3M INNOVATIVE PROPERTIES COMPANY

Patent Trials and Appeals Board

Aug 17, 2020

2019006993 (P.T.A.B. Aug. 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.
14/424,198 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.
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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).
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(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.
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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.
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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
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(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
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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).
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(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
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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
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(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
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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
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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.
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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.
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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,
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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
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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).”).
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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.
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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
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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