Colgate-Palmolive Company

Patent Trials and Appeals Board

Dec 16, 2021

2021001930 (P.T.A.B. Dec. 16, 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.
16/038,929 07/18/2018 Xiang CHEN 12021-00-US-01-OC 1476
23909 7590 12/16/2021
COLGATE-PALMOLIVE COMPANY
909 RIVER ROAD
PISCATAWAY, NJ 08855
EXAMINER
WEBB, WALTER E
ART UNIT PAPER NUMBER
1612
NOTIFICATION DATE DELIVERY MODE
12/16/2021 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 XIANG CHEN and SUMAN CHOPRA
____________

Appeal 2021-001930
Application 16/038,929
Technology Center 1600
____________

Before DONALD E. ADAMS, JEFFREY N. FREDMAN, and
TAWEN CHANG, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from Examiner’s
decision to reject claims 1–17 (see Appeal Br. 4). 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 (Appellant’s October 5, 2020, Appeal Brief
(Appeal Br.) 2).
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STATEMENT OF THE CASE
Appellant’s discloses:
An oral care composition, including a structurant
including a carboxypolymethylene polymer, a humectant
including glycerin, a whitening agent including hydrogen
peroxide, and a carrier including water, wherein the oral care
composition has a pH from about 4 to about 6, a transmission
rate of at least 58 %, a refraction index of about 1.40 or less,
and a transmission loss rate of 2 % or less at a surface interface
due to refraction of light, for light in the wavelength of about
400 nm to about 420 nm.
(Spec.2, Abstr.) Appellant discloses, “the term structurant refers to a
material that may not only thicken the oral care composition, but may also
maintain the oral care composition in a homogenous state. That is, one
where phase separation is minimized over time” (Spec. ¶ 43).
Claims 1, 2, 8, 13, and 17 are reproduced below:
1. A homogenous oral care composition, comprising:
from about 2 weight % to about 6 weight % of a
structurant comprising a carboxypolymethylene polymer, based
on a total weight of the oral care composition;
from about 20 weight % to about 40 weight % of a
humectant comprising glycerin, based on the total weight of the
oral care composition;
from about 0.1 weight% to about 15 weight% of a
whitening agent comprising hydrogen peroxide, based on the
total weight of the oral care composition; and
at least 40 weight % of a carrier comprising water, based
on the total weight of the oral care composition,
wherein the oral care composition has a pH from about 4
to about 6,

2 Appellant’s July 18, 2018, Specification.
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wherein the oral care composition has a transmission rate
of at least 58 % for light in the wavelength of about 400 nm to
about 420 nm,
wherein the oral care composition has a refraction index
of about 1.40 or less for light in the wavelength of about 400
nm to about 420 nm, and
wherein the oral care composition has a transmission loss
rate of 2 % or less at a surface interface due to refraction of
light in the wavelength of about 400 nm to about 420 nm.
(Appeal Br. 21.)
2. The oral care composition of claim 1, wherein all the
ingredients of the oral care composition are orally acceptable
and water-soluble.
(Id.)
8. The oral care composition of claim 1, further comprising:
0.01 weight % or less of a stabilizer, based on the total
weight of the oral care composition;
from about 0.5 weight % to about 2.0 weight % of a pH
regulating agent, based on the total weight of the oral care
composition;
from about 0.1 weight % to about 2.0 weight % of a
flavorant, based on the total weight of the oral care
composition; and
from about 0.1 weight% to about 5.0 weight% of a
hypersensitivity agent, based on the total weight of the oral care
composition,
wherein the flavorant is water-soluble and is not oil-
based.
(Id. at 22.)

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13. A homogenous oral care composition, consisting
essentially of:
about 3 weight% of a structurant comprising a
carboxypolymethylene polymer, based on a total weight of the
oral care composition;
from about 30 weight % to about 35 weight % of a
humectant comprising glycerin, based on the total weight of the
oral care composition;
from about 6 weight % to about 9 weight % of a
whitening agent comprising hydrogen peroxide, based on the
total weight of the oral care composition; and
at least 40 weight % of an aqueous carrier, based on the
total weight of the oral care composition,
wherein all the ingredients of the oral care composition
are orally acceptable and watersoluble,
wherein the oral care composition has a static yield of
about 30 Pa or more, and
wherein a hydrogen peroxide content of the oral care
composition is greater than about 70% of an initial hydrogen
peroxide content of the oral care composition, after 13 weeks of
aging at 40 °C.
(Id. at 23.)
17. The oral care composition of claim 13, wherein the oral
care composition is a teeth whitening gel configured for use
with a mouth tray and a light source.
(Id. at 24.)

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Grounds of rejection before this Panel for review:3
Claims 1–5, 7, and 10–12 stand rejected under 35 U.S.C. § 102(a)(1)
as anticipated by Tambs.
Claims 1, 7, and 10–12 stand rejected under 35 U.S.C. § 102(a)(1) as
anticipated by Sharma.
Claims 8 and 9 stand rejected under 35 U.S.C. § 103 as unpatentable
over Tambs.
Claims 2–6, 8, 9, and 13–17 stand rejected under 35 U.S.C. § 103 as
unpatentable over Sharma.

Anticipation:
ISSUE
Does the preponderance of evidence on this record support
Examiner’s finding that Tambs and Sharma each teach Appellant’s claimed
invention?
ANALYSIS
Appellant’s claim 1, reproduced above, is drawn to a homogeneous
oral care composition, i.e. a composition for application to teeth, such as a
teeth whitening gel (see Spec. ¶ 5).

3 “Examiner acknowledges that . . . claim [17] was inadvertently included in
the 102 rejections of Tambs et al.[, US 2006/0140882 A1, published June
29, 2006 (Tambs)] and Sharma et al.[, US 2007/0231277 A1, published Oct.
4, 2007 (Sharma)], but should have only been included in the 103
rejection . . . [over] Sharma” (Ans. 10). Appellant’s January 20, 2021,
Reply Brief addresses Examiner’s rejection of claim 17 as obvious over
Sharma. Therefore, we find Examiner’s typographical error on this record
harmless and, therefore, modified the following grounds of rejection to
correctly identify the rejection of Appellant’s claim 17.
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Appellant’s claims require the homogeneous oral care composition to
contain, inter alia, a structurant, which Appellant’s Specification defines as
“a material that . . . maintain[s] the oral care composition in a homogenous
state. That is, one where phase separation is minimized over time” (Spec.
¶ 43). As Appellant explains, its “claims recite that the composition be a
homogenous (i.e., single phase) composition” (Appeal Br. 8).

The anticipation over Tambs:
Tambs discloses a two phase oral care composition (see Tambs,
Abstract; see also Appeal Br. 8 (Appellant explains that “the oral care
composition disclosed by Tambs is a dual phase composition” (emphasis
omitted)); Final Act.4 3). Tambs discloses that the first and second phases of
its oral care composition are both, independently, dentifrice, i.e. oral care,
compositions (see, e.g., Tambs ¶¶ 13 and 14). Therefore, we are not
persuaded by Appellant’s unsupported assertion that “[n]either [of Tambs’]
phase[s] is suitable or intended for use on its own” (Reply Br.5 2).
Examiner finds that one phase of Tambs’ two-phase composition,
specifically a dentrifrice composition having Formula A2, anticipates
Appellant’s claimed composition (see Final Act. 3–4 (citing Tambs, page 10,
Table 1, Formula A2); see also Ans.6 4 (Examiner finds that Tambs “is
anticipatory insofar as it teaches a single composition, Formula A2”)).
Stated differently, Examiner finds that Tambs disclosure of an oral care

4 Examiner’s May 4, 2020, Final Office Action.
5 Appellant’s January 20, 2021, Reply Brief.
6 Examiner’s November 20, 2020, Answer.
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composition, specifically the dentrifrice composition having Formula A2,
anticipates Appellant’s claimed invention.
Examiner further finds that Appellant’s Specification discloses that
“‘carboxypolymethylene copolymer’ is identified in . . . [Appellant’s]
Specification as a structurant,” which maintains Appellant’s composition in
homogeneous state (Ans. 4). Examiner, therefore, reasons that a
composition having Tambs’ Formula A2 is “homogeneous insofar as it
comprises a carboxypolymethylene copolymer” in a concentration range that
falls within the scope of Appellant’s claimed invention (id.).
We find no error in Examiner’s prima facie case of anticipation.
Appellant’s claim 1 is directed to an oral care composition, i.e. a
dentifrice, not a method of using a dentifrice. Thus, Tambs’ disclosure of
using two different dentifrice compositions in combination does not
diminish Tambs’ express disclosure of a dentifrice, i.e. oral care,
composition that anticipates Appellant’s claim 1.
For the foregoing reasons, we are not persuaded by Appellant’s
contention that Tambs does not teach Appellant’s claimed composition
because Tambs uses a composition, that anticipates Appellant’s claimed
composition, together with another composition (see Appeal Br. 7 (citing
Tambs, page 10, Table 1, Formulas A1–A2) (Appellant contends that
Examiner relies on a component, Formula A2, of Tambs’ oral care
composition, which Tambs discloses “is combined prior to use with [a
second composition, specifically Tambs’] Formula A1 . . . to produce . . .
Tambs oral care composition); id. at 7–8 (Appellant contends that “Tambs
does not disclose or suggest the use of its A2 Formula for anything other
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than combination with [Formula] A1 to produce its oral care composition”);
see also Reply Br. 2–3).
For the foregoing reasons, we are not persuaded by Appellant’s
contention that Tambs does not disclose that the combination of a dentifrice
composition having Formula A1 with a dentifrice composition having
Formula A2 will result in a homogeneous composition or that the
combination of these two dentifrice compositions would likely result in a pH
outside Appellant’s claimed invention (see Appeal Br. 9; see also Reply Br.
2–3).
Tambs’ dentifrice composition having Formula A2 does not contain
titanium dioxide (see Tambs, page 10, Table 1, Formula A2). Therefore, we
are not persuaded by Appellant’s contentions regarding titanium dioxide (see
Appeal Br. 8–9; see also Reply Br. 2).

The anticipation rejection over Sharma:
Sharma discloses:
a container for housing and dispensing dentifrice compositions
and that includes a first chamber containing therein a first
dentifrice composition that includes a non-abrasive whitening
agent and at least one thickener, a second chamber containing
therein a second dentifrice composition that includes an
abrasive polishing material, at least one thickener, a proteolytic
enzyme and a rheology modifier that is not susceptible to
enzymatic degradation, where the first and second dentifrice
compositions are isolated one from the other until the
substantially simultaneous co-extrusion from the container, and
to whitening compositions containing the co-extruded first and
second dentifrice compositions.
(Sharma, Abstr. (emphasis added); see also Appeal Br. 11–12.) Examiner
finds that Sharma’s first non-abrasive dentifrice composition anticipates
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Appellant’s claim 1 (see Final Act. 4–5 (citing Sharma ¶ 61)). Specifically,
Examiner finds that Sharma discloses a composition
consisting of 45.33% purified water, 30% glycerin, 17.14%
(5.99%) hydrogen peroxide (35% solution), 0.12% sodium
saccharin, 0.16% calcium disodium EDTA, 1.8% Carbomer
(Carbopol Ultrez 10) (about 2% carboxypolymethylene
polymer), 3% PEG 400 hydrogenated castor oil, 0.2% menthol,
1 % wintergreen mint flavor, 0.8% glycine and 0.45%
potassium hydroxide (pH regulating agent) (to pH 5.5) (p. 6,
Example 1a).
(Final Act. 4–5 (emphasis omitted).) In this regard, Examiner finds that
Sharma “is anticipatory insofar as it teaches a carboxypoly-methylene
copolymer within about 2-6%, glycerin with about 20-40%, hydrogen
peroxide within about 0.1 %-15%, more than 40% water, and a pH within
about 4-6, all in a single” dentifrice composition (id. at 5).
Examiner further finds that because Sharma discloses a composition
that “contains substantially the same components in the same relative
proportions as instantly claimed, it would be expected to inherently possess
the same chemical and physical properties” (Final Act. 5; see also Ans. 6).
See In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (“Where, as here, the
claimed and prior art products are identical or substantially identical, or are
produced by identical or substantially identical processes, the PTO can
require an applicant to prove that the prior art products do not necessarily or
inherently possess the characteristics of his claimed product.”).
We find no error in Examiner’s prima facie case of anticipation.
Appellant does not dispute that Sharma’s first non-abrasive dentifrice
composition comprising a structurant comprising a carboxypolymethylene
polymer, hemectant comprising glycerin, a whitening agent comprising
hydrogen peroxide, water and a pH within the ranges set forth in Appellant’s
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claim 1. Instead, Appellant contends that Sharma does not anticipate
Appellant’s claim 1, because Sharma discloses the use of its first
composition in combination with another composition (see Appeal Br. 11–
12; see also Reply Br. 3–4). We are not persuaded. Appellant’s claim 1 is
directed to an oral care composition, i.e. a dentifrice, not a method of using a
dentifrice. Thus, Sharma’s disclosure of using two different dentifrice
compositions in combination does not diminish Sharma’s express disclosure
of a dentifrice, i.e. oral care, composition that anticipates Appellant’s claim
1.
For the foregoing reasons, we are not persuaded by Appellant’s
contention that Sharma does not teach Appellant’s claimed composition
because Sharma uses a composition, that anticipates Appellant’s claimed
composition, together with another composition (see Appeal Br. 11–12).
CONCLUSION
The preponderance of evidence on this record supports Examiner’s
finding that Tambs teaches Appellant’s claimed invention. The rejection of
claim 1 under 35 U.S.C. § 102(a)(1) as being anticipated by Tambs is
affirmed. Claims 2–5, 7, and 10–12 are not separately argued and fall with
Appellant’s claim 1.
The preponderance of evidence on this record supports Examiner’s
finding that Sharma teaches Appellant’s claimed invention. The rejection of
claim 1 under 35 U.S.C. § 102(a)(1) as being anticipated by Sharma is
affirmed. Claims 7 and 10–12 are not separately argued and fall with
Appellant’s claim 1.

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Obviousness:
ISSUE
Does the preponderance of evidence relied upon by Examiner support
a conclusion of obviousness?
ANALYSIS
The rejection over Tambs:
Appellant’s claim 8, reproduced above, depends directly from and
further limits Appellant’s claim 1 to comprise:
0.01 weight % or less of a stabilizer, based on the total
weight of the oral care composition;
from about 0.5 weight % to about 2.0 weight % of a pH
regulating agent, based on the total weight of the oral care
composition;
from about 0.1 weight % to about 2.0 weight % of a
flavorant, based on the total weight of the oral care
composition; and
from about 0.1 weight% to about 5.0 weight% of a
hypersensitivity agent, based on the total weight of the oral care
composition,
wherein the flavorant is water-soluble and is not oil-
based.
For the reasons discussed above, we find no error in Examiner’s
finding that Tambs anticipates and, therefore, makes obvious Appellant’s
claim 1. See Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed.
Cir. 1983) (“anticipation is the epitome of obviousness.”).
We also find no error in Examiner’s reasoning that a range of “0.01
weight % or less” includes zero and, thus, Appellant’s claim 8 reads on a
composition that contains no, i.e., 0%, stabilizer. Thus, we are not
persuaded by Appellant’s unsupported assertion “that the broadest
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reasonably interpretation of the phrase ‘0.01 weight % or less stabilizer’
would mean the inclusion of some amount of stabilizer up to 0.01 weight%”
(Appeal Br. 14 (emphasis omitted); see also Reply Br. 4–5). See In re
Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (“Attorney’s argument in a
brief cannot take the place of evidence.”).
Regarding the remaining elements of Appellant’s claim 8, Examiner
finds that Tambs discloses that its
compositions comprise thickeners (p. 5, para. [0054]), pH
modifying agents such as sodium hydroxide for adjusting the
pH “from about 3.5 to about 6.5”, as per claim 6 (p. 6, para.
[0060]), desensitizing agents (hypersentivity agent) e.g.
potassium nitrate (p. 8, para. [0077]) and flavorants, including
non-oil based flavorants such as "flavoring aldehydes" (p. 6,
para. [0062]).
(Final Act. 6.) With regard to flavorants, Tambs discloses:
Flavorants among those useful herein include any material or
mixture of materials operable to enhance the taste of the
composition. Any orally acceptable natural or synthetic
flavorant can be used, such as flavoring oils, flavoring
aldehydes, esters, alcohols, similar materials, and combinations
thereof. Flavorants include vanillin, sage, marjoram, parsley
oil, spearmint oil, cinnamon oil, oil of wintergreen
(methylsalicylate), peppermint oil, clove oil, bay oil, anise oil,
eucalyptus oil, citrus oils, fruit oils and essences including those
derived from lemon, orange, lime, grapefruit, apricot, banana,
grape, apple, strawberry, cherry, pineapple, etc., bean- and nut-
derived flavors such as coffee, cocoa, cola, peanut, almond,
etc., adsorbed and encapsulated flavorants, and mixtures
thereof. Also encompassed within flavorants herein are
ingredients that provide fragrance and/or other sensory effect in
the mouth, including cooling or warming effects. Such
ingredients include menthol, menthyl acetate, menthyl lactate,
camphor, eucalyptus oil, eucalyptol, anethole, eugenol, cassia,
oxanone, α-irisone, propenyl guaiethol, thymol, linalool,
benzaldehyde, cinnamaldehyde, N-ethyl-p-menthan-3-
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carboxamine, N,2,3-trimethyl-2-isopropylbutanamide, 3-1-
menthoxypropane-1, 2-diol, cinnamaldehyde glycerol acetal
(CGA), methone glycerol acetal (MGA), and mixtures thereof.
(Tambs ¶ 62 (emphasis added).) Thus, based on Tambs, Examiner
concludes that, before the effective filing date of Appellant’s claimed
invention, it would have been prima facie obvious “to select a non-oil based
flavorant, hydrogen peroxide as pH adjusting agent, and potassium nitrate as
hypersensitivity agent, as well as optimize a range for each, given their plain
enumeration in the prior art” (id. at 7). See In re Geisler, 116 F.3d 1465,
1470 (Fed. Cir. 1997) (“‘[I]t is not inventive to discover the optimum or
workable ranges by routine experimentation.’”) (quoting In re Aller, 220
F.2d 454, 456 (CCPA 1955)). We find no error in Examiner’s prima facie
case of obviousness.
Appellant contends that because Tambs discloses both water and non-
water soluble flavorants it would not have been obvious to select water
soluble flavorants from Tambs list (see Appeal Br. 15 (Appellant contends
that “[t]he specific flavoring aldehydes listed in . . . [Tambs] paragraph [62],
however, benzaldehyde and cinnamaldehyde, are not water soluble”); see
also Reply Br. 5–6). We are not persuaded. “Disclos[ure of] a multitude of
effective combinations does not render any particular formulation less
obvious.” Merck & Co. Inc. v. Biocraft Laboratories, Inc., 874 F.2d 804,
807 (Fed. Cir. 1989). See also Sinclair & Carroll Co. v. Interchemical
Corp., 325 U.S. 327, 335 (1945) (“Reading a list and selecting a known
compound to meet known requirements is no more ingenious than selecting
the last piece to put into the last opening in a jig-saw puzzle. It is not
invention.”). Appellant does not identify, and we do not find, an evidentiary
basis on this record to support a conclusion that any particular flavorant
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listed in Tambs would exhibit unexpectedly superior flavorant properties
over any other listed flavorant. Instead, Tambs leaves the selection of a
particular flavorant, i.e. water or non-water soluble, to those of ordinary skill
in this art. On this record, Appellant selected water soluble flavorants, a
choice made obvious by Tambs’ disclosure.
As discussed above, Tambs’ composition having Formula A2
anticipates Appellant’s claimed composition. As further discussed above,
Tambs’ disclosure of using two different dentifrice compositions in
combination does not diminish Tambs’ express disclosure of a dentifrice, i.e.
oral care, composition within the scope of Appellant’s claim 8. Therefore,
we are not persuaded by Appellant’s contentions regarding a combination of
Tamb’s Formula A2, with a composition having Tamb’s Formula A1 (see
Appeal Br. 14).
Appellant fails to establish an evidentiary basis to support a
conclusion that any composition within the scope of Tamb’s Formula A1
would not exhibit the optical properties recited in Appellant’s claimed
invention. Therefore, we are not persuaded by Appellant’s contention that
“[b]ecause there is no suggestion of the use of Tambs’ composition with a
light source, there is no motivation to select or modify the Tambs
components to achieve a composition having the optical properties recited in
the claims” (Reply Br. 4; see also Appeal Br. 13–14). See In re Pearson,
494 F.2d at 1405 (“Attorney’s argument in a brief cannot take the place of
evidence.”).

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The rejection over Sharma:
As discussed above, Sharma anticipates and, therefore, makes obvious
Appellant’s claim 1 (cf. Appeal Br. 15 (Appellant contends that “Sharma
does not anticipate [Appellant’s] claim 1”)). “[A]nticipation is the epitome
of obviousness.” Connell v. Sears, Roebuck & Co., 722 F.2d 1548 (Fed. Cir.
1983)).

Claims 2–3:
Appellant’s claim 2, reproduced above, depends from and further
limits Appellant’s claim 1 to require that “all the ingredients of the oral care
composition are orally acceptable and water-soluble. Appellant’s claim 3
depends from and further limits Appellant’s claim 1 to require that “the oral
care composition lacks oil-based or non-water-soluble ingredients” (see
Appeal Br. 21).
As discussed above, Appellant does not dispute that Sharma’s first
non-abrasive dentifrice composition comprising a structurant comprising a
carboxypolymethylene polymer, hemectant comprising glycerin, a whitening
agent comprising hydrogen peroxide, water and a pH within the ranges set
forth in Appellant’s claim 1. Further, although Sharma discloses that its first
composition may, if desired, comprise an abrasive material, Sharma makes
clear that its first composition “typically will be substantially non-abrasive,
such that they are essentially free of or free of abrasive materials” (Sharma
¶ 32).
Examiner finds that Sharma discloses a dentifrice composition within
the scope of Appellant’s claimed invention that is orally acceptable and does
not require water insoluble components (see Ans. 8 (Examiner finds “there
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is no requirement to have water-insoluble ingredients in . . . [Sharma’s]
compositions”)). Although Appellant disputes Examiner’s conclusion,
Appellant failed to establish an evidentiary basis on this record to support a
conclusion that Sharma’s first composition must contain water-insoluble
ingredients (see Appeal Br. 15–16). Thus, we are not persuaded by
Appellant’s contention that “Sharma does not disclose compositions wherein
all ingredients are water soluble” (id. at 17; see also Reply Br. 7). See In re
Pearson, 494 F.2d at 1405 (“Attorney’s argument in a brief cannot take the
place of evidence.”).
For the foregoing reasons, we find that the weight of the evidence on
this record falls in favor of Examiner’s conclusion of obviousness.
Because Sharma discloses a composition that falls within the scope of
Appellant’s claimed invention, we are not persuaded by Appellant’s
contention that Sharma discloses a use for this composition that differs from
Appellant’s contemplated use (see Appeal Br. 16–17).

Claims 4–5:
Appellant’s claim 4 depends from and further limits Appellant’s claim
1 to require that “the structurant comprises at least one of Carbopol 974 NF,
Carbopol 980 NF, and Carbopol 971P NF” (Appeal Br. 21). Appellant’s
claim 5 depends from and further limits Appellant’s claim 1 to require that
“the structurant consists essentially of Carboopl 974 NF” (id.).
Sharma discloses that the thickener of its first composition may be
carboxypolymethylene, wherein “[s]uitable carboxypolymethylene
compositions may be obtained from B. F. Goodrich Company under the
tradename “CARBOPOL”. Suitable Carbopol® thickeners include
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Carbopol® 934, 940, 941, 956, Carbopol® ETD 2001, ETD 2020, ETD
2050, Carbopol® Ultrez 10 and mixtures thereof” (Sharma ¶ 23 (emphasis
added)). Sharma expressly discloses the specific Carbopol® thickeners that
are suitable for its compositions and these thickeners do not include
Carbopol 974 NF, Carbopol 980 NF, and Carbopol 971P NF, as required by
Appellant’s claimed invention. Thus, the evidence of record fails to support
Examiner’s conclusion that it would have been prima facie obvious to
modify Sharma’s composition to include “Carbopol 974 as the
carboxypolymethylene since the prior art teaches use of ‘Carbopol’
carboxypolymethylene compounds generally” (Final Act. 7; cf. Appeal Br.
17; Reply Br. 7).

Claim 6:
Appellant’s claim 6 depends from and further limits Appellant’s claim
1 to comprise: “about 3 weight % of the structurant; from about 30 weight
% to about 35 weight % of the humectant; and from about 6 weight % to
about 9 weight % of the whitening agent, wherein the oral care composition
has a pH from about 4.8 to about 5.8” (Appeal Br. 22).
Sharma discloses that its first composition comprises a structurant, i.e.
carboxypolymethylene thickener in a “range from about 0.1% to about
50% . . . by weight of the composition” and whitening agent “in an amount
of . . . from about 1% to about 10% by weight of the composition” (Sharma
¶¶ 22–24). In addition, Sharma discloses a first composition comprising 30
wt.% of the humectant, glycerin, wherein the composition has a pH of 5.5
(see id. ¶ 61). “[W]here there is a range disclosed in the prior art, and the
claimed invention falls within that range, there is a presumption of
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obviousness.” Iron Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317,
1322 (Fed. Cir. 2004); see also In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir.
1997) (“‘[I]t is not inventive to discover the optimum or workable ranges by
routine experimentation.’”) (quoting In re Aller, 220 F.2d 454, 456 (CCPA
1955)). Therefore we are not persuaded by Appellant’s contention that
Sharma does not make obvious a composition that falls within the scope of
Appellant’s claim 6 (see Appeal Br. 16; see also Reply Br. 7).

Claim 8:
For the reasons discussed above, we also find no error in Examiner’s
reasoning that a range of “0.01 weight % or less” includes zero and, thus,
Appellant’s claim 8 reads on a composition that contains no, 0%, stabilizer
(cf. Appeal Br. 18; Reply Br. 8).
A reference disclosure is not limited only to its preferred
embodiments, but is available for all that it discloses and suggests to one of
ordinary skill in the art. In re Lamberti, 545 F.2d 747, 750 (CCPA 1976);
see also In re Susi, 440 F.2d 442, 446 n.3 (CCPA 1971) (Disclosed
examples and preferred embodiments do not constitute a teaching away from
a broader disclosure or non-preferred embodiments.). Therefore, we are not
persuaded by Appellant’s contention that although “Sharma has a general
disclosure of . . . [hypersensitivity agents, Sharma] avoids them in the
formulations of the examples” (Appeal Br. 18; see also Reply Br. 8).
As Examiner explains, Example 1a of Sharma . . . comprises 0.2% [L-
Menthol] . . ., which is water-soluble and not oil based” (Ans. 9). Therefore,
we are not persuaded by Appellant’s contention that “Sharma contains no
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teaching regarding water-soluble flavorants” (Appeal Br. 18; see also Reply
Br. 8).

Claim 13:
Appellant’s claim 13 is reproduced above.
A reference disclosure is not limited only to its preferred
embodiments, but is available for all that it discloses and suggests to one of
ordinary skill in the art. In re Lamberti, 545 F.2d at 750. As discussed
above, Sharma discloses a homogenous first oral care composition
containing a structurant, i.e. carboxypolymethylene polymer thickener in a
“range from about 0.1% to about 50% . . . by weight of the composition”
(Sharma ¶¶ 23–24). Therefore, we are not persuaded by Appellant’s
contention that “[e]xample 1a of Sharma contains only 1.8% of a carbomer
polymer, not ‘about 3%,’ and there is no motivation to select this particular
value” (Appeal Br. 19; see also Reply Br. 8).
Appellant relies on the concentration of carbomer polymer in
Sharma’s Example 1a to contend that Sharma fails to make obvious a
composition having a static yield of about 30 Pa or more’” (Appeal Br. 19;
see also Reply Br. 8–9). We are not persuaded. Not only is Sharma not
limited to its preferred, or exemplified, embodiments, Sharma discloses that
its composition comprises an amount of thickener to raise “the viscosity of
the first composition . . . to from about 200 to about 1,000,000 cps at low
shear rates” (id. ¶ 24). “[W]here there is a range disclosed in the prior art,
and the claimed invention falls within that range, there is a presumption of
obviousness.” Iron Grip Barbell Co., 392 F.3d at 1322; see also In re
Geisler, 116 F.3d at 1470 (“‘[I]t is not inventive to discover the optimum or
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workable ranges by routine experimentation.’”). In sum, Appellant failed to
identify an evidentiary basis on this record to support a conclusion that
Sharma fails to make obvious a composition having “a static yield of about
30 Pa or more” (id.). See In re Pearson, 494 F.2d at 1405 (“Attorney’s
argument in a brief cannot take the place of evidence.”).
For the foregoing reasons, we are not persuaded by Appellant’s
contention that the composition set forth in Sharma’s example 1a “is not an
‘oral care composition,’” because Sharma uses this composition in
combination with another composition (Appeal Br. 19). Therefore, we are
not persuaded by Appellant’s contention that if the composition disclosed in
example 1a of Sharma is mixed with the higher pH composition set forth in
another example of Sharma “the stability of the hydrogen peroxide would be
lowered, as hydrogen peroxide is generally more stable at lower pH”
(Appeal Br. 19).
“By using the term ‘consisting essentially of,’ the drafter signals that
the invention necessarily includes the listed ingredients and is open to
unlisted ingredients that do not materially affect the basic and novel
properties of the invention.” PPG Indus. Inc. v. Guardian Indus. Corp, 156
F.3d 1351, 1354 (Fed. Cir. 1998). Appellant contends that “[t]he component
formulation of Example 1a of Sharma, for example, requires ingredients,
such as 3% PEG 400 castor oil and 0.16% EDTA, not required by claim 13”
(Appeal Br. 19). Appellant fails, however, to establish an evidentiary basis
on this record to support a conclusion that these additional ingredients would
materially affect the basic and novel properties of Sharma’s composition (cf.
Reply Br. 9 (Appellant contends that the additional components present in
the composition set forth in Sharma’s Example 1a “could materially affect
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the basic and novel characteristics of the claimed invention”)). Thus, we are
not persuaded by Appellant’s contentions regarding the transitional phrase
“consisting essentially of” (Appeal Br. 19; Reply Br. 9).

Claim 17:
Appellant’s claim 17, reproduced above, depends from and further
limits Appellant’s claim 13 to require that the oral care composition is a
teeth whitening gel configured for use with a mouth tray and a light source.
Sharma discloses that its “first composition typically is in the form of
a gel that will have characteristics such as stand-up and viscosity similar to
traditional gel dentifrice compositions” (Sharma ¶ 20). We find no
persuasive evidence on this record to support a conclusion that Sharma’s gel
is not capable of being used with a mouth tray and a light source. Therefore,
we are not persuaded by Appellant’s contention that “the rejection of claim
17 as being obvious in view of Sharma should be withdrawn” (Reply Br.
10).

CONCLUSION
The preponderance of evidence relied upon by Examiner supports a
conclusion of obviousness with respect to the rejection over Tambs. The
rejection of claims 9 under 35 U.S.C. § 103 as unpatentable over Tambs is
affirmed. Appellant’s claim 9 is not separately argued and falls with
Appellant’s claim 8.
The preponderance of evidence relied upon by Examiner supports a
conclusion of obviousness with respect to the rejection of claims 2, 3, 6, 8, 9,
and 13–17 over Sharma. The rejection of claims 2, 3, 6, 8, 9, and 13–17
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under 35 U.S.C. § 103 as unpatentable over Sharma is affirmed. Appellant’s
claim 9 is not separately argued and falls with Appellant’s claim 8.
The preponderance of evidence relied upon by Examiner fails to
support a conclusion of obviousness with respect to the rejection of claims 4
and 5 over Sharma. The rejection of claims 4 and 5 under 35 U.S.C. § 103
as unpatentable over Sharma is reversed.

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–5, 7,
10–12
102(a)(1) Tambs 1–5, 7,
10–12

1, 7, 10–12 102(a)(1) Sharma 1, 7,
10–12

8, 9 103 Tambs 8, 9
2–6, 8, 9,
13–17
103 Sharma 2, 3, 6, 8,
9, 13–17
4, 5
Overall
Outcome
1–17
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) (2019).

AFFIRMED