Colgate-Palmolive Company

Patent Trials and Appeals Board

Nov 25, 2020

2020000962 (P.T.A.B. Nov. 25, 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.
15/597,676 05/17/2017 Shamim Ansari 11751-00-US-01-OC 2619
23909 7590 11/25/2020
COLGATE-PALMOLIVE COMPANY
909 RIVER ROAD
PISCATAWAY, NJ 08855
EXAMINER
WEBB, WALTER E
ART UNIT PAPER NUMBER
1612
NOTIFICATION DATE DELIVERY MODE
11/25/2020 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 SHAMIM ANSARI, HARSH MAHENDRA TRIVEDI, and
JAMES MASTERS
Appeal 2020-000962
Application 15/597,676
Technology Center 1600
Before ULRIKE W. JENKS, AMEE A. SHAH, and
RACHEL H. TOWNSEND, Administrative Patent Judges.
JENKS, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from Examiner’s
decision to reject claims 1–14. 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(a). Appellant identifies the real party in interest as Colgate-Palmolive
Company. Appeal Br. 2. Herein, we refer to the Final Office Action mailed
October 17, 2018 (“Final Act.”); Appellant’s Supplemental Appeal Brief
filed on July 5, 2019 (“Suppl. Appeal Br.”) and Appeal Brief filed May 14,
2019 (“Appeal Br.”); Examiner Answer mailed July 5, 2019 (“Ans.”); and
Appellant’s Reply Brief filed November 19, 2019 (“Reply Br.”)
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STATEMENT OF THE CASE
“Dry mouth, or xerostomia, is a subjective complaint of one’s mouth
feeling dry. It is usually caused by a reduction in salivary flow or by changes
in the biochemical composition of saliva.” Spec. ¶ 2. Age or underlying
disease conditions as well as the use of prescription drugs or over-the-
counter medications can lead to dry mouth. Id. Many available oral care
products do not address the discomfort associated with the condition. Id. ¶ 8.
CLAIMED SUBJECT MATTER
The claims are directed to a composition that may be used as an oral
rinse. Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A mouthrinse comprising:
hemp seed oil;
caprylyl glycol; and
an orally acceptable base.
Suppl. Appeal Br. 4.
REJECTIONS
Grounds of rejection before this panel for review:
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I. Claims 1–6, 13, and 14 under 35 U.S.C. 103 as being
unpatentable over Jeong2 in view of Wallace3 and further in
view of Varvaresou.4 Final Act. 3–5.
II. Claims 7–12 under 35 U.S.C. 103 as being unpatentable over
Jeong, Wallace, and Varvaresou, and further in view of Hanfil. 5
Final Act. 5–6.

OPINION
I. Obviousness over Jeong, Wallace, and Varvaresou
Does the preponderance of evidence relied upon by Examiner support
a conclusion of obviousness?
Findings of fact (FF)
FF1. Jeong teaches an oral care composition containing hempseed oil.
Jeong 2. Specifically, Jeong teaches a toothpaste composition
“contains 0.1-4.0 weight% the hempseed oil about the total weight.”
Id.
FF2. Jeong teaches that in addition to hempseed oil, the composition
contains a “wetting agent, abrasive, sweetener, PH adjusting agent,

2 Myeong-U Jeong, KR 10-2011-0112498, published Oct. 13, 2011
(“Jeong”).
3 Teri Wallace, Hemp Seed Oil Pulling For Healing Originating From
Ayurvedic Medicine . . ., http://www.hempout.com/hemp-seed-oil-pulling-
for-healing-originating-from-ayurvedic-medicine/ (last accessed Sept. 25,
2017) (“Wallace”).
4 A. Varvaresou et al., Self-preserving cosmetics, 31 Int’l J. Cosmetic Sci.
163–175 (2009) (“Varvaresou”).
5 Hanifl et al., US 2010/0022471 A1, published Jan. 28, 2010 (“Hanifl”).
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preservative, binder, foaming agent, the perfume etc[.] can be given.”
Id. at 3.
FF3. Wallace teaches oil pulling therapies using cold-pressed hemp seed
oil. Wallace 2. “Oil pulling [therapy] is an age-old method of oral
cleansing originating from Ayurvedic medicine.” Id. Wallace teaches
an oil-mouth-massage in which hemp seed oil is placed in the mouth
and swished around for 15 to 20 minutes and spit out. Id. “[A]n oil-
mouth-massage soothes and stimulates the key meridians where taste
meets the organ. Simultaneously, as in any skin-massage, the inner
skin and lining of the mouth, palate and tongue become warm and
supple and the lubrication prevents dryness.” Id.
FF4. Varvaresou teaches adding a preservative to cosmetics to prevent
microbial spoilage and thereby prolong shelf life of a product.
Varvaresou 163. Varvaresou teaches that caprylyl glycol has
antimicrobial activities as well as moisturizing properties. Id. at 166.
Varvaresou teaches that caprylyl glycol when used at a concentration
of 0.3% (w/w) in combination with another preservative leads to
complete elimination of E. coli and Aspergillus niger. Id. When
caprylyl glycol is used as the sole preservative concentrations of
0.5-1% are required for preserving oil in water and aqueous
formulations. Id.
FF5. According to the Specification, “cosmetically acceptable” is any
ingredient that is
suitable for use in the formulation for topical application
to human skin. A cosmetically acceptable excipient, for
example, is an excipient which is suitable for external
application in the amounts and concentrations
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contemplated in the formulations of this invention, and
includes, for example, excipients which are “Generally
Recognized as Safe” (GRAS) by the United States Food
and Drug Administration.
Spec. ¶ 26. We further note that the Specification teaches testing the
products on a substrate that mimics the surface properties of human skin. See
id. ¶¶ 106, 108.
Analysis
Based on the combination of Jeong, Wallace, and Varvaresou
Examiner concludes that, at the time Appellant’s invention was made, it
would have been prima facie obvious to include “caprylyl glycol to the
compositions of Jeong since caprylyl glycol was known for preventing
microbial spoilage and prolonging the shelf life of cosmetic products, as
taught by Varvaresou et al., which would have been advantageous for the
oral care products of Jeong.” Final Act. 4–5; FF1–FF5.
Appellant contends that Examiner has not made out a prima facie case
of obviousness. Specifically, Appellant contends that (1) Wallace teaches
away from a mouthwash for improving teeth and gum health (Appeal Br. 8);
(2) Examiner has not presented an articulated reason for formulating Jeong’s
toothpaste into a mouth rinse (id. at 13); (3) Varvaresou is not analogous art
(id. at 10); (4) caprylyl glycol preservative concentrations in Varvaresou are
higher than the concentration recited in the present claims (id. at 12); and
(5) the surprising moisture retention capacity of the combination of hemp
seed oil and caprylyl glycol (id. at 9; Reply Br. 9).
For the reason discussed below we are not persuaded by Appellant’s
contentions.
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Claim interpretation
We begin with claim interpretation because before a claim is properly
interpreted, its scope cannot be compared to the prior art. In this case, we
consider whether the preamble “a mouthrinse” provides any structural
limitation to the claimed composition.
A “mere statement of a new use for an otherwise old or obvious
composition cannot render a claim to the composition patentable.” In re
Zierden, 411 F.2d 1325, 1328 (CCPA 1969); see also Rowe v. Dror, 112
F.3d 473, 478 (Fed. Cir. 1997) (“Where . . . a patentee defines a structurally
complete invention in the claim body and uses the preamble only to state a
purpose or intended use for the invention, the preamble is not a claim
limitation.”); IMS Tech., Inc. v. Haas Automation, Inc., 206 F.3d 1422, 1434
(Fed. Cir. 2000) (“If the preamble adds no limitations to those in the body of
the claim, the preamble is not itself a claim limitation and is irrelevant to
proper construction of the claim.”); Catalina Mktg. Int’l, Inc. v.
Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed. Cir. 2002) (“[T]he
patentability of apparatus or composition claims depends on the claimed
structure, not on the use or purpose of that structure.”).
Claim 16 is directed to a composition. The body of claim 1 recites:
hempseed oil, caprylyl glycol, and an orally acceptable base. Because the
body of the claim recites a structurally complete invention, the “mouthrinse”
limitation as set out in the preamble does not provide any further limiting

6 Claim 13, the only other independent claim similarly recites a composition.
The composition of claim 13 requires only two ingredients hemp seed oil
and caprylyl glycol. See Supplemental Appeal Br. 5. The other listed
ingredients are optional and thereby not required. Id.
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features and merely recites the intended use of the composition.
Accordingly, the claims are interpreted as being directed to a composition
containing hempseed oil, caprylyl glycol, and an orally acceptable base.
We further note that the claim recites “comprising” before listing the
required ingredients. “‘Comprising’ is a term of art used in claim language
which means that the named elements are essential, but other elements may
be added and still form a construct within the scope of the claim.”
Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501 (Fed. Cir. 1997).
Therefore, the recited composition requires at a minimum the three listed
ingredients hempseed oil, caprylyl glycol, and an orally acceptable base, but
can also include additional ingredients beyond the three recited in the claim.
Arguments
We have reviewed Appellant’s contentions in light of Examiner cited
references and reasons for combining and find that Examiner has provided a
sufficient evidentiary basis from which to conclude the claims are obvious.
We address Appellant’s contentions below:
1. teaches away
We are not persuaded by Appellant’s contention that Wallace teaches
away from making the combination as proposed by Examiner. See Appeal
Br. 8. “A reference does not teach away . . . if it . . . does not ‘criticize,
discredit, or otherwise discourage’ investigation into the invention claimed.”
DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327
(Fed. Cir. 2009) (citing In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004)).
We agree with Examiner that Wallace’s statement that “[m]ore brushing,
flossing, and mouthwash won’t solve the problem” (Wallace 2), is not
criticizing, discrediting, or otherwise discouraging investigation of hemp
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seed oil, that is disclosed to be used in pulling therapy—slowly swishing
hemp seed oil in the mouth and drawing it through the teeth—, in other oral
care compositions. Ans. 3. Indeed, Wallace discloses the benefit that “an oil-
mouth-massage soothes and stimulates the key meridians where taste meets
the organ. Simultaneously, as in any skin-massage, the inner skin and lining
of the mouth, palate and tongue become warm and supple and the lubrication
prevents dryness.” FF3. Accordingly, we are not persuaded by Appellant’s
contention that Wallace teaches away from the presently claimed
composition.
2. lacks articulated reason for the combination
We are not persuaded by Appellant’s contention that Examiner has
not provided a satisfactory explanation or motivation for formulating
Jeong’s product into a mouth rinse. See Appeal Br. 13–14. As explained
above (see Claim Construction), the present claims are directed to a product
that presumably is orally acceptable in light of the presence of “an orally
acceptable base.”
Jeong’s product recites an oral composition containing hemp seed oil
in addition to other ingredients such as wetting agent, abrasive, sweetener,
pH adjusting agent, preservative, binder, and perfume. FF1, FF2. Here,
Examiner concludes that it would have been obvious to incorporate caprylyl
glycol, a known preservative, into Jeong’s oral composition “for preventing
microbial spoilage and prolonging the shelf life of cosmetic products.” Final
Act. 4–5; see FF2 and FF4.
The patentability of the product depends on the recited components
and “not on the use or purpose of that structure [/product].” Catalina Mktg.,
289 F.3d at 809. Therefore, arguments with respect to Examiner’s alleged
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lack of explanation for formulating a mouth rinse based on Jeong’s
toothpaste composition, which we conclude necessarily includes an orally
acceptable base, are not persuasive because they concern only the use of the
composition in a particular manner.
3. non-analogous art
Appellant contends that
the Office has not set forth any rational basis to support its
allegation that one skilled in the art would have selected a
material from a formulation in one product category (cosmetics)
and incorporated it into a formulation for another category (oral
care) for a completely different purpose (preservative vs.
moisturizer).
Appeal Br. 9. Appellant contends that Varvaresou’s cosmetic compositions
is non-analogous art. See Appeal Br. 10–11 (citing In re Bigio, 381 F.3d
1320, 1325 (Fed. Cir. 2004); In re Icon Health and Fitness, Inc., 496 F.3d
1374, 1379–80 (Fed. Cir. 2007); In re Clay, 966 F.2d 656, 658–59 (Fed. Cir.
1992)). We are not persuaded.
Examiner notes that the Specification recites that “[u]nless otherwise
specifically identified, the ingredients for use in the compositions and
formulations of the present invention are preferably cosmetically acceptable
ingredients.” Ans. 4–5 (emphasis omitted); Spec. ¶ 26; FF5. According to
the Specification, “cosmetically acceptable” is any ingredient that is
“suitable for use in the formulation for topical application to human skin”
and which ingredients are generally recognized as safe by the FDA. FF5; see
Ans. 4–5. Examiner reasons that cosmetically acceptable, as used in the
Specification and recognized in the art, are compositions that can be applied
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to the skin. Ans. 5 (citing Joerger7 and Koumans8); see also Final Act. 6–7
(“Technological Background” citing Prosise9 among others). Based on this
disclosure in the Specification, Examiner finds and we agree, that
Varvaresou is in the same field of endeavor – i.e. cosmetic compositions –as
the presently claimed composition. See Clay, 966 F.2d at 659; see Bigio 381
F.3d at 1326 (“the PTO must show adequate support for its findings on the
scope of the field of endeavor in the application’s written description and
claims, including the structure and function of the invention.”). Accordingly,
we are not persuaded by Appellant’s non-analogous art argument.
4. caprylyl glycol concentration
We are not persuaded by Appellant’s contention that the caprylyl
glycol concentrations in Varvaresou are higher than those presently claimed.
See Appeal Br. 12–13. Varvaresou teaches that when caprylyl glycol is used
as the sole preservative concentrations of 0.5–1% are needed for sufficient
preservation. FF4. The claims, however, are not limited to the recited three
ingredients: hemp seed oil, caprylyl glycol, and an orally acceptable base.
The claims recite the term “comprising” which provides that the
composition can include additional ingredients including additional
preservatives. See above Claim Interpretation. Because the claims are not
limited to the listed ingredients, we find that the claims encompass
compositions containing caprylyl glycol in addition to other preservatives.
Varvaresou teaches that caprylyl glycol when used at a concentration of

7 Joerger et al., US 2007/0207113 A1, publ. Sept. 6, 2007.
8 Koumans, US 2014/0242005 A1, publ. Aug. 28, 2014.
9 Prosise et al., US 2016/0067167 A1, publ. Mar. 10, 2016, ¶ 58
(Humectants such as hyaluronic acid, caprylyl glycol are compounds that
promote the retention of moisture).
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0.3% (w/w) in combination with another preservative leads to complete
elimination of E. coli and Aspergillus niger. FF4. Thus, Varvaresou
reasonably suggests using caprylyl glycol as an antimicrobial agent.
Examiner finds that Varvaresou teaches caprylyl glycol is useful as an
antimicrobial agent in oil and water emulsions and is effective at
concentrations at 0.3%. Final Act. 4; FF4. We agree with Examiner’s
position that the 0.3%, caprylyl glycol concentration disclosed in Varvaresou
is close enough to the 0.25% (see claim 6) as claimed that one of ordinary
skill in the art would reasonably have expected the same properties at the
lower concentration. See Final Act. 4.
Accordingly, we are not persuaded Appellant’s contention that the
caprylyl glycol concentrations in Varvaresou are outside the presently
claimed composition.
5. surprising moisture retention capacity
Appellant contends that “nothing in the references of record
supporting the rejection would teach or suggest that caprylyl glycol is
expected to provide any moisture benefit.” Reply Br. 6.
Varvaresou teaches that “1,2-octandiol or caprylyl glycol (Compound
1, Table I) is a C8 linear diol with moisturizing properties.” Varvaresou 166;
FF4; Ans. 7; see Appeal Br. 10. Accordingly, Appellant’s contention that the
combination of references relied on by Examiner does not disclose the
moisture retention properties of caprylyl glycol is not persuasive.
Appellant contends that a formulation comprising hemp seed oil and
caprylyl glycol presents a moisture retention capacity of at least 4.8 in tests
using the Vitro Skin™ method. Appeal Br. 9; Reply Br. 5–6. “The addition
of caprylyl glycol brings up the wetness score significantly.” Appeal Br. 9.
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Examiner responds that unexpected results require a showing of
“‘difference in kind,’ rather than a mere difference in degree.” Ans. 5 (citing
In re Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005)).
The Specification discloses six different mouthwash formulations:
Formula Ingredients
A Glycerin, Xylitol, Sorbitol, Propylene glycol, Poloxamer
407, Hydroxymethyl cellulose
B Hemp Seed Oil, White mineral oil, Glycerin, Sorbitol, Na-
saccharin, Sucralose, Citric Acid
C Hemp Seed Oil, Caprylyl Glycol, White mineral oil,
Glycerin, Sorbitol, Na-saccharin, Sucralose, Citric Acid
D Hemp Seed Oil, Caprylyl Glycol, Aloe vera oil, White
mineral oil, Glycerin, Sorbitol, Na-saccharin, Sucralose,
Citric Acid
E Hemp Seed Oil, Caprylyl Glycol, Hyaluronic acid, White
mineral oil, Glycerin, Sorbitol, Na-saccharin, Sucralose,
Citric Acid
F Sorbitol, propylene glycol, poloxamer 407, sodium lauryl
sulfate, flavor, Na-benzoate, Na-saccharin, phosphoric
acid, eucalyptol
Spec. ¶¶ 104 (Table 1a), 107 (listing ingredients for mouthwash F).
Appellant relies on Table 3 of the Specification to establish that the
caprylyl glycol increases the wetness score significantly. Reply Br. 9; see
also Appeal Br. 13 (“presenting a moisture retention capacity of at least
4.8.”). Table 3 is reproduced below:
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Table 3, shows wetness scores. As discussed above, Varvaresou teaches that
caprylyl glycol is known to have moisturizing properties. See FF4; see Final
Act. 7. Thus, the addition of caprylyl glycol would have the expected effect
of increasing moisture. See Ans. 6. We agree with Examiner that Table 3
does not establish that the addition of caprylyl glycol has an unexpected
effect. See Ans. 5. Here, both mouthwash formulations B and C contain
hemp seed oil. Mouthwash formulation A and F contain neither hemp seed
oil nor caprylyl glycol. What is missing from the table is a formulation that
contains: caprylyl clycol, white mineral oil, glycerin, sorbitol, Na-saccharin,
sucralose, and citric Acid. Because the art discloses that caprylyl glycol is
known to have moisturizing properties, a comparison to a formulation
containing caprylyl glycol without hemp seed oil is needed to establish that
the addition of caprylyl glycol to a hemp seed oil formulation produces a
moisturizing effect that is a “difference in kind” rather than a difference in
degree. See Ans. 5. Without a comparison of the moisturizing capacity of a
caprylyl glycol alone without hempseed oil there is no way to determine the
significance, if any, of the moisturizing capacity of the compositions recited
in Table 3. The evidence of record, therefore, is insufficient to support
Appellant’s position that the claimed formulation shows a surprising result.
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Conclusion
The preponderance of evidence relied upon by Examiner supports a
conclusion of obviousness. The rejection of claim 1 under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Jeong, Wallace, and
Varvaresou is affirmed. Claims 2–6, 13, and 14 are not separately argued
and fall with claim 1. 37 C.F.R. § 41.37 (c)(1)(iv).
II. Obviousness over Jeong, Wallace, Varvaresou, and Hanifl
Does the preponderance of evidence relied upon by Examiner support
a conclusion of obviousness?
Findings of fact (FF)
FF6. Hanifl teaches oral moisturizer formulations for providing relief from
dry mouth. Hanifl Abstract. Hanifl teaches that “[s]odium hyaluronate
(a.k.a. hyaluronic acid, hyaluron or hyaluronate) is a particularly good
moisturizer, lubricant and humectant. Hyaluronate is naturally present
in saliva and other areas of the body.” Id. ¶ 18.
FF7. Hanifl teaches that “[a]loe vera gel could be used with sodium
hyaluronate.” Id. ¶ 19.
Analysis
We are not persuaded by Appellant’s contention that there is no
motivation to choose hyaluronate/hyaluronic acid to add to Jeong’s
toothpaste. Appeal Br. 14. Here, Examiner finds that Hanifl teaches an oral
care mouth moisturizer for alleviating dry mouth comprising sodium
hyaluronate. Final Act. 5; FF6. Examiner finds that Hanifl also suggests
adding aloe vera to the hyaluronate product could be beneficial. Final Act. 5;
FF7. Examiner concludes that “it is prima facie obvious to combine two
compositions each of which is taught by the prior art to be useful for the
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same purpose in order to form a third composition that is to be used for the
very same purpose.” Final Act. 6.
We recognize, but are not persuaded by, Appellant’s contention that
Hanifl’s identification that sodium hyaluronate and hyaluronic acid are the
same chemical entity is in error. Reply Br. 8; FF6. Appellant fails to identify
an evidentiary basis on this record that rebuts Examiner’s reasoning that
“[s]odium hyaluronate (a.k.a. hyaluronic acid, hyaluron or hyaluronate)” are
interchangeable. Final Act. 5; FF7; In re Geisler, 116 F.3d 1465, 1471 (Fed.
Cir. 1997) (Argument of counsel cannot take the place of evidence).
Conclusion
The preponderance of evidence relied upon by Examiner supports a
conclusion of obviousness. The rejection of claims 7–12 under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Jeong, Wallace,
Varvaresou, and Hanifl is affirmed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–6, 13, 14 103 Jeong, Wallace,
Varvaresou
1–6, 13, 14
7–12 103 Jeong, Wallace,
Varvaresou, Hanifl
7–12
Overall
Outcome
1–14

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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