Joziak, Marilou et al.

Patent Trials and Appeals Board

Aug 14, 2019

12053222 - (D) (P.T.A.B. Aug. 14, 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.
12/053,222 03/21/2008 Marilou Joziak 8397-00-US-01-OC 3810
23909 7590 08/14/2019
COLGATE-PALMOLIVE COMPANY
909 RIVER ROAD
PISCATAWAY, NJ 08855
EXAMINER
ROBERTS, LEZAH
ART UNIT PAPER NUMBER
1612
NOTIFICATION DATE DELIVERY MODE
08/14/2019 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 MARILOU JOZIAK and JASON NESTA1
__________

Appeal 12/053,222
Application 2019-003113
Technology Center 1600
__________

Before ERIC B. GRIMES, RICHARD M. LEBOVITZ, and
RICHARD J. SMITH, Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a
dentifrice composition, which have been rejected as obvious. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
STATEMENT OF THE CASE
“Foaming agents containing anionic surfactants, such as sodium lauryl
sulfate . . . have traditionally been used in consumer care products, oral
products, e.g., dentifrices, due to their low cost and ability to foam.” Spec. ¶ 1.
However, “anionic surfactants tend to irritate the oral cavity.” Id. “Such

1 Appellants identify the Real Party in Interest as Colgate-Palmolive
Company. Appeal Br. 2.
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irritation is especially undesirable, especially in people suffering from, or
predisposed to[,] various conditions, such as xerostomia (dry mouth).” Id.
The Specification discloses “a foaming agent comprising a non-ionic
surfactant, a zwitterionic surfactant, and [] free of anionic surfactants.” Id. ¶ 4.
Preferred zwitterionic surfactants include cocoamidopropyl betaine. Id. ¶ 13.
Preferred non-ionic surfactants include poly(oxyethylene)-poly(oxypropylene)
copolymers, known commercially as poloxamers; a “preferred poloxamer is
Poloxamer 407, sold under the trade name PLURONIC F127.” Id. ¶ 14.
“The oral care compositions . . . preferably contain fluoride ions.” Id.
¶ 17. “Antibacterial agents can be used if reduction of microorganisms is
desired, and can include known antibacterial agents used in dentifrice
formulations such as, e.g., benzoic acid, sodium benzoate, . . . cetylpyridinium
chloride,” etc. Id. ¶ 26.
Claims 9–11 and 14–17 are on appeal. Claim 17 is illustrative and
reads as follows:
17. A dentifrice composition for use in the treatment and/or
alleviation of xerostomia, comprising:
about 0.2% to about 5% of cocoamidopropyl betaine, and
about 0.5% to about 10% of a poly(oxyethylene)-
poly(oxypropylene) copolymer,
said dentifrice composition being free of anionic
surfactants,
said dentifrice composition further comprising an
antibacterially effective amount of cetylpyridinium chloride, an
antibacterially effective amount of sodium benzoate, and a
fluoride ion source sufficient to provide about 5000 ppm
fluoride ions, wherein the fluoride ion source is sodium
fluoride.

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The claims stand rejected as follows:
Claims 9–11 and 14–17 under 35 U.S.C. § 103(a) as obvious based on
Boyd2 and Morgan3 (Ans. 3) and
Claims 9–11 and 14–17 under 35 U.S.C. § 103(a) as obvious based on
Szeles4 and Morgan (Ans. 5).
I
The Examiner has rejected all of the claims on appeal as obvious
based on Boyd and Morgan. The Examiner finds that Boyd discloses a
toothpaste that includes a nonionic surfactant, such as a poly(oxyethylene)-
poly(oxypropylene) copolymer, and a zwitterionic surfactant, such as
cocoamidopropyl betaine, in a total amount of 0.1–5% of the composition.
Ans. 3. “The reference does not disclose the use of anionic surfactants.” Id.
The Examiner also finds that Boyd discloses a fluoride ion source,
preferably sodium fluoride, providing up to 5000 ppm fluoride ions, and an
antibacterial agent. Id. at 3–4.
The Examiner finds that Boyd “does not disclose using
cetylpyridinium chloride in the compositions.” Id. at 4. However, the
Examiner finds that Morgan discloses an antiplaque oral care composition
comprising an antibacterial agent and “cetylpyridinium chloride as a
stabilizer and a component that enhances anti-plaque efficacy.” Id. The
Examiner finds that Morgan also teaches that “[s]urfactants that are

2 US 2004/0258631 A1, published Dec. 23, 2004.
3 US 7,220,404 B2, issued May 22, 2007.
4 US 2003/0211053 A1, published Nov. 13, 2003.
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compatible with enzymes may also be used,” including Poloxamer 407 and
cocoamidopropyl betaine, in amounts of 2–10% by weight. Id.
The Examiner concludes that it would have been obvious “to have
incorporated cetylpyridinium chloride or the combination comprising
cetylpyridinium chloride (CPC, reducing agent and enzyme) in the
compositions of Boyd motivated by the desire to make a third composition
used for the very same purpose, to treat plaque.” Id. at 5. The Examiner also
concludes that the amount of surfactants in Boyd’s composition is a result-
effective variable that would have been obvious to optimize. Id.
Appellants argue that “the relevant question” in this appeal “is
whether it would be obvious to add an antibacterially effective amount of
sodium benzoate into Boyd’s antiplaque oral composition.” Appeal Br. 5–6.
Appellants argue that Morgan would not have prompted a skilled artisan to
include sodium benzoate in Boyd’s composition. Id. at 6–7.
In response to Appellants’ argument on this point, the Examiner notes
that, “although Boyd does not disclose sodium benzoate, it disclose[s]
preservatives and Morgan discloses sodium benzoate as a preservative.”
Ans. 9. The Examiner concludes that “[t]herefore it would have been
obvious to have added a preservative such as sodium benzoate in the
compositions of Morgan.” Id.
We agree with the Examiner that the composition of claim 17 would
have been obvious based on Boyd and Morgan. Boyd discloses a dentifrice
composition comprising an antibacterial arginine-derived compound. Boyd
¶ 10. Boyd states that “[s]urfactants useful in the practice of the present
invention include nonionic and zwitterionic surfactants.” Id. ¶ 30. Boyd does
not identify anionic surfactants as useful in its invention. See id. Boyd states
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that suitable nonionic surfactants include poly(oxyethylene)-
poly(oxypropylene) copolymers and suitable zwitterionic surfactants include
cocoamidopropyl betaine. Id. ¶¶ 30–31. The surfactants are used in a range
of about 0.1–5% by weight. Id. ¶ 32.
Boyd discloses that its composition “may also contain a source of
fluoride ions . . . in amount sufficient to supply about 25 ppm to 5,000 ppm
of fluoride ions. . . . Sodium fluoride is preferred.” Id. ¶ 37. Boyd also
discloses that “[v]arious other materials may be incorporated in the
dentifrice compositions of [its] invention, including desensitizers . . . ;
whitening agents; preservatives;” etc. Id. ¶ 46.
Morgan discloses that “cetyl pyridinium chloride and a reducing agent
can provide enhanced stability and antiplaque efficacy in enzyme containing
oral compositions.” Morgan 2:11–13. “The enzymes useful in the practice of
[Morgan’s] invention include carbohydrases such as glucoamylase and
enzymes extracted from natural fruit products such as proteases.” Id. at
2:26–29. Morgan discloses that its composition comprises the same types of
surfactants, in the same amounts, as Boyd’s composition, and also comprises
the same amount of sodium fluoride. Id. at 5:30 to 6:4.
Morgan also discloses that “[v]arious other materials may be
incorporated in the oral compositions of [its] invention, including
desensitizers . . . ; whitening agents . . . ; preservatives;” etc. Id. at 6:65 to
7:3. Morgan provides working examples in which “the sugar level and
viscosity methods were used to compare the effects of cetyl pyridinium
chloride, the reducing agents ammonium sulfate and potassium stannate and
preservative agents sodium benzoate, and parabens on cellulase activity.” Id.
at 9:64 to 10:1 (emphasis added).
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It would have been obvious to modify Boyd’s dentifrice composition
by adding an enzyme (such as glucoamylase or a protease), cetyl pyridinium
chloride, and a reducing agent because Morgan discloses that this
combination enhances stability and antiplaque efficacy in oral compositions.
It would also have been obvious to modify the composition to include
sodium benzoate, because Boyd expressly suggests incorporating
preservatives in its composition, and Morgan uses sodium benzoate as a
preservative in its exemplary compositions. Thus, a skilled artisan would
have recognized that sodium benzoate is a suitable preservative for use in
oral compositions.
In addition, while Boyd does not disclose the specific amounts of
surfactants recited in claim 17, it suggests both of the recited surfactants and
suggests a total amount of about 0.1–5% by weight, which includes the
amounts recited in claim 17. “[W]here the general conditions of a claim are
disclosed in the prior art, it is not inventive to discover the optimum or
workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456
(CCPA 1955).
Appellants argue that “Morgan discloses two compositions
comprising sodium benzoate (Compositions B and D in Table I)” but only
“for the purpose of comparison to [inventive] Composition A, and does not
teach or suggest that sodium benzoate would be compatible with enzymes in
an oral care composition.” Appeal Br. 6. Appellants argue that “Morgan’s
data show that the addition of sodium benzoate into a composition
comprising an enzyme has an unwanted effect on cellulase activity.” Id.
This argument is not persuasive. Morgan states that its results showed
that sodium benzoate is not as effective as the combination of a reducing
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agent (potassium stannate) and cetyl pyridinium chloride in delaying—i.e.,
inhibiting—cellulase activity. Morgan 10:17–22. Cellulase is a contaminant.
Id. at 1:46–51. Morgan does not describe its results as showing that sodium
benzoate had any effect on the desired glucoamylase or protease activities in
its compositions. In fact, Morgan shows that its Composition D, comprising
enzymes (papain and glucoamylase), cetyl pyridinium chloride, and sodium
benzoate, reduced bacteria more effectively than “a commercial dentifrice
which contained cetyl pyridinium chloride but no enzymes.” Id. at 10:35–41,
52–55. The increased effectiveness of the enzyme-containing composition is
evidence that sodium benzoate did not inhibit the desired glucoamylase or
protease activities.
Appellants also argue that “Morgan shows that Compositions B and D
containing sodium benzoate are less effective in delaying cellulase activity
. . . than Composition A, which contains EDTA as a preservative (Morgan,
column 9, lines 17-19). Thus, one of skill in the art would be at most
motivated to add EDTA as a preservative.” Appeal Br. 7.
This argument is also unpersuasive. Morgan discloses using both
EDTA and sodium benzoate as preservatives in its exemplary compositions.
See Morgan 9:18 (“a preservative (EDTA)”) and 9:67 to 10:1 (“preservative
agent[] sodium benzoate”). Thus, based on Boyd’s express suggestion to
include preservatives in its composition, it would have been obvious to use
either EDTA or sodium benzoate, or both, in Boyd’s composition.
We affirm the rejection of claim 17 under 35 U.S.C. § 103(a) based on
Boyd and Morgan. Claims 9–11 and 14–16 have not been argued separately
and therefore fall with claim 17. 37 C.F.R. § 41.37(c)(1)(iv).
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II
The Examiner rejected all of the claims on appeal as obvious based on
Szeles and Morgan. The Examiner finds that Szeles discloses antibacterial
dentifrice compositions comprising a cationic anti-bacterial compound such
as cetylpyridinium chloride and 2–10% by weight surfactants, where
preferred surfactants include poloxamer 407 and cocoamidopropyl betaine.
Ans. 5–6. The Examiner finds that Szeles’ composition also includes a
fluoride ion source, preferably sodium fluoride, providing up to 5000 ppm
fluoride ions, and can include other optional ingredients. Id. at 6.
The Examiner finds that Szeles does not disclose sodium benzoate as
a component of its dentifrice, but Morgan discloses an antiplaque oral care
composition comprising cetylpyridinium chloride and surfactants such as
Poloxamer 407 and cocoamidopropyl betaine. Id. “The compositions also
comprise preservatives including sodium benzoate (Examples).” Id. at 7.
The Examiner concludes that it would have been obvious “to have used
sodium benzoate in the compositions of Szeles et al. because is a suitable
preservative[] for compositions comprising cetylpyridinium chloride.” Id.
We agree with the Examiner that the composition of claim 17 would
have been obvious based on Szeles and Morgan. Szeles discloses a dental
composition comprising an antibacterial compound and a proteolytic
enzyme. Szeles ¶ 9. Szeles states that “[c]ationic antibacterial agents useful
in the practice of the present invention are well known in the art” and
include cetyl pyridinium chloride. Id. ¶¶ 11, 12.
Szeles discloses that “[a]nionic surfactants such as higher alkyl
sulfates such as sodium lauryl sulfate are not compatible with enzymes.” Id.
¶ 39. “Examples of enzyme compatible surfactants include nonanionic
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polyoxyethylene surfactants such as Polyoxamer 407 . . . and amphoteric
surfactants such as cocamidopropyl betaine.” Id. “Preferred surfactants
include a combination of Pluronic F127, Polyoxamer 407, Polysorbate 20,
and cocamidopropyl betaine at a total surfactant concentration in the
dentifrice composition of between about 2 to about 10% by weight.” Id.
Szeles discloses that its composition “may also contain a source of
fluoride ions . . . in amount sufficient to supply about 25 ppm to 5,000 ppm
of fluoride ions. . . . Sodium fluoride is preferred.” Id. ¶ 41. Szeles also
discloses that “[v]arious other materials may be incorporated in the
dentifrice compositions of [its] invention, including desensitizers . . .;
whitening agents; preservatives;” etc. Id. ¶ 53.
As discussed above with regard to the rejection based on Boyd and
Morgan, Morgan provides exemplary compositions that include sodium
benzoate as a preservative. Morgan 9:64 to 10:1. It would have been obvious
to modify Szeles’ dental composition by adding sodium benzoate, because
Szeles expressly suggests incorporating preservatives in its composition, and
Morgan uses sodium benzoate as a preservative in its exemplary
compositions. Thus, a skilled artisan would have recognized that sodium
benzoate is a suitable preservative for use in oral compositions.
In addition, while Szeles does not disclose the specific amounts of
surfactants recited in claim 17, it suggests a combination of surfactants that
includes Pluronic F127 and cocamidopropyl betaine, in a total amount of
about 2–10% by weight, which includes the amounts recited in claim 17.
“[W]here the general conditions of a claim are disclosed in the prior art, it is
not inventive to discover the optimum or workable ranges by routine
experimentation.” In re Aller, 220 F.2d at 456.
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As with the rejection based on Boyd and Morgan, Appellants argue
that “Morgan’s data show that the addition of sodium benzoate into a
composition comprising an enzyme has an unwanted effect on cellulase
activity. There is no teaching or suggestion in Morgan that sodium benzoate
would be a suitable preservative for a composition comprising enzymes and
CPC [cetyl pyridinium chloride].” Appeal Br. 8–9.
As discussed above, however, Morgan’s results regarding cellulase
inhibition are not predictive of any effect of sodium benzoate on the activity
of the protease in Szeles’ composition. In fact, Morgan shows that its
Composition D, comprising glucoamylase, papain, cetyl pyridinium
chloride, and sodium benzoate, reduced bacteria more effectively than “a
commercial dentifrice which contained cetyl pyridinium chloride but no
enzymes.” Morgan 10:35–42, 52–55. The increased effectiveness of the
enzyme-containing composition is evidence that sodium benzoate did not
inhibit the enzymes’ activities.
Appellants also argue again that
Morgan shows that Compositions B and D containing sodium
benzoate are less effective in delaying cellulase activity upon
the dentifrice composition than Composition A, which contains
EDTA as a preservative (Morgan, column 9, lines 17-19). Thus,
one of skill in the art would be at most motivated to add EDTA
as a preservative into a composition comprising CPC and
enzymes.
Appeal Br. 9.
As discussed above, however, Morgan’s disclosure that EDTA and
sodium benzoate are suitable preservatives for use in dental compositions
would have provided a reason to use either of them, or both, in Szeles’
composition, based on Szeles’ suggestion to include preservatives.
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We affirm the rejection of claim 17 under 35 U.S.C. § 103(a) based on
Szeles and Morgan. Claims 9–11 and 14–16 have not been argued separately
and therefore fall with claim 17. 37 C.F.R. § 41.37(c)(1)(iv).
SUMMARY
We affirm both of the rejections on appeal.
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