COLGATE-PALMOLIVE COMPANYDownload PDFPatent Trials and Appeals BoardJul 20, 20212020006497 (P.T.A.B. Jul. 20, 2021) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 14/649,109 06/02/2015 Aarti Rege 9821-00-US-01-OC 8346 23909 7590 07/20/2021 COLGATE-PALMOLIVE COMPANY 909 RIVER ROAD PISCATAWAY, NJ 08855 EXAMINER WEBB, WALTER E ART UNIT PAPER NUMBER 1612 NOTIFICATION DATE DELIVERY MODE 07/20/2021 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 AARTI REGE, DAVID F. SURIANO, RICHARD SULLIVAN, and MICHAEL A. STRANICK ____________ Appeal 2020-006497 Application 14/649,109 Technology Center 1600 ____________ Before RICHARD M. LEBOVITZ, JEFFREY N. FREDMAN, and TIMOTHY G. MAJORS, Administrative Patent Judges. MAJORS, Administrative Patent Judge. DECISION ON APPEAL Appellant1 submits this appeal under 35 U.S.C. § 134(a) involving claims to an oral care composition comprising, inter alia, a zinc ion source, arginine, and a fluoride source. The claims have been rejected for obviousness under 35 U.S.C. § 103. We have jurisdiction under 35 U.S.C. § 6. We AFFIRM. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies Colgate-Palmolive Company as the real party-in-interest. Appeal Br. 2. Appeal 2020-006497 Application 14/649,109 2 STATEMENT OF THE CASE “Dental erosion involves demineralization and damage to the tooth structure due to acid attack from nonbacterial sources.” Spec. ¶ 1. As background, the Specification explains that “[h]eavy metal ions, such as zinc, are resistant to acid attack,” and also that “[z]inc has been shown to have antibacterial properties in plaque and caries studies.” Id. ¶ 3. However, when zinc and fluoride are used together, such as in a dentifrice composition, the Specification states that “zinc ions may react with fluoride ions to produce zinc fluoride, which is insoluble and so reduces the availability of both the zinc and the fluoride.” Id. ¶ 4. According to the Specification, “[i]t has now been discovered that formulations comprising zinc ions together with fluoride have enhanced fluoride stability when placed in combination with a basic amino acid, for example arginine or lysine.” Id. ¶ 5. Thus, “[t]he invention provides oral care compositions, for example dentifrices, that comprise a zinc ion source, a fluoride ion source, and a basic amino acid.” Id. ¶ 6. Claims 1, 5, 7, 8, 10, 13, 16, 17, and 21–23 are on appeal. Claim 1 is illustrative: 1. An oral care composition comprising: From 0.5 wt% to 2.5 wt% of a zinc ion source comprising zinc citrate; about 1450 ppm fluoride, wherein the fluoride source is sodium fluoride; and from about 1.5 wt% to about 5 wt% of arginine; one or more alkali phosphate salts selected from the group consisting of: sodium phosphate dibasic, potassium phosphate dibasic, dicalcium phosphate dihydrate, tetrasodium pyrophosphate, tetrapotassium pyrophosphate, calcium pyrophosphate, and sodium tripolyphosphate; in a silica abrasive dentifrice base; and Appeal 2020-006497 Application 14/649,109 3 wherein the composition delivers nearly 20% more fluoride to the surface of an enamel, relative to oral care compositions without arginine, when measured by electron spectroscopy for chemical analysis (ESCA); and wherein the composition is used in treating or reducing dental enamel erosion. Appeal Br. 10. Each of claims 5, 7, 8, 10, 13, 16, 17, and 21–23 depends, directly or indirectly, from claim 1. Id. at 10–11. Claim 16 recites: “[t]he composition of claim 1, wherein the zinc ion source comprises zinc oxide,” and claim 17 recites “[t]he composition of claim 1 wherein the zinc ion source comprises zinc citrate and zinc oxide.” Id. at 11.2 Appellant seeks review of the Examiner’s rejection of claims 1, 5, 7, 8, 10, and 21–23 under 35 U.S.C. § 103 as obvious over Prencipe ’454.3 Final Act. 3–7.4 The Examiner’s rejection of claims 16 and 17 as obvious over the combination of Prencipe ’454 and Prencipe ’4925 is also on appeal. Id. at 5–7. I. Obviousness over Prencipe ’454 The standard of review on appeal is whether a preponderance of the evidence supports the Examiner’s conclusion that claims 1, 5, 7, 10, and 21– 2 Claim 1, from which claims 16 and 17 depend, expressly requires that the zinc ion source comprises zinc citrate. To the extent claim 16 further requires that the zinc ion source comprises both zinc citrate and zinc oxide (like expressly recited also in claim 17), it is unclear what distinguishes claims 16 and 17. If prosecution continues, we suggest appropriate correction or clarification be made. 3 Prencipe et al., US 2009/0202454 A1, published Aug. 13, 2009. 4 This citation refers to the Final Rejection dated December 16, 2019 (“Final Act.”). We also refer herein to the Examiner’s Answer on Appeal dated July 16, 2020 (“Ans.” or “Answer”), and to the Advisory Action dated March 9, 2020 (“Adv. Act.”). 5 Prencipe et al., WO 2010/138492 A2, published Dec. 2, 2010. Appeal 2020-006497 Application 14/649,109 4 23 would have been obvious over Prencipe ’454. Appellant’s argument for this rejection is addressed to the claims as a group. We focus here on claim 1, and the other claims stand or fall with claim 1. 37 C.F.R. § 41.37(c)(iv). The Examiner concludes that the oral care composition of claim 1 would have been obvious over Prencipe ’454. Final Act. 3–7; Adv. Act. 2; Ans. 3–7. According to the Examiner, Prencipe ’454 exemplifies a toothpaste formulation that includes a zinc ion source (1.4 wt% zinc lactate), a basic amino acid (5 wt% arginine), a fluoride ion source (0.76 wt% sodium monofluorophosphate6), an alkali phosphate salt (2 wt% tetrasodium pyrophosphate), and a silica abrasive, among other ingredients. Final Act. 3; see Prencipe ’454 ¶ 99 (Example 2), ¶ 103 (Formula IV). The Examiner finds that Prencipe ’454 discloses that zinc salts (e.g., zinc citrate, zinc lactate, etc.) are known antibacterial agents, and the Examiner reasons that it would have been obvious to replace zinc lactate with zinc citrate because they are art-recognized substitutable salts. Final Act. 3; Prencipe ’454 ¶ 16 (sub-composition 1.0.61 (“Any of the preceding compositions [i.e., Composition 1.0, including effective amounts of arginine] further comprising triclosan and a Zn2+ ion source, e.g., zinc citrate”), ¶ 26 6 The Examiner finds that the 0.76 wt% sodium monofluorosphate represents 1000 ppm fluoride. Final Act. 3. It is unclear how the Examiner arrives at that parts-per-million calculation as 0.76 wt% would appear to correspond to 7600 ppm (e.g., applying conversion where 1% = 10,000 ppm). In any event, the Examiner cites Prencipe ’454’s teaching that fluoride may be present from about 25 to about 25,000 ppm, including in amounts from about 750–2000 ppm for a toothpaste, thus encompassing the claimed value of 1450 ppm. Id. (citing Prencipe ’454 ¶ 28); see also Prencipe ’454 ¶ 16 (sub-composition 1.0.29, reciting “[a]ny of the preceding compositions wherein the composition comprises about 1450 ppm fluoride ion”). Appeal 2020-006497 Application 14/649,109 5 (disclosing addition of “metal ions (e.g., zinc salts, for example zinc citrate[)]”)). Similarly, the Examiner reasons that it would have been obvious to substitute soluble fluoride salts (e.g., sodium fluoride for sodium monofluorophosphate) because Prencipe ’454 teaches that such salts are suitable alternatives. Final Act. 4 (citing Prencipe ’454 ¶ 8). Continuing, the Examiner finds that Prencipe ’454 teaches oral care compositions that combine zinc, arginine, and fluoride for purposes of reducing acid-producing bacteria, remineralizing teeth, and reducing erosion. Adv. Act. (citing Prencipe ’454 ¶¶ 8, 15 (e.g., teaching methods to “reduce, repair or inhibit early enamel lesions” and to “reduce erosion of the teeth”)). According to the Examiner, Formula IV of Prencipe ’454 combines fluoride, zinc, and arginine like the claimed composition and “would implicitly deliver nearly 20% more fluoride to the surface of an enamel relative to oral care compositions without arginine,” as recited in claim 1’s penultimate “wherein” clause. Final Act. 3. Also, noting the overlapping components (e.g., arginine, and respective fluoride and zinc ion sources) listed in Appellant’s Specification and the prior art, the Examiner reasons that “the property of enhanced fluoride stability [including nearly 20% more fluoride delivery] would have been present in the prior art . . . insofar as Prencipe et al. teaches a specific embodiment comprising a source of zinc ions (zinc lactate), fluoride (sodium monofluorosphosphate), and arginine.” Ans. 4 (citing Spec. ¶ 5 (identifying arginine and lysine as suitable amino acids), ¶ 10 (listing zinc lactate and zinc citrate as suitable zinc ion sources; listing sodium fluoride and sodium monofluorophosphate as suitable fluoride salts)); see also id. at 6 (“Examiner has provided a teaching of a Appeal 2020-006497 Application 14/649,109 6 specific embodiment [Formula IV of Prencipe ’454] representing the closest prior art for purposes of comparison.”). We generally agree with and adopt the Examiner’s findings of fact and reasoning in support of the conclusion of obviousness. Prencipe ’454 teaches oral care compositions with overlapping ingredients in overlapping amounts, for the same or substantially the same use (i.e., reducing erosion of the teeth) compared to what is claimed. To illustrate, Prencipe ’454’s Composition 1.0 includes an effective amount of a basic amino acid, i.e., “arginine,” an “effective amount of an antibacterial agent,” and “an effective amount of a fluoride source.” Prencipe ’454 ¶ 16. Composition 1.0.13 teaches “about 1 wt. % to about 10 wt.%” of the amino acid, Composition 1.0.21 teaches “[a]ny of proceeding compositions where the fluoride salt is sodium fluoride” and Composition 1.0.29 teaches “about 1450 ppm fluoride ion.” Id. Composition 1.0.54 teaches “[a]ny of the preceding compositions comprising an antibacterial agent” like “zinc salts, for example, zinc citrate,” Composition 1.0.61 teaches “[a]ny of the preceding compositions further comprising triclosan and a Zn2+ ion source, e.g., zinc citrate,” and Composition 1.0.62 teaches the antibacterial agent comprises “about 0.01 to about 5 wt%” of the composition. Id. Prencipe ’454’s teachings wholly encompass the claimed subject matter. In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003) (explaining that “a prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness” and “shifts the burden to the applicant to show that his invention would not have been obvious”). Furthermore, Prencipe ’454’s working example (Formula IV) includes 5 wt% arginine like claimed and merely uses different zinc and fluoride salts Appeal 2020-006497 Application 14/649,109 7 (zinc lactate and sodium monofluorophosphate). Prencipe ’454 ¶ 103. But, as the Examiner notes, Prencipe ’454 teaches, and Appellant’s Specification indicates, that zinc citrate and sodium fluoride (like claimed) are simply alternatives to zinc lactate and sodium monofluorophosphate. Prencipe ’454 ¶¶ 8, 16, 26, 28, 103 (Formula III (sodium fluoride); Formula IV (sodium monofluorophosphate)); Spec. ¶ 10 (listing alternative zinc salts like zinc sulfate, zinc lactate, zinc citrate; listing alternative fluoride salts like sodium fluoride, sodium monofluorophosphate, and potassium fluoride).7 There is no evidentiary basis here to show that the recited functional property of claim 1’s composition based on its recited constituents—that it “delivers nearly 20% more fluoride to the surface of an enamel”—arises only when arginine, zinc citrate, and sodium fluoride are combined. And, the Examiner has a sound fact-based basis on this record for believing that claim 1’s functional property is implicit or inherent in Prencipe ’454’s Formula IV composition given the overlap in components and clearly contemplated alternative salts. In re Papesch, 315 F.2d 381, 391 (CCPA 1963) (“From the 7 Disclosures of the “patent itself” can evidence inherency. Alcon Research, Ltd. v. Apotex Inc., 687 F.3d 1362, 1369 (Fed. Cir. 2012). We further note that the Specification instructs that its “specific examples . . . are intended for purposes of illustration only and are not intended to limit the scope of the invention.” Spec. ¶ 8; see also id. ¶ 9 (preferred embodiments “merely exemplary in nature and is in no way intended to limit the invention”). This disclosure would suggest, consistent with the Examiner’s inherency determination, that whatever functional result the Specification shows for one example (arginine, zinc citrate, and sodium fluoride) is not limiting and would be present in combinations with alternative zinc and fluoride salts (e.g., arginine, zinc lactate, and sodium monofluorophosphate) like exemplified in the art and listed in the Specification. Prencipe ’454 ¶ 103. Appeal 2020-006497 Application 14/649,109 8 standpoint of patent law, a compound and all of its properties are inseparable; they are one and the same thing.”). Under such circumstances, the Office may require the applicant to present rebuttal evidence showing that the recited functional property is missing in the prior art product or composition. Where . . . the claimed and prior art products are identical or substantially identical . . . the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. Whether the rejection is based on ‘inherency’ under 35 U.S.C. § 102, on ‘prima facie obviousness’ under 35 U.S.C. § 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO’s inability to manufacture products or to obtain and compare prior art products. In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (citations and footnote omitted); Southwire Co. v. Cerro Wire LLC, 870 F.3d 1306, 1311 (Fed. Cir. 2017) (explaining that the Patent Office can require an applicant to show that the prior art does not possess the functional characteristic relied upon by applicant, whether the rejection is based on inherency or obviousness). Appellant provided no evidence to show that Prencipe ’454’s Formula IV lacks the fluoride delivery feature of claim 1. The assay results that Appellant does cite (Appeal Br. 4) relate to samples that do not contain any fluoride or arginine,8 which is required by the claim and Prencipe’s cited 8 See Remarks dated Nov. 22, 2019 (representing that “[t]he samples do not contain sodium fluoride or arginine”); see Final Act. 6 (noting “Applicant admits the data excludes arginine”); Ans. 4 (“[A]ppellant’s showing is not persuasive insofar as it does not show different interactions from lactate ion versus citrate ion in solutions containing zinc, fluoride and arginine.”). Appeal 2020-006497 Application 14/649,109 9 composition and, thus, are not probative or persuasive on the issue of the amount of fluoride delivered by Prencipe ’454’s Formula IV. Appellant argues that zinc lactate and zinc citrate salts are not substitutes for one another and, citing post-filing data apparently prepared by Appellant, Appellant contends the use of zinc citrate “surprisingly increases” zinc uptake compared to zinc lactate. Appeal Br. 4–5. We disagree. The cited prior art contradicts the notion that zinc lactate and zinc citrate are not alternatives and substitutable zinc salts. Prencipe ’454 ¶ 28 (expressly teaching use of “zinc salts, for example, zinc citrate”), ¶ 103 (exemplifying use of zinc salts, e.g., zinc lactate); see also Prencipe ’492 Abstr., ¶¶ 22, 40 (listing alternative zinc salts (“e.g., zinc chloride, zinc lactate, zinc citrate” for enhanced ion delivery in a dentifrice or other oral-care composition). Appellant’s data post-dates the filing of this application. We note that “[when an] advantage is not disclosed in appellant’s application” appellant is “not in a favorable position to urge it as a basis for the allowance of claims” In re Herr, 304 F.2d 906, 909 (CCPA 1962). Allowing post-filing date data that is unsupported by the Specification to serve as evidence of unexpected results subverts the quid pro quo inherent in the patent system. The data was, further, unavailable to the ordinarily skilled person and cannot have suggested a different reading of the art at the time of the invention. Secondly, that different zinc salts may deposit on enamel somewhat more or less zinc (as Appellant’s data) purports to show, does not prove that those zinc salts are not suitable substitutes in a dentifrice composition as claimed.9 As explained above, Appellant admits that the samples used to 9 As noted above, not only does the art teach that zinc lactate and zinc citrate are substitutes, so does Appellant’s Specification. Spec. ¶ 10 (listing a “zinc Appeal 2020-006497 Application 14/649,109 10 generate Appellant’s data included no fluoride or arginine and, therefore, the data speaks little to whether and how those salts would behave as alternatives in a composition like described in the prior art, or as recited in claim 1. Third, inasmuch as Appellant offers its data as objective indicia of nonobviousness (i.e., unexpected results), the evidence is weak at best. Pfizer, Inc., v. Apotex, Inc., 480 F.3d 1348, 1372 (Fed. Cir. 2007) (“Although secondary considerations must be taken into account, they do not necessarily control the obviousness conclusion.”). Objective indicia of nonobviousness are “only relevant to the obviousness inquiry ‘if there is a nexus between the claimed invention and the [objective indicia].’” In re Affinity Labs of Tex., LLC, 856 F.3d 883, 901 (Fed. Cir. 2017) (quoting Ormco Corp. v. Align Tech., Inc., 463 F.3d 1299, 1312 (Fed. Cir. 2006)). There is no sufficient nexus between Appellant’s data and the invention of claim 1—again, there was no arginine or fluoride source in the samples as required by the claims. The samples also used only a single concentration (0.5%) of zinc citrate, when a broader range is recited in the claim, and included zinc oxide (not recited in claim 1). In re Peterson, 315 F.3d at 1330 (affirming determination of obviousness where improved results were not “commensurate in scope” with the claimed subject matter). Without a sufficient nexus between the results and the composition claimed, whether the data shows a difference of degree or kind does not weigh heavy (if at all). Appeal Br. 5. And, beyond the above deficiencies, Appellant’s results are not tested against the closest prior art (Prencipe ’454’s Formula ion source is selected from zinc citrate, zinc sulfate, [and] zinc lactate” among others). Appeal 2020-006497 Application 14/649,109 11 IV). Bristol-Myers Squibb Co. v. Teva Pharms. USA, Inc., 752 F.3d 967, 977 (Fed. Cir. 2014) (“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[.]”).10 For the above reasons, Appellant’s data is entitled to minimal weight and it does not outweigh the Examiner’s comparatively strong evidentiary showing that claim 1 would have been obviousness. Appellant argues that Prencipe ’454 does not contain a working example that uses each of zinc lactate (or citrate), arginine, and sodium fluoride. Appeal Br. 5–6. We reject this argument for the plain reason that, when obviousness is the issue, the prior art is not limited to its preferred embodiments or working examples. Merck & Co. Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989). As already explained, Prencipe ’454 teaches or suggests combinations of zinc salts (e.g. zinc lactate or zinc citrate), arginine, and fluoride salts (e.g., sodium fluoride or sodium monofluorophosphate) in a dentifrice. Prencipe ’454 ¶¶ 8, 16, 26, 28, 103. That Prencipe ’454’s cited working example (Formula IV) includes no sodium fluoride does not mean it is not the closest example to what is claimed. Appeal Br. 6. As already explained, that example simply uses an alternative fluoride salt. Id. ¶¶ 8, 103 (identifying sodium fluoride and sodium monofluorophosphate as alternatives). Nor, as Appellant seems to interpret, is the Examiner urging the testing of a hypothetical composition not explicitly described in the prior art for comparative purposes. Appeal 10 Characterization of the results as “surprising” and “unexpected” also comes solely from counsel. Icon Health & Fitness, Inc. v. Strava, Inc., 849 F.3d 1034, 1043 (Fed. Cir. 2017) (“Attorney argument is not evidence.”). Appeal 2020-006497 Application 14/649,109 12 Br. 6. To the contrary, the Examiner has confirmed Prencipe ’454’s Formula IV is regarded as the closest prior art example. Ans. 4–7. Insofar as Appellant argues that nothing in Prencipe ’454 suggests using a combination of arginine, zinc citrate, and sodium fluoride to treat dental erosion, Appellant overlooks Prencipe ’454’s broader teaching that its compositions are suitable for that purpose (and others). Appeal Br. 6; Prencipe ’454 ¶ 15 (teaching application of the compositions to “reduce erosion of the teeth”).11 Appellant contends that the Examiner has not shown why the skilled artisan would have selected sodium fluoride, or the amounts of each ingredient. Appeal Br. 6–7. We disagree. As explained, Prencipe ’454 expressly describes overlapping ingredients in overlapping concentrations, used for their known purposes (e.g., cleaning, antimicrobial, anti-cavity) in a dentifrice composition like claimed. See, e.g., Prencipe ’454 ¶¶ 8, 15, 16, 103. “The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007); In re Peterson, 315 F.3d at 1330 (prima facie obviousness established where disclosure overlaps and encompasses claims). As for the recited functional property (nearly 20% more fluoride delivery), the Examiner has a reasoned factual basis for 11 Moreover, claim 1 is for a composition, and an intended use of a claimed composition or apparatus is generally not sufficient to distinguish over the prior art. In re Pearson, 494 F.2d 1399, 1402 (CCPA 1974) (“[T]erms [that] merely set forth the intended use for, or a property inherent in, an otherwise old composition . . . do not differentiate the claimed composition from those known in the prior art.”); Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990) (“[A]pparatus claims cover what a device is, not what a device does.”). Appeal 2020-006497 Application 14/649,109 13 considering that property inherent in Prencipe ’454 (i.e., Formula IV) as discussed above, and Appellant provides insufficient rebuttal evidence to persuade us otherwise. Hospira, Inc. v. Fresenius Kabi USA, LLC, 946 F.3d 1322, 1331–32 (Fed. Cir. 2020) (“If a property of a composition is in fact inherent, there is no question of a reasonable expectation of success in achieving it.”). Appellant contends the Examiner has not given patentable weight to the “wherein the composition delivers nearly 20% more fluoride” language of claim 1. Appeal Br. 7–8. But the Examiner is not disregarding that language. The Examiner reasons that this language is a functional property inherent in Prencipe ’454’s compositions as already explained.12 Final Act. 3 (result “implicit” in Formula IV); Ans. 4 (“the property . . . would have been present in the prior art,” and comparing Specification to specific embodiment of Prencipe ’454). It is upon Appellant now to produce persuasive evidence to the contrary, which is missing in the record. In re Best, 562 F.2d at 1254–55. For similar reasons, the allegedly unexpected fluoride delivery (20% higher, as described in Appellant’s Specification) does not outweigh the evidence of obviousness on this record because Appellant provides no comparison to the fluoride delivered by Prencipe ’454’s Formula IV. Spec. ¶ 45; Ans. 6–7 (explaining that Formula IV “represents the closest prior art insofar as it comprises all three relevant components, namely zinc, arginine, and fluoride”); Bristol-Myers, 752 F.3d at 977 (suggesting need to compare with closest prior art). 12 Appellant recognizes this in Reply, asserting “the Examiner appears to argue that technical benefits, such as increased fluoride deliver[y], would have been inherently present in the cited art.” Reply 5. Appeal 2020-006497 Application 14/649,109 14 For the reasons above, we determine that the preponderance of the evidence supports the Examiner’s conclusion that claim 1 would have been obvious over Prencipe ’454. Appellant does not argue claims 5, 7, 8, and 21–23 separately and those claims, thus, fall with claim 1. II. Obviousness over Prencipe ’454 and Prencipe ’492 The Examiner concludes that claims 16 and 17 would have been obvious over the combination of Prencipe ’454 and Prencipe ’492. Final Act. 5–6. According to the Examiner, Prencipe ’454 does not teach combining zinc citrate and zinc oxide as recited in claims 16 and 17. Id. So, the Examiner turns to Prencipe ’492, which the Examiner finds teaches and exemplifies combining zinc citrate and zinc oxide in a dentifrice for enhanced cosmetic or therapeutic effect. Id. (citing Prencipe ’492 ¶ 40, p. 16 (Table 1 (Composition C, which combines 2.0% zinc citrate and 1% zinc oxide)); see also id. ¶ 83 (describing combination). The Examiner reasons that it would have been obvious to combine such teachings with Prencipe ’454, and to modify the composition to include both zinc citrate and zinc oxide, to provide a benefit as suggested in Prencipe ’492. Id. at 5. We agree with and adopt the Examiner’s findings and reasoning. Appellant argues that the cited example of Prencipe ’492 does not teach the combination of zinc oxide and citrate with arginine. Final Act. 8. Appellant argues that neither Prencipe reference suggests the “impressive results” with fluoride uptake in Appellant’s data. Id. at 8–9. And Appellant argues that another portion of Prencipe ’492 (paragraph 40) excludes mention of zinc oxide, so it is unclear why a skilled artisan would have selected that salt in combination expecting any benefit. Id. at 8–9; see also Reply 9–10. Appeal 2020-006497 Application 14/649,109 15 None of those arguments from Appellant is persuasive. Prencipe ’454 discloses the advantageous use of arginine in combination with zinc and fluoride salts, so the absence of arginine in Prencipe ’492’s dentifrice compositions demonstrates no flaw in the rejection. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (“Non-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references.”). The allegedly “impressive” fluoride uptake data lacks a nexus to the claims as discussed above (e.g., comparison samples included no fluoride or arginine) and, thus, the data is not persuasive evidence of nonobviousness. The listing of zinc salts in paragraph 40 of Prencipe is merely illustrative and non-limiting as evidenced by the introducing with the “e.g.” signal. Prencipe ’492 ¶ 40 (“The metal ions and their salts (e.g., zinc chloride, zinc lactate, zinc citrate . . . ) may in particular provide one or more of these cosmetic and/or therapeutic effects in the dentifrice composition.”). In any event, Prencipe ’492 exemplifies the combined use of zinc oxide and zinc citrate for beneficial effect. Prencipe ’492, p. 16 Table 1; see also id. ¶¶ 83–85 (discussing metal ion stability for the example compositions); see also id. ¶ 22 (disclosing “at least one of zinc citrate, zinc lactate, zinc gluconate or zinc oxide. . . . Any of these source [of metal ions] may be combined in any combination thereof”), ¶ 31 (listing zinc oxide and zinc citrate, among other zinc salts). Appellant’s argument about paragraph 40 fails to account for Prencipe ’492’s broader teachings. Accordingly, we determine that the preponderance of the evidence supports the Examiner’s conclusion that claims 16 and 17 would have been obvious over Prencipe ’454 and Prencipe ’492. Appeal 2020-006497 Application 14/649,109 16 CONCLUSION The rejections of claims 1, 5, 7, 8, 10, 16, 17, and 21–23 are affirmed. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 5, 7, 8, 10, 21–23 103 Prencipe ’454 1, 5, 7, 8, 10, 21–23 16, 17 103 Prencipe ’454, Prencipe ’492 16, 17 Overall Outcome 1, 5, 7, 8, 10, 16, 17, 21–23 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 Copy with citationCopy as parenthetical citation