Ex Parte Sprosta et al

Patent Trial and Appeal Board

Jan 31, 2019

14691379 (P.T.A.B. Jan. 31, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/691,379 04/20/2015
23909 7590 02/04/2019
COLGATE-PALMOLIVE COMPANY
909 RIVER ROAD
PISCATAWAY, NJ 08855
FIRST NAMED INVENTOR
Al Sprosta
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.
10732-00-US-Ol-TB 9672
EXAMINER
NOBREGA, TATIANA L
ART UNIT PAPER NUMBER
3772
NOTIFICATION DATE DELIVERY MODE
02/04/2019 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
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte AL SPROSTA and EDUARDO JIMENEZ
Appeal2018-005725
Application 14/691,379
Technology Center 3700
Before EDWARD A. BROWN, MICHAEL L. HOELTER, and
ANNETTE R. REIMERS, Administrative Patent Judges.
HOELTER, Administrative Patent Judge.
DECISION ON APPEAL 1
STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a) from the
Examiner's final rejection of claims 1--4 and 10-21, which constitute all the
claims pending in this application. App. Br. 1. We have jurisdiction under
35 U.S.C. § 6(b). For the reasons explained below, we do not find error in
1 Colgate-Palmolive Company is identified as the applicant in the
Application Data Sheet dated April 20, 2015 submitted in association with
this application. Colgate-Palmolive Company is also identified as the real
party in interest and as assignee to this application. See App. Br. 2.
Accordingly, pursuant to 37 C.F.R. § 1.46, we understand Colgate-
Palmolive Company is the Appellant.
Appeal2018-005725
Application 14/691,379
the Examiner's rejections of these claims. Accordingly, we AFFIRM the
Examiner's rejections.
CLAIMED SUBJECT MATTER
The disclosed subject matter relates to "a method of forming a product
array or a product array formed thereby," and more particularly, "a product
array of a plurality of oral care kits." Spec. ,r,r 3, 4. Claims 1, 10, and 12 are
independent.
Claim 1 is illustrative of the claims on appeal and is reproduced
below.
1. A method of forming a product array of a plurality
of oral care kits, the method comprising:
a) selecting from a plurality of oral care materials, a first oral
care material that provides a first oral care benefit and a
second oral care material that provides a second oral care
benefit, the first oral care benefit being different than the
second oral care benefit;
b) selecting from a plurality of types of tooth cleaning
elements, a first type of tooth cleaning element that
provides the first oral care benefit and a second type of
tooth cleaning element that provides the second oral care
benefit;
c) mounting a first plurality of tooth cleaning elements to a
head portion of a first toothbrush body to form a first
toothbrush, the first plurality of tooth cleaning elements
comprising at least one of the first type of tooth cleaning
element;
d) mounting a second plurality of tooth cleaning elements to
a head portion of a second toothbrush body to form a
second toothbrush, the second plurality of tooth cleaning
elements comprising at least one of the second type of
tooth cleaning element;
e) forming a first oral care kit comprising the first oral care
material, the first toothbrush, and a first package; and
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f) forming a second oral kit comprising the second oral care
material, the second toothbrush, and a second package;
wherein the first oral care material is a tooth whitening
agent, the first type of tooth cleaning element is a spiral bristle,
the second oral care material is a tooth anti-sensitivity agent, and
the second type of tooth cleaning element is a tapered bristle or
an end-rounded bristle having a diameter of 5 mils or less; and
wherein the first and second package are separate.
Jimenez et al.
Hohlbein et al.
Kirchhofer et al.
REFERENCES
US 2012/0275843 Al
US 2013/0276815 Al
US 2013/0291320 Al
THE REJECTIONS ON APPEAL 2
Nov. 1, 2012
Oct. 24, 2013
Nov. 7, 2013
Claim 16 is rejected under 35 U.S.C. § 112(b) as being indefinite.
Claims 10 and 11 are rejected under 35 U.S.C. § I02(a)(l) as being
anticipated by Jimenez.
Claims 12-14 and 16-18 are rejected under 35 U.S.C. § I02(a)(l) as
being anticipated by Hohlbein.
Claims 1-3 and 19-21 are rejected under 35 U.S.C. § I02(a)(l) as
being anticipated by, or in the alternative, under 35 U.S.C. § 103 as being
unpatentable over Hohlbein. 3
2 Claim 2 was objected to for ending in"; and." Final Act. 2. An
amendment was filed after the Final Rejection in which "; and" was deleted
from claim 2. See Amendment filed September 6, 201 7. Appellant's claim
amendment was entered by the Examiner. See Advisory Action dated
September 27, 2017. We thus understand that this objection has been
resolved and is not before us for review.
3 Claims 19-21 depend from independent claim 12, not claim 1. Appellant
states that whether "under 35 U.S.C. §§ I02(a)(l) & 103," claims 19-21
"stand or fall with independent claim 12." App. Br. 4.
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Application 14/691,379
Claims 4 and 15 are rejected under 35 U.S.C. § 103 as being
unpatentable over Hohlbein and Kirchhofer.
ANALYSIS
The rejection of claim 16
as being indefinite
Parent claim 12 recites "a first toothbrush comprising a first type of
tooth cleaning element" and "a second toothbrush comprising a second type
of tooth cleaning element." The Examiner states that dependent claim 16
"requires the first and second toothbrushes be structurally identical" but "[i]t
is unclear how they can be identical if the cleaning elements are designed to
achieve particular oral care benefits which differ." Final Act. 2. Thus, the
Examiner determines that"[ c ]laim 16 appears to contradict claim 12." Final
Act. 2.
Appellant's amendment dated September 6, 2017 (filed after the Final
Rejection) amended claim 16 to recite "wherein the first and second
toothbrush bodies are structurally identical." Emphasis added. This
amendment was entered by the Examiner. See Advisory Action dated
September 27, 2017. Notwithstanding the entry of the amendment, the
Examiner stated, "[t]he rejection of record is maintained." Adv. Act. 2.
Because: the Examiner has not expressly withdrawn this rejection; Appellant
now employs the claim term "toothbrush bodies," which has no antecedent
basis; the term "body" or "bodies" is not recited in the Specification; it is
unclear whether the term "bodies" equates to "handle portions," "head
portions," or both (see Spec. ,r 33); and, Appellant does not contest this
rejection, we affirm the rejection of claim 16 as being indefinite.
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The rejection of claims 10 and 11
as being anticipated by Jimenez
Appellant does not offer arguments in favor of claim 11 separate from
those presented for independent method claim 10. See App. Br. 13-15; see
also Reply Br. 2-5. We select claim 10 for review, with dependent claim 11
standing or falling therewith. See 37 C.F.R. § 4I.37(c)(l)(iv).
The Examiner finds that Jimenez discloses the recited steps, and
specifically, the steps in which the first oral care material and the first
cleaning element assembly provide a first oral care benefit and the second
oral care material and the second cleaning element assembly provide a
second oral care benefit that is different than the first oral care benefit. Final
Act. 3--4 (citing Jimenez Figs. 1-7B; ,r 93).
Appellant contends, "[t]here is simply no disclosure [in Jimenez] of
specific tooth engaging elements which provide a given oral care benefit, let
alone any pairing of tooth engaging elements with the oral care material in
the dispenser" that provide the same oral care benefit. App. Br. 15.
Appellant also states, "it is entirely plausible [in Jimenez' disclosure] that
the designer of an oral care kit might choose to use cleaning elements and
oral care agents resulting in different oral care benefits." App. Br. 15.
Appellant's contentions are unpersuasive. Jimenez discloses: ( 1) "the
head 230 may be detachable (and replaceable) from the handle 210"
(Jimenez ,r 57); (2) "'tooth engaging elements' include, without limitation,
bristle tufts, filament bristles, fiber bristles, nylon bristles, spiral bristles,
rubber bristles, elastomeric protrusions, flexible polymer protrusions,
combinations thereof and/or structures containing such materials or
combinations" (Jimenez ,r 59); and (3)
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[t]he oral care system 100 ofFIGS. l-7B can also be sold as a kit.
Any kit can include at least one toothbrush 200 and one dispenser
300 holding an oral care agent. In other embodiments, a kit may
include at least one toothbrush 200 and a plurality of dispensers
300; each dispenser 300 holding a different oral care agent
formulation (e.g. whitening, enamel protection, anti-sensitivity,
fluoride, tartar protection, etc.). ... In yet further embodiments
of the kit, toothbrush 200 may have a user-replaceable head 230
and the kit may include one or preferably more such heads of
different types and/or configurations of tooth cleaning/engaging
elements 235 and/or tongue cleaners.
Jimenez ,r 93 ( emphasis added).
We agree with the Examiner that based on these paragraphs, Jimenez
discloses different pairings of cleaning element assemblies/oral care
materials; and further, Jimenez suggests that, within a pair, the oral care
benefits will match, but that between pairs, the oral care benefits will differ.
See Ans. 21-22. In short, Jimenez discloses different permutations or
combinations of pairings for different purposes. Regarding Appellant's
statement that "it is entirely plausible [in Jimenez' disclosure] that the
designer of an oral care kit might choose to use cleaning elements and oral
care agents resulting in different oral care benefits" (App. Br. 15), the
Examiner explains,
the logic used [by Appellant] amounts to an admission that it is
also plausible to provide cleaning elements and oral care agents
with the same oral care benefit as well because if one of ordinary
skill in the art would understand from the disclosure that
whitening composition can be effectively used with a toothbrush
having anti-sensitivity bristles that negate the sensitizing effects
of the whitening process then surely one of ordinary skill in the
art would understand that a whitening composition can be
effectively used with a whitening toothbrush ( e.g. toothbrush
having spiral bristle) or that an anti-sensitivity toothbrush is
effectively used with an anti-sensitivity composition, etc. as such
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pairings are more easily deduced since they are recognized as
being for the same purpose.
Ans. 23 ( emphasis added).
We further note that claim 10 does not specify what constitutes "an
oral care benefit" or what feature makes an oral care benefit "different" from
another oral care benefit. We thus determine that the Examiner's findings
are proper. Accordingly, and based on the record presented, we are not
persuaded the Examiner erred in rejecting claims 10 and 11 as being
anticipated by Jimenez. We sustain the rejection of claims 10 and 11.
The rejection of claims 12-14 and 16-18
as being anticipated by Hohlbein
Appellant does not offer arguments in favor of claims 13, 14, and 16-
18 separate from those presented for parent claim 12. See App. Br. 15-16;
see also Reply Br. 2-5. We select claim 12 for review, with dependent
claims 13, 14, and 16-18 standing or falling therewith.
The Examiner finds that Hohlbein discloses the various components
of a product array comprising a first oral kit and a second oral kit in which
each of the first and second oral kits comprises an oral care material and a
toothbrush having a type of tooth cleaning element that provides an oral care
benefit. See Final Act. 4--5 (citing Hohlbein Figs. 1-20B; ,r,r 38, 39, 48, 49,
50, 71, 73, 77, 87, 105, and 125). The Examiner also finds that the oral care
benefit associated with the first oral kit is different from the oral care benefit
associated with the second oral kit, as claimed. See Final Act. 5.
Appellant contends: (1) "Hohlbein only discloses that the user may
select different oral care materials and different oral care implements, and
that the oral care implements and oral care materials may have different oral
care benefits;" (2) "[i]n some embodiments the toothbrushes and the oral
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care materials may be color coded to assist the user in selecting the desired
combination of toothbrush and oral care material" and "it is unclear why
there is any need for color coding in those embodiments where the
toothbrush and oral care material are packaged together;" (3) "there is
simply no suggestion of pairing specific cleaning elements and oral care
materials in a particular package to achieve the same oral care benefit;" and,
(4) "[i]t is entirely possible that different oral care benefits are used to negate
sensitivity in combination with a plaque removal or whitening function."
App. Br. 16 ( emphasis added).
Appellant's contentions are unpersuasive. Hohlbein discloses: (1)
"[i]t is thereby possible to select the combination of configurations,
materials and orientations to achieve specific intended results, such as
enhanced cleaning, tooth polishing, breath freshening, tooth whitening
and/or massaging of the gums" (Hohlbein ,r 39 (emphasis added)); (2) "[t]he
oral care material may be a toothpaste, a gel, a mouthwash, a powder, or
similar dentifrice or oral hygiene product, or a combination of the same
(Hohlbein ,r 48); (3) "active agents which can be used include antibacterial
agents, whitening agents, anti-sensitivity agents, anti-inflammatory agents,
anti-attachment agents, plaque indicator agents, flavorants, sensates, breath
freshening agents, gum health agents and colorants" (Hohlbein ,r 49); (4)
"[t]he active agent also may be a tooth cleaning agent to boost the overall
efficacy of brushing" (Hohlbein ,r 50); (5) "in some embodiments, the
plurality of oral care implements [] are all identical to each other" and "[i]n
other embodiments, a variety of oral care implements are included"
(Hohlbein ,r 77 ( emphasis added)); ( 6) "a respective individual dispenser
may be provided for each respective oral care implement" (Hohlbein ,r 87
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( emphasis added)); and, (7) "the kit [] includes at least two variations of the
oral care implement and at least two dispensers containing respectively
different oral care materials" and "the oral care implements have a
respectively different handle color for each cleaning element type or for
accessory type, and the dispenser containing the corresponding
recommended oral care material for each oral care implement type has the
same color" (Hohlbein ,r 125 (emphasis added)). Contrary to Appellant's
contention, these passages evidence that Hohlbein discloses pairing specific
cleaning elements and oral care materials in a particular package to achieve
a similar oral care benefit. See also Ans. 24--26. Further, as Appellant
acknowledges above, Hohlbein uses color coding in some embodiments and,
thus, not in all embodiments. See Ans. 26-27.
The Examiner points out that by Appellant (again) contending that
"[i]t is entirely possible that different oral care benefits are used to negate
sensitivity in combination with a plaque removal or whitening function"
(App. Br. 16), Appellant is admitting that it is equally plausible that
Hohlbein discloses providing cleaning elements and oral care materials with
the same oral benefit. See Ans. 26-27. Moreover, we note that claim 12
does not specify what constitutes "an oral care benefit" or what feature
makes an oral care benefit "different" from another oral care benefit.
We thus determine that the Examiner's findings are proper.
Accordingly, and based on the record presented, we are not persuaded the
Examiner erred in rejecting claims 12-14 and 16-18 as being anticipated by
Hohlbein. We sustain the rejection of claims 12-14 and 16-18. Further, in
light of claims 19-21 depending from claim 12, and Appellant's
acknowledgement that these claims "stand or fall with independent claim
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12" (App. Br. 4), we likewise sustain the Examiner's rejection of claims 19-
21.
The rejection of claims 1-3 and 19-21
as being anticipated by Hohlbein, or,
alternatively, as being obvious over Hohlbein
Appellant does not offer arguments in favor of claims 2 or 3 (nor of
claims 19-21 (see supra)) separate from those presented for independent
claim 1. See App. Br. 8-13; see also Reply Br. 2-5. We select claim 1 for
review.
The Examiner finds that Hohlbein discloses all the limitations of
claim 1. Final Act. 6-8 (citing Hohlbein Figs. 1-20B; ,r,r 38, 39, 48, 49, 50,
71, 73, 77, 97, 105). More particularly, the Examiner finds that Hohlbein
discloses the various steps of the claimed method of forming a product array
of a plurality of oral care kits as replicated above, including the limitation
wherein the first oral care material is a tooth whitening agent, the
first type of tooth cleaning element is a spiral bristle, the second
oral care material is a tooth anti-sensitivity agent, and the second
type of tooth cleaning element is a tapered bristle or an end-
rounded bristle having a diameter of 5 mils or less.
Final Act. 7 ( citing Hohlbein ,r,r 3 9, 41, 49). Alternatively, the Examiner
finds that it would have been obvious to modify the method of Hohlbein "to
provide the first toothbrush with a spiral bristle paired, the first oral care
material being a tooth whitening agent, the second toothbrush having tapered
or end rounded bristle with a diameter of 5 mils or less and the second oral
care material being a tooth anti-sensitivity agent" because Hohlbein
"disclose[ s] these bristle configurations and oral care compositions, which
can be paired as desired and specifically teaches the advantage of pairing
bristle configurations designed to achieve a desired oral are benefit (i.e.
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whitening, polishing, cleaning, etc.) with an oral care composition for the
same purpose." Final Act. 8.
Appellant again contends: (1) "Hohlbein fails to teach or suggest
specific pairings of oral care materials and cleaning elements to achieve a
specific effect" (App. Br. 10); (2) " ... the handles 14 and dispensers 96 are
optionally color coded"' (App. Br. 11 ); and, (3) "it is entirely plausible that
one would use an oral care material for whitening in combination with
cleaning elements that provide anti-sensitivity" (App. Br. 11 ). See also
Reply Br. 2--4. These contentions are unpersuasive for the reasons discussed
above.
Appellant also contends that "Hohlbein fails to teach or suggest
providing a first oral care kit in a package having a tooth whitening agent
paired with a spiral bristle or a second oral care kit in a package having an
anti-sensitivity agent paired with tapered or end-rounded bristles of less than
5 mils diameter." App. Br. 12. We agree with Appellant that "[a]lthough
spiral bristles and active agents for tooth whitening and anti-sensitivity are
generally disclosed, there is no disclosure of a kit having either of these
combinations of features." App. Br. 12. In other words, Hohlbein does not
explicitly disclose the particular pairing of the specified tooth cleaning
elements with the specified oral care material as recited in claim 1. Instead,
as evidenced by Hohlbein's teachings above, Hohlbein discloses that
different combinations of these same components may be paired with each
other. Our reviewing court has provided guidance that "[ a ]n anticipatory
reference under 35 U.S.C. § 102 must clearly and unequivocally disclose the
claimed compound or direct those skilled in the art to the compound without
any need for picking, choosing, and combining various disclosures not
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directly related to each other by the teachings of the cited reference" but that
"[s]uch picking and choosing may be entirely proper in the making of a 103,
obviousness rejection." In re Arkley, 455 F.2d 586, 587-588 (CCPA 1972).
Appellant also argues that it is not obvious to modify the method of
Hohlbein to provide these specific pairings. Reply Br. 3-5. Appellant
contends, "[i]t is not obvious to make pairings of identical oral care benefits
because there is simply no suggestion that such a configuration is any more
desirable than complementary pairings." Reply Br. 4.
Appellant's argument is unpersuasive. As noted above, Hohlbein
discloses that "[i]t is thereby possible to select the combination of
configurations, materials and orientations to achieve specific intended
results, such as enhanced cleaning, tooth polishing, breath freshening, tooth
whitening and/or massaging of the gums." Hohlbein ,r 39 (emphasis added).
Appellant does not dispute that Hohlbein discloses spiral bristles, tooth
whitening agents, tooth anti-sensitivity agents, and tapered bristles or end-
rounded bristles having a diameter of 5 mils or less. See Final Act. 5-6
(rejection of claims 17 and 18); see also Final Act. 7 ( citing Hohlbein ,r,r 39,
41, 49). We thus agree with the Examiner that, according to the alternative
rejection, it would have been obvious to modify the method of Hohlbein to
provide the specified pairings as claimed. This is because Hohlbein
"disclose[ s] these bristle configurations and oral care compositions, which
can be paired as desired and specifically teaches the advantage of pairing
bristle configurations designed to achieve a desired oral care benefit (i.e.
whitening, polishing, cleaning, etc.) with an oral care composition for the
same purpose." Final Act. 8.
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Accordingly, and based on the record presented, we are not persuaded
the Examiner erred in rejecting claims 1-3 ( nor also claims 19-21 (see
supra)) as being obvious over Hohlbein. We thus sustain the rejection of
these claims. In view of such findings, we need not also address the
Examiner's anticipation rejection of these same claims in view of Hohlbein.
The rejection of claims 4 and 15
as being obvious over Hohlbein and Kirchhofer
Appellant does not provide any substantive argument with respect to
this rejection. App. Br. 4--17; Reply Br. 2-5. Accordingly, we likewise
sustain the Examiner's rejections of claims 4 and 15 over Hohlbein and
Kirchhofer.
DECISION
The Examiner's rejection of claim 16 as being indefinite is affirmed.
The Examiner's rejection of claims 10 and 11 as being anticipated by
Jimenez is affirmed.
The Examiner's rejection of claims 12-14 and 16-18 ( and also claims
19-21) as being anticipated by Hohlbein is affirmed.
The Examiner's rejection of claims 1-3 ( and also claims 19-21) as
being unpatentable over Hohlbein is affirmed. We do not reach the rejection
of these claims as being anticipated by Hohlbein.
The Examiner's rejection of claims 4 and 15 as being unpatentable
over Hohlbein and Kirchhofer is affirmed.
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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