Colgate-Palmolive Company

Patent Trials and Appeals Board

Sep 29, 2021

2020005619 (P.T.A.B. Sep. 29, 2021)

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.
15/577,783 11/29/2017 Tilo Poth 10880-00-US-01-OC 8630
23909 7590 09/29/2021
COLGATE-PALMOLIVE COMPANY
909 RIVER ROAD
PISCATAWAY, NJ 08855
EXAMINER
WEBB, WALTER E
ART UNIT PAPER NUMBER
1612
NOTIFICATION DATE DELIVERY MODE
09/29/2021 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 TILO POTH, HANSPETER WOLF,
JOSHUA SCHMID, and ROBERT D’AMBROGIO
Appeal 2020-005619
Application 15/577,783
Technology Center 1600
Before JEFFREY N. FREDMAN, JENNIFER MEYER CHAGNON, and
TAWEN CHANG, Administrative Patent Judges.
CHANG, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–4, 9–15, 20, and 21. 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. Appeal Br. 2.
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STATEMENT OF THE CASE
“Dentinal hypersensitivity (i.e. sensitivity) is a painful condition
resulting from the movement of liquid in exposed dentin tubules from
external stimuli such as pressure and temperature.” Spec. ¶ 1. The
Specification states that “[t]oothpastes fighting sensitive teeth often contain
the salt potassium nitrate. However, this ingredient is well known to have
foam breaking properties making it difficult to obtain the sensory foam
profile which delivers improved consumer acceptance.” Id. ¶ 2. The
Specification further states that “[c]onventional levels of surfactants usually
yield acceptable foam volumes when tested in pure water,” but “when the
testing is performed in solutions mimicking the composition of human saliva
it is hard to achieve foam levels that exceed a certain volume as also human
saliva has foam breaking properties.” Id.
According to the Specification, therefore, “there is a need for an oral
care composition formulation which retains excellent foaming properties in
human saliva when formulated with salts such as potassium nitrate, zinc
salts or phosphate salts.” Id. ¶ 3. Further according to the Specification,
“[s]urprisingly, the present inventors discovered that a dual surfactant
system that does not comprise a non-ionic surfactant, wherein the surfactants
are anionic and cationic/amphoteric surfactants, delivers improved foaming
properties in artificial saliva and also compensates for the foam breaking
properties of saliva.” Id. ¶ 5.

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CLAIMED SUBJECT MATTER
The claims are directed to an oral care composition. Claim 1 is
illustrative:
1. An oral care composition comprising:
a) an anionic surfactant, wherein the anionic
surfactant is sodium lauryl sulfate (SLS);
b) a cationic or amphoteric surfactant, wherein the
cationic or amphoteric surfactant is
cocamidopropyl betaine (CAPB); and
c) a potassium salt;
wherein the oral care composition does not comprise a
non-ionic surfactant, wherein the anionic surfactant is
present in an amount of from 2.0 weight % to 3.0 weight
%, and cocamidopropyl betaine is present in an amount
of from 0.30 weight% to 0.60 weight% of the
composition, wherein the potassium salt is potassium
nitrate, and wherein potassium nitrate is present in an
amount of from 4 to 6 weight % based on the total weight
of the oral care composition.
Appeal Br. 17 (Claims App.).

REJECTION(S)
A. Claims 1–4 and 11–15 are rejected under 35 U.S.C. § 103 as being
unpatentable over Gorlin.2 Final Act. 3.
B. Claims 1–4, 9–15, 20, and 21 are rejected under 35 U.S.C. § 103 as
being unpatentable over Gorlin and Smitherman.3 Final Act. 4.

2 Gorlin et al., US 5,833,956, issued Nov. 10, 1998.
3 Smitherman, US 5,015,467, issued May 14, 1991.
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C. Claims 1–4, 9–13, 20, and 21 are rejected under 35 U.S.C. § 103 as
being unpatentable over Barth.4 Final Act. 6.
D. Claims 14 and 15 are rejected under 35 U.S.C. § 103 as being
unpatentable over Barth and Smitherman. Final Act. 8.
E. Claims 1–4, 9–15, 20, and 21 are rejected under 35 U.S.C. § 103 as
being unpatentable over Nowak.5 Final Act. 8.
F. Claims 1–4, 9–15, 20, and 21 are rejected under 35 U.S.C. § 103 as
being unpatentable over Baig.6 Final Act. 10.
G. Claims 1–4, 9–15, 20, and 21 are rejected under 35 U.S.C. § 103 as
being unpatentable over Arai7 and Baig ’442.8 Final Act. 12.

OPINION
A. Obviousness rejection over Gorlin (claims 1–4, 11–15)
1. Issue
The Examiner finds that Gorlin teaches a dentifrice (Composition C)
that meets all of the limitations of claim 1 except that it does not comprise
potassium nitrate. Final Act. 3. The Examiner finds that it would have been
obvious to add potassium nitrate to this embodiment because Gorlin teaches
that potassium nitrate, useful for treatment of dental hypersensitivity, may be
included in the oral preparations of its invention. Id. The Examiner further

4 Barth et al., US 2006/0222602 A1, published Oct. 5, 2006.
5 Nowak et al., US 2012/0100193 A1, published Apr. 26, 2012.
6 Baig et al., US 2011/0089073 A1, published Apr. 21, 2011.
7 Arai et al., JP 2005-68071 A, published Mar. 17, 2005.
8 Baig et al., US 2003/0165442 A1, published Sept. 4, 2003.
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asserts that it would have been obvious to optimize the potassium nitrate
concentration in the composition to arrive at the claimed invention. Id. at 4.
Appellant contends that, in contrast to the composition of claim 1,
which excludes nonionic surfactants, Gorlin’s composition requires a
nonionic surfactant. Appeal Br. 5; Reply Br. 2. Appellant contends that
Composition C is not Gorlin’s invention but a negative control and that,
furthermore, Composition C contains neither potassium nitrate nor an
amount of CAPB within the claimed range. Appeal Br. 5–6; Reply Br. 2–3.
Appellant contends that “[t]he Examiner has not provide any articulated
reasoning why one of skill in the art would be motivated to modify
Composition C[,] disclosed as a negative control in Gorlin[,] by (i) adding 4-
6% potassium nitrate and (ii) increas[ing] the amount of CAPB to 0.3-0.6%
to arrive at the claimed composition recited in claim 1.” Appeal Br. 6; see
also Reply Br. 2, 4. Appellant further contends that the claimed subject
matter exhibits unexpected results. Appeal Br. 14–15; Reply Br. 4, 11–12.
Appellant does not separately argue the claims; we therefore focus our
analysis on claim 1 as representative. The issues with respect to this
rejection are (1) whether a skilled artisan would have had reason to combine
and/or modify the teachings in Gorlin to arrive at the invention of claim 1
and, if so, (2) whether Appellant has provided evidence of unexpected
results that, when considered together with the evidence of obviousness,
shows claim 1 to be non-obvious.
2. Findings of Fact
1. Gorlin teaches “a substantial nonirritating oral composition
containing a surfactant system comprised of a combination of an anionic
surfactant, an amphoteric surfactant and a nonesterified alkyl polyglucoside
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surfactant.” Gorlin, Abstr.
2. Gorlin teaches that “sodium lauryl sulfate (SLS) is a widely
used surfactant in oral compositions, including dentifrices.” Id. at 1:11–12.
3. Gorlin teaches that
[s]urfactants, and particularly anionic surfactants, such as
SLS, serve as a solubilizing, dispersing, emulsifying and
wetting agent for the other ingredients present in the
dentifrice and are especially effective in solubilizing the
flavor present. A cosmetic effect of the surfactant is that
it promotes foaming of the oral composition. Oral
compositions with strong foaming ability are preferred by
consumers since the foaming provides the perception that
the oral composition cleans effectively only if it foams
well.
Id. at 1:13–22.
4. Gorlin discloses prior art teaching that
inclusion of a nonionic or an amphoteric surfactant
serves to increase the foaming ability of the oral
composition to consumer desirable levels and can further
reduce the irritability of the purified sodium lauryl
sulfoacetate. The nonionic compositions disclosed
included ethylene oxide containing polymers and oxygen
containing heterocylic nitrogen compounds. The
amphoteric compounds include amidobetaine compounds
such as cocoamidoethyl betaine, cocoamidopropyl
betaine, lauramidopropyl betaine and the like.
Id. at 1:41–52; see also id. at 3:15 (teaching that “[a] preferred betaine is
cocoamidopropyl betaine”).
5. Gorlin teaches that
[t]he total amount of surfactant comprising the surfactant
system present in the composition ranges from about
0.5% to about 3.0% by weight, preferably about 1.5% to
about 2.5% by weight. The amount of anionic surfactant
ranges from about 0.2 to about 2.0% by weight,
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preferably from about 0.5 to about 2.0% by weight. The
amount of amphoteric surfactant ranges from about 0.2 to
about 1.0% by weight. The amount of nonesterified
nonionic surfactant ranges from about 0.2 to about 2.0%
by weight, preferably from about 0.5 to about 2.0% by
weight.
Id. at 3:61–4:3.
6. Gorlin teaches that other materials, e.g., potassium salts for the
treatment of dental hypersensitivity such as potassium nitrate, “may be
incorporated in the oral preparations of [its] invention . . . in amounts which
do not substantially adversely affect the properties and characteristics
desired.” Id. at 5:6–18.
7. Gorlin compared a composition of its invention, Composition
A, to “comparative compositions B, C, D, and E . . . differing from
Composition A only in the relative presence/amounts of anionic, amphoteric
and nonesterified nonionic APG surfactants within each composition.” Id. at
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5:44–56. The ingredients of compositions A–E are set forth in Table I,
reproduced below:

Id. at 6:4–26 (Table I). Table I sets out the ingredients in dentifrice
compositions A–E. Id.
8. Gorlin teaches that all the dentifrice compositions containing
surfactant(s) in addition to SLS “exhibited higher foam levels than when
SLS alone was the sole surfactant (Composition B),” but that the surfactant
system used in Composition A “exhibited a Zein Score of 7.7 which was at
least 50% to about 75% less than the Zein scores of the comparative
compositions B–E, indicating the substantial and unexpected reduction in
gingival irritation observed in the use of Composition A, as compared to
Compositions B–E.” Id. at 6:38–40, 7:26–31.
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9. The Specification teaches that potassium nitrate “is well known
to have foam breaking properties.” Spec. ¶ 2.
10. The Specification, at Examples 1–3, compares 3 different
toothpastes, each comprising 2.18 weight % SLS and 1.25 weight % of a
30% aqueous CAPB solution (0.38 wt % CAPB), against comparative
compositions comprising a foam system consisting of, respectively, 1.13
wt%, 1.13 wt%, and 1.42 wt% SLS. Id. ¶¶ 49–64. The Specification
purports to show that toothpastes comprising a foam system of SLS and
CAPB had significantly higher foam volume/ml than a comparative
toothpaste comprising a foam system of SLS without CAPB during the first
minute of the application to artificial saliva. Id. ¶¶ 48–64.
11. Example 4 compares “foaming measurements” of toothpastes
comprising potassium nitrate, sodium fluoride, and “single, dual, [or] triple-
surfactant toothpaste systems” consisting of, respectively, SLS, SLS and
CAPB, and SLS, CAPB, and Poloxamer. Id. ¶¶ 65–67. The Specification
states that “it is unexpectedly found that foam generation is more rapid and
stronger for the dual-surfactant system than for the triple-surfactant system
during the first 50 seconds of test (which is the most critical to consumer
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acceptance).” Id. ¶ 68. The data set forth in Table 8 of Example 4 is
reproduced below:
Time
(Sec.)
D-1 D-2 D-3 E-1 E-2 E-3 F-1 F-2 F-3
10 63 183 128 152 192 174 150 170 156
20 85 259 207 213 284 234 189 251 209
30 100 312 260 263 357 317 220 326 276
40 105 370 327 302 404 363 247 371 321
50 120 399 367 333 412 376 277 390 378
60 130 410 385 367 422 409 298 399 396
Id. ¶ 68, Table 8. Table 8 sets forth the “[f]oam [v]olume [d]ata between
[s]ingle, [d]ual and [t]riple [s]urfactant [s]ystems.”9 Id.
3. Analysis
Unless otherwise noted, we adopt the Examiner’s findings of fact and
reasoning regarding the scope and content of the prior art (Final Act. 3–4;
Ans. 3–4, 10–12) and agree with the Examiner that claim 1 is obvious over
Gorlin. We address Appellant’s arguments below.
Appellant contends that a skilled artisan would not have had a reason
to use composition C, which the Examiner relies on in establishing a prima
facie case, as a starting point for further modification. Appeal Br. 5; Reply
Br. 4. In particular, Appellant contends Gorlin requires a nonionic
surfactant in its composition and teaches that Composition C, which is used

9 According to the Specification, Formulations D-1, D-2, and D-3 comprise
a “Multi-Protection” toothpaste base; Formulations E-1, E-2, and E-3
comprise an “Enamel Protection” toothpaste base; and Formulations F-1, F-
2, and F-3 comprise a “Whitening” toothpaste base. Spec. ¶ 66, Table 7.
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as a negative control, causes gingival irritation as compared to Gorlin’s
composition comprising a nonionic surfactant. Appeal Br. 5; Reply Br. 2.
We are not persuaded. “‘[T]he question is whether there is something
in the prior art as a whole to suggest the desirability, and thus the
obviousness, of making the combination,’ not whether there is something in
the prior art as a whole to suggest that the combination is the most
desirable combination available.” In re Fulton, 391 F.3d 1195, 1200 (Fed.
Cir. 2004) (quoting In re Beattie, 974 F.2d 1309, 1311 (Fed. Cir. 1992)).
In this case, Gorlin teaches that SLS is “a widely used surfactant in
oral compositions” that promotes foaming of the composition, an attribute
desirable to consumers. FF2, FF3. Gorlin also teaches that “inclusion of a
nonionic or an amphoteric surfactant serves to increase the foaming ability
of the oral composition to consumer desirable levels and can further reduce
the irritability of the purified sodium lauryl sulfoacetate,” FF4 (emphasis
added). Id. Gorlin further teaches CAPB as a preferred amphoteric
surfactant. Id. Thus, Gorlin teaches the desirability of the combination of
SLS and CAPB alone without a nonionic surfactant, and renders obvious a
dentifrice comprising such a combination (i.e., composition C) for purposes
of increasing the foaming ability of an oral composition, even if Gorlin also
teaches that Composition C may be inferior to Gorlin’s inventive
composition in terms of gingival irritation. FF7, FF8.
Appellant contends that “the proposed modification to remove non-
ionic surfactant would (according to Gorlin) render the Gorlin invention
modified unsatisfactory for its intended purpose.” Appeal Br. 5; Reply Br.
3. Appellant similarly contends that Gorlin “teach[es] away from
formulations without nonionic surfactant as claimed.” Reply Br. 12.
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We are not persuaded. Although Gorlin teaches that its invention
comprising a nonionic surfactant is superior in reducing gingival irritation
when compared to Composition C, Appellant has cited no persuasive
evidence that Gorlin suggests Composition C cannot be used satisfactorily as
a dentifrice. See In re Fulton, 391 F.3d at 1200 (explaining that “[a] known
or obvious composition does not become patentable simply because it has
been described as somewhat inferior to some other product for the same use”
and that “a finding that the prior art as a whole suggests the desirability of a
particular combination need not be supported by a finding that the prior art
suggests that the combination claimed by the patent applicant is the
preferred, or most desirable, combination”).
Appellant notes that “Composition C in Gorlin does not contain
potassium nitrate” and that, “while Gorlin discloses that . . . potassium
nitrate may be incorporated in the oral preparations of . . . Gorlin’s
invention[],” “the composition C is not ‘the oral preparation of [Gorlin’s]
invention.’” Appeal Br. 5–6. Appellant thus contends that “[t]here is no
teaching or suggestion in Gorlin that would motivate one of skill in the art to
incorporate potassium nitrate in Composition C.” Id. at 6.
We are not persuaded. A reference need not provide an explicit
suggestion to combine particular teachings in order to provide the requisite
motivation to combine. Cf. In re Nilssen, 851 F.2d 1401, 1403 (Fed. Cir.
1988) (holding that “for the purpose of combining references, those
references need not explicitly suggest combining teachings, much less
specific references”). Here, Gorlin teaches that potassium nitrate is useful
for treating dental hypersensitivity. FF6. Accordingly, a skilled artisan
would be motivated to include potassium nitrate in a dentifrice composition
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such as Composition C to treat hypersensitivity. KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 416 (2007) (“The combination of familiar elements
according to known methods is likely to be obvious when it does no more
than yield predictable results.”).
Appellant also contends that Composition C does not contain an
amount of CAPB within the claimed range. Appeal Br. 6; Reply Br. 2.
Appellant contends that “[t]he Examiner has not provide any articulated
reasoning whey one of skill in the art would be motivated to modify
Composition C disclosed as a negative control in Gorlin by (i) adding 4-6%
potassium nitrate and (ii) increase the amount of CAPB to 0.3-0.6% to arrive
at the claimed composition recited in claim 1.” Appeal Br. 6; Reply Br. 4.
We agree with the Examiner that a skilled artisan would have had
reason to incorporate potassium nitrate to Composition C for the reasons
already discussed above. We further agree with the Examiner that it would
have been obvious to optimize the amounts of potassium nitrate and CAPB
in Composition C to arrive at the composition of claim 1.10 “[W]here the
general conditions of a claim are disclosed in the prior art, it is not inventive
to discover the optimum or workable ranges by routine experimentation.” In
re Aller, 220 F.2d 454, 456 (CCPA 1955). In this case, Gorlin discloses the
general conditions of the claim because it also teaches use of potassium
nitrate to treat dental hypersensitivity and CAPB to increase the foaming

10 Table 1 states that Composition C contains 0.5% CAPB and that CAPB is
a 31% aqueous solution. FF7. It is unclear whether 0.5% refers to the actual
amount of CAPB in Composition C, or to the 31% aqueous solution. To the
extent the Examiner finds that Composition C comprises 0.5% CAPB, we do
not adopt this finding. Nevertheless, as discussed, we agree with the
Examiner that Gorlin renders the claimed range of CAPB obvious.
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ability of the oral composition. FF4, FF6. Moreover, Gorlin discloses a
comparative Composition D comprising 1.5% SLS and 1.0% CAPB (i.e.,
0.31% CAPB to the extent the 1.0% CAPB refers to the 31% aqueous
solution). Thus, we find that Gorlin renders obvious the claimed ranges of
potassium nitrate (4–6%) and CAPB (0.30–0.60%).
Neither has Appellant provided persuasive evidence that the claimed
ranges of potassium nitrate and/or CAPB are critical or provide unexpected
results. Appellant contends that Examples 1–4 of the Specification
demonstrates “improved foaming properties of the claimed composition,”
which Appellant contends “is not taught by the cited references and [is]
unexpected.” Appeal Br. 14–15; see also Reply Br. 11–12. Appellant
contends that,
[a]s one of skill in the art would have no motivation to
add 1-3% SLS and 0.30-0.60% cocamidopropyl betaine,
without nonionic surfactant, into an oral care
composition comprising a potassium salt with a
reasonable expectation of success that the claimed
surfactant system would improve foaming properties of a
composition containing 4-6% potassium nitrate, as
demonstrated by the Examples, the claimed invention is
not obvious.
Appeal Br. 15. In the Reply Brief, Appellant further contends that “Gorlin
does not discuss anything regarding foam properties of a composition
containing potassium nitrate, and moreover teaches away from compositions
which lack a nonionic surfactant. Thus, the beneficial effect shown in the
present application is unexpected in view of Gorlin.” Reply Br. 4, 11–12.
We have explained above why a skilled artisan would have had reason
to combine Gorlin’s teachings and arrive at the claimed invention, with a
reasonable expectation of success. Neither are we persuaded by Appellant’s
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contention that the subject matter of claim 1 exhibits unexpected results.
Examples 1–3 at most show toothpastes comprising SLS and CAPB have
superior foam formation when compared to toothpastes comprising SLS
alone. FF10. However, as discussed above, Gorlin teaches that inclusion of
an amphoteric surfactant increases the foaming ability of the oral
composition. FF4. Thus, the results set forth in Examples 1–3 are expected.
Furthermore, “[t]he evidence presented to rebut a prima facie case of
obviousness must be commensurate in scope with the claims to which it
pertains.” In re Dill, 604 F.2d 1356, 1361 (CCPA 1979). Likewise, “when
unexpected results are used as evidence of nonobviousness, the results must
be shown to be unexpected compared with the closest prior art.” In re
Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991). Assuming
Example 4 shows that a composition comprising SLS and CAPB provided
greater foaming improvement than a composition comprising SLS, CAPB,
and a nonionic surfactant,11 and assuming that such results are unexpected,
Example 4 in the Specification does not provide information sufficient to
show that the alleged unexpected improvement is commensurate with the
scope of the claim.
For example, although Example 4 indicates that 3 different types of
compositions (i.e., multi-protection, enamel protection, and whitening) were
compared, the Specification does not indicate whether the same
concentrations of SLS, CAPB, and/or poloxamer were used in each of the 3
different formulations. FF11. Neither does Appellant provide any

11 Appellant provides no statistical analyses of the results from Example 4;
thus, it is difficult to determine whether any alleged foaming improvements
shown by the inventive compositions are significant.
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explanation as to why the results obtained from comparing these three sets
of compositions would be representative of other compositions falling within
claim 1.
Furthermore, Example 4 also did not compare the invention to the
closest prior art, such as the compositions set forth in Gorlin’s Table 1. Ans.
11. In response, Appellant contends that none of the compositions disclosed
in Gorlin’s tables contain potassium nitrate and that, “[p]lainly, Gorlin was
not concerned with the effects of potassium nitrate on foaming.” Reply Br.
12. Appellant also contends that, while Composition E “exhibited the
highest level of foam” among Gorlin’s example compositions, it differs
significantly from the invention of claim 1 because Composition E contains
Plantaren 2000, a non-ionic surfactant, rather than CAPB. Id. Appellant
appears to argue that, accordingly, Composition A, which “exhibited the
highest level of foam” among the remaining four of Gorlin’s example
compositions, is the closest prior art and that Example 4 essentially
compared the invention to the closest prior art because “[t]he surfactant
system of Gorlin’s Composition A is similar to a triple-surfactant system
comprising SLS, CAPB and Poloxamer tested in the present application in
tha[t] both surfactant systems contain a nonionic surfactant (Plantaren 2000
or poloxamer) in addition to SLS and CAPB.” Id.
We are not persuaded. Appellant does not explain why one or more
of the example compositions in Gorlin would not be considered the closest
prior art, merely because Gorlin is not focused specifically on “the effects of
potassium nitrate on foaming.” This is particularly the case given that
(1) Appellant concedes that it is well known that potassium nitrate has foam
breaking properties (FF9), and (2) Gorlin teaches that surfactants are useful
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in foam formation (FF3, FF4). In this regard, we note that, “[i]n determining
whether the subject matter of a patent claim is obvious, neither the particular
motivation nor the avowed purpose of the patentee controls. . . . [A]ny need
or problem known in the field of endeavor at the time of invention and
addressed by the patent can provide a reason for combining the elements in
the manner claimed.” KSR, 550 U.S. at 419–20. Neither are we persuaded
by Appellant’s apparent argument that Example 4 essentially compared the
invention to the closest prior art. This argument is supported only by
attorney argument, which cannot take the place of evidence. Johnston v.
IVAC Corp., 885 F.2d 1574, 1581 (Fed. Cir. 1989).
Accordingly, we affirm the Examiner’s rejection of claim 1 as
obvious over Gorlin. Claims 2–4 and 11–15, which were not separately
argued, fall with claim 1.
B. Obviousness rejection over Gorlin and Smitherman (claims 1–4,
9–15, 20, 21)
With respect to the rejection of the claims over Gorlin and
Smitherman, Appellant states only that
Smitherman is cited for the amount of potassium
nitrate, tartar control agents and zinc citrate but does not
cure the deficiency of Gorlin. Smitherman does not
teach or suggest anything regarding a surfactant system
for an oral care composition containing potassium nitrate.
Thus, one of skill in the art would not be motivated to
modify Gorlin’s composition to arrive at the claimed
composition recited in claim 1.
Appeal Br. 6. As discussed above, we do not find Gorlin deficient in
rendering claim 1 obvious. Thus, we affirm the Examiner’s rejection of
claims 1–4, 9–15, 20, and 21 as obvious over Gorlin and Smitherman for the
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same reasons discussed above with respect to the rejection of claim 1 over
Gorlin.
C. Obviousness rejection over Barth (claims 1–4, 9–13, 20, 21)
1. Issue
The Examiner finds that Barth discloses an embodiment (Example 1)
that meets all of the limitations of claim 1, except that “the amount of
sodium lauryl sulfate . . . , i.e. 1.5%, falls just outside the claimed 2.0
weight % to 3.0 weight[]% range.” Final Act. 6–7. The Examiner asserts
that “[i]t would have been obvious to adjust the concentration of sodium
lauryl sulfate within claimed range,” because Barth also teaches that “[t]he
surfactant or the surfactant mixture is normally employed in the
compositions of the invention in an amount of 0.1-10% by weight,
preferably 0.3-7% by weight and in particular 1-5% by weight, based on the
total weight of the composition.” Id. at 7.
Appellant emphasizes that the embodiment cited by the Examiner
does not disclose or suggest amounts of SLS and CAPB within the claimed
range and that Barth does not otherwise suggest the specific combinations of
surfactants recited in claim 1. Appeal Br. 7–8; Reply Br. 5. Appellant
contends that, contrary to the requirements of claim 1, Barth teaches that
nonionic surfactants may be useful in its invention, particularly for “assisting
the cleaning effect.” Appeal Br. 7. Appellant contends that the claimed
subject matter exhibits unexpected results. Appeal Br. 14–15; Reply Br. 6.
Appellant does not separately argue the claims. We therefore focus
our analysis on claim 1 as representative. The issues with respect to this
rejection are (1) whether a preponderance of evidence supports the
Examiner’s conclusion that it would have been obvious to a skilled artisan to
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adjust the concentrations of SLS and CAPB in Barth’s compositions,
without including a nonionic surfactant, to arrive at the claimed invention
and, if so, (2) whether Appellant has provided evidence of unexpected
results that, when considered together with evidence of obviousness, shows
claim 1 to be non-obvious.
2. Findings of Fact
12. Barth teaches “oral and dental hygiene products having a
content of specific composite materials and cleaning agents which ensure a
gentle cleaning with simultaneous remineralization of the tooth surface.”
Barth ¶ 5.
13. Barth teaches that “[t]he oral and dental hygiene products of
[its] invention comprise in a further preferred embodiment additional
toothpaste ingredients such as surfactants,” which are used to “improve the
cleaning effect and the foam formation by the oral and dental hygiene
products of the invention.” Id. ¶¶ 69–70.
14. Barth teaches that, “[i]n principle, it is possible to use anionic
surfactants, zwitterionic and ampholytic surfactants, nonionic surfactants,
cationic surfactants or mixtures of these compounds as surfactants in
toothpaste formulations.” Id. ¶ 71.
15. Barth teaches that “[t]he surfactant or the surfactant mixture is
normally employed in the compositions of the invention in an amount of
0.1-10% by weight, preferably 0.3-7% by weight and in particular 1-5% by
weight, based on the total weight of the composition.” Id. ¶ 72.
16. Barth teaches that “[s]uitable surfactants with a good foaming
effect are anionic surfactants which also have a certain enzyme-inhibiting
effect on the bacterial metabolism of the dental plaque.” Id. ¶ 73.
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17. Barth teaches that “[i]t is preferred to use at least one anionic
surfactant, in particular a sodium lauryl alkyl sulfate having 12-18 C atoms
in the alkyl group,” and that “[o]ne surfactant of this type is sodium lauryl
sulfate.” Id. ¶ 75; see also id. ¶ 71 (teaching that toothpastes according to
the invention preferably comprise at least one anionic surfactant).
18. Barth teaches that “[i]t may be preferred according to the
invention to employ zwitterionic and/or ampholytic surfactants, preferably
in combination with anionic surfactants. . . . Particularly suitable
zwitterionic surfactants are the so-called betaines . . . . [C]ocamidopropyl
betaine is particularly preferred.” Id. ¶ 76.
19. Barth teaches that “[n]onionic surfactants are particularly
suitable . . . for assisting the cleaning effect.” Id. ¶ 78.
20. Barth teaches an example of a semi-viscous toothpaste
preparation containing the following ingredients:
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Id. ¶ 139. Note 5 states: “Tego Betain® BL 215: INCI: cocamidopropyl
betaine; AS: 30% manufacturer: Goldschmidt.” Id. ¶ 148. Note 6 states:
“Texapon®K12G: INCI: sodium lauryl sulfate; AS. 95-99% manufacturer:
Cognis.” Id. ¶ 149.
3. Analysis
Unless otherwise noted, we adopt the Examiner’s findings of fact and
reasoning regarding the scope and content of the prior art (Final Act. 6–7;
Ans. 4–5, 10–12) and agree with the Examiner that claim is obvious over
Barth. We address Appellant’s arguments below.
Appellant contends that “[t]he amounts of SLS (1.5% or 1.35%) and
CAPB (0.18% or 0%) present in Barth[’s] . . . Examples 1-3[] are not even
close to the claimed amounts.”12 Appeal Br. 7, 8; Reply Br. 5. Appellant
further contends that “Barth . . . does not teach or suggest anything regarding
the amount of SLS and CAPB” because Barth only discloses “very broad”
ranges “for surfactant (if used alone) or surfactant mixture (if used
together),” without disclosing “any range for specific types of surfactants
(e.g., anionic surfactant or amphoteric surfactant), much less for the specific

12 Example 1 of Barth teaches a composition comprising 0.600% Tego
Betain® BL 215, which is a 30% aqueous solution of cocamidopropyl
betaine. FF20. To the extent the Examiner finds that Example 1 comprises
an amount of CAPB between 0.30–0.60 weight % as recited in claim 1, we
do not adopt this finding. Nevertheless, as discussed, we agree with the
Examiner that Barth renders the claimed range of CAPB obvious.
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combination of SLS and CAPB.” Appeal Br. 7; Reply Br. 5 (characterizing
Barth’s disclosure as “teaching virtually any combination of surfactants”).
Appellant contends that “[t]he Examiner has not provided any articulated
reasoning why one of skill in the art would be motivated to modify Barth’s
composition comprising potassium nitrate (Example 1) by increasing the
amounts of SLS and CAPB” to arrive at the claimed surfactant system.
Appeal Br. 8.
We are not persuaded. Although Barth does not disclose an
embodiment comprising amounts of SLS and CAPB within the claimed
ranges, all disclosures in the prior art, not only examples, must be
considered. In re Lamberti, 545 F.2d 747, 750 (CCPA 1976). Neither do
we agree with Appellant’s apparent position that only separate disclosures of
ranges for different types of surfactants (or even particular recited
surfactants) would render claim 1 obvious. “A person of ordinary skill is
also a person of ordinary creativity, not an automaton,” KSR, 550 U.S. at
421, and such explicit direction in the prior art is not necessary to render
claim 1 obvious.
In this case, Barth teaches that oral and dental hygiene products
preferably include surfactants for purposes of, e.g., foam formation; that “[i]t
is preferred to use at least one anionic surfactant,” in particular a sodium
lauryl alkyl sulfate such as SLS; and that “[i]t may be preferred . . . to
employ zwitterionic and/or ampholytic surfactants,” particularly CAPB,
“preferably in combination with anionic surfactants.” FF13, FF14, FF16,
FF17. The above disclosures from Barth, as well as Example 1, renders
obvious an oral care composition comprising a surfactant system consisting
of SLS and CAPB.
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Barth further teaches using surfactant or surfactant mixture “in an
amount of 0.1-10% by weight, preferably 0.3-7% by weight and in particular
1-5% by weight.” FF15. Thus, the amount of SLS (2.0–3.0 weight %) and
the amounts of SLS and CAPB recited in claim 1 combined (2.3–3.6 weight
%) fall within the range of surfactant concentrations disclosed as particularly
preferred by Barth. Likewise, the amount of CAPB recited in claim 1 (0.30–
0.60 weight %) falls within the range of surfactant concentration disclosed
as preferred by Barth.
Our reviewing court has held that “even a slight overlap in range
establishes a prima facie case of obviousness” and has further held that
“when . . . the claimed ranges are completely encompassed by the prior art,
the conclusion [of obviousness] is even more compelling.” In re Peterson,
315 F.3d 1325, 1329–1330 (Fed. Cir. 2003). Likewise, as already discussed
above, “where the general conditions of a claim are disclosed in the prior art,
it is not inventive to discover the optimum or workable ranges by routine
experimentation.” In re Aller, 220 F.2d at 456.
We are similarly unpersuaded by Appellant’s argument that the ranges
disclosed in Barth (0.1–10%, preferably 0.3–7%, and in particular 1–5% by
weight) are so broad compared to the claimed ranges (2–3% SLS and 0.3–
0.6% CAPB) that Barth merely disclosed a “genus” of which claim 1 is a
non-obvious species. Appeal Br. 7–8 (citing MPEP §§ 2144.05, 2144.08).
In In re Peterson, for example, the limitation of “about 9.5% cobalt” in a
superalloy composition was found prima facie obvious over prior art
disclosure of “0–20%” cobalt, and “about 0.05% carbon” was found prima
facie obvious over prior art disclosure of “at least 0.002% carbon.” In re
Peterson, 315 F.3d at 1329.
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Accordingly, we find that Barth’s disclosures cited above establishes a
prima facie case of obviousness as to the amounts of SLS and CAPB recited
in claim 1.
Appellant contends that “claim 1 requires that the oral care
composition does not comprise a non-ionic surfactant, whereas Barth
teaches . . . nonionic surfactants in the list of surfactants” and “further
teaches that nonionic surfactants are particularly suitable according to the
invention for assisting the cleaning effect.” Appeal Br. 8.
We are not persuaded. That Barth also suggests oral care
compositions comprising nonionic surfactants does not render compositions
without such surfactants non-obvious, given that Barth clearly teaches oral
care compositions with surfactant systems consisting of SLS and CAPB
(i.e., without nonionic surfactants). See, e.g., FF20. “[D]isclos[ing] a
multitude of effective combinations does not render any particular
formulation less obvious.” Merck & Co. v. Biocraft Labs., Inc., 874 F.2d
804, 807 (Fed. Cir. 1989).
Finally, Appellant contends that the subject matter of claim 1 exhibits
unexpected results. Appeal Br. 14–15. We are unpersuaded for the same
reasons discussed above with respect to the rejection over Gorlin: Appellant
has not provided evidence of unexpected results that is commensurate with
the claim scope or that shows unexpected results as compared to the closest
prior art, in this case Barth’s composition comprising SLS and CAPB
without a nonionic surfactant (FF20).
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D. Obviousness rejection over Barth and Smitherman (claims 14, 15)
With respect to the rejection of the claims over Barth and
Smitherman, Appellant states only that
Smitherman is cited for the amount of potassium
nitrate, tartar control agents and zinc citrate but does not
cure the deficiency of Barth. Smitherman does not teach
or suggest anything regarding a surfactant system for an
oral care composition containing potassium nitrate.
Thus, one of skill in the art would not be motivated to
modify Barth’s composition to arrive at the claimed
composition recited in claim [1].
Appeal Br. 8. As discussed above, we do not find Barth deficient in
rendering claim 1 obvious. Thus, we affirm the Examiner’s rejection of
claims 14 and 15 as obvious over Barth and Smitherman for the same
reasons discussed above with respect to the rejection of claim 1 over Barth.
E. Obviousness rejection over Nowak (claims 1–4, 9–15, 20, 21)
1. Issue
The Examiner finds that Nowak teaches a specific embodiment that
meets all of the limitations of claim 1, except that “it does not require a
potassium salt” and includes an amount of sodium lauryl sulfate that is
below the claimed range. Final Act. 9–10. However, the Examiner asserts
that a skilled artisan would have found it obvious to add a potassium nitrate
to Nowak’s composition, because Nowak teaches that potassium salts such
as potassium nitrate are useful as, e.g., tooth desensitizing agents. Id. at 9.
The Examiner further asserts that “[t]he amount of sodium lauryl sulfate
may be adjusted within the claimed range” because Nowak teaches that
“[t]he surfactant or mixtures of compatible surfactants can be present in the
compositions of the present invention in 0.1% to 5.0%.” Id. at 9–10.
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Appellant contends that a skilled artisan is unlikely to look to Nowak
“for a surfactant system for a composition containing potassium nitrate in
the first place.” Appeal Br. 9; Reply Br. 6–7. Appellant contends that
Nowak does not suggest the claimed amounts of SLS in combination with
CAPB, or such a surfactant combination in a composition containing
potassium nitrate. Appeal Br. 9–10; Reply Br. 6–7. Appellant contends that
Nowak does not teach excluding nonionic surfactants from its composition,
as required by claim 1. Appeal Br. 10; Reply Br. 7. Appellant contends that
the Examiner has not articulated why a skilled artisan would be motivated to
modify the Nowak embodiment cited in the rejection to arrive at the claimed
composition. Appeal Br. 10; Reply Br. 7. Appellant contends that the
subject matter of claim 1 exhibits unexpected results. Appeal Br. 14–15;
Reply Br. 7–8, 11–12.
Appellant does not separately argue the claims. We therefore focus
our analysis on claim 1 as representative. The issues with respect to this
rejection are (1) whether a preponderance of evidence supports the
Examiner’s conclusion that it would have been obvious to a skilled artisan to
add potassium nitrate to, and adjust the SLS concentrations in, Nowak’s
compositions to arrive at the claimed invention and, if so, (2) whether
Appellant has provided evidence of unexpected results that, when
considered together with evidence of obviousness, shows claim 1 to be non-
obvious.
2. Findings of Fact
21. Nowak teaches oral compositions comprising an orally-
acceptable carrier and specific silica abrasives. Nowak, Abstr.
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22. Nowak teaches that its compositions may comprise “at least
one surfactant,” “an anionic surfactant,” “sodium lauryl sulfate,” or “at least
one surfactant selected from sodium lauryl sulfate, cocamidopropyl betaine,
and combinations thereof.” Id. ¶¶ 23–26; see also id. at claim 47 (reciting
composition comprising at least one surfactant selected from sodium lauryl
sulfate, cocamidopropyl betaine, and combinations thereof”), ¶ 93 (stating
that “[o]rally acceptable carriers are well known in the art, and may include
surfactants”), ¶ 97 (stating that “[t]he compositions of the present invention
may also incorporate one or more surfactants which are known in the art,”
including for example “anionic, cationic, nonionic or zwitterionic
surfactants,” and that “examples of the surfactants suited for inclusion into
the composition include . . . sodium alkyl sulfate, sodium lauroyl
sarcosinate, cocoamidopropyl betaine and polysorbate 20, and combinations
thereof”), ¶ 98 (stating that “compositions of the present invention may
comprising an anionic surfactant, e.g., sodium lauryl sulfate”), ¶ 116
(suitable surface active agents are well known in the art and include
“anionic (e.g., sodium lauryl sulfate (SLS) . . . ), nonionic . . . , cationic,
zwitterionic (e.g., cocamidopropyl betaine . . .), and amphoteric organic
synthetic detergents”).
23. Nowak teaches that “[t]he surfactant or mixtures of compatible
surfactants can be present in the compositions of the present invention in
0.1% to 5.0%, in another embodiment 0.5% to 3.0% and in another
embodiment 0.5% to 2.0% by weight of the total composition.” Id. ¶ 98;
see also id. ¶ 116 (“one or more surface active agents are present in the oral
composition . . . in the range of 0.001% to 5%, or 0.5% to 2.5%”).
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24. Nowak teaches that “[t]he compositions of the present
invention may incorporate one or more antisensitivity agents, e.g.,
potassium salts such as potassium nitrate” and that “[s]uch agents may be
added in effective amounts, e.g., from 1% to 20% by weight.” Id. ¶ 107;
see also id. ¶ 37 (composition may comprise a tooth desensitizing agent
such as a potassium salt), ¶ 94 (active ingredients such as anti-sensitivity
agents “optionally present . . . in safe and effective amounts . . . sufficient to
have the desired . . . effect . . . , without undue adverse side effects . . . ,
commensurate with a reasonable risk/benefit ratio”), claim 50 (reciting
composition “comprising a tooth desensitizing agent”).
25. Nowak teaches “dentifrice compositions, e.g. toothpastes . . .
prepared in accordance with Table 4,” reproduced below:

Id. ¶ 131 (Table 4). Table 4 sets forth the ingredients in exemplary
dentifrice compositions disclosed in Nowak. Id.
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3. Analysis
Unless otherwise noted, we adopt the Examiner’s findings of fact and
reasoning regarding the scope and content of the prior art (Final Act. 9–10,
14–15; Ans. 6–7, 10–12) and agree with the Examiner that claim 1 is
obvious over Nowak. We address Appellant’s arguments below.
Appellant contends that a skilled artisan is unlikely to look to Novak
“for a surfactant system for a composition containing potassium nitrate in
the first place.” Appeal Br. 9; see also Reply Br. 6–7.
We are not persuaded. “In order to rely on a reference as a basis for
[obviousness] rejection of the applicant’s invention, the reference must
either be in the field of the applicant’s endeavor” or “be reasonably pertinent
to the particular problem with which the inventor was concerned.” In re
Oetiker, 977 F.2d 1443, 1447 (Fed. Cir. 1992). We find Nowak to be in the
field of Appellant’s endeavor, i.e., oral care compositions comprising an
orally acceptable carrier, based on “explanations of the invention’s subject
matter in the patent application, including the embodiments, function, and
structure of the claimed invention.” In re Bigio, 381 F.3d 1320, 1325 (Fed.
Cir. 2004).
More specifically, the claims recite an oral care composition
comprising a specific surfactant system and potassium nitrate, an anti-
sensitivity agent. Appeal Br. 17 (Claims App.). The Specification is
entitled “Foaming Dentifrice with Desensitizing Agents,” and the
Specification states that the invention relates to “an oral composition that
achieves high foam levels in the presence of high salt levels (e.g., potassium
nitrate . . .).” Spec. ¶ 4. The Specification further explains that there is “a
need for an oral composition formulation which retains excellent foaming
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properties in human saliva when formulated with salts such as potassium
nitrate,” because “[i]n many regions of the world consumers prefer high
foaming toothpastes over products that have a poor foaming ability.” Id. ¶ 2.
Likewise, Nowak teaches an oral composition comprising an orally
acceptable carrier. FF21. Furthermore, Nowak teaches that orally
acceptable carriers are well known in the art and may include surfactants,
and Nowak discloses embodiments comprising the same surfactants as those
claimed. FF21, FF22. Finally, although Nowak’s invention is focused on an
oral composition comprising an orally acceptable carrier and specific silica
abrasives, Novak also teaches the use of the claimed salt, potassium nitrate,
as an antisensitivity agent in an oral care composition. FF24.
Appellant next contends that “[t]he amount of SLS (1.5%) present in
Nowak’s Exemplary formulations . . . are not even close to the claimed
amounts of SLS (2-3%)” and that these compositions do not contain
potassium nitrate. Appeal Br. 9–10; see also Reply Br. 6. Appellant
contends that “Nowak’s general disclosure of broad range of surfactant or
mixtures of compatible surfactants does not teach or suggest anything
regarding the amount of SLS in combination with CAPB.” Appeal Br. 9;
Reply Br. 7.
We are not persuaded for the reasons similar to those already
discussed above with respect to the rejection over Barth. Appellant’s
arguments regarding alleged deficiencies in Nowak’s example formulations
is unavailing because all disclosures of the prior art, not merely examples,
must be considered. In re Lamberti, 545 F.2d at 750. If obviousness
required examples of each component in the range being claimed, not just a
disclosure overlapping that range, obviousness would collapse into
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anticipation. As discussed above, Nowak teaches that its compositions may
include potassium nitrate as an antisensitivity agent as well as a combination
of SLS and CAPB as surfactants. FF22, FF24. Nowak further teaches
ranges for the amounts of potassium nitrate and surfactant(s) that
encompasses and/or overlaps the claimed ranges. FF23, FF24.
We are likewise unpersuaded by Appellant’s contention that Nowak
does not render claim 1 obvious because “claim 1 requires that the oral care
composition does not comprise a non-ionic surfactant, whereas Nowak
teaches . . . nonionic surfactants in the list of surfactants.” Appeal Br. 10;
see also Reply Br. 7. Nowak also teaches compositions without nonionic
surfactants, see, e.g., FF25, and, as discussed above with respect to the
rejection over Barth, “disclos[ing] a multitude of effective combinations
does not render any particular formulation less obvious.” Merck, 874 F.2d at
807.
Appellant contends that “[t]he Examiner has not provided any
articulated reasoning why one of skill in the art would be motivated to
modify Nowak’s composition . . . by (i) adding 4-6% potassium nitrate and
(ii) increasing the amounts of SLS to 2-3% to arrive at the claimed
composition comprising a specific surfactant system.” Appeal Br. 10; see
also Reply Br. 7. We are not persuaded for the reasons discussed above.
Appellant contends that the subject matter of claim 1 exhibits
unexpected results. Appeal Br. 14–15; Reply Br. 7–8, 11–12. We are not
persuaded for the reasons discussed above with respect to the rejection over
Gorlin. In particular, Appellant has not provided evidence of unexpected
results commensurate with the scope of claim 1. Neither has Appellant
compared the claimed invention to the closest prior art, e.g., a composition
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comprising 1.5% SLS and 0.4% CAPB, without a nonionic surfactant. FF25
(composition MF-A).
Accordingly, we affirm the Examiner’s rejection of claim 1 as
obvious over Nowak. Claims 2–4, 9–15, 20, and 21, which were not
separately argued, fall with claim 1.
F. Obviousness rejection over Baig (claims 1–4, 9–15, 20, 21)
1. Issue
The Examiner finds that Baig teaches an embodiment that meets all of
the limitations of claim 1, except (1) “the amount of anionic surfactant and
cocamidopropyl betaine . . . falls outside the claimed range for each” and
(2) the composition comprises potassium dodecyl phosphate, rather than
potassium nitrate, as the potassium salt. Final Act. 10.
The Examiner asserts that “it would have been obvious to adjust the
amounts of anionic surfactant and cocamidopropyl betaine within the
claimed range,” because Baig teaches “‘a level of from about 0.025% to
about 9%’ for anionic surfactants” and also teaches that certain co-
surfactants such as SLS and CAPB may affect surface hydrophobicity,
which “may be advantageous in certain applications, for instance in allowing
better penetration of water soluble actives such as fluoride onto the tooth
surface while still providing sufficient surface protection.” Id. at 11. The
Examiner similarly concludes that it would have been obvious to include
potassium nitrate in Baig’s compositions, because Baig teaches that oral care
products may comprise potassium nitrate for “hypersensitivity control.” Id.
Appellant notes that “[t]he amounts of SLS and CAPB [in Baig’s
embodiment] do not meet the limitation of claim 1,” and Baig “does not
disclose any range for amphoteric surfactant, let alone CAPB.” Appeal Br.
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10; see also Reply Br. 8. Appellant contends that “Baig does not teach or
suggest that potassium nitrate, much less the claimed amount of potassium
nitrate, would be included in Baig’s composition,” and Baig “does not
disclose or teach a single embodiment combining SLS, CAPB and a
potassium salt.” Appeal Br. 10. Appellant contends that the Examiner has
not articulated a reason why a skilled artisan would have added the claimed
amounts of potassium nitrate to the cited embodiment, and changed the
amounts of SLS and CAPB contained therein, to arrive at the claimed
invention. Id. Appellant contends that the subject matter of claim 1 exhibits
unexpected results. Id. at 14–15; Reply Br. 9, 11–12.
Appellant does not separately argue the claims. We therefore focus
our analysis on claim 1 as representative. The issues with respect to this
rejection are (1) whether a preponderance of evidence supports the
Examiner’s conclusion that it would have been obvious to a skilled artisan to
add potassium nitrate to, and adjust the SLS and CAPB concentrations in,
Baig’s compositions to arrive at the claimed invention and, if so, (2) whether
Appellant has provided evidence of unexpected results that, when
considered together with evidence of obviousness, shows claim 1 to be non-
obvious.
2. Findings of Fact
26. Baig teaches “[o]ral care compositions containing agents that
are effective for treating and modifying teeth and mucosal surfaces to be
hydrophobic.” Baig, Abstr.
27. Baig teaches that “[o]ral care products are formulated to
provide therapeutic and cosmetic hygiene benefits,” including, e.g.,
“hypersensitivity control through the use of ingredients such as . . .
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potassium nitrate.” Id. ¶ 2; see also id. ¶ 98 (stating that “optional active
agent that may be added to the present compositions is a dentinal
desensitizing agent to control hypersensitivity, such as salt of potassium”).
28. Baig teaches that its compositions “will typically also comprise
surfactants, also commonly referred to as sudsing agents,” and that
“[s]uitable surfactants are those which are reasonable stable and foam
throughout a wide pH range.” Id. ¶ 114.
29. Baig teaches that “[t]he surfactant may be anionic, nonionic,
amphoteric, zwitterionic, cationic, or mixtures thereof,” but teaches that
“[a]nionic surfactants, such as sodium alkyl sulfate, amphoteric surfactants,
such as cocoamidopropyl betaine and their mixtures are typical examples.”
Id. ¶ 114; see also id. ¶ 115 (teaching sodium lauryl sulfate (SLS) as
example of anionic surfactant useful in the compositions), ¶ 116 (teaching
cocamidopropyl betaine (CAPB)).
30. Baig teaches that “[t]he composition will typically comprise
one or a mixture of anionic surfactants at a level of from about 0.025% to
about 9%, from about 0.05% to about 5% or from about 0.1% to about 1%.”
Id. ¶ 115.
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31. Baig teaches dentifrices I-A–I-G according to its invention,
shown below with ingredients in weight %:

Id. ¶ 138. The table above sets forth the ingredients in exemplary dentifrice
compositions disclosed in Baig.
3. Analysis
Unless otherwise noted, we adopt the Examiner’s findings of fact and
reasoning regarding the scope and content of the prior art (Final Act. 10–11,
15; Ans. 7–8, 10–12) and agree with the Examiner that claim 1 is obvious
over Baig. We address Appellant’s arguments below.
Appellant notes that “[t]he amounts of SLS and CAPB [in Baig’s
embodiment] do not meet the limitation of claim 1,” and Baig “does not
disclose any range for amphoteric surfactant, let alone CAPB.” Appeal Br.
10; see also Reply Br. 8.
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We are not persuaded. Appellant has not disputed the Examiner’s
finding that Baig discloses an embodiment, Composition I-E, comprising
SLS and CAPB without including a nonionic surfactant, even if the amounts
of SLS and CAPB in that specific embodiment fall outside of the claimed
range. Ans. 10; FF31. Baig further teaches that its composition will
typically comprise “one or a mixture of anionic surfactants” in a range that
encompasses the claimed range of 2.0 weight % to 3.0 weight %. FF30.
Similarly, although Baig does not explicitly disclose a range for amphoteric
surfactants or CAPB, we find that Baig discloses the general conditions of
the claim (i.e., the combination of SLS and CAPB for purposes of foam
formation). FF28, FF29. We further find that adjusting the amounts of SLS
and CAPB to arrive at the optimal amount of foaming requires no more than
routine experimentation. Accordingly, we find Baig renders the claimed
ranged of SLS and CAPB prima facie obvious. In re Peterson, 315 F.3d at
1329–1330; In re Aller, 220 F.2d at 456.
Appellant contends that “Baig does not teach or suggest that
potassium nitrate, much less the claimed amount of potassium nitrate, would
be included in Baig’s composition,” that Baig “does not disclose or teach a
single embodiment combining SLS, CAPB and a potassium salt,” and that
“Baig does not disclose or teach anything regarding the amount of potassium
nitrate.” Appeal Br. 10–11.
As discussed above, however, all disclosures of the prior art, not
merely examples, must be considered. In re Lamberti, 545 F.2d at 750.
Baig teaches that potassium nitrate is useful in oral care products to control
hypersensitivity and further teaches that salt of potassium may be added to
its composition as an optional active agent to control hypersensitivity. FF27.
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We find that, given the above disclosures, a skilled artisan would have found
it obvious to include potassium nitrate in Baig’s composition and to
optimize its concentration to arrive at the claimed amounts. In re Aller, 220
F.2d at 456. In this regard, we note that “[a] person of ordinary skill is also
a person of ordinary creativity, not an automaton,” and a conclusion of
obviousness does not require “precise teachings directed to the specific
subject matter of the challenged claim, for a court can take account of the
inferences and creative steps that a person of ordinary skill in the art would
employ.” KSR, 550 U.S. at 418, 421.
For all of the reasons discussed above, we are not persuaded by
Appellant’s contention that the Examiner has not articulated a reason why a
skilled artisan would have added the claimed amounts of potassium nitrate to
the cited embodiment, and changed the amounts of SLS and CAPB
contained therein, to arrive at the claimed invention. Appeal Br. 11.
Finally, we are also unpersuaded by Appellant’s contention that the
subject matter of claim 1 exhibits unexpected results, for the reasons
discussed above with respect to the other rejections. Appeal Br. 14–15; see
also Reply Br. 9, 11–12. In particular, Appellant has not provided evidence
of unexpected results commensurate with the scope of claim 1. Neither has
Appellant compared the claimed invention to the closest prior art, e.g., a
composition comprising 1.12% and 1% respectively of SLS and CAPB,
without a nonionic surfactant. FF31 (composition I-E).
Accordingly, we affirm the Examiner’s rejection of claim 1 as
obvious over Baig. Claims 2–4, 9–15, 20, and 21, which were not separately
argued, fall with claim 1.
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G. Obviousness rejection over Arai and Baig ’442 (claims 1–4, 9–15,
20, 21)
1. Issue
The Examiner finds that Arai teaches a toothpaste that meets all of the
limitations of claim 1, except (1) it contains 1.5% of SLS rather than 2–3%
as claimed, and (2) it contains 1% 2-alkyl N-carboxymethyl-N-hydroxyethyl
imidazolinium betaine as the amphoteric surfactant, rather than the 0.3–0.6%
CAPB as claimed. Final Act. 12. The Examiner finds that Arai teaches that
“[t]he amount of betaine amphoteric surfactant can be adjusted within the
range of 0.001 to 5 mass %, which makes obvious the claimed range of 0.30
weight % to 0.60 weight %.” Id. (citation omitted). The Examiner further
finds that Baig ’442 teaches “oral care compositions comprising amphoteric
surfactants wherein the amphoteric surfactant can be cocamidopropyl
betaine.” Id. at 13. The Examiner finds that “it would have been obvious to
utilize cocamidopropyl betaine[] as the amphoteric surfactant” in Arai’s
composition, “based on [its] recognized suitability for [the] intended use, as
taught by Baig [’442]” and because Arai generally teaches use of amphoteric
surfactants, of which cocamidopropyl betaine is a species. Id. at 13–14.
Appellant contends that “[t]he amount of SLS present in Arai’s
exemplary formulation . . . does not fall within the claimed range . . . and . . .
Arai’s composition does not contain cocamidopropyl betaine.” Appeal Br.
11; Reply Br. 9. Appellant contends that
[a]lthough Arai teaches that combining a specific amount of
polyhydric alcohol and an amphoteric surfactant can prevent the
precipitation of potassium lauryl sulfate, there is no disclosure
. . . in Arai that all amphoteric surfactants can be used to
prevent the precipitation of potassium lauryl sulfate produced
by the reaction of potassium nitrate and sodium lauryl sulfate.
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Appeal Br. 12 (citation omitted); see also Reply Br. 10.
Appellant further contends that “it would be practically impossible to
select the claimed amounts of SLS and CAPB from the broad ranges
disclosed in Arai without further teachings.” Appeal Br. 13; see also Reply
Br. 10. Appellant also contends that, “[b]ased on the art cited, the Examiner
has failed to show motivation to make a composition as claimed, to improve
the foaming properties of an oral care composition comprising a potassium
salt, because the art did not even address that problem.” Appeal Br. 13–14.
Appellant contends that “[t]he Examiner has not provided any articulated
reasoning why one of skill in the art would be motivated to modify the Arai's
composition (Example 1) by (i) replacing 2-alkyl-N-carboxymethyl-N-
hydroxyethylimidazolinium betaine, which is taught [to] be preferred by
Arai, with CAPB and (ii) changing the amounts of SLS and CAPB to the
claimed ranges.” Id. at 14; see also Reply Br. 10. Finally, Appellant
contends that the subject matter of claim 1 exhibits unexpected results.
Appeal Br. 14–15; Reply Br. 10–12.
Appellant does not separately argue the claims. We therefore focus
our analysis on claim 1 as representative. The issues with respect to this
rejection are (1) whether a preponderance of evidence supports the
Examiner’s conclusion that it would have been obvious to a skilled artisan to
replace 2-alkyl-N-carboxymethyl-N-hydroxyethylimidazolinium betaine,
which is taught to be preferred by Arai, with CAPB, and to adjust the
amounts of SLS and CAPB to arrive at the claimed invention, and, if so,
(2) whether Appellant has provided evidence of unexpected results that,
when considered together with evidence of obviousness, shows claim 1 to be
non-obvious.
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2. Findings of Fact
32. Arai teaches that potassium nitrate is known as an active
ingredient in oral compositions for preventing hyperesthesia. Arai ¶ 4.
33. Arai teaches that combining potassium nitrate with sodium
lauryl sulfate in a composition may lead to undesirable precipitation of
lauryl potassium sulfate, particularly at low temperatures. Id. ¶ 5.
34. Arai teaches that undesirable precipitation of lauryl potassium
sulfate in an oral composition comprising potassium nitrate and sodium
lauryl sulfate may be inhibited by including polyhydric alcohol and an
ampholytic surface active agent, wherein the polyhydric alcohol is 10% to
60% of the composition and the ratio of sodium lauryl sulfate to the
ampholytic surface active agent is from 50:1 to 1:1. Id. ¶¶ 9–11.
35. Arai teaches potassium nitrate in an amount of 0.005% to 20%
of the composition, more preferably 0.1% to 7% of the composition. Id.
¶ 13.
36. Arai teaches sodium lauryl sulfate in an amount of 0.01% to
5%, or 0.05% to 2% of the composition. Id. ¶ 14. Arai teaches that too little
sodium lauryl sulfate in the composition “may not be . . . preferable . . . in
respect of bubbling force,” but that too much sodium lauryl sulfate “may not
be preferable in respect to mucosal irritation or a . . . nasty smell.” Id.
37. Arai teaches that:
As an ampholytic surface active agent, although
imidazoline type surfactants, such as an alkylamide
betaine type surfactant and alkyl imidazolinium betaine,
a sulfobetaine type surfactant, etc. can be used, 1 type
preferably chosen from an imidazoline type surfactant
especially alkyl imidazolinium betaine, or its salt or 2
type or more are preferable.
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Id. ¶ 17.
38. Arai teaches that “the compounding ratio (mass ratio) of
sodium lauryl sulfate in a constituent and an ampholytic surface active
agent blends in the range used as 50:1-1:1, preferably 20:1-2:1, more
preferably 10:1-2:1.” Id. ¶ 20.
39. Arai teaches that, “if a compounding ratio becomes smaller
than a mentioned range, the low-temperature precipitation depressor effect
of satisfactory potassium nitrate will not be acquired, if it enlarges from the
above mentioned compounding ratio, the low-temperature precipitation
depressor effect . . . will not be acquired, or the fizziness of toothbrushing is
deteriorated.” Id.
40. Arai teaches that “[t]he compounding amount of an ampholytic
surface active agent . . . can make it into the 0.001 to 5 mass % of the whole
constituent, especially the 0.01 – 2 mass %.” Id.
41. Arai teaches an example of a tooth paste composition having
the following formula: potassium nitrate 5.0%; sodium lauryl sulfate 1.5%;
glycerin 30%; 2-alkyl N-carboxymethyl-N-hydroxyethyl imidazolinium
betaine 1.0%; sodium-monofluorophosphate 0.73%; propylene glycol 4.0%;
carrageenan 0.8%; hydroxyethyl cellulose 0.4%; saccharin sodium 0.02%;
silicic acid anhydride 14%; perfume B 0.8%; and purified water. Id. ¶ 41.
42. Baig ’442 teaches “methods of treating and protecting teeth
against erosion by use of oral compositions comprising polymeric mineral
surface active agents, metal ions such as stannous and zinc and
combinations thereof,” which “provide improved resistance of teeth to
erosive demineralization or dissolution and prevention of tooth damage by
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subsequent exposure of teeth to erosive chemicals such as acidic foods and
beverages.” Id. at Abstr.
43. Baig ’442 teaches that “[i]t is well known that oral care
products can provide therapeutic and cosmetic hygiene benefits to
consumers,” including “hypersensitivity control through the use of
ingredients such as . . . potassium nitrate.” Id. ¶ 3.
44. Baig ’442 teaches that its composition “may also comprise
surfactants, also commonly referred to as sudsing agents,” and that
“[s]uitable surfactants are those which are reasonably stable and foam
throughout a wide pH range.” Id. ¶ 55.
45. Baig ’442 teaches that “[t]he surfactant may be anionic,
nonionic, amphoteric, zwitterionic, cationic, or mixtures thereof.” Id.
46. Baig ’442 teaches that sodium lauryl sulfate is an example of
an anionic surfactant useful in its composition. Id.
47. Baig ’442 teaches that amphoteric surfactants useful in its
invention include “betaines, specifically cocamidopropyl betaine.” Id.
48. Baig ’442 teaches that its composition “typically comprises
one or more surfactants each at a level of from about 0.25% to about 12%,
preferably from about 0.5% to about 8%, and most preferably from about
0.5% to about 8%, and most preferably from about 1% to about 6%, by
weight of the composition.” Id.
3. Analysis
Unless otherwise noted, we adopt the Examiner’s findings of fact and
reasoning regarding the scope and content of the prior art (Final Act. 12–14,
15–16; Ans. 8–12) and agree with the Examiner that claim 1 is obvious over
Arai and Baig ’442. We address Appellant’s arguments below.
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Appellant contends that “Arai’s composition does not contain
cocamidopropyl betaine” and that, “[a]lthough Arai teaches that combining a
specific amount of polyhydric alcohol and an amphoteric surfactant can
prevent the precipitation of potassium lauryl sulfate, there is no disclosure
. . . in Arai that all amphoteric surfactants can be used to prevent the
precipitation of potassium lauryl sulfate produced by the reaction of
potassium nitrate and sodium lauryl sulfate.” Appeal Br. 11–12 (citation
omitted); see also Reply Br. 10 (contending that CAPB is not listed among
the Arai’s examples of amphoteric surfactants that can be used, that all
exemplary formulations in Arai contain formulations in Arai contain 2-alkyl-
Ncarboxymethyl-N-hydroxyethylimidazolinium betaine as the amphoteric
surfactant, and that Arai teaches that imidazonline type surfactants,
particularly alkylimidazolinium betaines or their salts, are preferred).
We are not persuaded for reasons similar to those discussed above
with respect to other rejections. In particular, all disclosures in the prior art,
not only examples and preferred embodiments, must be considered, In re
Lamberti, 545 F.2d at 750, and “[n]on-obviousness cannot be established by
attacking references individually where the rejection is based upon the
teachings of a combination of references. . . . [The reference] must be read,
not in isolation, but for what it fairly teaches in combination with the prior
art as a whole.” In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
In this case, although Arai does not specifically disclose CAPB, Arai
teaches that undesirable precipitation resulting from a composition
comprising potassium nitrate and SLS may be inhibited by also including an
ampholytic (i.e., amphoteric) surface active agent (and a polyhydric alcohol)
in the composition, and further teaches that a variety of ampholytic
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surfactants, including, e.g., alkylamide betaines, may be used. FF34, FF37.
Baig ’442 further teaches that CAPB is an amphoteric surfactant suitable for
use in oral compositions. FF47. Thus, it would have been obvious to use
CAPB in place of 2-alkyl N-carboxymethyl-N-hydroxyethyl imidazolinium
betaine in Arai’s composition. In re Fout, 675 F.2d 297, 301 (CCPA 1982)
(“Express suggestion to substitute one equivalent for another need not be
present to render such substitution obvious.”).
We are also not persuaded by Appellant’s contention that “[t]he
amount of SLS present in Arai’s exemplary formulation . . . does not fall
within the claimed range” and that “it would be practically impossible to
select the claimed amounts of SLS and CAPB from the broad ranges
disclosed in Arai without further teachings.” Appeal Br. 11, 13; see also
Reply Br. 10 (contending that “[t]he ranges disclosed in Arai are very
broad[] compared to the . . . ranges recited in claim 1”). Although Arai does
not teach a specific example formulation having SLS within the claimed
range, Arai teaches SLS in an amount of 0.01% to 5% or 0.05% to 2% of the
composition, which encompasses and/or overlaps the claimed 2.0–3.0
weight % SLS. FF36. Similarly, although Arai does not specifically teach
CAPB, Arai teaches an amount of ampholytic surface active agent from
0.001% to 5%, preferably 0.01% to 2%, which encompasses the claimed
CAPB concentration of 0.30 to 0.60 weight %. FF40. In short, the amounts
of SLS and ampholytic surfactant disclosed in the prior art encompass and/or
overlap the claimed SLS and CAPB concentration ranges and renders these
limitations prima facie obvious. In re Peterson, 315 F.3d at 1329–1330.
Furthermore, Arai and Baig ’442 teach that the amount of surfactant
in an oral care composition is a result effective variable for foam formation
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and, in the case of amphoteric surfactant, inhibition of undesirable
precipitation. FF34, FF36, FF38–FF40. Thus, it would require no more
than routine optimization for a skilled artisan to arrive at the claimed
invention. In re Aller, 220 F.2d at 456 (“[W]here the general conditions of a
claim are disclosed in the prior art, it is not inventive to discover the
optimum or workable ranges by routine experimentation.”).
Appellant contends that, “[b]ased on the art cited, the Examiner has
failed to show motivation to make a composition as claimed, to improve the
foaming properties of an oral care composition comprising a potassium salt,
because the art did not even address that problem.” Appeal Br. 13–14. We
are not persuaded. “In determining whether the subject matter of a patent
claim is obvious, neither the particular motivation nor the avowed purpose
of the patentee controls. . . . [A]ny need or problem known in the field of
endeavor at the time of invention and addressed by the patent can provide a
reason for combining the elements in the manner claimed.” KSR, 550 U.S.
at 419–20.
In summary, for the reasons discussed above, we are not persuaded by
Appellant’s contention that the Examiner has not articulated reasons why a
skilled artisan would have been “motivated to modify . . . Arai’s
composition (Example 1) by (i) replacing 2-alkyl-N-carboxymethyl-N-
hydroxyethylimidazolinium betaine, which is taught be preferred by Arai,
with CAPB and (ii) changing the amounts of SLS and CAPB to the claimed
ranges.” Appeal Br. 14; see also Reply Br. 10.
Finally, Appellant contends that the subject matter of claim 1 exhibits
unexpected results. Appeal Br. 14–15; Reply Br. 10–12. We are
unpersuaded for the same reasons discussed above with respect to the other
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rejections: Appellant has not provided evidence of unexpected results that is
commensurate with the claim scope or that shows unexpected results as
compared to the closest prior art, in this case Arai’s composition comprising
1.5% SLS and 1.0% 2-alkyl N-carboxymethyl-N-hydroxyethyl
imidazolinium betaine (FF41).
CONCLUSION
In summary:
Claim(s)
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
1–4, 11–15 103 Gorlin 1–4, 11–15
1–4, 9–15,
20, 21
103 Gorlin,
Smitherman
1–4, 9–15, 20,
21

1–4, 9–13,
20, 21
103 Barth 1–4, 9–13, 20,
21

14, 15 103 Barth, Smitherman 14, 15
1–4, 9–15,
20, 21
103 Nowak 1–4, 9–15, 20,
21

1–4, 9–15,
20, 21
103 Baig 1–4, 9–15, 20,
21

1–4, 9–15,
20, 21
103 Arai, Baig ’442 1–4, 9–15, 20,
21

Overall
Outcome
1–4, 9–15, 20,
21

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