KHAWALED, Kamal et al.

Patent Trials and Appeals Board

Nov 4, 2019

15102572 - (D) (P.T.A.B. Nov. 4, 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.
15/102,572 06/08/2016 Kamal KHAWALED 11009-00-US-01-OC 1888
23909 7590 11/04/2019
COLGATE-PALMOLIVE COMPANY
909 RIVER ROAD
PISCATAWAY, NJ 08855
EXAMINER
WEBB, WALTER E
ART UNIT PAPER NUMBER
1612
NOTIFICATION DATE DELIVERY MODE
11/04/2019 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 KAMAL KHAWALED and TANYA MUSHYAKOV
__________

Appeal 2019-003330
Application 15/102,5721
Technology Center 1600
__________

Before ERIC B. GRIMES, TAWEN CHANG, and
RACHEL H. TOWNSEND, Administrative Patent Judges.

TOWNSEND, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a dental
bleaching composition, which have been rejected as obvious. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm and designate our affirmance as to one claim a NEW
GROUND OF REJECTION pursuant to our authority under 37 C.F.R.
§ 41.50(b).

1 We use the word “Appellant” to refer to “Applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Colgate-
Palmolive Co. (Appeal Br. 2.)
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STATEMENT OF THE CASE
“A variety of dental bleaching compositions . . . exist on the market.”
(Spec. 1.) Appellant’s Specification states that:
Most common bleaching agents are peroxides, including
but not limited to hydrogen peroxide, carbamide
peroxide, sodium perborate, and sodium percarbonate.
The simplest way to shorten the treatment time is to
increase the concentration of the peroxide. This can
however, result in irritation and even some damage of
gums or lips or other soft tissue.
(Id.) “It was the object of the present invention to provide a bleaching
gel composition that is less irritating than prior art gels, is highly
efficient, can bleach within shorter time and results in whitened teeth
when applied.” (Id. at 2.)
Claims 1, 3–5, 9–11, 13, 14, 18, and 20 are on appeal.2 Claim 1 is
representative and reads as follows:
1. A dental bleaching gel composition comprising:
aqueous hydrogen peroxide in an amount of 6 to 9% w/w
of peroxide, by weight of the composition,
a cross-linked polyacrylate polymer in an amount of 1 to
5% w/w;
an aqueous vehicle comprising glycerin in an amount of
20 to 30% w/w, and water in an amount of 25 to 50% w/w;
electrical conductivity enhancing ingredients comprising
at least one alkali hydroxide in an amount of 1 to 5% w/w; and
wherein the electrical conductivity of the gel is higher
than 250 microsiemens/cm;

2 Claims 15 and 16 remain pending but are withdrawn from consideration.
(Advisory Action 1.)
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wherein the dental bleaching gel is a stable, single-
component gel;
wherein the gel does not comprise an alkali nitrate.
(Appeal Br. 10.)

The following grounds of rejection by the Examiner are before us on
review:
Claims 1, 4, 9–11, 13, 14, 18, and 20 under 35 U.S.C. § 103 as
unpatentable over Allred.3
Claims 3 and 5 under 35 U.S.C. § 103 as unpatentable over Allred and
Montgomery.4
DISCUSSION
Claim 1
The Examiner finds that Allred teaches a composition at Example 5
that includes water, hydrogen peroxide, glycerin, sodium hydroxide,
polyvinyl pyrrolidone, and Carbopol 974. (Final Action 2.) The Examiner
also finds that this composition does not include an alkali nitrate. (Id. at 3.)
The Examiner finds that Allred Example 4, which like Example 5 is a
dental bleaching composition, includes glycerin in an amount of 29.85%,
which is in the range required by claim 1.
The Examiner recognizes that the composition of Example 5 does not
have the claimed amount of cross-linked polyacrylate polymer (Carbopol
974) and the hydrogen peroxide recited in claim 1. (Id.) However, the
Examiner finds that the amounts of these two ingredients are just “slightly

3 Allred et al., US2006/0029908 A1, published Feb. 9, 2006.
4 Montgomery, US 7,189,385 B2, issued Mar. 13, 2007.
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outside the claimed ranges for each component” and that a prima facie case
of obviousness exists including with respect to the composition of Allred
having the claimed electrical conductivity property (id.; see also Advisory
Action 2 (noting further that “the prior art teaches a range of 1–90% for the
bleaching agents . . . para. [0093]”)), particularly because Allred teaches the
inclusion of the electrolyte sodium hydroxide, which is an alkali hydroxide
as claimed (Ans. 3 (citing In re Best, 562 F.2d 1252, 1255 (CCPA 1977)).
We agree with the Examiner’s factual findings and conclusion of
obviousness. Claim 1 recites a dental bleaching gel “comprising” a number
of ingredients, all of which are present in Example 5 of Allred. “In the
patent claim context, the term ‘comprising’ is well understood to mean
‘including but not limited to’.” CIAS, Inc. v. Alliance Gaming Corp., 504
F.3d 1356, 1360 (Fed. Cir. 2007). Thus, that Allred includes “many other
components” (Appeal Br. 6) does not preclude a conclusion that the
invention claimed is prima facie obvious in light of the amount of each of
the required ingredients that Example 5 of Allred does include. We agree
with the Examiner that the 10.5% hydrogen peroxide of Allred’s
composition is close enough to being within the 6–9% peroxide range
claimed and similarly that the 5.3% Carbopol 974 of Allred’s composition is
close enough to being within the 1–5% crosslinked polyacrylate required by
the claims that one of ordinary skill in the art would have expected the
composition of Example 5 to have the electrical conductivity claimed. In re
Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003) (“We have also held that a
prima facie case of obviousness exists when the claimed range and the prior
art range do not overlap but are close enough such that one skilled in the art
would have expected them to have the same properties.”).
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Appellant’s Specification does not establish that 9% is a critical limit
for the peroxide range or that 5% is a critical limit for the cross-linked
polyacrylate. Indeed, the Specification teaches that “[a] useful amount” of
the thickening agent that is the cross-linked polyacrylate “is in the range of 1
to 5 % w/w” but that “the skilled artisan can find a suitable amount in known
manner.” (Spec. 5.) And with respect to the hydrogen peroxide bleaching
agent, the Specification states:
The bleaching agent is used in an amount that provides at
least some whitening of teeth but less than an amount
that irritates or hurts the tissue or mucous membrane.
The amount of bleaching agent can be in a range of 1 to
35 % w/w, in particular 3 to10 % w/w or 6 to 9 % w/w
peroxide, based on the weight of the final bleaching gel
composition.
(Id.)
Furthermore, in light of Allred’s teaching of a dental bleaching
composition in Example 4 that contains 29.85% glycerin, we conclude that it
would have been obvious to adjust the amount of glycerin in Example 5 to
within the claimed range as well. “[I]t is not inventive to discover the
optimum or workable ranges by routine experimentation.” In re Aller, 220
F.2d 454, 456 (CCPA 1955).
We also agree with the Examiner, that it is well-established that
“[w]here . . . 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. . . . [The] fairness [of the burden-shifting] 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). In light of the
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foregoing discussion regarding Allred’s Example 5, it was entirely
appropriate for the Examiner to conclude without “any specific technical
basis” (Appeal Br. 6) that a prima facie case of obviousness was made out
with respect to the claimed electrical conductivity property and shift the
burden to Appellant to establish that Example 5 of Allred does not possess
the claimed electrical conductivity. Rather than provide testing evidence to
establish that Allred Example 5 does not have the claimed conductivity,
Appellant argues that “[c]urrently available on the market dental bleaching
compositions are either electrically non-conductive or have very low
conductivity typically below 200 microsiemens/cm.” (Id. (citing Spec. 4–
5).)
Appellant’s argument does not establish that Example 5 of Allred is a
composition available on the market, nor does it provide evidence that the
specific composition of Example 5 does not meet the claimed electrical
conductivity. “Attorney argument is not evidence.” Icon Health & Fitness,
Inc. v. Strava, Inc., 849 F.3d 1034, 1043 (Fed. Cir. 2017). Moreover,
Appellant’s Specification also does not provide test data to establish that
Example 5 of Allred or some substantially similar composition does not
have the claimed electrical conductivity.
Appellant’s additional argument that
Allred does not recognize the same problem to be solved as
disclosed in the instant invention, much less the use of an
electrical conductivity enhancing ingredient, e.g., sodium
hydroxide, in the presence of other components as recited in
amended claim 1 by applying a microcurrent to achieve teeth
whitening within a short time and lasting longer
(id. at 7), fails to persuade us that the Examiner’s rejection is in error. First,
Appellant’s claim is a composition claim that does not require applying the
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composition to teeth and “applying a microcurrent to achieve teeth
whitening within a short time and lasting longer” than through use of a
composition that does not have electrical conductivity of higher than 250
microsiemens/cm. Second, the prior art need not address the motivation that
prompted Appellant to arrive at the claimed invention. KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 419–20 (2007) (“In determining whether the
subject matter of a patent claim is obvious, neither the particular motivation
nor the avowed purpose of the patentee controls.”). “What matters is the
objective reach of the claim. If the claim extends to what is obvious, it is
invalid under § 103.” Id. For the reasons discussed, we find that the
Examiner has established a prima facie case of obviousness as to the
composition recited by claim 1 with the composition of Example 5 of Allred,
including regarding having the claimed electrical conductivity. Thus, we
also do not find persuasive Appellant’s argument that Allred does not
disclose all the recited limitations of claim 1 sufficiently to establish prima
facie obviousness (Appeal Br. 7).
Appellant’s argument in the Reply Brief that the present rejection is
similar to the conclusion of obviousness by the Board in in Leo
Pharmaceuticals Products, Ltd. v. Rea, 726 F.3d 1346 (Fed. Cir. 2013),
which was reversed by the Federal Circuit (Reply Br. 2–3), is not persuasive.
The facts in Leo were fundamentally different from the present situation in
many respects. First, in Leo one of the prior art references was missing an
element that a second prior art reference was said to make obvious. Leo,
726 F.3d 1350–51. Here, Allred teaches in Example 5 the presence of every
compositional element recited in claim 1. Additionally, in Leo “the prior art
either discouraged combining vitamin D analogs and corticosteroids in a
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single formulation, or attempted the combination without recognizing or
solving the storage stability problems associated with the combination.” Id.
at 1353. There is no such discouragement or failure here. In addition,
comparative experimental evidence was presented to demonstrate
unexpected superiority of the claimed invention in Leo. Id. at 1354. No
comparative evidence at all, much less against the prior art Allred, is present
on this record. Finally, the Federal Circuit in Leo also noted “in the face of
such divergent compositions with express disclaimers of the other’s
contents, the record showing that Turi, Serup, and Dikstein describe
compositions for the same therapeutic purpose does not rise to the level of a
motivation to combine.” Id. at 1356. There is no such disclaimer of
contents in this record.
Accordingly, for the reasons discussed, we affirm the Examiner’s
rejection of claim 1 as being obvious over Allred.
Claims 4, 9–11, 13, 14, 18, and 20 have not been argued separately
and therefore fall with claim 1. 37 C.F.R. § 41.37(c)(1)(iv).
Claims 3 and 5
The Examiner finds that while Allred does not teach using potassium
hydroxide (KOH) as the alkali hydroxide (claim 5) or a pH range of 5–7
(claim 3) for the dental bleaching composition of Example 5, these would
have been obvious from the teachings of Montgomery. (Final Action 4.)
The Examiner finds that Montgomery teaches a dental bleaching
composition that includes buffers to achieve a pH for optimal penetration of
the composition into the tooth enamel, in excess of about pH 5.2, and that
potassium hydroxide is a suitable buffer for that purpose. (Id.) The
Examiner determines that it would have been obvious to one having ordinary
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skill in the art to use potassium hydroxide in the composition of Allred as a
buffering agent to achieve a pH in excess of about 5.2 so as to provide
optimal penetration of the Allred composition into the tooth enamel. (Id.)
We agree with the Examiner’s findings and conclusion of
obviousness. Montgomery teaches several alkaline buffers including sodium
hydroxide (NaOH) and potassium hydroxide may be used in a dental
bleaching composition in an amount of from 0.5 to about 3 % by weight of
the composition. (Montgomery 8:8–16.) Montgomery further teaches that
these alkaline buffers “may also serve the purpose of neutralizing carboxylic
acid side chains in thickening polymers.” (Id.) Thus, claim 5 recites the use
of elements that were all well-known in the prior art, and all that was
required to obtain the claimed composition was to substitute one well-known
buffer for another.
We agree with the Examiner that it would have been obvious to
substitute KOH as an alternative to NaOH in Allred with a reasonable
expectation of success. It is well understood that it is obvious to those
skilled in the art to substitute one known equivalent for another. See In re
Omeprazole Patent Litigation, 483 F.3d 1364, 1374 (Fed. Cir. 2007)
(“[T]his court finds no . . . error in [the] conclusion that it would have been
obvious to one skilled in the art to substitute one ARC [alkaline reactive
compound] for another.”). Here, Montgomery teaches a finite number of
suitable alkaline buffers for use in dental bleaching compositions to provide
a specific pH for optimal penetration of the composition into the tooth
enamel. Thus, we conclude that the claimed composition employing KOH
was “the product not of innovation but of ordinary skill and common sense.”
KSR, 550 U.S. at 421.
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Appellant’s argument that Allred describes “other potassium salts” as
“one of the active agents, whereas sodium hydroxide is listed as one of the
non-active agents” (Appeal Br. 8) is not persuasive to establish non-
obviousness. Just because potassium nitrate and other potassium salts are
described as desensitizing agents that may be used in the dental treatment
composition in Allred (Allred ¶¶ 96–97) does not establish that using KOH
as an alternative buffer to NaOH would not work in the dental treatment
compositions described. As the Examiner explains, Montgomery teaches the
equivalence of NaOH and KOH as buffers in dental bleaching compositions,
and Appellant has not established a scientific reason why one of ordinary
skill in the art would not find these known buffers to be substitutable in
Example 5 of Allred nor provided evidence that such substitution would not
have been made by one of ordinary skill in the art in the composition of
Example 5 of Allred.
Appellant’s argument that KOH is not used as a buffer in Appellant’s
claimed bleaching composition (Appeal Br. 8) is not persuasive of non-
obviousness. First, KOH will necessarily act as a buffer in the claimed
aqueous composition. Second, “the law does not require that the references
be combined for the reasons contemplated by the inventor.” In re Beattie,
974 F.2d 1309, 1312 (Fed. Cir. 1992). “What matters is the objective reach
of the claim.” KSR, 550 U.S. at 419. Here, as explained, Montgomery
establishes the equivalence of NaOH and KOH as buffering agents in a
bleaching composition, and Allred teaches the use of an alkaline hydroxide
agent in the amount required by Appellant’s claim 1. Thus we agree with
the Examiner that claim 5 “extends to what is obvious” and is thus
unpatentable under § 103. Id.
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Regarding the pH range claimed, as the Examiner notes, Montgomery
teaches that a pH level in excess of about 5.2 is desirable because
peroxyacetic acid forms quickly at this pH. (Id. at 8: 30–39.) However, we
agree with Appellant that Montgomery does teach a pH above 5.2 because of
a desire to produce peroxyacetic acid from hydrogen peroxide and glyceryl
triacetate quickly. (Appeal Br. 8.)
Nevertheless, we also note that Montgomery teaches that prolonged
exposure of teeth to bleaching compositions with a pH less than 5.5 is
known to have the negative effect of solubilization of calcium from the
enamel layer with associated demineralization. (Montgomery 2:35–39.)
And, as the Examiner noted, Montgomery teaches that keeping the pH at a
particular level will provide optimal penetration of the composition into the
tooth enamel. (Id. 8:8–10.) We understand from these two teachings that
the optimum pH of Montgomery’s composition is at least 5.5, to avoid
solubilizing calcium. Thus, we conclude that Montgomery does provide
motivation to keep the pH of the Example 5 Allred composition, which does
not include glyceryl triacetate, at or above pH 5.5, and pH 5.5 is within the
range recited in claim 3.
Thus, for the foregoing reasons we find that claim 3 is obvious over
Allred and Montgomery. Because our conclusion is based on additional
facts not relied upon by the Examiner and reasoning that differs somewhat
from the Examiner’s, we designate our affirmance as to claim 3 a new
ground of rejection pursuant to our authority under 37 C.F.R. § 41.50(b) to
provide Appellant with a full and fair opportunity to respond to the rejection.
See In re Biedermann, 733 F.3d 329, 336–337 (Fed. Cir. 2013) (Appellants
are entitled to a fair opportunity to react to the thrust of the rejection).
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CONCLUSION
In summary:
Claims
Rejected
35
U.S.C.
§
Reference(s)/
Basis
Affirmed Reversed New
Ground
1, 4, 9–11,
13, 14, 18,
20
103 Allred 1, 4, 9–11, 13,
14, 18, 20

3, 5 103 Allred,
Montgomery
3, 5 3
Overall
Outcome
1, 3–5, 9–11,
13, 14, 18, 20
3

TIME PERIOD FOR RESPONSE
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. . . .
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Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.

AFFIRMED, 37 C.F.R. § 41.50(b)