GABA International Holding GmbH

Patent Trials and Appeals Board

Nov 23, 2021

2020005404 (P.T.A.B. Nov. 23, 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.
15/529,656 05/25/2017 Sylvia HESS 10116-00-US-01-GB 4016
23909 7590 11/23/2021
COLGATE-PALMOLIVE COMPANY
909 RIVER ROAD
PISCATAWAY, NJ 08855
EXAMINER
HOLLOMAN, NANNETTE
ART UNIT PAPER NUMBER
1612
NOTIFICATION DATE DELIVERY MODE
11/23/2021 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 SYLVIA HESS, RUTH HINRICHS,
STEPHANIE JAKUMEIT, TURAN MATUR,
ANDRE BRUNELLA, and PETER REIFF

Appeal 2020-005404
Application 15/529,656
Technology Center 1600
____________

Before ERIC B. GRIMES, ULRIKE W. JENKS, and
RACHEL H. TOWNSEND, Administrative Patent Judges.

JENKS, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 submits this appeal under 35 U.S.C. § 134(a) involving
claims directed to an oral care composition. Examiner rejected the claims as
obvious. 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.
Appeal 2020-005404
Application 15/529,656
2
STATEMENT OF THE CASE
Claims 1, 3, 4, 7–12, 15, 16, 18, 19, and 21 are on appeal,2,3 and can
be found in the Claims Appendix of the Appeal Brief. Claim 1, the sole
independent claim, is representative of the claims on appeal, and reads as
follows:
1. An oral care mouth rinse composition comprising
(i) at least one source of ionic tin, wherein the at least one
source of ionic tin comprises 0.02 to 0.08 weight % stannous
fluoride, and
(ii) polyvinylpyrrolidone
wherein the polyvinylpyrrolidone is present in an amount
of from 2.20 to 3.00 weight %, based on the total weight of the
oral care mouth rinse composition and wherein the oral care
mouth rinse composition further comprises 0.010 to 0.50
weight % amine fluoride based on the total weight of the oral
care mouth rinse composition.
Appeal Br. 9 (Claims Appendix).

REJECTION
Appellant requests review of Examiner’s rejection of claims 1, 3, 4,
7–12, 15, 16, 18, 19, and 21 under 35 U.S.C. § 103 over Scarlett-Smith.4

2 Herein we refer to the Specification filed May 25, 2017 (“Spec.”), Final
Office Action mailed November 1, 2019 (“Final Act.”), Appeal Brief field
March 2, 2020 (“Appeal Br.”), Examiner’s Answer mailed May 14, 2020
(“Ans.”), and Reply Brief filed July 14, 2020 (“Reply Br.”).
3 Appellant indicates that claims 2, 5, 6, 13, 14, 17, and 22 are cancelled and
that claims 20 and 23–25 are withdrawn in light of a prior
restriction/election requirement made by Examiner. Appeal Br. 2.
4 Scarlett-Smith, WO 97/45096, published Dec. 4, 1997.
Appeal 2020-005404
Application 15/529,656
3
Obviousness
The issue before us is whether the preponderance of evidence of
record supports Examiner’s conclusion that the claims directed to an oral
care composition are obvious.
A. Findings of Fact (FF)
FF1. Scarlett-Smith teaches that bacteriostatic stannous salt is
associated with staining of teeth. Scarlett-Smith 4:37–5:1.
Scarlett-Smith teaches oral hygiene compositions which
comprise “a stannous salt and polyvinyl pyrrolidone, to counter
the staining associated with use of a stannous salt.” Scarlett-
Smith, Abstract. Scarlett-Smith teaches that the composition
can be made into mouthwashes, gels, and dentifrices. See id.
4:17–23.
FF2. Scarlett-Smith teaches that suitable stannous salts include
stannous fluoride, stannous chloride, stannous pyrophosphate
and stannous chlorofluoride and mixtures thereof. The stannous
salt is present from 0.005 to 10% and more preferably 0.01 to
2% in the oral hygiene composition. Id. at 1:28–31.
FF3. Scarlett-Smith teaches that polyvinyl pyrrolidone is “suitably
present in at least 1%, preferably between 2 and 30%” and that
the polyvinyl pyrrolidones have average molecular weights of
5000 to 100,000. Id. at 1:21–26.
FF4. Scarlett-Smith teaches that the composition may optionally
contain an ionic-fluorine compound.
Oral hygiene compositions of the present invention
may also usefully contain an ionic fluorine-containing
compound. Suitable ionic fluorine-containing compounds
Appeal 2020-005404
Application 15/529,656
4
include, for instance, fluoride salts such as amine
fluorides and alkali metal fluoride salts, for example
sodium fluoride, and monofluorophosphate salts such as
alkali metal monofluorophosphate salts, for example
sodium monofluorophosphate. Suitably the ionic
fluorine-containing compound is incorporated into the
composition to provide between 100 and 3000ppm,
preferably between 500 and 2000ppm of fluoride ions.
Scarlett-Smith 1:33–2:2 (emphasis added).
FF5. Example 1 of Scarlett-Smith tests the ability of polyvinyl
pyrrolidone (PVP) to prevent staining associated with the use of
stannous fluoride. See id. at 5:27–6:20. Scarlett-Smith used
stannous fluoride (0.4% w/v) and PVP (av. mol. wt. 40,000, at
1, 5, 10 and 20%). Id. 6:14–15. Scarlett-Smith teaches that the
“[r]esults obtained demonstrated that PVP reduced 0.4%
stannous fluoride induced stain formation on hydroxyapatite
discs in a concentration dependent manner between 1% and
20% PVP. Stain was significantly reduced (P<0.05) by 27.4%
and 24.5% for 10% and 20% PVP respectively.” Id. at 6:17–20.
FF6. Example 3 of Scarlett-Smith teaches a toothpaste composition
contain 1–1.5% stannous chloride, 0.454 % stannous fluoride,
and 20% PVP in addition to other excipients. Id. at 7:1–13.
FF7. Example 2 of Scarlett-Smith teaches a toothpaste composition
contain 1% stannous fluoride, 0.22% sodium fluoride, and
20% PVP in addition to other excipients. Id. at 6:21–26.
B. Analysis
Examiner finds that Scarlett-Smith teaches oral care compositions
containing polyvinyl pyrrolidone at a concentration of “at least 1%, [and]
preferably between 2 and 30% by weight of the composition.” Ans. 3; see
Appeal 2020-005404
Application 15/529,656
5
FF1, FF3, FF5. Examiner finds that Scarlett-Smith teaches the inclusion of
stannous salts at a concertation range of 0.01 to 2%. Ans. 3; see FF1, FF2,
FF5–FF7. In addition, Examiner finds that Scarlett-Smith teaches the
inclusion of an ionic fluorine-containing compound, including amine
fluorides, between 500 and 2000 ppm of fluoride ions. Ans. 3; FF4.
Examiner finds that Scarlett-Smith exemplifies “a composition comprising
0.22% of an ionic fluorine-containing compound,” specifically, 0.22%
sodium fluoride. Ans. 3; see FF4 and FF7.
Appellant contends that Examiner erred in rejecting the claims based
on the disclosure of Scarlett-Smith. Specifically, Appellant contends that
(1) there is no reason to select the narrow ranges of components as presently
claimed, (2) the rejection relies on hindsight, (3) the reference teaches away,
and (4) the lower ranges of PVP as claimed show unexpected results. We
have reviewed Appellant’s contentions that Examiner erred in rejecting the
claims as obvious over Scarlett-Smith. Appeal Br. 2–8; Reply Br. 2–7. We
disagree with Appellant’s contentions and address Appellant’s arguments
below:
1. Narrow range
Appellant contends that the reference encompasses a very large
number of possible distinct compositions. Appeal Br. 3. “The only Example
of a composition in the Scarlett-Smith reference that contained PVP is
Example 2, which comprises 20% PVP.” Id. Appellant contends that
“Scarlett-Smith not only fails to teach a composition that comprises both
amine fluoride and stannous fluoride, but further fails to teach a mouth rinse
composition that comprises amine fluoride, stannous fluoride and PVP at the
Appeal 2020-005404
Application 15/529,656
6
claimed amounts.” Reply Br. 2. Appellant contends that the lower amount of
PVP tested in Scarlett-Smith was ineffective. Id. at 3.
We are not persuaded by Appellant’s contention. It is well settled that
“in a section 103 inquiry, ‘the fact that a specific [embodiment] is taught to
be preferred is not controlling, since all disclosures of the prior art, including
unpreferred embodiments, must be considered.’” Merck & Co. Inc. v.
Biocraft Laboratories Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (quoting In re
Lamberti, 545 F.2d 747, 750 (CCPA 1976)).
Here, Examiner directs attention to teachings in Scarlett-Smith that
suggest a composition that combines a stannous salt or mixture of stannous
salts with PVP and optionally includes ionic fluorine-containing compounds
selected from the group containing amine fluorides and alkali metal fluoride
salts. See Ans. 3–4; FF2–FF4. Examiner finds that Scarlett-Smith teaches
PVP at concentrations of 1, 5, 10, and 20% reduced the stannous fluoride
stain formation in a concentration dependent manner. See Ans. 4; FF5. A
teaching that 10 and 20% PVP significantly reduced staining does not
detract from the teaching in Scarlett-Smith that 1 and 5% PVP also reduced
staining. See FF5 (results showed “that PVP reduced 0.4% stannous fluoride
induced stain formation on hydroxyapatite discs in a concentration
dependent manner between 1% and 20% PVP.”).
“A prima facie case of obviousness typically exists when the ranges
of a claimed composition overlap the ranges disclosed in the prior art.” In re
Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003). Examiner acknowledges
that Scarlett-Smith does not recite the specific endpoints set out in the claims
but finds that the 1, 5, 10, and 20% PVP tested in Scarlett-Smith support the
finding that Scarlett-Smith teaches a range that overlaps with the claimed
Appeal 2020-005404
Application 15/529,656
7
ranges, thereby, rendering the claims prima facie obvious. See Ans. 4 (citing
In re Peterson); FF5–FF7. We determine that Examiner has identified
sufficient evidence in Scarlett-Smith from which to conclude that the
presently claimed composition is obvious.
2. Hindsight
Appellant contends that Examiner relies on hindsight to arrive at the
presently claimed composition. Appeal Br. 4–6. Specifically, Appellant
contends that “Examiner’s reliance on the 0.22% sodium fluoride
concentration teaching of Scarlett-Smith to render obvious Appellant’s
limitation of 0.010 to 0.50 weight % amine fluoride in claim 1 is not a
reasonable extrapolation from Scarlett-Smith.” Appeal Br. 6.
We are not persuaded. Here, Scarlett-Smith teaches that ionic
fluorine-containing compounds can be selected from the group containing
amine fluorides and alkali metal fluoride salts. FF4. Scarlett-Smith,
therefore, identifies these compounds as equivalents. FF4. It is obvious to
substitute one equivalent for another because such a combination is merely a
“predictable use of prior art elements according to their established
functions.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007); see Ans.
3 (“The reference discloses a composition comprising 0.22% of an ionic
fluorine-containing compound, which would meet the limitation of 0.010 to
0.5% amine fluoride of instant claim 1.”). While we are fully aware that
hindsight bias often plagues determinations of obviousness, Graham v. John
Deere Co., 383 U.S. 1, 36 (1966), we are also mindful that the Supreme
Court has clearly stated that the “combination of familiar elements according
to known methods is likely to be obvious when it does no more than yield
predictable results.” KSR, 550 U.S. at 416. Appellant also has not directed us
Appeal 2020-005404
Application 15/529,656
8
to information relied upon by Examiner that could only have been gleaned
from Appellant’s disclosure. See In re McLaughlin, 443 F.2d 1392, 1395
(CCPA 1971). Thus, considering the totality of the evidence presented, we
are not persuaded by Appellant’s hindsight argument.
3. Teaching away
Appellant contends that Scarlett-Smith teaches away from the claimed
compositions because “[t]he sole example of a composition in Scarlett-Smith
containing PVP has PVP at a much higher concentration of 20%, further
lending proof to the teaching of Scarlett-Smith that compositions with higher
concentrations of PVP are preferred.” Appeal Br. 6.
We are not persuaded by Appellant’s contention. “[A] reference will
teach away when it suggests that the developments flowing from its
disclosures are unlikely to produce the objective of the applicant’s invention.
A statement that a particular combination is not a preferred embodiment
does not teach away absent clear discouragement of that combination.”
Syntex (U.S.A.) LLC v. Apotex, Inc., 407 F.3d 1371, 1380 (Fed. Cir. 2005)
(citations omitted). As Examiner explains, Scarlett-Smith teaches “PVP at
concentrations of 1, 5, 10 and 20% in example 1, which provided stain
reduction.” Ans. 5; see also FF5 (“results obtained demonstrated that PVP
reduced 0.4% stannous fluoride induced stain formation on hydroxyapatite
discs in a concentration dependent manner between 1% and 20% PVP. Stain
was significantly reduced (P<0.05) by 27.4% and 24.5% for 10% and 20%
PVP respectively.”). We agree with Examiner that a fair reading of Scarlett-
Smith is that stain reduction was observed at all concentrations including at
1% which represents the lower end of the range. The fact that PVP at higher
concentration produces a more pronounced effect does not take away from
Appeal 2020-005404
Application 15/529,656
9
the teaching that even at lower PVP concentrations, the stain preventing
effect is still noticeable.
4. Unexpected results
Appellant contends that the staining study of Example 2 in the
Specification shows unexpected results. See Appeal Br. 6–7; Reply Br. 6.
We are not persuaded and agree with Examiner that the evidence
advanced by Appellant to show an unexpected result is not, when considered
together with the evidence of obviousness, sufficient to demonstrate the
claimed invention is non-obvious. “One way for a patent applicant to rebut a
prima facie case of obviousness is to make a showing of ‘unexpected
results,’ i.e., to show that the claimed invention exhibits some superior
property or advantage that a person of ordinary skill in the relevant art would
have found surprising or unexpected.” In re Soni, 54 F.3d 746, 750 (Fed.
Cir. 1995). The unexpected results must be “different in kind and not merely
in degree from the results of the prior art.” In re Applied Materials, Inc., 692
F.3d 1289, 1297 (Fed. Cir. 2012). “Moreover, the applicant’s showing of
unexpected results must be commensurate in scope with the claimed range.”
In re Peterson, 315 F.3d at 1330.
Examiner explains that
Scarlett-Smith discloses the results obtained demonstrated that
PVP reduced 0.4% stannous fluoride induced stain formation in
a concentration dependent manner between 1% and 20% PVP.
While Scarlett-Smith provided data for 10% and 20% PVP
having stain reduction of 27.4% and 24.5%
respectively[,][t]here is also stain reduction at 1% as stated by
Scarlett-Smith. Therefore, applicant’s results do not appear to
be unexpected but concentration dependent as stated in Scarlett-
Smith. Furthermore, applicant[’]s results show the greatest
reduction of staining at 4.0% PVP, formulation I with a
∆E=12.40, which supports the concentration dependent results
Appeal 2020-005404
Application 15/529,656
10
shown in Scarlett-Smith. The data shown in Table 4 [of the
Specification] is concentration dependent with the exception of
3.5 wt.%. which appears to be an outlier based on the results
shown in the table. Applicant also states, “the inclusion of PVP
led to a concentration-dependent drop in ∆E, in the range of
1.5-4%”, which supports the findings in Scarlett-Smith.
Ans. 6; see FF5.
Table 2 of the Specification is reproduced below:

Table 2 above shows that formulation A (a commercially available stannous
containing mouth rinse comprising 0.30% PVP) produces greater staining
(higher value of ∆E) than an equivalent formulation (B) comprising 2.4 %
PVP. See Spec. ¶ 46. “The inclusion of 2.4 weight % PVP led to a
significant drop in ∆E, demonstrating the reduced staining of this
composition.” Id.
Appeal 2020-005404
Application 15/529,656
11
Table 4 of the Specification is reproduced below:

Table 4 shows formulas C–I each showing an increase in PVP concentration
ranging from 0.3–4 wt.% PVP. See Spec. ¶¶ 47–48. In addition to PVP, the
formulations each contain 0.85 wt.% xylitol, 0.054 wt.% stannous fluoride,
0.17 wt.% amine fluoride, and 0.25 wt.% emulsifier. Id. at ¶ 47. Higher ∆E
values in the above tables mean more staining.
We agree with Examiner that the data reported for formulation H, in
table 4 above, appears to be an outlier because formulations C–G and I,
which surround formulation H, show a trend of lower ∆E values with
increasing concentration of PVP. A similar trend is seen between
formulations A and B, from table 2 reproduced above, which also shows
lower staining with higher PVP concentration. Appellant’s Specification
confirms this conclusion, stating that “[f]ormulations C–I demonstrate the
correlation between PVP concentration and reduced staining (lower value of
ΔE). The inclusion of PVP led to a concentration-dependent drop in ΔE, in
the range of 1.5–4%.” Spec. ¶ 48.
Appeal 2020-005404
Application 15/529,656
12
Scarlett-Smith tested PVP at a concentration of 1, 5, 10, and 20%.
FF5. The “[r]esults obtained [in Scarlett-Smith] demonstrated that PVP
reduced 0.4% stannous fluoride induced stain formation on hydroxyapatite
discs in a concentration dependent manner between 1% and 20% PVP. Stain
was significantly reduced (P<0.05) by 27.4% and 24.5% for 10% and 20%
PVP respectively.” FF5. We agree with Examiner’s interpretation that
Scarlett-Smith teaches that stain reduction was observed at all points tested
in a concentration dependent manner, meaning that as PVP concentration
increased so did the stain reduction. This is the same trend observed in the
present Specification.
We determine that Appellant’s data presented in the Specification is
not sufficient to establish that PVP concentrations between 2.20 to 3.00
weight % produce an unexpected results. Instead, we agree with Examiner
that the data presented supports the same trend already disclosed in Scarlett-
Smith that teaches increasing PVP concentrations show greater stain
reduction in a dose dependent manner.
After considering all the evidence anew before us, we conclude that
Appellant has not provided sufficient evidence to establish non-obviousness
of the claimed subject matter (In re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir.
1984); In re Rinehart, 531 F.2d 1048, 1052 (CCPA 1976)), and, therefore,
Appellant has not demonstrated an error in Examiner’s rejection.
C. Conclusion
We conclude that the preponderance of the evidence supports
Examiner’s conclusion of obviousness with respect to claim 1, and
Appellant has not provided sufficient rebuttal evidence or evidence of
secondary considerations that outweighs the evidence supporting Examiner’s
Appeal 2020-005404
Application 15/529,656
13
conclusion. As Appellant does not argue the claims separately, claims 3, 4,
7–12, 15, 16, 18, 19, and 21 fall with claim 1. 37 C.F.R. § 41.37 (c)(1)(iv).

DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 3, 4,
7–12, 15,
16, 18, 19,
21
103 Scarlett-Smith 1, 3, 4,
7–12, 15,
16, 18,
19, 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)(1)(iv).

AFFIRMED