Tilo Poth et al.

Patent Trials and Appeals Board

Apr 17, 2020

14648187 - (D) (P.T.A.B. Apr. 17, 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.
14/648,187 05/28/2015 Tilo Poth 9852-00-US-01-GB 8119
23909 7590 04/17/2020
COLGATE-PALMOLIVE COMPANY
909 RIVER ROAD
PISCATAWAY, NJ 08855
EXAMINER
ROBERTS, LEZAH
ART UNIT PAPER NUMBER
1612
NOTIFICATION DATE DELIVERY MODE
04/17/2020 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 TILO POTH, ANDRE BRUNELLA, and ROBERT EICHLER1
Appeal 2019–001385
Application 14/648,187
Technology Center 1600
Before ERIC B. GRIMES, RICHARD M. LEBOVITZ, and
FRANCISCO C. PRATS, Administrative Patent Judges.
GRIMES, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to an oral
care composition for improving fluoride uptake, which have been rejected as
obvious. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
STATEMENT OF THE CASE
“This invention relates to an oral care composition comprising a
fluoride ion source and a buffer.” Spec. ¶ 1. “The invention further relates

1 Appellant identifies the real party in interest as Colgate-Palmolive
Company. Appeal Br. 2. We use the word Appellant to refer to “applicant”
as defined in 37 C.F.R. § 1.42(a).
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to the use of a buffer for controlling the pH of an oral care composition
comprising fluoride.” Id. “[F]luoride uptake from oral care products can be
increased by providing an oral care composition comprising a buffer that can
counteract the buffering effect of saliva and hold the pH of the oral care
composition at the slightly acidic level necessary to ensure formation of
CaF2 layers.” Spec. ¶ 5. “Optionally the buffer comprises an aqueous
solution of an acid and a salt of the acid, and the ratio of acid:salt is from 2:1
to 1:2.” Spec. ¶ 8. “[T]he buffer substance must . . . have a pKa close to the
desired pH that is to be kept constant.” Spec. ¶ 39. “The acid number of the
oral composition is at least greater than or equal to 4.5.” Id.
Claims 1, 4–9, and 12–28 are on appeal.2 Claim 1, reproduced below,
is illustrative:
1. An oral care composition for improving fluoride uptake
comprising
an orally acceptable vehicle,
a fluoride ion and
a buffer having a pKa of less than 7.0
wherein the buffer comprises an aqueous solution of an acid and
sodium or potassium salt of the acid, and wherein the ratio of acid:salt
is between 2:1 and 1:2,
wherein the pH of the oral composition is from 4.2 to 4.8,
wherein the oral composition has an acid number greater than 6.0,
wherein the acid is selected from succinic acid, malic acid and
combinations thereof, and
wherein the fluoride ion is an amine fluoride.

2 The Examiner included claims 10 and 11 in the rejections but these claims
were canceled in the amendment filed March 12, 2018. The amendment was
entered by the Examiner. See Advisory Action mailed April 3, 2018.
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The claims stand rejected as follows:
Claims 1, 4–7, 9, and 12–28 under 35 U.S.C. § 103(a) as being
unpatentable over Atsushi3 (Ans. 3);
Claims 1, 4–7, 9, and 12–28 under 35 U.S.C. § 103(a) as being
unpatentable over Kato4 (Ans. 4);
Claim 8 under 35 U.S.C. § 103(a) as being unpatentable over Atsushi
in view of Trivedi5 (Ans. 5);
Claim 8 under 35 U.S.C. § 103(a) as being unpatentable over Kato in
view of Trivedi (Ans. 6).
OPINION
Obviousness based on Atsushi
Claims 1, 4–7, 9, and 12–28 stand rejected under 35 U.S.C. § 103(a)
as being obvious over Atsushi. Ans. 3. The Examiner finds that “Atsushi et
al. disclose oral preparation comprising fluoride, an acid compound having a
pKa of 2.5 to 6.0 or salt thereof and water.” Ans. 3. The Examiner also
finds that Atsushi’s “composition has a pH ranging from 3.0 to 5.5,” “[t]he
acid to salt ratio ranges from 1:10 to 10:1,” where the “[a]cids include
succinic . . . and malic acids,” and “[t]he acids create a buffer system with a
salt.” Id. The Examiner finds that Atsushi discloses that “[f]luorides
include sodium fluoride, potassium fluoride and amine fluoride.” Id.
The Examiner reasons that “[t]he prior art does not disclose the exact
claimed values 1:2 to 2:1 acid to salt, but does overlap 1:10 to 10:1 acid to

3 Atsushi et al., US 2003/0124068 A1 (July 3, 2003).
4 Kato et al., US 2006/0099153 A1 (May 11, 2006).
5 Trivedi et al., US 2006/0140883 A1 (June 29, 2006).
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salt. In the case where claimed ranges ‘overlap or lie inside ranges disclosed
by the prior art’, a prima facie case of obviousness exists.” Id. at 4. The
Examiner concludes, “[t]herefore the composition of the instant claims [is]
obvious over Atsushi et al.” Id.
Appellant argues that “although Atsushi discloses amine fluoride in
the list of fluoride ion sources, Atsushi teaches that sodium fluoride and
ammonium fluoride are preferred.” Appeal Br. 5. Appellant also argues that
“Atsushi teaches that . . . the molar ratio of the acid to salt is preferably
adjusted to from 10:1 to 1:10 in order to impart them with a buffering
capacity. . . . The range recited in claim 1 is significantly narrower than the
range taught by Atsushi, corresponding to 20% of the Atsushi range.” Id.
at 6. Appellant argues:
The Examiner has not provided any articulated reason why one
of skill in the art would be motivated to choose a specific buffer
system as recited in claim 1 for Atsushi’s tooth whitening oral
composition by optimizing the ratio of acid to salt to arrive at
the 1:2 to 2:1 range and replace sodium fluoride . . . with an
amine fluoride.

Id.
Appellant also argues that “[t]he data in the present application shows
that fluoride uptake from oral care products containing an amine fluoride at
pH 4.5 can be increased by using a buffer comprising an aqueous solution of
an acid . . . and sodium or potassium salt of the acid.” Id. at 7.
We agree with the Examiner that the claimed composition would have
been obvious to a person of ordinary skill in the art based on Atsushi.
Atsushi is directed to an oral preparation comprising a fluorine ion supplying
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component, an acid compound having a pKa of 2.5 to 6.0 or salt thereof, and
water, and having a pH ranging from 3 to 5.5. Atsushi ¶¶ 7–10.
Atsushi explains that “[t]he present inventors have found that by
supplying fluoride ion in a buffer system maintained at a predetermined pH,
the teeth become white, smooth, and glossy without the treatment by an
expert.” Atsushi ¶ 6. “They have also revealed that under such conditions,
gradual formation of calcium fluoride on the surface . . . of the teeth can be
observed.” Id.
Atsushi states that “[n]o particular limitation is imposed on the
fluorine ion supplying component.” Atsushi ¶ 11. “Examples include
inorganic fluorides such as sodium fluoride, potassium fluoride, ammonium
fluoride and lithium fluoride and organic fluorides such as amine fluorides.”
Atsushi ¶ 11.
Thus, Atsushi lists amine fluorides as one of only five specific
examples of fluorine ion supplying components. Id. The fact that amine
fluoride is not listed as a preferred fluorine ion supplying component does
not defeat the case for obviousness as “in a section 103 inquiry, ‘the fact that
a specific [embodiment] is taught to be preferred is not controlling, since all
disclosures of the prior art, including unpreferred embodiments, must be
considered.’” Merck & Co. Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807
(Fed. Cir. 1989) (quoting In re Lamberti, 545 F.2d 747, 750 (CCPA 1976)).
Atsushi discloses that a variety of organic acids are suitable for use in
its composition (Atsushi ¶ 16), and states that “lactic acid, acetic acid, citric
acid, malic acid, succinic acid, tartaric acid and adipic acid [are] especially
preferred.” Id. ¶ 17 (emphasis added). “Examples of the salt of the acid
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compound include alkali metal salts such as sodium salts and potassium
salts.” Atsushi ¶ 18. Atsushi explains that “the salt of such an acid
compound can be added . . . and a buffer system of the acid compound
and/or salt thereof may be formed in the preparation.” Id. “To impart them
with a buffering capacity, the molar ratio of the acid to salt is preferably
adjusted to from 10:1 to 1:10.” Id. ¶ 19.
As noted above, Atsushi envisions a buffering system at a pKa within
the pKa range recited in claim 1, comprising succinic acid or malic acid and
the sodium or potassium salt thereof, at a pH range that encompasses the pH
range of claim 1, and with a range of acid:salt ratios that encompasses the
range of acid:salt ratios of claim 1. The fact that the claimed ranges of pH
and acid:salt ratio are narrower than the ranges taught by Atsushi does not
defeat the case for obviousness.
[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. But the presumption will be rebutted if it can
be shown: (1) That the prior art taught away from the claimed
invention, In re Geisler, 116 F.3d 1465, 1471 (Fed. Cir. 1997);
or (2) that there are new and unexpected results relative to the
prior art, In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990).

Iron Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317, 1322 (Fed. Cir.
2004).
Appellant provides no evidence indicating that Atsushi teaches away
from the claimed invention. Appellant argues that “[t]he range recited in
claim 1 is significantly narrower than the range taught by Atsushi,
corresponding to 20% of the Atsushi range.” Appeal Br. 6. However,
Appellant has not pointed to persuasive evidence that a ratio within the
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claimed range would not have been an obvious choice based on the
somewhat broader range taught by Atsushi.
Appellant also has not provided evidence that the claimed range of
acid:salt ratio has any new and unexpected results relative to the prior art.
Appellant argues that the data in the Specification’s examples must be
considered (Appeal Br. 7), and that “[t]he data in the present application
shows that fluoride uptake from oral care products containing an amine
fluoride at pH 4.5 can be increased by using a buffer comprising an aqueous
solution of an acid recited in claim 1 and sodium or potassium salt of the
acid.” Id. The examples in the Specification, however, show comparisons
between inventive compositions having either malic acid or succinic acid
buffers, and comparative compositions without buffer. Spec. ¶¶ 70–73.
Therefore, the examples provided in the Specification do not indicate any
unexpected results for the claimed range of acid:salt ratio, with respect to
Atsushi’s range.
Appellant also cites “additional data . . . submitted on September 29,
2017” as evidence of the “superiority of amine fluoride over sodium fluoride
at a low pH.” Appeal Br. 7. We note that the data provided in the remarks
submitted on September 29, 2017, and reproduced in the Appeal Brief, were
not provided in declaration form. As such, they are considered to be no
more than attorney argument. We therefore decline to give them substantial
weight. In any event, no explanation is provided as to the contents of the
compositions other than their pH and which, if any, fluoride compound they
contain. None of the compositions is described as containing malic acid or
succinic acid, or a sodium or potassium salt of the acid, or as having a ratio
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of acid:salt within the claimed range. Thus, the proffered data do not show
that the compositions are within the scope of claim 1.
Appellant argues that
[t]he cationic nature of the fluoride counter ion in an amine
fluoride is the pivotal point of the efficacy enhancement. . . .
Even though a tooth whitening effect is observed in Atsushi’s
composition, it is related to a completely different mode of
action. Atsushi does not teach the buildup of positive charge
and its compensation by fluoride.
Appeal Br. 8.
This argument is unpersuasive. Although Atsushi does not suggest
using amine fluoride for the reason discussed by Appellant, it nonetheless
suggests using amine fluoride. “In determining whether the subject matter
of a patent claim is obvious, neither the particular motivation nor the avowed
purpose of the patentee controls.” KSR Int’l Co. v. Teleflex Inc., 550 U.S.
398, 419–20 (2007).
We conclude that the rejection of claims 1, 4–7, 9, and 12–28 under
35 U.S.C. § 103(a) based on Atsushi is supported by a preponderance of the
evidence, and we therefore affirm it.

Obviousness based on Kato
Claims 1, 4–7, 9, and 12–28 stand rejected under 35 U.S.C. § 103(a)
as being obvious over Kato. Ans. 4. The Examiner finds that Kato provides
essentially the same teachings as Atsushi, and would have made obvious the
composition of claim 1 for the same reason. Ans. 4–5. We agree with, and
adopt, the Examiner’s fact-finding and conclusion.
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Appellant’s arguments with respect to Kato are substantially similar to
arguments directed to Atsushi, see Appeal Br. 8–12, and we find them
unpersuasive for the reasons discussed above.

Obviousness based on Atsushi or Kato, combined with Trivedi
Claim 8 stands rejected under 35 U.S.C. § 103(a) as being obvious
over Atsushi in view of Trivedi (Ans. 5) and over Kato in view of Trivedi
(Ans. 6).
With respect to these rejections, Appellant argues that “Trivedi does
not teach or suggest a combination of an amine fluoride and a buffer system
recited in claim 1. Thus, Trivedi does not cure the deficiency of Atsushi or
Kato.” Appeal Br. 12.
Because we do not find any deficiencies in Atsushi and Kato, and
because Appellant has waived arguments directed to Trivedi, we affirm the
rejections of claim 8 under 35 U.S.C. § 103(a). See 37 C.F.R.
§ 41.37(c)(1)(iv) (The Appeal Brief must contain “[t]he arguments of
appellant with respect to each ground of rejection.”); Hyatt v. Dudas, 551
F.3d 1307, 1314 (Fed. Cir. 2008) (“In the event of such a waiver, the PTO
may affirm the rejection of the group of claims that the examiner rejected on
that ground without considering the merits of those rejections.”).
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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 4–7, 9,
12–28
103(a) Atsushi 1, 4–7, 9,
12–28

1, 4–7, 9,
12–28
103(a) Kato 1, 4–7, 9,
12–28

8 103(a) Atsushi, Trivedi 8
8 103(a) Kato, Trivedi 8
Overall
Outcome
1, 4–9, 12–
28

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).
AFFIRMED