Colgate-Palmolive Company

Patent Trials and Appeals Board

Aug 4, 2020

2019006761 (P.T.A.B. Aug. 4, 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.
15/533,710 06/07/2017 Dandan CHEN 10451-00-US-01-OC 1062
23909 7590 08/04/2020
COLGATE-PALMOLIVE COMPANY
909 RIVER ROAD
PISCATAWAY, NJ 08855
EXAMINER
MILLIGAN, ADAM C
ART UNIT PAPER NUMBER
1612
NOTIFICATION DATE DELIVERY MODE
08/04/2020 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 DANDAN CHEN, HARSH MAHENDRA TRIVEDI,
PETER R. HILLIARD JR., and JAMES MASTERS 1
____________

Appeal 2019-006761
Application 15/533,710
Technology Center 1600
____________

Before JEFFREY N. FREDMAN, DEBORAH KATZ, and JOHN G. NEW,
Administrative Patent Judges.

NEW, Administrative Patent Judge.

DECISION ON APPEAL

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies Colgate-Palmolive Company as the real
party-in-interest. App. Br. 3.

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SUMMARY
Appellant files this appeal under 35 U.S.C. § 134(a) from the
Examiner’s Final Rejection of claims 1–9, 20, and 21. Specifically, claims
1–4 and 6–9 stand rejected as unpatentable under 35 U.S.C. § 102(a)(1) as
being anticipated by Lynch et al. (EP 0 324 719 A1, July 19, 2007)
(“Lynch”).
Claims 1–9, 20, and 21 stand rejected as unpatentable under 35 U.S.C.
§ 103 as being obvious over Stookey (WO 2007/044819 A1, April 19, 2007)
(“Stookey”).
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

NATURE OF THE CLAIMED INVENTION
Appellant’s invention is directed to an oral care composition
comprising taurine or a salt thereof. Abstr.

REPRESENTATIVE CLAIM
Claim 1 is representative of the claims on appeal and recites:
1. An oral care composition comprising taurine or a salt
thereof in an amount of 0.001 weight % to 0.008 weight % by
total weight of the composition, and an orally acceptable carrier.

App. Br. 13.

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ISSUES AND ANALYSIS
We agree with, and expressly adopt, the Examiner’s findings,
reasoning, and conclusion that the claims are anticipated or obvious. We
address below the arguments raised by Appellant.

A. Rejection under 35 U.S.C. § 102(a)(1)
Issue 1
Appellant argues that the Examiner erred in determining that the
broadest reasonable interpretation of “taurine” includes taurine esters. App.
Br. 5.

Analysis
The Examiner finds that Lynch discloses an aqueous oral care
composition for inhibiting dental plaque formation that contains 0.0025–
0.001 M taurine salt. Ans. 3. Specifically, the Examiner finds that Lynch
discloses a composition containing 3.0 x 10-4 M sodium N-methyl-N-
cocyltaurine, “which converts to about 0.004 weight %.” Id. at 5–6. The
Examiner finds that Appellant’s Specification explains that “taurine may be
utilized in the form of a salt or an ester.” Id. at 4. Accordingly, the
Examiner determines that the broadest reasonable interpretation of “taurine”
includes taurine esters, such as those disclosed by Lynch. Id.
Appellant argues that the Specification “does not give any special
definition of [the] terms ‘taurine’ and a ‘salt of taurine’ recited in claim 1.”
Reply Br. 2. Rather, Appellant argues that “the specification explicitly
defines that taurine is 2-aminoethanesulfonic acid,” which “is consistent
with the ordinary and customary meaning of taurine.” Id. at 2. Appellant
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further argues that a person of ordinary skill in the art would understand that
Lynch’s taurine esters are different compounds with different properties as
compared to the claimed taurine and taurine salts. See id. at 3.
We are not persuaded by Appellant’s arguments. In construing a
claim term, we first look to the disclosures of the Specification for a
definition of the term. Appellant’s Specification discloses that: “it is to be
understood that derivatives of taurine may also be employed in the practice
of the invention. For example, taurine may be utilized in the form of a salt
or an ester.” Spec. ¶ 30. We consequently interpret the claim term “taurine”
to mean “taurine and its derivatives, including its salts and esters.”
We acknowledge that Appellant’s Specification also discloses that
“[i]n one arrangement, provided herein is an oral care composition
comprising taurine (2-aminoethanesulfonic acid).” Spec. ¶ 29 (emphasis
added). The Specification also refers to several “preferred embodiments” of
the composition containing taurine in the free (acid) form, including a
preferred embodiment “substantially free of taurine salts or any other taurine
derivatives such as esters.” Id. ¶ 30. However, we find that these exemplary
or preferred embodiments do not restrict or constrain the broader definition
expressly disclosed by the Specification that derivatives of taurine, including
salts or esters of taurine, may be employed in the practice of the invention.
Id.
With respect to how a person of ordinary skill in the art would have
interpreted “taurine,” Appellant does not provide evidence to support their
arguments that contradict the Specification’s definition. See App. Br. 5.
“Attorney’s argument in a brief cannot take the place of evidence.” In re
Pearson, 494 F.2d 1399, 1405 (C.C.P.A. 1974). Consequently, we agree
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with the Examiner that the broadest reasonable interpretation of “taurine”
includes taurine esters as disclosed by Lynch.

Issue 2
Appellant argues that the Examiner erred in finding the prior art
discloses a composition containing 0.001 to 0.008 weight% taurine or a salt
thereof. App. Br. 6.

Analysis
Appellant argues that Lynch discloses compositions containing
0.001 M N-methyl-N-palmitoyltaurine, N-methyl-N-oleolytaurine, or N-
methyl-N-cocoyltaurine sodium salts. App. Br. 6. Appellant argues that the
concentration corresponds to 0.038 weight% and thus falls outside the
claimed range. Id. Appellant argues that “Lynch does not disclose any oral
care composition comprising taurine or a salt thereof in an amount of 0.001
weight% to 0.008 weight % by total weight of the composition.” Id.
We are not persuaded by Appellant’s argument. Lynch discloses
aqueous-based oral compositions containing substituted-taurine esters at
concentrations between about 0.0001M to 0.1M or from about 0.002% to
about 2.0% by weight. Lynch p. 2, ll. 61–63; p. 4, ll. 19–21. Lynch’s in
vitro adherence assay discloses an aqueous composition containing 0.0003
M taurine salt. Id. p. 6, ll. 31–34. The Examiner calculates the
concentration as 0.004 weight%. Ans. 5–6. Lynch’s example therefore
discloses a composition containing a taurine ester salt in the claimed
amount, further including water, which is an orally acceptable carrier. See
Spec. ¶ 35. Accordingly, we agree with the Examiner that Lynch anticipates
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claim 1. See Atlas Powder Co. v. Ireco Inc., 190 F.3d at 1342, 1346
(Fed.Cir.1999) (“[W]hen a patent claims a chemical composition in terms of
ranges of elements, any single prior art reference that falls within each of the
ranges anticipates the claim.”)
Appellant further argues that dependent claim 2 recites a narrower
range of taurine or salt thereof, from 0.003 weight% to 0.006 weight%.
App. Br. 11. However, this range encompasses Lynch’s composition
containing 0.004 weight% taurine ester, as calculated by the Examiner.
Accordingly, we agree with the Examiner that Lynch anticipates claim 2.
We consequently affirm the Examiner’s rejection of claims 1 and 2 as
anticipated by the prior art. Appellant does not separately argue claims 3, 4,
and 6–9 with respect to Lynch. See App. Br. 11. For the reasons set forth
supra, we affirm the Examiner’s rejection of claims 3, 4, and 6–9 as
anticipated.

B. Rejection under 35 U.S.C. § 103
Issue 1
Appellant argues the Examiner erred in modifying Stookey because
Stookey is non-analogous art. App. Br. 7.

Analysis
The Examiner finds Stookey teaches an oral care composition
containing 0.001 to 5% taurine and an orally acceptable carrier. Ans. 3. The
Examiner finds Stookey further teaches compositions “in the form of [a]
wafer (i.e., lozenge)” that may contain “stabilizers, emulsifiers,
preservatives, etc.” Id. The Examiner finds “[t]he recited term ‘lozenges’ is
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interpreted under the broadest reasonable interpretation to include wafers
because both are terms for compositions intended to be dissolved in the oral
cavity. Stookey also teaches the composition may take the form [of]
traditional oral care products such as mouthwashes.” Id. at 9–10.
Appellant argues that Stookey “is not analogous to the invention of
claim 1.” App. Br. 7. Appellant argues that “Stookey relates to a food
product comprising an antimicrobial agent for improving the dental health of
an animal. Stookey’s food product is not in the same field of endeavor as
the claimed invention, which relates to an oral care composition.” Id. at 8.
Appellant further argues that Stookey is not reasonably pertinent to the
problem addressed by Appellant, because Stookey is directed to inhibiting
dental plaque rather than hastening wound healing and repairing soft tissue
damage in the oral cavity. See id.
We are not persuaded by Appellant’s argument. Our reviewing court
has held that the scope of analogous art includes “art [ ] from the same field
of endeavor regardless of the problem addressed.” In re Bigio, 381 F.3d
1320, 1325 (Fed. Cir. 2004). The “test for analogous art requires the PTO to
determine the appropriate field of endeavor by reference to explanations of
the invention’s subject matter in the patent application, including the
embodiments, function, and structure of the claimed invention.” Id. at 1325.
Stookey shares similar embodiments, functions, and structure as the
claimed invention. The structure of the claimed invention is an oral care
composition containing taurine and an orally acceptable carrier, e.g., water.
App. Br. 13, claim 1; Spec. ¶ 35. Stookey teaches an oral care composition
containing taurine and an orally acceptable carrier, e.g., water. Stookey p.
11, ll. 3–28. The Specification discloses embodiments of the oral
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composition including taurine and other oral care ingredients, e.g., tartar
control agents. See Spec. ¶¶ 8, 38, 42. Stookey discloses embodiments
including taurine and ingredients for treating dental calculus, e.g., tartar
control agents. Stookey Abstr., p. 1, ll. 21–23; p. 11, ll. 3–5, 24–28. The
function of the oral care composition is to hasten wound healing and repair
damage of soft tissue, e.g., gingival tissue, in the oral cavity. See Spec. ¶¶ 4,
66. Stookey teaches oral care compositions that inhibit the formation of
dental calculus and reduce the incidence of gingivitis. Stookey p. 6, ll. 18–
24. Although it does not solve the same problem as the claimed invention,
Stookey is within the same field of endeavor because the structural
similarities between the oral compositions would have led one of ordinary
skill in the art working in the specific field of oral compositions to consider
similar compositions for oral use. See Bigio at 1326.

Issue 2
Appellant argues the Examiner erred in finding a reason to modify
Stookey’s food product to arrive at the claimed oral care composition. App.
Br. 8.

Analysis
Appellant argues “[a]lthough Stookey teaches the use of antimicrobial
agents and polycarboxylic acid sequestering agents to inhibit dental plaque
and dental calculus, Stookey relates to a food product but not an oral care
composition.” App. Br. 9. Appellant argues that Stookey’s moist ration
includes taurine as an essential nutrient for cats and dogs, rather than an
ingredient for improving dental health. Id. Appellant argues that “[t]he
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Examiner has not provided any articulated reasoning why one of skill in the
art would be motivated to add taurine into an oral care composition … with
a reasonable expectation of success that taurine would improve the dental
health.” Id.
We are not persuaded by Appellant’s argument. Stookey discloses
oral care compositions in various forms, including food products for
animals, e.g., moist rations or wafers, and traditional oral care products, e.g.,
mouthwashes. Stookey p. 9, ll. 23–28. Stookey teaches the compositions
improve the dental health. Id. Abstr. Appellant’s claim 1 does not limit the
claimed oral care composition to any particular formulation. Moreover, the
intended use of the claimed oral composition does not distinguish the prior
art. “[T]he patentability of apparatus or composition claims depends on the
claimed structure, not on the use or purpose of that structure.” Catalina
Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed. Cir.
2002). Because the objective reach of the claimed oral composition extends
to Stookey’s oral care compositions including taurine, we are not persuaded
that the Examiner erred. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
419 (2007)(“In determining whether the subject matter of a patent claim is
obvious, neither the particular motivation nor the avowed purpose of the
patentee controls. What matters is the objective reach of the claim. If the
claim extends to what is obvious, it is invalid under § 103.”)
Appellant further argues that “the Examiner has provided no rationale
to use the pet food of Stookey as a basis to formulate a composition selected
from mouthwashes, sprays, dentifrices, oral strips, chewing gums and
lozenges, as specified in claim 3.” App. Br. 11. Also with respect to claim
3, Appellant argues “Stookey’s teaching regarding taurine and its range
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should be limited to moist rations for dog and cat. As a lozenge is a solid
composition in the shape of rhombus, for example, moist rations cannot then
be lozenges. Also, mouthwashes are not moist rations.” Reply Br. 6.
We are not persuaded by Appellant’s arguments. As discuss supra,
Stookey teaches oral care compositions, in various formulations including
both food rations, e.g., wafers, and traditional oral care compositions, e.g.,
mouthwashes. The Examiner further finds Stookey’s wafers teach lozenges
as “both are terms for compositions intended to be dissolved in the oral
cavity.” Ans. 9. Moreover, the Examiner’s “picking and choosing” features
from Stookey’s various formulations is “entirely proper in the making of a
103, obviousness rejection, where the applicant must be afforded the
opportunity to rebut with objective evidence any inference of obviousness
which may arise from the similarity of the subject matter which he claims to
the prior art.” In re Arkley, 455 F.2d 586, 587–88 (C.C.P.A. 1972).

Issue 3
Appellant argues that a person of ordinary skill in the art would not
look to Stookey’s broad range when determining the amount of taurine in an
oral care composition. App. Br. 10.

Analysis
Appellant argues “Stookey discloses a broad range (0.001–5.0%) of
taurine in moist rations for dogs and cats.” App. Br. 9. Appellant argues
that “Stookey does not teach or suggest anything regarding the role of
taurine in improving the dental health. Thus, one of skill in the art would
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not even look to Stookey’s disclosure when determining the amount of
taurine in an oral care composition.” Id. at 10.
We are not persuaded by Appellant’s argument. As discussed supra,
Stookey teaches oral care compositions in various forms, including moist
rations and traditional oral care formulations. The claims at issue do not
distinguish from Stookey’s oral care compositions. Moreover, Stookey’s
range of taurine overlaps the claimed ranges recited by claims 1, 2, 20, and
21. “[T]he existence of overlapping or encompassing ranges shifts the
burden to the applicant to show that his invention would not have been
obvious.” In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003).
Accordingly, we are not persuaded that the Examiner erred.

Issue 4
Appellant argues the Specification includes evidence of unexpected
results as compared to the prior art. App. Br. 10.

Analysis
Appellant argues that the Specification discloses data showing “that
taurine is effective in accelerating HSP 27 production in damaged gingival
tissue at a low dose of 50 ppm (0.005%).” App. Br. 10. Appellant argues
“Stookey does not teach or suggest anything regarding the production of
HSP27 or wound healing. Thus, one of skill in the art would have no
motivation to add a low amount (0.001–0.008 % recited in claim 1 or 0.003–
0.006% recited in claim 2) of taurine into an oral care composition.” Id.
We are not persuaded by Appellant’s objective evidence of non-
obviousness because it is not compared to the closest prior art. “To be
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particularly probative, evidence of unexpected results must establish that
there is a difference between the results obtained and those of the closest
prior art, and that the difference would not have been expected by one of
ordinary skill in the art at the time of the invention.” Bristol-Myers Squibb
Co. v. Teva Pharms. USA, Inc., 752 F.3d 967, 977 (Fed. Cir. 2014). The
Specification describes Examples 3–5 which compare the effect of taurine-
containing compositions to compositions without taurine. The results do not
establish a difference between the claimed composition and the closest prior
art, i.e., Stookey, which teaches compositions containing taurine.
We consequently affirm the Examiner’s rejection of claims 1, 2, 3, 20,
and 21, as obvious over the combined prior art. Appellant does not
separately argue claims 4–9. For the reasons set forth supra, we affirm the
Examiner’s rejection of claims 4–9 as obvious.

CONCLUSION

The rejection of claims 1–4 and 6–9 as unpatentable under 35 U.S.C.
§ 102(a)(1) is affirmed.
The rejection of claims 1–9, 20, and 21 as unpatentable under 35
U.S.C. § 103 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–4, 6–9 102 Lynch 1–4, 6–9
1–9, 20, 21 103 Stookey 1–9, 20, 21
Overall
Outcome
1–9, 20, 21