PTAB Reverses Obviousness Rejection Based On Overlapping Ranges And Affirms Double-Patenting Rejection With Terminal Disclaimer

• Published date: 19 December 2022
• Subject Matter: Intellectual Property, Patent
• Law Firm: Oblon, McClelland, Maier & Neustadt, L.L.P
• Author: Ms Grace E. Kim and Chris Tuinenga

Colgate-Palmolive Co. appealed the Examiner's rejection of U.S. Application No. 15/530,725 (filed June 26, 2017) as indefinite under 35 U.S.C. '112(b) and obvious under '103 in light of U.S. Application No. 2007/0025928 A1 (published February 1, 2007), 'Glandorf.' The PTAB reversed the Examiner's rejections under '112(b) and several of the Examiner's rejections based on the Glandorf reference but affirmed an obviousness-type double patenting rejection over U.S. Patent No. 10,350,151 B2 (issued July 16, 2019) to Qiao in view of Glandorf. The Board quickly dispatched the Examiner's indefiniteness rejection based on the claims' express limitation that the complex must have a 20:1 phosphorous to zinc mole ratio before focusing on the obviousness rejections.

Obviousness Rejection

The '725 Application is directed towards 'a soluble zinc polyphosphate complex for use in personal care compositions and methods of making the complex.' Claim 1 recites:

1. An oral care composition, comprising:
a soluble zinc polyphosphate complex, made by combining zinc citrate and sodium hexametaphosphate, and water;
wherein the relative amounts of zinc citrate and sodium hexametaphosphate produce the soluble zinc polyphosphate complex with a phosphorous to zinc mole ratio of 20:1.

Glandorf's abstract discloses 'oral compositions comprising a stannous ion source, a polyvalent cation source and a mineral surface active agent [(MSA)],' wherein '[t]he mineral surface active agents are agents that are substantive to mineral surfaces such as teeth and have chelating activity for polyvalent cations including . . . zinc (Zn+2)' and preferably 'include polymers or copolymers containing phosphate, phosphonate, or carboxy groups.' Glandorf also discloses preferred embodiments where the MSA includes zinc and copolymers which contain phosphates, phosphonates, or carboxy groups. Glandorf also discloses preferred polyvalent cations that include zinc citrate.

Specifically, the Board focused on the following portion in Glandorf:

A preferred polymeric MSA is a polyphosphate. A polyphosphate is generally understood to consist of two or more phosphate molecules arranged primarily in a linear configuration, although some cyclic derivatives may be present. Particularly effective are polyphosphates having an average chain length of about four or more phosphate groups so that surface adsorption at effective concentrations produces sufficient non-bound phosphate functions which enhance the anionic surface charge as...