3M INNOVATIVE PROPERTIES COMPANYDownload PDFPatent Trials and Appeals BoardAug 17, 202014424198 - (D) (P.T.A.B. Aug. 17, 2020) Copy Citation 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. 14/424,198 02/26/2015 Vinod P. Menon 68119US013 5576 32692 7590 08/17/2020 3M INNOVATIVE PROPERTIES COMPANY PO BOX 33427 ST. PAUL, MN 55133-3427 EXAMINER BERRIOS, JENNIFER A ART UNIT PAPER NUMBER 1613 NOTIFICATION DATE DELIVERY MODE 08/17/2020 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): LegalUSDocketing@mmm.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE PATENT TRIAL AND APPEAL BOARD __________ Ex parte VINOD P. MENON, JOSEPH D. RULE, and RICHARD B. ROSS __________ Appeal 2019-006993 Application 14/424,198 Technology Center 1600 __________ Before FRANCISCO C. PRATS, TAWEN CHANG, and MICHAEL A. VALEK, Administrative Patent Judges. PRATS, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant 0F1 appeals from the Examiner’s decision to reject claims 1–5, 7, 9–12, 14, 15, 17, 19, and 20. 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 3M Company (formerly known as Minnesota Mining and Manufacturing Company) of St. Paul, Minnesota and its affiliate 3M Innovative Properties Company of St. Paul, Minnesota, as the real parties in interest. Appeal Br. 2. Appeal 2019-006993 Application 14/424,198 2 STATEMENT OF THE CASE The Specification discloses that “[c]hlorhexidine digluconate, commonly referred to as ‘chlorhexidine gluconate’ or ‘CHG,’ is an antimicrobial useful in various applications. CHG is often provided as an aqueous solution, in part because CHG may degrade in a non-aqueous composition.” Spec. ¶ 8. The Specification discloses that, “[s]urprisingly, the present inventors have discovered that CHG can be solubilized in a hydrophobic vehicle.” Spec. ¶ 9. Appellant’s claim 1 is representative and reads as follows: 1. A composition comprising chlorhexidine gluconate (CHG) solubilized in a monoacylglyceride, wherein the monoacylglyceride is a hydrophobic monoacylglyceride having a hydrophilic-lipophilic balance of no greater than 10 as determined using the HLB Method, wherein the composition comprises no greater than 1 part by weight hydrophilic vehicle per 1 part by weight chlorhexidine gluconate, wherein an acyl group of the monoacylglyceride is a C8 to Cl8 acyl group. Appeal Br. 9. The following rejections are before us for review: (1) Claims 1–5, 7, 10–12, 14, 15, 17, 19, and 20, under 35 U.S.C § 103(a) as being unpatentable over Rozzi,1F2 Velamakanni,2F3 Anderson,3F4 Bublewitz,4F5 and Britannica Online Encyclopedia 5F6 (Ans. 3–6); and 2 US 6,458,341 B1 (issued Oct.1, 2002). 3 US 2006/0205838 A1 (published Sept. 14, 2006). 4 US 2003/0031694 A1 (published Feb. 13, 2003). 5 US 2005/0250871 A1 (published Nov. 10, 2005). 6 https://www.britannica.com/science/microcrystalline-wax (accessed Sept. 5, 2017). Appeal 2019-006993 Application 14/424,198 3 (2) Claims 1–5, 7, 9, 11, 15, and 19, under 35 U.S.C § 103(a) as being unpatentable over Barabolak,6F7 Velamakanni, Anderson, Leonhardt, 7F8 and Lin 8F9 (Ans. 6–8). OBVIOUSNESS— ROZZI, VELAMAKANNI, ANDERSON, BUBLEWITZ, AND BRITANNICA ONLINE ENCYCLOPEDIA9F10 The Examiner’s Prima Facie Case The Examiner found that Rozzi describes a composition for coating a device such as dental floss or a dental pick that applies CHG to the oral cavity, the coating composition having amounts of CHG and a hydrophilic carrier (glycerol) encompassed by Appellant’s representative claim 1. See Ans. 4 (citing claims 1–4 of Rozzi (Rozzi 18:40–64)). The Examiner found that the coating composition described in Rozzi differs from the composition recited in Appellant’s representative claim 1 only “[in that] Rozzi does not teach the composition to comprise a monoacylglyceride as claimed.” Ans. 5. As evidence that the composition of representative claim 1 would have been obvious despite the difference between Rozzi and claim 1, the Examiner cited Anderson as teaching that both CHG and glycerol 7 US 6,592,912 B1 (issued July 15, 2003). 8 US 2008/0057007 A1 (published Mar. 6, 2008). 9 Ying-Chi Lin et al., Glycerol Monolaurate and Dodecylglycerol Effects on Staphylococcus aureus and Toxic Shock Syndrome Toxin-1 In Vitro and In Vivo, 4 PLOS ONE 1–10 (2009). 10 The Examiner cited Bublewitz and Britannica Online Encyclopedia as evidence that hydrocarbon waxes described in Rozzi are encompassed by Appellant’s dependent claim 14. Ans. 4. Because Appellant does not contest the Examiner’s findings as to claim 14, we do not discuss Bublewitz and Britannica Online Encyclopedia in our analysis. Appeal 2019-006993 Application 14/424,198 4 monolaurate (“GML,” a monoacylglyceride encompassed by claim 1) were known to be useful antimicrobial agents. Ans. 5 (citing Anderson ¶ 69). The Examiner, in addition, cited Velamakanni as teaching that the monoacylglycerides GML and glycerol monocaprylate were known to be suitable antimicrobial agents for use in antimicrobial dental compositions. Ans. 5 (citing Velamakanni claim 23). The Examiner noted, in particular, that “Velamakanni teaches the dental composition to comprise at least 0.1 wt% of the antimicrobial Lipid component, such as GML [0012].” Id. Based on the references combined teachings, the Examiner reasoned that it would have been obvious to add a monoacylglyceride, such as GML, to Rozzi’s coating composition: In view of the teachings of Velamakanni, one of skill in the art would have been motivated to add at least 0.1 % of GML (reading on instant claims 3-5 and 7) to the dental composition of Rozzi as Velamakanni teaches GML to be a suitable antimicrobial agent for use in dental compositions and Anderson teaches both CHG and GML to be functionally equivalent antimicrobial agents and it[ is] prima facie obvious to combine two compositions both taught by the prior art to be used for the same purpose to create a third composition for the same purpose. Ans. 5 (citing MPEP § 2144.06 and In re Kerkhoven, 626 F.2d 846, 850 (CCPA 1980)). The Examiner further reasoned that, as to representative claim 1’s requirement for the CHG to be solubilized in the monoacylglyceride, “while Rozzi and Velamakanni are silent to this property, Rozzi and Velamakanni make obvious the structural limitations of the claims, therefore, absent evidence to the contrary, the glyceryl monolaurate is expected to solubilize the CHG as a compounds and its properties are inseparable.” Ans. 5. Appeal 2019-006993 Application 14/424,198 5 Analysis As stated in In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992): [T]he examiner bears the initial burden . . . of presenting a prima facie case of unpatentability. . . . After evidence or argument is submitted by the applicant in response, patentability is determined on the totality of the record, by a preponderance of evidence with due consideration to persuasiveness of argument. Having carefully considered all of the arguments and evidence advanced by Appellant and the Examiner, Appellant does not persuade us that a preponderance of the evidence fails to support the Examiner’s conclusion that the composition of Appellant’s representative claim 1 would have been obvious in view of Rozzi, Velamakanni, and Anderson. Rozzi discloses that CHG “is an antimicrobial that is useful for various applications, particularly in the oral environment.” Rozzi 1:10–12. Rozzi discloses CHG-containing compositions for coating devices, such as dental floss, that are used in the oral cavity. Id. at 2:8–14. As the Examiner found, and Appellant does not dispute, Rozzi describes coating compositions that include CHG and a hydrophilic vehicle (a glycol such as glycerin, i.e., glycerol) in proportions encompassed by Appellant’s representative claim 1. See Rozzi 18:40–64 (claims 1–4). Rozzi undisputedly does not include a monoacylglyceride, such as GML, in its compositions. Velamakanni, however, discloses compositions for deployment in the oral cavity, the compositions preferably being “active against a broad spectrum of bacteria including Gram-positive and Gram-negative bacteria.” Velamakanni ¶ 39. Velamakanni discloses that “[c]ertain preferred embodiments have good to excellent activity against Streptococcus mutans Appeal 2019-006993 Application 14/424,198 6 (S. mutans) bacteria.” Id. Velamakanni explains that “S. mutans has the tendency to adhere to hard surfaces, such as teeth, forming a biofilm or plaque. Such colonization can eventually lead to a number of undesirable clinical side effects that include origination of caries, calcified plaque, irritation of gum tissue leading up to periodontal diseases, etc.” Id. Velamakanni discloses that GML is among its preferred antimicrobial compounds for inclusion in its oral cavity-deployed compositions. Id. ¶ 47; see also id. at p. 25 (claim 23 of Velamakanni reciting GML as an antimicrobial lipid in a dental composition). Anderson discloses particles for controlled release of active agents. Anderson ¶ 5. Anderson discloses that, “[i]n one embodiment, the active agent is selected from the group consisting of chlorhexidine digluconate, silver ion, glycerol monolaurate and combinations thereof.” Id. ¶ 7 (emphasis added); see also id. ¶ 15 (“In another embodiment, the active agent is selected from the group consisting of chlorhexidine digluconate, silver ion, glycerol monolaurate and combinations thereof.” (emphasis added)). Like Rozzi and Velamakanni, Anderson teaches that its compositions are useful in “oral hygiene agents including, e.g., dentifrices, flavorants and whitening agents.” Id. ¶ 67. Given Velamakanni’s teaching that GML is a particularly useful antimicrobial agent in compositions applied to the oral cavity, and further given Anderson’s teaching that combining CHG and GML provides a useful antimicrobial composition suitable for oral hygiene applications, we agree with the Examiner that a skilled artisan had a good reason for, and a reasonable expectation of success in, including GML in Rozzi’s orally applied CHG-containing compositions. We therefore also agree with the Appeal 2019-006993 Application 14/424,198 7 Examiner that a skilled artisan would have considered the composition of Appellant’s representative claim 1 to be prima facie obvious. Appellant’s arguments do not persuade us to the contrary. In particular, Appellant does not persuade us that, because CHG and GML do not have the same effectiveness against the same microorganisms, the Examiner reversibly erred in concluding that a skilled artisan would have considered it obvious to include GML in Rozzi’s CHG-containing composition. See Appeal Br. 4–5 (citing Denton,10F11 Preuss 11F12). We acknowledge that CHG and GML do not have the same effectiveness against the same microorganisms. Compare Denton 278 to Preuss 33. We are not persuaded, however, that the comparative efficacy against two microorganisms, Staphylococcus aureus and Escherichia coli, provides an adequate evidentiary basis to support Appellant’s characterization of GML as a “less effective antimicrobial” than CHG. Appeal Br. 5. Even if it did, the mere fact that GML may be somewhat less effective than CHG does not render a composition comprising both GML and CHG, as recited in Appellant’s claim 1, any less obvious. As discussed above, Velamakanni teaches that GML is a particularly useful antimicrobial agent in compositions applied to the oral cavity (see Velamakanni claim 23; id. ¶ 39), and Anderson repeatedly teaches that combining CHG and GML provides a useful antimicrobial composition 11 Graham W. Denton, Chlorhexidine, DISINFECTANTS AND ANTISEPTICS A. BY CHEMICAL TYPE, Chapter 16, p. 278 (2006). Appellant cites to the page numbers at the top of the page; we do the same for consistency. 12 Harry G. Preuss et al., Minimum inhibitory concentrations of herbal essential oils and monolaurin for gram-positive and gram-negative bacteria, 272 MOLECULAR AND CELLULAR BIOCHEMISTRY 29–34 (2005). Appeal 2019-006993 Application 14/424,198 8 (Anderson ¶¶ 7, 15). Because Velamakanni teaches that GML is a particularly useful antimicrobial agent in compositions applied to the oral cavity, and because Anderson repeatedly teaches that combining CHG and GML provides a useful antimicrobial composition, Appellant does not persuade us that a skilled artisan lacked a good reason for, or a reasonable expectation of success in, including GML in Rozzi’s orally applied CHG-containing antimicrobial compositions. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) (“[W]hen a patent ‘simply arranges old elements with each performing the same function it had been known to perform’ and yields no more than one would expect from such an arrangement, the combination is obvious.”) (quoting Sakraida v. Ag Pro, Inc., 425 U.S. 273 (1976)); see also Kerkhoven, 626 F.2d at 850 (“It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition which is to be used for the very same purpose.”). Appellant contends that “GML and CHG have different physical properties including different solubility characteristics. For example, even the difference in melting points alone indicate to a person of ordinary skill in the art that GML cannot be readily substituted with CHG and expect to have the same solubilizing properties.” Appeal Br. 5. We are not persuaded. We first note, as discussed above, that the Examiner’s rejection is based on combining CHG and GML, not on substituting one for the other, as Appellant suggests. Appellant, moreover, points to no persuasive evidence of record in the prior art, in relation to the melting points of CHG and GML or otherwise, suggesting any incompatibility in combining CHG and GML as posited by the Examiner. To the contrary, as discussed above, Anderson Appeal 2019-006993 Application 14/424,198 9 repeatedly suggests that combining CHG and GML will provide a useful antimicrobial composition. See Anderson ¶ 7 (“In one embodiment, the active agent is selected from the group consisting of chlorhexidine digluconate, silver ion, glycerol monolaurate and combinations thereof.” (emphasis added)); see also id. ¶ 15 (“In another embodiment, the active agent is selected from the group consisting of chlorhexidine digluconate, silver ion, glycerol monolaurate and combinations thereof.” (emphasis added)). As to Appellant’s argument that “the Examiner has not shown that CHG can exist in a solution of no greater than 1 part by weight hydrophilic vehicle per 1 part by weight chlorhexidine gluconate AND be solubilized in a monoacylglyceride,” Appeal Br. 5, we note that where the Patent Office has reason to believe that a functional limitation asserted to be critical for establishing novelty in the claimed subject matter may, in fact, be an inherent characteristic of the prior art, it possesses the authority to require the applicant to prove that the subject matter shown to be in the prior art does not possess the characteristic relied on. In re Best, 562 F.2d 1252, 1254–55 (CCPA 1977) (internal quotation marks omitted). As the Examiner explained, “Rozzi and Velamakanni make obvious the structural limitations of the claims[;] therefore, absent evidence to the contrary, the glyceryl monolaurate is expected to solubilize the CHG as a compounds and its properties are inseparable.” Ans. 5. Appellant has not provided persuasive evidence to the contrary. Appellant contends that “there is no reason why a person of ordinary skill in the art would also add a monoacylglyceride to solubilize CHG if Rozzi teaches that CHG can be already solubilized in a solubilizing glycol Appeal 2019-006993 Application 14/424,198 10 (such as a hydrophilic vehicle).” Appeal Br. 5. Again, we are not persuaded. The fact that the prior art’s reason for adding GML to Rozzi’s composition (the antimicrobial properties of GML discussed above taught in Velamakanni and Anderson) might be different than Appellant’s reason (solubilization of CHG in GML) does not demonstrate that the claimed subject matter would have been unobvious. See KSR, 550 U.S. at 419 (“In determining whether the subject matter of a patent claim is obvious, neither the particular motivation nor the avowed purpose of the patentee controls. What matters is the objective reach of the claim. If the claim extends to what is obvious, it is invalid under § 103.”). In sum, for the reasons discussed, Appellant does not persuade us that a preponderance of the evidence fails to support the Examiner’s conclusion that a composition having all of the ingredients recited in representative claim 1, in the amounts and in the form required by claim 1, would have been obvious to a skilled artisan in view of Rozzi, Velamakanni, and Anderson. We therefore affirm the Examiner’s rejection of claim 1 for obviousness over Rozzi, Velamakanni, Anderson, Bublewitz, and Britannica Online Encyclopedia. Because they were not argued separately, claims 3–5, 7, 10–12, 14, 15, 17, 19, and 20 fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv). Appellant also does not persuade us that the Examiner erred in concluding that the composition of claim 2 would have been obvious in view of Rozzi, Velamakanni, and Anderson. See Appeal Br. 5. When presenting separate argument as to individual claims, “[u]nder each heading identifying the ground of rejection being contested, any Appeal 2019-006993 Application 14/424,198 11 claim(s) argued separately or as a subgroup shall be argued under a separate subheading that identifies the claim(s) by number.” 37 C.F.R. § 41.37(c)(1)(iv) (emphasis added). Appellant has not presented argument as to claim 2 by providing a separate subheading as required by rule. In any event, Appellant does not persuade us that the Examiner erred in concluding the composition of claim 2 would have been obvious in view of Rozzi, Velamakanni, and Anderson. Appellant’s claim 2 recites “[t]he composition of claim 1, comprising at least 5% by weight chlorhexidine gluconate dissolved in the hydrophobic monoacylglyceride based on the combined weight of the CHG and hydrophobic monoacylglyceride.” Appeal Br. 9. Rozzi discloses that its antimicrobial coating composition can contain “at least 0.1% by weight” CHG. See Rozzi 18:60–61 (claim 1). Velamakanni discloses that its antimicrobial lipids are preferably present in orally applied antimicrobial compositions at concentrations ranging from at least 0.01% to at least 1% by weight. See Velamakanni ¶ 53. Thus, including GML in Rozzi’s CHG-containing compositions at concentration levels taught in Velamakanni, as posited by the Examiner, results in a weight percentage of CHG relative to the combined weight of CHG and GML that overlaps with the range recited in claim 2. See In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003) (“[W]e and our predecessor court have consistently held that even a slight overlap in range establishes a prima facie case of obviousness.”). Appellant does not persuade us, therefore, that the Examiner erred in determining that the cited references would have suggested the composition recited in claim 2. Accordingly, we also affirm the Examiner’s rejection of Appeal 2019-006993 Application 14/424,198 12 claim 2 over Rozzi, Velamakanni, Anderson, Bublewitz, and Britannica Online Encyclopedia. OBVIOUSNESS— BARABOLAK, VELAMAKANNI, ANDERSON, LEONHARDT, AND LIN The Examiner’s Prima Facie Case The Examiner found that Barabolak describes an antibacterial chewing gum that releases CHG. Ans. 6. The Examiner cited Leonhardt as evidence that Barabolak’s chewing gum is a “dental composition.” Id. The Examiner cited Barabolak as teaching that CHG could be added to the gum as a solution. Ans. 6. The Examiner cited the solution of Example 3 of Barabolak, containing only hot water and CHG, as meeting the requirement of Appellant’s representative claim 1 for the composition to contain no greater than 1 part by weight hydrophilic vehicle per 1 part by weight CHG. Id.; see also Spec. ¶ 11 (“[W]ater is considered a separate component independent of any hydrophilic vehicles; therefore, the following amounts are exclusive of any water which may be present in the composition.”). The Examiner found that the CHG-containing solution described in Barabolak differs from the composition recited in Appellant’s representative claim 1 only in that “Barabolak does not teach the composition to comprise glycerol monolaurate (GML).” Ans. 6. Similar to the rejection discussed above, the Examiner again cited Anderson and Velamakanni as evidence that it would have been obvious to include GML in Barabolak’s CHG-containing solution. Id. The Examiner cited Lin as evidence that GML was sufficiently soluble in water for incorporation into Barabolak’s CHG-containing hot water solution. Id. at 7. Appeal 2019-006993 Application 14/424,198 13 Based on the references’ combined teachings, the Examiner reasoned as follows: In view of the teachings of Velamakanni, one of skill in the art at the time the invention was made would have been motivated to add at least 0.1 % of GML (reading on instant claims 3-5 and 7) to the composition of Example 3 (CHG and hot water) as Velamakanni teaches GML to be a suitable antimicrobial agent for use in dental compositions and Anderson teaches both CHG and GML to be functionally equivalent antimicrobial agents and it[ is] prima facie obvious to combine two compositions both taught by the prior art to be used for the same purpose to create a third composition for the same purpose (dental compositions). Ans. 6–7 (citing MPEP § 2144.06 and In re Kerkhoven, 626 F.2d at 850). The Examiner further reasoned that, as to representative claim 1’s requirement for the CHG to be solubilized in the monoacylglyceride, while the prior art is silent to this property, the prior art makes obvious the structural limitations of the claims (CHG and GML and no greater than 1 part hydrophilic vehicle per 1 part CHG), therefore, absent evidence to the contrary, the glyceryl monolaurate is expected to solubilize the CHG as a compounds and its properties are inseparable. Ans. 5. Analysis Having carefully considered all of the arguments and evidence advanced by Appellant and the Examiner, Appellant does not persuade us that a preponderance of the evidence fails to support the Examiner’s conclusion that the composition of Appellant’s representative claim 1 would have been obvious in view of Barabolak, Velamakanni, Anderson, Leonhardt, and Lin. Appeal 2019-006993 Application 14/424,198 14 Barabolak discloses a “method for producing a chewing gum with a controlled release of an antimicrobial agent. . . . The preferred antimicrobial agent is chlorhexidine digluconate.” Barabolak, abstract. As the Examiner found, in Example 3, Barabolak discloses that a “1.0 gram portion of chlorhexidine digluconate can be dissolved in 99.0 grams of hot water, making a 20.0% solution, and added to gum.” Barabolak 9:49– 51. Barabolak’s CHG-containing solution does not contain a monoacylglyceride such as GML, as recited in Appellant’s representative claim 1. However, Velamakanni, as discussed above, discloses compositions for deployment in the oral cavity, the compositions preferably being “active against a broad spectrum of bacteria including Gram-positive and Gram- negative bacteria.” Velamakanni ¶ 39. Velamakanni discloses that “[c]ertain preferred embodiments have good to excellent activity against Streptococcus mutans (S. mutans) bacteria.” Id. Velamakanni explains that “S. mutans has the tendency to adhere to hard surfaces, such as teeth, forming a biofilm or plaque. Such colonization can eventually lead to a number of undesirable clinical side effects that include origination of caries, calcified plaque, irritation of gum tissue leading up to periodontal diseases, etc.” Id. Velamakanni discloses that GML is among its preferred antimicrobial compounds for inclusion in its oral cavity-deployed compositions. Id. ¶ 47; see also id. at p. 25 (claim 23 of Velamakanni reciting GML as an antimicrobial lipid in a dental composition). Anderson discloses particles for controlled release of active agents. Anderson ¶ 5. Anderson discloses that, “[i]n one embodiment, the active agent is selected from the group consisting of chlorhexidine digluconate, Appeal 2019-006993 Application 14/424,198 15 silver ion, glycerol monolaurate and combinations thereof.” Id. ¶ 7 (emphasis added); see also id. ¶ 15 (“In another embodiment, the active agent is selected from the group consisting of chlorhexidine digluconate, silver ion, glycerol monolaurate and combinations thereof.” (emphasis added)). Like Barabolak and Velamakanni, Anderson teaches that its compositions are useful in “oral hygiene agents including, e.g., dentifrices, flavorants and whitening agents.” Id. ¶ 67. Given Velamakanni’s teaching that GML is a particularly useful antimicrobial agent in compositions applied to the oral cavity, and further given Anderson’s teaching that combining CHG and GML provides a useful antimicrobial composition suitable for oral hygiene applications, we agree with the Examiner that a skilled artisan had a good reason for, and a reasonable expectation of success in, including GML in the CHG-containing solution added to Barabolak’s antimicrobial chewing gum. We therefore also agree with the Examiner that a skilled artisan would have considered the composition of Appellant’s representative claim 1 to be obvious. For reasons similar to those discussed in relation to the rejection above, Appellant’s arguments do not persuade us to the contrary. In particular, Appellant does not persuade us that, because CHG and GML do not have the same effectiveness against the same microorganisms, the Examiner reversibly erred in concluding that a skilled artisan would have considered it obvious to include GML in Barabolak’s CHG-containing composition. See Appeal Br. 6–7 (citing Denton, Preuss). We again acknowledge that CHG and GML do not have the same effectiveness against the same microorganisms. Compare Denton 278 to Preuss 33. Again, however, we are not persuaded that the comparative Appeal 2019-006993 Application 14/424,198 16 efficacy against two microorganisms, Staphylococcus aureus and Escherichia coli, provides an adequate evidentiary basis to support Appellant’s characterization of GML as a “less effective antimicrobial” than CHG. Appeal Br. 7. Moreover, because Velamakanni teaches that GML is a particularly useful antimicrobial agent in compositions applied to the oral cavity (see Velamakanni claim 23; id. ¶ 39), and because Anderson repeatedly teaches that combining CHG and GML provides a useful antimicrobial composition (Anderson ¶¶ 7, 15), Appellant does not persuade us that a skilled artisan lacked a good reason for, or a reasonable expectation of success in, including GML in the CHG-containing solution added to Barabolak’s antimicrobial chewing gum. See KSR, 550 U.S. at 417 (“[W]hen a patent ‘simply arranges old elements with each performing the same function it had been known to perform’ and yields no more than one would expect from such an arrangement, the combination is obvious.”) (quoting Sakraida v. Ag Pro, Inc., 425 U.S. 273); see also Kerkhoven, 626 F.2d at 850 (“It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition which is to be used for the very same purpose.”). Similar to the rejection above, Appellant contends that it would not have been obvious to solubilize CHG in GML. See Appeal Br. 7 (“Lin describes that GML is at least partially soluble in an aqueous solution and does not teach solubility of CHG in GML. This provides no reasonable basis for a person or ordinary skill in the art to solubilize CHG in GML (which is itself hydrophobic).”). Appeal 2019-006993 Application 14/424,198 17 Again, however, the fact that the prior art’s reason for adding GML to Barabolak’s composition (the antimicrobial properties of GML discussed above taught in Velamakanni and Anderson) might be different than Appellant’s reason (solubilization of CHG in GML) does not demonstrate that the claimed subject matter would have been unobvious. See KSR, 550 U.S. at 419 (“In determining whether the subject matter of a patent claim is obvious, neither the particular motivation nor the avowed purpose of the patentee controls. What matters is the objective reach of the claim. If the claim extends to what is obvious, it is invalid under § 103.”). Appellant argues: Barabolak teaches away from ‘wherein the composition comprises no greater than 1 part by weight hydrophilic vehicle per 1 part by weight chlorhexidine gluconate.’ For example, the composition in Example 3 includes 12.9% com syrup (which is a hydrophilic mixture of glucose and other organic sweeteners as evidenced by PubChem). Thus, Barabolak teaches that a composition including CHG would likely comprise more than the 1 part hydrophilic vehicle per 1 part CHG which would teach away from the combination. Appeal Br. 7–8. We are not persuaded. As noted above, Example 3 of Barabolak discloses that a “1.0 gram portion of chlorhexidine digluconate can be dissolved in 99.0 grams of hot water, making a 20.0% solution, and added to gum.” Barabolak 9:49–51. Thus, as the Examiner found, the solution to be added to the gum contains only CHG and water, which is not a hydrophilic carrier. See Spec. ¶ 11 (“As used herein, water is considered a separate component independent of any hydrophilic vehicles.”). Accordingly, even when GML is added to that solution, as suggested by Velamakanni and Anderson, the resulting solution contains no hydrophilic carrier. Appeal 2019-006993 Application 14/424,198 18 That is, the solution resulting from the suggestion of the combined teachings of the references meets the requirement of Appellant’s claim 1, that the composition must comprise no greater than 1 part by weight hydrophilic vehicle per 1 part by weight CHG. The fact that the solution is ultimately incorporated into a gum composition that contains corn syrup does not negate the fact that, prior to being added to the gum, the CHG/GML-containing solution suggested by the combined teachings of the cited references has all of the ingredients required by Appellant’s representative claim 1, and none of the ingredients excluded by the claim. In sum, for the reasons discussed, Appellant does not persuade us that a preponderance of the evidence fails to support the Examiner’s conclusion that a composition having all of the ingredients recited in representative claim 1, in the amounts and in the form required by claim 1, would have been obvious to a skilled artisan in view of Barabolak, Velamakanni, Anderson, Leonhardt, and Lin. We therefore affirm the Examiner’s rejection of claim 1 for obviousness over Barabolak, Velamakanni, Anderson, Leonhardt, and Lin. Because they were not argued separately, claims 3–5, 7, 9, 11, 15, and 19 fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv). Appellant also does not persuade us that the Examiner erred in concluding that the composition of claim 2 would have been obvious in view of Barabolak, Velamakanni, Anderson, Leonhardt, and Lin. See Appeal Br. 8. As discussed above, Appellant has not presented argument as to claim 2 by providing a separate subheading as required by 37 C.F.R. § 41.37(c)(1)(iv). In any event, Appellant does not persuade us that the Appeal 2019-006993 Application 14/424,198 19 Examiner erred in concluding the composition of claim 2 would have been obvious in view of Barabolak, Velamakanni, Anderson, Leonhardt, and Lin. As noted above, Appellant’s claim 2 recites “[t]he composition of claim 1, comprising at least 5% by weight chlorhexidine gluconate dissolved in the hydrophobic monoacylglyceride based on the combined weight of the CHG and hydrophobic monoacylglyceride.” Appeal Br. 9. As noted above, Example 3 of Barabolak discloses that a “1.0 gram portion of chlorhexidine digluconate can be dissolved in 99.0 grams of hot water, making a 20.0% solution, and added to gum.” Barabolak 9:49–51. As also noted above, Velamakanni discloses that its antimicrobial lipids are preferably present in orally applied antimicrobial compositions at concentrations ranging from at least 0.01% to at least 1% by weight. See Velamakanni ¶ 53. Thus, including GML in Barabolak’s CHG-containing compositions at concentration levels taught in Velamakanni results in a weight percentage of CHG relative to the combined weight of CHG and GML that overlaps with the range recited in claim 2. Appellant does not persuade us, therefore, that the Examiner erred in determining that the cited references would have suggested the composition recited in claim 2. Accordingly, we also affirm the Examiner’s rejection of claim 2 over Rozzi, Velamakanni, Anderson, Bublewitz, and Britannica Online Encyclopedia. Appeal 2019-006993 Application 14/424,198 20 DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–5, 7, 10– 12, 14, 15, 17, 19, 20 103(a) Rozzi, Velamakanni, Anderson, Bublewitz, Britannica Online Encyclopedia 1–5, 7, 10– 12, 14, 15, 17, 19, 20 1–5, 7, 9, 11, 15, 19 103(a) Barabolak, Velamakanni, Anderson, Leonhardt, and Lin 1–5, 7, 9, 11, 15, 19 Overall Outcome 1–5, 7, 9– 12, 14, 15, 17, 19, 20 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 Copy with citationCopy as parenthetical citation