Ex Parte Siegel et al

Patent Trial and Appeal Board

Sep 24, 2013

11107060 (P.T.A.B. Sep. 24, 2013)

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.
11/107,060 04/15/2005 Phyllis Siegel 1050-7 6406
7590 09/25/2013
JOHN LEZDEY & ASSOCIATES
2401 West Bay Drive, Suite 118
Largo, FL 33770
EXAMINER
SIMMONS, CHRIS E
ART UNIT PAPER NUMBER
1629
MAIL DATE DELIVERY MODE
09/25/2013 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte PHYLLIS SIEGEL and BAKUL BHATT
__________

Appeal 2012-001450
Application 11/107,060
Technology Center 1600
__________

Before ERIC GRIMES, LORA M. GREEN, and
SHERIDAN K. SNEDDEN, Administrative Patent Judges.

GREEN, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal1 under 35 U.S.C. § 134 from the
Examiner’s rejection of claims 9 and 11-19. We have jurisdiction under 35
U.S.C. § 6(b).
We affirm.

1 The Real Party in Interest is Biomedical Development Corporation (Appeal
Br. 1).
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STATEMENT OF THE CASE
The Specification discloses “anti-staining anti-plaque compositions
which are effective antimicrobials and are effective in inhibiting and
reducing plaque in vivo without staining teeth” (Spec. 2). The Specification
discloses that the “[a]nti-staining, anti-plaque and anti-gingivitis
compositions can be employed in mouth-wash or oral rinse as well as in
tooth cleaning preparation” (id. at 2-3).
Claims 9 and 14 are representative and read as follows:
9. In an aqueous mouthwash for use in oral hygiene, the improvement
which comprises that said mouthwash contains:
A. an effective amount of a monobasic iodide salt to provide at least
30 ppm of available iodine to said composition;
B. an organic acid having up to eight carbon atoms;
C. an oxidizing agent,
D. a buffer, and
E. water
said mouthwash has a pH of 2.3 to 6.0 whereby biofilm on teeth is
reduced and gingivitis is treated.

14. In a dentifrice for reducing biofilm on teeth or treating gingivitis,
the improvement which comprises that said dentifrice contains:
A. an effective amount of a monobasic iodide salt to provide at least
30 ppm of available iodine to said composition;
B. an organic acid having up to eight carbon atoms;
C. an oxidizing agent, and
D. a buffer.

The claims stand rejected as follows:
• Claims 9, 11-14, 17, and 18 under 35 U.S.C. § 102(b) in view of
Siegel2 (Ans. 4);

2 Siegel et al., US 2003/0079758 A1, May 1, 2003.
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• Claims 9, 11-15, 17, and 18 under 35 U.S.C. § 102(b) in view of
Veach3 (Ans. 5);
• Claim 16 under 35 U.S.C. § 103 in view of Veach and Wootton4
(Ans. 5);and
• Claim 19 under 35 U.S.C. § 103 in view of Veach and Walters5
(Ans. 6).
I.
Issue
The Examiner has rejected claims 9, 11-14, 17, and 18 under 35
U.S.C. § 102(b) as anticipated by Siegel.
The Examiner finds that Siegel discloses “an aqueous composition
comprising 0.25g sodium iodide, 1.6g citric acid, 0.8g sodium persulfate (an
oxidizing agent), and 0.03g sodium percarbonate (naturally forms the
carbonate buffer when in aqueous solution) in 1 liter of water” (Ans. 5). The
Examiner finds that Siegel’s Tables 19 and 20 show “examples of the
compositions having a pH value of 2.5 … [and Siegel] further teaches that
the composition is used in dental instrumentation air/water guns … which
are known to dispense water into the mouth for washing/cleaning” (id.).
Appellants contend that Siegel does not anticipate independent claims
9 and 14 because it “does not relate to oral hygiene” (Appeal Br. 3).
Appellants argue that Siegel “relates to compositions for treating air/water
guns for dentistry and medical lines in order to decontaminate and sterilize”

3 Veach et al., US 2003/0211173 A1, Nov. 13, 2003.
4 Wootton US 3,860,707, Jan. 14, 1975.
5 Walters US 2005/0196510, Sept. 8, 2005.
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the lines (id.). Appellants argue that “the preamble to the claims should be
given weight because it is more than a statement of intended use since it
gives ‘life and meaning’ to the recitation in the body of the claims” (id.).
The issues presented are: Does the evidence of record support the
Examiner’s finding that the decontamination composition of Siegel
anticipates the aqueous mouthwash composition of claim 9 and the
dentifrice composition of claim 14?
Findings of Fact
FF1. The Specification discloses that the “oral preparation may be a
liquid, such as a mouthwash. Mouthwash formulations typically contain
water and 0-15% by weight of an aqueous lower aliphatic alcohol, such as
ethanol, n-propyl alcohol or isopropyl alcohol. Preferably, the mouthwashes
are non-alcoholic” (Spec. 7).
FF2. The Specification discloses that “the oral preparation may be a
dentifrice, dental cream or powder. In such cases, an effective amount i.e.,
0.025 to about 10% by weight may be incorporated into a solid, inert carrier,
for example, selective polishing agents, and binding agents” (id.).
FF3. Siegel discloses a “composition … for decontaminating small
diameter water lines for medical equipment which effectively dislodges and
eliminates a biofilm and at the same time destroy[s] the microorganism flora
in the fresh water and in the dislodged biofilm” (Siegel, abstract).
FF4. Siegel discloses “a composition which, for each liter of water,
includes approximately 0.25 g sodium iodide, 1.6 g citric acid, 0.8 g sodium
persulfate, and 0.03 g sodium percarbonate” (id. at 3, ¶ 0028).
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FF5. Siegel discloses the above cited composition “is referred to as
CIPP225” (id.).
FF6. Siegel discloses that the CIPP225 composition “not only
prevented, but removed existing biofilm from medical unit water lines” (id.).
FF7. Siegel discloses that the CIPP225 composition contained
available iodine in an amount of 180-184 ppm and had a pH of 2.5 (id. at 13-
14, ¶¶ 0143-0144).
FF8. Siegel’s claim 16 discloses a process for removing biofilm as
follows:
16. A process for removing biofilm from a medical unit
water line, the process comprising
providing a medical unit water line, the water line being
contaminated with a naturally acquired biofilm; and
filling the medical unit water line with a solution
containing at least approximately 0.25 g sodium iodide, 1.6 g
citric acid, 0.8 g sodium persulfate, and 0.03 g sodium
percarbonate dissolved in 1 liter of water; and
allowing the solution to remain in the water line for a
period sufficient to remove the biofilm; and
flushing the medical unit water line with water; and
wherein the solution contains no horse radish peroxidase.

(Id. at 14, claim 16.)
Principles of Law
When a patentee “uses the claim preamble to recite structural
limitations of his claimed invention, the PTO and courts give effect to that
usage.” Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997). However, when
a patentee “defines a structurally complete invention in the claim body and
uses the preamble only to state a purpose or intended use for the invention,
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the preamble is not a claim limitation.” Id.; see Pitney Bowes, Inc. v.
Hewlett–Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999) (explaining that
if “the body of the claim fully and intrinsically sets forth the complete
invention, including all of its limitations, and the preamble offers no distinct
definition of any of the claimed invention’s limitations, but rather merely
states, for example, the purpose or intended use of the invention, then the
preamble is of no significance to claim construction because it cannot be
said to constitute or explain a claim limitation”). The question of whether to
“treat a preamble as a limitation is a determination ‘resolved only on review
of the entire … patent to gain an understanding of what the inventors
actually invented and intended to encompass by the claim.’ ” Catalina Mktg.
Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002),
quoting Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868 F.2d
1251, 1257 (Fed. Cir. 1989).
Analysis
Independent claims 9 and 14 are drafted in Jepson format and the
preamble for each claim is as follows: “In an aqueous mouthwash for use in
oral hygiene, the improvement which comprises that said mouthwash
contains:” (claim 9) and “In a dentifrice for reducing biofilm on teeth or
treating gingivitis, the improvement which comprises that said dentifrice
contains” (claim 14). The body of both claims requires that the composition
comprises “A. an effective amount of a monobasic iodide salt to provide at
least 30 ppm of available iodine to said composition; B. an organic acid
having up to eight carbon atoms; C. an oxidizing agent, [and] D. a buffer.”
Claim 9 additionally requires that the mouthwash composition comprises “E.
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water” and that “said mouthwash has a pH of 2.3 to 6.0 whereby biofilm on
teeth is reduced and gingivitis is treated.”
Siegel discloses a composition for decontaminating small diameter
water lines for medical equipment. Siegel discloses that one embodiment of
the composition comprises water, sodium iodide, citric acid, sodium
persulfate, and sodium percarbonate. Siegel discloses that this composition
has a pH of 2.5. Siegel discloses that the composition dislodges and
eliminates a biofilm in the water line and destroys the microorganism flora
in the fresh water and in the biofilm. The Examiner asserts, and Appellants
do not dispute, that the Siegel composition has components A-E of claim 9
and components A-D of claim 14.
Appellants argue that Siegel does not anticipate claim 9 or claim 14
because Siegel “does not relate to oral hygiene … [but] relates to
compositions for treating air/water guns for dentistry and medical lines in
order to decontaminate and sterilize” the water lines (Appeal Br. 3).
Appellants argue that “the preamble to the claims should be given weight
because it is more than a statement of intended use since it gives ‘life and
meaning’ to the recitation in the body of the claims” (id.).
This argument is not persuasive. Claim 9 is directed to a mouthwash
and claim 14 is directed to a dentifrice. We therefore look to the
Specification to determine whether the recitation of “mouthwash” in claim 9
imparts additional limitations to the claim. The Specification discloses that
mouthwash formulations typically contain water and 0-15% by weight of an
aqueous lower aliphatic alcohol, but that preferred mouthwashes are non-
alcoholic. Thus, the recitation of mouthwash in the preamble of claim 9
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does not impart any further compositional requirements. To the extent
Appellants are arguing that the statement of intended use of the composition,
i.e. as a mouthwash, should be given weight, this argument is not persuasive.
In accord with Rowe v. Dror, when a structurally complete invention is
defined in the claim body and the preamble only states a purpose or intended
use for the invention, the preamble is not a claim limitation.
Applying the above reasoning to claim 14, we look to the
Specification to determine whether the recitation of “dentifrice” in claim 14
imparts additional limitations to the claim. The Specification discloses that
“the oral preparation may be a dentifrice, dental cream or powder. In such
cases, an effective amount i.e., 0.025 to about 10% by weight may be
incorporated into a solid, inert carrier, for example, selective polishing
agents, and binding agents.” Thus, the Specification does not provide a
limiting definition for a dentifrice. Since the Specification does not assign
or suggest a particular definition of “dentifrice,” it is appropriate to consult a
dictionary for guidance in determining the ordinary and customary meaning
of the claim term as viewed by a person of ordinary skill in the art. See
Comaper Corp. v. Antec, Inc., 596 F.3d 1343, 1348 (Fed. Cir. 2010). The
ordinary and customary meaning of the word “dentifrice” is “a powder,
paste, or liquid used in cleaning the teeth.”6 Thus, one of skill in the art
would understand that a dentifrice could be a liquid composition, as
disclosed in Siegel. Appellants’ argument that the statement of intended use

6 Webster’s Third New International Dictionary, Unabridged, Merriam-
Webster, Incorporated, © 1993, accessed at http://www.merriam-
webster.com/dictionary/dentifrice?show=0&t=1379593081 (last visited:
Sept. 2, 2013).
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of the composition, i.e. as a dentifrice, should be given weight is not
persuasive for the reasons discussed above.
Appellants argue that Siegel does not disclose “treating teeth to reduce
biofilm or gingivitis especially by brushing” (Appeal Br. 3).
To the extent Appellants are arguing that the language “whereby
biofilm on teeth is reduced and gingivitis is treated” in claim 9 and a
“dentifrice for reducing biofilm on teeth or treating gingivitis” in claim 14
are functional limitations that would not be met by the Siegel composition,
this argument is not persuasive. Siegel discloses a composition that is
effective for reducing biofilm in water lines, and the Siegel composition is
the same as the instantly claimed compositions. Thus, one of skill in the art
would expect that the compositions disclosed in Siegel would be effective in
reducing biofilm on teeth and reducing gingivitis.
Appellants argue Siegel’s composition is “used in diluted form so that
the pH and the molecular iodine of the present compositions are not found”
(Appeal Br. 3).
This argument is not persuasive. Siegel discloses a composition
referred to CIPP225 which contains sodium iodide (0.25 grams per liter) and
which contains available iodine in an amount of 180-184 ppm and had a pH
of 2.5. Siegel also discloses in claim 16 that a composition having the same
components as CIPP225 is used to treat water lines to remove biofilm.
Thus, Appellants’ arguments that Siegel’s composition is only used in
diluted form is not persuasive.
Appellants argue that “applicants’ composition is … in the form of a
gel or paste” (Appeal Br. 3).
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This argument is not persuasive because none of the claims rejected as
being anticipated by Siegel are directed to a gel or paste composition.
Thus, we affirm the rejection of independent claims 9 and 14 as
anticipated by Siegel. Dependent 11-13, 17 and 18 were not argued
separately and therefore fall with the independent claims. 37 C.F.R.
§ 41.37(c)(1)(vii).
Conclusion of Law
The evidence of record supports the Examiner’s finding that the
decontamination composition of Siegel anticipates the aqueous mouthwash
composition of claim 9 and the dentifrice composition of claim 14.
II.
Issue
The Examiner has rejected claims 9, 11-15, 17, and 187 under 35
U.S.C. § 102(b) as anticipated by Veach.
The Examiner finds that Veach “teaches an aqueous gel comprising
sodium iodide, citric acid, an alkaline salt of hydrogen phosphate, sodium
perborate or percarbonate, water and a gelling agent, said gel having a pH of
3.5 to 5.5 and at least 30 ppm of available iodine” (Ans. 5). The Examiner
finds that the “antimicrobial lubricating composition can be used in
connection with mucosal areas … [and the] composition is reasonably a

7 The Examiner’s statement of the rejection on page 5 of the Examiner’s
Answer includes claim 10. The Examiner states, however, that claims 9 and
11-19 are “rejected and pending in the application” (Ans. 3). We therefore
understand claim 10 to be withdrawn from consideration, as indicated on the
cover sheet of the Office action mailed Aug. 31, 2010.
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mouthwash when the end-user applies the composition to the oral cavity”
(id.).
Appellants contend that Veach does not anticipate claims 9 and 14
because the claims relate to “a composition in the form of an aqueous
mouthwash, a gel or a paste for use in oral hygiene whereby biofilm on teeth
is reduced and gingivitis is treated,” and Veach discloses a vaginal gel
(Appeal Br. 4).
The issues presented are: Does the evidence of record support the
Examiner’s finding that the Veach compositions anticipate the aqueous
mouthwash composition and the dentifrice composition of claims 9 and 14,
respectively?
Additional Findings of Fact
FF9. Veach discloses “acidic antimicrobial composition[s] … [that]
may be presented in liquid [form] and [in] forms normally used for topical
application” (Veach 2, ¶ 0019).
FF10. Veach discloses that the compositions are “used in the form of
aqueous, aqueous-alcoholic solutions, or in the form of gels, or foams” (id.
at 2, ¶ 0020).
FF11. Veach discloses that the antimicrobial composition “comprises
an aqueous acidic solution containing … monobasic iodide salt to provide …
at least 125 ppm of available iodine … an organic acid … at least one
oxidizing agent and an inorganic phosphate buffer” (id. at 2, ¶ 0022).
FF12. Veach discloses that the “composition has a pH of 3.2 to 5.5”
(id.).
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FF13. Veach discloses the use of the antimicrobial compositions “in
liquid or gel form for topical use in mucosal areas” (Veach 1, ¶ 0012).
FF14. Veach discloses that the composition “possesses an
antimicrobial activity against a variety of microorganisms responsible for
vaginitis” (id.).
FF15. Veach discloses that an exemplary liquid composition showed
activity against Candida albicans and other organisms (id. at 4, ¶ 0058).
FF16. Veach discloses that the compositions of the invention can be
used to treat vaginitis and that the compositions for such treatment may be in
liquid or gel form (id. at 5, claims 15-17.)
Analysis
As discussed above, independent claims 9 and 14 are composition
claims that each require a monobasic iodide salt to provide at least 30 ppm
of available iodine to the composition, an organic acid having up to eight
carbon atoms, an oxidizing agent, and a buffer. Claim 9 additionally
requires that the composition comprises water and has a pH of 2.3 to 6.0.
Veach discloses an aqueous antimicrobial solution containing an
effective amount of a monobasic iodide salt to provide at least 125 ppm of
available iodine, an organic acid, an oxidizing agent and an inorganic
phosphate buffer, such that the composition has a pH of 3.2 to 5.5.
The Examiner asserts, and Appellants do not dispute, that the Veach
composition contains the components listed in the body of claims 9 and 14.
Appellants argue that a “limitation found in the claim[s] is that the
composition is for use in oral hygiene and in the form of an aqueous
mouthwash, [or] a gel [dentifrice]” (Appeal Br. 4).
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This argument is not persuasive. Veach discloses that the
antimicrobial composition may be in the form of a gel or an aqueous
solution. Further, as discussed above, we have determined that the recitation
in claim 1 that the composition is a mouthwash and the recitation in claim 14
that the composition is a dentifrice are statements of intended use that do not
impart additional limitations to the claimed compositions.
Appellants argue that the Veach composition “does not inherently
treat gingivitis and biofilm” (Appeal Br. 4).
This argument is not persuasive. Since the claimed compositions are
the same as the Veach compositions, which are disclosed as having
antimicrobial effect, one of skill in the art would expect that the Veach
compositions would also be useful to reduce biofilm and treat gingivitis.
Appellants argue that Veach discloses “a lubricating composition …
for use with rectal thermometers, condoms, etc. No one would consider
brushing their teeth with a vaginal gel or … a lubricant for rectal
thermometers” (Appeal Br. 4). Appellants also cite a declaration8 including
survey results indicating that “no one was willing to try a vaginal gel to
brush their teeth” (id. at 5, Reply Br. 1).
This argument is not persuasive. It is well settled that the recitation of
a new intended use for an old product does not make a claim to that old
product patentable. See In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990)
(“The discovery of a new property or use of a previously known

8 Declaration of John Lezdey under 37 C.F.R. § 1.132, originally filed May
17, 2010, (Appeal Br. 12-13).

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composition, even when that property and use are unobvious from prior art,
cannot impart patentability to claims to the known composition.”). Thus, the
fact that the Veach composition has not been previously recognized for use
as mouthwash or dentifrice does not impart patentability to the old
composition.
Thus, we affirm the rejection of independent claims 9 and 14 as
anticipated by Veach. Dependent 11-13, 15, 17 and 18 were not argued
separately and therefore fall with the independent claims. 37 C.F.R.
§ 41.37(c)(1)(iv).
Conclusion of Law
The evidence of record supports the Examiner’s finding that the
compositions of Veach anticipate the aqueous mouthwash composition of
claim 9 and the dentifrice composition of claim 14.
III.
Issue
The Examiner has rejected claim 16 under 35 U.S.C. § 103 as obvious
in view of Veach and Wootton.
Claim 16 reads as follows: The dentifrice of claim 14 which is a paste.
The Examiner relies on Veach as discussed above, and the Examiner
finds that Veach “does not expressly teach a paste formulation” (Ans. 5).
The Examiner finds that Wootton discloses a “paste-based formulation for
mucosal administration of active ingredients” (id. at 6). The Examiner finds
that paste formulations have a “good and long-lasting adhesiveness” (id.).
The Examiner finds that an “increase in viscosity brought about by the
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invention is retained after application to the mucosa and even after approach
of water” (id.). The Examiner concludes that it “would have been obvious to
make the [Veach] composition … in the formulation of a paste as disclosed
in the secondary reference … [in order] to administer a composition that has
good and long-lasting adhesiveness which maintains its viscosity, even after
approach of water” (id.).
Appellants contend that neither of the cited references would lead one
of skill in the art to a dentifrice (Appeal Br. 5). Appellants argue that
Wootton discloses pastes that can be used as vaginal tablets and
suppositories, but vaginal tablets and suppositories “are not commonly used
to form a dentifrice composition” (id.). Appellants contend that the
Examiner erred in finding that one of skill in the art would have been
motivated to modify Veach in view of Wootton to arrive at a composition
with long lasting adhesiveness because “no one wants a tooth paste that
cannot be washed out” (id.)
The issue presented is: Does the evidence of record support the
Examiner’s conclusion that the combination of Veach and Wootton would
have made obvious the dentifrice paste composition of claim 16?
Additional Findings of Fact
FF17. Wootton discloses a “method for the treatment of women
suffering from vaginitis” (Wootton col. 1, ll. 3-4).
FF18. Wootton discloses that “it has now been found that vaginitis
can be cured by the intravaginal administration of lactulose during only a
few days” (id. at col. 1, ll. 22-24).
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FF19. Wootton discloses that lactulose may be administered, among
other ways, as “formed compositions such as capsules, for example gelatine
capsules or intravaginal tampons loaded with lactulose, whether or not to be
wetted with water before instillation … Also pastes and formed
compositions, such as suppositories and vaginal tablets may be used” (id. at
col. 2, ll. 3-9).
Analysis
Claim 16 recites the “dentifrice of claim 14 which is a paste.” As
discussed above, Veach discloses compositions that meet the limitations of
claim 14. Veach discloses that these compositions may be in the form of
liquids or gels, among other things, and possess an antimicrobial activity
against a variety of microorganisms responsible for vaginitis. Veach also
discloses vaginal application of the compositions. Wootton discloses that
lactulose may be used to treat vaginitis. Wootton discloses lactulose
compositions for vaginal administration that may be in paste form. It would
have been obvious for one of skill in the art to form the Veach composition
into a paste form that also contains lactulose in order to achieve the benefit
of both the Veach composition and lactulose in treating vaginitis. It would
have been obvious to use the paste form since Wootton discloses the paste
form as one mode of administration for lactulose.
Appellants contend that neither of the cited references would lead one
of skill in the art to a dentifrice (Appeal Br. 5). Appellants argue that
Wootton discloses pastes that can be used as vaginal tablets and
suppositories, but vaginal tablets and suppositories “are not commonly used
to form a dentifrice composition” (id.).
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This argument is not persuasive because, as discussed above, the
recognition of a new use of an old composition does not render the old
composition to be again patentable.
Appellants also contend that the Examiner erred in finding that one of
skill in the art would have been motivated to modify Veach in view of
Wootton to arrive at a composition with long lasting adhesiveness because
“no one wants a tooth paste that cannot be washed out” (id.)
This argument is not persuasive. In the discussion of adhesiveness,
the Examiner appears to be discussing properties of pastes generally, rather
any particular extreme adhesiveness of the Wootton composition. We note
that the use of dentifrices in paste form is well known in the art.
Conclusion of Law
The evidence of record supports the Examiner’s conclusion that the
combination of Veach and Wootton would have made obvious the dentifrice
paste composition of claim 16.
IV.
Issue
The Examiner has rejected claim 19 under 35 U.S.C. § 103 as obvious
in view of Veach and Walters.
Claim 19 is as follows:
19. In a composition for use in oral hygiene for reducing biofilm on
teeth and treating gingivitis, the improvement in which said composition
comprises;
A. an effective amount of sodium iodide to provide at least 30 ppm of
iodine;
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B. an effective amount of citric acid and sodium perborate to cause
the release of molecular free iodine;
C. a buffer comprising calcium pyrophosphate, and
D. water.

The Examiner relies on Veach as discussed above. The Examiner
finds that Veach “additionally discloses the use of an inorganic phosphate
buffer” (Ans. 6). The Examiner finds that Veach “does not expressly teach
the buffer to be calcium pyrophosphate” (id.). The Examiner finds that
Walters “discloses that tricalcium phosphate (a calcium pyrophosphate) is a
known buffering agent” (id. at 7). The Examiner concludes that it “would
have been obvious to use [Walters’] tricalcium phosphate … as the inorganic
buffering agent in the primary reference … [because] tricalcium phosphate
was known to be suitable for use as an inorganic phosphate buffer” (id.).
Appellants argue that Walters “does not teach a buffer for a dentifrice
… and combination with the [Veach] lubrication composition … would not
suggest its use in a dentifrice” (Appeal Br. 6).
This argument is not persuasive. Walters discloses a “high protein
beverage” (Walters, abstract). Although Appellants are correct that neither
Veach nor Walters discloses a dentifrice, this argument is not persuasive
because, as discussed above, finding a new use for an old composition does
not render the old composition patentable.
Appellants also argue that “there is no mention of a pH [in Walters]”
(Appeal Br. 6). Appellants also argue a “tricalcium phosphate additive
would not result in an acid pH” (id.).
This argument is not persuasive. We note that claim 19 does not
require any particular pH. To the extent Appellants are arguing that use of
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19
Walters’ tricalcium phosphate buffer in the Veach composition would not
achieve the pH suggested by Veach, this argument is not persuasive. Veach
discloses a composition that comprises, among other things, an effective
amount of an organic acid and an inorganic phosphate buffer and that has a
pH of 3.2 to 5.5. Appellants’ argument is not persuasive because Veach
discloses the use of inorganic phosphate buffers generally, and Appellants
have not pointed to any evidence to suggest that Walters’ inorganic
phosphate in conjunction with the organic acid of Veach could not achieve
the desired pH. Thus, we affirm the rejection of claim 19 as being obvious
in view of Walters and Veach.
SUMMARY
We affirm the rejection of claims 9, 11-15, 17, and 18 under 35
U.S.C. § 102(b). We also affirm the rejection of claims 16 and 19 under 35
U.S.C. § 103(a).

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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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