Kocinska, Agnieszka et al.

Patent Trials and Appeals Board

Jan 16, 2020

15846944 - (D) (P.T.A.B. Jan. 16, 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.
15/846,944 12/19/2017 Agnieszka Kocinska 11109-00-US-01-OC 2399
23909 7590 01/16/2020
COLGATE-PALMOLIVE COMPANY
909 RIVER ROAD
PISCATAWAY, NJ 08855
EXAMINER
SHOMER, ISAAC
ART UNIT PAPER NUMBER
1612
NOTIFICATION DATE DELIVERY MODE
01/16/2020 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 AGNIESZKA KOCINSKA, JENNIFER GRONLUND,
HALLENA STROTMAN, and SUMAN CHOPRA1
____________

Appeal 2019-005125
Application 15/846,944
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. 2.

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Application 15/846,944

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SUMMARY
Appellant files this appeal under 35 U.S.C. § 134(a) from the
Examiner’s Final Rejection of claims 1–14 and 17. Specifically, claims 1–
14 and 17 stand rejected as unpatentable under 35 U.S.C. § 103 over
Maloney et al. (WO 2015/095709 A1, June 25, 2015) (“Maloney”).
Claims 9 and 10 stand rejected as unpatentable under 35 U.S.C. § 103
over the combination of Maloney and Brignoli et al. (US 2008/0152599 A1,
June 26, 2008) (“Brignoli”).
Claims 1–14 and 17 also stand provisionally rejected as unpatentable
under the nonstatuatory doctrine of obviousness-type double patenting over
claims 1–4, 7, 9, 11, 25, 31, 35, 41, 43, and 44 of US Application No.
15/106,412 (the “’412 application”).
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

NATURE OF THE CLAIMED INVENTION
Appellant’s invention is directed to a teeth whitening dentrifice
composition with a longer-lasting whitening benefit. Spec. ¶ 10.

REPRESENTATIVE CLAIM
Claim 1 is representative of the claims on appeal and recites:
1. A whitening dentifrice composition comprising:
a blue coloring agent comprising a blue pigment, wherein
the blue coloring agent has a blue to blue-violet color with a hue
angle in the CIELAB system ranging from 200 degrees to 320
degrees;
from about 15 to about 25 weight% of a zinc core shell
silica (Zn-CSS) particle, wherein the Zn-CSS particle comprises
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a silica core, and a surface of the silica core etched with a metal
silicate, wherein the metal silicate is a silicate of zinc ion and
optionally a monovalent metal ion; and
an orally acceptable vehicle comprising a non-aqueous
solvent and water, wherein the whitening dentifrice composition
is free from peroxide whitening agents and oxidants.

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

A. Claims 1–14 and 17 under 35 U.S.C. § 103
Issue
Appellant argues the claimed range of from about 15 to about 25
weight % of a zinc core shell silica (“Zn-CSS”) particle provides for an
unexpected increase in the retention time of a blue pigment on teeth. App.
Br. 4.

Analysis
The Examiner finds Maloney teaches a tooth whitening composition
including a blue dye with a hue angle in the CIELAB system ranging from
200 to 320 degrees. Final Act. 3–4 (citing Maloney, Abstr.). The Examiner
finds Maloney teaches the tooth whitening composition includes an amount
of Zn-CSS particle in the range of about 2 weight %. Id. at 4 (citing
Maloney ¶¶ 54, 147). The Examiner finds Maloney teaches the tooth
whitening composition includes an orally acceptable vehicle including a
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non-aqueous solvent and water, but is free of peroxide whitening agents. Id.
at 5 (citing Maloney, Abstr. ¶ 23).
The Examiner acknowledges that Maloney teaches a concentration of
Zn-CSS particles outside of the range recited in claim 1. Final Act. 4.
However, the Examiner finds Maloney teaches the concentration of Zn-CSS
particles is “a result-effective variable because the concentration affects the
antibacterial and anti-malodor properties of the composition.” Id. at 4–5
(citing Maloney ¶¶ 43, 45). The Examiner determines “it would not have
been inventive to have discovered the optimum or workable ranges of the
concentration of the Zn-CSS particle by routine experimentation.” Id. at 4.
With respect to Appellant’s argument regarding unexpected results,
the Examiner determines the disclosed results are insufficient to overcome
prima facie obviousness in view of the prior art. Ans. 7. First, the Examiner
finds the results are not unexpected because “the skilled artisan would have
expected that a larger percentage of tooth whitening active (i.e., Zn-CSS)
would have resulted in a greater amount of tooth whitening.” Id. at 7–8.
Second, the Examiner finds Appellant’s data unclear. Id. at 8. The
Examiner finds the data indicates that a composition containing 0 weight %
Zn-CSS particles, i.e., Control 3 in Table 4, shows better retention than a
composition containing 10 weight % Zn-CSS particles, i.e., Example 2 in
Table 2. Id. (citing Spec. 29 (Table 2), 32 (Table 4)).
Appellant asserts that the Specification includes empirical data that
demonstrates the claimed range of Zn-CSS particles is critical to the
retention time of pigment on the teeth. App. Br. 4. Appellant contends that
the empirical data shows a Zn-CSS particle concentration of 10 weight %
shows a significant decrease in retention time of pigment on teeth in contrast
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with a 22 weight % concentration which shows no decrease in retention
time. Id. (citing Spec. 28–29 (Tables 1 and 2); 32 (Table 4)). Appellant
contends that “[t]his increase of the retention time is unexpected in view of
Maloney,” particularly where “every formulation disclosed in Maloney
shows a decrease in [retention] over time.” Id.
Appellant does not address the Examiner’s comparison of Example 2
to Control 3. Reply Br. 2. Rather, Appellant reiterates that Example 3,
containing 22% Zn-CSS particles, has unexpected improvement in color
retention as compared to Control 3, containing 0% Zn-CSS particles. Id.
In the Reply Brief, Appellant submits a new argument that the
proposed modification to Maloney is improper because Maloney indicates
amounts of Zn-CSS as little as 1–2 weight % are preferred.2 Reply Br. 2–3.
Appellant raises a new argument in the Reply Brief and without good cause.
Ex parte Borden, 93 U.S.P.Q.2d 1473–1474 (B.P.A.I. 2010) (informative)
(“The reply brief is not an opportunity to make arguments that could have
been made during prosecution, but were not. Nor is the reply brief 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”). Also,
because “[a]ny bases for asserting error, whether factual or legal, that are not
raised in the principal brief are waived,” we do not consider these belated
arguments. Id.
We are not persuaded by Appellant’s evidence of alleged unexpected
results because the evidence does not establish “that there is a difference

2 We note that disclosed examples and preferred embodiments do not
constitute a teaching away from a broader disclosure or non-preferred
embodiments. In re Susi, 440 F.2d 442, 446 n.3 (C.C.P.A. 1971)
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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).
We begin with what would have been expected in view of the prior
art. We agree with the Examiner that Maloney teaches the amount of core
shell silica, e.g., Zn-CSS, is a result-effective variable. Final Act. 4–5.
Contrary to Appellant’s argument, Maloney expressly teaches “the addition
of CSS to the formula results in similar deposition of blue dye but an
increase in the retention time of the dye on teeth.” See Maloney ¶ 148.
Maloney further teaches that additional components of the formulation may
affect retention time as “a low water formula containing CSS can improve
the retention of blue dye on teeth.” Id. ¶¶ 149, 152. In summary, Maloney
teaches that it was not unexpected that the combination of several factors,
including the addition of Zn-CSS, would have improved the retention time
of the whitening dentifrice.
Moreover, were we persuaded that the results were indeed
unexpected, the data in the Specification is not commensurate with the scope
of the claims. In re Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005).
Appellant compares data for a 10 weight % Zn-CSS formulation with a 22
weight % Zn-CSS formulation to argue that the range of “from about 15 to
about 25 weight %” is critical. See App. Br. 4. However, there is no data
regarding the lower end of the range, e.g., about 15 weight %. See Spec.
supra. Because Appellant cites only a single data point that is “at or near the
midpoint of the claimed range … the record does not show that the improved
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performance would result if the weight-percentages were varied within the
claimed range.” Harris, 409 F.3d at 1344.
Appellant’s empirical results further indicate that retention time is not
merely a function of the amount of Zn-CSS. Appellant contends that
Example 3 containing 22 weight % Zn-CSS shows improved retention as
compared to Control 3 containing 0 weight % Zn-CSS in Table 4,
reproduced below.

Spec. 32. Δb* is a measurement of blue dye deposition and ΔWIO is the
change in whiteness over time. Id. ¶¶ 124–128. As noted by the Examiner,
Examples 1 and 2, each containing 10 weight % Zn-CSS, were characterized
by lower ΔWIO after 30 minutes than the composition containing 0 weight
% Zn-CSS, as shown in Tables 1 and 2, reproduced below.

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Id. at 28–29. Rather than establish criticality, a comparison of the results
between Examples indicates that some other non-claimed feature affects
retention time. Notably, Examples 1 and 2 include 0.05 weight %
dye/pigment and 10 weight % Zn-CSS in glycerin, in contrast to Control 3
and Example 3 which contain pigment, glycerin, polyethylene glycol,
sorbitol, water, thickener, and sodium fluoride, in addition to 0 weight % or
22 weight % Zn-CSS. Id. at 30 (Table 3: Whitening Dentrifice Composition
Comprising Blue Pigment). Because numerous factors other than the
amount of Zn-CSS appear to affect retention time, Appellant’s evidence
does not show that the alleged unexpected results are commensurate with the
scope of the claims. Accordingly, we are not persuaded by Appellant’s
arguments.

B. Claims 1–14 and 17 are unpatentable under the non-statutory doctrine
of obviousness-type double patenting
The Examiner provisionally rejected claims 1–14 and 17 over claims
1–4, 7, 9, 11, 25, 31, 35, 41, 43, and 44 of Application No. 15/106,412.
Final Act. 15–16. Appellant requests that the rejection be held in abeyance
until at least one claim of the present application is in condition for
allowance. App. Br. 5. Because Appellant does not substantively address
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the rejection, we summarily affirm the Examiner’s rejection on this ground.
See 37 C.F.R. § 41.37(c)(iv)

CONCLUSION
The rejection of claims 1–14 and 17 as unpatentable under 35 U.S.C.
§ 103 is affirmed.
The rejection of claims 1–14 and 17 as unpatentable under the non-
statutory doctrine of obviousness-type double patenting 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).

AFFIRMED

Claims
Rejected
35 U.S.C. § Reference/Basis Affirmed Reversed
1–14, 17 103 Maloney 1–14, 17
9, 10 103 Maloney, Brignoli 9, 10
1–14, 17 Non-statutory
double-
patenting
Claims 1–4, 7, 9, 11, 25,
31, 35, 41, 43, 44 of
Application No.
15/106,412
1–14, 17
Overall
Outcome
1–14, 17