Colgate-Palmolive CompanyDownload PDFPatent Trials and Appeals BoardNov 25, 20202020000962 (P.T.A.B. Nov. 25, 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. 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.”) Appeal 2020-000962 Application 15/597,676 2 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: Appeal 2020-000962 Application 15/597,676 3 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”). Appeal 2020-000962 Application 15/597,676 4 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 Appeal 2020-000962 Application 15/597,676 5 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. Appeal 2020-000962 Application 15/597,676 6 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. Appeal 2020-000962 Application 15/597,676 7 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 Appeal 2020-000962 Application 15/597,676 8 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 Appeal 2020-000962 Application 15/597,676 9 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 Appeal 2020-000962 Application 15/597,676 10 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). Appeal 2020-000962 Application 15/597,676 11 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. Appeal 2020-000962 Application 15/597,676 12 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: Appeal 2020-000962 Application 15/597,676 13 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. Appeal 2020-000962 Application 15/597,676 14 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 Appeal 2020-000962 Application 15/597,676 15 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 Appeal 2020-000962 Application 15/597,676 16 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