COLGATE-PALMOLIVE COMPANY

Patent Trials and Appeals Board

Aug 19, 2021

2020006288 (P.T.A.B. Aug. 19, 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.
15/756,146 02/28/2018 Lin FEI 11225-00-US-01-OC 7465
23909 7590 08/19/2021
COLGATE-PALMOLIVE COMPANY
909 RIVER ROAD
PISCATAWAY, NJ 08855
EXAMINER
YU, HONG
ART UNIT PAPER NUMBER
1612
NOTIFICATION DATE DELIVERY MODE
08/19/2021 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 LIN FEI, PRAKASARAO MANDADI, and
SUMAN CHOPRA
__________

Appeal 2020-006288
Application 15/756,146
Technology Center 1600
__________

Before DONALD E. ADAMS, JEFFREY N. FREDMAN, and
ULRIKE W. JENKS, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal1 under 35 U.S.C. § 134 involving claims to an
anhydrous dentifrice or toothpaste. The Examiner rejected the claims as
obvious. We have jurisdiction under 35 U.S.C. § 6(b). We reverse.

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 (see Appeal Br. 2). We have considered the
Specification of Dec. 13, 2017 (“Spec.”); Final Action of Nov. 21, 2019
(“Final Act.”); Appeal Brief of Apr. 21, 2020 (“Appeal Br.”); Examiner’s
Answer of July 6, 2020 (“Ans.”); and Reply Brief of Sept. 8, 2020 (“Reply
Br.”).
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Statement of the Case
Background
“Conventional oral care products . . . including whitening agents are
often utilized to whiten teeth” (Spec. ¶ 1). “[P]eroxides (e.g., hydrogen
peroxide) are often utilized to oxidize chromophores bound to surfaces of
teeth to thereby whiten the teeth. The peroxides, however, are often
unstable” (id.). “While non-aqueous oral care compositions, such as non-
aqueous toothpastes, have proven to be effective for stabilizing the
peroxides, gelling agents and/or thickeners that are compatible with
propylene glycol are limited” (id.).
The Claims
Claims 1–15 are on appeal. Independent claim 1 is representative and
reads as follows:
1. An anhydrous dentifrice or toothpaste, comprising:
an orally acceptable vehicle, the orally acceptable vehicle
comprising propylene glycol;
a thickening system, the thickening system comprising a
polymeric thickener, wherein the polymeric thickener is a copolymer
of 2-acrylamidomethylpropanesulphonic acid or a salt thereof; and
a peroxide whitening agent.

The Issues
A. The Examiner rejected claims 1–14 under 35 U.S.C. § 103(a) as
obvious over Golding2 and Joiner3 (Final Act. 3–6).
B. The Examiner rejected claim 15 under 35 U.S.C. § 103(a) as obvious

2 Golding et al., WO 2012/123241 A2, published Sept. 20, 2012.
3 Andrew Joiner and Wen Luo, Tooth colour and whiteness: A review, 67 J. Dentistry
S3–S10 (2017).
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over Golding, Joiner, and Prencipe4 (Final Act. 7–8).
Because the same issue is relevant to each of these rejections, we will
consider these rejections together.
The issue with respect to these rejections is: Does a preponderance of
the evidence of record support the Examiner’s conclusion that the
combination of prior art renders the claims obvious?
Findings of Fact
1. Golding teaches:
an oral care composition suitable for delivering a temporary
whitening effect to the surface of teeth, the composition
comprising: a continuous phase comprising water or polyhydric
alcohol or a mixture thereof; a particulate tooth surface
whitening agent which is dispersed in the continuous phase, and
a deposition aid for the particulate tooth surface whitening
agent; characterised in that the deposition aid is a poly-
(sulphonic acid) polymer . . . and in which the particulate tooth
surface whitening agent is a phthalocyanine blue pigment.
(Golding 2:19–3:9).
2. Golding teaches “[t]ypical polyhydric alcohols include
humectants such as . . . propylene glycol” (Golding 13:3–5).
3. Golding teaches “[s]uitable poly-(sulphonic acid) polymers of
the above class may be homopolymers or copolymers of 2-acrylamido-2-
methylpropane sulphonic acid” (Golding 9:16–17).
4. Joiner teaches “[t]ooth whitening products generally help to
improve the overall whiteness of teeth, either by changing their intrinsic
colour or by removing and controlling the formation of extrinsic stains. The
former products typically use hydrogen peroxide or carbamide peroxide,

4 Prencipe et al., US 2008/0213730 A1, published Sept. 4, 2008.
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formulated into gels and applied to the teeth” (Joiner S3, col. 2).
5. Prencipe teaches: “Peroxide releasing compounds useful in the
practice of the present invention include peroxide containing compounds
such as urea peroxide, sodium percarbonate, sodium perborate and PVP-
H2O2 complexes” (Prencipe ¶ 22).
Principles of Law
A prima facie case for obviousness “requires a suggestion of all
limitations in a claim,” CFMT, Inc. v. Yieldup Int’l Corp., 349 F.3d 1333,
1342 (Fed. Cir. 2003) and “a reason that would have prompted a person of
ordinary skill in the relevant field to combine the elements in the way the
claimed new invention does.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
418 (2007).
Analysis
The Examiner finds,
Both peroxide and blue pigment being used as tooth whitening
agent was well known to a person of ordinary skill in the art at
the time of the invention. The motivation for replacing the
blue pigment in the composition taught by Golding et al. with
H2O2 flows from both peroxide and blue pigment having being
used in the prior art as useful for the same purpose and having
been used as a tooth whitening agent in the prior art.
(Final Act. 6).
Appellant contends, “Golding teaches not merely tooth whitening, but
specifically teaches the whitening of teeth without the use of harsh
chemicals or components that effect permanent whitening” (Appeal Br. 7).
Appellant contends:
There is no chemical transformation in the Golding system as
there is with peroxides, and the mechanisms of action of the
two compounds are completely different. Thus, there is no
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basis for the Examiner’s assertion of their interchangeability,
and the Examiner has not provided any evidence or reasoning
why one of skill in the art would be motivated to ignore the
teaching of Golding and use [the] harsh and permanent Joiner
peroxide.
Id. Appellant also contends “[s]ubstitution of the blue pigment for peroxide
as suggested by the Examiner would obviate the need for the copolymer,
since peroxide whiteners are not dependent upon being maintained on the
teeth throughout the day to achieve their effect” (id. at 7).
We find that Appellant has the better position. The Examiner reasons
that peroxide and pigment are equivalent but we agree with Appellant that
these whitening agents operate differently and are not equivalent. In
particular, the pigment in Golding is deposited onto teeth to temporarily alter
tooth color directly (FF 1). In contrast, peroxides as used in Joiner and
Prencipe, chemically treat teeth to remove stain coloring to result in whiter
teeth (FF 4).
Thus, these components are not simple substitutes but rather operate
in different ways. Golding’s pigment needs to remain on the teeth the entire
time that a whitening effect is desired, whether that is for a single
photograph, the duration of an event such as a wedding, or for several days.
The peroxide of Joiner, meanwhile, may be removed after it chemically
reacts with stains in teeth resulting in whiter teeth. The Examiner provides
no persuasive reason why the other components of claim 1 or Golding,
added to result in retention of pigment on teeth, would provide any benefit
or improvement on the chemical tooth whitening effect of the peroxide
compounds used by Joiner and Prencipe. In the absence of such a reason,
we reverse these obviousness rejections.
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CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–14 103 Golding, Joiner 1–14
15 103 Golding, Joiner,
Prencipe
15
Overall
Outcome
1–15

REVERSED