COLGATE-PALMOLIVE COMPANY

Patent Trials and Appeals Board

Jun 19, 2020

15106279 - (D) (P.T.A.B. Jun. 19, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
15/106,279 06/18/2016 Joe Vazquez 9927-00-US-01-OC 2355
23909 7590 06/19/2020
COLGATE-PALMOLIVE COMPANY
909 RIVER ROAD
PISCATAWAY, NJ 08855
EXAMINER
ROBERTS, LEZAH
ART UNIT PAPER NUMBER
1612
NOTIFICATION DATE DELIVERY MODE
06/19/2020 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 JOE VAZQUEZ, HARSH M. TRIVEDI,
LATONYA KILPATRICK-LIVERMAN, and STACEY LAVENDER
__________

Appeal 2019-006020
Application 15/106,279
Technology Center 1600
__________

Before DONALD E. ADAMS, FRANCISCO C. PRATS, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal1,2 under 35 U.S.C. § 134(a) involving claims to an
oral composition. The Examiner rejected the claims as obvious and on the
grounds of obviousness-type double patenting. We have jurisdiction under
35 U.S.C. § 6(b). We affirm.

1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42.
Appellant identifies the Real Party in Interest as Colgate-Palmolive Company (see
Appeal Br. 2).
2 We have considered and refer to the Specification of June 18, 2016 (“Spec.”); Final
Action of June 25, 2018 (“Final Act.”); Appeal Brief of Dec. 26, 2018 (“Appeal Br.”);
Examiner’s Answer of June 7, 2019 (“Ans.”); and Reply Brief of Aug. 7, 2019
(“Reply Br.”).
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Application 15/106,279
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Statement of the Case
Background
“One of the major contributors to malodor in the oral cavity is the
bacteria present on the soft and hard oral tissues. Manual brushing and
rinsing help to remove the bacteria, but they eventually repopulate over a
period of time” (Spec. ¶ 1). “Zinc ions act as a bacteriostatic agent by
binding with bacteria and slowing down the growth phase, leading to slower
cell division and repopulation. Zinc salts in oral care products are known to
react with sulfur compounds found in bad breath” (id. ¶ 2). “[T]here is still
a need in the art for oral care compositions which have even greater efficacy
in reducing oral malodor than previous zinc ion-containing compositions”
(id. ¶ 3).
The Claims
Claims 1, 4–14, and 17 are on appeal3. Claim 1 is representative and
reads as follows:
1. An oral care composition comprising:
a) arginine in free or salt form; and
b) zinc ions,
wherein the zinc ions are present in the composition at a
concentration selected from the group consisting of from 0.0005
mols/100g to 0.001 mols/100 g, and from 0.00052 mols/100g to
0.00062 mols/100g, based on the total weight of the composition,
wherein the composition is a mouthwash.

The Issues
A. The Examiner rejected claims 1, 4–10, 13, 14, and 17 under 35 U.S.C.
§ 103(a) as obvious over Mello4 (Ans. 3–4).

3 Claims 2, 3, 15, 16, and 18 were cancelled (see Appeal Br. 11–12).
4 Mello et al, US 2013/0078197 A1, published Mar. 28, 2013.
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Application 15/106,279
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B. The Examiner rejected claims 10–12 under 35 U.S.C. § 103(a) as
obvious over Mello and Robinson5 (Ans. 4–5).
C. The Examiner rejected claims 1, 4–11, 13, 14, and 17 under 35 U.S.C.
§ 103(a) as obvious over Porter6 (Ans. 5–6).
D. The Examiner rejected claims 10–12 under 35 U.S.C. § 103(a) as
obvious over Porter and Robinson (Ans. 6–7).
E. The Examiner rejected claims 1, 4–6, 8–14, and 17 on the ground of
provisional nonstatutory obviousness-type double patenting as obvious over
claims 1–13 and 15–24 of copending US application 15/106,4577 (Ans. 7).
A. 35 U.S.C. § 103(a) over Mello
The Examiner finds that Mello teaches therapeutic oral compositions
that comprise “arginine in free or salt form” and zinc salts that “include zinc
citrate and zinc oxide” (Ans. 3). The Examiner finds Mello teaches “the
amount of zinc used ranges from 0.01 to 5%, whereas the instant claims
recite 0.0005 mols/100g to 0.001 mols/100[g] and 0.00052 mols/100g to
0.00062 mols/100g” (id. 4).
The Examiner finds the clams obvious because “where the claimed
ranges ‘overlap or lie inside ranges disclosed by the prior art’, a prima facie
case of obviousness exists” (Ans. 4).

5 Robinson et al, US 2010/0330002 A1, published Dec. 30, 2010.
6 Porter et al., WO 2011/123123 A1, published Oct. 6, 2011.
7 We note that US application 15/106,457 issued as US 10,441,517 on Oct.
15, 2019.
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Application 15/106,279
4
The issues with respect to this rejection are:
(i) Does a preponderance of the evidence of record support the
Examiner’s conclusion that Mello teaches an overlapping range of zinc ions
as required by claim 1?
(ii) If so, has Appellant provided evidence of unexpected results that
outweighs the evidence supporting the prima facie case of obviousness?
Findings of Fact
1. Mello teaches “a therapeutic oral composition useful in the
treatment of dentinal hypersensitivity, anticaries, bad breath” (Mello ¶ 10).
2. Mello teaches the “oral care composition of the preferred
embodiments includes arginine in free or salt form . . . zinc salts” (Mello
¶ 22).
3. Mello teaches the “composition preferably is in the form of a
mouthwash or mouthrinse” (Mello ¶ 22).
4. Mello teaches the “arginine in free or salt form may be present
in the compositions described herein in an amount of 0.1 wt. % to 20 wt. %
of the total composition weight” (Mello ¶ 28).
5. Mello teaches the “antibacterial agent . . . may be CPC,
chlorhexidine, zinc citrate, zinc oxide, and mixtures thereof” (Mello ¶ 35).
6. Mello teaches “zinc salts may be present in amounts within the
range of from 0.01-5% by weight, more preferably from 0.1-1 % of zinc salt
weight, based on the total weight of the composition” (Mello ¶ 35).
7. The Examiner finds the “endpoint 0.1 % encompasses 0.00054
mol. of zinc, when using zinc citrate and zinc oxide” (Ans. 8). Appellant
calculates that “1 % zinc citrate corresponds to 0.00522 mols/100g (1 ÷
574.338 x 3), while 1 % zinc oxide corresponds to 0.0122 mols/100g (1 ÷
81.38 x 1)” (Appeal Br. 6).
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8. Table 1 of Mello exemplifies compositions II and VI that
contain 0.28 wt. % zinc citrate, which equals 0.0015 mols/100g (0.28 ÷
574.338 x 3) (see Mello ¶ 71).
Principles of Law
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).
Analysis
Prima facie obviousness
We adopt the Examiner’s findings of fact and reasoning regarding the
scope and content of the prior art (Ans. 3–5; FF 1–7) and agree that Mello
renders the claims obvious. We address Appellant’s arguments below.
Appellant contends
Although Mello discloses broad ranges of weight percent for zinc
salts, Mello does not disclose or teach any molar concentration of zinc
ions. The molar concentration of zinc ions in a composition depends
not only on the weight percent of zinc salt but also on the molar mass
of the zinc salt and the number of zinc ions present in the zinc salt.
(Appeal Br. 6). Appellant states “[t]hus, 1% zinc citrate corresponds to
0.00522 mols/100g . . . while 1% zinc oxide corresponds to 0.0122
mols/100g” (id.).
We find this argument unpersuasive because the ordinary artisan
would recognize that weight percent and molar mass are two known
alternative approaches for measuring amounts of components in
compositions. In this case, Mello teaches that either zinc citrate or zinc
oxide may be used (FF 5) in amounts “from 0.01-5% by weight, more
preferably from 0.1-1 % of zinc salt weight” (FF 6). The calculations of
Appellant demonstrate that at the upper endpoint of the Mello’s preferred
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0.1-1% range, 1 % zinc citrate corresponds to 0.00522 mols/100g and 1 %
zinc oxide corresponds to 0.0122 mols/100g (FF 7). Using the same
equation, at the 0.1% lower endpoint of Mello’s preferred range, 0.1% zinc
citrate would be 0.000522 mols/100g and 0.1% of zinc oxide would be
0.00122 mols/100 g. At the lowest range endpoint disclosed by Mello of
0.01%, zinc citrate would be 0.0000522 mols/100g and zinc oxide would be
0.000122 mols/100g.
Thus, the evidence of record demonstrates that the Mello ranges for
either zinc citrate or zinc oxide overlap those recited by claim 1. See In re
Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003) (“In cases involving
overlapping ranges, we and our predecessor court have consistently held that
even a slight overlap in range establishes a prima facie case of
obviousness.”). Appellant provides no evidence that persuasively rebuts the
Examiner’s finding that the range of Mello overlaps with that recited by
claim 1.
Appellant contends that “one of skill in the art would not be motivated
to lower the amount of zinc salts in Mello’s mouthwash to arrive at the
claimed composition with a reasonable expectation of success that the low
amount of zinc salts would be sufficient to reduce VSC” (Appeal Br. 7).
We find this argument unpersuasive because Mello expressly teaches
values as low as 0.01%, a value lower than the ranges recited in claim 1 as
discussed above (see FF 6). The ordinary artisan would have had reason to
use any value within the range disclosed by Mello. “The normal desire of
scientists or artisans to improve upon what is already generally known
provides the motivation to determine where in a disclosed set of percentage
ranges is the optimum combination of percentages.” Peterson, 315 F.3d at
1330.
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Unexpected Results
Appellant contends that:
This application is based on the surprising and unexpected
discovery that the combination of arginine and a zinc ion source
can reduce volatile sulfur compounds (VSC) found in bad
breath to an extent that is significantly greater - almost twice as
great - than the combined individual effects of the arginine and
zinc ion source.
(Appeal Br. 6). Appellant contends that Table 2 shows experiments where
“zinc salts alone provided a reduction of VSCs from about 36% to 43%, and
arginine alone removed about 8% of VSCs” (id.). Appellant contends that
“[w]hile the additive effect would have been expected to be about 51 % or
less, the combination of arginine and zinc salts removed 95% to 97% of the
VSCs” (id.).
We find the asserted unexpected results unpersuasive for several
reasons. First, no comparison is performed with the composition disclosed
in Table 1 of Mello. Thus, Appellant fails to provide any comparison
showing an unexpected result compared with the closest prior art. See In re
Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991) (“[W]hen
unexpected results are used as evidence of nonobviousness, the results must
be shown to be unexpected compared with the closest prior art.”).
Second, unexpected results must be “commensurate in scope with the
degree of protection sought by the claimed subject matter.” In re Harris,
409 F.3d 1339, 1344 (Fed. Cir. 2005). In this case, the results in Table 2 of
the Specification are demonstrated for a single value of zinc oxide of 0.05
weight % and a single value of zinc citrate of 0.1 weight %, as well as single
values of zinc lactate and zinc chloride (see Spec. ¶ 72). Claim 1, however,
recites a range that extends from 0.0005 mols/100g to 0.001 mols/100g, and
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Application 15/106,279
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the single values tested do not demonstrate unexpected results through this
entire range.
Third, we find the evidence of the Specification does not demonstrate
a difference in kind because the change identified by Appellant ranges from
44 to 46% (either Appellant’s 95% or 97% results minus the additive effect
of 51% shown for the arginine and zinc separately). Appellant does not
explain why a change of 46% is a difference in kind rather than degree. In
Harris, the court found that a “32–43% increase in stress-rupture life,
however, does not represent a ‘difference in kind’ that is required to show
unexpected results.” In re Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005).
Conclusions of Law
(i) The evidence of record supports the Examiner’s conclusion that
Mello renders the claims prima facie obvious.
(ii) Appellant has not provided evidence of unexpected results that
outweighs the evidence supporting the prima facie case of obviousness.

B. 35 U.S.C. § 103(a) over Mello and Robinson
Appellant does not argue separately claims 10–12 in this obviousness
rejection, instead relying upon overcoming Mello (see App. Br. 7). Having
found no deficiency in Mello as it relates to Appellant’s claim 1, we are not
persuaded by Appellant’s contention to the contrary regarding the
obviousness of claims 10–12 over Mello and Robinson.

C. 35 U.S.C. § 103(a) over Porter
The Examiner finds Porter teaches “oral care compositions
comprising a metal oxide particle such as zinc oxide. The metal oxide may
comprise up to 5% by weight of the composition, preferably 0.5 to 2%”
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(Ans. 5). The Examiner finds that “compositions comprise at least one
amino acid such as L-arginine . . . [and] may be used in mixtures and
comprise 0.5 to 5% by weight” (id.). The Examiner finds that “[i]n the case
where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior
art’, a prima facie case of obviousness exists” (id. at 6).
The issues with respect to this rejection are:
(i) Does a preponderance of the evidence of record support the
Examiner’s conclusion that Porter teaches an overlapping range of zinc ions
as required by claim 1?
(ii) If so, has Appellant provided evidence of unexpected results that
outweighs the evidence supporting the prima facie case of obviousness?
Findings of Fact
9. Porter teaches “an oral care composition, for example a
dentifrice composition, for enhanced delivery of an antiplaque/ anticalculus
agent to the oral surfaces in the oral cavity, and which may additionally treat
or prevent hypersensitivity of the teeth” (Porter ¶ 1).
10. Porter teaches the composition includes “at least one amino
acid comprises L-arginine. . . . and typically may be present in an amount of
up to 5% by weight, further optionally from 0.5 to 5% by weight” (Porter
¶¶ 50–51).
11. Porter teaches the composition may include “one or more metal
oxides selected from zinc oxide” and “may be present in an amount of up to
5 % by weight, preferably of up to 2% by weight, more preferably from 0.5
to 2% by weight” (Porter ¶¶ 52–53).
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,
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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, 550 U.S. at 418.
Analysis
Prima facie obviousness
Appellant contends “[z]inc oxide is the only metal oxide containing
zinc ions. 0.5% zinc oxide provides 0.0061 mols of zinc ions/100g (0.5 ÷
81.38 x 1). Thus, the range (from 0.5% to 2%) disclosed in Porter does not
overlap the claimed molar concentration range of zinc ions” (Appeal Br. 8).
Appellant contends that “[s]ince Porter does not disclose or teach any range
or value overlapping the claimed molar concentration range of zinc ions, the
claimed range would not be prima facie obvious over Porter” (id.).
The Examiner responds
Porter discloses a composition comprising a combination of
zinc oxide and arginine. Although the amounts are not close or
the same as that of the instant claims or instant examples,
Appellants have not shown these to be critical amounts by
comparing the compositions of the examples with comparative
examples varying the amounts.
(Ans. 14).
We find that Appellant has the better position. As Appellant correctly
points out, the lowest disclosed range endpoint in Porter results in 0.0061
mols of zinc ion, which is six times higher than the upper endpoint disclosed
in claim 1. Thus, Porter does not teach an overlapping range or even a range
that is almost adjacent to the claimed range. Moreover, the Examiner
provides no reason why Porter or the ordinary artisan would choose to select
values of zinc oxide six-fold lower than those disclosed in Porter.
Therefore, the rejection neither provides a suggestion of all the limitations of
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claim 1 nor does the rejection provide a reason to modify Porter to obtain the
claimed invention. We therefore need not reach the issue of secondary
considerations.

D. 35 U.S.C. § 103(a) over Porter and Robinson
Having reversed the obviousness rejection of claim 1 over Porter for
failing to disclose the zinc ion range required by claim 1 for the reasons
given above, we also find that the further combination with Robinson does
not address this issue and therefore does not render the rejected claims
obvious for the same reasons.

E. Obviousness-type Double Patenting
The Examiner finds the instant claims are not patentably distinct from
those in US application 15/106,457 (now Prencipe et al., US patent
10,441,517 B2, issued Oct. 15, 2019) because
the claims are coextensive insofar as both recite oral
compositions comprising a zinc salt and an arginine. The
claims differ insofar as the instant claims recite mols/g whereas
the copending claims recite percentages. However the claims
encompass the same amounts.
(Ans. 7).
Appellant contends “the molar concentration of zinc ions according to
pending claims of 15/106,457 is greater than 0.00184 moles/100g. Since the
ranges disclosed in the pending claims of 15/106,457 do not overlap the
claimed molar concentration range of zinc ions, the claimed range would not
be prima facie obvious” (Appeal Br. 9). Appellant also contends that “the
specific combination of arginine and a zinc ion source can synergistically
reduce volatile sulfur compounds (VSCs) as described in the present
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specification, and this is unexpected reduction is ‘of a significant, practical
advantage’” (id. at 10).
Claims 1 and 3 of the ’517 patent are reproduced below:
1. An oral care composition comprising:
a. arginine, in free or salt form; and
b. zinc oxide and zinc citrate,
wherein a molar ratio of arginine to total zinc salts is
0.4:1 to 0.8:1 and wherein a weight ratio of zinc oxide to zinc
citrate is 1.7:1 to 2.3:1 and wherein the arginine is present in an
amount of 1.4 weight % to 1.6 weight % based on the total
weight of the composition.

3. The oral care composition of claim 1, wherein the total
concentration of zinc salts in the composition is 0.2 weight % to
5 weight %, based on the total weight of the composition.

As Appellant correctly points out, the lowest value of zinc salts is 0.2
weight % and because the claim requires both zinc citrate and zinc oxide in a
particular molar ratio, Appellant calculates a final value of 0.00184
moles/100 g for zinc in total. Appellant posits that an examiner can only
find a prima facie case of obviousness if there is an overlap between the
claimed range and prior art range.
We note that Titanium Metals Corp. of Am. v. Banner, 778 F.2d 775,
783 (Fed. Cir. 1985) found a case of obviousness when the “proportions are
so close that prima facie one skilled in the art would have expected them to
have the same properties. Appellee produced no evidence to rebut that
prima facie case.” Id. Here, the instant Specification demonstrates that the
ranges can be flexibly applied, for example “a weight ratio or zinc oxide to
zinc citrate is 1.5: 1 to 4.5: 1, 1.5: 1 to 4: 1, 1.7 :1 to 23:1, 1.9:1 to 2.1:1, or
about 2:1. Also, the corresponding molar ratios based on these weight ratios
can be used” (Spec. ¶ 6). Therefore, we find that the range here lacks a
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showing of criticality and the presence of flexible endpoints supports a
finding of obviousness.
Here, Appellant provides no evidence showing that the addition of
0.00084 mols/100g of zinc salts would have been expected to have different
properties from those of the composition recited in claim 1. See In re
Peterson, 315 F.3d at 1329 315 F.3d 1325, 1329 (Fed. Cir. 2003)
(recognizing “that a prima facie case of obviousness exists when the claimed
range and the prior art range do not overlap but are close enough such that
one skilled in the art would have expected them to have the same
properties.”)
As to Appellant’s asserted unexpected results, we find them
unpersuasive for the reasons given above, specifically that the evidence has
not been compared to the closest prior, is not commensurate in scope with
the claims, and fails to show a difference in kind relative to the prior art.
We therefore find the instant claims obvious over the claims in US
patent 10,441,517.
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1, 4–10, 13,
14, 17
103 Mello 1, 4–10, 13,
14, 17

10–12 103 Mello, Robinson 10–12
1, 4–11, 13,
14, 17
103 Porter 1, 4–11,
13, 14, 17
10–12 103 Porter, Robinson 10–12
1, 4–6, 8–14,
17
Double
Patenting
US 15/106,457 1, 4–6, 8–14,
17

Overall 1, 4–14, 17
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Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
Outcome

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

AFFIRMED