Ex Parte Rege et al

Patent Trials and Appeals Board

Apr 17, 2019

14649221 - (D) (P.T.A.B. Apr. 17, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/649,221 06/03/2015
23909 7590 04/19/2019
COLGATE-PALMOLIVE COMPANY
909 RIVER ROAD
PISCATAWAY, NJ 08855
FIRST NAMED INVENTOR
Aarti Rege
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
9823-00-US-Ol-OC 8013
EXAMINER
WEBB, WALTERE
ART UNIT PAPER NUMBER
1612
NOTIFICATION DATE DELIVERY MODE
04/19/2019 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):
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
Appeal2018-008601
Application 14/ 649,221
Technology Center 1600
Before ULRIKE W. JENKS, TIMOTHY G. MAJORS, and
MICHAEL A. VALEK, Administrative Patent Judges.
VALEK, Administrative Patent Judge.
DECISION ON APPEAL
Appellants submit this appeal 1 under 35 U.S.C. § 134 involving
claims to a dentifrice comprising zinc phosphate and arginine, which have
been rejected as obvious. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
STATEMENT OF THE CASE
Claims 1, 3-13, and 28 are on appeal, and can be found in the Claims
Appendix of the Appeal Brief. Claim 1 is the only independent claim and is
1 Appellants identify the real party in interest as Colgate-Palmolive
Company. Appeal Br. 2. Herein we refer to the Final Office Action mailed
October 27, 2017 ("Final Act."), Appeal Brief filed March 29, 2018 ("App.
Br."), Examiner's Answer mailed June 29, 2018 ("Ans."), and Reply Brief
filed August 29, 2018 ("Reply").
Appeal2018-008601
Application 14/649,221
representative of the claims on appeal. Claim 1 reads as follows:
1. A dentifrice comprising zinc phosphate and arginine in free
or orally acceptable salt form, wherein the zinc phosphate is
added to the dentifrice as a preformed salt in an amount of
0.05 to 5% by weight, and the arginine in free or orally
acceptable salt form is present in an amount of 0.5 to 10% by
weight.
App. Br. 8. Appellants do not argue dependent claims 3-13 and 28
separately so those claims stand or fall with claim 1. 37 C.F.R. § 41.37
( C )(1 )(iv).
Appellants seek review of Examiner's rejection of claims 1, 3-13, and
28 as obvious over Prencipe2 and Kohli. 3
The issue is: Does the preponderance of evidence of record support
Examiner's conclusion that the cited prior art renders obvious the claimed
compositions?
Findings of Fact
FF 1. Prencipe teaches "oral compositions for reducing one or more of
plaque, tartar, caries, dentinal sensitivity, malodor, and/or inflammation."
Prencipe, Abst. Prencipe teaches that these oral compositions may be
provided in a "dentifrice (including toothpastes, toothpowders, and
prophylaxis pastes)." Id. ,r 55. Prencipe teaches that these compositions are
formulated to have a "pH of about 6 to 10, or about 7 to 9." Prencipe ,r 56.
FF2. Prencipe teaches that its oral compositions comprise a "zinc salt" as
an active ingredient. Prencipe, Abst. Prencipe teaches that a variety of "zinc
2 Michael Prencipe et al., US 2007/0183989 Al, published Aug. 9, 2007
("Prencipe").
3 Rajnish Kohli et al., US 2009/0202455 Al, published Aug. 13, 2009
("Kohli").
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Application 14/649,221
salts," including "zinc phosphate," may be used as an active ingredient in its
compositions. Prencipe ,r 20.
FF3. Prencipe further teaches that its oral compositions may also include "a
nutrient such as a vitamin, mineral, anti-oxidant, and/or amino acid active
compound." Prencipe ,r 51; see also id. ( teaching that "[ n ]utritional
supplements" for its compositions include "amino acids").
FF4. Kohli teaches "oral care compositions" comprising "a salt of a basic
amino acid" such as "arginine." Kohli ,r,r 2, 7. Kohli explains that arginine
has "been proposed for use in oral care" because it is "believed to have
significant benefits in combating cavity formation and tooth sensitivity." Id.
Analysis
Examiner finds that Prencipe teaches all of the limitations of
Appellants' claims, except that it only discloses the addition of an "amino
acid active compound" generally as opposed to teaching arginine
specifically. Final Act. 3--4. Examiner determines that it would be obvious
to "combine the zine phosphate composition of Prencipe et al. with a basic
amino acid, e.g., arginine since '[a]rginine and other basic amino acids have
been proposed for use in oral care and are believed to have significant
benefits on combating cavity formation and tooth sensitivity,' as taught by
Kohli et al." Id. at 4.
Appellants argue that "[ n ]either reference, either alone or in
combination, discloses or suggests the addition of zinc phosphate to a
dentifrice as a preformed salt." App. Br. 5. Appellants acknowledge that
Prencipe mentions zinc phosphate as a potential zinc ion source, but contend
that it is only one of over twenty listed salts and there is no teaching in
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Application 14/649,221
Prencipe "of how to formulate an insoluble salt such as zinc phosphate in its
composition." Id. at 5---6. Thus, urge Appellants, one of skill in the art
would select a different zinc salt and, even if they did select zinc phosphate,
they would choose to form it in situ as opposed to "as a preformed salt as
required by the instant claims." Id. at 6. Finally, Appellants argue that there
would be "no reasonable expectation that using preformed zinc phosphate in
the Prencipe composition, even if combined with Kohli' s basic amino acid,
would result in an effective composition." Id. at 7.
We are not persuaded by Appellants' arguments and agree with
Examiner's statement of the rejection and responses to Appellants'
arguments in both the Answer and Final Action, which we adopt and
incorporate by reference. We provide the following additional comments to
Appellants' arguments.
We are not persuaded by Appellants' argument that the prior art does
not teach the addition of zinc phosphate as a preformed salt. Prencipe
specifically lists zinc phosphate as a "zinc salt" to be used as an active
ingredient in its oral compositions. FF2. The fact that Principe identifies
zinc phosphate in a list of about twenty other zinc salts does not make it any
less obvious than the other salts in that list. See Merck & Co., Inc. v.
Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (explaining that a
reference's disclosure of "a multitude of effective combinations does not
render any particular formulation less obvious"). Appellants argue that one
of skill would not choose zinc phosphate because the rest of Principe's
disclosure and its claims are directed to zinc citrate. See App Br. 5. "But 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
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Application 14/649,221
unpreferred embodiments, must be considered." Merck, 874 F.2d at 807
(quoting In re Lamberti, 545 F.2d 747, 750 (CCPA 1976)). Thus, even if its
authors preferred a different zinc salt, Principe still teaches the use of zinc
phosphate as a zinc ion source for a dentifrice composition.
We are also unpersuaded by Appellants' argument that Principe's
teachings are limited to the in situ formation of zinc salts. As explained
above, Principe identifies zinc phosphate as a "zinc salt" for inclusion as the
active ingredients in its compositions. FF2. The most natural reading of that
teaching is that zinc phosphate is added as a preformed zinc salt-not as
separate zinc and phosphate ions that form a salt only after they are
combined in the dentifrice, as Appellants urge. Indeed, the passage
Appellants rely on for their argument that Principe requires in situ zinc salt
formation merely says that the salt "can be formed" in that way. See App.
Br. 6 ( quoting Principe ,r 23). And the sentences in Principe immediately
preceding that passage refer to zinc citrate being added in various preformed
salt forms. See Principe ,r 23 (referring to the "zinc citrate agent" being
added in both hydrated and sodium zinc citrate salt forms).
We also determine that Examiner has articulated a sufficient rationale
for the successful combination of Principe and Kohli. Principe teaches
amino acids generally as nutrients that may be added to an oral composition.
FF3. Kohli teaches arginine specifically and provides an express rationale
for adding it to such compositions. FF4. We are not persuaded by
Appellants' argument that one of skill would not expect that zinc phosphate
could be successfully used in a dentifrice because it is known to be
insoluble. First, "[t]he reasonable expectation of success requirement for
obviousness does not necessitate an absolute certainty for success." Par
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Pharm., Inc. v. TWI Pharms., Inc., 773 F.3d 1186, 1198 (Fed. Cir. 2014); In
re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986) ("Obviousness
does not require absolute predictability."). Here, Principe's specific
teaching of zinc phosphate salt as a zinc ion source in a dentifrice
composition is itself sufficient to demonstrate at least a reasonable
expectation that it can be successfully used for that purpose.
Second, according to Appellants, zinc phosphate is soluble in water at
acidic or basic pH. See App. Br. 5 ("zinc phosphate is not soluble in water,
except in acid or strong alkali") ( emphasis altered from original). The
Specification states that "at basic pH" zinc phosphate "can dissolve
sufficiently" and that arginine is added to raise the pH of Appellants'
formulation to "greater than pH 8, e.g., to pH 8.5-1 O." Spec. ,r,r 6, 12(1.8).
Principe teaches formulations at a pH of about 6 to 10, i.e., a pH range that
overlaps with that taught in the Specification. FF 1. See In re Peterson, 315
F.3d 1325, 1329 (Fed. Cir. 2003) ("[W]e and our predecessor court have
consistently held that even a slight overlap in range establishes a prima facie
case of obviousness."). To the extent Appellants contend that they were the
first to recognize that zinc phosphate was sufficiently soluble under the basic
pH conditions taught in Principe, the recognition of that inherent property
cannot render the claimed compositions patentable. See Atlas Powder Co. v.
Ireco, Inc., 190 F.3d 1342, 1347 (Fed. Cir. 1999) ("[D]iscovery of a
previous unappreciated property of a prior art composition, or a scientific
explanation for the prior art's functioning, does not render the old
composition patentably new to the discoverer.").
For all these reasons, Appellants' arguments fail to persuade us that
Examiner erred in rejecting the claims. Accordingly, we affirm.
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SUMMARY
We affirm the rejection of claims 1, 3-13, and 28 under 35 U.S.C.
§ 103 over Principe and Kohli.
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
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