Shashank Potnis et al.

Patent Trials and Appeals Board

Mar 9, 2020

14770901 - (D) (P.T.A.B. Mar. 9, 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.
14/770,901 08/27/2015 Shashank Potnis 9491-00-US-01-OC 8904
23909 7590 03/09/2020
COLGATE-PALMOLIVE COMPANY
909 RIVER ROAD
PISCATAWAY, NJ 08855
EXAMINER
LAZARO, DOMINIC
ART UNIT PAPER NUMBER
1611
NOTIFICATION DATE DELIVERY MODE
03/09/2020 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 SHASHANK POTNIS,
RAVI SUBRAMANYAM, and NAVIN LEWIS
__________

Appeal 2018-007566
Application 14/770,901
Technology Center 1600
__________

Before RICHARD M. LEBOVITZ, JEFFREY N. FREDMAN, and
MICHAEL A. VALEK, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal1 under 35 U.S.C. § 134(a) involving claims directed
to a toothpaste product. The Examiner rejected the claims as obvious. We
have jurisdiction under 35 U.S.C. § 6(b). We affirm.

Statement of the Case
Background
“Soluble zinc salts, such as zinc citrate, have been used in dentifrice
compositions . . . but may react with common excipients in dentifrice to

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 Appeal Br. 2).
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form insoluble salts and so reduce delivery of the zinc to the tooth surface”
(Spec. ¶ 1). “The invention provides, in one embodiment, formulations to
enhance the delivery of Zn++ ions from a zinc ion source, e.g., zinc oxide
and/or zinc citrate, onto hard tissue surfaces e.g., hydroxyapatite (HAP),
from a calcium carbonate dentifrice, to obtain enhanced antibacterial
efficacy” (id. ¶ 6).
The Claims
Claims 1–3, 5–12, 17, and 18 are on appeal.2 Claim 1 is
representative and reads as follows:
1. A toothpaste product comprising
a first dentifrice comprising a calcium carbonate
abrasive,
a second dentifrice comprising a zinc ion source in a gel
base, and
a container which holds the first dentifrice physically
separate from the second dentifrice until the dentifrices are
dispensed,
wherein the amount of first dentifrice relative to the
second dentifrice is from 3:1 to 5:1.

The issues
A. The Examiner rejected claims 1–3, 5, 6, 8, 10–12, 17, and 183 under
35 U.S.C. § 103(a) as obvious over Williams4 and Kiozpeoplou5 (Final Act.
3–15).

2 The Examiner notes that claims 13 and 14 are withdrawn from
consideration (see Advisory Act. 1).
3 The Examiner allowed entry of claims 17 and 18 in the Advisory Action
mailed 8/27/2015 and further addressed these claims in the Examiner’s
Answer (see, e.g., Ans. 16).
4 Williams et al., US 5,616,313, issued Apr. 1, 1997.
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B. The Examiner rejected claims 3, 6, and 7 under 35 U.S.C. § 103(a) as
obvious over Williams, Kiozpeoplou, and Winston6 (Final Act. 19–21).
C. The Examiner rejected claim 9 under 35 U.S.C. § 103(a) as obvious
over Williams, Kiozpeoplou, and Ramsay7 (Final Act. 22–23).

A. 35 U.S.C. § 103(a) over Williams and Kiozpeoplou
The Examiner finds that Williams teaches a dual dentrifice with zinc
in a first dentrifice and calcium carbonate in the second dentrifice that are
kept in separate chambers of a dual compartment dispenser (see Final Act.
4). The Examiner also finds that Williams teaches the use of a gel form (see
id. at 5). The Examiner acknowledges that Williams teaches a 1:1 ratio of
the first and second dentrifices and does not teach “wherein the amount of
first dentifrice relative to the second dentifrice is from 3:1 to 5:1” as recited
by claim 1 (see id. at 5).
The Examiner finds that Kiozpeoplou teaches an effervescing dual
dentrifice with a bicarbonate first portion and acidic second portion and
teaches a range of the “weight ratio of the first portion to the second portion
of about 0.5:1 to 40:1” (Final Act. 9).
The Examiner finds it obvious to use Kiozpeoplou’s ranges for the
two portions of the dual dentrifice because the ranges overlap with those
claimed and because the ranges would be optimized for desired amounts of
effervescence (see Final Act. 10–11).

5 Kiozpeoplou, US 4,487,757, issued Dec. 11, 1984.
6 Winston et al., WO 94/26245 A1, published Nov. 24, 1994.
7 Ramsay, US 6,036,933, issued Mar. 14, 2000.
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The issue with respect to this rejection is: Does a preponderance of
the evidence of record support the Examiner’s finding that Williams and
Kiozpeoplou render the claims obvious?
Findings of Fact
1. Williams teaches a “combination of zinc and bicarbonate salts
deliver a very potent inhibitory effect against gingival and periodontal tissue
damage. It has been further established that such effect requires the zinc and
bicarbonate salts to be separately packaged prior to their introduction into
the oral cavity” (Williams 3:17–22).
2. Williams teaches the “first composition, i.e. the composition
with zinc salt, preferably is a gel” (Williams 3:54–55).
3. Williams teaches the “bicarbonate second composition may
also contain” “an abrasive in addition to the bicarbonate. Abrasives may be
selected from . . . calcium carbonate” (Williams 4:58; 5:16–20).
4. Table I of Williams is reproduced below:

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Table I of Williams “illustrates a dual-paste dentifrice” that comprises a first
paste with zinc and a second paste with calcium carbonate (see Williams
6:63 to 7:18).
5. Williams teaches that in Example 3, “[e]qual amounts of the
first and second pastes are added to respective chambers of a dual
compartment dispenser . . . the consumer applies pressure to the dispenser
thereby causing extrusion of strands of the first and second pastes which are
deposited onto a toothbrush” (Williams 7:19–26).
6. Williams teaches that after the composition in Example 2, with
both an acid and sodium bicarbonate, are “dispensed from the package
[they] combine to form an effervescent mouthwash” (Williams 6:57–59).
7. Williams teaches “[r]elative weight amounts of the first
composition to that of the second composition will range from about 1:2 to
2:1, preferably about 1:1. Each component may be kept isolated in a separate
compartment of a dispenser” (Williams 5:41–44).
8. Kiozpeoplou teaches
a container of dentifrice, in one part of which sodium
bicarbonate has been successfully stabilized due to the presence
of a suitable water insoluble dental abrasive, and in a second
part of which there is contained an ingredient to induce a
reaction with the previously stabilized bicarbonate and thereby
provide the user with an effervescent sensation and the
desirable cleaning effects of the in situ generated carbon
dioxide gas.
(Kiozpeoplou 3:13–21).
9. Kiozpeoplou teaches the “first portion of the toothpaste
preferably usually contains at least about 15%, and preferably about 15 to
50% of sodium bicarbonate” (Kiozpeoplou 5:18–20).
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10. Kiozpeoplou teaches “[i]t is preferred for the supplementing
polishing agent to be calcium carbonate” (Kiozpeoplou 5:38–39).
11. Kiozpeoplou teaches the “second portion of the toothpaste of
the invention, which is maintained physically separate from the first portion
prior to extrusion from the toothpaste container, comprises . . . about 1 to
20% by weight of said second portion of an acidic compound . . . which is
reactive . . . to cause the bicarbonate to effervesce” (Kiozpeoplou 10:11–22).
12. Kiozpeoplou teaches “[a]cidic compounds which can be present
in the second portion are malic acid, alginic acid; citric acid” (Kiozpeoplou
11:1–2).
13. Kiozpeoplou teaches the “portions of the toothpaste present in
the dispensing container are in a weight ratio of the first portion to the
second portion of about 0.5:1 to 40:1, preferably about 0.7:1 to 20:1, more
preferably about 0.8:1 to 5:1 and most preferably (usually) about 1:1”
(Kiozpeoplou 5:1–5).
Principles of Law
A prima facie case for obviousness “requires a suggestion of all
limitations in a claim,” CFMT, Inc. v. Yieldup Int’l Corp., 349 F.3d 1333,
1342 (Fed. Cir. 2003) and “a reason that would have prompted a person of
ordinary skill in the relevant field to combine the elements in the way the
claimed new invention does.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
418 (2007).
Analysis
We adopt the Examiner’s findings of fact and reasoning regarding the
scope and content of the prior art (Final Act. 3–15; FF 1–13) and agree that a
preponderance of the evidence supports the Examiner’s determination the
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claims are rendered obvious by Williams and Kiozpeoplou. We address
Appellant’s arguments below.
Appellant contends the “range disclosed in Williams (from about 1:2
to 2:1) does not overlap or is not even close to the claimed range (from 3:1
to 5:1) of the amount of first dentifrice comprising a calcium carbonate
abrasive relative to the second dentifrice comprising a zinc ion source
recited in claims 1 and 12” (Appeal Br. 5). Appellant contends
“Kiozpeoplou does not disclose or teach any range of the ratio of the first
dentifrice comprising calcium carbonate to the second dentifrice
comprising a zinc ion source” (id. 5–6). Appellant contends
Kiozpeoplou’s acidic second portion is different from
Williams’ “First” component. Since citric acid is not an
essential component of Williams’ composition and Williams
does not discuss anything regarding effervescence, one of skill
in the art would not be motivated to modify Williams’ dual-
paste toothpaste comprising zinc salts and calcium carbonate in
order to optimize effervescence for “mouthfeel effect”.
(id. 7).
We are not persuaded. As the Examiner pointed out, “effervescence
is clearly a result-effective variable” mentioned as desirable by both
Williams and Kiozpeoplou (FF 6, 8, 11; Ans. 6). Indeed, even Williams’
toothpaste of Table 1 shows a first paste with citric acid and a second paste
with sodium bicarbonate (FF 4), reasonably suggesting a desire for
effervescence because Kiozpeoplou evidences that the ordinary artisan knew
the combination of these components results in effervescence (FF 8).
The ordinary artisan, motivated by Kiozpeoplou to generate an
effervescent toothpaste composition (FF 8, 11) using a variety of ratios of
first bicarbonate and second acidic pastes (FF 13) would have reasonably
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incorporated zinc into the second paste of Kiozpeoplou because Williams
teaches a “combination of zinc and bicarbonate salts deliver a very potent
inhibitory effect against gingival and periodontal tissue damage. It has been
further established that such effect requires the zinc and bicarbonate salts to
be separately packaged prior to their introduction into the oral cavity” (FF
1).8
Thus, the ordinary artisan would have had reason to combine the
disclosures of Kiozpeoplou and Williams in order to form a two part dental
composition that not only treated gingivitis and periodontal disease (FF 1)
but also resulted in effervescence with the “desirable cleaning effects of the
in situ generated carbon dioxide gas” (FF 8).
We are unpersuaded by Appellant’s argument that “citric acid is not
an essential component of Williams’ composition” and therefore one would
not be motivated to combine William’s teachings regarding a zinc portion
with those in Kiozpeoplou’s regarding acidic pastes (see Appeal Br. 7)
because the claims use the open, comprising, format and do not exclude the
use of both citric acid and zinc. See Georgia-Pacific Corp. v. U.S. Gypsum
Co., 195 F.3d 1322, 1327 (Fed. Cir. 1999) (The transitional term
“comprising” is “inclusive or open-ended and does not exclude additional,
unrecited elements.”)
Moreover, Appellant’s argument addresses Williams and Kiozpeoplou
individually rather than the combination of the prior art as a whole. “Non-

8 We note that “where a rejection is predicated on two references each
containing pertinent disclosure . . . we deem it to be of no significance, but
merely a matter of exposition, that the rejection is stated to be on A in view
of B instead of on B in view of A, or to term one reference primary and the
other secondary.” In re Bush, 296 F.2d 491, 496 (CCPA 1961).
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obviousness cannot be established by attacking references individually
where the rejection is based upon the teachings of a combination of
references . . . . [The reference] must be read, not in isolation, but for what it
fairly teaches in combination with the prior art as a whole.” In re Merck &
Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). When read together, Williams
discusses effervescence in a mouthwash context (FF 6) and teaches the
benefits of bicarbonate and calcium carbonate abrasive in one paste (FF 3)
and zinc in another paste for periodontal disease (FF 1), while Kiozpeoplou
teaches the benefits of bicarbonate in one paste and an acid in the other for
effervescence and cleaning effects (FF 8, 11). Thus, in combination,
Williams and Kiozpeoplou provide reasons to form a two part toothpaste
composition with a first dentrifice having bicarbonate and a calcium
carbonate abrasive in one paste (FF 1, 3, 8, 9) with zinc and an acid in a
second paste (FF 1, 2, 11, 12).
Appellant contends “the claimed range (from 3:1 to 5:1) of the
amount of first dentifrice comprising a calcium carbonate abrasive relative
to the second dentifrice comprising a zinc ion source would still not be
obvious” (Appeal Br. 7). Appellant contends:
The Examiner has not provided any articulated reason why one
of skill in the art would be motivated to modify Williams’
toothpaste by changing the ratio of the first dentifrice
comprising calcium carbonate to the second dentifrice
comprising a zinc ion source to the claimed ratio (from 3:1 to
5:1), ignoring Williams’ teachings that “relative weight
amounts of the first composition to that of the second
composition will range from about 1:2 to 2:1, preferably about
1:1.”
(id. 8).
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We find this argument unpersuasive because “discovery of an
optimum value of a result effective variable in a known process is ordinarily
within the skill of the art.” In re Boesch, 617 F.2d 272, 276 (CCPA 1980).
As Appellant acknowledges, Williams recognizes that the relative weight
amounts of the first and second toothpaste compositions are variables that
may be optimized (FF 7). Kiozpeoplou further supports the desire to
optimize first and second toothpaste compositions in teaching a variety of
different weight ratios, ranging from 0.5:1 to 40:1, though usually preferring
1:1 (FF 13). Thus, when the references are read together, the ordinary
artisan would have recognized that the relative weight amounts of the first
and second toothpaste compositions were optimizable variables. See In re
Aller, 220 F.2d 454, 456 (CCPA 1955) (“[W]here the general conditions of a
claim are disclosed in the prior art, it is not inventive to discover the
optimum or workable ranges by routine experimentation.”).
The law is replete with cases in which the difference
between the claimed invention and the prior art is
some range or other variable within the claims . . . in
such a situation, the applicant must show that the
particular range is critical, generally by showing that
the claimed range achieves unexpected results relative
to the prior art range.
In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990).
Appellants have not provided evidence that the claimed ratio is critical
or achieves unexpected results
Appellant responds that Williams disclosed ranges “are not mere
examples or preferred embodiments. Williams discloses no broader
disclosure or nonpreferred embodiment falling within the scope of claims 1
and 12” (Appeal Br. 8).
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We find this argument unpersuasive for two reasons. First, Williams
does not teach away, discredit, or discourage the use of broader ranges, but
rather simply teaches a preferred range (FF 7). Second, the rejection relies
upon the combination of Williams with Kiozpeoplou, which expressly
teaches ranges that overlap with those claimed, providing reasons to
optimize within the ranges disclosed by the entirety of the prior art. “A
prima facie case of obviousness typically exists when the ranges of a
claimed composition overlap the ranges disclosed in the prior art.” In re
Applied Materials, 692 F.3d 1289, 1295 (Fed. Cir. 2012) (citing In re
Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003)). Applied Materials does
not limit the analysis to the primary reference recited in the prior art, but
address the situation where the “combination of the various dimensions from
the different pieces of prior art was also obvious. The mere fact that
multiple result-effective variables were combined does not necessarily
render their combination beyond the capability of a person having ordinary
skill in the art.” Applied Materials, 692 F.3d at 1298. The same situation
applies here, where the use of the weight ranges of Kiozpeoplou for the first
and second toothpastes with those of Williams would have been optimizable
by the ordinary artisan at the time of filing (FF 7, 13).
Appellant contends the “only basis for beneficial effects of the
claimed ratio (from 3:1 to 5:1) of the first dentifrice comprising calcium
carbonate to the second dentifrice comprising a zinc ion source is found in
Appellants' disclosure, the use of which is impermissible” (Appeal Br. 8).
We are not persuaded. While we are aware that hindsight bias may
plague determinations of obviousness, Graham v. John Deere Co., 383 U.S.
1, 36 (1966), we are also mindful that the Supreme Court has clearly stated
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that the “combination of familiar elements according to known methods is
likely to be obvious when it does no more than yield predictable results.”
KSR, 550 U.S. at 416. Here, incorporation of zinc into one part of dual part
dentrifices in order to inhibit periodontal tissue damage is disclosed by
Williams (FF 1), while Kiozpeoplou teaches two part effervescent
compositions produce desirable cleaning effects (FF 8). Thus, as already
discussed above, the ordinary artisan would have had reason to use the zinc
of Williams in the two part effervescence composition of Kiozpeoplou in
order to obtain both the periodontal and cleaning benefits. Both Williams
and Kiozpeoplou identify the weight ratios of the two parts as results-
effective variables (FF 7, 13) and Kiozpeoplou teaches weight ratios
overlapping the claimed range. Thus, the entire necessary disclosure to
obtain two part dentrifices with zinc in one portion, a calcium carbonate
abrasive in the other physically separate portion, and weight ratios
overlapping the claimed range are present in the prior art teachings of
Williams and Kiozpeoplou (FF 1–13).
Conclusion of Law
A preponderance of the evidence of record support the Examiner’s
finding that Williams and Kiozpeoplou render the claims obvious

B. 35 U.S.C. § 103(a) over Williams, Kiozpeoplou, and Winston
Appellant contends:
There is no teaching or suggestion anywhere in Williams that
zinc oxide would be incorporated into Williams’ first
composition. Although Winston shows an advantage of zinc
oxide particle over zinc citrate and zinc sulfate in Example 1,
the experiment was performed using zinc oxide, zinc citrate and
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zinc sulfate suspensions, but not using dual-paste dentifrices
comprising a zinc salt and a bicarbonate salt.
(Appeal Br. 10).
We are not persuaded. Williams teaches the use of zinc to protect
against periodontal damage (FF 1, 2). Winston teaches that zinc oxide is
used in a large number of prior art oral care products (see Winston 3:21 to
7:22) and specifically teaches zinc oxide in dentrifices (see Winston 9:30–
31) because “[o]ral care compositions containing zinc oxide exhibit
enhanced anti-plaque properties” (id. at 10:8–9). Winston also teaches “the
lingering unpleasant metallic and astringent taste of most zinc salts is
absent” (id. at 10:26–27). Thus, we agree with the Examiner that the
ordinary artisan would have found it obvious to select the zinc oxide of
Winston for use in the dentrifice of Williams in order to avoid unpleasant
tastes and obtain the periodontal protection and anti-plaque properties of
zinc (FF 1; Winston 9:30–31; 10:26–27).

C. 35 U.S.C. § 103(a) over Williams, Kiozpeoplou, and Ramsay
Appellant does not separately argue this obviousness rejection, instead
relying upon their arguments to overcome the combination of Williams and
Kiozpeoplou. Having affirmed the obviousness of claim 1 for the reasons
given above, we also find that the further combination with Ramsay renders
the rejected claims obvious for the reasons given by the Examiner (see Final
Act. 22–23).
DECISION
In summary:

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Claims
Rejected
35 U.S.C. § Reference(s) Affirmed Reversed
1–3, 5, 6, 8,
10–12, 17, 18
103(a) Williams,
Kiozpeoplou
1–3, 5, 6, 8,
10–12, 17, 18

3, 6, 7 103(a) Williams,
Kiozpeoplou,
Winston
3, 6, 7
9 103(a) Williams,
Kiozpeoplou,
Ramsay
9
Overall
Outcome
1–3, 5–12,
17, 18

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)(iv).

AFFIRMED