Sarita Mello et al.

Patent Trials and Appeals Board

Nov 23, 2020

2020003253 (P.T.A.B. Nov. 23, 2020)

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.
14/409,497 12/19/2014 Sarita Mello 9647-00-US-01-OC 4525
23909 7590 11/23/2020
COLGATE-PALMOLIVE COMPANY
909 RIVER ROAD
PISCATAWAY, NJ 08855
EXAMINER
BROWN, COURTNEY A
ART UNIT PAPER NUMBER
1617
NOTIFICATION DATE DELIVERY MODE
11/23/2020 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 SARITA MELLO, MICHAEL PRENCIPE, STEVE FISHER,
PIERRE LAMBERT, JEAN-PAUL DELVENNE, and ROBERT VOGT
__________

Appeal 2020-003253
Application 14/409,497
Technology Center 1600
__________

Before FRANCISCO C. PRATS, JEFFREY N. FREDMAN, and
ULRIKE W. JENKS, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal1 under 35 U.S.C. § 134 involving claims to a
dentrifice 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 App. Br. 2). We have considered the Specification
of Dec. 19, 2014 (“Spec.”); Final Office Action of Mar. 29, 2019 (“Final
Action”); Appeal Brief of Oct. 3, 2019 (“Appeal Br.”); Examiner’s Answer
of Jan. 27, 2020 (“Ans.”); and Reply Brief of Mar. 27, 2020 (“Reply Br.”).
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Statement of the Case
Background
“High-water toothpastes are desirable, as they can reduce the amount
of ingredients, such as custom silica abrasives, but they are technically
challenging. When the level of water in a formulation is higher than 20%,
the flavor delivery and rheological profile may become unacceptable” (Spec.
¶ 1). “Thickening systems to enhance the viscosity at higher water levels are
known, but may interfere with the flavor, and may not provide a desirable
rheology” (id.). “We have found that incorporating microcrystalline
cellulose into high-water dentifrice formulations greatly improves the flavor
delivery and rheology profile” (id. ¶ 4).
The Claims
Claims 1, 2, 4–9, and 12 are on appeal. Independent claim 1 is
representative and reads as follows:
1. A dentifrice composition comprising by weight
a. 35–45% of water;
b. 1% of a component for enhancing flavor delivery and
rheological profile comprising:
b1. 81.2%–88.7% of a microcrystalline cellulose; and
b2. 11.3–18.8% of sodium carboxymethylcellulose;
wherein the weight percentage of b1. and b2. is based on
the total weight of component b; and
c. an effective amount of a silica abrasive, wherein the silica
abrasive component comprises 15–25% of the composition;
d. 1–3 % PVM/MA copolymer having an average molecular
weight (M.W.) of about 30,000 to 1,000,000;
e. 25%–35% glycerin; and
f. 0.5–2% of an additional source of sodium carboxymethyl
cellulose.

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The issue
The Examiner rejected claims 1, 2, 4–9, and 12 are under 35 U.S.C.
§ 103(a) as obvious over Masters,2 Boyd,3 and Porter4 (Final Act. 4–11).
The Examiner finds Masters teaches “a silica abrasive dentifrice” that
comprises a cellulose gel in amounts of 0.1 to about 1.0 % and may be
Avicel RC-591-F which comprises 88% microcrystalline cellulose and 12%
sodium carboxymethyl cellulose (Final Act. 5). The Examiner finds Masters
also teaches 15 to 30% of silica abrasive and about 20 to about 70% by
weight of humectant, including glycerin (id. at 5–6). The Examiner finds
Masters teaches gum thickeners like carboxymethylcellulose may be
included in the dentifrice compositions at amounts of 0.25 to 2.5% (id. at 6).
The Examiner acknowledges Masters does not teach “a methyl vinyl
ether/maleic anhydride (PVM/MA) copolymer having an average molecular
weight . . . of about 30,000 to about 1,000,000” or the particular size ratio of
abrasives required by dependent claim 4 (Final Act. 8; underlining omitted).
The Examiner finds Boyd teaches “a dentifrice composition which
includes PVM/MA copolymer used as an enhancing agent” (Final Act. 8).
The Examiner finds Porter teaches “the use of abrasive materials that
comprise very small particles” (id. at 8–9).
The Examiner finds it obvious to modify Master’s composition with
Boyd’s PVM/MA enhancing agent because the agent “carries anti-bacterial
agents to tooth and gum surfaces thereby delivering said agents to said
surfaces” (Final Act. 9; underlining omitted). The Examiner also finds it

2 Masters et al., US 5,601,803, issued Feb. 11, 1997.
3 Boyd et al., US 2006/0141039 A1, published June 29, 2006.
4 Porter et al., US 2012/0052025 A1, published Mar. 1, 2012.
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obvious to substitute Porter’s abrasive agents for those in Master’s
composition because Porter teaches small particles are particularly useful in
formulations targeted at reducing hypersensitivity (id. at 10).
The issues with respect to this rejection are:
(i) Does a preponderance of the evidence of record support the
Examiner’s conclusion that Masters, Boyd, and Porter render the claims
obvious?
(ii) If so, has Appellant provided evidence of unexpected results that
when balanced with the prima facie case supports a finding of
unobviousness?
Findings of Fact
1. Masters teaches “silica abrasive toothpastes and dental gels
having improved physical properties and flavor” (Masters 1:9–10).
2. Masters teaches, regarding element “a” of claim 1, that the
“dentifrice compositions of this invention generally comprises about 6 to
about 60% by weight of water” and the “water content preferably ranges
from about 10 to about 40%” (Masters 2:30–35).
3. Masters teaches, regarding element “b” of claim 1, that the
“cellulose gel is present in the dentifrice compositions of the present
invention at a concentration of about 0.1 to about 1.0% by weight” (Masters
2:26–28).
4. Masters teaches, regarding elements “b1” and “b2” of claim 1,
that a “cellulose gel preferred for use in the practice of the present invention
is Avicel RC-591-F” that has proportions of microcrystalline cellulose and
sodium carboxymethylcellulose as shown in the table below:
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The Table above shows 88% microcrystalline cellulose and 12%
carboxymethyl cellulose.
5. Masters teaches, regarding element “c” of claim 1, that the
“dentifrice compositions of the present invention contain from about 15 to
about 30% by weight and preferably about 18 to about 24% by weight of a
silica abrasive” (Masters 1:58–60).
6. Masters teaches, regarding element “e” of claim 1, that the
dentrifice may include “about 20 to about 70% by weight of humectant” and
suitable humectants include “glycerin” (Masters 2:34–39).
7. Master teaches, regarding element “f” of claim 1, that
“[e]xamples of such gum thickeners include . . . salts of cellulose
ethers such as carboxymethylcellulose” and that these “[g]um thickeners are
included in the dentifrice compositions of the present invention at a
concentration of about 0.25 to about 2.5% by weight” (Masters 2:54–56,
2:62–64).
8. Masters teaches “[a]ntibacterial agents may also be included in
the oral compositions of the present invention. Especially useful are non-
cationic antibacterial agents” (Masters 3:37–39).
9. Boyd teaches “oral compositions for treating and/or inhibiting
bacteria deposits (e.g., plaque) in the oral cavity . . . oral composition
can be at least one of a dentifrice” (Boyd ¶ 11).

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10. Boyd teaches “oral compositions preferably additionally
comprise an enhancing agent (EA)” and “[p]referably, the EA can
be a vinylmethylether/maleic anhydride copolymer (PVM/MA), such as any
one or more of the forms of GANTREZ®” (Boyd ¶¶ 30, 32).
11. Boyd teaches the EA can have “an average MW of about 100 to
about 1,000,000 . . . and can be present in the oral composition . . . from
about 0.05% to about 3% by weight” (Boyd ¶ 32).
12. Boyd teaches “attachment of . . . the anti-bacterial agent occurs
through physical entrapment thereof by the EA, especially when the EA is
a cross-linked polymer, the structure of which inherently provides increased
sites for such entrapment” (Boyd 36).
13. Porter teaches a dentrifice “formulation comprises about
3-about 8% SPS and about 25-about 45% of a conventional abrasive” (Porter
¶ 79).
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).
Analysis
We adopt the Examiner’s findings of fact and conclusion of law (see
Final Act. 4–11, FF 1–13) and agree that Masters, Boyd, and Porter render
claim 1 obvious. We address Appellant’s arguments below.
Prima Facie case
Appellant contends
Masters does not motivate one of skill in the art to formulate
high-water compositions containing 35-45 % water based on
the weight of the composition - See, e.g., Masters Example 1,
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which contains only 12% water. Masters generically discloses
“6 to 60% by weight of water,” but teaches that this range that
is “most preferably” about 12 to about 20% by weight," and in
Example 1, provides 12% water, thus teaching away from
higher water compositions. The Appellant's claims, on the
other hand, require “35-45% of water”; a narrow range well
outside the preferred or exemplified ranges taught by Masters.
(Appeal Br. 3).
We find this argument unpersuasive. Masters teaches the “dentifrice
compositions of this invention generally comprises about 6 to about 60% by
weight of water” and the “water content preferably ranges from about 10 to
about 40%” (FF 2). Masters’ 10–40% range completely overlaps the
claimed 35–45% range. “In cases involving overlapping ranges, we and our
predecessor court have consistently held that even a slight overlap in range
establishes a prima facie case of obviousness.” In re Peterson, 315 F.3d
1325, 1329, 1330 (Fed. Cir. 2003). And that Masters prefers a lower range
of water does not teach away because preferred embodiments do not
constitute a teaching away from a broader disclosure or non-preferred
embodiments. In re Susi, 440 F.2d 442, 446 n.3 (CCPA 1971).
Appellant contends
the very broad generic disclosure of Masters, with its
blazemarks, suggestions and preferences all pointing away from
the particularly recited ranges in the Applicants’ claims (i.e.,
‘35-45% of water’), does not render the Appellant’s particularly
claimed species obvious. That a claimed species or subgenus is
encompassed by a prior art genus does not establish prima facie
obviousness. In re Baird, 16 F.3d 380, 382, 29 USPQ2d 1550,
1552 (Fed. Cir. 1994).
(Appeal Br. 3). Appellant further contends
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the Examiner still needs demonstrate a motivation to modify the
amount of Avicel and the other claimed ingredients (i.e., higher
water content, higher glycerin content, addition of a PVM/MA
copolymer relative to the working examples in Masters),
together with a reasonable expectation that going contrary to
the express preferences of Masters would still lead to success.
(Id. at 4).
We find this argument unpersuasive for a number of reasons. First,
Baird is inapposite to the present case, because Baird deals with a situation
of selecting a specific chemical structure from an immense genus of possible
structures and where “there is nothing in the disclosure [of the prior art]
suggesting that one should select such variables.” Baird, 16 F.3d at 382. In
the present case, Masters teaches ranges of water, of microcrystalline
cellulose, carboxymethylcellulose, silica abrasive, and glycerin that overlap
the ranges recited in claim 1. These overlapping ranges “establish[] a prima
facie case of obviousness.” Peterson, 315 F.3d at 1329.
Second, obviousness does not require teaching/suggestion/motivation
as argued by Appellant, but simply “a reason that would have prompted a
person of ordinary skill in the relevant field to combine the elements in the
way the claimed new invention does.” KSR, 550 U.S. at 418. Here, the
Examiner provides such reasons, with the selection from within the ranges
being disclosed by Masters and the reasons to include the PVM/MA being to
obtain the benefit of enhancing agents (see Final Act. 9–10).
Third, Master’s teaching of acceptable ranges for the various
components in a dentrifice provides a reasonable expectation of success.
Masters is a published US patent and as such, “is presumptively enabling
barring any showing to the contrary by a patent applicant.” In re Antor
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Media Corp., 689 F.3d 1282, 1288 (Fed. Cir. 2012). No such showing has
been made by Appellant.
Appellant contends:
In the product specification submitted for Avicel CL-
611 (originally submitted January 30, 2015), the
amount of carboxymethylcellulose listed in the
product specification is “11.3%-18.8%,” which is not
the same as the range for Avicel RC-591. Thus, one
of skill in the art would recognize that component “b”
of Appellant’s Claim 1 would correspond to Avicel
CL-611, and this specific range would indicate to one
of skill in the art that the claims were limited to a
specific type of Avicel.
(Appeal Br. 4). Appellant contends “[i]n view of these art-recognized
functional differences, the Examiner has not demonstrated why one of skill
in the art would have been motivated to replace the Avicel RC-591 in
Masters with Avicel CL-611” (id. at 5).
We find this argument unpersuasive. The Avicel RC-591-F
composition disclosed by Masters has 88% microcrystalline cellulose and
12% carboxymethylcellulose (FF 4), values that fall within the ranges
recited for elements “b1” and “b2”. Thus, that type of Avicel satisfies the
recited requirements of claim 1. Also, none of the claims specifically
require Avicel CL-611 and this argument is therefore irrelevant to the claims
as they currently stand. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982)
(“[A]ppellant’s arguments fail from the outset because . . . they are not based
on limitations appearing in the claims.”). Thus, the Examiner did not need a
reason to replace one Avicel with another because the claims are not limited
to a particular Avicel composition.
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Unexpected Results
Appellant contends that “the formulations were tested against a
control, and that ‘0.5% Avicel does not provide any taste improvement, and
1 % has a significant improvement on flavor delivery. The addition of
Avicel moreover results in higher viscosity compared to control, as well as
higher elasticity, resulting in improved squeezing quality”’ (Appeal Br. 6).
Appellant contends the Specification “provided consumer data that the
addition of 0.5% Avicel CL-611 does not appear to provide ‘any taste
improvement’” (id.). Appellant contends “it is improper for the Examiner to
require a comparison with a ‘teaching of Masters,’ by which the Examiner
evidently means a comparison with a hypothetical formulation using Avicel
RC-591 in comparison to Avicel CL-611. The appropriate comparison is
with the compositions actually disclosed in the prior art reference” (id.).
Appellant contends the “criticality of the range of Avicel CL-611, which is
reflected in the pending claims, should not be contingent on providing
comparative data with Avicel RC-591” (id. at 7).
We find these arguments unpersuasive for several reasons. First, as
already noted above, the claims do not recite a specific type of Avicel, and
thus, the claims are not limited to a particular Avicel composition.
Therefore, to the extent that a result is obtained with Avicel CL-611, that
result is not commensurate in scope with the broader claim that encompasses
any composition with 81.2%–88.7% of a microcrystalline cellulose and
11.3–18.8% of sodium carboxymethylcellulose as recited in claim 1.
Moreover, if Appellant is correct that other compositions such as Avicel RC-
591 do not yield the result, then the evidence is not commensurate in scope
with a claim that encompasses these compositions. Unexpected results must
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be “commensurate in scope with the degree of protection sought by the
claimed subject matter.” In re Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005).
Second, the Specification never indicates that these improved
properties of Avicel are, in fact, unexpected. “[A]ny superior property must
be unexpected to be considered as evidence of non-obviousness.” Pfizer,
Inc. v. Apotex, Inc., 480 F.3d 1348, 1371 (Fed. Cir. 2007). The only
indication that any of these properties constitutes an unexpected result is
attorney argument in the brief, because the Specification simply states “1%
has a significant improvement on flavor delivery. The addition of Avicel
moreover results in higher viscosity compared to control, as well as higher
elasticity, resulting in improved squeezing quality” (Spec. 40). The
Specification never states that these results are unexpected. Attorney
argument cannot take the place of evidence. In re Pearson, 494 F.2d 1399,
1405 (CCPA 1974).
While we agree with Appellant that the Examiner cannot require a
comparison to a hypothetical obvious composition, the Examiner may
require a comparison to the actual composition A in Example 1 of Masters,
which contains many of the claimed components in similar amounts. No
such comparison is provided. See In re Baxter Travenol Labs., 952 F.2d
388, 392 (Fed. Cir. 1991) (“[W]hen unexpected results are used as evidence
of nonobviousness, the results must be shown to be unexpected compared
with the closest prior art.”).
Conclusion of Law
(i) A preponderance of the evidence of record supports the Examiner’s
conclusion that Masters, Boyd, and Porter render the claims obvious.
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(ii) Appellant has not provided evidence of unexpected results that
when balanced with the prima facie case supports a finding of
unobviousness.

DECISION SUMMARY
In summary:
Claims
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
1, 2, 4–9, 12 103(a) Masters, Boyd,
Porter
1, 2, 4–9, 12

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