Ex Parte Robinson et al

Patent Trial and Appeal Board

Jul 20, 2016

12272257 (P.T.A.B. Jul. 20, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/272,257 11/17/2008
23909 7590 07/22/2016
COLGATE-PALMOLIVE COMPANY
909 RIVER ROAD
PISCATAWAY, NJ 08855
FIRST NAMED INVENTOR
Richard Scott Robinson
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
8153-03-0C 5954
EXAMINER
MAEWALL, SNIGDHA
ART UNIT PAPER NUMBER
1612
NOTIFICATION DATE DELIVERY MODE
07/22/2016 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):
Patent_Mail@colpal.com
uspto@thebellesgroup.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RICHARD SCOTT ROBINSON, RICHARD J. SULLIVAN,
MICHAEL PRENCIPE, RAJNISH KOHLI, ISABELLE VAN RYCKE,
RICHARD LOVELL, SERGIO LEITE, ERIC A. SIMON, RALPH PETER
SANTARPIA III, DIANE CUMMINS, SARITA V. MELLO, SUMAN
CHOPRA, KAREN J. DEPIERRO, LYNETTE ZAIDEL, CONSTANTINA
CHRISTOPOULOU, RA VI SUBRAMANY AM, DONGHUI WU, ANDRE
M. MORGAN, QIN WANG, GARY EDWARD TAMBS, and
VIRGINIA MONSUL BARNES
Appeal2013-000901
Application 12/272,257
Technology Center 1600
Before DONALD E. ADAMS, RICHARD M. LEBOVITZ, and
MELANIE L MCCOLLUM, Administrative Patent Judges.
LEBOVITZ, Administrative Patent Judge.
DECISION ON APPEAL
This appeal involves claims directed to a periodic oral care
maintenance composition and a primary oral care composition. Appellants
appeal from the Examiner's final rejection of claims 1-10 as obvious under
35 U.S.C. § 103. We have jurisdiction under 35 U.S.C. § 134. The
obviousness rejections are affirmed.
Appeal2013-000901
Application 12/272,257
STATEMENT OF CASE
Claims 1-10 stand finally rejected by the Examiner as follows:
1. Claims 1-10 under 35 U.S.C. § 103(a) (pre-AIA) as obvious in
view ofDurga '933 (U.S. Pat. 6,290,933 Bl, issued Sep. 18, 2001),
Yamagishi (EP 0 569 666 A2, published Nov. 18, 1993), Pocrovsky
(English translation of middle column of page 2 84 of "Kratka ya
meditsiskaya encyklopediya," Acad. RAMN. 1994), and Phillips (U.S. Publ.
App. 2006/0216247 Al, published Sep. 28, 2006). Answer 5.
2. Claims 4 and 8 under 35 U.S.C. § 103(a) (pre-AIA) as obvious in
view ofDurga '933, Yamagishi, Pocrovsky, Phillips, and Acevedo ("The
Inhibitory Effect of an Arginine Bicarbonate/Calcium Carbonate
(CaviStat®) Containing Dentifrice on the Development of Dental Caries in
Venezuelan School Children," 16 J. Clin. Dent. 1-8, 2005). Id. at 10.
3. Claims 1-10 under 35 U.S.C. § 103(a) (pre-AIA) as obvious in
view ofDurga '115 (WO 01/85115 A2, published Nov. 15, 2001) 1,
Yamagishi, Pocrovsky, and Phillips. Id. at 11.
4. Claims 4 and 8 under 35 U.S.C. § 103(a) (pre-AIA) as obvious in
view ofDurga '115, Yamagishi, Pocrovsky, Phillips, and Acevedo. Id. at
15-16.
5. Claims 1-10 as unpatentable on the ground of non-statutory
obviousness-type double patenting over claims 1-9 of copending
Application No. 12/028,782 in view of Durga '933. Id. at 16. The
copending application was abandoned. See Notice of Abandonment dated
Nov. 13, 2015. This rejection is therefore moot.
1 Durga '115 claims the priority benefit of the same U.S. patent application
09/567,402 as does Durga '933.
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Application 12/272,257
There are two independent claims on appeal, claims 1 and 5. Claim 1
is representative and reads as follows:
1. A periodic oral care maintenance composition comprising a
basic amino acid, in free or salt form, for use in the therapeutic
treatment of an oral surface, which treatment comprises
a. contacting the oral surface with a primary oral care
composition at least once daily, and
b. contacting the oral surface with the periodic oral care
maintenance composition at least once monthly and less than
once daily;
wherein the periodic oral care maintenance composition further
comprises a first abrasive having an Einlehner hardness of
greater than about 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 the ratio of the first
abrasive to the second abrasive is about 1: 1.6 to about 1.6: 1.
CLAIM INTERPRETATION
Claim 1 is directed to a "periodic oral care maintenance composition."
The composition comprises "a basic amino acid, in free or salt form," and "a
first abrasive" and "a second abrasive." The first and second abrasives each
have a specifically recited hardness and are present in a ratio of about 1: 1.6
to about 1.6: 1.
The claim recites that the composition is "for use in the therapeutic
treatment of an oral surface." The claim further recites that the "treatment
comprises" steps a. and b. of contacting the oral surface with a "primary oral
care composition" and "the periodic oral care maintenance composition,"
respectively. We interpret the "therapeutic treatment" steps to be an
"intended use" of the claimed "periodic oral care maintenance composition"
because it describes what the composition is to be used for, namely, for
treatment of an oral surface. We reach this interpretation because the claim
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Application 12/272,257
preamble explicitly states that the claim is directed to a "composition,"
defining the claim as a product composed of the basic amino acid and the
first and second abrasives.
The "terms appearing in a [claim] preamble may be deemed
limitations of a claim when they 'give meaning to the claim and properly
define the invention."' In re Paulsen, 30 F.3d 1475, 1479 (Fed. Cir. 1994).
In this case, the claim preamble explicitly defines the invention as a periodic
oral care maintenance composition. For this reason, the subsequent step in
the claim reciting how often the periodic oral care composition is used ("at
least once month and less than once daily") is an "intended use" of the
composition, i.e., what it can be used for, but does not necessary limit or add
additional characteristics to the periodic oral care composition which is
claimed. Appellants have not identified how the "treatment" steps a) and b)
change the structure of the claimed "periodic oral care maintenance
composition."
1. REJECTION OVER DURGA, Y AMAGISHI, POCROVSKY,
AND PHILLIPS
The Examiner found that Durga '933 describes an oral dentifrice
composition comprising two abrasives, each with a hardness meeting the
claimed limitations. Answer 6, 11. The Examiner also found the abrasives
were present in a ratio within the scope of the claim. Id. at 11. The
Examiner found that Durga '933 does not describe a basic amino acid in its
composition, but found that Y amagishi describes an oral care composition,
which can be in the form of a toothpaste, that contains the basic amino acid
arginine. Id. at 7. The Examiner concluded it would have been obvious to
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Application 12/272,257
one of ordinary skill in the art to have utilized arginine in Durga '933 's
composition to protect the tooth surface. Id.
Appellants contend that there would have been no motivation to have
added arginine to Durga '933 's composition because Yamagishi "uses
arginine ... to neutralize the alkyl monophosphate esters required in
Yamagishi's composition." Br. 12. Appellants argue that "Durga ['933]
does not mention alkyl monophosphate esters. Therefore, there is no
purpose, motivation or reason to combine the arginine taught by Yamagishi
with the composition taught by Durga ['933]." Id.
Appellants' argument does not persuasively demonstrate error in the
Examiner's rejection. The Examiner found that Y amagishi describes an oral
care composition comprising a basic amino acid and an abrasive, the same
components recited in claim 1. Answer 7. Y amagishi specifically teaches
(at 11 :35--42):
8. A paste composition for use in the oral cavity comprising:
(A) a monophosphate represented by the general formula
(2) of Claim 5,
(B) a basic amino acid,
(C) an abrasive,
(D) a thickening agent,
(E) a moisturizing agent, and
(F) water.
The (A) monophosphate protects the tooth surface (Yamagishi,
Abstract (57), 2:10-22) and (B) the basic amino acid adds stability (id. at 2:
39--40). The (A) monophosphate is an alkyl monophosphate esters or an
"AP."
While it is true that Y amagishi adds a basic amino acid, such as
arginine, to neutralize the alkyl phosphoric ester (the "monophosphate" of
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claim 8 of Y amagishi") in its composition to make it more stable (id. at 2:
41--44), one of ordinary skill in the art would have had reason to have
utilized monophosphate (an "AP") and basic amino acid in a composition
comprising oral abrasives, such as those described in Durga, because
Y amagishi explicitly describes such a combination in its claim 8 to protect
the tooth surface (Yamagishi, Abstract (57); 2:10-22). The claims are open-
ended and do not exclude the addition of both the basic amino acid and the
AP of Y amagishi. Accordingly, Appellants' argument that "there is no
purpose, motivation or reason to combine the arginine taught by Yamagishi"
is not supported by a preponderance of the evidence. Br. 12.
Appellants contend that "Durga ['933] does not disclose use of the
particular dentifrice at least once monthly but less than once daily, or use in
a regimen in conjunction with another dentifrice." Id.
This argument does not distinguish claim 1 from Durga because, as
discussed above, claim 1 is directed to "composition," not a method of using
the composition. Evidence has not been provided that the "intended use" of
the claimed composition distinguishes it from the composition suggested by
Durga '933 and Yamagishi. The question is whether Durga '933 's
abrasives could be utilized "at least once monthly and less than once daily"
as recited in claim 1. We have not been directed to evidence that they could
not be used in this manner.
Claim 5
Claim 5 is directed to a "combined preparation comprising a periodic
oral care maintenance composition and a primary oral care composition."
The claim has the same "intended use" steps recited in claim 1. For the
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Application 12/272,257
same reasons as for claim 1, we conclude that the "intended use" steps do
not distinguish the claim from the cited publications.
The Examiner cited the Pocrovsky and Phillips publications as
providing a reason to have used a dental abrasive ("periodic oral care
maintenance composition") with a mouthwash ("primary oral care
composition"). Answer 8-10. Appellants argue the "use" limitations of the
claim, but do not identify a persuasive error in the Examiner's findings or
conclusion that the claimed "combined preparation" of claim 5 would have
been obvious to one of ordinary skill in the art.
Summary
We affirm the obviousness rejection of claims 1 and 5. Claims 2, 3, 6,
7, 9, and 10 fall with claims 1 and 5 because separate reasons for their
patentability were not provided. 37 C.F.R. § 41.37(c)(l)(iv). Claim 4 and 8
were included in the rejection, but they were rejected in the rejection based
on Acevedo. We thus address them separately below.
REJECTION OVER DURGA '933, YAMAGISHI, POCROVSKY,
PHILLIPS, AND ACEVEDO
Dependent claims 4 and 8 further recite that the basic amino acid is
selected from a list that includes arginine bicarbonate. Claim 4 depends
from claim 3, which depends from claim 1. Claim 8 depends from claim 7,
which depends from claim 5. In both claims, a periodic oral care
maintenance composition is claimed.
The Examiner further cited Acevedo for its teaching of "arginine
bicarbonate/calcium carbonate containing dentifrice more effective in
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inhibiting caries and inducing remineralization." Answer 10. The Examiner
found it was obvious to have utilized arginine bicarbonate/calcium carbonate
in Durga '933 for its expected benefit. Id. at 10-11.
Appellants contend that "the toothpaste is the primary oral care
composition, whereas the arginine is required in the periodic oral care
maintenance composition. Acevedo does not teach a composition containing
arginine or other basic amino acids or the regimen claimed." Br. 15.
The claims do not require the primary oral care composition to be a
toothpaste as asserted by Appellants. Moreover, the pertinent question is
whether it would have been obvious to have utilized arginine
bicarbonate/calcium carbonate in Durga '933 's cleaning abrasive dentifrice.
As found by the Examiner, Acevedo teaches arginine
bicarbonate/calcium carbonate in a toothpaste.
Based on extensive in vitro and in vivo experiments
performed in our laboratories, arginine bicarbonate was
combined \vith calcium carbonate (CaviStat®, Ortek
Therapeutics, Inc., Roslyn Heights, NY, USA) to enable
simultaneous inhibition of both acid production and enamel
demineralization .... This has been formulated as the active in
the CaviStat-containing toothpaste tested in this study. The
arginine of the arginine bicarbonate in Ca vi Stat provides an
effective means of countering the pH fall associated with the
acid production component of the caries process. The calcium
of the calcium carbonate provides a means of suppressing
solubilization of the tooth enamel and favoring
remineralization.
Acevedo 2, col 1 (footnotes omitted).
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Application 12/272,257
Durga '933 's cleaning abrasive can be in the form of a
toothpaste:
The total quantity of abrasive present in the dentifrice
compositions of the present invention is at a level of from about
5% to about 40% by weight, preferably from about 5% to about
30% by weight when the dentifrice composition is a toothpaste.
Durga '933, col. 4, 11. 41--45
In sum, both Durga '933 and Acevedo teach toothpastes.
Consequently, the Examiner's conclusion that it would have been obvious to
have included Acevedo's arginine in Durga '933 's composition is reasonable
and fact-based since both publications describe toothpastes and Acevedo
provides a reason to have utilized arginine bicarbonate/calcium carbonate in
a toothpaste. Accordingly, the rejection of claims 4 and 8 is affirmed.
REJECTIONS 3 AND 4
Rejections 3 and 4 are based on Durga '115 rather than Durga '933.
Durga '115 appears to have the same disclosure as Durga '933. Appellants
rely on the same arguments as they did for the rejections based on Durga
'933. Br. 11-16. We affirm the rejections for the same reasons.
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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