Colgate-Palmolive Company

Patent Trials and Appeals Board

May 26, 2020

2019005987 (P.T.A.B. May. 26, 2020)

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.
14/960,960 12/07/2015 Lyndsay Schaeffer-Korbylo 10711-00-US-01-OC 1021
23909 7590 05/26/2020
COLGATE-PALMOLIVE COMPANY
909 RIVER ROAD
PISCATAWAY, NJ 08855
EXAMINER
RONEY, CELESTE A
ART UNIT PAPER NUMBER
1612
NOTIFICATION DATE DELIVERY MODE
05/26/2020 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
Patent_Mail@colpal.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LYNDSAY SCHAEFFER-KORBYLO and LISA MANUS
Appeal 2019-005987
Application 14/960,960
Technology Center 1600
Before DONALD E. ADAMS, ELIZABETH A. LAVIER, and
JAMIE T. WISZ, Administrative Patent Judges.
LAVIER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–21. 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(a). Appellant identifies the real party in interest as Colgate-Palmolive
Company. Appeal Br. 2.
Appeal 2019-005987
Application 14/960,960
2
CLAIMED SUBJECT MATTER
The claims are directed to methods for using an oral care composition
to treat a person with particular bacterial species in their oral cavities.
Claims 1 and 7 are illustrative:
1. A method of promoting the aggregation and/or immune clearance
of oral bacteria, the method comprising:
a) selecting a person in need of treatment due to the presence of
one or more of A. viscous, L. casei, S. oralis, V. parvula and F.
nucleatum present in their oral cavities;
b) administering to the oral cavity of the person in need of
treatment, an oral care composition comprising a metal-amino
acid complex, wherein said complex is a zinc(II)-amino acid
complex selected from zinc-lysine and zinc-arginine complex;
c) and maintaining the metal-amino acid complex in the oral
cavity for a period of treatment greater than 5 minutes.
7. The method of claim 1, wherein the complex is a zinc lysine
chloride complex having the chemical structure
[Zn(C6H14N2O2)2Cl]+ Cl-, either in solution of the cationic cation
and the chloride anion, or in solid salt form, optionally in mono- or
dihydrate form.
Appeal Br. 11–12 (Claims Appendix).
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REFERENCES
The Examiner relies on the following references:
Name Reference Date
Ratcliff et al. US 2009/0016973 Al Jan. 15, 2009
Pan et al. WO 2014/098822 A1 June 26, 2014
Heimdahl et al. Detection and
Quantitation by
Lysis-Filtration of
Bacteremia after
Different Oral
Surgical Procedures,
Journal of Clinical
Microbiology, 2205–
2209.
Oct. 1990
REJECTIONS
1. Claims 1–21 stand rejected under 35 U.S.C. § 112(a) as failing to
comply with the written description requirement. Final Action 2.
2. Claims 1–20 stand rejected under 35 U.S.C. § 103 as unpatentable
over Pan and Ratcliff. Final Action 3.
3. Claim 21 stands rejected under 35 U.S.C. § 103 as unpatentable
over Pan, Ratcliff, and Heimdahl. Final Action 9.
OPINION
Rejection 1
The written description rejection (see Final Action 2–3) pertains to the
limitation in claim 1 of “maintaining the metal-amino acid complex in the
oral cavity for a period of treatment greater than 5 minutes.” The Examiner
acknowledges that the Specification provides in vitro bacterial aggregation
data at five-minute intervals (see id. at 3 (discussing Spec. ¶¶ 60–64), but
concludes that these data are inadequate to support treatment within the
Appeal 2019-005987
Application 14/960,960
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mouth (see id. at 3; see also Ans. 7–8). In vivo data are not necessarily
required to satisfy the written description requirement for a method of
treatment. Instead, the disclosure must demonstrate, with reasonable clarity,
that the inventors were in possession of the claimed subject matter. See
Purdue Pharma L.P. v. Faulding, Inc., 230 F.3d 1320, 1323 (Fed. Cir.
2000). Having reviewed the cited passages of the Specification, we agree
with Appellant (see Appeal Br. 9) that the in vitro aggregation data, at time
points up to 55 minutes, are sufficient to support the “period of treatment
greater than 5 minutes” language in claim 1.
Accordingly, we reverse Rejection 1.
Rejection 2
1. Claim 1
With respect to illustrative claim 1, the Examiner finds that Pan
teaches zinc amino acid complex mouthwashes that, inter alia, reduce
bacterially-generated biofilm and plaque, and can be applied for an extended
period of time, i.e., more than five minutes. See Final Action 3–4 (citing
Pan ¶¶ 7, 18, 40–41, claims 13, 19). As Pan does not specify the particular
types of bacteria involved, the Examiner turns to Ratcliff. See id. at 4.
Ratcliff teaches mouthwash compositions for killing bacteria in the oral
cavity, including several of the species recited in claim 1, namely A. viscous,
S. oralis, and F. nucleatum. See id. (citing Ratcliff ¶¶ 6, 7, 28, 63, claim 15).
The Examiner concludes:
Since Pan disclosed antibacterial compositions for the reduction
of oral bacteria, it would have been prima facie to one of ordinary
skill in the art to have used said compositions to reduce A.
viscous, F. nucleatum and S. oralis, as taught by Ratcliff. An
ordinarily skilled artisan would have been so motivated because
said bacteria are closely associated with biofilm and oral disease.
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Further, a skilled artisan would have been so motivated because
there is a strong need in the art to inhibit the formation of
bacterial plaque, by reducing the presence of A. viscous F.
nucleatum and S. oralis, as taught by Ratcliff, at [0006-7 and
0063] and at claim 15.
Final Action 4–5. Furthermore, the Examiner finds that administering the
mouthwashes comprising [Zn(Cl6H14N2O2)2Cl]+Cl- as taught in Pan would
be expected to have the same effect as the claimed oral compositions
likewise comprising [Zn(Cl6H14N2O2)2Cl]+Cl-:
The instant specification, at page 2 and sections [0007 and 0008],
discloses that [Zn(Cl6H14N2O2)2Cl]+Cl-, existing in solution of
the cationic cation and the chloride anion, or as a solid salt,
promotes improved bacterial aggregation. Pan discloses
mouthwashes (title and abstract) administered to humans that
comprise [Zn(Cl6H14N2O2)2Cl]+Cl-, existing in solution of the
cationic cation and the chloride anion, or as a solid salt. Pan
further discloses methods of reducing bacterially-generated
biofilm and plaque, and of treating enamel erosion.

It appears that the compositions of the instant claims and those
of the prior art would reasonably be expected to have
substantially the same physical and chemical properties (e.g.
promotion of the aggregation of oral bacteria). This is because
Pan disclosed administering mouthwashes comprising
[Zn(Cl6H14N2O2)2Cl]+Cl-, and the instant specification disclosed
that oral compositions comprising [Zn(C15H14N2O2)2Cl]+Cl-
promote the aggregation of oral bacteria.
Final Action 5; cf. In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990)
(“Products of identical chemical composition cannot have mutually
exclusive properties.”).
Appellant presents several arguments, none of which we find
persuasive. First, Appellant asserts that they “have demonstrated that
treatment for a novel and nonobvious patient-sub[]population with specific
Appeal 2019-005987
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bacteria in their oral cavity” (Appeal Br. 5) whereas the Examiner’s
rejection relies only on generalizations (see id. at 6). We disagree. The
Examiner’s rejection is specific, and utilizes the combination of Pan and
Ratcliff, not in isolation. In re Keller, 642 F.2d 413, 426 (CCPA 1981)
(“But one cannot show non-obviousness by attacking references individually
where, as here, the rejections are based on combinations of references.”).
The Examiner explains:
Pan clearly teaches the administration of zinc amino acid halide
complexes, for reducing bacterially-generated oral biofilm,
plaque, gingivitis, and caries, caused by normal oral bacteria
(taught by Ratcliff), including Actinomyces viscosus,
Streptococcus oralis and Fusobacterium nucleatum, and wherein
said bacteria are basic and normal, rather than random,
colonizers that cause biofilm, plaque, gingivitis and caries in the
mouth.
Ans. 10. Thus, we agree with the Examiner (see id.) that Pan’s teachings
read on the claimed bacteria insofar as Pan teaches treatment of oral bacteria
that cause plaque, gingivitis, and biofilm; Ratcliff adds clarity to this point
by identifying some of the bacterial species recited in claim 1 as causal to
these conditions. Appellant has, at best, identified the particular species of
bacteria left unspecified, but nonetheless treated, by Pan. This is not
inventive. Cf. In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir.
1991) (“Mere recognition of latent properties in the prior art does not render
nonobvious an otherwise known invention.”).
Appellant also argues that because Pan is “primarily directed to
reducing or treating hypersensitivity by occluding dentinal tubules and
provide zinc to teeth enamel,” the ordinarily skilled artisan would not have
looked to Pan to develop the claimed method. Appeal Br. 7; see also Reply
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Br. 6.2 But what Pan “primarily” teaches is not the issue, as a reference is
prior art for all that it teaches. See In re Mills, 470 F.2d 649, 651 (CCPA
1972) (citations omitted) (“All the disclosures in a reference must be
evaluated, including nonpreferred embodiments.”), In re Lemelson, 397 F.2d
1006, 1009 (CCPA 1968) (“The use of patents as references is not limited to
what the patentees describe as their own inventions or to the problems with
which they are concerned. They are part of the literature of the art, relevant
for all they contain.”). As introduced above, Pan teaches using its
compositions to “reduce bacterially-generated biofilm and plaque” as well as
for treating hypersensitivity, enamel erosion, and other purposes. Pan ¶ 10;
see also id. at ¶¶ 18, 44. Appellant’s assertion that the use of Pan’s
compositions is “entirely different” because “the method here claims the act
of rinsing out the entire [oral] cavity” (Appeal Br. 8) thus fails to account for
the scope of Pan’s teachings.3
Relatedly, Appellant argues that the rejection fails to identify a
teaching, motivation, or suggestion to combine the references, insofar as
Ratcliff does indicate that the recited bacterial strains “can be treated by the
complex in Pan,” and that there is “no link between the solution of stabilized
chlorine dioxide” in Pan and the compositions recited in claim 1. Appeal Br.
6; see also Reply Br. 5. Appellant’s argument unpersuasively considers the

2 The Reply Brief is not paginated. We count seven pages, beginning from
the title page.
3 This argument also fails because claim 1 simply recites “administering to
the oral cavity” (Appeal Br. 11 (Claims Appendix)), not “rinsing out the
entire cavity” as Appellant alleges (id. at 8). Indeed, claim 9, which depends
from claim 1, further specifies that the composition may be in the form of,
inter alia, a “strip[] or gum” (id. at 12), i.e., forms that are not rinses.
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references individually, not in tandem. See Keller, 642 F.2d at 426. As
discussed above, both Pan and Ratcliff are directed to reducing oral bacteria
and treating conditions caused thereby, such as plaque. The Examiner relies
on Pan, not Ratcliff, for the bacteria-killing composition, and so there need
not be a “link” between the compositions of Ratcliff and those used in claim
1. Appellant’s assertion that bacterial aggregation is unpredictable (see
Appeal Br. 9) likewise misses the mark (see Ans. 17).
Having considered Appellant’s arguments as properly presented in the
Appeal Brief,4 we are not persuaded that the Examiner erred reversibly in
rejecting claim 1. For the reasons described herein as well as those already
of record, we affirm the rejection of claim 1. Claims 2–6, 8–16, and 18–20
are not argued separately, and fall with claim 1. See 37 C.F.R.
§ 41.37(c)(1)(iv).

4 In the Reply Brief, Appellant raises a new argument with respect to
Rejection 2, namely that Pan does not teach or suggest administering its
composition for greater than five minutes, as required by claim 1. See Reply
Br. 4. A new argument not timely presented in the Appeal Brief will not be
considered when filed in a Reply Brief, absent a showing of good cause
explaining why the argument could not have been presented in the Appeal
Brief. See 37 C.F.R. § 41.37(c)(1)(iv) (2015); see also Ex parte Borden,
2010 WL 191083 at *2 (BPAI 2010) (informative) (“Any bases for asserting
error, whether factual or legal, that are not raised in the principal brief are
waived.”). In addition to being improper, this new argument is
unpersuasive. We discern no error in the Examiner’s finding (see Final
Action 3–4; see also Ans. 10) that Pan’s teaching of “extended” treatment
times reads on “greater than 5 minutes” as recited in claim 1.
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2. Claims 7 and 17
Appellant argues that unexpected results in the Specification support
the patentability of the administration of the specific zinc lysine chloride
complex recited in claims 7 and 17.5 See Appeal Br. 8 (discussing Spec.
¶¶ 60–61). The characterization of the results as “unexpected” (Appeal Br.
8) appears to be unsupported attorney argument. See Knorr v. Pearson, 671
F.2d 1368, 1373 (CCPA 1982) (“[A]rguments of counsel cannot take the
place of evidence lacking in the record.”); see also In re Klosak, 455 F.2d
1077, 1080 (CCPA 1972) (“[I]t is not enough to show that results are
obtained which differ from those obtained in the prior art: that difference
must be shown to be an unexpected difference.”). Further, the cited data in
the Specification do not support such an assertion. For example, the
Examiner explains: “[t]he appellants have attempted to draw a conclusion of
aggregation by comparing solutions of unequal concentrations, and because
the solutions are not comparable to each other, they cannot be fairly
compared for an improved aggregation, as alleged.” Ans. 18. Nor is it clear
whether or how these data compare to the closest prior art. See In re Soni,
54 F.3d 746, 750 (Fed. Cir. 1995).
We affirm the rejection of claims 7 and 17.
Rejection 3
Appellant does not present any additional arguments with respect to
claim 21. We affirm the rejection of claim 21.

5 Claim 17 mirrors the language of claim 7, except that claim 17 depends on
claim 11, while claim 7 depends on claim 1. Compare Appeal Br. 12 (claim
7) with id. at 13.
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CONCLUSION
Rejection 1 is reversed; Rejections 2 and 3 are affirmed.
DECISION SUMMARY

Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–21 112(a) Written
Description
1–21
1–20 103 Pan, Ratcliff 1–20
21 103 Pan, Ratcliff,
Heimdahl
21
Overall
Outcome
1–21

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