Colgate-Palmolive Company

Patent Trials and Appeals Board

Nov 26, 2021

2021000135 (P.T.A.B. Nov. 26, 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.
15/630,465 06/22/2017 Paul Thomson 11173-00-US-01-OC 4627
23909 7590 11/26/2021
COLGATE-PALMOLIVE COMPANY
909 RIVER ROAD
PISCATAWAY, NJ 08855
EXAMINER
WEBB, WALTER E
ART UNIT PAPER NUMBER
1612
NOTIFICATION DATE DELIVERY MODE
11/26/2021 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 PAUL THOMSON, NIHAL DOGU,
DIVINO RAJAH, CARLO DAEP, REHANA BEGUM-GAFUR, and
MICHAEL PRENCIPE
____________
Appeal 2021-000135
Application 15/630,465
Technology Center 1600
____________
Before JOHN E. SCHNEIDER, DEBRA L. DENNETT, and
RACHEL H. TOWNSEND, Administrative Patent Judges.
DENNETT, Administrative Patent Judge.
DECISION ON APPEAL1

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1, 10–12, 15, 17–20, and 22 of

1 In our Decision, we refer to the Specification (“Spec.”) of Application No.
15/630,465 filed June 22, 2017; the Final Office Action dated Jan. 3, 2020
(“Final Act.”); the Appeal Brief filed June 3, 2020 (“Appeal Br.”); the
Examiner’s Answer dated Aug. 5, 2020 (“Ans.”); and the Reply Brief filed
Oct. 5, 2020 (“Reply Br.”).
2 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant
identifies Colgate-Palmolive Company as the real party in interest. Appeal
Br. 2.
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Application 15/630,465, which constitute all the claims pending in this
application. We have jurisdiction under 35 U.S.C. § 6(b).
For the reasons set forth below, we AFFIRM.
The subject matter of the invention relates to oral care compositions
comprising zinc oxide and either zinc citrate or zinc lactate, and a stannous
source. Spec. ¶ 1.
Claim 1, reproduced below from the Claims Appendix of the Appeal
Brief, represents the claimed subject matter:
1. An oral care composition comprising:
a. a first source of zinc comprising zinc oxide;
b. a second source of zinc comprising zinc citrate;
c. stannous fluoride, wherein the amount of stannous
fluoride is about 0.454%, by total weight of the
composition, and
d. sodium tripolyphosphate, wherein the amount of
tripolyphosphate is about 3.0% by total weight of the
composition,
wherein the zinc citrate is in an amount of about 0.5 wt.%
and zinc oxide is present in an amount of about 1 wt.%
based on the total weight of the composition.

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REFERENCES
The Examiner relies on the following prior art in rejecting the claims
as obvious under 35 U.S.C. § 103:
Name Reference Date
Maloney et al.
(“Maloney”)
US 2013/0287709 A1 Oct. 31, 2013
Fruge et al.
(“Fruge”)
WO 2011/053291 A1 May 5, 2011
Strand et al.
(“Ross”)3
EP 2 057 978 B1 Oct. 12, 2011
REJECTIONS
The Examiner maintains the rejection of claims under 35 U.S.C. § 103
as follows: (1) claims 1, 10–12, 15, 17–20, and 22 over Maloney in view of
Ross; and (2) claims 1, 10–12, 15, 17–20, and 22 over Fruge in view of
Maloney. Final Act. 3, 5. The Examiner provisionally rejects claims 1, 10–
12, 15, 17–20, and 22 on the ground of nonstatutory double patenting over
claims 1–3, 5, 7, 9–11, 13, 15–18, 20, 21, 32, 33, 36, 38, and 39 of
Application No. 15/525,381 (now issued as U.S. Pat. No. 10,251, 823). Id.
at 7–8.
DISCUSSION
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential),

3 The first inventor on EP 2 057 978 B1 is Ross Stand. Although we
typically refer to prior art patents and published applications by the first
inventor’s surname, here we follow the Examiner’s mistaken use of the
given name for ease of reference to the record.
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(cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011))
(“[I]t has long been the Board’s practice to require an applicant to identify
the alleged error in the [E]xaminer’s rejections.”). After considering the
evidence presented in this Appeal and each of Appellant’s arguments, we are
not persuaded that Appellant identifies reversible error. Thus, we affirm the
Examiner’s rejections for the reasons expressed in the Final Office Action
and the Answer. We add the following primarily for emphasis.
Obviousness Rejections
The Examiner rejects claims 1, 10–12, 15, 17–20, and 22 as obvious
over (1) Maloney in view of Ross, and (2) Fruge in view of Maloney. Final
Act. 3–7. Appellant does not provide separate arguments for the different
rejections. See Appeal Br. 5–10. We select claim 1 as representative of the
rejected claims. 37 C.F.R. § 41.37(c)(1)(iv). Claims 10–12, 15, 17–20, and
22 stand or fall with claim 1 for each rejection.
Of relevance to this appeal, in the first rejection the Examiner finds
that Maloney teaches oral care compositions comprising combinations of
metal ions wherein the source of metal ions includes mixtures of zinc and
stannous compounds, such as zinc citrate, zinc oxide, and stannous fluoride.
Final Act. 3. Maloney teaches “the second metal salt is present in an amount
effective to provide a synergistic increase in the uptake of the metal ion of
the first or second metal salt.” Id. (quoting Maloney ¶ 11). Maloney teaches
an example comprising 0.1 to 5 %wt zinc citrate and 0.05 to 2 %wt zinc
oxide; these ranges overlap the claimed amounts of “about 0.5 wt.%” zinc
citrate and “about 1 wt.%” zinc oxide. Id. at 3–4 (compare Maloney ¶ 48,
with Appeal Br. 12 (Claims App.)).
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The Examiner finds that Ross teaches combining 0.2% to 3% divalent
metal ions comprising from 0.1 % to 1.5% zinc ions, from 0.1 to 2% tin (II)
ions (stannous ions) with a source of fluoride ions in oral care compositions,
and teaches an embodiment comprising 0.454% stannous fluoride. Id. at 4
(citing Ross ¶¶ 9, 47). The Examiner finds that Ross teaches the
composition gives improved microbial activity from the zinc/stannous
combination. Id. (quoting Ross ¶ 10).
The Examiner determines that it would have been obvious to one of
ordinary skill in the art at the time of filing to add a source of stannous ions,
e.g. stannous fluoride, to the example in Maloney for the benefit of
improved antimicrobial activity from the zinc/stannous combination as
taught by Ross. Id.
In the second rejection, the Examiner finds that Fruge teaches, inter
alia, a dentifrice comprising combinations of zinc and stannous ions, and “a
need in the art to provide dentifrice compositions that [] effectively combine
sources of stannous, fluoride, and zinc ions in combination with a
polyphosphate.” Id. at 4 (citing Fruge, ¶ 10). The source of fluoride ions
and stannous ions is preferably stannous fluoride. Id. The source of zinc
ions is preferably zinc citrate, and may include zinc oxide. Id. (citing Fruge
¶ 36). Fruge teaches an embodiment comprising 2.0% zinc citrate, 0.454%
stannous fluoride, and 3.0 % sodium tripolyphosphate. Id. (citing Fruge
¶ 93). Fruge teaches that the amount of zinc citrate may be adjusted to about
0.5% and the metal ions may be present in a concentration of about 0.25% to
about 11%. Id. at 6 (citing Fruge ¶ 69).
The Examiner relies on the disclosures in Maloney reviewed above.
Id. at 6–7. The Examiner determines that it would have been obvious to one
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of ordinary skill at the time of filing to combine zinc citrate with zin oxide in
the compositions of Fruge because Maloney teaches the addition of an
insoluble zinc oxide to a composition comprising a soluble zinc citrate
synergistically increases delivery of the metal (zinc) to hydroxyapatite. Id.
at 7 (quoting Maloney ¶ 49).
Appellant contends that “[t]he invention here required a recognition
that the inclusion of zinc oxide and zinc citrate were variables that could be
modified to obtain increased stannous availability in the composition, an
insight not provided by the cited references.” Appeal Br. 6. Therein lies the
rub for Appellant. Recognition that inclusion of both zinc oxide and zinc
citrate in an oral care composition increases stannous availability may or
may not be novel and nonobvious, but “the name of the game is the claim.”
See In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998) (quoting Giles
Sutherland Rich, Extent of Protection and Interpretation of Claims—
American Perspectives, 21 Int’l Rev. Indus. Prop. & Copyright L. 497, 499
(1990). Appellant’s motivation and purpose do not control an obviousness
determination:
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.
KSR Inter’l Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007) (emphasis added).
In the appeal before us, none of the claims are drawn to the alleged
point of novelty repeatedly identified by Appellant. See, e.g., Appeal Br. 7
(“[T]he Examiner has not demonstrated that one of skill in the art would
have had a reasonable expectation that zinc salts could increase the
availability of stannous.”); id. at 5 (“None of Maloney, Ross, or Fruge teach
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or suggest that zinc oxide could be specifically combined with zinc citrate
and stannous fluoride, much less that this combination could specifically
increase the metal deposition of either stannous and/or zinc.”). The
Examiner’s burden to establish a prima facie case does not require a
showing that the prior art discloses features, functionality, or advantages not
recited in the claims. See In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir.
1993) (rejecting appellant’s nonobviousness argument as based on limitation
not expressly recited in claim, stating “limitations are not to be read into the
claims from the specification”); Application of Golen, 352 F.2d 385, 389
(CCPA 1965) (affirming obviousness rejection and dismissing argument
distinguishing prior art based on feature that “is not supported by any
limitation in his claims”); In re Self, 671 F.2d 1344, 1348 (CCPA 1982)
(“Many of appellant's arguments fail from the outset because, . . . they are
not based on limitations appearing in the claims.”).
Having selected claim 1 as representative of the claims above, we note
that it is drawn to an oral care composition comprising a first source of zinc
comprising zinc oxide in an amount of about 1 wt.%, a second source of zinc
comprising zinc citrate in an amount of about 0.5 wt.%, stannous fluoride in
an amount of about 0.454% by total weight of the composition, and sodium
tripolyphosphate in an amount of about 3.0% by total weight of the
composition. Appeal Br. 12 (Claims App.). If the references cited by the
Examiner teach these limitations, a skilled artisan would have been
motivated to combine the teachings of the references, and would have had a
reasonable expectation of success in doing so, the claim is obviousness
unless Appellant successfully rebuts the determination. See Intelligent Bio-
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Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1367–68 (Fed. Cir.
2016).
An Appellant may rebut a prima facie case of obviousness by showing
the prior art combination is deficient, that no motivation exists to modify the
prior art as suggested by the Examiner, the presence of unexpected results
achieved by the claimed subject matter relative to the prior art, or other
objective evidence of nonobviousness. In re Mayne, 104 F.3d 1339, 1342
(Fed. Cir. 1997); In re Geisler, 116 F.3d 1465, 1469–70 (Fed. Cir. 1997); In
re Dillon, 919 F.2d 688, 692–93 (Fed. Cir. 1990) (en banc).
Appellant disputes that one of ordinary skill in the art would have
been motivated to combine the disclosures of Maloney and Ross, or of Fruge
and Maloney. Appeal Br. 5–6. We disagree. Maloney teaches inclusion of
two sources of zinc ions, Maloney ¶ 12 (teaching the first and second metal
salts are salts of the same metal), where the first zinc salt is zinc citrate and
the second zinc salt is zinc oxide, id. ¶¶ 13–14. and where the second zinc
salt is present in an amount to provide a synergistic increase in the delivery
of the metal ion of the first zinc salt, id. ¶¶ 12, 49. We agree with the
Examiner’s conclusion that it would have been obvious to combine Ross’s
disclosure of 0.454 wt% stannous fluoride and 0.1–1.5 wt% zinc ions, e.g.,
0.533 wt% zinc citrate, with Maloney’s disclosure of compositions
comprising 0.1–5 wt% zinc citrate and 0.05–2 wt% zinc oxide because Ross
teaches that combining zinc ions with stannous ions can give a broader
spectrum of anti-microbial activity.4 Final Act. 4. An improvement such as

4 Appellant argues that “Ross provides no evidence to support” the statement
contained therein that “[c]ombining zinc ions with stannous ions can give a
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a broader spectrum of antimicrobial activity qualifies as “some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness” in support of the rejection over Maloney in view of Ross. See
In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).
We also agree with the Examiner’s conclusion that it would have been
obvious to combine Fruge’s disclosures with those of Maloney. Final Act.
5–7. Fruge teaches “a need in the art to provide dentifrice composition can
[sic] effectively combine sources of stannous, fluoride, and zinc ions in
combination with a polyphosphate,” and a composition comprising 2.0 %
zinc citrate and 0.454% stannous fluoride. Fruge ¶¶ 10, 94. Maloney
teaches oral care compositions comprising combinations of metal ions
wherein the source of metal ions includes mixtures of zinc and stannous
compounds, including zinc citrate, zinc oxide, and stannous fluoride.
Maloney ¶¶ 3, 13, 18. Maloney teaches that the addition of zinc oxide to a
composition comprising zinc citrate synergistically increases the delivery of
the metal (zinc) to hydroxyapatite. Id. ¶ 49. Our reviewing court has
repeatedly held that
an implicit motivation to combine exists not only when a
suggestion may be gleaned from the prior art as a whole, but
when the ‘improvement’ is technology-independent and the

broader spectrum of anti-microbial activity.” Ans. 5. However, for
purposes of § 103, a reference is prior art for all that it discloses, and here
Ross contains the explicit statement that “[c]ombining zinc ions with
stannous ions can give a broader spectrum of anti-microbial activity.”
Symbol Techs., Inc. v. Opticon, Inc., 935 F.2d 1569, 1578 (Fed. Cir. 1991);
see also In re Fritch, 972 F.2d 1260, 1264 (Fed. Cir. 1992) (explaining that
“[i]t is well settled that a prior art reference is relevant for all that it teaches
to those of ordinary skill in the art”). Appellant’s argument is, thus,
unpersuasive.
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combination of references results in a product or process that is
more desirable, for example because it is stronger, cheaper,
cleaner, faster, lighter, smaller, more durable, or more efficient.
Because the desire to enhance commercial opportunities by
improving a product or process is universal – and even
common-sensical – we have held that there exists in these
situations a motivation to combine prior art references even
absent any hint of suggestion in the references themselves. In
such situations, the proper question is whether the ordinary
artisan possesses knowledge and skills rendering him capable
of combining the prior art references.
Dystar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464
F.3d 1356, 1368 (Fed. Cir. 2006). Here, a skilled artisan would be capable
of combining the references to synergistically increase the delivery of zinc,
making the product more desirable—and obvious. To render an invention
obvious, the prior art does not have to address the same problem addressed
by a patent applicant. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 420
(2007); see also, In re Beattie, 974 F.2d 1309, 1312 (Fed. Cir. 1992) (“As
long as some motivation or suggestion to combine the references is provided
by the prior art taken as a whole, the law does not require that the references
be combined for the reasons contemplated by the inventor.”).
Appellant argues that “both Ross and Fruge highlight difficulties in
formulating stannous ions, zinc ions, polyphosphates, and combinations
thereof, thereby teaching away from modifying the formulations disclosed.”
Appeal Br. 6. Appellant’s argument is not persuasive.
Teaching away requires that a reference “criticize, discredit, or
otherwise discourage the solution claimed” by Appellant. In re Fulton, 391
F.3d 1195, 1201 (Fed. Cir. 2004). Ross and Fruge indicate that challenges
exist, but go on to provide solutions to such challenges by their inventions.
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Under these circumstances, Ross and Fruge do not criticize, discredit, or
otherwise discourage the solution in claim 1.
Appellant argues that one of ordinary skill in the art would not have
had a reasonable expectation of success, more specifically, “a reasonable
expectation that zinc salts could increase the availability of stannous.”
Appeal Br. 7. The reasonable expectation of success requirement for a
prima facie case of obviousness refers to the likelihood of success in
combining references to meet the limitations of the claimed invention. See
Allergan, Inc. v. Apotex Inc., 754 F.3d 952, 966 (Fed. Cir. 2014) (“[F]ailure
to consider the appropriate scope of the . . . claimed invention in evaluating
the reasonable expectation of success . . . constitutes a legal error.”
(emphasis added)). In other words, the correct inquiry is whether a skilled
artisan has a motivation to combine accompanied by a reasonable
expectation of achieving what is claimed. See Proctor & Gamble Co. v.
Teva Pharm. USA, Inc., 566 F.3d 989, 994 (Fed. Cir. 2009) (An invention is
obvious if “a skilled artisan would have been motivated to combine the
teachings of the prior art references to achieve the claimed invention, and
that the skilled artisan would have had a reasonable expectation of success in
doing so.” (internal citation omitted)). “[O]nly a reasonable expectation of
success, not a guarantee, is needed.” Pfizer, Inc. v. Apotex, Inc., 480 F.3d
1348, 1364 (Fed. Cir. 2007); In re Longi, 759 F.2d 887, 897 (“[A]
reasonable expectation of success, not absolute predictability” supports a
conclusion of obviousness).
Appellant’s argument fails to address whether there would have been
a reasonable expectation of success in achieving the composition of claim 1.
See Appeal Br. 7–10. Although the cited references suggest some
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challenges had been present, the references also provide solutions to those
challenges. Appellant’s discussion of In re Stepan, 868 F.3d 1342 (Fed. Cir.
2017) is inapposite. In Stepan, the claim required a concentrate having a
cloud point above at least 70°C, and “[t]he Board failed to explain why it
would have been ‘routine optimization’ to select and adjust the claimed
surfactants and achieve a cloud point above at least 70°C.” Id. at 1344–46.
Here, claim 1 does not require that zinc salts increase the availability of
stannous ions. See Appeal Br. 12–13 (Claims App.). Moreover, in contrast
to Appellant’s position, In re Peterson, 315 F.3d 1325 (Fed. Cir. 2003), is
applicable here as it concerns the presumption of the existence of a prima
facie case of obviousness when the ranges of a claimed position overlap the
ranges disclosed in the prior art. See id. at 1329. As discussed above, the
cited references disclose ranges of zinc citrate, zinc oxide, stannous fluoride,
and sodium tripolyphosphate that overlap the amounts of these components
in claim 1. The presumption of obviousness may be rebutted if Appellant
shows that (1) the prior art taught away from the claimed invention, In re
Geisler, 116 F.3d 1465, 1471 (Fed. Cir. 1997); or (2) there are new and
unexpected results relative to the prior art, In re Woodruff, 919 F.2d 1575,
1578 (Fed. Cir. 1990). See Iron Grip Barbell Co. v. USA Sports, Inc., 392
F.3d 1317, 1321 (Fed. Cir. 2004). As discussed above, Appellant fails to
show that the cited references teach away from the claimed invention. We
next address whether unexpected results overcome the presumption of
obviousness.
The burden of showing unexpected results rests on the one who
asserts them. In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). A showing
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of unexpected results may be probative of nonobviousness if Appellant
establishes at least:
(1) that there actually is a difference between the results
obtained through the claimed invention and those of the prior
art, In re Klosak, 455 F.2d 1077, [1080] (CCPA 1972); and (2)
that the difference actually obtained would not have been
expected by one skilled in the art at the time of invention, Id.;
In re D’Ancicco, 439 F.2d 1244, [581247–48] (CCPA 1971).
In re Freeman, 474 F.2d 1318, 1324 (CCPA 1973). In this case, Appellant
establishes neither prong.
First, Appellant must demonstrate a difference between the claimed
invention and the closest prior art. In re Baxter Travenol Labs., 952 F.2d
388, 392 (Fed. Cir. 1991) (“[W]hen unexpected results are used as evidence
of nonobviousness, the results must be shown to be unexpected compared
with the closest prior art.”). Appellant directs us to Table 2, Example 3, and
Example 4 of the Specification in support of the assertion of unexpected
results. Appeal Br. 10. This evidence shows that, in comparison to a
composition comprising stannous fluoride and zinc lactate (Control
Formulation), stannous uptake increased with an unclaimed formulation
(Example 2, comprising 0.8% rather than 0.5% zinc citrate), but decreased
(Example 3) or was unchanged (Example 4) for a composition comprising
the claimed amounts of stannous fluoride, zinc citrate, zinc oxide, and
sodium tripolyphosphate (Test Formulation). This data provides no
evidence of differences in increased stannous uptake between the claimed
composition and the Control Formulation.
Second, Appellant fails to show that any difference actually obtained
in uptake of zinc would have been unexpected by one skilled in the art at the
time of invention. See Freeman, 474 F.2d at 439 F.2d at 1324. Only in the
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briefing does Appellant assert any unexpected difference, and then the
comparison is not between the claimed composition and the closest prior art.
See Appeal Br. 7–10, Reply Br. 3–4. In its entirety, regarding something
“unexpected,” the Specification states
It is an unexpected benefit that that current formulation use
comparable amounts of stannous and zinc than previous
formulations, but still maintain or improve the availability of
stannous and zinc in the oral cavity of a user.
Spec. ¶ 5 (emphasis added). At best, the quoted language provides no
evidence of what formulations provide an allegedly unexpected benefit. “It
is well settled that unexpected results must be established by factual
evidence. Mere argument or conclusory statements in the specification does
not suffice.” In re Soni, 54 F.3d 746, 750 (Fed. Cir. 1995) (quoting In re De
Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984)); see also In re Wood, 582 F.2d
638, 642 (CCPA 1978) (“Mere lawyer’s arguments and conclusory
statements in the specification, unsupported by objective evidence, are
insufficient to establish unexpected results.”); In re Lindner, 457 F.2d 506,
508 (CCPA 1972) (“Mere conclusory statements in the specification . . . are
entitled to little weight when the Patent Office questions the efficacy of
those statements.”).
Furthermore, unexpected results must be “commensurate in scope
with the degree of protection sought by the claims on appeal.” In re Harris,
409 F.3d 1339, 1344 (Fed. Cir. 2005); see also In re Graselli, 713 F.2d 731,
743 (Fed. Cir. 1983) (“It is well settled ‘that objective evidence of non-
obviousness must be commensurate in scope with the claims which the
evidence is offered to support.’” (internal citation omitted)). The degree of
protection Appellant seeks with claim 1 is a composition comprising about 1
wt% zinc oxide, about 0.5 wt% zinc citrate, about 0.454% stannous fluoride
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by total weight of the composition, and about 3.0% by total weight of the
composition. Appeal Br. 12 (Claims App.). The Specification provides
inadequate evidence to conclude that the Test Formulation exhibits
unexpected results (compare Example 1 with Example 3), much less to
expand the test results to formulations of any breadth greater than the single
Test Formulation described. “Commensurate in scope” means that the
evidence provides a reasonable basis for concluding that the untested
embodiments encompassed by the claims would behave in the same manner
as the tested embodiment(s). See In re Lindner, 457 F.2d 506, 508 (CCPA
1972).
The preponderance of the evidence fails to support the existence of
unexpected results to rebut the prima facie case of obviousness.
For the reasons above, we sustain the Examiner’s rejection of claim 1
as obvious over Maloney in view of Ross and over Fruge in view of
Maloney. We sustain the rejection of claims 10–12, 15, 17–20, and 22 over
the same references for the same reasons.
Provisional Nonstatutory Double Patenting Rejection
Claims 1, 10–12, 15, 17–20, and 22 are provisionally rejected as
unpatentable over claims 1–3, 5, 7, 9–11, 13, 15–18, 20, 21, 32, 33, 36, 38,
and 39 of Application No. 15/525,381 (now issued as U.S. Pat. No. 10,251,
823). Final Act. 7–8.
In the Appeal Brief, Appellant requests the provisional rejection be
held in abeyance until claims are allowed. Appeal Br. 11. The Reply Brief
contains new argument which could have been but was not presented in the
Appeal Brief. Compare Reply Br. 7, with Appeal Br. 11. Under regulations
governing appeals to the Board, a new argument not timely presented in the
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Appeal Brief will not be considered when filed in a Reply Brief, absent a
showing of good cause explaining why the argument could not have been
presented in the Appeal Brief. See Ex parte Borden, 93 USPQ2d 1473, 1477
(BPAI 2010) (informative) ) (“the reply brief [is not] an opportunity to make
arguments that could have been made in the principal brief on appeal to
rebut the Examiner’s rejections, but were not.”); compare also Optivus
Tech., Inc. v. Ion Beam Applications S.A., 469 F.3d 978, 989 (Fed. Cir.
2006) (argument raised for the first time in the Reply Brief is considered
waived); see also 37 C.F.R. § 41.37 and § 41.41. Because the record
contains no such showing, we will not consider the new argument in the
Reply Brief.
We affirm the provisional nonstatutory double patenting rejection.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 10–12,
15, 17–20,
22
103
Maloney, Ross 1, 10–12,
15, 17–20,
22

1, 10–12,
15, 17–20,
22
103
Fruge, Maloney 1, 10–12,
15, 17–20,
22

1, 10–12,
15, 17–20,
22

Provisional
Nonstatutory Double
Patenting 15/525,381
1, 10–12,
15, 17–20,
22

Overall
Outcome
1, 10–12,
15, 17–20,
22

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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