Colgate-Palmolive Company

Patent Trials and Appeals Board

Nov 22, 2021

2020005324 (P.T.A.B. Nov. 22, 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.
15/838,679 12/12/2017 Shaotang Yuan T10706-00-US-01-OC 2037
23909 7590 11/22/2021
COLGATE-PALMOLIVE COMPANY
909 RIVER ROAD
PISCATAWAY, NJ 08855
EXAMINER
RONEY, CELESTE A
ART UNIT PAPER NUMBER
1612
NOTIFICATION DATE DELIVERY MODE
11/22/2021 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 SHAOTANG YUAN, GUOFENG XU, ROBERT DICOSIMO,
and SHARON HAYNIE

Appeal 2020-005324
Application 15/838,679
Technology Center 1600
____________

Before ULRIKE W. JENKS, JOHN E. SCHNEIDER, and
CYNTHIA M HARDMAN, Administrative Patent Judges.

JENKS, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from Examiner’s
decision to reject claims directed to an oral care composition. 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(a). Appellant identifies the real party in interest as Colgate-
Palmolive Company, New York, NY. Appeal Br. 2.
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STATEMENT OF THE CASE
According to the Specification
[t]he most commonly used whitening active ingredients are
peroxides, such as hydrogen peroxide. . . . peroxide can
spontaneously decompose to form oxygen gas (O2) and water,
so that on storage, oral care compositions using hydrogen
peroxide may bloat, burst or leak, and the remaining
formulation may not have enough peroxide remaining to clean
and whiten teeth effectively.
Spec. 3. “[P]eroxydone complexes [such as polyvinylpyrrolidone hydrogen
peroxide complexes (PVP-H2O2)] are the powder formed of hydrogen
peroxide and a polymer. In these complexes, hydrogen peroxide is stabilized
with polyvinylpyrrolidino polymer via hydrogen bonds, and is released once
the complex contacts water.” Id. ¶ 39.
Claims 1–20 are on appeal, and can be found in the Claims
Appendix.2 Claim 1 is representative of the claims on appeal and reads as
follows:
1. An oral care composition, comprising:
from about 0.01 % to about 60% of peroxydone complex,
based on a total weight of the oral care composition;
from about 0.01 % to about 990% [sic] of a non-aqueous
dispersant, based on the total weight of the oral care
composition, and
from about 0.01 % to about 60% of a
polyvinylpyrrolidone copolymer structure-building agent, based
on the total weight of the oral care composition,
wherein the non-aqueous dispersant comprises a non-
aqueous liquid, and the oral care composition includes from

2 Herein we refer to the Appeal Br. Filed December 23, 2019 (“Appeal Br.”),
Claims Appendix filed February 3, 2020 (“Claims Appendix”) in response to
notice on defective Appeal Brief, Examiner’s Answer mailed May 14, 2020
(“Ans.”), and Reply Brief filed July 13, 2020 (“Reply Br.”).
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3
about 1 % to about 70% of the non-aqueous liquid, based on the
total weight of the oral care composition; and
wherein the non-aqueous liquid comprises is selected
from the group consisting of glycerin monoacetate, diethylene
glycol diacetate, ethylene glycol diacetate, propylene glycol
diacetate (PGDA), and combinations thereof.
Claims Appendix 2.
Claim 16, the only other independent claim, recites an amphiphilic
copolymer structure-building agent.
REJECTION(S)
Appellant requests review of the following grounds of rejection made
by Examiner:
I. Claims 1–10 and 12–20 under 35 U.S.C. § 103 over Fei3 in
view of Concar;4 and
II. Claim 11 under 35 U.S.C. § 103 over Fei in view of Concar and
further in view of Vogt.5
I. Obviousness over Fei and Concar
The issue before us is whether the preponderance of evidence of
record supports Examiner’s conclusion of obviousness; and if so whether
Appellant provides sufficient rebuttal evidence to overcome a conclusion of
obviousness.
A. Findings of Fact (FF)
FF1. Fei teaches a non-aqueous liquid tooth whitening composition
comprising anhydrous peroxide, an anhydrous hydrophilic
polymer, and an adhesion enhancer. Fei, Abstract.

3 Fei et al., US 2005/0036956 A1, published Feb. 17, 2005 (“Fei”).
4 Concar et al., US 2009/0311198 Al, published Dec. 17, 2009 (“Concar”).
5 Vogt et al., US 2013/0315845 Al, published Nov. 28, 2013 (“Vogt”).
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FF2. Fei teaches using anhydrous whitening agents such as urea
peroxide, sodium percarbonate, sodium perborate, and
polyvinyl pyrrolidone and hydrogen peroxide complexes
(“PVP-H2O2”). Fei ¶ 30. Fei explains that “[t]he PVP-H2O2
complex is generally comprised of about 80% by weight
polyvinyl pyrrolidone and 20% by weight H2O2.” Id. Once the
PVP-H2O2 complex is exposed to water then the complex
dissociates into the individual species — PVP polymer and
H2O2. Id.
FF3. Fei teaches that the non-aqueous hydrophilic polymers provide
a viscosity in the range between about 10,000 cps to 600,000
cps. Fei ¶ 16. Examples of suitable non-aqueous hydrophilic
polymers include polyethylene glycols such as polyethylene
glycols 200, 300, 400, and 600 from Dow Chemical. See id.
¶¶ 17–18.
FF4. Fei teaches adhesion enhancing agents that include hydrophobic
materials such as for example: waxes such as bees wax, silicone
elastomers, silicone gums and polyvinyl pyrrolidone/vinyl
acetate copolymers (PVP/VA). Fei ¶ 27.
FF5. Fei teaches that other ingredients may be incorporated into the
whitening composition including antimicrobial agents, anti-
inflammatory agents, desensitizing agents, and “biomolecules,
e.g., bacteriocins, antibodies, enzymes such as papain,
glucoamylase.” Fei ¶ 41.
FF6. Fei exemplifies compositions containing 10–30 % by weight
PVP-H2O2 complex, 62.9–72 % PEG, and 0.1–1% PVP/VA
polymer. See Fei ¶ 51 (Table III), see also claims 4, 11–13
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(teaching 4–50% PVP-H2O2 (claim 4) and 0.1–4% adhesion
enhancing polymer such as polyvinyl pyrrolidone/vinyl acetate
(claims 11–13)).
FF7. Concar teaches the use of perhydrolase under conditions
suitable to whiten teeth. Concar, Abstract, ¶ 7. Concar explains
that peracetic acid is a surprisingly effective bleaching or
whitening agent for discolored or stained human
teeth. . . . [A]n aqueous 1% (by weight) solution of
peracetic acid gives rise to a faster and superior
whitening effect when applied to teeth at ambient to oral
range temperatures than does a 30% (by weight) aqueous
solution of hydrogen peroxide. . . . [Peracetic acid can
be] generated in situ in the oral composition by the
reaction of a peroxide source such as hydrogen peroxide,
urea peroxide, sodium perborate, sodium percarbonate,
and metal peroxides, for example, SrO2 , CaO2 and NaO2,
with a peroxyacid precursor or activator containing labile
acetyl groups.
Concar ¶ 10.
FF8. The “key components to peracid production by enzymatic
perhydrolysis are enzyme, ester substrate, and hydrogen
peroxide. Hydrogen peroxide can be either added directly in
batch, or generated continuously ‘in situ.’” Id. ¶ 21. Below is an
equation, reproduced from Concar, showing a coupled enzyme
system for the production of a peracid.

Reproduced above is an equation showing the production of a
peracid. Id. “[T]hese [peracid producing] enzymes also find use
with any other suitable source of H2O2, including [those] that
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[are] generated by chemical, electro-chemical, and/or enzymatic
means.” Id.
FF9. Concar teaches that the generation of peracetic acid “by
perhydrolase from propylene glycol diacetate and hydrogen
peroxide. These results indicated that enzymatically generated
peracetic acid produced clinically significant tooth whitening.”
Concar ¶ 18. Concar teaches the production of storage stable
precursors for teeth whitening. The composition can be used for
“in situ generation of peracids . . . [that] delivers a stronger
oxidative species locally for the bleaching and whitening of
intrinsic tooth stains, with minimal sensitization of the patient.”
Id. ¶ 19.
B. Analysis
Examiner finds that Fei teaches non-aqueous liquid tooth whitening
compositions comprising polyvinyl pyrrolidone hydrogen peroxide complex
(PVP/H2O2), an anhydrous liquid polymer, and a polyvinyl
pyrrolidone/vinyl acetate polymer. Final Act. 2; see FF1–FF6. Examiner
acknowledges that Fei does “not disclose propylene glycol diacetate.” Final
Act. 3. Examiner relies on Concar for teaching “the use of perhydrolase to
whiten teeth [abstract and title], wherein propylene glycol diacetate (PGDA),
in combination with hydrogen peroxide, significantly whitened teeth.” Final
Act. 3; see FF7–FF9. Examiner concludes that
[s]ince Fei disclosed tooth whitening compositions containing
hydrogen peroxide, as discussed above, it would have been
prima facie obvious to one of ordinary skill in the art to have
included PGDA within Fei, as taught by Concar. An ordinarily
skilled artisan would have been so motivated, because PGDA,
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in combination with hydrogen peroxide, significantly whitened
teeth, as taught by Concar [0018].
Final Act. 3. Specifically, Examiner explains that one of ordinary skill in the
art at the time the invention was made would not have simply added the
PGDA component of Concar to Fei’s composition but instead “[t]he skilled
artisan would include Concar’s entire system (H2O2, ester substrate and
enzyme), rather than only the substrate. This is because Concar’s process of
tooth whitening comprised hydrolysis of the system, where the system
comprised the enzyme and substrate in the presence of H2O2” for the
purpose of whiting teeth with a peracid. Ans. 7–8.
Appellant contends that (1) the claims are directed to a non-enzymatic
whitening system (Appeal Br. 3), (2) there is no motivation for the inclusion
of PGDA in Fei (Appeal Br. 4), (3) the combination lacks a reasonable
expectation of success (Appeal Br. 5; Reply Br. 3), and (4) unexpected
results (Appeal Br. 5).
Upon consideration of the evidence on this record, and each of
Appellant’s contentions, we find that the preponderance of evidence
supports Examiner’s conclusion that the subject matter of Appellant’s claims
is unpatentable. Accordingly, we affirm Examiner’s rejections for the
reasons set forth in the Answer and Final Action. We address Appellant’s
contentions below.
1. Claim interpretation
We are not persuaded by Appellant’s contention the claims are
directed to “a non-enzymatic whitening system” and thereby would exclude
the incorporation of an enzyme. Appeal Br. 3. Claim 1 recites “[a]n oral care
composition, comprising: . . .” Claims Appendix 2, see also id. at 5
(independent claim 16).
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“‘Comprising’ is a term of art used in claim language which means
that the named elements are essential, but other elements may be added and
still form a construct within the scope of the claim.” Genentech, Inc. v.
Chiron Corp., 112 F.3d 495, 501 (Fed. Cir. 1997). Here, the use of
“comprising” in independent claim 1 (and claim 16) indicates that the listed
components are essential but can include other components including active
ingredients. We further note that the term “enzyme” or “whitening” also
does not appear in either independent claim.
“An essential purpose of patent examination is to fashion claims that
are precise, clear, correct, and unambiguous. Only in this way can
uncertainties of claim scope be removed, as much as possible, during the
administrative process.” In re Zletz, 893 F.2d 319, 322 (Fed. Cir. 1989).
Moreover, it is during prosecution that applicants have “the opportunity to
amend the claims to obtain more precise claim coverage.” In re Am. Acad.
Science Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Here, Appellant
has not amended the claims to clarify that only a non-enzymatic whitening
system is encompassed by the claims. Because the claims are not so limited
we are not persuaded by Appellant’s contention that Examiner erred
reaching the conclusion that the combination of Fei and Concar renders the
claims obvious.
2. Motivation
Appellant contends that
contrary to the Office’s allegation, it does not teach that the
addition of PGDA with hydrogen peroxide significantly
whitens teeth. Rather, Concar teaches that ‘enzymatically
generated peracetic acid produced clinically significant tooth
whitening’ (see, Concar at ¶ [0018]). By itself, this teaching
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would not have motivated one skilled in the art to include
PGDA in the tooth whitening systems of Fei.
Appeal Br. 4. Furthermore, “PDGA was included in the Concar systems for
a single purpose – to serve as an ester substrate for creating a peracid using a
perhydrolase enzyme and hydrogen peroxide.” Id.
We are not persuaded by Appellant’s contention that there is no
motivation to combine Fei and Concar. As Examiner explains “[t]he skilled
artisan would include Concar’s entire system (H2O2, ester substrate and
enzyme), rather than only the substrate. This is because Concar’s process of
tooth whitening comprised hydrolysis of the system, where the system
comprised the enzyme and substrate in the presence of H2O2” for the
purpose of whiting teeth with a peracid created by the enzyme. Ans. 7–8.
It is prima facie obvious to combine two compositions each of
which is taught by the prior art to be useful for the same
purpose, in order to form a third composition which is to be
used for the very same purpose. . . . [T]he idea of combining
them flows logically from their having been individually taught
in the prior art.
In re Kerkhoven, 626 F.2d 846, 850 (CCPA 1980) (citations omitted).
Here claim 1 is directed to a composition comprising a peroxydone
complex, a non-aqueous dispersant, and a polyvinylpyrrolidone copolymer
structure-building agent. The claim further clarifies that the non-aqueous
liquid is selected from the group “consisting of glycerin monoacetate,
diethylene glycol diacetate, ethylene glycol diacetate, propylene glycol
diacetate (PGDA), and combinations thereof.” See Claims Appendix 2.
Fei teaches non-aqueous tooth whitening compositions incorporating
polyvinyl pyrrolidone and hydrogen peroxide complexes (“PVP-H2O2”).
FF1–FF2. Fei also incorporates non-aqueous hydrophilic polymers,
hydrophobic materials such as polyvinyl pyrrolidone/vinyl acetate
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copolymers, as well as other ingredients. FF3–FF6. Specifically, Fei teaches
that optional ingredients include enzymes, and gives two examples of
enzymes, at least one of which is a whitening agent (papain). FF5. Fei,
therefore, expressly teaches combining enzyme with a non-enzyme
whitening system. FF5; see also Ans. 8–9, 10–11 (Ex relying on this
teaching in Fei).
Concar teaches that peracetic acid is a surprisingly effective bleaching
or whitening agent (FF7) and explains that the “key components to peracid
production by enzymatic perhydrolysis are enzyme, ester substrate, and
hydrogen peroxide” (FF8). In addition, Concar teaches the production of
storage stable precursors for teeth whitening and explains that the peracids
can be generated in situ that “delivers a stronger oxidative species locally for
the bleaching and whitening of intrinsic tooth stains, with minimal
sensitization of the patient.” FF9. In other words, Concar’s ingredients when
placed in the right environment produce peracids for the purpose of
whitening teeth. See FF9.
Based on the teachings of Fei and Concar, we agree with Examiner’s
conclusion that a person of ordinary skill in the art would have been
motivated to combine Fei’s system components with Concar’s system
components, which would result in a composition that meets all the claimed
elements.
3. Reasonable expectation of success
Appellant contends that “one skilled in the art would not have had a
reasonable expectation of success in using a perhydrolase enzyme where the
hydrogen peroxide source is a polymer-complexed hydrogen peroxide, itself
dispersed in a non-aqueous dispersant intended to sequester the peroxide
from an aqueous environment.” Appeal Br. 5. Appellant contends that
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“Concar teaches that perhydrolase enzymes require an aqueous environment.
. . . Thus, one skilled in the art armed with Concar could not have reasonably
expected a perhydrolase from Concar to provide a suitable level of
whitening in a non-aqueous system.” Reply Br. 3
We are not persuaded by Appellant’s contention that the combination
as relied on by Examiner does not have a reasonable expectation of success.
Examiner explains that “[t]he skilled artisan would include Concar’s entire
system (H2O2, ester substrate and enzyme), rather than only the substrate.”
Ans. 7–8.
Examiner finds, and we agree, that Concar does not limit the source of
peroxide. Ans. 9; FF8. Fei explains that the polyvinyl pyrrolidone and
hydrogen peroxide complexes (“PVP-H2O2”) dissociate upon exposure to
water into its individual components. FF2. Thus, once the combined
composition is exposed to water the complexed peroxide becomes available
for the perhydrolase enzyme to act upon to form the peracid which Concar
explains has the superior bleaching action. See FF7. Thus, the polyvinyl
pyrrolidone and hydrogen peroxide complexes (“PVP-H2O2”) of Fei would
be a reasonable source of peroxide for Concar’s system when the
composition is placed in an environment suitable for tooth bleaching.
Concar teaches that “peracid solutions are unstable” and have to be
used within one hour of preparation. See Concar ¶ 73. Concar, therefore,
reasonably suggests that the compositions are not stored as aqueous
solutions but are only mixed with water once peracid production is desired.
Thus, both Fei and Concar suggest that the addition of water is not desirable
while storing the solution but is required for the activation of the bleaching
effect. This further suggests that the combination as articulated by Examiner
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produces a composition as claimed that would reasonably function to bleach
teeth once placed in a suitable teeth bleaching environment.
4. Unexpected results
Appellant contends “that the addition of certain non-aqueous liquids
(e.g. PDGA) to peroxide containing systems provided an unexpected level of
stability.” Appeal Br. 5.
Having concluded that Examiner has made out a prima facie case of
obviousness with respect to the appealed subject matter, it is necessary for us
to consider any rebuttal evidence presented by Appellant to overcome the
prima facie case of obviousness and reweigh Examiner’s evidence of
obviousness in light of such rebuttal evidence. The burden of demonstrating
unexpected results rests on the party asserting them. In re Klosak, 455 F.2d
1077, 1080 (CCPA 1972).
Example 2 of the Specification compares two oral care compositions
where the only difference between the two compositions is the amount of
complexed hydrogen peroxide. See Spec. ¶¶ 93–95. Examiner contends that
the information provided in the Specification is insufficient to establish that
any improved stability is due to the incorporation of PGDA and not due to
the use polyvinyl pyrrolidone and hydrogen peroxide complexes (“PVP-
H2O2”) as taught in Fei. See Ans. 13 (“Appellant did not show that the
stability resulted from PGDA. The Appellant did not show the criticality of
PGDA, with comparative compositions having an either an absence, or
varying amounts, of PGDA.”).
On balance, after careful consideration of Appellant’s rebuttal
evidence when balanced with the teachings Fei and Concar we determine
that Examiner has the better position. The burden of demonstrating
unexpected results has not been carried here because Appellant has not
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established that the results achieved using the recited PGDA compounds
were unexpectedly superior compared to the closest prior art, which is the
composition disclosed by Fei. See In re Baxter Travenol Labs., 952 F.2d
388, 392 (Fed. Cir. 1991).
C. Conclusion
We conclude, considering the totality of the cited evidence and
arguments, that the preponderance of the evidence supports Examiner’s
conclusion of obviousness with respect to claim 1, and Appellant has not
provided sufficient rebuttal evidence or evidence of secondary
considerations that outweighs the evidence supporting Examiner’s
conclusion. As Appellant does not argue the claims separately, claims 2–10
and 12–20 fall with claim 1. 37 C.F.R. § 41.37 (c)(1)(iv).
II. Obviousness over Fei, Concar, and Vogt
Examiner has rejected claim 11 as obvious based on the combination
of Fei, Concar, and Vogt. See Ans. 5–6. Appellant’s only argument with
respect to this rejection is that “Vogt does not cure the deficiencies of Fei
and Concar.” Appeal Br. 5. This argument is not persuasive because, as
discussed above, we conclude that the combination of Fei and Concar would
have made obvious the claimed whitening composition. We, therefore,
affirm the rejection of claim 11 for the reasons given by the Examiner.
DECISION SUMMARY
In summary:
Claim(s)
Rejected
35
U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–10,
12–20
103 Fei, Concar 1–10,
12–20

11 103 Fei, Concar, Vogt 11
Outcome 1–20
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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