Michael Prencipe et al.

Patent Trials and Appeals Board

Oct 14, 2021

2020006149 (P.T.A.B. Oct. 14, 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 10/14/2021
COLGATE-PALMOLIVE COMPANY
909 RIVER ROAD
PISCATAWAY, NJ 08855
EXAMINER
SIMMONS, CHRIS E
ART UNIT PAPER NUMBER
1629
NOTIFICATION DATE DELIVERY MODE
10/14/2021 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, RICHARD M. LEBOVITZ, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Appellant1 requests rehearing of the decision entered June 22, 2021
(“Decision”) that affirmed the Examiner’s obviousness rejections.
We grant the Request to the extent that we designate our earlier
affirmance 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 Company. Appeal Br. 2.
Appeal 2020-006149
Application 12/058,209

2

DISCUSSION
Appellant asserts the Decision differs in thrust from the Examiner’s
rejection and misapprehended several issues under 37 C.F.R. § 41.52. We
note that “[a]rguments not raised, and Evidence not previously relied upon . .
. are not permitted in the request for rehearing except . . . based upon a
recent relevant decision of either the Board or a Federal Court . . . [or]
responding to a new ground of rejection.” 37 C.F.R. § 41.52 (a)(1)–(3).
I. New Grounds
Appellant contends:
Removing Kleinberg II from the grounds of rejection changed
the thrust of the rejection (and the arguments made in response)
because a substantial issue on appeal was the fact that
Kleinberg II teaches against the pH range and inclusion of
phosphoric acid in the claims. Kleinberg II specifically teaches
that the higher pH is necessary to promote calcium deposition
and remineralization, which Appellant argued was inconsistent
with the requirement of a lower pH and the inclusion of
phosphoric acid in the claims.
(Reh’g Req. 2).
We find this argument persuasive and agree that our analysis resulted
in different thrust of the rejection. Therefore, we grant the request to
designate our affirmance as a New Ground of Rejection.
II. Kleinberg II2
Appellant contends Kleinberg II
teaches away from a neutral pH, as a basic pH is “required” for
tubule plugging, calcium deposition, and adhesive properties of
the arginine bicarbonate. The reference also teaches away from

2 Kleinberg et al., US 2002/0064504 A1, published May 30, 2002
(“Kleinberg II”).
Appeal 2020-006149
Application 12/058,209

3

the use of phosphoric acid, rather than carbonic acid, as a
neutralizing acid, as the loss of carbon dioxide helps drive the
deposition of the calcium.
(Reh’g Req. 3).
We find this argument unpersuasive for a number of reasons. First,
while Kleinberg II prefers “a pH ranging from about 7.5 to about 9.5”
(Kleinberg II ¶ 34), we do not agree that Kleinberg discourages, discredits,
or otherwise teaches away from the use of pH values such as the pH 7.2
value recited in claim 1. Second, Kleinberg II never discredits the use of
phosphoric acid. Indeed, Appellant does not identify any mention of
phosphoric acid in Kleinberg II, who therefore cannot discourage the use of
phosphoric acid. Third, to the extent that Kleinberg II does prefer more
basic pH values, Kleinberg II provides evidence that pH values higher than 7
will function, and no criticality or unexpected result is shown for a pH of
7.2. The Specification recites “compositions wherein the pH is about 6 to
about 9, e.g., about 6.5 to about 7.4 or about 7.5 to about 9” (Spec. 6–7).
Kleinberg II teaches “that arginine bicarbonate surprisingly has
adhesive properties particularly useful at a pH ranging from about 7.5 to
about 9.5” (Kleinberg II ¶ 34). Kleinberg II does prefer higher pH values,
but also recognizes that “[a]rginine bicarbonate is prepared from arginine
(free base) by titrating the arginine with gaseous carbon dioxide . . . until a
solution pH of 7.2 is reached” (Kleinberg II ¶ 61). Kleinberg II explains that
a pH of 7.2 “is the pH at which the carbon dioxide has converted all or most
of the arginine to arginine bicarbonate. For intrinsic plugging and the
formation of salivary precipitin, a pH between 8 and 9 is preferred” (id.).
Thus, Kleinberg II acknowledges that 7.2 is a working embodiment. Rather
than teach away from the use of pH 7.2, Kleinberg II demonstrates that the
Appeal 2020-006149
Application 12/058,209

4

pH value of 7.2 shares the same properties of a pH value of 7.5. See
Titanium Metals Corp. of Am. v. Banner, 778 F.2d 775, 783 (Fed. Cir. 1985)
(stating a prima facie case of obviousness can be found where the ranges
“are so close that prima facie one skilled in the art would have expected
them to have the same properties.”)
III. Motivation
Appellant contends, regarding our Decision, “that these rationales
would not provide motivation to adding phosphoric acid into a composition
containing Kleinberg I’s calcium-arginine-cariostatic anion complex”
(Reh’g Req. 6).
We remain unpersuaded for the reasons given in the Decision at pages
7 and 8. We further note that Kleinberg I3 expressly suggests that the “pH of
the oral compositions described herein can be controlled with acid such as
hydrochloric” (Kleinberg I 5:50–52) and Montgomery4 teaches “[a]cid
buffers, such as citric acid, 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). These references
directly suggest the use of acids, including phosphoric acid, for desirable pH
and buffering capacity.
Appellant also contends that:
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.

3 Kleinberg et al. US 6,217,851 B1, issued Apr. 17, 2001 (“Kleinberg I”).
4 Montgomery, US 2001/0021374 A1, published Sept. 13, 2001.
Appeal 2020-006149
Application 12/058,209

5

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).
We find this argument unpersuasive because Appellant lacks any
evidence demonstrating the expectation of an ordinary artisan for
interactions of inorganic phosphate or any other compound. This is purely
attorney argument but “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). We note that “[e]vidence not
previously relied upon . . . [is] not permitted in the request for rehearing.”
37 C.F.R. § 41.52(a).
DECISION SUMMARY
We have reviewed the original opinion in light of Appellant’s request
and granted the request for a New Ground of Rejection. However, we find
no point of law or fact which we overlooked or misapprehended in arriving
at our decision. Therefore, Appellant’s request is denied with respect to
making any modifications to the decision other than designating our
rejection as a new ground of rejection.

Appeal 2020-006149
Application 12/058,209

6

Outcome of Decision on Rehearing:
Claim(s) 35 U.S.C. § Reference(s)/Basis Denied Granted
1, 2, 4, 7,
10–13, 15,
25–27 
103 Doyle, Kleinberg I,
Montgomery
1, 2, 4, 7,
10–13, 15,
25–27 
1, 2, 4, 7,
10–15,
25–27,
31–34
103 Doyle, Kleinberg I,
Montgomery,
Fujisawa
1, 2, 4, 7,
10–15, 25–
27, 31–34 
Overall
Outcome
1, 2, 4, 7,
10–15, 25–
27, 31–34

Final Outcome of Appeal after Rehearing
Claim(s)

35
U.S.C.
§ 
Reference(s)/Basis Affirmed Reversed New
Ground of
Rejection
1, 2, 4, 7,
10–13,
15, 25–
27
103  Doyle, Kleinberg
I, Montgomery
1, 2, 4, 7,
10–13,
15, 25–27
1, 2, 4, 7,
10–13, 15,
25–27
1, 2, 4, 7,
10–15,
25–27,
31–34
103  Doyle, Kleinberg
I, Montgomery,
Fujisawa
1, 2, 4, 7,
10–15,
25–27,
31–34
1, 2, 4, 7,
10–15, 25–
27, 31–34
Overall
Outcome
1, 2, 4, 7,
10–15,
25–27,
31–34
1, 2, 4, 7,
10–15, 25–
27, 31–34

We designated new grounds pursuant to 37 C.F.R. § 41.50(b).
Section 41.50(b) provides “[a] new ground of rejection pursuant to this
Appeal 2020-006149
Application 12/058,209

7

paragraph shall not be considered final for judicial review.” Section
41.50(b) also provides:
When the Board enters such a non-final decision, 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 prosecution
will be remanded to the examiner. The new ground of rejection
is binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the
opinion of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the
claims, appellant may again appeal to the Board pursuant to this
subpart.
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.

Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

GRANTED; 37 C.F.R. § 41.50(b)