Pan, Guisheng et al.

Patent Trials and Appeals Board

Jan 29, 2020

15101153 - (D) (P.T.A.B. Jan. 29, 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.
15/101,153 06/02/2016 Guisheng Pan 10118-00-US-01-OC 1571
23909 7590 01/29/2020
COLGATE-PALMOLIVE COMPANY
909 RIVER ROAD
PISCATAWAY, NJ 08855
EXAMINER
WEBB, WALTER E
ART UNIT PAPER NUMBER
1612
NOTIFICATION DATE DELIVERY MODE
01/29/2020 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 GUISHENG PAN, PRAKASARAO MANDADI,
LIN FEI, and SUMAN KUMAR CHOPRA
____________

Appeal 2019-005101
Application 15/101,153
Technology Center 1600
____________

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

KATZ, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 seeks our review, under 35 U.S.C. § 134(a), of the
Examiner’s decision to reject claims 1–3 and 5–20 (Appeal Brief filed
March 18, 2019) (“App. Br.”) 3, 5.)
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. (See App. Br. 2.)
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INTRODUCTION
Appellant’s Specification provides a teeth cleaning and whitening
dentifrice containing a stabilized peroxide, particularly hydrogen peroxide
(“H2O2”) complexed with polyvinylpyrrolidone (“PVP”). (Specification
filed January 16, 2018 (“Spec.”) ¶¶ 1, 2.) PVP-H2O2 complexes are
described in US Pat. No. 5,122,370, which the Specification incorporates by
reference. (Id.) The Specification describes phase separation and bloating
as significant challenges for gel dentifrices containing peroxides. (Id. ¶ 3.)
Unacceptable phase separation can be observed by the unaided eye after
storage for 24 hours. (Id. ¶ 12.) The Specification describes single-phase
dentifrices that are stable during long term storage and include a crosslinked
PVP complexed with H2O2 and a fatty amphiphile, e.g., stearyl alcohol or
cetyl alcohol. (Id. ¶ 5.)
Appellant’s claim 1 recites:
A phase separation stable dentifrice composition
comprising:

a whitening complex comprising a water insoluble
crosslinked polyvinylpyrrolidone complexed with
hydrogen peroxide;

a fatty amphiphile selected from fatty C12 to C28
alcohols or mixtures thereof in an amount of about 0.1 to
about 20% by weight of the composition; and

an ethylene oxide-propylene oxide block
copolymer.

(App. Br. 8.)
The Examiner rejects the claims as follows:
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Claims
Rejected
35 U.S.C. § Reference(s)/Basis Final Office
Action
1–3, 5–20 112(a) Written Description 2–4
1–3, 5–20 103 LeBlanc,2 Zaidel3 4–8

ANALYSIS
35 U.S.C. § 112(a), Written Description
The Examiner finds the instant claims recite new matter not supported
by the original disclosure, specifically “a water insoluble crosslinked
polyvinylpyrrolidone . . . .” (Final Action dated October 18, 2018 (“Final
Act.”) 3, emphasis added.) The Examiner finds the disclosure of
Polyplasdone XL-10 in the original disclosure does not support the instant
claims because Polyplasdone XL-10 is only one species of water insoluble
crosslinked polyvinylpyrrolidone. (Id.) The Examiner finds that
Polyplasdone XL-10 is not representative of the genus of water insoluble
crosslinked polyvinylpyrrolidone due to variation within the genus in grade,
particle size, peroxide specification, bulk density and tap density.
(Examiner’s Answer dated April 17, 2019 (“Ans.”) 4–5.)
Additionally, the Examiner finds Appellant’s incorporation by
reference of US Pat. No. 5,122,370 (“the ’370 patent”)4 does not provide
written description support for the instant claims. (Id. at 4.) The Examiner
finds that the ’370 patent teaches PVP-H2O2 complexes for treating acne
vulgaris and not for whitening teeth. (Id.) The Examiner finds the ’370

2 LeBlanc et al., US 2009/0246151 A1, published Oct. 1, 2009.
3 Zaidel et al., US 2008/0145321 A1, published June 19, 2008.
4 Merianos et al., US 5,122,370, issued June 16, 1992.
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patent discloses a method of making an insoluble PVP-H2O2 complex and
does not mention crosslinking. (Id.) Thus, the Examiner finds that a skilled
artisan would not have understood that the inventor possessed the claimed
invention based on an objective inquiry of the Specification. (Id.)
Appellant argues the Specification discloses water-insoluble
polyvinylpyrrolidones used in PVP-H2O2 complexes as a class by
incorporating the ’370 patent by reference. (App. Br. 3., citing Spec. ¶ 2.)
Appellant argues the ’370 patent discloses both water-soluble and water-
insoluble polyvinylpyrrolidones, as well as a method of forming a water-
insoluble PVP-H2O2 complex. (Id., citing the ’370 patent, 2:32–41.)
Appellant argues further that the original specification as filed
discloses a whitening complex formed of H2O2 and commercially available
crosslinked polyvinylpyrrolidone, i.e., Polyplasdone XL-10. (Id. at 4.)
Appellant argues that Polyplasdone XL-10 was known in the art as a water
insoluble crosslinked polyvinylpyrrolidone, as shown by extrinsic evidence.
(Id., citing Polyplasdone Product Overview.5) Appellant argues that, in view
of the known composition of Polyplasdone XL-10 at the time the application
was filed, the originally filed application reasonable conveyed possession to
those of ordinary skill in the art. (Id.)
We are persuaded by Appellant. “What is required to meet the written
description requirement ‘varies with the nature and scope of the invention at
issue, and with the scientific and technologic knowledge already in
existence.’” Capon v. Eshhar, 418 F.3d 1349, 1357 (Fed. Cir. 2005). Both

5 Ashland Inc., PolyplasdoneTM crospovidone superdisintegrants, Product
Overview (2012), made of record in the Response filed August 3, 2018.
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Appellant’s Specification and the prior art cited by the Examiner establish
that water insoluble crosslinked PVP-H2O2 complexes were well known and
commercially available in the art. The Specification as a whole refers to
whitening complexes comprising “crosslinked polyvinylpyrrolidone.” (See
Spec. supra.) The Specification provides a specific example of crosslinked
polyvinylpyrrolidone, Polyplasdone XL-10. (Id. ¶¶ 15–16.) Appellant
established that a person of ordinary skill in the art would have recognized
crosslinked Polyplasdone XL-10 as water-insoluble, as shown by the
Polyplasdone Product Overview. (Polyplasdone Product Overview 1.)
Notably, despite all of the varying grades of Polyplasdone, the species are
commonly referred to as “synthetic, insoluble, crosslinked homopolymers of
N-vinyl-2-pyrrolidone.” (Id.)
The prior art confirms what would have been understood by a person
of ordinary skill in the art at the time the application was filed. The ’370
patent, incorporated by reference, discloses a PVP-H2O2 complex including
“crospovidone XL10 (water-insoluble cross polymerized PVP).” (See Reply
Brief filed June 17, 2019 (“Reply Br.”) 2, citing ’370 patent, 4:25–35.)
More generally, the ’370 patent explains that “[c]rospovidone is an example
of an available water-insoluble PVP material.” (’370 patent, 2:56–57.)
Moreover, Zaidel, cited by the Examiner to reject the claims, teaches that
PVP-H2O2 complexes preferably include “insoluble crosslinked”
polyvinylpyrrolidone homopolymers, referred to as “cross-povidone, and
cPVP.” (Zaidel ¶ 34.)
As shown by the Specification and the prior art, water-insoluble
crosslinked PVP-H2O2 complexes were well known and described in the art.
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The compounds were not new or unknown materials that ordinarily skilled
artisans would easily miscomprehend. See Amgen Inc. v. Hoechst Marion
Roussel, Inc., 314 F.3d 1313, 1332 (Fed. Cir. 2003). Because we find that
the disclosure of the application relied upon reasonably conveys to those
skilled in the art that the inventor possessed the claimed subject matter as of
the filing date, we reverse the Examiner’s rejection for lack of written
description.6

35 U.S.C. § 103, Obviousness over LeBlanc and Zaidel
The Examiner finds LeBlanc teaches oral care compositions, e.g.,
dentifrices, containing a fatty amphiphile, e.g., cetyl alcohol and stearyl
alcohol, in an amount of about 0.05% to about 30%. (Final Act. 5, citing
LeBlanc Abstr.; ¶¶ 13, 32.) The fatty amphiphile forms a dispersed gel
network that may aid in stabilizing a peroxide whitening agent. (Id., citing
LeBlanc ¶ 68.) The Examiner finds that LeBlanc teaches oral compositions
must have a desired shelf stability as well as be viscous enough to fill into a
container. (Id., citing LeBlanc ¶ 4.) The Examiner finds that LeBlanc’s oral
compositions include two phases, a fatty amphiphile dispersed gel network
phase and an oral carrier phase, that “cannot be distinguished” by the naked
eye. (Id. at 9–10, citing LeBlanc ¶ 20.)
The Examiner acknowledges that LeBlanc does not teach a dentifrice
including a crosslinked PVP-H2O2 complex and an ethylene oxide-propylene

6 We do not address the Examiner’s objection to the Specification as
amended. Final Act. 2. “The propriety of ‘objections’ and other procedural
requirements is solely within the jurisdiction of the Commissioner of
Patents.” Ex parte C, 27 USPQ2d 1492, 1494 n.3 (BPAI 1992).
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oxide block copolymer. (Id. at 7.) The Examiner finds these claimed
components are taught by Zaidel. (Id.) Particularly, the Examiner finds
Zaidel teaches oral compositions including crosslinked PVP-H2O2
complexes, wherein the PVP polymer is preferably an insoluble crosslinked
homopolymer. (Id., citing Zaidel ¶¶ 27, 34, 37.) The Examiner also finds
that Zaidel teaches the composition may include nonionic block copolymers
of ethylene oxide and propylene oxide, which are useful for providing
viscosity for the composition. (Id., citing Zaidel ¶ 50.)
The Examiner finds that it would have been obvious to a person of
ordinary skill in the art to combine Zaidel’s whitening agent and ethylene
oxide-propylene oxide copolymer with LeBlanc’s compositions based on the
recognized suitability of the ingredients for their intended use. (Id. at 7–8.)
Accordingly, the Examiner concludes the claims would have been prima
facie obvious over the prior art. (Id. at 8.)
Appellant argues “LeBlanc does not teach that the fatty amphiphiles
may impart phase-separation stability to the oral care composition.” (App.
Br. 6.) Rather, Appellant argues that LeBlanc teaches fatty amphiphiles
provide storage stability by preventing unwanted increases in viscosity over
long periods of time. (Id. at 5–6.)
We are not persuaded by Appellant’s argument. LeBlanc teaches oral
compositions containing fatty amphiphiles that are stable with respect to
viscosity and contain multiple phases that are indistinguishable to the naked
eye. (See LeBlanc ¶¶ 4, 20.) Thus, LeBlanc teaches fatty amphiphile-
containing compositions that are phase-separation stable. Moreover, the
Examiner has established the combined prior art teaches a composition
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substantially similar or identical to the claimed composition. Therefore, the
PTO can require an applicant to prove that the prior art products do not
necessarily possess the characteristics of the claimed product as the PTO
cannot manufacture products or obtain and compare prior art products. In re
Best, 562 F.2d 1252, 1255 (CCPA 1977). Appellant does not provide
evidence that contradicts the Examiner’s findings.
Appellant argues that a person of ordinary skill in the art would have
recognized that water-insoluble PVP would not have been suitable in
LeBlanc’s compositions because LeBlanc teaches water-soluble PVP as a
dispersing agent. (App. Br. 6.) Appellant argues that “the presence of
water-soluble polyvinylpyrrolidone directly impacts the resulting surface
tensions between components in the oral care composition.” (Id.)
We are not persuaded by Appellant’s argument. LeBlanc teaches
numerous fatty amphiphile-dispersing surfactants, including inter alia, water
soluble alkylated polyvinylpyrrolidone, such as butylated
polyvinylpyrrolidone. (LeBlanc ¶ 47.) Appellant provides no evidence that
this dispersing surfactant is incompatible with Zaidel’s water insoluble,
crosslinked PVP-H2O2 complex. “An assertion of what seems to follow
from common experience is just attorney argument and not the kind of
factual evidence that is required to rebut a prima facie case of obviousness.”
In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997). Moreover, that
LeBlanc teaches a number of various optional components, e.g., water-
soluble polyvinylpyrrolidone, does not constitute a teaching away from the
combination with Zaidel, absent any criticism or discouragement of the
combination. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).
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Appellant argues that the Specification demonstrates “unexpected
increase in phase-separation stability.” (App. Br. 6; see also Reply Br. 3.)
Appellant points to Examples 2-4 of the Specification which reportedly
show that when fatty amphiphiles are used in an oral care composition in
combination with water-insoluble, cross-linked polyvinylpyrrolidone, the
fatty amphiphiles impart an unexpected increase in phase-separation stability
not taught in LeBlanc. (See App. Br. 6–7.) According to Appellant, “the
data described in Examples 2-4 demonstrates the unexpected advancement
over the cited art, provided by the claimed invention.” (App. Br. 7.)
The Specification discloses working Examples 2–4, each containing
crosslinked PVP-H2O2 and an ethylene oxide-propylene oxide block
copolymer, among other components. (Spec. ¶¶ 52–54.) Examples 2 and 3
each contain 7% (w/w) fatty amphiphile, i.e., stearyl alcohol and cetyl
alcohol, respectively. (Id. ¶¶ 52, 53.) Example 4 contains 0% (w/w) fatty
amphiphile. (Id. ¶ 54.) The Specification discloses “Examples 2 and 3 . . .
are stable in that no phase separation is observed. Example 4 is not stable in
that a separation into two distinct phases is observed.” (Id. ¶ 55.) The
Specification does not provide any other data.
Appellant does not explain why phase separation is a significant
challenge for gel dentifrices containing peroxides, particularly water
insoluble crosslinked PVP-H2O2 complexes. Contrary to Appellant’s
characterization, the Examiner finds that because the compositions of
LeBlanc contain fatty amphiphiles one of ordinary skill in the art would
have expected the same compositions to be stable against phase separation.
(Ans. 8.)
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Appellant’s argument about unexpected results is not persuasive.
Evidence of unexpected results must establish an unexpected difference
between the results and the closest prior art. In re Baxter Travenol Labs.,
952 F.2d 388, 392 (Fed. Cir. 1991). We begin with what would have been
expected in view of the prior art. As discussed above, LeBlanc teaches fatty
amphiphiles may aid in stabilizing peroxide whitening agents in tooth
whitening dentifrices. (LeBlanc ¶ 68.) Moreover, LeBlanc teaches the need
for a composition with acceptable rheology and shelf stability, containing
multiple phases that cannot be visually distinguished. (LeBlanc ¶¶ 4, 20.)
Likewise, Zaidel teaches a teeth whitening composition including a water-
insoluble crosslinked PVP-H2O2 complex and an ethylene oxide-propylene
block copolymer that remains stable under accelerated aging conditions.
(See Zaidel ¶ 109.) Although the references do not directly address phase-
separation stability, Appellant fails to direct us to any statements in the
Specification or to any other evidence that phase-separation stability would
have been unexpected. See Geisler, 116 F.3d at 1470.
Moreover, the prior art cited by the Examiner includes fatty
amphiphiles, unlike Example 4, which is not stable. Therefore, the
comparison is not against the closest prior art. See Baxter Travenol, 952
F.2d at 392. Rather, in view of the prior art’s teachings of stable
compositions having non-distinct phases, we agree with the Examiner that it
seems likely that the prior art compositions would also have been stable
against phase separation. (See Ans. 8.) “Mere recognition of latent
properties in the prior art does not render nonobvious an otherwise known
invention.” 952 F.2d at 392.
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Accordingly, we affirm the Examiner’s rejection of claim 1.
Appellant does not provide separate arguments for the rejection of the
dependent claims. (See App. Br. 5–7.) Appellant does not provide any
separate arguments against the rejection of dependent claims 2, 3, and 5–20.
We also affirm the rejection of these dependent claims as being obvious
under 35 U.S.C. § 103.
CONCLUSION
Upon consideration of the record and the reasons given, the rejection
of claims 1–3 and 5–20 under 35 U.S.C. § 112(a), written description, is not
sustained.
The rejection of claims 1–3 and 5–20 under 35 U.S.C. § 103 is
sustained.
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–3, 5–20 112(a) Written Description 1–3, 5–20
1–3, 5–20 103 LeBlanc, Zaidel 1–3, 5–20
Overall
Outcome
1–3, 5–20

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136.

AFFIRMED