the rejection of claims
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1-14 as being obvious in view of either Durga ‘993 or Durga ‘115, combined
with Pocrovsky.
SUMMARY
We reverse the rejection of claims 1-14 under 35 U.S.C. § 103(a).

REVERSED

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