Ex Parte RamjiDownload PDFPatent Trial and Appeal BoardJan 17, 201311654837 (P.T.A.B. Jan. 17, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE PATENT TRIAL AND APPEAL BOARD __________ Ex parte NIRANJAN RAMJI __________ Appeal 2012-002465 Application 11/654,837 Technology Center 1600 __________ Before MELANIE L. McCOLLUM, STEPHEN WALSH, and SHERIDAN K. SNEDDEN, Administrative Patent Judges. WALSH, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134(a) from the rejection of claims directed to an oral care composition. The Patent Examiner rejected the claims for obviousness. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Appeal 2012-002465 Application 11/654,837 2 STATEMENT OF THE CASE Claims 1-16 are on appeal. Claim 1 is representative and reads as follows: 1. An oral care composition comprising (a) from about 0.01% to about 30% by weight of the composition of a peroxide source, (b) a flavor system comprising one or a mixture of flavorants, coolants and sweeteners, and (c) an orally-acceptable carrier, wherein the composition is prepared by subjecting to a metal removal process to be essentially free of transition metal contaminants having free radical forming potential thereby substantially eliminating free radical activity in the composition and stabilizing the composition against significant loss of components through degradation mediated by free radicals. The claims stand rejected under 35 U.S.C. § 103(a) as follows: claims 1-9 and 11-16 in view of Jensen1 and Scott;2 and claim 10 in view of Jensen, Scott, and Drucker.3 Since the same issues are dispositive for both rejections, we will consider them together. OBVIOUSNESS The Issues Appellant contends: 1) “the Scott reference is not properly citable against the present application” (App. Br. 4); 1 Steven D. Jensen et al., US 5,858,332, issued Jan. 12, 1999. 2 Douglas Craig Scott et al., US 2006/0171907 A1, published Aug. 3, 2006. 3 Jacob Drucker, US 4,895,721, issued Jan. 23, 1990. Appeal 2012-002465 Application 11/654,837 3 2) “even if Scott could be properly cited, the combination of Jensen with Scott or of Jensen and Scott with Drucker does not teach or suggest all the present claim limitations” (id. at 6); 3) “there would be no reason to include the components taught by Scott into Jensen’s composition” (id.); and 4) the subject matter of the invention has not been considered “as a whole,” because the rejection failed to address the source or cause of the problem facing the present inventor, transition metal contaminants having radical forming potential (id. at 11-12). Findings of Fact 1. We adopt the Examiner’s findings of fact concerning the scope and content of the prior art, and list the following facts for reference purposes. 2. The Examiner found that Jensen taught removing metal ions from a peroxide containing oral care composition and cited this portion of Jensen’s disclosure: A major cause of premature degradation of the bleaching agent is the existence of errant or residual metal ions that can act as bleaching agent catalysts. Hence, it is possible to create stable bleaching compositions even at high concentrations (greater than 20% by weight) by avoiding, removing, or trapping errant or residual metal ions. (Ans. 5, citing Jensen col. 3, ll. 55-61.) 3. The Examiner found that Scott disclosed a reason to include a flavor system in a peroxide containing oral care composition and cited this portion of Scott’s disclosure: Appeal 2012-002465 Application 11/654,837 4 compositions containing hydrogen peroxide or other peroxide releasing compounds generally provide disagreeable taste and mouth sensations, commonly described as stinging, prickling and irritating. In addition peroxides interact with other common excipients therein and tend to be unstable in storage, continuously losing the capacity to release active or nascent oxygen over relatively short periods of time, and tend to diminish or destroy the desired function of such excipients. Among such excipients are flavors, sensory materials and coloring agents added to enhance the acceptability of the oral care product to those in need of an oral peroxidizing or bleaching treatment. The present compositions are surprisingly stable with respect to alteration in flavor profile during storage. (Ans. 5-6, citing Scott 5, [0045].) Analysis Upon consideration of the evidence on this record, and each of Appellant’s contentions, we find that the preponderance of evidence on this record supports the Examiner’s conclusion that the subject matter of Appellant’s claims is unpatentable. Accordingly, we sustain the Examiner’s rejections for the reasons set forth in the Answer, which we incorporate herein by reference, including the Examiner’s responses to Appellant’s arguments. We note that Appellant filed an “Affidavit Under 37 § CFR 1.131” on Oct. 6, 2011, concurrent with the Reply Brief, after the Appeal Brief and Examiner’s Answer had been entered. According to the Reply Brief, the Affidavit “demonstrates that [the] invention was made prior to the publication of the Scott application.” (Reply Br. 6.) We will not consider the Affidavit as there is no evidence it has been admitted. See 37 C.F.R. § 41.33 “Amendments and affidavits or other evidence after appeal.” Rule Appeal 2012-002465 Application 11/654,837 5 41.33 provides that an affidavit may be admitted if it is filed before the Appeal Brief, and “if the examiner determines that the affidavit or other evidence overcomes all rejections under appeal and that a showing of good and sufficient reasons why the affidavit or other evidence is necessary and was not earlier presented has been made.” Rule 41.33(d)(1). Appellant’s Affidavit was not filed within the time specified in paragraph (d)(1). Rule 41.33 also provides: “All other affidavits or other evidence filed after the date of filing an appeal pursuant to § 41.31(a)(1)through (a)(3) will not be admitted except as permitted by §§ 41.39(b)(1), 41.50(a)(2)(i), and 41.50(b)(1).” Rule 41.33(d)(2). In this case, none of the exceptions apply. Accordingly, Scott remains as evidence available under 35 U.S.C. § 102(a). See Ans. 10. SUMMARY We affirm the rejection of claims 1-9 and 11-16 under 35 U.S.C. § 103(a) in view of Jensen and Scott. We affirm the rejection of claim 10 under 35 U.S.C. § 103(a) in view of Jensen, Scott, and Drucker. 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 cdc Copy with citationCopy as parenthetical citation