Swapna Basa et al.

Patent Trials and Appeals Board

Oct 18, 2019

15347837 - (D) (P.T.A.B. Oct. 18, 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.
15/347,837 11/10/2016 Swapna Basa AA1047 3837
27752 7590 10/18/2019
THE PROCTER & GAMBLE COMPANY
Global IP Services
Central Building, C9
One Procter and Gamble Plaza
CINCINNATI, OH 45202
EXAMINER
LIU, TRACY
ART UNIT PAPER NUMBER
1612
NOTIFICATION DATE DELIVERY MODE
10/18/2019 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):
centraldocket.im@pg.com
mayer.jk@pg.com
pair_pg@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte SWAPNA BASA, HONGMEI YANG, and ROSS STRAND
__________

Appeal 2019-0043771
Application 15/347,837
Technology Center 1600
__________

BEFORE DONALD E. ADAMS, RYAN H. FLAX, and
CYNTHIA M. HARDMAN, Administrative Patent Judges.
HARDMAN, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1–12, 14, 16, 18, 19, and 21. Final Act.
2. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 This appeal is related to Appeal No. 2019-004376 (Application
15/347,824), which is also presently before the Board.
2 We use the word “Appellant” to refer to “Applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies the real party in interest as “The
Procter & Gamble Company.” Appeal Br. 1.
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STATEMENT OF THE CASE
The claims are directed to dentifrice compositions. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A dentifrice composition comprising:
(a) 45% to 75%, by weight of the composition, of water;
(b) 25% to 50%, by weight of the composition, of a
calcium-containing abrasive;
(c) 0.0025% to 2%, by weight of the composition, of a
fluoride ion source;
(d) 0.4% to 10%, by weight of the composition, of an
ultraphosphate; and
wherein said composition has a pH greater than 8.
Appeal Br. 6 (Claims Appendix).
Claims 1–12, 14, 16, 18, 19, and 21 are on appeal. Final Act. 2. The
claims stand rejected as follows:
Claims 1–12, 14, 16, 18, 19, and 21 are rejected under 35 U.S.C.
§ 103 as being unpatentable over Midha3 and Koyasu.4 Final Act. 3.
Claims 1–12, 14, 16, 18, 19, and 21 are provisionally rejected on the
ground of nonstatutory double patenting as being unpatentable over each of
(1) claims 1 and 4–15 of copending Application No. 15/347,823, (2) claims
1 and 13–19 of copending Application No. 15/347,824, (3) claim 1 of
copending Application No. 15/347,830, (4) claims 1 and 8–20 of copending
Application No. 15/347,821 (now US 10,213,370), (5) claims 1, 10–14, and
17–19 of copending Application No. 15/347,840 (now US 10,226,410), (6)

3 Midha et al., US 2014/0308321 A1, published Oct. 16, 2014 (“Midha”).
4 Koyasu et al., Ultraphosphate, a Potent Stain Control Agent That is
Effective for Both Stain Removal and Prevention of Stain Deposition, 33(2)
Dent. Mater. J. 252–60 (2014) (“Koyasu”).
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claims 1–3, 6–9, and 16–19 of copending Application No. 15/347,897, and
(7) claims 1, 5–8, 11, 14, and 17–19 of copending Application No.
14/830,831 (now US 10,226,414), in view of Midha and Koyasu. Final Act.
10.
ANALYSIS
Obviousness
Appellant argued the claims as a group. Appeal Br. 2–5. We select
claim 1 as representative, and the remaining claims stand or fall with claim
1. 37 C.F.R. § 41.37(c)(1)(iv).
According to the Examiner, Midha discloses an oral composition for
cleaning and polishing dental enamel, comprising from about 10% to about
99% by weight of the composition of water (Midha ¶ 111); about 0.0025%
to about 5.0% by weight of the composition of a fluoride ion source (Midha
¶ 56); about 0.1% to about 60% calcium carbonate (i.e. a calcium-containing
abrasive) (Midha ¶ 100); and a pH from about 3 to about 10 (Midha ¶ 57).
Final Act. 3–4. The Examiner found, however, that Midha does not disclose
that the composition comprises ultraphosphate. Id. at 4.
The Examiner found that Koyasu discloses that sodium ultraphosphate
is a potential stain control ingredient for toothpastes, and that it prevents
stain deposition and helps teeth maintain their natural while color. Final
Act. 4. The Examiner found that “[i]t would have been prima facie obvious
to one of ordinary skill in the art to have incorporated sodium ultraphosphate
into the composition of Midha et al. in order to enhance the bleaching effect
of hydrogen peroxide and/or carbamide peroxide as taught by Koyasu et al.”
Id. at 5.
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We adopt the Examiner’s findings of fact and reasoning regarding the
scope and content of the prior art (Final Act. 3–9; Ans. 4–7), and agree that
the claims would have been obvious over the cited prior art for the reasons
the Examiner articulated. We address Appellant’s arguments below.
Appellant argues that “the cited documents provide no expectation of
success that a high water ultraphosphate dentifrice composition having an
alkaline pH in combination with a fluoride ion source can be used to provide
whitening and enhanced fluoride ion stability and efficacy.” Appeal Br. 3.
We are not persuaded by this argument, because it is divorced from the
claimed invention. “The reasonable expectation of success requirement
refers to the likelihood of success in combining references to meet the
limitations of the claimed invention.” Intelligent Bio-Systems, Inc. v.
Illumina Cambridge Ltd., 821 F.3d 1359, 1367 (Fed. Cir. 2016) (emphasis
added). Claim 1 does not recite any limitations directed to whitening and
enhanced fluoride stability and efficacy. Further, as discussed above,
Koyasu teaches that ultraphosphate whitens teeth, and thus does in fact
provide an expectation that use of ultraphosphate in a dentifrice is
reasonably likely to result in tooth whitening.
Appellant further argues that “[t]here is no reason why one skilled in
the art would use Midha to associate an ultraphosphate for teeth whitening
and an alkaline pH with a fluoride ion source to improve fluoride ion
stability and efficacy in a high water dentifrice composition, as in the present
invention.” Appeal Br. 3. We are also not persuaded by this argument,
because to render an invention obvious, the prior art does not have to
address the same problem addressed by a patent applicant. See KSR Int’l
Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007) (“In determining whether the
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subject matter of a patent claim is obvious, neither the particular motivation
nor the avowed purpose of the patentee controls. What matters is the
objective reach of the claim. If the claim extends to what is obvious, it is
invalid under § 103.”). As summarized above, the Examiner provided
adequate reasons why a person of ordinary skill in the art would have
combined the cited prior art regardless of whether a person of ordinary skill
in the art would have been motivated to combine the art to achieve improved
fluoride stability and efficacy.
Appellant also argues that Midha is silent on the use of
ultraphosphate, and that Koyasu does not disclose ultraphosphate formulated
as a high water dentifrice. Appeal Br. 3–4. We are not persuaded by these
arguments, because the test for obviousness is not whether the claimed
invention is expressly identified in any one or all of the references, but
whether the claimed subject matter would have been obvious to those of
ordinary skill in the art in light of the combined teachings of the prior art.
See In re Keller, 642 F.2d 413, 425 (CCPA 1981). Appellant cannot show
nonobviousness by attacking references individually as failing to teach all of
the claimed limitations where, as here, the rejection is based on a
combination of references, whose teachings together render obvious the
claimed invention. Id.
Appellant further argues that the Examiner has improperly used
hindsight, and that
[t]he learnings present in the current application—that an
ultraphosphate can be used to whiten teeth and an alkaline pH
with a fluoride ion source can be used to improve fluoride ion
stability and efficacy in a high water dentifrice composition,
should not be used as a reason for obviousness, when such a
teaching is absent from the cited references.
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Appeal Br. 4. We are not persuaded by Appellant’s argument. The
Examiner’s prima facie case was appropriately grounded in the teachings of
the prior art. For example, as discussed above, Koyasu discloses that
ultraphosphate whitens teeth. Moreover, contrary to Appellant’s suggestion,
the Examiner did not rely on the purported fact that “an alkaline pH with a
fluoride ion source can be used to improve fluoride ion stability and efficacy
in a high water dentifrice composition” in stating the prima facie
obviousness rejection.
Appellant further argues that “while Koyasu et al. discloses
ultraphosphate, ultraphosphate is only disclosed as being the most effective
at a neutral pH.” Appeal Br. 4. We are not persuaded by this argument,
because it mischaracterizes Koyasu. As the Examiner aptly explained,
Koyasu does not explicitly disclose ultraphosphate as being most effective at
neutral pH, but rather discloses it as having the best stain removal compared
to other chelating agents when tested at neutral pH. Ans. 5.
Finally, Appellant argues that Example 4 in Table 3 of the
Specification, which contains ultraphosphate and has a pH above 8.0, “had
the greatest stain prevention value as compared to comparative examples
and even the commercialized product marketing a tooth whitening benefit.”
Appeal Br. 2. This does not persuade us of Examiner error. To the extent
Appellant is arguing unexpected results, Appellant has not shown that the
results are unexpected. As noted by the Examiner, “[i]t was known in the art
from Koyasu et al. that sodium ultraphosphate prevents stain deposition,”
and Appellant “has not shown wherein the stain prevention value of the
claimed invention comprising ultraphosphate is unexpected over Koyasu et
al.’s composition, which also comprises ultraphosphate.” Ans. 7. We also
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agree with the Examiner that on the current record, it is unclear “whether the
stain prevention value is from a composition comprising ultraphosphate or
from a composition comprising ultraphosphate and having a pH greater than
8,” because “Table 3 does not have a comparative example comprising
ultraphosphate and having a pH of 8 or less.” Id.
Accordingly, for the reasons discussed above, we affirm the rejection
of claims 1–12, 14, 16, 18, 19, and 21 as obvious over Midha and Koyasu.
Nonstatutory Double Patenting
The Examiner provisionally rejected claims 1–12, 14, 16, 18, 19, and
21 on the ground of nonstatutory double patenting as being unpatentable
over each of seven different copending applications, together with Midha
and Koyasu. Final Act. 10.
On appeal, Appellant did not address the nonstatutory double
patenting rejections. See, e.g., Br. 1–5; Ans. 7. Arguments not presented in
a brief are waived. See 37 C.F.R. § 41.37(c)(1)(iv) (2015) (“Except as
provided for in §§ 41.41, 41.47 and 41.52, any arguments or authorities not
included in the appeal brief will be refused consideration by the Board for
purposes of the present appeal.”).
Three of the copending applications on which the Examiner’s
rejections are based have now issued as patents. Those applications are:
Application No. 15/347,821, which issued as US 10,213,370 on February
26, 2019, with 18 claims; Application No. 15/347,840, which issued as US
10,226,410 on March 12, 2019, with 13 claims; and Application No.
14/830,831, which issued as US 10,226,414 on March 12, 2019, with 20
claims. Because these applications have now issued as patents, the
rejections over these applications are no longer deemed to be “provisional.”
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In view of Appellant’s lack of response to the nonstatutory double
patenting rejections, we summarily affirm the rejections of claims 1–12, 14,
16, 18, 19, and 21 over (1) claims 1 and 4–15 of copending Application No.
15/347,823, (2) claims 1 and 13–19 of copending Application No.
15/347,824, (3) claim 1 of copending Application No. 15/347,830, (4)
claims 1 and 8–20 of copending Application No. 15/347,821 (now US
10,213,370), (5) claims 1, 10–14, and 17–19 of copending Application No.
15/347,840 (now US 10,226,410), (6) claims 1–3, 6–9, and 16–19 of
copending Application No. 15/347,897, and (7) claims 1, 5–8, 11, 14, and
17–19 of copending Application No. 14/830,831 (now US 10,226,414), in
view of Midha and Koyasu.
CONCLUSION
We affirm the rejection of claims 1–12, 14, 16, 18, 19, and 21 under
35 U.S.C. § 103 as being unpatentable over Midha and Koyasu.
We affirm the nonstatutory double patenting rejections.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–12, 14,
16, 18, 19,
and 21
103 Midha, Koyasu 1–12, 14,
16, 18, 19,
and 21

1–12, 14,
16, 18, 19,
and 21
Nonstatutory double
patenting over (1) claims
1 and 4–15 of copending
Application No.
15/347,823, (2) claims 1
and 13–19 of copending
Application No.
15/347,824, (3) claim 1
1–12, 14,
16, 18, 19,
and 21

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Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
of copending
Application No.
15/347,830, (4) claims 1
and 8–20 of copending
Application No.
15/347,821 (now US
10,213,370), (5) claims
1, 10–14, and 17–19 of
copending Application
No. 15/347,840 (now US
10,226,410), (6) claims
1–3, 6–9, and 16–19 of
copending Application
No. 15/347,897, and (7)
claims 1, 5–8, 11, 14,
and 17–19 of copending
Application No.
14/830,831 (now US
10,226,414), in view of
Midha and Koyasu
Overall
Outcome
1–12, 14,
16, 18, 19,
and 21

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). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED