Patel, Ashokkumar

Patent Trials and Appeals Board

Sep 26, 2019

14777230 - (D) (P.T.A.B. Sep. 26, 2019)

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.
14/777,230 09/15/2015 Ashokkumar Patel THV 9840 6168
321 7590 09/26/2019
STINSON LLP
7700 FORSYTH BOULEVARD, SUITE 1100
ST LOUIS, MO 63105
EXAMINER
RONEY, CELESTE A
ART UNIT PAPER NUMBER
1612
NOTIFICATION DATE DELIVERY MODE
09/26/2019 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):
stl.uspatents@stinson.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte ASHOKKUMAR PATEL1
__________

Appeal 2019-003376
Application 14/777,230
Technology Center 1600
__________

Before DONALD E. ADAMS, ERIC B. GRIMES, and TAWEN CHANG,
Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal under 35 U.S.C. § 134(a) involving claims to an oral
care composition, which have been rejected as being directed to patent-
ineligible subject matter and as obvious. We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM the obviousness rejections.

1 Appellant identifies the Real Party in Interest as Theranovis Gmbh & Co.
Appeal Br. 5.
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STATEMENT OF THE CASE
Claims 1, 24–27, 29, 31, 33, and 35–48 are on appeal. Claim 1 is
illustrative and reads as follows:
1. Composition for oral care, wherein the composition is an
aqueous composition, and, besides water, comprises (in weight percentages):
Peppermint oil: 0.05 - 10%
Rosemary oil: 0.05 - 5%
Neem oil: 0.05 - 10%
Thyme oil: 0.05 - 0.5%
Grapefruit Seed Extract: 0.05 - 1.5%
Grape Seed Extract: 0.05 - 1.5%
Alcohol: 5 - 75%

The claims stand rejected as follows:
Claims 1, 24–27, 29, 31, 33, 35–45, and 48 under 35 U.S.C. § 101 as
being directed to a product of nature (Ans. 3);
Claims 1, 24–27, 29, 31, 33, 35–37, 41, 43, 46, and 47 under 35
U.S.C. § 103 as obvious based on Schmolka,2 Nabi,3 and Shine4 (Ans. 4);
Claims 38 and 39 under 35 U.S.C. § 103 as obvious based on
Schmolka, Nabi, Shine, and Mongiat5 (Ans. 6);
Claim 40 under 35 U.S.C. § 103 as obvious based on Schmolka, Nabi,
Shine, and Winston6 (Ans. 7);

2 US 4,465,661, issued August 14, 1984.
3 US 5,472,684, issued December 5, 1995.
4 US 8,273,385 B1, issued September 25, 2012.
5 US 2012/0093896 A1 published April 19, 2012.
6 US 4,891,211, issued January 2, 1990.
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Claims 42 and 44 under 35 U.S.C. § 103 as obvious based on
Schmolka, Nabi, Shine, and Causton7 (Ans. 8);
Claim 45 under 35 U.S.C. § 103 as obvious based on Schmolka, Nabi,
Shine, Causton, and Thiele8 (Ans. 9); and
Claim 48 under 35 U.S.C. § 103 as obvious based on Schmolka, Nabi,
Shine, and Giacin9 (Ans. 10).
I
The Examiner has rejected claims 1, 24–27, 29, 31, 33, 35–45, and 48
under 35 U.S.C. § 101 “because the combination of peppermint, rosemary,
neem and thyme oils with water, alcohol and grapefruit [seed] and grape
seed extracts does not materially change the oils, extracts or the alcohol, i.e.,
the products in each case are not ‘markedly different.’” Ans. 3. The
Examiner also finds that “there is no indication that concentration (e.g. of
the seeds) has caused the extracts to have any characteristics that are
different from the naturally occurring grapefruit or grape seeds” and “the
combination of extracts from grapefruit seeds and grape seeds with essential
oils does not change the structures of the natural extracts.” Id. at 3–4.
Appellant argues that “[t]he claimed composition is prepared from
components that are found in nature, but the composition as prepared and
claimed differs materially from the natural components from which it is
derived.” Appeal Br. 8. Appellant argues that “the claimed composition is

7 US 5,885,552, issued March 23, 1999.
8 US 4,224,307, issued September 23, 1980.
9 US 5,330,749, issued July 19, 1994.
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not reducible to a bundled aggregate of individually acting components.” Id.
at 10.
We agree with Appellant that the Examiner has not established that
the claimed composition is a product of nature and not markedly different
from any of the individual, naturally occurring, components of the overall
mixture. The Specification discloses that the claimed composition has a
“good effect on the inhibition, reducing and dissolving (eliminating) the
biofilms on tooth surfaces.” Spec. 3:17. “[T]he formation of pellicles is
modified and any extracellular polymeric structures which are present are
dissolved. . . . The regeneration of the mentioned biofilms is impaired
sustainably after use.” Id. at 3:19–22.
The application of the composition according to the invention
on the tooth surface reduces and modifies the formation of
pellicles such that the adherence of bacteria is sustainably
reduced. Furthermore, the capability of the adherent bacteria to
divide themselves and thus to colonize the tooth surface is
significantly reduced or disrupted.
As a result, the formation of dental plaque (plaque) can be
controlled earlier or even prevented. Harmful bacteria can no
longer accumulate on the dental surfaces.
Id. at 3:24–31.
The Examiner has not pointed to evidence in the record to show that
the claimed composition does not have the asserted properties, or that a
naturally occurring component of the composition has the same properties as
the claimed composition. “A claim to a manufacture or composition of
matter made from a natural product is not directed to the natural product
where it has different characteristics and ‘the potential for significant
utility.’” Natural Alternatives Int’l, Inc. v. Creative Compounds, LLC, 918
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F.3d 1338, 1348 (Fed. Cir. 2019) (quoting Diamond v. Chakrabarty, 447
U.S. 303, 310 (1980)).
The Natural Alternatives court held that the product claims there were
“directed to specific treatment formulations that incorporate natural
products, but they have different characteristics and can be used in a manner
that beta-alanine as it appears in nature cannot.” Id. The same is true here:
even if each of the components of the claimed composition appears,
separately, in nature, the claimed combination of those components has
different characteristics and can be used in a manner different from any of
the individual components.
We therefore reverse the rejection of claims 1, 24–27, 29, 31, 33, 35–
45, and 48 under 35 U.S.C. § 101.
II
The Examiner has rejected claims 1, 24–27, 29, 31, 33, 35–37, 41, 43,
46, and 47 as obvious based on Schmolka, Nabi, and Shine. The Examiner
finds that Schmolka discloses mouthwash compositions comprising water,
0–25 wt% alcohol, and 0.01–5 wt% peppermint oil and rosemary oil as
flavorings. Ans. 4. The Examiner also finds that “[t]hyme oil is disclosed at
col 4, line 11.” Id. at 6.
The Examiner finds that “Schmolka does not disclose neem oil;
grapeseed and grape fruit seed extracts” but “Nabi discloses mouth rinses
. . . comprising neem oil as a flavoring agent.” Id. at 4. The Examiner finds
that “Shine discloses oral rinse and mouthwashes . . . comprising grape seed
. . . and grapefruit seed extracts.” Id. at 5. The Examiner finds that Shine
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teaches that the extracts “promote healthy gum tissue, and inhibit the growth
of bacteria.” Id.
The Examiner concludes that it would have been obvious to modify
Schmolka’s mouthwash to include neem oil “based on its recognized
suitability for its intended use as a flavoring agent, as taught by Nabi.” Id. at
4. The Examiner also concludes that it would have been obvious to modify
the composition to include grape seed extract and grapefruit seed extract,
“motivated by the desire to promote healthy gum tissue, and to inhibit the
growth of bacteria, as taught by Shine.” Id. at 5.
We agree that the composition of claim 1 would have been obvious to
a person of ordinary skill in the art based on the cited references. Schmolka
discloses oral compositions, including mouthwashes, that are free from
unpleasant surfactant taste and are visually clear. Schmolka 1:10–13.
Specifically, Schmolka teaches that using a tasteless polyoxyethylene-fatty
alcohol surfactant in a mouthwash to solubilize a water-insoluble flavoring
oil, such as peppermint oil, prevents cloudiness. Id. at 2:6–18.
Schmolka discloses that its mouthwash compositions comprise water
(60–95 wt%) and an alcohol such as isopropanol or ethanol (0–25 wt%). Id.
at 4:13–18. Schmolka also teaches that “conventional flavoring components”
include peppermint oil, rosemary oil, and thyme oil. Id. at 4:4–11. “All types
of flavoring materials are generally used in amounts of about 0.01 to about
5.0 percent by weight, preferably about 0.05 percent to about 3.0 percent by
weight.” Id. at 4:37–40. Schmolka thus would have made obvious an oral
care composition comprising water and alcohol, and peppermint oil,
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rosemary oil, and thyme oil as flavoring components. The ranges of amounts
disclosed by Schmolka overlap those recited in claim 1.
Nabi discloses that “a composition comprising a combination of
thymol and eugenol . . . , such as, a toothpaste or mouthrinse provides plaque
and gingivitis effect.” Nabi 1:48–52. “Flavoring agents, such as
chammomile [sic] tincture, myrrh gum tincture, rhatany root, Australian
[Tea] Tree oil, eucalyptol, sage oil and the like can also be added.” Id. at
1:54–56. Nabi claims a composition comprising one of the foregoing
flavoring agents, and a further flavoring agent which can be neem oil. Id. at
12:11–13 (claim 7). Nabi discloses that flavoring agents can be added “in
minimal amounts of up to 5 percent by weight and preferably up to about 1
percent.” Id. at 3: 49–56.
Based on Nabi’s disclosure, it would have been obvious to modify
Schmolka’s composition to include neem oil as a further flavoring agent,
because Nabi expressly suggests including it in an oral care composition that
comprises one or more other flavorants.
Shine discloses “oral rinse compositions having antimicrobial
properties that also alleviate and soothe oral irritations.” Shine 1:61–63.
Shine discloses that its composition contains an essential oil (e.g.,
peppermint oil), hydrogen peroxide, alcohol, and a natural extract. Id. at
1:65 to 2:2. “The essential oils used in the inventive oral rinse compositions
provide antimicrobial activity, as well as act as flavoring agents and natural
analgaesics.” Id. at 2:57–59.
Shine discloses that “[s]uitable natural extracts for use in the inventive
oral rinse compositions include those selected from the group consisting of
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antioxidants [and] immune stimulants.” Id. at 4:30–32. “Preferred
antioxidants are selected from the group consisting of grape seed extract,
citrus seed extract,” etc. Id. at 4:38–39. “[G]rapefruit seed extract being
particular[ly] preferred” as a citrus seed extract. Id. at 4:40–44.
“Such extracts contain a wide variety of phytochemicals such as
polyphenols, flavanols, proanthocyanains [sic], and other phytochemicals
thought to contribute to healing of inflammation in the oral cavity, promote
healthy gum tissue, as well as inhibit the growth of bacteria.” Id. at 4:33–37.
“Grape seed extract can be included in the inventive compositions in an
amount of from about 0.001% to about 0.10% w/v. . . . Citrus seed extract
can be included in the composition in an amount of from about 0.005% to
about 1.0% v/v.” Id. at 4:44–51.
Based on these teachings, it would have been obvious to modify the
composition made obvious by Schmolka and Nabi—comprising water,
alcohol, peppermint oil, rosemary oil, thyme oil, and neem oil—to include
grape seed extract and grapefruit seed extract, because Shine teaches that
these extracts contain phytochemicals thought to contribute to healing of
inflammation, promote healthy gum tissue, and inhibit bacterial growth.
The references disclose ranges for each of the components of claim 1
that overlap the ranges recited in the claim or, in the case of the extracts,
reasonably appear to overlap the ranges. “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).
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Appellant argues that Schmolka provides a “lengthy list of flavoring
agents [that] includes peppermint oil and rosemary oil, but there is no
suggestion of their use in combination. . . . The working examples use
peppermint oil as a flavoring agent, but only by itself.” Appeal Br. 19.
Appellant argues that Nabi “mentions neem oil among a Markush list of
eleven different flavoring agents. Peppermint oil is mentioned as a flavoring
. . . but never in combination with neem oil.” Id. at 20.
As we understand it, Appellant’s position is that it would not have
been obvious to combine multiple flavoring agents, or to combine other
flavoring agents with peppermint oil. As understood, the arguments are
unpersuasive, because the references disclose specific oral compositions that
comprise multiple flavoring agents, and that comprise peppermint oil along
with other flavoring agents.
Nabi discloses a mouth rinse composition comprising chamomile,
myrrh gum, rhatany root, and peppermint oil. Nabi 5:30–45. Nabi also
discloses a mouth rinse composition comprising all of those flavoring
agents, as well as Australian tea tree oil and sage oil. Id. at 9:12–30 (Rinse
(3)). Shine discloses oral rinse compositions comprising both peppermint oil
and spearmint oil. Shine 8:1–3, 8:55–57.
Thus, the cited references show that flavoring agents were routinely
combined in prior art mouth rinse formulations. The disclosure, in the cited
references, that peppermint oil, rosemary oil, thyme oil, and neem oil were
flavoring agents known for use in oral compositions would have made their
combination, for that use, in such compositions obvious to a skilled artisan.
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Appellant also argues that “Shine discloses oral rinse compositions
that contain grape seed extract and/or grapefruit seed extract as antioxidants.
But Schmolka does not suggest the need for an antioxidant. Shine also fails
to provide any reason relevant to Schmolka, or in fact any reason at all, for
the incorporation of an antioxidant.” Appeal Br. 21.
This argument is also unpersuasive. Shine discloses that antioxidant
natural extracts are suitable for use in its oral compositions. Shine discloses
that such extracts include “grape seed extract, citrus seed extract, olive leaf
extract, and mixtures thereof.” Shine 4:38–40. Shine also discloses that
natural extracts contain phytochemicals “thought to contribute to healing of
inflammation in the oral cavity, promote healthy gum tissue, as well as
inhibit the growth of bacteria.” Id. at 4:33–37. These teachings would
provide ample reason for a skilled artisan to include grape seed extract and
grapefruit seed extract in Schmolka’s mouthwash composition.
Appellant also argues that the Patel Declaration10 provides evidence of
unexpected results. Appeal Br. 27. Appellant argues that the data show the
effect of the claimed composition in loosening a bacterial biofilm on the
tooth surface and in reducing biofilm regeneration. Id. at 27–28. Appellant
concludes that “the claimed composition exhibits high[ly] desirable and
unexpected properties as an oral product.” Id. at 29.
In response to the Examiner’s objection that the Specification
demonstrates the same results for compositions outside the scope of the
claims because they lack thyme oil, neem oil, grape seed extract, and

10 Declaration under 37 C.F.R. § 1.132 of Ashokkumar Patel, signed May 4,
2017.
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grapefruit seed extract (Ans. 25), Appellant argues that those results were
obtained with “compositions of Applicant’s own invention . . . not
compositions of the prior art.” Id. at 29–30.
“Applicant acknowledges that the data do not constitute a comparison
with what the Examiner has deemed the closest prior art.” Id. at 30. The
data, in fact, do not show a comparison to any prior art composition.
Appellant states that Shine discloses a composition that includes two
of the six active agents recited in claim 1. Id. In fact, Shine’s Formulation A
and Formulation B both contain grape seed extract, grapefruit seed extract,
and “Essential Oil(s),” including peppermint oil, along with alcohol and
water. Shine 7:20 to 8:24. Those compositions therefore appear to be the
closest prior art to the claimed composition.
“To be particularly probative, evidence of unexpected results must
establish that there is a difference between the results obtained and those of
the closest prior art, and that the difference would not have been expected by
one of ordinary skill in the art at the time of the invention.” Bristol-Myers
Squibb Co. v. Teva Pharms. USA, Inc., 752 F.3d 967, 977 (Fed. Cir. 2014).
See also In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991)
(“[W]hen unexpected results are used as evidence of nonobviousness, the
results must be shown to be unexpected compared with the closest prior
art.”).
Appellant has not shown that the claimed composition achieves
unexpectedly superior results when compared to the closest prior art, and
therefore has not presented evidence that, when weighed against the
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evidence of obviousness, shows that the claimed composition would have
been nonobvious.
We affirm the rejection of claim 1 under 35 U.S.C. § 103 based on
Schmolka, Nabi, and Shine. Claims 24–27, 29, 31, 35–37, 41, 46, and 47
were not argued separately and therefore fall with claim 1. 37 C.F.R.
§ 41.37(c)(1)(iv).
Regarding claim 43, Appellant argues that it differs from claim 1 with
respect to the concentrations of the components, and the Examiner “offers
no explanation of any reason why the combined teachings of Schmolka,
Nabi and Shine would have led one skilled in the art to the composition of
claim 43.” Appeal Br. 21. Appellant also argues that “[c]laim 33
distinguishes Schmolka, Nabi and Shine on the same basis as claim 1, from
which it depends, and on the further basis of the particular concentration of
grapefruit seed extract which claim 33 specifically prescribes.” Id. at 22.
This argument is unpersuasive because the Examiner specifically
addressed the limitations of claims 33 and 43. Ans. 6. Specifically, the
Examiner found that the cited references disclose amounts of the recited
components that “lie within or overlap the claimed ranges.” Id. Appellant
has not pointed to any flaw in the Examiner’s fact-finding.
In summary, we affirm the rejection of claims 1, 24–27, 29, 31, 33,
35–37, 41, 43, 46, and 47 under 35 U.S.C. § 103 based on Schmolka, Nabi,
and Shine.
III
The Examiner has rejected claims 38 and 39 as obvious based on
Schmolka, Nabi, Shine, and Mongiat. Claims 38 and 39 are directed to the
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composition of claim 1, further comprising 5–15 wt% of either polyglyceryl-
10 decaoleate (claim 38) or polyglyceryl-10 pentaoleate (claim 39).
The Examiner finds that “Schmolka discloses 5 wt. % thickening
agents,” but not the specific compounds of claims 38 and 39. Ans. 7.
“However, Mongiat discloses polyglyceryl-10 decaoleate and polyglyceryl-
10 pentaoleate as thickening agents in cosmetics, . . . where cosmetic end
formulations include products for oral and dental hygiene (e.g.
mouthwashes).” Id. The Examiner concludes that it would have been
obvious “to have included polyglyceryl-10 decaoleate and polyglyceryl-10
pentaoleate within Schmolka’s composition as thickening agents, . . . based
on their recognized suitability for intended usage as thickening agents, as
taught by Mongiat.” Id.
We agree with the Examiner’s fact-finding and conclusion. Schmolka
discloses that its invention includes gelled dentifrice compositions
comprising the same flavoring agents as its mouthwash, along with up to 5
wt% of a gelling or thickening agent. Schmolka 5:4–25.
Mongiat discloses cosmetic preparations. Mongiat ¶ 2. Mongiat
discloses that glyceryl esters are used in cosmetics as thickening agents. Id.
¶ 122. Examples of such glyceryl esters include polyglyceryl-10 decaoleate
and polyglyceryl-10 pentaoleate. Id. ¶ 123. Mongiat discloses that suitable
cosmetic end formulations include “products for oral and dental hygiene”
such as toothpastes and mouthwashes. Id. ¶¶ 172, 189.
Based on these teachings, it would have been obvious to use
polyglyceryl-10 decaoleate or polyglyceryl-10 pentaoleate as a thickener in
Schmolka’s gelled dentifrice composition, because Mongiat discloses that
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these compounds are used as thickeners in cosmetic formulations, and such
cosmetic formulations include toothpaste.
Appellant argues that “Mongiat is generically directed to
nanodispersions to protect water-soluble ingredients in cosmetic end
formulations. The reference offers an endless list of cosmetic formulations,
. . . most of which have no connection with oral hygiene.” Appeal Br. 31.
Appellant argues that polyglyceryl-10 decaoleate and polyglyceryl-10
pentaoleate are “buried in an unending list . . . of glyceryl esters that are
described as useful ‘emollients, lubricants, vehicles, and thickening agents,’
but specifically not for any mouthwash product.” Id. at 32.
These arguments are unpersuasive, because Mongiat discloses that
polyglyceryl-10 decaoleate and polyglyceryl-10 pentaoleate are
conventionally used as thickeners, among other things, in cosmetic
compositions, which include toothpaste and mouthwash. The fact that they
might also have been recognized as useful in other types of cosmetic
compositions does not make them less suitable for oral compositions.
Appellant has pointed to no evidence of record that a skilled artisan would
not have recognized these components as suitable for use in Schmolka’s oral
care compositions.
We therefore affirm the rejection of claims 38 and 39 under 35 U.S.C.
§ 103 based on Schmolka, Nabi, Shine, and Mongiat.
IV
The Examiner has rejected claim 40 as obvious based on Schmolka,
Nabi, Shine, and Winston. Claim 40 is directed to the composition of claim
1, further comprising 5–20 wt% PEG 3350.
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The Examiner finds that “Winston teaches a dentifrice comprising
polyethylene glycol as a thickener, where the polyethylene glycol has a
molecular weight above 900” and concludes that it would have been obvious
to use PEG 3350 as a thickener in Schmolka’s composition, “based on its
recognized suitability for its intended use as a thickening agent, as taught by
Winston.” Ans. 8.
We agree with the Examiner’s fact-finding and conclusion. We also
note that Winston describes suitable thickeners as “includ[ing] the solid
polyethylene glycols having molecular weights above 900, e.g., those sold as
Carbowax 900, 1000, 1450, 3350, 4600, or 8000.” Winston 4:15–18
(emphasis added). Thus, Winston expressly suggests polyethylene glycol
with a molecular weight of 3350—i.e., PEG 3350—as a thickener for
dentifrice compositions.
Appellant argues that “Winston suggests only the presence of a
polyethylene glycol having a molecular weight greater than 900. Such is an
infinite range that fails to suggest any species having a molecular weight of
3,350.” Appeal Br. 33. This argument is unpersuasive because, as discussed
above, Winston expressly suggests using PEG 3350 as a thickener in
dentifrice compositions.
We therefore affirm the rejection of claim 40 under 35 U.S.C. § 103
based on Schmolka, Nabi, Shine, and Winston.
V
The Examiner has rejected claims 42 and 44 as obvious based on
Schmolka, Nabi, Shine, and Causton. The Examiner finds that “Schmolka
does not disclose polyacrylic acid, as recited in claims 42 and 44,” but
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“Causton discloses mouth rinses comprising polyacrylic acid as a gelling
agent.” Ans. 8. The Examiner concludes that, “[s]ince Schmolka discloses
mouthwashes with gelling agents generally, it would have been obvious to
one of ordinary skill in the art to have included polyacrylic acid within
Schmolka’s composition as a gelling agent.” Id. at 8–9.
We agree with, and adopt, the Examiner fact-finding and conclusion.
Appellant argues that “claims 42 and 44 distinguish the cited prior art
on the same grounds as claim 1, from which they depend.” Appeal Br. 33.
This argument is unpersuasive for the reasons discussed above.
We therefore affirm the rejection of claim 42 under 35 U.S.C. § 103
based on Schmolka, Nabi, Shine, and Causton. Claim 44 falls with claim 42.
37 C.F.R. § 41.37(c)(1)(iv).
VI
The Examiner has rejected claim 45 as obvious based on Schmolka,
Nabi, Shine, Causton, and Thiele. Claim 45, through its dependence on
claim 42, is directed to the composition of claim 1, further comprising a
gelling agent such as polyacrylic acid and 0.2–1.0 wt% triethanolamine.
The Examiner concludes, as discussed above, that it would have been
obvious to include polyacrylic acid in Schmolka’s composition, based on
Causton. The Examiner finds that “Schmolka teaches dentifrices (abstract)
comprising 1% of thickening agents” and “Thiele teaches dentifrices
comprising triethanalomine [sic] as a thickening agent.” Ans. 9. The
Examiner concludes that “it would have been obvious to one of ordinary
skill in the art to have included triethanolamine within Schmolka’s
composition as a thickening agent, as taught by Thiele.” Id.
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We agree with, and adopt, the Examiner fact-finding and conclusion.
Appellant argues that “triethanolamine appears only in a very lengthy
list of thickening agents. . . . There is no teaching in the art that would have
induced a person of ordinary skill to pluck triethanolamine from this lengthy
list for combination with the several components of the composition of claim
1.” Appeal Br. 34.
This argument is unpersuasive. Thiele discloses that triethanolamine
is a suitable thickener for use in dentifrices; the fact that other thickeners are
also useful in dentifrices does not make the choice of triethanolamine any
less obvious. See Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807
(Fed. Cir. 1989).
Appellant also argues that
Causton describes a composition in which the active materials
are typically bactericides, anti-inflammatories, remineralising
solutions, fluorides, desensitisers, antifungal agents, salivary
gland stimulators, deodorants and antibiotics. None of these are
related to any of the components called for in Applicant’s
claims. Clearly, Causton could be identified only by working
backwards from Applicant’s composition.
Appeal Br. 34.
This argument is also unpersuasive. First, Causton discloses a
mouthrinse, which is in the same field of endeavor as the other references
cited by the Examiner, and therefore it is analogous art. Second, Shine
discloses that extracts such as grape seed extract and grapefruit seed extract
“contribute to healing of inflammation in the oral cavity, promote healthy
gum tissue, as well as inhibit the growth of bacteria.” Shine 4:35–37. These
activities are the same as those of the “bactericides, anti-inflammatories”
that Appellant cites as the active materials in Causton’s composition.
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We therefore affirm the rejection of claim 45 under 35 U.S.C. § 103
based on Schmolka, Nabi, Shine, Causton, and Thiele.
VII
The Examiner has rejected claim 48 as obvious based on Schmolka,
Nabi, Shine, and Giacin. Claim 48 is directed to the composition of claim 1,
with specific amounts of each of the recited components, including 35 wt%
ethyl alcohol.
The Examiner finds that “[r]egarding, the amount of ethanol,
Schmolka disclosed 25 %, and did not recite 35 %, as instantly claimed.
However, Giacin teaches . . . that this ingredient is useful at 5 to 50 %, an
amount that overlaps the amount instantly recited.” Ans. 10. The Examiner
also finds that different amounts of ethanol are “recognized to have different
effects (greater or less concentration of the mouthwash, as taught by Giacin
at the abstract)” and thus the concentration of ethanol was a recognized
result-effective variable that would have been obvious to optimize within
Giacin’s range. Id.
We agree with, and adopt, the Examiner fact-finding and conclusion.
Appellant argues that “claim 48 is patentable on the same basis as
claim 1 from which it depends.” Appeal Br. 35.
This argument is unpersuasive for the reasons discussed above.
We therefore affirm the rejection of claim 48 under 35 U.S.C. § 103
based on Schmolka, Nabi, Shine, and Giacin.
Appeal 2019-003376
Application 14/777,230

19
CONCLUSION
In summary:
Claims
Rejected
Basis  Affirmed Reversed
1, 24–27, 29, 31,
33, 35–45, 48
§ 101  1, 24–27, 29, 31,
33, 35–45, 48
1, 24–27, 29, 31,
33, 35–37, 41,
43, 46, 47
§ 103 Schmolka,
Nabi, Shine 
1, 24–27, 29,
31, 33, 35–37,
41, 43, 46, 47

38, 39 § 103 Schmolka,
Nabi, Shine, and
Mongiat
38, 39
40 § 103 Schmolka,
Nabi, Shine,
Winston
40
42, 44 § 103 Schmolka,
Nabi, Shine, Causton
42, 44
45 § 103 Schmolka,
Nabi, Shine,
Causton, Thiele
45
48 § 103 Schmolka,
Nabi, Shine, Giacin
48
Overall
Outcome
1, 24–27, 29,
31, 33, 35–48

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).

AFFIRMED