Richard Scott. Robinson et al.

Patent Trials and Appeals Board

Mar 31, 2020

14649557 - (D) (P.T.A.B. Mar. 31, 2020)

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.
14/649,557 06/04/2015 Richard Scott ROBINSON 9849-00-US-01-OC 4845
23909 7590 03/31/2020
COLGATE-PALMOLIVE COMPANY
909 RIVER ROAD
PISCATAWAY, NJ 08855
EXAMINER
BROWE, DAVID
ART UNIT PAPER NUMBER
1617
NOTIFICATION DATE DELIVERY MODE
03/31/2020 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 RICHARD SCOTT ROBINSON and WILBENS JOSIAS
Appeal 2019-0013881
Application 14/649,557
Technology Center 1600
Before ERIC B. GRIMES, RYAN H. FLAX, and
CYNTHIA M. HARDMAN, Administrative Patent Judges.
HARDMAN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims related to
an oral care composition. The Examiner rejected the claims as obvious
under 35 U.S.C. § 103(a). See Final Act. 3. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Colgate-Palmolive
Company. Appeal Br. 2.
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CLAIMED SUBJECT MATTER
Claims 1–4, 6, 7, 13–22, 24, 25, 28, 31, 32, 35, 38, 55, and 56 are on
appeal. Final Act. 2. The claims are directed to oral care compositions.
Claim 1, reproduced below with spacing added for clarity, illustrates the
claimed subject matter:
1. An oral care composition comprising
an orally acceptable vehicle, a basic amino acid in free or
salt form, calcium carbonate, a source of zinc ions, and at
least one surfactant selected from a nonionic block
copolymer surfactant and a betaine zwitterionic surfactant or
a mixture thereof
wherein the oral care composition does not comprise any
anionic surfactant,
wherein the basic amino acid in free or salt form comprises
arginine,
wherein the zinc ion source comprises zinc citrate, zinc
oxide, or a mixture thereof,
wherein the nonionic block copolymer surfactant has a
polyoxypropylene molecular mass of from 3000 to
5000g/mol and a polyoxyethylene content of from 60 to 80
mol%, and
wherein the betaine zwitterionic surfactant comprises a C8 –
C16 amidopropyl betaine.
Appeal Br. 14 (Claims Appendix).
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REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Winston US 5,330,748 July 19, 1994
Prencipe WO 2009/099452 A1 Aug. 13, 2009
Joziak US 2009/0238769 A1 Sep. 24, 2009
REJECTION
Claims 1–4, 6, 7, 13–22, 24, 25, 28, 31, 32, 35, 38, 55, and 56 stand
rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over
Prencipe, Joziak, and Winston. Final Act. 3.
OPINION
The Examiner found that Prencipe discloses a dentifrice composition
for sensitive teeth comprising arginine bicarbonate (a basic amino acid),
calcium carbonate, a zinc ion source, and Pluronic (i.e., Poloxamer) nonionic
block copolymer surfactant, wherein the composition does not necessarily
comprise an anionic surfactant. Final Act. 4. The Examiner found that
Prencipe neither explicitly excludes anionic surfactants, nor discloses that
the zinc ion source is specifically zinc oxide. Id. at 5. The Examiner found
that Joziak and Winston teach this subject matter. Id.
As to Joziak, the Examiner found that it discloses a dentifrice
composition for sensitive teeth comprising a basic amino acid, carbonate salt
abrasive particles, a zinc ion source, and Poloxamer 407 (i.e., a nonionic
block copolymer surfactant), wherein the composition does not comprise
any anionic surfactant. Final Act. 4–5. The Examiner further found that
Joziak discloses that anionic surfactants can irritate the oral cavity, and that a
foaming agent comprising a nonionic surfactant, free of any anionic
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surfactant, produces a foam quality that is just as good as, if not superior to,
the foam produced with an anionic surfactant, and does not irritate the oral
cavity. Final Act. 6.
As to Winston, the Examiner found that it discloses a dentifrice
composition comprising a calcium carbonate abrasive, zinc oxide (i.e., zinc
ion source), and Pluronic nonionic block copolymer surfactant, wherein the
composition does not necessarily comprise an anionic surfactant. Final
Act. 5. The Examiner further found that Winston discloses that zinc oxide,
unlike the more soluble zinc salts, exhibits enhanced plaque, tartar, and
gingivitis fighting properties, without having a lingering unpleasant metallic
and astringent taste. Final Act. 6.
The Examiner found that one of ordinary skill in the art would have
been motivated to employ e.g. Poloxamer 407 as the surfactant instead of an
anionic surfactant, and zinc oxide as the zinc ion source in Prencipe’s
dentifrice composition for sensitive teeth, with the reasonable expectation
that the resulting dentifrice composition would successfully fight plaque,
tartar, and gingivitis without irritating the oral cavity and without leaving
any unpleasant metallic and astringent taste. Final Act. 6.
We agree with and adopt the Examiner’s findings of fact, and
determine that the Examiner has presented a prima facie case of obviousness
with respect to the appealed claims. We address Appellant’s arguments
below.
Appellant argues that “the framework for analysis as to the
obviousness of chemical formulations and their uses involves a ‘lead-
modification’ analysis similar to that involving novel compounds.” Appeal
Br. 5 (citing Unigene Labs., Inc. et al. v. Apotex, Inc., et al., 655 F.3d 1352,
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1361–1362 (Fed. Cir. 2011)). Appellant then characterizes the Examiner’s
rejection as “(i) choos[ing] Prencipe as a lead reference, and then (ii)
selectively chang[ing] the formulations in Prencipe to be more like a
completely unrelated reference addressing a problem not identified at all in
Prencipe,” which Appellant contends is not an obvious path, “without
benefit of the map provided by the instant specification.” Id. at 6.
We are not persuaded by Appellant’s arguments. As an initial matter,
the court in Unigene merely stated that “[a] prima facie case of obviousness
in the chemical arts is often based on a . . . ‘lead compound,”’ and that in the
context of a composition or formulation patent, the “lead compound” might
more appropriately be referred to as a “reference composition.” Unigene,
655 F.3d at 1361–62. There is no requirement, however, that the
obviousness analysis for a composition claim must always be based on a
motivation to modify a particular reference composition. Indeed, Unigene
cannot run counter to the flexible analysis the Supreme Court set out in KSR,
which recognizes the obviousness of pursuing known options within the
technical grasp of the skilled artisan, e.g., known equivalents. KSR Int'l Co.
v. Teleflex Inc., 550 U.S. 398, 421 (2007).
Additionally, Appellant mischaracterizes the Examiner’s rejection.
The Examiner’s prima facie case was appropriately grounded in the
teachings of the prior art. As summarized above, the Examiner found that
Prencipe discloses a composition similar to that claimed, except it does not
specifically exclude anionic surfactants, or specifically teach zinc oxide.
Final Act. 5. However, Joziak and Winston respectively teach this subject
matter, and respectively provide motivations for avoiding anionic surfactants
and using zinc oxide. Final Act. 6. Where, as here, a patent claim “‘simply
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arranges old elements with each performing the same function it had been
known to perform’ and yields no more than one would expect from such an
arrangement, the combination is obvious.” KSR Int'l Co., 550 U.S. at 417
(quoting Sakraida v. Ag Pro, Inc., 425 U.S. 273, 282 (1976)).
Appellant additionally argues that neither Prencipe nor Joziak disclose
or teach a composition comprising all limitations of the appealed claims.
Appeal Br. 5, 8. We are not persuaded by these arguments, because the test
for obviousness is not whether the claimed invention is expressly identified
in any one 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 additionally argues that no exemplary formulation in
Prencipe contains a zinc salt, and that all exemplary formulations in
Prencipe contain an anionic surfactant. Appeal Br. 5–6. Appellant similarly
argues that none of the exemplary formulations in Joziak contain a basic
amino acid and/or a source of zinc ions, and that all of the examples in
Winston contain anionic surfactants. Id. at 8. We are also not persuaded by
these arguments, because “a reference is not limited to the disclosure of
specific working examples.” In re Mills, 470 F.2d 649, 651 (CCPA 1972).
Appellant argues that “the relevant question to be answered here is not
whether a nonionic or zwitterionic surfactant can be added into Prencipe’s
dentifrice, but is whether there is any teaching or suggestion in Prencipe or
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other cited references that would motivate one of skill in the art to add a
surfactant system free of anionic surfactant as recited in claim 1 into a
dentifrice containing a basic amino acid, a source of zinc ions, and calcium
carbonate.” Appeal Br. 7. We are not persuaded by this argument, because
the Examiner has answered the question formulated by Appellant, e.g., by
finding that Prencipe teaches dentifrice compositions containing a basic
amino acid, a source of zinc ions, calcium carbonate, and “anionic, cationic,
nonionic or zwitterionic surfactants” (see, e.g., Prencipe ¶¶ 11, 19
(compositions 1.0.56 and 1.0.63), 60), and that Joziak provides a motivation
to avoid anionic surfactants and opt for nonionic and zwitterionic surfactants
in similar compositions (see, e.g., Joziak ¶ 4).
Appellant argues that Prencipe teaches away from removing anionic
surfactant, because it teaches that “the presence of a basic amino acid is also
surprisingly found to reduce bacterial adhesion to the tooth surface,
particularly when the basic amino acid is provided in combination with
an anionic surfactant.” Appeal Br. 9 (citing Prencipe ¶ 17). We are not
persuaded that Prencipe teaches away. “A reference does not teach away . . .
if it merely expresses a general preference for an alternative invention but
does not criticize, discredit, or otherwise discourage investigation into the
invention claimed.” Galderma Labs., L.P. v. Tolmar, Inc., 737 F.3d 731,
738 (Fed. Cir. 2013) (citation omitted). Here, although Prencipe discloses a
benefit of anionic surfactants, it neither criticizes nor discredits the use of
nonionic or zwitterionic surfactants. And, as discussed previously, Joziak
discloses that anionic surfactants can irritate the oral cavity, but a foaming
agent comprising nonionic and zwitterionic surfactants, free of anionic
surfactant, foams at least as well as an anionic surfactant, without irritating
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the oral cavity. See Joziak ¶¶ 1, 4. Thus, Joziak provides a reason for a
skilled artisan to avoid anionic surfactants despite the benefit taught by
Prencipe. See Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8
(Fed. Cir. 2000) (“The fact that the motivating benefit comes at the expense
of another benefit . . . should not nullify its use as a basis to modify the
disclosure of one reference with the teachings of another. Instead, the
benefits, both lost and gained, should be weighed against one another.”).
Appellant next asserts that it has demonstrated unexpected results, and
that unexpected results “should be sufficient to rebut a prima facie case of
obviousness.” Reply Br. 4, 6–7; Appeal Br. 10–13. Specifically, Appellant
asserts that data in the Specification demonstrate that “the foam reduction
effect of including both a basic amino acid and a zinc ion source in calcium
carbonate-containing oral care compositions is mitigated by using a
poloxamer nonionic surfactant and/or a betaine zwitterionic surfactant.”
Reply Br. 5; see also Spec. 17 (Table 2) (reporting Foam Volume in various
formulations). Appellant also argues that data in the Specification
demonstrate that compositions comprising arginine, zinc ions, calcium
carbonate, and the surfactant system used in the present invention increase
zinc ion uptake as compared to compositions comprising an anionic
surfactant. Appeal Br. 11 (citing Spec. 24 (Table 7)).
We are not persuaded by Appellant’s arguments. As an initial matter,
even assuming arguendo Appellant has demonstrated unexpected results,
contrary to Appellant’s suggestions, any demonstration of unexpected results
is not necessarily sufficient to overcome a strong prima facie case of
obviousness. “Although secondary considerations must be taken into
account, they do not necessarily control the obviousness conclusion.”
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Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1372 (Fed. Cir. 2007); see also
id. (“Alternatively, we hold that even if Pfizer showed that amlodipine
besylate exhibits unexpectedly superior results, this secondary consideration
does not overcome the strong showing of obviousness in this case.”);
Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir.
2007) (finding no error in district court’s conclusion that despite substantial
evidence of commercial success, praise, and long-felt need, such evidence
was inadequate to overcome the strong prima facie obviousness showing).
“[T]he burden of showing unexpected results rests on [the party] who
asserts them.” In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). Here, we
agree with the Examiner that Appellant has not demonstrated that the foam
volume results reported in the Specification are unexpected. Ans. 11–12.
Appellant suggests that the results are unexpected because the beneficial
effect of a poloxamer nonionic surfactant and/or a betaine zwitterionic
surfactant in a composition containing calcium carbonate, a basic amino
acid, and a zinc ion source is not taught or suggested by any of the cited
references. Appeal Br. 10. We are not persuaded by this argument.
Joziak expressly teaches that “a foaming agent comprising nonionic
and zwitterionic surfactants may replace foaming agents containing anionic
surfactants,” and that the foam from the nonionic and zwitterionic
surfactants “is equivalent to, or may even be superior to, similar
compositions containing one or more anionic surfactants.” Joziak ¶ 4.
While Joziak does not expressly disclose foam results for a composition
meeting all limitations of the claim, we agree with the Examiner that
one of ordinary skill in the art would still expect the foam from
the ionic [sic, nonionic] and zwitterionic surfactants to be
equivalent to or superior to the foam from the anionic surfactant
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in such compositions, in view of the broad teaching in
paragraph 0004. If the expectation is at least equivalent to or
superior to, a finding of superior to is not necessarily such a
dramatic surprise sufficient to overcome the compelling case of
prima facie obviousness.
Final Act. 13. We also agree with the Examiner that even assuming,
arguendo, at least some aspect of surprise in the results set forth in the
Specification,
in weighing the evidence of prima facie obviousness against the
evidence of unexpected results, the scales would appear to tip in
favor of the case for prima facie obviousness. Indeed, one of
ordinary skill in the art, in view of the teachings of Joziak,
would be strongly compelled to employ e.g. a nonionic
surfactant, or the combination of a nonionic surfactant and a
zwitterionic surfactant, instead of an anionic surfactant, in the
Prencipe dentifrice composition for sensitive teeth to eliminate
the oral irritation caused by the use of anionic surfactants.
Final Act. 12–13; see also Pfizer, Inc., 480 F.3d at 1372.
Appellant additionally asserts that “Table 7 of the present
specification further shows that when used in compositions comprising
arginine, zinc ions, and calcium carbonate, the surfactant system used in the
present invention increases zinc ion uptake as compared to an anionic
surfactant.” Appeal Br. 11. We are not persuaded by Appellant’s argument.
First, we agree with the Examiner that “the data pertains only to zinc oxide,
but not to zinc citrate, which may or may not exhibit the same increase in
uptake in the presence of the nonionic surfactant compared to the anionic
surfactant.” Final Act. 13. Appellant has not provided a basis to support the
conclusion that zinc citrate, which is also recited in claim 1, would also
demonstrate the same behavior. See In re Huai-Hung Kao, 639 F.3d 1057,
1068 (Fed. Cir. 2011) (applicant must provide an adequate basis to support a
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conclusion that other embodiments falling within the claim would behave in
the same manner).
Second, unexpected results “must be shown to be unexpected
compared with the closest prior art.” In re Baxter Travenol Labs., 952 F.2d
388, 392 (Fed. Cir. 1991). The composition designated as Comparative
Example 7 lacks arginine or another basic amino acid (see Spec. 23),
whereas the Examiner relied on compositions comprising arginine. See, e.g.,
Final Act. 4–5 (citing Prencipe at, e.g., ¶ 11, Example 3, and Joziak at, e.g.,
¶¶ 11, 28). Accordingly, the comparison with Comparative Example 7 is not
persuasive of unexpected results.
To the extent inventive Example 5 shows more zinc uptake than
Comparative Example 6 (a formulation which comprises, among other
things, calcium carbonate, arginine bicarbonate, zinc oxide, and an anionic
surfactant (sodium lauryl sulfate), see Spec. 23), we determine that the
difference is merely a difference in degree, not kind. Galderma Labs., L.P.,
737 F.3d at 739 (“Unexpected results that are probative of nonobviousness
are those that are ‘different in kind and not merely in degree from the results
of the prior art.’”) (quoting Iron Grip Barbell Co. v. USA Sports, Inc., 392
F.3d 1317, 1322 (Fed. Cir. 2004)). When differences based upon degree are
asserted, the evidence must show that the claims and prior art “differed in
such an appreciable degree that the difference was really unexpected.” In re
Merck & Co., 800 F.2d 1091, 1099 (Fed. Cir. 1986). Here, the Specification
reports a zinc uptake of 304 Mµg/disk for Example 5, and a zinc uptake of
235 Mµg/disk for Comparative Example 6. Spec. 24. On this record,
Appellant has established neither that this difference in zinc uptake
represents a difference in kind rather than in degree, nor that the results
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differed to such an appreciable degree that the difference was really
unexpected.
CONCLUSION
We affirm the rejection of claims 1–4, 6, 7, 13–22, 24, 25, 28, 31, 32,
35, 38, 55, and 56 under 35 U.S.C. § 103(a) as being unpatentable over
Prencipe, Joziak, and Winston.
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–4, 6, 7,
13–22, 24,
25, 28, 31,
32, 35, 38,
55, 56
103(a) Prencipe, Joziak,
Winston
1–4, 6, 7,
13–22, 24,
25, 28, 31,
32, 35, 38,
55, 56

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