Robert Vogt et al.

Patent Trials and Appeals Board

Jul 15, 2021

2020006772 (P.T.A.B. Jul. 15, 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.
13/985,536 08/14/2013 Robert Vogt 9059-00-US-01-OC 5534
23909 7590 07/15/2021
COLGATE-PALMOLIVE COMPANY
909 RIVER ROAD
PISCATAWAY, NJ 08855
EXAMINER
ROBERTS, LEZAH
ART UNIT PAPER NUMBER
1612
NOTIFICATION DATE DELIVERY MODE
07/15/2021 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 ROBERT VOGT, KARSTEN KOHRS,
STEVEN WADE FISHER, THOMAS CAMPBELL,
and MICHAEL PRENCIPE

Appeal 2020-0067721
Application 13/985,536
Technology Center 1600
Before FRANCISCO C. PRATS, JOHN G. NEW, and
RACHEL H. TOWNSEND, Administrative Patent Judges.
PRATS, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1, 2, 8, and 19–22. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 This application has been before us previously in Appeal 2017-000578,
decision entered Feb. 2, 2018).
2 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Colgate-Palmolive
Company. Appeal Br. 2.
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CLAIMED SUBJECT MATTER
Appellant’s claim 1, the only independent claim on appeal, is
representative of the appealed subject matter and reads as follows:
1. Method for improving the taste of an oral care
composition containing a zinc salt, wherein the method
comprises incorporating an effective amount of a flavor
component into an oral care composition containing a
zinc salt to mask the taste of the zinc salt,
wherein the incorporation of the flavor component
improves the taste of the oral composition, and
wherein, subsequent to incorporating the effective
amount of the flavor component, the oral care
composition comprises:
a) a flavor component comprising:
i) a taste-masking agent comprising:
cinnamic aldehyde; eugenol; and eucalyptol; and
ii) flavoring agents comprising: L-menthol;
N-ethyl-para-menthan-3-carboxamide; anethole;
peppermint oil; spearmint oil; com mint oil;
b) zinc citrate; and
c) an orally acceptable carrier;
wherein the flavor component is present at a
concentration of from about 0.5 to about 2.5%, by
weight; the total concentration of zinc citrate is from
about 0.01 to about 5%, by weight of the composition;
the flavor component comprises greater than 0.1 %, by
weight, cinnamic aldehyde, greater than 0.1 %, by
weight, eugenol and greater than 0.5%, by weight,
eucalyptol.
Appeal Br. 8.
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REJECTION(S)
The following rejections are before us for review:
(1) Claims 1, 2, 8, and 19–22 under 35 U.S.C. § 103(a) as being
unpatentable over Ramji3 as evidenced by Bilali4 (Ans. 3–5 (entered July 27,
2020)); and
(2) Claims 1, 2, 8, and 19–22 under 35 U.S.C. § 103(a) as being
unpatentable over Ramji in view of Eby5 (Ans. 5–7).
OBVIOUSNESS—
RAMJI AS EVIDENCED BY BILALI
The Examiner’s Prima Facie Case
In the first obviousness rejection, the Examiner cited Ramji as
disclosing that all of the ingredients recited in Appellant’s claims were
useful in an oral care composition. Ans. 3–4. The Examiner conceded that
Ramji’s compositions differ from Appellant’s claimed composition in that
Ramji does not disclose combining the ingredients “in an anticipatory
fashion. Nevertheless, it would have been obvious to have made this
combination because the combination was suggested.” Id. at 4.
In particular, the Examiner reasoned, “[s]ince this modification of the
prior art represents nothing more than ‘the predictable use of prior art
elements according to their established functions’ a prima facie case of
obviousness exists.” Ans. 4 (quoting KSR Int’l Co. v. Teleflex Inc., 550 U.S.
398, 417 (2007)).

3 US 2008/0008665 A1 (published Jan. 10, 2008).
4 US 6,169,118 B1 (issued Jan. 2, 2001).
5 US 5,002,970 (issued Mar. 26, 1991).
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The Examiner further reasoned, as to the concentrations of cinnamic
aldehyde, eugenol, and eucalyptol recited in Appellant’s claim 1, that it
would have been obvious “to have added the three flavors in a 1:1:1 ratio or
adjusted the amounts accordingly motivated by the desire to deliver the
agents to obtain optimal efficacy to flavor the oral composition, as supported
by case law.” Ans. 5 (citing In re Aller, 220 F.2d 454 (CCPA 1955)).
Although not cited in the body of the first rejection, the Examiner
relied on Bilali as evidence that a skilled artisan would have had a
reasonable expectation of success in masking the taste of zinc citrate with
the flavor system described in Ramji. See Ans. 9.
Analysis
[T]he examiner bears the initial burden . . . of presenting a
prima facie case of unpatentability. . . .
After evidence or argument is submitted by the applicant in
response, patentability is determined on the totality of the
record, by a preponderance of evidence with due consideration
to persuasiveness of argument.
In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992); see also In re Jung, 637
F.3d 1356, 1365 (Fed. Cir. 2011) (holding that requiring an applicant to
identify “reversible error” in an examiner’s rejection is consistent with long
standing Board practice).
Having carefully considered all of the evidence and argument
presented by Appellant and the Examiner, we are not persuaded that
Appellant has shown reversible error in the Examiner’s conclusion of
obviousness as to Appellant’s representative claim 1.
As the Supreme Court explained in KSR v. Teleflex, “when a patent
‘simply arranges old elements with each performing the same function it had
been known to perform’ and yields no more than one would expect from
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such an arrangement, the combination is obvious.” KSR, 550 U.S. at 417
(quoting Sakraida v. Ag Pro, Inc., 425 U.S. 273 (1976)).
In the present case, Appellant does not dispute the Examiner’s finding
that Ramji discloses every one of the ingredients recited in Appellant’s
representative claim 1 as being useful in an oral care composition. Indeed,
Ramji discloses incorporating a flavor system into an oral care composition
at a concentration range of “from about 0.01% to about 5%, by weight of the
composition” (Ramji ¶ 24), a concentration range that entirely overlaps the
range of about 0.5 to about 2.5% by weight recited in Appellant’s claim 1
for the claimed flavor component.
Ramji’s Examples I and II disclose using seven of the nine ingredients
recited in the flavor component of Appellant’s claim 1. See Ramji ¶¶ 90, 91
(Ramji’s Examples I and II including corn mint oil, anethole, menthol,
peppermint oil, cinnamic aldehyde (5% cinnamaldehyde), WS-3 coolant (N-
ethyl-para-menthan-3-carboxamide),6 and spearmint oil). We note,
moreover, that the 5% cinnamaldehyde in Ramji’s Example I meets the
requirement in Appellant’s claim 1 for the flavor component to contain
greater than 0.1% by weight cinnamic aldehyde.
Although Ramji’s exemplified flavor systems do not contain the
eugenol or eucalyptol recited in Appellant’s claim 1, Ramji discloses that
those ingredients are useful in its flavor systems. See Ramji ¶ 33 (“In
addition to the mint oil(s) and protectant(s), the flavor system may comprise
additional flavor ingredients including but not limited to . . . eugenol,
eucalyptol . . . .”). Given the useful concentration ranges of the other

6 Ramji discloses that “N-ethyl-p-menthan-3-carboxamide, [is] known
commercially as ‘WS-3.’” Ramji ¶ 34.
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components of its flavor systems, we discern no error in the Examiner’s
determination that a skilled artisan would have considered it obvious to
include at least 0.1% by weight of eugenol, and at least 0.5% by weight of
eucalyptol, as recited in Appellant’s claim 1, in Ramji’s flavor system. See
Ramji ¶¶ 90, 91 (Ramji’s Examples I and II including flavoring ingredients
at concentrations ranging from 3% to 40% by weight).
As to the about 0.01% to about 5% by weight of zinc citrate in the
overall composition of Appellant’s representative claim 1, we note Ramji’s
disclosure that oral compositions containing its flavor system include zinc
compounds at concentrations ranging from 1% by weight to 8% by weight.
Ramji ¶ 93 (Example III). Although none of the exemplified zinc
compounds is zinc citrate, Ramji discloses that zinc, in the form of zinc
citrate, was a useful anticalculus agent. See Ramji ¶ 43. Accordingly, we
discern no error in the Examiner’s determination that a skilled artisan would
have considered it obvious to include zinc citrate, at a concentration
encompassed by Appellant’s claim 1, in an oral care composition that also
contained Ramji’s flavor system.
In sum, for the reasons discussed, we agree with the Examiner that a
skilled artisan would have had good reason for, and a reasonable expectation
of success in, incorporating each of the ingredients recited in Appellant’s
representative claim 1, at concentrations encompassed by claim 1, into an
oral care composition. We therefore also agree with the Examiner that the
process of Appellant’s claim 1 would have been obvious, given the absence
on the current record of any specific evidence of unexpected results coming
from the claimed process. See KSR, 550 U.S. at 417 (“[W]hen a patent
simply arranges old elements with each performing the same function it had
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been known to perform and yields no more than one would expect from such
an arrangement, the combination is obvious.”) (internal quotations omitted).
We acknowledge, as Appellant contends, that Ramji’s focus was on
using its flavor system to prevent malodor resulting from stannous
compounds, as opposed to masking the taste of zinc compounds as recited in
Appellant’s claim 1. See Appeal Br. 3–6; Reply Br. 2–5; see also Ramji ¶
92 (“Oral compositions containing stannous and a flavor system comprising
a mint oil with a protectant will not have an off odor and flavor.”).
As discussed above, however, a skilled artisan had good reason for,
and a reasonable expectation of success in, incorporating each of the
ingredients recited in Appellant’s representative claim 1, at concentrations
encompassed by claim 1, into an oral care composition. The fact that the
prior art’s reasons for performing the process of Appellant’s claim 1 differ
from Appellant’s reasons does not demonstrate that the claimed process
would have been unobvious. See KSR, 550 U.S. at 419 (“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.”).
We acknowledge that the preamble of claim 1 states that the claim is
directed to a “[m]ethod for improving the taste of an oral care composition
containing a zinc salt.” Appeal Br. 8.
As our reviewing court has explained, however, “where 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, the
preamble is not a claim limitation.” Rowe v. Dror, 112 F.3d 473, 478 (Fed.
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Cir. 1997); see also Bristol-Myers Squibb Co. v. Ben Venue Labs., Inc., 246
F.3d 1368, 1375–76 (Fed. Cir. 2001) (holding that, as to process claims, a
preamble recitation that merely expresses the purpose of performing the
claimed steps is not a limitation on the process where the body of the claim
fully sets forth the steps required to practice the claimed process, and where
the preamble recitation does not affect the how the claimed steps are to be
performed).
Here, all of the steps required to achieve the preamble-recited
objective of improving the taste of the claimed composition—incorporation
of the flavor component containing the claimed ingredients—are recited in
the body of claim 1. We are not persuaded, therefore, that the preamble’s
recitation of the purpose of performing the claimed steps distinguishes the
claimed process from the process suggested by Ramji.
We acknowledge the recitation in claim 1 that the claimed process
“comprises incorporating an effective amount of a flavor component into an
oral care composition containing a zinc salt to mask the taste of the zinc
salt.” Appeal Br. 8. Claim 1, however, expressly specifies the effective
amount of the flavor component as a concentration of from about 0.5 to
about 2.5%, by weight, based on the overall composition. Appeal Br. 8.
As discussed above, Ramji discloses incorporating a flavor system
into an oral care composition at a concentration range that entirely overlaps
the claimed effective amount of the flavor component, and suggests
incorporating each of the ingredients in the flavor component of Appellant’s
claim 1 into oral care compositions, at concentrations encompassed by claim
1. We are not persuaded, therefore, that claim 1’s recitation of an amount of
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the flavor component effective to mask the taste of the zinc salt
differentiates the claimed process from the process suggested by Ramji.
We are also not persuaded that the Examiner failed to advance
evidence that a skilled artisan would have had a reasonable expectation of
success that the composition suggested by Ramji would mask the taste of
zinc citrate. See Appeal Br. 5–6; Reply Br. 4–5.
As noted above, the Examiner cited Bilali to rebut Appellant’s
arguments as to reasonable expectation of success. Ans. 9. In that regard,
we note Bilali’s disclosure of incorporating menthol, peppermint oil,
spearmint, and anethole into dentifrice compositions (Bilali 5:13–45), and
Bilali’s teaching that “[i]n blind taste tests, it is found that the dentifrice
compositions containing the masking/flavoring compositions in the
Examples exhibit ‘good tasting’ properties and without any trace of the
unpleasant metallic taste of zinc compounds.” Bilali 5:47–50.
Given the teachings in Bilali, we are not persuaded that the Examiner
erred in determining that, in preparing the menthol, peppermint oil,
spearmint, and anethole-containing compositions suggested by Ramji, a
skilled artisan would have reasonably expected that the taste of the zinc
citrate in Ramji’s compositions would be masked. Nor are we persuaded
that masking the zinc taste would have been unexpected. Given the
teachings in Bilali, moreover, Appellant does not persuade us that, in using
the flavor component recited in claim 1, Appellant recognized and addressed
a problem that had not been recognized in the prior art. See Appeal Br. 5;
Reply Br. 3.
Lastly, to the extent Appellant contends that the present case is
controlled by the decisions in Leo Pharmaceutical Products, Ltd. v. Rea, 726
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F.3d 1346 (Fed. Cir. 2013) and In re Stepan, 868 F.3d 1342 at 1346 (Fed.
Cir. 2017), we decline to consider those arguments, because they were
submitted for the first time in the Reply Brief, despite the fact that they
could have been presented previously. See Reply Br. 3–4; see also 37
C.F.R. § 41.41(b)(2) (“Any argument raised in the reply brief which was not
raised in the appeal brief, or is not responsive to an argument raised in the
examiner’s answer, including any designated new ground of rejection, will
not be considered by the Board for purposes of the present appeal, unless
good cause is shown.”); Ex parte Borden, 93 USPQ2d 1473, 1477 (BPAI
2010) (The reply brief is not “an opportunity to make arguments that could
have been made in the principal brief on appeal to rebut the Examiner’s
rejections, but were not.”) (“Informative”).
In sum, for the reasons discussed, Appellant does not persuade us of
error in the Examiner’s conclusion of obviousness as to claim 1 in view of
Ramji, as evidenced by Bilali. We therefore affirm the Examiner’s rejection
of claim 1 over those references. Because they were not argued separately,
claims 2, 8, and 19–22 fall with claim 1. 37 C.F.R. § 41.37(c)(1)(iv).
OBVIOUSNESS—
RAMJI IN VIEW OF EBY
The Examiner’s Prima Facie Case
In the second obviousness rejection, the Examiner again cited Ramji
as disclosing that all of the ingredients recited in Appellant’s claims were
useful in an oral care composition, and again reasoned that the
concentrations of cinnamic aldehyde, eugenol, and eucalyptol recited in
Appellant’s claim 1 would have been obvious based on Ramji’s teachings.
Ans. 5–7. The Examiner conceded that Ramji’s compositions differ from
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Appellant’s claimed composition in that Ramji “do[es] not disclose the
composition mask[s] the taste of zinc.” Id. at 6.
The Examiner cited Eby as teaching that “anethole can effectively and
pleasantly flavor mask compositions comprising zinc to eliminate or greatly
reduce the unpalatable taste and aftertaste of such zinc compounds (col. 3,
lines 26-33).” Ans. 6.
The Examiner reasoned, therefore, that a skilled artisan would have
considered it obvious “to have masked the taste of the zinc when used in the
composition of Ramji et al. [with] the disclosed flavoring system because
Eby . . . discloses that anethole effectively masks the taste of zinc and
anethole is a flavoring used in the compositions of Ramji.” Ans. 6.
Analysis
Having carefully considered all of the evidence and argument
presented by Appellant and the Examiner, we are not persuaded that
Appellant has shown reversible error in the Examiner’s conclusion of
obviousness as to Appellant’s representative claim 1 over Ramji and Eby.
For the reasons discussed above, based on the teachings in Ramji, we
agree with the Examiner that a skilled artisan had good reason for, and a
reasonable expectation of success in, incorporating each of the ingredients
recited in Appellant’s representative claim 1, at concentrations encompassed
by claim 1, into an oral care composition. Eby, in addition, discloses that
“ionizable zinc compounds such as zinc gluconate, zinc ascorbate and zinc
acetate can be effectively and pleasantly flavor masked with anethole, (trans-
Anethole; l-Methoxy-4-(1-propenyl)benzene; p-Propenylanisole), to
eliminate or greatly reduce the unpalatable taste and aftertaste of such zinc
compounds.” Eby 3:27–33.
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Given Eby’s teaching, we agree with the Examiner that a skilled
artisan preparing a zinc citrate-containing composition as taught in Ramji
had a good reason for, and a reasonable expectation of success in, ensuring
that the anethole component of Ramji’s flavoring system was incorporated
into Ramji’s oral care composition, so as to mask the flavor of the zinc
citrate. We therefore also agree with the Examiner that the process recited
in Appellant’s claim 1 would have been obvious to a skilled artisan.
Appellant’s arguments do not persuade us to the contrary. Given
Eby’s teaching that anethole masks the flavor of zinc compounds, Appellant
does not persuade us that a skilled artisan lacked a reasonable expectation of
success in masking the taste of zinc citrate when using Ramji’s anethole-
containing flavor systems, or that Appellant solved an unknown problem in
the art by masking the taste of zinc citrate by incorporating a flavor system
suggested by Ramji into an oral care composition.
Appellant contends that the following passage in Eby teaches away
from the invention of Appellant’s claim 1:
[I]t shall be readily understood that incorporation of menthol
and eucalyptol have no significant effect on the zinc ion flavor-
masking efficacy of anethole and that similar examples of zinc
lozenges and other compositions flavor-masked with anethol
but without menthol, eucalyptol or any other flavoring were
demonstrated equivalent in flavor-masking ability to the
examples shown herein with menthol or eucalyptol.
Eby 6:9–17; see also Appeal Br. 6 (arguing that “Eby actually teaches away
from using eucalyptol and/or menthol”); Reply Br. 6.
We are not persuaded. While Eby teaches that menthol and
eucalyptol do not significantly affect anethole’s capacity to mask the taste of
zinc compounds, Eby is not the sole reference applied in this rejection. As
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noted above, Ramji teaches that menthol and eucalyptol are useful
components of a flavor system incorporated into an oral care composition
that contains stannous compounds as well as zinc compounds. See Ramji
¶¶ 90, 91 (Ramji’s Examples I and II including menthol); id. ¶ 33 (disclosing
eucalyptol as useful ingredient in flavoring system).
Thus, when the teachings of Eby and Ramji are properly viewed
together, we are not persuaded that the disclosure in Eby identified by
Appellant teaches away from incorporating menthol and eucalyptol into an
oral care composition that, in addition to zinc citrate as taught by Ramji, also
contains the stannous compounds taught by Ramji. See In re Merck & Co.,
Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (“Non-obviousness cannot be
established by attacking references individually where the rejection is based
upon the teachings of a combination of references. . . . [The reference] must
be read, not in isolation, but for what it fairly teaches in combination with
the prior art as a whole.”).
In sum, for the reasons discussed, Appellant does not persuade us of
error in the Examiner’s conclusion of obviousness as to claim 1 in view of
Ramji and Eby. We therefore affirm the Examiner’s rejection of claim 1
over those references. Because they were not argued separately, claims 2, 8,
and 19–22 fall with claim 1. 37 C.F.R. § 41.37(c)(1)(iv).
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DECISION SUMMARY
In summary:
Claim(s)
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
1, 2, 8,
19–22
103(a) Ramji, Bilali 1, 2, 8, 19–22
1, 2, 8,
19–22
103(a) Ramji, Eby 1, 2, 8, 19–22
Overall
Outcome
1, 2, 8, 19–22
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). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED