Ex Parte Prencipe et al

Patent Trial and Appeal BoardAug 20, 2013

10915125 (P.T.A.B. Aug. 20, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE PATENT TRIAL AND APPEAL BOARD __________ Ex parte MICHAEL PRENCIPE, SUMAN K. CHOPRA, and MICHAEL COLLINS __________ Appeal 2012-000775 Application 10/915,125 Technology Center 1600 __________ Before TONI R. SCHEINER, DEMETRA J. MILLS, and ERIC GRIMES, Administrative Patent Judges. SCHEINER, Administrative Patent Judge. DECISION ON APPEAL This is an appeal1 under 35 U.S.C. § 134 from the final rejection of claims 1, 4, 16, 18, and 28, directed to a tooth whitening system. The Examiner has rejected the claims as obvious. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. 1 Appellants identify the Real Party-In-Interest as the Colgate-Palmolive Company (App. Br. 2). Appeal 2012-000775 Application 10/915,125 2 STATEMENT OF THE CASE Claims 1, 4, 16, 18, and 28 are pending and on appeal. Claims 2, 3, 5- 15, 17, and 19-27 have been canceled (App. Br. 4). Claim 1 is representative of the subject matter on appeal: 1. A tooth whitening system comprising: a dental tray having a surface operable to confront a tooth surface; a tooth whitening composition having an overall viscosity of greater than 50,000 centipoise and less than 900,000 centipoise, comprising: between 0.5 to about 50 weight % of a whitening agent selected from the group consisting of peroxides, chlorites and hypochlorites; between 1 to about 80 weight % of a pressure-sensitive, hydrophobic polymer carrier comprising silicon [sic, silicone] resin and polydiorganosiloxane; between 0.1 to 1 weight % of a flavoring agent; and between 2 to 15 weight % of an adhesion enhancing agent consisting of polyethylene gelled mineral oil that augments adhesion of said tooth whitening composition to tooth surfaces. Claims 1, 4, 16, 18, and 28 stand rejected under 35 U.S.C. § 103(a), as unpatentable over Lawlor (WO 02/34221 A1, published May 2, 2002), Thau et al. (US 3,215,599, issued November 2, 1965), and Allred et al (US 6,860,736 B2, issued March 1, 2005). DISCUSSION Claim 1 is directed to a tooth whitening composition comprising, in relevant part, a pressure-sensitive hydrophobic polymer (the polymer comprising a silicone resin and a polydiorganosiloxane), and “an adhesion enhancing agent consisting of polyethylene gelled mineral oil.” Independent claim 28 is similar, if somewhat broader, and also requires an adhesion enhancing agent consisting of polyethylene gelled mineral oil. Lawlor discloses a tooth whitening composition comprising, in relevant part, a combination of a silicone resin, a silicone gum (i.e., a Appeal 2012-000775 Application 10/915,125 3 polydiorganosiloxane), and a non-volatile polydimethylsiloxane fluid “which can be readily applied to all surfaces of the oral cavity and which remains substantive on those surfaces” (Lawlor 5, 17). The composition “can optionally comprise a rheology modifier which inhibits settling and separation of component[s]” of the composition (id. at 26). Suitable rheology modifiers herein include organo modified clays, silicas, cellulose polymers such as hydroxypropylmethyl cellulose, xanthum gum, carbomers, inorganic clay polymers, polycarboxylates, EO/PO block copolymers (poloaxomers) thickening silicas and mixtures thereof. The preferred organophilic clays comprise Quaternium-18 hectorite or Stearalkonium hectoriate, such as Bentone 27 and 38 from Rheox, organoclay dispersion such as Bentone ISD Gel; or bentonites organo modified clays such as Bentone 34 from Rheox or the Claytone Series from Southern Clay Products; and mixtures thereof. The preferred silicas may be fumed silica such as the Aerosil series from Degussa or the Cab-o-Sil series from Cabot Corporation, silica gels such as the Sylodent or Sylox series from WR Grace & Co or precipitated silica such as Zeothix 265 from JM Huber Corporation. (Id.) Thau discloses a viscous polyethylene-modified mineral oil product, (Thau, col. 2, ll. 12-21). The modified mineral oils . . . are physiologically inert and are useful both internally as vehicles for carrying medicaments and externally in preparing salves, ointments, cosmetic creams and the like. These modified oils are smooth, homogeneous and neutral while having a desirable consistency over a temperature range of from about -15° to about 60° C. This property also makes the modified petroleum oil useful, for example, as lubricants for industrial machinery in the food processing industries. The modified petroleum oil as prepared herein is hydrophobic in character and not miscible with water. When Appeal 2012-000775 Application 10/915,125 4 water-absorptive properties are desired, addition of low percentages of a surface active agent may be made to the modified oil composition. (Id. at col. 3, l. 63 - col. 4, l. 2.) The Examiner acknowledges that Lawlor’s oral care compositions do not include a polyethylene gelled mineral oil (Ans. 5). However, the Examiner finds that Thau’s polymer-wax modified petroleum oil vehicle “encompass[es] a rheology modifying agent because it forms a viscous gel” (id. at 6), and concludes that “it would have been obvious to one of ordinary skill in the art to have used [Thau’s] modified mineral oil . . . in the composition . . . of Lawlor” (id.) because “[r]heology modifiers may also be included in [Lawlor’s] compositions” (id. at 5), and one would have been “motivated by the desire to use a product that is viscous, . . . [has] high gel strength; good stability; remain[s] homogeneous and neutral over a temperature range of from about -15º to about 60ºC; and is hydrophobic” (id. at 6). Appellants contend, among other things, that “[t]he common trait of [Lawlor’s] thickeners is that they are all hydrophilic, not hydrophobic” (App. Br. 10). The Examiner does not dispute Appellants’ characterization of Lawlor’s thickeners (i.e., rheology modifiers) as hydrophilic, but argues that “there is no teaching in Lawlor that prohibits the incorporation of other rheology modifiers” (Ans. 11-12). While that may be true, we agree with Appellants that the Examiner has not established that one of ordinary skill in the art would have had any reason “to depart from the teachings of Lawlor, bypass the numerous hydrophilic rheology modifying alternatives described in Lawlor” (Reply Br. Appeal 2012-000775 Application 10/915,125 5 8-9), and select Thau’s hydrophobic polymer wax-modified petroleum oil for incorporation in Lawlor’s silicone polymer-based tooth whitening composition. SUMMARY The rejection of claims 1, 4, 16, 18, and 28 as unpatentable over Lawlor, Thau, and Allred is reversed. REVERSED cdc