COLGATE-PALMOLIVE COMPANY

Patent Trials and Appeals Board

Jul 20, 2021

2020006497 (P.T.A.B. Jul. 20, 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.
14/649,109 06/02/2015 Aarti Rege 9821-00-US-01-OC 8346
23909 7590 07/20/2021
COLGATE-PALMOLIVE COMPANY
909 RIVER ROAD
PISCATAWAY, NJ 08855
EXAMINER
WEBB, WALTER E
ART UNIT PAPER NUMBER
1612
NOTIFICATION DATE DELIVERY MODE
07/20/2021 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):
Patent_Mail@colpal.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte AARTI REGE, DAVID F. SURIANO,
RICHARD SULLIVAN, and MICHAEL A. STRANICK
____________

Appeal 2020-006497
Application 14/649,109
Technology Center 1600
____________

Before RICHARD M. LEBOVITZ, JEFFREY N. FREDMAN, and
TIMOTHY G. MAJORS, Administrative Patent Judges.

MAJORS, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 submits this appeal under 35 U.S.C. § 134(a) involving
claims to an oral care composition comprising, inter alia, a zinc ion source,
arginine, and a fluoride source. The claims have been rejected for
obviousness under 35 U.S.C. § 103. We have jurisdiction under
35 U.S.C. § 6.
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a). Appellant identifies Colgate-Palmolive Company as the
real party-in-interest. Appeal Br. 2.
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STATEMENT OF THE CASE
“Dental erosion involves demineralization and damage to the tooth
structure due to acid attack from nonbacterial sources.” Spec. ¶ 1. As
background, the Specification explains that “[h]eavy metal ions, such as
zinc, are resistant to acid attack,” and also that “[z]inc has been shown to
have antibacterial properties in plaque and caries studies.” Id. ¶ 3.
However, when zinc and fluoride are used together, such as in a dentifrice
composition, the Specification states that “zinc ions may react with fluoride
ions to produce zinc fluoride, which is insoluble and so reduces the
availability of both the zinc and the fluoride.” Id. ¶ 4.
According to the Specification, “[i]t has now been discovered that
formulations comprising zinc ions together with fluoride have enhanced
fluoride stability when placed in combination with a basic amino acid, for
example arginine or lysine.” Id. ¶ 5. Thus, “[t]he invention provides oral
care compositions, for example dentifrices, that comprise a zinc ion source,
a fluoride ion source, and a basic amino acid.” Id. ¶ 6.
Claims 1, 5, 7, 8, 10, 13, 16, 17, and 21–23 are on appeal. Claim 1 is
illustrative:
1. An oral care composition comprising:
From 0.5 wt% to 2.5 wt% of a zinc ion source comprising
zinc citrate; about 1450 ppm fluoride, wherein the fluoride
source is sodium fluoride; and from about 1.5 wt% to about
5 wt% of arginine;
one or more alkali phosphate salts selected from the group
consisting of: sodium phosphate dibasic, potassium phosphate
dibasic, dicalcium phosphate dihydrate, tetrasodium
pyrophosphate, tetrapotassium pyrophosphate, calcium
pyrophosphate, and sodium tripolyphosphate;
in a silica abrasive dentifrice base; and
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wherein the composition delivers nearly 20% more
fluoride to the surface of an enamel, relative to oral care
compositions without arginine, when measured by electron
spectroscopy for chemical analysis (ESCA); and
wherein the composition is used in treating or reducing
dental enamel erosion.
Appeal Br. 10. Each of claims 5, 7, 8, 10, 13, 16, 17, and 21–23 depends,
directly or indirectly, from claim 1. Id. at 10–11. Claim 16 recites: “[t]he
composition of claim 1, wherein the zinc ion source comprises zinc oxide,”
and claim 17 recites “[t]he composition of claim 1 wherein the zinc ion
source comprises zinc citrate and zinc oxide.” Id. at 11.2
Appellant seeks review of the Examiner’s rejection of claims 1, 5, 7,
8, 10, and 21–23 under 35 U.S.C. § 103 as obvious over Prencipe ’454.3
Final Act. 3–7.4 The Examiner’s rejection of claims 16 and 17 as obvious
over the combination of Prencipe ’454 and Prencipe ’4925 is also on appeal.
Id. at 5–7.
I. Obviousness over Prencipe ’454
The standard of review on appeal is whether a preponderance of the
evidence supports the Examiner’s conclusion that claims 1, 5, 7, 10, and 21–

2 Claim 1, from which claims 16 and 17 depend, expressly requires that the
zinc ion source comprises zinc citrate. To the extent claim 16 further
requires that the zinc ion source comprises both zinc citrate and zinc oxide
(like expressly recited also in claim 17), it is unclear what distinguishes
claims 16 and 17. If prosecution continues, we suggest appropriate
correction or clarification be made.
3 Prencipe et al., US 2009/0202454 A1, published Aug. 13, 2009.
4 This citation refers to the Final Rejection dated December 16, 2019 (“Final
Act.”). We also refer herein to the Examiner’s Answer on Appeal dated July
16, 2020 (“Ans.” or “Answer”), and to the Advisory Action dated March 9,
2020 (“Adv. Act.”).
5 Prencipe et al., WO 2010/138492 A2, published Dec. 2, 2010.
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23 would have been obvious over Prencipe ’454. Appellant’s argument for
this rejection is addressed to the claims as a group. We focus here on claim
1, and the other claims stand or fall with claim 1. 37 C.F.R. § 41.37(c)(iv).
The Examiner concludes that the oral care composition of claim 1
would have been obvious over Prencipe ’454. Final Act. 3–7; Adv. Act. 2;
Ans. 3–7. According to the Examiner, Prencipe ’454 exemplifies a
toothpaste formulation that includes a zinc ion source (1.4 wt% zinc lactate),
a basic amino acid (5 wt% arginine), a fluoride ion source (0.76 wt% sodium
monofluorophosphate6), an alkali phosphate salt (2 wt% tetrasodium
pyrophosphate), and a silica abrasive, among other ingredients. Final Act. 3;
see Prencipe ’454 ¶ 99 (Example 2), ¶ 103 (Formula IV). The Examiner
finds that Prencipe ’454 discloses that zinc salts (e.g., zinc citrate, zinc
lactate, etc.) are known antibacterial agents, and the Examiner reasons that it
would have been obvious to replace zinc lactate with zinc citrate because
they are art-recognized substitutable salts. Final Act. 3; Prencipe ’454 ¶ 16
(sub-composition 1.0.61 (“Any of the preceding compositions [i.e.,
Composition 1.0, including effective amounts of arginine] further
comprising triclosan and a Zn2+ ion source, e.g., zinc citrate”), ¶ 26

6 The Examiner finds that the 0.76 wt% sodium monofluorosphate represents
1000 ppm fluoride. Final Act. 3. It is unclear how the Examiner arrives at
that parts-per-million calculation as 0.76 wt% would appear to correspond to
7600 ppm (e.g., applying conversion where 1% = 10,000 ppm). In any
event, the Examiner cites Prencipe ’454’s teaching that fluoride may be
present from about 25 to about 25,000 ppm, including in amounts from
about 750–2000 ppm for a toothpaste, thus encompassing the claimed value
of 1450 ppm. Id. (citing Prencipe ’454 ¶ 28); see also Prencipe ’454 ¶ 16
(sub-composition 1.0.29, reciting “[a]ny of the preceding compositions
wherein the composition comprises about 1450 ppm fluoride ion”).
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(disclosing addition of “metal ions (e.g., zinc salts, for example zinc
citrate[)]”)). Similarly, the Examiner reasons that it would have been
obvious to substitute soluble fluoride salts (e.g., sodium fluoride for sodium
monofluorophosphate) because Prencipe ’454 teaches that such salts are
suitable alternatives. Final Act. 4 (citing Prencipe ’454 ¶ 8).
Continuing, the Examiner finds that Prencipe ’454 teaches oral care
compositions that combine zinc, arginine, and fluoride for purposes of
reducing acid-producing bacteria, remineralizing teeth, and reducing
erosion. Adv. Act. (citing Prencipe ’454 ¶¶ 8, 15 (e.g., teaching methods to
“reduce, repair or inhibit early enamel lesions” and to “reduce erosion of the
teeth”)). According to the Examiner, Formula IV of Prencipe ’454 combines
fluoride, zinc, and arginine like the claimed composition and “would
implicitly deliver nearly 20% more fluoride to the surface of an enamel
relative to oral care compositions without arginine,” as recited in claim 1’s
penultimate “wherein” clause. Final Act. 3. Also, noting the overlapping
components (e.g., arginine, and respective fluoride and zinc ion sources)
listed in Appellant’s Specification and the prior art, the Examiner reasons
that “the property of enhanced fluoride stability [including nearly 20% more
fluoride delivery] would have been present in the prior art . . . insofar as
Prencipe et al. teaches a specific embodiment comprising a source of zinc
ions (zinc lactate), fluoride (sodium monofluorosphosphate), and arginine.”
Ans. 4 (citing Spec. ¶ 5 (identifying arginine and lysine as suitable amino
acids), ¶ 10 (listing zinc lactate and zinc citrate as suitable zinc ion sources;
listing sodium fluoride and sodium monofluorophosphate as suitable
fluoride salts)); see also id. at 6 (“Examiner has provided a teaching of a
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specific embodiment [Formula IV of Prencipe ’454] representing the closest
prior art for purposes of comparison.”).
We generally agree with and adopt the Examiner’s findings of fact
and reasoning in support of the conclusion of obviousness. Prencipe ’454
teaches oral care compositions with overlapping ingredients in overlapping
amounts, for the same or substantially the same use (i.e., reducing erosion of
the teeth) compared to what is claimed. To illustrate, Prencipe ’454’s
Composition 1.0 includes an effective amount of a basic amino acid, i.e.,
“arginine,” an “effective amount of an antibacterial agent,” and “an effective
amount of a fluoride source.” Prencipe ’454 ¶ 16. Composition 1.0.13
teaches “about 1 wt. % to about 10 wt.%” of the amino acid, Composition
1.0.21 teaches “[a]ny of proceeding compositions where the fluoride salt is
sodium fluoride” and Composition 1.0.29 teaches “about 1450 ppm fluoride
ion.” Id. Composition 1.0.54 teaches “[a]ny of the preceding compositions
comprising an antibacterial agent” like “zinc salts, for example, zinc citrate,”
Composition 1.0.61 teaches “[a]ny of the preceding compositions further
comprising triclosan and a Zn2+ ion source, e.g., zinc citrate,” and
Composition 1.0.62 teaches the antibacterial agent comprises “about 0.01 to
about 5 wt%” of the composition. Id. Prencipe ’454’s teachings wholly
encompass the claimed subject matter. In re Peterson, 315 F.3d 1325, 1330
(Fed. Cir. 2003) (explaining that “a prior art reference that discloses a range
encompassing a somewhat narrower claimed range is sufficient to establish a
prima facie case of obviousness” and “shifts the burden to the applicant to
show that his invention would not have been obvious”).
Furthermore, Prencipe ’454’s working example (Formula IV) includes
5 wt% arginine like claimed and merely uses different zinc and fluoride salts
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(zinc lactate and sodium monofluorophosphate). Prencipe ’454 ¶ 103. But,
as the Examiner notes, Prencipe ’454 teaches, and Appellant’s Specification
indicates, that zinc citrate and sodium fluoride (like claimed) are simply
alternatives to zinc lactate and sodium monofluorophosphate. Prencipe ’454
¶¶ 8, 16, 26, 28, 103 (Formula III (sodium fluoride); Formula IV (sodium
monofluorophosphate)); Spec. ¶ 10 (listing alternative zinc salts like zinc
sulfate, zinc lactate, zinc citrate; listing alternative fluoride salts like sodium
fluoride, sodium monofluorophosphate, and potassium fluoride).7 There is
no evidentiary basis here to show that the recited functional property of
claim 1’s composition based on its recited constituents—that it “delivers
nearly 20% more fluoride to the surface of an enamel”—arises only when
arginine, zinc citrate, and sodium fluoride are combined. And, the Examiner
has a sound fact-based basis on this record for believing that claim 1’s
functional property is implicit or inherent in Prencipe ’454’s Formula IV
composition given the overlap in components and clearly contemplated
alternative salts. In re Papesch, 315 F.2d 381, 391 (CCPA 1963) (“From the

7 Disclosures of the “patent itself” can evidence inherency. Alcon Research,
Ltd. v. Apotex Inc., 687 F.3d 1362, 1369 (Fed. Cir. 2012). We further note
that the Specification instructs that its “specific examples . . . are intended
for purposes of illustration only and are not intended to limit the scope of the
invention.” Spec. ¶ 8; see also id. ¶ 9 (preferred embodiments “merely
exemplary in nature and is in no way intended to limit the invention”). This
disclosure would suggest, consistent with the Examiner’s inherency
determination, that whatever functional result the Specification shows for
one example (arginine, zinc citrate, and sodium fluoride) is not limiting and
would be present in combinations with alternative zinc and fluoride salts
(e.g., arginine, zinc lactate, and sodium monofluorophosphate) like
exemplified in the art and listed in the Specification. Prencipe ’454 ¶ 103.
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standpoint of patent law, a compound and all of its properties are
inseparable; they are one and the same thing.”).
Under such circumstances, the Office may require the applicant to
present rebuttal evidence showing that the recited functional property is
missing in the prior art product or composition.
Where . . . the claimed and prior art products are identical or
substantially identical . . . the PTO can require an applicant to
prove that the prior art products do not necessarily or inherently
possess the characteristics of his claimed product. Whether the
rejection is based on ‘inherency’ under 35 U.S.C. § 102, on
‘prima facie obviousness’ under 35 U.S.C. § 103, jointly or
alternatively, the burden of proof is the same, and its fairness is
evidenced by the PTO’s inability to manufacture products or to
obtain and compare prior art products.
In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (citations and footnote
omitted); Southwire Co. v. Cerro Wire LLC, 870 F.3d 1306, 1311 (Fed. Cir.
2017) (explaining that the Patent Office can require an applicant to show
that the prior art does not possess the functional characteristic relied upon by
applicant, whether the rejection is based on inherency or obviousness).
Appellant provided no evidence to show that Prencipe ’454’s Formula IV
lacks the fluoride delivery feature of claim 1. The assay results that
Appellant does cite (Appeal Br. 4) relate to samples that do not contain any
fluoride or arginine,8 which is required by the claim and Prencipe’s cited

8 See Remarks dated Nov. 22, 2019 (representing that “[t]he samples do not
contain sodium fluoride or arginine”); see Final Act. 6 (noting “Applicant
admits the data excludes arginine”); Ans. 4 (“[A]ppellant’s showing is not
persuasive insofar as it does not show different interactions from lactate ion
versus citrate ion in solutions containing zinc, fluoride and arginine.”).
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composition and, thus, are not probative or persuasive on the issue of the
amount of fluoride delivered by Prencipe ’454’s Formula IV.
Appellant argues that zinc lactate and zinc citrate salts are not
substitutes for one another and, citing post-filing data apparently prepared by
Appellant, Appellant contends the use of zinc citrate “surprisingly increases”
zinc uptake compared to zinc lactate. Appeal Br. 4–5. We disagree. The
cited prior art contradicts the notion that zinc lactate and zinc citrate are not
alternatives and substitutable zinc salts. Prencipe ’454 ¶ 28 (expressly
teaching use of “zinc salts, for example, zinc citrate”), ¶ 103 (exemplifying
use of zinc salts, e.g., zinc lactate); see also Prencipe ’492 Abstr., ¶¶ 22, 40
(listing alternative zinc salts (“e.g., zinc chloride, zinc lactate, zinc citrate”
for enhanced ion delivery in a dentifrice or other oral-care composition).
Appellant’s data post-dates the filing of this application. We note that
“[when an] advantage is not disclosed in appellant’s application” appellant is
“not in a favorable position to urge it as a basis for the allowance of claims”
In re Herr, 304 F.2d 906, 909 (CCPA 1962). Allowing post-filing date data
that is unsupported by the Specification to serve as evidence of unexpected
results subverts the quid pro quo inherent in the patent system. The data
was, further, unavailable to the ordinarily skilled person and cannot have
suggested a different reading of the art at the time of the invention.
Secondly, that different zinc salts may deposit on enamel somewhat
more or less zinc (as Appellant’s data) purports to show, does not prove that
those zinc salts are not suitable substitutes in a dentifrice composition as
claimed.9 As explained above, Appellant admits that the samples used to

9 As noted above, not only does the art teach that zinc lactate and zinc citrate
are substitutes, so does Appellant’s Specification. Spec. ¶ 10 (listing a “zinc
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generate Appellant’s data included no fluoride or arginine and, therefore, the
data speaks little to whether and how those salts would behave as
alternatives in a composition like described in the prior art, or as recited in
claim 1.
Third, inasmuch as Appellant offers its data as objective indicia of
nonobviousness (i.e., unexpected results), the evidence is weak at best.
Pfizer, Inc., v. Apotex, Inc., 480 F.3d 1348, 1372 (Fed. Cir. 2007)
(“Although secondary considerations must be taken into account, they do not
necessarily control the obviousness conclusion.”). Objective indicia of
nonobviousness are “only relevant to the obviousness inquiry ‘if there is a
nexus between the claimed invention and the [objective indicia].’” In re
Affinity Labs of Tex., LLC, 856 F.3d 883, 901 (Fed. Cir. 2017) (quoting
Ormco Corp. v. Align Tech., Inc., 463 F.3d 1299, 1312 (Fed. Cir. 2006)).
There is no sufficient nexus between Appellant’s data and the
invention of claim 1—again, there was no arginine or fluoride source in the
samples as required by the claims. The samples also used only a single
concentration (0.5%) of zinc citrate, when a broader range is recited in the
claim, and included zinc oxide (not recited in claim 1). In re Peterson, 315
F.3d at 1330 (affirming determination of obviousness where improved
results were not “commensurate in scope” with the claimed subject matter).
Without a sufficient nexus between the results and the composition claimed,
whether the data shows a difference of degree or kind does not weigh heavy
(if at all). Appeal Br. 5. And, beyond the above deficiencies, Appellant’s
results are not tested against the closest prior art (Prencipe ’454’s Formula

ion source is selected from zinc citrate, zinc sulfate, [and] zinc lactate”
among others).
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IV). Bristol-Myers Squibb Co. v. Teva Pharms. USA, Inc., 752 F.3d 967,
977 (Fed. Cir. 2014) (“To be particularly probative, evidence of unexpected
results must establish that there is a difference between the results obtained
and those of the closest prior art[.]”).10 For the above reasons, Appellant’s
data is entitled to minimal weight and it does not outweigh the Examiner’s
comparatively strong evidentiary showing that claim 1 would have been
obviousness.
Appellant argues that Prencipe ’454 does not contain a working
example that uses each of zinc lactate (or citrate), arginine, and sodium
fluoride. Appeal Br. 5–6. We reject this argument for the plain reason that,
when obviousness is the issue, the prior art is not limited to its preferred
embodiments or working examples. Merck & Co. Inc. v. Biocraft Labs.,
Inc., 874 F.2d 804, 807 (Fed. Cir. 1989). As already explained, Prencipe
’454 teaches or suggests combinations of zinc salts (e.g. zinc lactate or zinc
citrate), arginine, and fluoride salts (e.g., sodium fluoride or sodium
monofluorophosphate) in a dentifrice. Prencipe ’454 ¶¶ 8, 16, 26, 28, 103.
That Prencipe ’454’s cited working example (Formula IV) includes no
sodium fluoride does not mean it is not the closest example to what is
claimed. Appeal Br. 6. As already explained, that example simply uses an
alternative fluoride salt. Id. ¶¶ 8, 103 (identifying sodium fluoride and
sodium monofluorophosphate as alternatives). Nor, as Appellant seems to
interpret, is the Examiner urging the testing of a hypothetical composition
not explicitly described in the prior art for comparative purposes. Appeal

10 Characterization of the results as “surprising” and “unexpected” also
comes solely from counsel. Icon Health & Fitness, Inc. v. Strava, Inc., 849
F.3d 1034, 1043 (Fed. Cir. 2017) (“Attorney argument is not evidence.”).
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Br. 6. To the contrary, the Examiner has confirmed Prencipe ’454’s
Formula IV is regarded as the closest prior art example. Ans. 4–7.
Insofar as Appellant argues that nothing in Prencipe ’454 suggests
using a combination of arginine, zinc citrate, and sodium fluoride to treat
dental erosion, Appellant overlooks Prencipe ’454’s broader teaching that its
compositions are suitable for that purpose (and others). Appeal Br. 6;
Prencipe ’454 ¶ 15 (teaching application of the compositions to “reduce
erosion of the teeth”).11
Appellant contends that the Examiner has not shown why the skilled
artisan would have selected sodium fluoride, or the amounts of each
ingredient. Appeal Br. 6–7. We disagree. As explained, Prencipe ’454
expressly describes overlapping ingredients in overlapping concentrations,
used for their known purposes (e.g., cleaning, antimicrobial, anti-cavity) in a
dentifrice composition like claimed. See, e.g., Prencipe ’454 ¶¶ 8, 15, 16,
103. “The combination of familiar elements according to known methods is
likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007); In re Peterson, 315
F.3d at 1330 (prima facie obviousness established where disclosure overlaps
and encompasses claims). As for the recited functional property (nearly
20% more fluoride delivery), the Examiner has a reasoned factual basis for

11 Moreover, claim 1 is for a composition, and an intended use of a claimed
composition or apparatus is generally not sufficient to distinguish over the
prior art. In re Pearson, 494 F.2d 1399, 1402 (CCPA 1974) (“[T]erms [that]
merely set forth the intended use for, or a property inherent in, an otherwise
old composition . . . do not differentiate the claimed composition from those
known in the prior art.”); Hewlett-Packard Co. v. Bausch & Lomb Inc., 909
F.2d 1464, 1468 (Fed. Cir. 1990) (“[A]pparatus claims cover what a device
is, not what a device does.”).
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considering that property inherent in Prencipe ’454 (i.e., Formula IV) as
discussed above, and Appellant provides insufficient rebuttal evidence to
persuade us otherwise. Hospira, Inc. v. Fresenius Kabi USA, LLC, 946 F.3d
1322, 1331–32 (Fed. Cir. 2020) (“If a property of a composition is in fact
inherent, there is no question of a reasonable expectation of success in
achieving it.”).
Appellant contends the Examiner has not given patentable weight to
the “wherein the composition delivers nearly 20% more fluoride” language
of claim 1. Appeal Br. 7–8. But the Examiner is not disregarding that
language. The Examiner reasons that this language is a functional property
inherent in Prencipe ’454’s compositions as already explained.12 Final Act.
3 (result “implicit” in Formula IV); Ans. 4 (“the property . . . would have
been present in the prior art,” and comparing Specification to specific
embodiment of Prencipe ’454). It is upon Appellant now to produce
persuasive evidence to the contrary, which is missing in the record. In re
Best, 562 F.2d at 1254–55. For similar reasons, the allegedly unexpected
fluoride delivery (20% higher, as described in Appellant’s Specification)
does not outweigh the evidence of obviousness on this record because
Appellant provides no comparison to the fluoride delivered by Prencipe
’454’s Formula IV. Spec. ¶ 45; Ans. 6–7 (explaining that Formula IV
“represents the closest prior art insofar as it comprises all three relevant
components, namely zinc, arginine, and fluoride”); Bristol-Myers, 752 F.3d
at 977 (suggesting need to compare with closest prior art).

12 Appellant recognizes this in Reply, asserting “the Examiner appears to
argue that technical benefits, such as increased fluoride deliver[y], would
have been inherently present in the cited art.” Reply 5.
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For the reasons above, we determine that the preponderance of the
evidence supports the Examiner’s conclusion that claim 1 would have been
obvious over Prencipe ’454. Appellant does not argue claims 5, 7, 8, and
21–23 separately and those claims, thus, fall with claim 1.
II. Obviousness over Prencipe ’454 and Prencipe ’492
The Examiner concludes that claims 16 and 17 would have been
obvious over the combination of Prencipe ’454 and Prencipe ’492. Final
Act. 5–6. According to the Examiner, Prencipe ’454 does not teach
combining zinc citrate and zinc oxide as recited in claims 16 and 17. Id. So,
the Examiner turns to Prencipe ’492, which the Examiner finds teaches and
exemplifies combining zinc citrate and zinc oxide in a dentifrice for
enhanced cosmetic or therapeutic effect. Id. (citing Prencipe ’492 ¶ 40,
p. 16 (Table 1 (Composition C, which combines 2.0% zinc citrate and 1%
zinc oxide)); see also id. ¶ 83 (describing combination). The Examiner
reasons that it would have been obvious to combine such teachings with
Prencipe ’454, and to modify the composition to include both zinc citrate
and zinc oxide, to provide a benefit as suggested in Prencipe ’492. Id. at 5.
We agree with and adopt the Examiner’s findings and reasoning.
Appellant argues that the cited example of Prencipe ’492 does not
teach the combination of zinc oxide and citrate with arginine. Final Act. 8.
Appellant argues that neither Prencipe reference suggests the “impressive
results” with fluoride uptake in Appellant’s data. Id. at 8–9. And Appellant
argues that another portion of Prencipe ’492 (paragraph 40) excludes
mention of zinc oxide, so it is unclear why a skilled artisan would have
selected that salt in combination expecting any benefit. Id. at 8–9; see also
Reply 9–10.
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None of those arguments from Appellant is persuasive. Prencipe ’454
discloses the advantageous use of arginine in combination with zinc and
fluoride salts, so the absence of arginine in Prencipe ’492’s dentifrice
compositions demonstrates no flaw in the rejection. In re Merck & Co., 800
F.2d 1091, 1097 (Fed. Cir. 1986) (“Non-obviousness cannot be established
by attacking references individually where the rejection is based upon the
teachings of a combination of references.”). The allegedly “impressive”
fluoride uptake data lacks a nexus to the claims as discussed above (e.g.,
comparison samples included no fluoride or arginine) and, thus, the data is
not persuasive evidence of nonobviousness. The listing of zinc salts in
paragraph 40 of Prencipe is merely illustrative and non-limiting as
evidenced by the introducing with the “e.g.” signal. Prencipe ’492 ¶ 40
(“The metal ions and their salts (e.g., zinc chloride, zinc lactate, zinc citrate
. . . ) may in particular provide one or more of these cosmetic and/or
therapeutic effects in the dentifrice composition.”). In any event, Prencipe
’492 exemplifies the combined use of zinc oxide and zinc citrate for
beneficial effect. Prencipe ’492, p. 16 Table 1; see also id. ¶¶ 83–85
(discussing metal ion stability for the example compositions); see also id.
¶ 22 (disclosing “at least one of zinc citrate, zinc lactate, zinc gluconate or
zinc oxide. . . . Any of these source [of metal ions] may be combined in any
combination thereof”), ¶ 31 (listing zinc oxide and zinc citrate, among other
zinc salts). Appellant’s argument about paragraph 40 fails to account for
Prencipe ’492’s broader teachings.
Accordingly, we determine that the preponderance of the evidence
supports the Examiner’s conclusion that claims 16 and 17 would have been
obvious over Prencipe ’454 and Prencipe ’492.
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CONCLUSION
The rejections of claims 1, 5, 7, 8, 10, 16, 17, and 21–23 are affirmed.

DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 5, 7, 8,
10, 21–23
103 Prencipe ’454 1, 5, 7, 8,
10, 21–23

16, 17 103 Prencipe ’454,
Prencipe ’492
16, 17
Overall
Outcome
1, 5, 7, 8,
10, 16, 17,
21–23

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