Ex Parte Ramji

Patent Trial and Appeal Board

Jan 17, 2013

11654837 (P.T.A.B. Jan. 17, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte NIRANJAN RAMJI
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Appeal 2012-002465
Application 11/654,837
Technology Center 1600
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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

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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.
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Application 11/654,837

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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:
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Application 11/654,837

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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
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Application 11/654,837

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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