The Procter & Gamble Company

Patent Trials and Appeals BoardMay 13, 2021

2020004956 (P.T.A.B. May. 13, 2021)

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. 14/312,749 06/24/2014 Ross Strand AA890 4085 27752 7590 05/13/2021 THE PROCTER & GAMBLE COMPANY GLOBAL IP SERVICES CENTRAL BUILDING, C9 ONE PROCTER AND GAMBLE PLAZA CINCINNATI, OH 45202 EXAMINER GOTFREDSON, GAREN ART UNIT PAPER NUMBER 1619 NOTIFICATION DATE DELIVERY MODE 05/13/2021 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 ROSS STRAND, YUJUN LI, YIQUN ZHANG, XIAOXIAO LI, and ZHONG LEI Appeal 2020-004956 Application 14/312,749 Technology Center 1600 Before ULRIKE W. JENKS, RACHEL H. TOWNSEND, and MICHAEL A. VALEK, Administrative Patent Judges. TOWNSEND, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims to an oral care composition as being obvious and for non-statutory double patenting. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as The Procter & Gamble Company. (Appeal Br. 1.) Appeal 2020-004956 Application 14/312,749 2 STATEMENT OF THE CASE “Tooth cleaning is part of oral hygiene” and people routinely “clean their own teach by brushing with a toothbrush and toothpaste.” (Spec. 1.) “Incorrect or insufficient brushing may be not able to adequately remove the plaque or stop plaque from building up, and even may be harmful to the tooth surface, the gum, and other delicate intraoral membranes.” (Id.) According to Appellant’s Specification “[t]he way brushing is conducted, including the amount of time spent and the force used, can be more important than the choice of brush.” (Id.) Thus, according to Appellant’s Specification “[t]here is a need to develop a product which can help the user clean teeth in a proper way.” (Id. at 2.) Appellant’s invention “relates to an oral composition useful for indicating proper tooth cleaning techniques.” (Id. at 1.) Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. An oral care composition, comprising at least 0.5% by weight of silica agglomerates, wherein each silica agglomerate comprises (i) an overall particle size from 200 μm to 2000 μm; (ii) a crush strength from 0.1N to 5N; (iii) silica particles comprising an average particle size from 1 μm to 50 μm; and (iv) binder; wherein the composition has a viscosity from 15 to 70 BKU. Appeal Br. 7 (Claims Appendix). Appeal 2020-004956 Application 14/312,749 3 REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Vernon US 5,976,506 Nov. 2, 1999 Bixler et al. US 6,045,780 Apr. 4, 2000 Stanier et al. US 2004/0241108 A1 Dec. 2, 2004 REJECTIONS The following grounds of rejection by the Examiner are before us on review: Claims 1, 3–15, and 20 under 35 U.S.C. § 103 as unpatentable over Stanier, Bixler, and Vernon. Claims 1, 3–15, and 20, provisionally, on the ground of non-statutory double patenting as being unpatentable over claims 1, 4–6, and 11 of copending Application No. 14/312,763.2 DISCUSSION Obviousness The Examiner finds Stanier discloses an oral care composition, such as a toothpaste, that includes amorphous silica (i.e., a silica agglomerate) and a cationic antibacterial agent. (Final Action 3–4.) The Examiner further finds that Stanier teaches the silica has a weight mean particle size from 3 to 20 μm and that the agglomerate silica has a weight mean particle size from 50 to 1000 μm. (Id. at 4.) 2 The Examiner’s statement of rejection indicates claims 1–19 as being provisionally rejected. We conclude this is an inadvertent error as claims 2, and 16–19 are cancelled. Appeal 2020-004956 Application 14/312,749 4 The Examiner finds, however, that Stanier does not describe the claimed crush strength of the agglomerate, or the viscosity of the composition that is claimed. (Id.) The Examiner finds that Vernon discloses an oral composition, such as a toothpaste, that, like Stanier, includes silica agglomerates. (Id. at 5.) The Examiner explains that Vernon teaches that the silica that can be used includes Zeodent 165, which Appellant’s Specification evidences is a silica with a crush strength of 1.73 N. (Id.) The Examiner further finds that Vernon teaches that the silica agglomerates are used as an abrasive polishing agent in the toothpaste and that the agglomerates: should have a body strength such that they collapse within the range of forces normally produced by tooth brushing to prevent a gritty feeling in the mouth, while allowing at least some of the agglomerate to survive intact long enough to perform their cleaning function to a satisfactory degree and impart a feeling of polished teeth (column 3, lines 32-45). (Id.) Moreover, the Examiner finds that Vernon teaches that one can tailor the breakdown time of the agglomerates: by controlling the average crush strength of the agglomerates, for example by selecting a particular type of source of the particulate materials and/or the manner in which the agglomeration is carried out in the manufacturing process (col 3, lines 46–52). (Id.) The Examiner finds that Bixler discloses an oral care composition, such as a toothpaste, where the toothpaste has a viscosity from about 20–35 BKU. (Id.) The Examiner further finds that Bixler teaches the use of a binder in the composition “to impart a desired viscosity to the toothpaste” and that “if the viscosity is too low, the toothpaste becomes too watery,” Appeal 2020-004956 Application 14/312,749 5 which consumers may find as “an inferior product.” (Id. (citing Bixler col. 1, ¶¶ 1–3).) The Examiner determines that it would have been obvious to one of ordinary skill in the art to have selected a silica agglomerate for use in a toothpaste composition that would have a crush strength in the range claimed given that Vernon teaches: (1) crush strength is a result effective variable that is subject to optimization, (2) the agglomerate should provide for a feeling of polishing of the teeth but should collapse under the normal forces produced by tooth brushing in order to prevent a gritty feeling in the mouth, and (3) a particular silica that can be used in a toothpaste that falls within the claimed crush strength range. (Id. at 5–6.) The Examiner further finds that it would have been obvious to include a binder in the toothpaste composition in order to arrive at a toothpaste that has a suitable viscosity in the range claimed that is not too watery in the eyes of a consumer as taught by Bixler. (Id. at 6.) We agree with the Examiner’s findings and conclusion of obviousness. Appellant asserts the rejection is in error because Vernon “teaches away from the use of binders in its agglomerates.” (Appeal Br. 3.) According to Appellant, “Vernon discloses that to achieve the sensory benefit[,] its agglomerates are ‘substantially free from organic and/or inorganic biding agents . . . ’. As such, the agglomerates of Vernon must be substantially free from binding agents.” (Id. (underlining added).) In addition to that, Appellant further argues that Bixler “does not disclose the need for certain viscosities when formulating oral care compositions having agglomerates of particulate materials.” (Id.) Finally, Appellant argues that there is no motivation to combine the references because “[n]one of the Appeal 2020-004956 Application 14/312,749 6 references discloses or suggests a need, desire or compatibility of the invention of one reference relative to the other cited references, or to combine the specific individual elements identified by the Examiner in the manner proposed by the Examiner.” (Id. at 4.) We do not find Appellant’s arguments persuasive for the reasons discussed below. First, we agree with the Examiner (Ans. 4) that Vernon does not teach away from including binders in combination with silica agglomerates much less ones that include Zeodent 165. Vernon explains that compositions “made from particulate dental abrasive cleaning agents which have been agglomerated with the aid of organic or inorganic binding agents.” (Vernon 1:20–23.) The binding agents Vernon identifies as typically used in those agglomerates are “magnesium alumino metasilicate” or “ethylcellulose” (Id. at 1:31–34.) Vernon notes that “consumers perceive” the agglomerates that include binders “sensorially” as giving cleaning efficacy (id. at 1:24–26) and that: during brushing of the teeth with these oral compositions the granules are “crushed” by the pressure of the brush, whereby they fall apart into smaller particles which deliver a polishing effect, which the consumer sensorially perceives by a smooth feel of the oral composition and of the teeth. (Id. at 1: 27–31.) Vernon explains, however, that “where mixtures of different materials are agglomerated, this requires the use of an organic or inorganic binding agent, which makes the manufacture of these agglomerates more expensive.” (Id. at 1:45–48.) Vernon describes agglomerates that are free of organic or inorganic binders that have a particular combination of at least two particles that are chemically and/or physically different from each other and have a particular particle size range Appeal 2020-004956 Application 14/312,749 7 when combined in an oral composition is able to “deliver[] to the consumer a sensorially-percievable cleaning and polishing benefit.” (Id. at 1:52–2:2.) As the Examiner explained in the Answer, to which Appellant does not respond, Vernon “does not disclose that the sensory benefit taught therein [with agglomerates that are free of binders] cannot be obtained if a binding agent is present.” (Ans. 3–4.) Rather, Vernon specifically teaches that agglomerates with binding agents are capable of achieving the same sensory benefit that the agglomerates of the Vernon invention achieve without using a binding agent to make the agglomerated material out of a mixture of particulate dental abrasive cleaning agents. Vernon’s decision to make agglomerates without binders was because the addition of binders “makes the manufacture of the [prior art] agglomerates more expensive.” (Vernon 1:43–49.) “That a given combination would not be made by businessmen for economic reasons does not mean that persons skilled in the art would not make the combination because of some technological incompatibility.” In re Farrenkopf, 713 F.2d 714, 718 (Fed. Cir. 1983). Thus, we agree with the Examiner, that “the skilled artisan reading Vernon would have recognized that the sensory benefits taught by Vernon can be obtained even in compositions comprising a binding agent, such as those taught by Stanier, but that such compositions are more expensive.” (Ans. 4.) Regarding Appellant’s argument that Bixler “does not disclose the need for certain viscosities when formulating oral care compositions having agglomerates of particulate materials” (Appeal Br. 3), we agree with the Examiner that Bixler teaches that for a consumer, with respect to toothpaste compositions, a watery toothpaste is considered to be an “inferior product.” (Bixler 1:23–28.) And Bixler teaches that a toothpaste with a viscosity Appeal 2020-004956 Application 14/312,749 8 rating of about 20–35 BKU is not watery, but rather an “extrudable creamy mass” and that such a viscosity is achieved with the use of a binder. (Id. at 1:47–56, 2:25–27.) “Often, it will be necessary for a court to look to interrelated teachings of multiple patents; the effects of demands known to the design community or present in the marketplace; and the background knowledge possessed by a person having ordinary skill in the art, all in order to determine whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Notwithstanding the fact that Bixler is “focused on identifying a toothpaste composition binder replacement for CMC and carrageenan in tropical areas” (Appeal Br. 3), we agree with the Examiner, that Bixler teaches that viscosity of a toothpaste is a result effective variable that can be adjusted with binders and Bixler also teaches what consumers find to be an acceptable viscosity range for a toothpaste generally that includes binders (Ans. 6). Moreover, we agree with the Examiner (Ans. 6–7) that Appellant has not provided any persuasive reasoning why one of ordinary skill in the art would not have expected such a viscosity range to be what a consumer would find suitable for a toothpaste that includes silica agglomerates as abrasive agents, such as is taught by Stanier (Stanier ¶¶ 18, 76) and Vernon (Vernon col. 1–2). Appellant’s argument that there is no motivation to combine because “the disclosure in Vernon and Bixler et al. would not improve the coatings of Stanier, which increase the compatibility of silica with cationic antibacterial agents” (Appeal Br. 4) is not found persuasive because the obviousness question does not rest on whether the invention described by Appeal 2020-004956 Application 14/312,749 9 Stanier would be improved. “In determining whether obviousness is established by combining the teachings of the prior art, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art.” In re GPAC Inc., 57 F.3d 1573, 1581 (Fed. Cir. 1995) (internal quotations omitted); In re Keller, 642 F.2d 413, 425 (CCPA 1981). As the Examiner explained, Vernon discloses specific silicas having a certain particle size range within the scope of the claimed invention (e.g., Zeodent 165) are advantageously used as abrasives in toothpastes because they can impart cleaning properties without leaving a gritty feeling. (Ans. 6; Vernon 1:50–67, 3:32–59, 4:1–2.) And, as the Examiner also explained (Ans. 5–6), Stanier is not restricted to a particular silica, but rather suggests that any abrasive silica can have improved compatibility with cationic antibacterial agents when treated with polyethylene glycol as taught. (Stanier ¶¶17–20.) We agree with the Examiner that there is ample motivation provided by the references to include the silica agglomerates that are taught to be useful in a toothpaste composition in Vernon in the toothpaste composition of Stanier, which tooth cleaning composition also includes a cationic antibacterial agent. Finally, Appellant’s argument that the Specification examples “demonstrate[] that the properties as recited in the present claims are not inherently present” (Appeal Br. 5) is not persuasive of non-obviousness. Appellant’s Specification shows various compositions having been made, four of which have viscosities within the claimed range (Examples 1–4 (Spec. Tables 2 and 3)), and two of which have viscosities that are outside the claimed range (Examples 5 and 6 (Spec. Tables 2 and 3)). Each of the compositions include silica agglomerates within the claimed particle size Appeal 2020-004956 Application 14/312,749 10 range but in varying amounts and each include binders in varying amounts. (Id.) The Specification shows there is breakdown of silica agglomerates into smaller particles during brushing in all the examples (Spec. 19 and Table 4 and Figs. 2–7), although when the viscosity is much greater than the claimed range, the breakdown of the particle size is less (compare Fig. 5–7 (corresponding to Ex. 4 (viscosity 69.8 (Table 3)), Ex. 5 (viscosity 85.6 (Table 3)), and Ex. 6 (viscosity 107.6 (Table 3).) From the foregoing, we conclude that the Specification shows, with respect to the claimed composition properties, that a composition can have agglomerate silicone particles with the claimed particle size but not be a composition that has the claimed viscosity but that irrespective of the viscosity, the particle size of the agglomerate will reduce after brushing. Moreover, as the Examiner explained in the Answer (Ans. 7), the rejection does not rely on a composition inherently having the viscosity claimed, but rather that it would have been obvious to one of ordinary skill in the art to optimize the viscosity of a toothpaste composition to be within the claimed range by varying the amount and/or type of binder as taught by Bixler, so as to avoid a watery composition that would not be well received by a consumer. The reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. In re Lintner, 458 F.2d 1013, 1016 (CCPA 1972); In re Dillon, 919 F.2d 688, 693 (Fed. Cir. 1990). Thus, that the viscosity range of the claimed composition may have been selected by Appellant for a different reason than to prevent the toothpaste composition from being watery does not establish non-obviousness since it is not necessary that references be modified for the same reason that motivated Appellant. Appeal 2020-004956 Application 14/312,749 11 Thus, for the reasons discussed, we affirm the Examiner’s rejection of claims 1, 3–15 and 20 as being obvious over Stanier, Bixler, and Vernon. Provisional Non-statutory Double Patenting Appellant does not contest the Examiner’s provisional rejection based on the judicially created doctrine of obviousness-type double patenting. (Appeal Br. 6). Appellant also has not filed a terminal disclaimer to obviate the rejection. Therefore, we summarily affirm the Examiner’s rejection. Hyatt v. Dudas, 551 F.3d 1307, 1314 (Fed. Cir. 2008) (“When the appellant fails to contest a ground of rejection to the Board, . . . the Board may treat any argument with respect to that ground of rejection as waived.”); MPEP § 1205.02 (“If a ground of rejection stated by the examiner is not addressed in the appellant’s brief, appellant has waived any challenge to that ground of rejection and the Board may summarily sustain it, unless the examiner subsequently withdrew the rejection in the examiner’s answer.”). Appeal 2020-004956 Application 14/312,749 12 DECISION SUMMARY Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 3–15, 20 103 Stanier, Bixler, Vernon 1, 3–15, 20 1, 3–15, 20 Provisional non- statutory Double Patenting 1, 3–15, 20 Overall Outcome 1, 3–15, 20 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