Ex Parte Glandorf et al

Patent Trial and Appeal Board

May 1, 2017

11541889 (P.T.A.B. May. 1, 2017)

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.
11/541,889 10/02/2006 William Michael Glandorf 7857MDDR 4472
27752 7590 05/03/2017
THE PROCTER & GAMBLE COMPANY
Global IP Services
Central Building, C9
One Procter and Gamble Plaza
CINCINNATI, OH 45202
EXAMINER
ROBERTS, LEZAH
ART UNIT PAPER NUMBER
1612
NOTIFICATION DATE DELIVERY MODE
05/03/2017 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
pair_pg @ firsttofile. com
mayer.jk @ pg. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WILLIAM MICHAEL GLANDORF,
DONALD JAMES WHITE, Jr., and ARIF A. BAIG1
Appeal 2016-003950
Application 11/541,889
Technology Center 1600
Before MELANIE L. McCOLLUM, RYAN H. FLAX, and
DEVON ZASTROW NEWMAN, Administrative Patent Judges.
FLAX, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) involving
claims directed to an oral care composition. Claims 1,2, 12, and 13 are on
appeal as rejected under 35 U.S.C. §§ 102(b) and 103(a). We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify the Real Party in Interest as The Procter & Gamble
Company. Br. 1.
Appeal 2016-003950
Application 11/541,889
STATEMENT OF THE CASE
The appealed claims can be found in the Claims Appendix of the
Appeal Brief. Claims 1 and 12 are independent claims and read as follows:
1. An oral care composition comprising:
a. a stannous ion source,
b. a source of polyvalent cations selected from one or a mixture
of zinc (Zn+2), copper (Cu+2), strontium (Sr+2), calcium (Ca+2),
barium (Ba+2), and magnesium (Mg+2), wherein the polyvalent
cation source is present at a level sufficient to supply a molar
ratio of polyvalent cation to stannous of greater than 1:1,
c. a mineral surface-active agent having substantivity to teeth
and chelating activity for stannous and said polyvalent cations,
selected from the group consisting of low molecular weight
diphosphonates, pyrophosphates, tripolyphosphates, and
combinations thereof, and present at a level of from about 0.05%
to about 35% by weight of the composition, and
d. an abrasive polishing material comprising silica,
wherein the molar ratio of polyvalent cation to stannous ensures
competitive chelation of stannous and the polyvalent cations by
the mineral surface-active agent and the composition provides
enhanced stannous stability and therapeutic efficacy of
antimicrobial activity to reduce plaque and gingivitis with
minimal side effects of stannous-derived tooth staining and
astringency.
12. An oral care composition comprising:
(a) a first composition comprising a stannous ion source,
(b) a second composition comprising a mineral surface-active
agent having substantivity to mineral surfaces and chelating
activity for stannous and polyvalent cations selected from zinc
(Zn+2), copper (Cu+2), strontium (Sr+2), calcium (Ca+2), barium
(Ba+2), and magnesium (Mg+2), said mineral surface-active agent
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Application 11/541,889
present at a level of from about 0.05% to about 35% by weight
of the oral care composition, [sic]
(c) a source of said polyvalent cations other than stannous
present in either or both of said first and second compositions at
a level sufficient to supply a molar ratio of polyvalent cation to
stannous of greater than 1:1 to ensure competitive chelation of
stannous and said polyvalent cations, and
(d) an abrasive polishing material comprising silica present in
either or both of said first and second compositions,_ [sic]
wherein said mineral surface-active agent chelates the stannous
ions upon intraoral contact of the first composition and second
composition and wherein the composition provides enhanced
stannous stability and therapeutic efficacy of antimicrobial
activity to reduce plaque and gingivitis with minimal side effects
of stannous-derived tooth staining and astringency.
Br. 6—7 (Claims App’x.).
The following rejections are on appeal:2
Claims 1 and 2 stand rejected under 35 U.S.C. § 102(b) as anticipated
byYue.3 Final Action 4.
Claims 1,2, 12, and 13 stand rejected under 35 U.S.C. § 103(a) over
Yue. Id. at 6.
2 The Final Action included a rejection of claims 4—7 under 35 U.S.C. § 112,
second paragraph, as indefinite. These claims are cancelled and the rejection
is dismissed as moot. Br. 1.
3 U.S. Patent Application Pub. No. US 2003/0124067 A1 (published July 3,
2003) (hereinafter “Yue”). We note that claims 4—6 and 9—11, which were
also rejected as anticipated by Yue, are cancelled. Br. 1. Any rejection of
these cancelled claims is dismissed as moot.
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Application 11/541,889
DISCUSSION
We adopt the Examiner’s findings of fact, reasoning on scope and
content of the prior art, and conclusions set out in the Final Action and
Answer. We conclude that the Examiner has established that the claims
would have been anticipated by and/or obvious over Yue. Appellants have
not produced evidence showing, or persuasively argued, that the Examiner’s
determinations are incorrect. Only those arguments made by Appellants in
the Briefs have been considered in this Decision. Arguments not presented
in the Briefs are waived. See 37 C.F.R. § 41.37(c)(l)(iv) (2015).
Appellants concede that “all elements of appealed Claims 1 and 2 []
may be disclosed in Yue.” Br. 3—5. Appellants’ sole argument is that the
appealed claims are entitled to a priority date of November 12, 1999, based
on the filing of Provisional Patent Application No. 60/165,350
(“Provisional”), which predates Yue such that Yue is not prior art.4 Id.
Claim 1 recites, “the polyvalent cation source is present at a level
sufficient to supply a molar ratio of polyvalent cation to stannous of greater
than 1:1,” and “the molar ratio of polyvalent cation to stannous ensures
competitive chelation of stannous and the polyvalent cations by the mineral
surface-active agent.” Claim 12 recites, “a source of said polyvalent cations
4 The Specification indicates that Appellants’ application is a continuation-
in-part application ofU.S. Patent Application No. 10/975,963 (now
abandoned, according to USPTO records), filed October 28, 2004, which
was a divisional application ofU.S. Patent Application No. 10/351,205 (now
U.S. Patent 6,821,507), filed January 24, 2003, which was a divisional
application ofU.S. Patent Application No. 09/710,440 (now U.S. Patent
6,555,094), filed November 10, 2000, which claimed the benefit of the
Provisional, filed November 12, 1999.
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Application 11/541,889
other than stannous present in either or both of said first and second
compositions at a level sufficient to supply a molar ratio of polyvalent cation
to stannous of greater than 1:1 to ensure competitive chelation of stannous
and said polyvalent cations . . . Each of these claims requires that the oral
care composition have a greater amount of polyvalent cations relative to
stannous ions to ensure competitive chelation of stannous and polyvalent
cations by the MSA for enhanced stannous stability and therapeutic efficacy.
The Specification explains this concept, as follows, “[t]he polyvalent
cation source is typically present at a level sufficient to supply a molar ratio
of polyvalent cation to stannous preferably 1:1 or greater[, which] [] ensures
a sufficient concentration of other polyvalent cation to compete with
stannous for the MSA.” Spec. 15:30-32. The Specification, in accordance
with claims 1 and 12, identifies that “[t]he present compositions preferably
comprise a source of polyvalent cations other than stannous, including
inorganic ions such as zinc (Zn+2), copper (Cu+2), aluminum (Al+3), iron
(Fe+2, Fe+3), strontium (Sr+2), calcium (Ca+2), barium (Ba+2), magnesium
(Mg+2) and manganese (Mn+2).” Id. at 15:17—20.
The Provisional also identifies that a ratio between stannous and
another component must be achieved, but it describes that it is the ratio
between the MSA and stannous that is critical, rather than the ratio between
a polyvalent ion source and stannous, stating:
A sufficient amount of mineral surface active agent, fluoride
ions, and stannous ions must be present for the desired complex
to be formed. In general, there can not be too much of the
mineral surface active agent, fluoride ions, or stannous ions to
form the complex. However, a sufficient amount of each is
required to form the complex. The ratio total moles ofphosphate
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Application 11/541,889
anion [MSA] to total moles of stannous ion should also be
controlled. This molar ratio of phosphate anion to stannous ion
is from about 0.2:1 to about 5:1, preferably from about 0.5:1 to
about 3:1, more preferably from about 0.6:1 to about 2:1, and
most preferably from about 0.7:1 to about 1:1.
Provisional 9:17—25 (emphasis original). The Provisional does not expressly
discuss any source of polyvalent ions, per se, but it does discuss optionally
providing copper- and zinc-containing compounds as antimicrobials,
identifying that they can be present “at levels form about 0.01% to about
1.5%, by weight.” Id. 16:6—18. Appellants point to this disclosure in the
Provisional as supporting the claims for priority purposes. See Br. 4
(“Copper and zinc salts listed at page 16, lines 6 and 7 at a 0.01 % to 1.5%
level disclosed at page 16, line 18, which, if selected in the manner
suggested by the Examiner, the range meets the greater than 1:1 level of
metal:stannous of Claim 1 when the stannous level is less than 1.5%”). The
Provisional indicates that its stannous source can “be present in an amount
of from about 0.1% to about 11%, by weight.” Provisional 7:5—7.
Comparing these amounts disclosed in the Provisional, one can envision a
range of ratios of copper/zinc compounds to stannous spanning 1 : 1100 to
15:1 (i.e., based on the respective wt.% 0.01 : 11 to 1.5 : 0.1).
While the Specification, in discussing including the polyvalent ion
source, identifies that “[s]uch polyvalent cations compete with stannous for
the MSA/chelant incorporated in the compositions to stabilize stannous by
binding or chelation” (Spec. 15:20—22), which is supportive of the appealed
claims, the Provisional indicates that its “[antimicrobial (Zn- or Cu-
containing)] agents may be included at levels which do not prevent the
formation of the stannous fluoride mineral surface active agent complex”
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Application 11/541,889
(Provisional 15:20-23), which is not supportive of the appealed claims.
These two disclosures are at odds. The disclosure of the Provisional
indicates that one would not include more zinc or copper source material if it
might compete with stannous for MSA binding.
“A reference patent is only entitled to claim the benefit of the filing
date of its provisional application if the disclosure of the provisional
application provides support for the claims in the reference patent in
compliance with § 112, 1.” Dynamic Drinkware, LLC v. National
Graphics, Inc., 800 F.3d 1375, 1381 (Fed. Cir. 2015).
“In other words, the specification of the provisional must
‘contain a written description of the invention and the manner
and process of making and using it, in such full, clear, concise,
and exact terms,’ 35 U.S.C. § 112 | 1, to enable an ordinarily
skilled artisan to practice the invention claimed in the non­
provisional application.” New Railhead Mfg., L.L.C. v. Vermeer
Mfg. Co., 298 F.3d 1290, 1294 (Fed.Cir.2002) (emphases in
original).
Id. 1378. We note, “an invention may be enabled even though it has not
been described.” University of Rochester v. G.D. Searle & Co., 358 F.3d
916, 921 (Fed. Cir. 2004). We further note that, “[a] disclosure in a parent
application that merely renders the later-claimed invention obvious is not
sufficient to meet the written description requirement; the disclosure must
describe the claimed invention with all its limitations.” Tronzo v. Biomet,
Inc., 156 F.3d 1154, 1158 (Fed. Cir. 1998).
A description adequate to satisfy 35 U.S.C. § 112, first
paragraph, must ‘clearly allow persons of ordinary skill in the art
to recognize that [the inventor] invented what is claimed.’ In
other words, the test for sufficiency is whether the disclosure of
the application relied upon reasonably conveys to those skilled
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Application 11/541,889
in the art that the inventor had possession of the claimed subject
matter as of the filing date.
AriadPharms., Inc. v. EliLilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010)
(en banc) (citation omitted, alteration in original). Here, the written
description requirement would be met if the functional characteristic of the
claimed invention was coupled with a disclosed correlation between that
function and a structure that is sufficiently known or disclosed. Id. at 1349
(citing Enzo Biochem, Inc. v. Gen-Probe Inc., 323 F.3d 956, 964 (Fed. Cir.
2002)). Appellants’ disclosure in the Provisional does not provide a
correlation for the appealed claims’ “ratio” elements.
Because we find that the Appellants’ Provisional does not provide a
written description of the invention of the appealed claims, we find that the
claims are not entitled to the priority date that would be accorded by the
Provisional. Therefore, we affirm the rejections set forth in the Final Action.
SUMMARY
The rejections of the claims under 35 U.S.C. §§ 102 and 103 are
affirmed.
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)(l)(iv).
AFFIRMED
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