Michael Prencipe et al.

Patent Trials and Appeals Board

Jun 22, 2021

2020006149 (P.T.A.B. Jun. 22, 2021)

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.
12/058,209 03/28/2008 Michael Prencipe 8272-00-US-01-OC 2695
23909 7590 06/22/2021
COLGATE-PALMOLIVE COMPANY
909 RIVER ROAD
PISCATAWAY, NJ 08855
EXAMINER
SIMMONS, CHRIS E
ART UNIT PAPER NUMBER
1629
NOTIFICATION DATE DELIVERY MODE
06/22/2021 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 MICHAEL PRENCIPE, RAVI SUBRAMANYAM,
SARITA V. MELLO, DONGHUI WU, SUMAN CHOPRA,
ANDRE M. MORGAN, DIANE CUMMINS, RICHARD J. SULLIVAN,
RALPH PETER SANTARPIA III, LYNETTE ZAIDEL, QIN WANG,
GARY EDWARD TAMBS, VIRGINIA MONSUL BARNES,
RAJNISH KOHLI, RICHARD SCOTT ROBINSON,
SERGIO LEITE, and ERIC A. SIMON
__________

Appeal 2020-006149
Application 12/058,209
Technology Center 1600
__________

Before DONALD E. ADAMS, ERIC B. GRIMES, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal1 under 35 U.S.C. § 134 involving claims to an oral
care composition. The Examiner rejected the claims as obvious. 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. Appellant identifies the real party in interest as Colgate-
Palmolive Company (see Appeal Br. 2). We have considered the
Specification of Mar. 28, 2008 (“Spec.”); Final Action of Sept. 20, 2018
(“Final Act.”); Appeal Brief of Apr. 17, 2019 (“Appeal Br.”); Examiner’s
Answer of June 26, 2020 (“Ans.”); and Reply Brief of Aug. 26, 2020
Appeal 2020-006149
Application 12/058,209

2
Statement of the Case
Background
“Arginine and other basic amino acids have been proposed for use in
oral care and are believed to have significant benefits in combating cavity
formation and tooth sensitivity” (Spec. ¶ 3). “Combining these basic amino
acids with minerals having oral care benefits, e.g., fluoride and calcium, to
form an oral care product having acceptable long term stability, however,
has proven challenging” (id.).
The Claims
Claims 1, 2, 4, 7, 10–15, 25–27, and 31–34 are on appeal.2
Independent claim 1 is representative and reads as follows:
1. An oral care composition comprising
a. L-arginine in an amount of about 1.5% by weight of
the composition;
b. a zinc salt, comprising zinc citrate, in an amount of
0.01 to 5% by weight of the composition;
c. a surfactant mixture comprising sodium lauryl sulfate
and cocoamidopropyl betaine, wherein the surfactant
mixture in an amount of 0.1 to 5% by weight of the
composition;
and
d. an anionic polymer in an amount of 0.05 to 5% by
weight of the composition; and
e. phosphoric acid;
wherein the composition has a pH of 6.8 to 7.2.

(“Reply Br.”). We note the Examiner affirmed the claims in Appeal 2013-
010567, the previous appeal in this application.
2 Claims 16, 17, and 48 are identified as withdrawn (see Appeal Br. 12–14).
Appeal 2020-006149
Application 12/058,209

3
The Issues
A. The Examiner rejected claims 1, 2, 4, 7, 10–13, 15, and 25–27 under
35 U.S.C. § 103(a) as obvious over Doyle,3 Kleinberg I,4 Kleinberg II,5 and
Montgomery6 (Final Act. 3–11).
B. The Examiner rejected claims 1, 2, 4, 7, 10–15, 25–27, and 31–34
under 35 U.S.C. § 103(a) as obvious over Doyle, Kleinberg I, Kleinberg II,
Montgomery, and Fujisawa7 (Final Act. 11–14).

A. 35 U.S.C. § 103(a) over Doyle, Kleinberg I, Kleinberg II, and
Montgomery
The issue with respect to this rejection is: Does a preponderance of
the evidence of record support the Examiner’s conclusion that the
combination of prior art renders claim 1 obvious?
Findings of Fact
1. Doyle teaches “oral care compositions comprising the
combination of particular antibacterial agents with agents having anti-
inflammatory activity” (Doyle ¶ 16).
2. Doyle teaches that “[s]uitable antibacterial agents include . . .
zinc ion agent” (Doyle ¶ 69).

3 Doyle et al., US 2007/0053849 A1, published Mar. 8, 2007 (“Doyle”).
4 Kleinberg et al., US 6,217,851 B1, issued Apr. 17, 2001 (“Kleinberg I”).
5 Kleinberg et al., US 2002/0064504 A1, published May 30, 2002
(“Kleinberg II”).
6 Montgomery, R., US 2001/0021374 A1, published Sept. 13, 2001
(“Montgomery”).
7 Fujisawa, K., US 2004/0146465 A1, published July 29, 2004 (“Fujisawa”).
Appeal 2020-006149
Application 12/058,209

4
3. Doyle teaches “copolymers of maleic anhydride with methyl
vinyl ether having a molecular weight (M.W.) of about 30,000 to about
1,000,000. These copolymers are available for example as Gantrez AN 139
(M.W. 500,000), AN 119 (M.W. 250,000) and S-97” (Doyle ¶ 107).
4. Doyle teaches, in Example II, exemplary dentrifice
compositions as shown below:

. . .

. . .
”
Doyle exemplifies a dentrifice IID containing zinc citrate in an amount of
0.400 weight percent that is within the range cited by claim 1; amount of
SLS (sodium lauryl sulfate) of 2.8 weight percent; and amount of the anionic
polymer Gantrez S97 of 1 weight percent (Doyle ¶ 143; see also Spec. ¶ 70
(Gantrez S97 is a “synthetic anionic polymeric polycarboxylate[]”).
5. Doyle teaches the “compositions may also comprise surfactants
. . . . The surfactant may be anionic, nonionic, amphoteric, zwitterionic,
cationic, or mixtures thereof” (Doyle ¶ 126). Doyle specifically teaches
“[a]nionic surfactants useful herein include . . . Sodium lauryl sulfate” and
“suitable amphoteric surfactants are betaines, specifically cocamidopropyl
Appeal 2020-006149
Application 12/058,209

5
betaine” (Doyle ¶¶ 127, 129). Doyle teaches the “composition typically
comprises one or more surfactants each . . . most preferably from about 1%
to about 6%, by weight of the composition” (Doyle ¶ 129).
6. Doyle teaches “[b]uffering agents, as used herein, refer to
agents that can be used to adjust the pH of the compositions to a range of
about pH 3.0 to about pH 10” (Doyle ¶ 114).
7. The Examiner states that “Doyle does not expressly teach 1) L-
arginine, 2) cocamidopropyl betaine together with SLS, 2) phosphoric acid
or 3) the specific pH range claimed” (Final Act. 4; italics omitted).
8. Kleinberg I teaches “oral compositions containing therapeutic
amounts of calcium, arginine and a cariostatic anion distributed in an oral
vehicle. In one preferred embodiment, the oral composition is supplemented
with fluoride. The present invention further relates to a method of preparing
oral compositions containing anti-caries agents” (Kleinberg I 3:20–27).
Kleinberg I teaches “the arginine component of the composition described
herein attacks the first stage of the Miller process” (Kleinberg I 2:59–61).
9. Kleinberg I teaches that in “one preferred embodiment, the oral
compositions contain . . . arginine in an amount ranging from 5 µg/mg to
700 µg/mg” (Kleinberg I 4:35–43). The Examiner finds that Kleinberg I’s
arginine range overlaps that recited in claim 1, specifically teaching that in
Kleinberg I “the oral compositions contain arginine in an amount ranging
from 5 to 700 micrograms/milligram, i.e., 0.5 to 70 %” (Final Act. 5).
10. Kleinberg I teaches the “pH of the oral compositions of the
present invention generally ranges from about 6.0 to about 9.0. In one
embodiment, the pH of the oral composition ranges from about 7.0 to about
8.0” (Kleinberg I 5:47–50).
Appeal 2020-006149
Application 12/058,209

6
11. Montgomery teaches:
The compositions of the present invention may also
contain a buffer to provide a specific pH for optimal penetration
of the composition into tooth enamel . . . . Acid buffers, such as
. . . phosphoric acid, and others may also be used alone or in
conjunction with an alkaline buffer to obtain the desirable pH
and to provide buffering capacity.
(Montgomery ¶ 40).
Principles of Law
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). “If a person of
ordinary skill can implement a predictable variation, § 103 likely bars its
patentability.” Id. at 417.
Analysis
We adopt the Examiner’s findings of fact and reasoning regarding the
scope and content of the prior art (Ans. 3–11; FF 1–11) and agree that claim
1 is rendered obvious by Doyle, Kleinberg I, and Montgomery.8 We address
Appellant’s arguments below.
Appellant contends:
Kleinberg II teaches the use of the basic pH range from about
7.5 to about 9.5 for its composition containing arginine
bicarbonate and calcium carbonate. There is no teaching or
suggestion in Kleinberg II that would motivate one of skill in
the art to decrease the pH of Kleinberg’s composition

8 We note the Board may rely on less than all of the references applied by
the Examiner in an obviousness rationale without designating it as a new
ground of rejection. In re Bush, 296 F.2d 491, 496 (CCPA 1961). Here, we
do not rely upon Kleinberg II or its benefit of reducing dental sensitivity at a
particular pH because it is unnecessary for the obviousness rejection.
Appeal 2020-006149
Application 12/058,209

7
containing arginine bicarbonate and calcium carbonate to the
claimed range (6.8-7.2).
(Appeal Br. 6).
We find this argument unpersuasive because we do not, and need not,
rely upon Kleinberg II for the obviousness analysis. Doyle suggests oral
care compositions containing zinc citrate in amounts within the claimed
range (FF 1, 2, 4); containing surfactants including sodium lauryl sulfate and
cocamidopropyl betaine9 in overlapping amounts (FF 4, 5); containing an
anionic polymer in overlapping amounts (FF 3, 4) and the use of buffering
agents to generate a pH between 3 and 10 (FF 6).
While Doyle does not teach the use of either arginine or phosphoric
acid, Kleinberg I suggests that oral compositions contain therapeutic
amounts of arginine in overlapping amounts (FF 8, 9) as well as an
overlapping pH range of 7 to 8 (FF 10). Montgomery teaches that
phosphoric acid is a buffer that may be used both to obtain the desired pH
and to provide buffering capacity (FF 11).
Thus, these three references suggest an oral care composition that
comprises all of the claimed components, with the arginine of Kleinberg I
incorporated into Doyle’s oral care composition to inhibit caries formation
(FF 8) and the phosphoric acid of Montgomery incorporated to both modify
the pH to Kleinberg I’s preferred range and to further function as a pH
buffer (FF 11). “[A] person of ordinary skill has good reason to pursue the
known options within his or her technical grasp. If this leads to the

9 Claim 1 recites “cocoamidopropyl betaine” but the Specification uses
“cocamidopropyl betaine” and “cocoamidopropyl betaine” interchangeably.
See, e.g., Spec. ¶ 62, 100.
Appeal 2020-006149
Application 12/058,209

8
anticipated success, it is likely the product not of innovation but of ordinary
skill and common sense.” KSR, 550 U.S. at 421.
Appellant contends
Kleinberg I’s composition contains a cariostatic anion.
Kleinberg I teaches that cariostatic anions may provide
buffering which enhances the acid neutralizing activity of the
arginine, as well as neutralizing the acid itself (column 3, lines
6-8). Kleinberg I does not teach or suggest the use of additional
buffers in addition to cariostatic anions. The Examiner has not
provided any articulated reason why one of skill in the art
would be motivated to incorporate phosphoric acid as a buffer
into the oral care composition already containing a cariostatic
anion which acts as a buffer.
(Appeal Br. 7).
We do not find this argument persuasive as the Examiner states:
“Buffering agents are used to adjust the pH of the compositions. . . . One of
ordinary skill in the art would understand that the composition may be
adjusted to a suitable pH that falls within the range described by Doyle”
(Final Act. 8–9). Kleinberg I does not exclude the use of other buffering
agents and does prefer that the oral composition pH values range between 7
and 8 (FF 10). Thus, the Examiner provides articulated reasoning for
including a buffer such as phosphoric acid in order to both buffer the
composition and ensure the pH falls in the range desired by Doyle or
Kleinberg I (FF 6, 10). The “combination of familiar elements according to
known methods is likely to be obvious when it does no more than yield
predictable results.” KSR, 550 U.S. at 416. See also In re Kerkhoven, 626
F.2d 846, 850 (CCPA 1980) (“It is prima facie obvious to combine two
compositions each of which is taught by the prior art to be useful for the
Appeal 2020-006149
Application 12/058,209

9
same purpose, in order to form a third composition which is to be used for
the very same purpose.”).
Appellant contends
There is no teaching or suggestion in Kleinberg I that inorganic
phosphate has cariostatic activities. If inorganic phosphate
(e.g., phosphoric acid) is added into Kleinberg’s composition,
inorganic phosphate might interact with calcium and arginine.
Thus, one of skill in the art would expect that inorganic
phosphate might interfere with the formation of
calcium/arginine/cariostatic anion complex. Similarly, one of
skill in the art would expect that citrate (which is also not
taught to be cariostatic by Kleinberg I) and a competing
divalent soluble metal ion (zinc from zinc citrate) might
interfere with the formation of calcium/arginine/cariostatic
anion complex.
(Appeal Br. 8–9). Appellant also contends the “Examiner has not provided
any articulated explanation why one of skill in the art would not expect that
the presence of inorganic phosphate, citrate and zinc would affect the
formation of Kleinberg I’s calcium/arginine/cariostatic anion complex” (id.
at 9).
We find this argument unpersuasive because Appellant misplaces the
burden in this situation. The Examiner has established a prima facie case of
obviousness over Doyle, Kleinberg I, and Montgomery as discussed above.
In response to that prima facie case, Appellant introduces speculation
regarding possible interactions that might occur, without providing any
citations to the cited prior art or any other evidence of record that support the
stated concerns regarding interactions. However, “an examiner is entitled to
reject claims . . . without conducting an inquiry into whether or not that prior
art reference is enabling . . . the burden shifts to the applicant to submit
rebuttal evidence of nonenablement.” In re Antor Media Corp., 689 F.3d
Appeal 2020-006149
Application 12/058,209

10
1282, 1289 (Fed. Cir. 2012). And it is clear that rebuttal does require
evidence because “attorney argument [is] not the kind of factual evidence
that is required to rebut a prima facie case of obviousness.” In re Geisler,
116 F.3d 1465, 1470 (Fed. Cir. 1997).
Conclusion of Law
A preponderance of the evidence of record supports the Examiner’s
conclusion that the combination of prior art renders claim 1 obvious.

B. 35 U.S.C. § 103(a) over Doyle, Kleinberg I, Kleinberg II,
Montgomery, and Fujisawa
Appellant does not substantively separately argue this obviousness
rejection, instead relying upon their arguments to overcome the above
rejection (see Appeal Br. 10). The Examiner provides sound fact-based
reasoning for combining these references with Fujisawa (see Final Act. 12–
13). Having affirmed the obviousness rejection of claim 1 over Doyle,
Kleinberg I, Kleinberg II, and Montgomery for the reasons given above, we
also find that the further combination with Fujisawa renders the rejected
claims obvious for the reasons given by the Examiner.

CONCLUSION
In summary:
Claim(s)
Rejected
35
U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 2, 4, 7, 10–
13, 15, 25–27
103 Doyle, Kleinberg I,
Kleinberg II,
Montgomery
1, 2, 4, 7,
10–13, 15,
25–27

Appeal 2020-006149
Application 12/058,209

11
Claim(s)
Rejected
35
U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 2, 4, 7, 10–
15, 25–27, 31–
34
103 Doyle, Kleinberg I,
Kleinberg II,
Montgomery,
Fujisawa
1, 2, 4, 7,
10–15,
25–27,
31–34

Overall
Outcome
1, 2, 4, 7,
10–15,
25–27,
31–34

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