Jurgen Rabenhorst et al.

Patent Trials and Appeals Board

Aug 23, 2019

11812085 - (D) (P.T.A.B. Aug. 23, 2019)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/812,085 06/14/2007 Jurgen Rabenhorst 1507-71 8104
28249 7590 08/23/2019
DILWORTH & BARRESE, LLP
Dilworth & Barrese, LLP
1000 WOODBURY ROAD
SUITE 405
WOODBURY, NY 11797
EXAMINER
SIMMONS, CHRIS E
ART UNIT PAPER NUMBER
1629
MAIL DATE DELIVERY MODE
08/23/2019 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte JÜRGEN RABENHORST, ARNOLD MACHINEK,
GERHARD SCHMAUS, MARTINA HERRMANN, GABRIELE
VIELHABER, and RAVIKUMAR PILLAI.1
__________

Appeal 2018-009046
Application 11/812,085
Technology Center 1600
__________

Before DONALD E. ADAMS, RICHARD J. SMITH, and
JOHN E. SCHNEIDER, Administrative Patent Judges.

SCHNEIDER, Administrative Patent Judge.

DECISION ON APPEAL
This is an Appeal under 35 U.S.C. § 134(a) involving claims to an
oral hygiene composition which have been rejected obvious. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.2

1 Appellants identify the Real Party in Interest as Symrise AG. Br. 3.
2 We have considered and herein refer to the Specification of Sept. 20, 2007
(“Spec.”); Final Office Action of Aug. 23, 2017 (“Final Act.”); Appeal Brief
of Jan. 16, 2018 (“Br.”); and Examiner’s Answer of July 24, 2018(“Ans.”).
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STATEMENT OF THE CASE
The present invention is directed to an oral hygiene composition for
controlling or preventing bad breath. Spec. 1. The oral hygiene composition
contains one or more anthranilic acid amides in an amount effective against
the bacteria that cause bad breath. Spec. 7. The oral hygiene composition
may comprise dental cream, toothpaste, tooth gel, mouthwash, mouth rinse,
liquid for gargling, mouth or throat sprays (pump-action or aerosol sprays),
sucking lozenge sucking tablet, sweet, chewing gum, chewing sweet and
dental care chewing gum. Spec. 10.
Claims 1, 9, 11, 24, and 29 are on appeal.3 Claim 1 is
illustrative and reads as follows:
1. An oral hygiene composition comprising an oral formulation
for controlling or preventing bad breath adapted for oral
delivery to a person in need thereof, a flavoring agent and an
antimicrobial agent comprising a compound of the Formula 1 or
of a mixture of two or more different compounds of the
Formula 1

1

in which for the compound of the Formula 1 or for each
compound of the Formula 1 in the mixture, m = 0, 1, 2 or 3,
p = 0, 1 or 2,
n = 0, 1 or 2,

3 Claims 2, 3, 17–21, and 25–28 are pending in the application but have been
withdrawn from consideration. Final Act. 2.
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in which if n = 1 or 2 then in each case the pair R1 and R2 in
each case denote H or together form a further chemical bond,
in which if m = 1, 2 or 3 each X, independently of the other,
denotes OH, Oalkyl or Oacyl,
in which if p = 1 or 2 each Y, independently of the other,
denotes OH, Oalkyl or Oacyl,
in which E =H or denotes a radical –COOR3,
R3 =H or alkyl, in which R3 = H also for the
corresponding pharmaceutically acceptable salts and solvates,
wherein said compound or compounds of Formula 1 are
included in an amount to inhibit and/or prevent the growth of
microorganisms in the oral cavity for controlling or preventing
bad breath, in which the microorganisms causing bad breath are
selected from the group consisting of cubacterium,
fusobacteriurn, haernophilus, neisseria, porphyromonas,
prevotella, treponema and veillonella species, and where said
composition is selected from the group consisting of dental
cremes, toothpastes, tooth gels, mouthwashes, mouth rinses,
liquids for gargling, mouth or throat sprays (pump-action or
aerosol sprays), sucking lozenges, sucking tablets, sweets,
chewing gums, chewing sweets and dental care chewing gums.

Br. 13–14 (Claims Appendix).

The claims stand rejected as follows:
Claim 1 stand rejected under 35 U.S.C. § 103(a) as unpatentable over
Harita4 in view of Schmaus ’8335, Yamamoto,6 and Chaudhari.7

4 Harita et al., US 4,070,484, issued Jan. 24, 1978 (“Harita”).
5 Schmaus et al., WO 2004/047833 A2, published June 10, 2004 (“Schmaus
’833”).
6 Yamamoto at al., US 2003/0138511 A1, published July 24, 2003
(“Yamamoto”).
7 Chaudhari et al., US 5,817,295, issued Oct. 6, 1998 (“Chaudhari”).
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Claims 1–3, 9, 11, 17, 19, 20, 24, 25, and 29 stand rejected under 35
U.S.C. § 103(a) as unpatentable over Harita in view of Schmaus ‘4138,
Yamamoto and Chaudhari.9

DISCUSSION
Issue
This application is before us for the second time. In our earlier
decision, we affirmed the rejection of the then pending claims 1, 2, 9, 11, 17,
19, 20, 24, and 29 under 35 U.S.C. § 103(a) as obvious over Harita
combined with Schmaus and Yamamoto. Ex parte Rabenhorst, Appeal
2015-000098, slip op. at 13 (PTAB Sept. 29, 2016). In the same decision
we reversed the rejection of claims 3 and 25 finding that the references did
not teach that the recited compounds would be effective against the
microorganisms recited in the claims. Id. at 11.
During subsequent prosecution, Appellants amended independent
claims 1 and 24 to incorporate the list of microorganisms previously recited
in claims 3 and 25. Br. 9. The Examiner rejected the claims as obvious
finding that newly cited Chaudhari disclosed a mouthwash composition
which is effective in eliminating odor causing microorganisms including
Fusobacterium nucleatum and Prevotella melaninoaenica. Final Act. 10–

8 Schmaus et al., US 2006/0089413 A1, published Apr. 27, 2006 (“Schmaus
’413”).
9 Schmaus ’413 is the English language version of Schmaus ’833. Final Act.
7. The two rejections are identical and we shall treat them together. For
convenience we will refer to Schmaus ’413 and Schmaus ’833 collectively
as “Schmaus”.
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11. The Examiner reiterated his findings with respect to the teachings of the
references cited in the earlier action. Id. at 5–10.
Appellants contend that neither Chaudhari nor the other references
teach that the claimed compounds are effective against the microorganisms
recited in the claims. Br. 10.
Findings of Fact
We adopt as our own the Examiner’s findings and analysis. The
following findings are included for emphasis and reference convenience.

FF1. Harita discloses anti-allergic compositions having the general
formula

wherein each of R1 and R2 is a hydrogen atom or an alkyl group
having 1-4 carbon atoms, R3 and R4 are hydrogen atoms or
together form another chemical bond, each X is a hydroxyl
group, a halogen atom, an alkyl group having 1-4 carbon atoms
and an alkoxyl group containing 1-4 carbon atoms, and may be
the same or different, and n is an integer of 1-3, provided that
when two Xs are alkyl or alkoxyl groups, the alkyl groups
thereof may be connected together into an alkylene group.

Harita, col. 1, ll. 58–67.

FF2. The compounds of Harita “possess an antiallergic action and are
effective for the therapeutic treatment of diseases caused by allergies such as
asthma, hay fever, urticarial and atopic dermatitis.” Harita col. 2, ll. 11–14
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FF3. The compositions of Harita can be administered orally. Harita
col. 1, ll. 34–37.
FF4. Schmaus ’413 discloses histamine-release inhibitors having the
general formula

(“Formula 1”)
Wherein
m=O, 1, 2 or 3,
p=O, 1 or 2,
n=O, 1 or 2,
with the proviso that, when n=l or 2, the sum of
p+m >0,
where, when n=l or 2, R1 and R2 , in each case in pairs, in each
case denote H or together denote a further chemical bond (such
as, for example, in cinnamic acid derivatives);
where, when m=l, 2 or 3, each X, independently of the others,
denotes OH, Oalkyl or Oacyl,
where, when p=l or 2, each Y, independently of the others,
denotes OH, Oalkyl or Oacyl,
with the proviso that, when p+m >0, X or Y has been selected
at least once from the group that consists of OH and Oacyl;
R3=H or alkyl (in particular --CH3 , as well as straight-chain or
branched alkyl chains with 2 to 30 C atoms).

Schmaus ¶¶ 1–13.
FF5. Schmaus ’413 teaches that the inhibitors are present in final
compositions in amounts ranging from 0.1 to 10%. Schmaus ¶ 309
FF6. Schmaus teaches the inclusion of plant extracts which include
flavorings. Schmaus ¶ 130.
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FF7. Yamamoto discloses compositions containing “tomato-based
anti-allergic agents, histamine-release inhibitors or leukotriene-release
inhibitors.” Yamamoto ¶ 1.
FF8. The anti-allergic agents of Yamamoto can be include in
toothpaste or mouthwash. Yamamoto ¶ 92.
FF9. Yamamoto discloses a toothpaste composition containing 1 %
tomato extract and sodium saccharin, a sweetener. Yamamoto ¶¶ 176–178.
FF10. Chaudhari teaches that the microorganisms that cause oral
malodor include “Fusobacterium nucleatum (ATCC 10953); Prevotella
melaninoaenica (ATCC 25895); Candida albicans (ATCC 18804);
Streptococcus mutans (ATTC 25175); Actinomyces viscosus (ATCC T14 V);
Streptococcus sanguis (ATCC 10558); and Pseudomonas aeruginosa
(ATCC 10145). Chaudhari col. 6, l. 63 – col. 7, l. 5.
FF10. The Specification teaches that the amount of compounds of the
formula reflected in claim 1 range from 0.0005 to 5.0 weight percent for oral
hygiene products. Spec. 28.
FF11. The Specification teaches that saccharin can be used as a
sweetener in the practice of the invention. Spec. 37, 41.

Principles of Law
The “discovery that a claimed composition possesses a property not
disclosed for the prior art subject matter, does not by itself defeat a prima
facie case.” In re Dillon, 919 F.2d 688, 693 (Fed. Cir. 1990). The same
standard applies to compounds. Id. at 693 n.3.
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Analysis
Claim 1 is representative of the rejected claims and is directed to an
oral hygiene composition comprising an effective amount of a compound of
Formula 1.
We agree with the Examiner that the subject matter of claim 1 would
have been obvious at the time the invention was made. Compounds of
Formula 1 were known in the art as anti-allergic compositions exhibiting
histamine-release inhibiting properties. FF1–4. Yamamoto teaches the
inclusion of anti-allergic compounds into oral hygiene products such as
toothpaste or mouthwash. FF8. We agree with the Examiner’s conclusion
that one skilled in the art would have found it obvious to substitute the anti-
allergic compounds of Harita or Schmaus for the anti-allergic compounds of
Yamamoto. Ans. 6.
Appellants contend that none of the references teach that the claimed
compounds would be effective against the recited microorganisms. Br. 10.
We are unpersuaded. As the Examiner points out, Appellants’ claims are
based on the discovery of a property that the claimed compounds already
possessed. Ans. 3. We agree with the Examiner that the prior art suggests
the use of oral hygiene compositions containing the claimed compounds in
amounts to be effective against the microbes that cause bad breath. Ans. 4.
Chaudhari teaches that the microorganisms recited in claim 1 are those
known to cause bad breath. FF10. We agree with the Examiner that
compounds recited in claim 1 would inherently possess “the antimicrobial
property claimed against the malodor- and plaque-causing microbes of the
oral microflora such as Prevotella and Fusobacterium as described by
Chaudhari.” Ans. 13.
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Conclusion of Law
We conclude that the Examiner has established by a preponderance of
the evidence that claim 1 would have been obvious over Harita combined
with Schmaus, Yamamoto and Chaudhari under 35 U.S.C. § 103(a).
Claims 9, 11, 24, and 29 have not been argued separately and
therefore fall with claim 1. 37 C.F.R. § 41.37(c)(1)(iv).
SUMMARY
We affirm the rejection of claims 1, 9, 11, 24, and 29 under 35 U.S.C.
§ 103(a).
TIME PERIOD FOR RESPONSE
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