Ex Parte Chew et al

Patent Trial and Appeal Board

Jul 27, 2016

10764215 (P.T.A.B. Jul. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
10/764,215
132446 7590
Mars Petcare
Theresa Shearin
FILING DATE
01/23/2004
07/29/2016
315 Cool Springs Blvd.
Franklin, TN 37067
FIRST NAMED INVENTOR
Boon Peng Chew
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
IAM0043 US 9145
EXAMINER
ANDERSON, JAMES D
ART UNIT PAPER NUMBER
1629
NOTIFICATION DATE DELIVERY MODE
07/29/2016 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):
mars.patents@effem.com
theresa.shearin@effem.com
becca.barnett@effem.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BOON PENG CHEW, MICHAEL GRIFFIN HAYEK,
and JEAN SOON PARK
Appeal2014-004739
Application 10/764,215
Technology Center 1600
Before DEMETRA J. MILLS, ULRIKE W. JENKS, and RYAN H. FLAX,
Administrative Patent Judges.
MILLS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134. The Examiner has rejected
the claims for obviousness. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appeal2014-004739
Application 10/764,215
STATEMENT OF CASE
The present invention is directed to methods and compositions which
are useful for attenuating inflammation, enhancing the immune response, or
enhancing longevity in a companion animal, wherein astaxanthin is utilized.
Spec. 1.
The following claim is representative.
1. A composition comprising astaxanthin, wherein the
composition is a nutritionally balanced pet food wherein said
composition attenuates inflammation, enhances immune response,
enhances longevity, or combinations thereof; wherein said
composition is selected from the group consisting of dog food
compositions, cat food compositions and combinations thereof.
Cited References
Hayek us 6, 133,323 Oct. 17, 2000
Jyonouchi et al, Immunomodulating 14ctions of Carotenoids:
Enhancement of In Vivo and In Vitro Antibody Production to T-Dependent
Antigens, 21 NUTRITION AND CANCER 47-58 (1994) ("Jyonouchi 1994").
Jyonouchi, et al., "Effect of Carotenoids on In Vitro Immunoglobulin
Production by Human Peripheral Blood Mononuclear Cells: Astaxanthin, a
Carotenoid Without Vitamin A Activity, Enhances In Vitro Immunoglobulin
Production in Response to a T-Dependent Stimulant and Antigen,"
NUTRITION AND CANCER 171-182 (1995). ("Jyonouchi 1995a").
Jyonouchi, et al., Astaxanthin, a Carotenoid without Vitamin A
Activity, Augments Antibody Responses in Cultures Including T-helper Cell
Clones and Suboptimal Does of Antigen] '2, 125AM. INST. OF NUTRITION
1483-1492, 1995. ("Jyonouchi 1995b").
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Application 10/764,215
Chew et al., A Comparison of the Anticancer Activities of Dietary fl-
Carotene, Canthaxanthin and Astaxanthin in Mice In Vivo, 19 ANTICANCER
RESEARCH 1849-1854 (1999). (Chew 1999a).
Chew et al., Dietary fl-Carotene and Axtaxanthin but not Canthaxanthin
Stimulate Splenocyte Function in Mice, 19 ANTICANCER RESEARCH 5223-
5228 ( 1999). ("Chew l 999b").
Kim et al., Modulation of Humoral and Cell-Mediated Immune Responses
by Dietary Lutein in Cats, 73 VETERINARY IMMUNOLOGY AND
IMMUNOPATHOLOGY 331-341 (2000). ("Kim").
Naguib, Antioxidant Activities of Astaxanthin and Related Carotenoids, 48 J.
AGRIC. FOOD CHEM. 1150-1154 (2000).
Terao, 24 LIPIDS 659-661 (1989).
Additional Appellants cited references
Gugger et al., fl-Carotene Uptake and Tissue Distribution in Ferrets
(Mustela putoriusfuro), 122 J. NUTRI. 115-119 (1992) ("Gugger").
Grounds of Rejection
Claims 1, 2, 4, and 6-9 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hayek.
FINDINGS OF FACT
The Examiner's findings of fact are set forth in the Answer at pages
3-14.
PRINCIPLES OF LAW
In making our determination, we apply the preponderance of the
evidence standard. See, e.g., Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427
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Application 10/764,215
(Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings
before the Office).
"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). In KSR, the
Supreme Court rejected a rigid application of a teaching-suggestion-
motivation test in the obviousness determination. The Court emphasized
that "the [obviousness] analysis need not seek out precise teachings directed
to the specific subject matter of the challenged claim, for a court can take
account of the inferences and creative steps that a person of ordinary skill in
the art would employ." Id. at 418.
When substituting equivalents known in the prior art for the same
purpose, an express suggestion to substitute one equivalent component or
process for another is not necessary to render such substitution obvious. In
re Fout, 675 F.2d 297, 301 (CCP,,L\ .. 1982); see also l\1PEP § 2144.06. All
that is required is a reasonable expectation of success, not absolute
predictability of success. See In re 0 'Farrell, 853 F.2d 894, 903 (Fed. Cir.
1988).
Obviousness analysis
We agree with the Examiner's fact finding, statement of the rejection
and responses to Appellants' arguments as set forth in the Answer. We find
that the Examiner has provided evidence to support a prima facie case of
obviousness. We provide the following additional comment to the
Examiner's argument set forth in the Final Rejection and Answer.
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Appeal2014-004739
Application 10/764,215
The Examiner finds that:
Hayek teaches a pet food supplement and process for enhancing
immune response and improving the overall health of
companion animals such as cats and dogs, and more
particularly to a pet food supplement and process which
includes beneficial amounts of beta-carotene in the animal's
diet (col. 1, lines 10-15).
Ans. 4. The Examiner further finds that:
Hayek teaches that carotenoids are naturally-occurring plant
pigments which are absorbed in varying degrees by different
species. Common carotenoids include beta-carotene, lycopene,
lutein, zeaxanthin, and astaxanthin. These carotenoids are
known to play an important role in modulating the immune
system and enhancing the health of these species (col. 1, lines
16-22).
Id. The Examiner concludes that, "[i]t would have been obvious to one of
ordinary skill in the art to modify the compositions comprising beta-carotene
taught by Hayek to generate a composition comprising another known
carotenoid such astaxanthin for use in a pet food composition for a
companion animal to enhance immune response." Ans. 7.
In response, Appellants argue that the Examiner has not established a
reasonable expectation of success from the substitution of astaxanthin for
beta-carotene. App. Br. 2. In particular, the Appellants argue that Hayek
does not "actually say that the carotenoids are interchangeable." App. Br. 3.
Appellants rely on their Specification which discloses that:
Although much is known about the carotenoids, it is difficult to
extrapolate from what is known about the effects of one
carotenoid in an animal to determine the effects that another
carotenoid may have in the same animal. It is also difficult to
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Application 10/764,215
determine what the effect of a single carotenoid may be in one
animal based upon previous findings in a different type of
animal. Carotenoid absorption and metabolism have been
determined to be species-specific. Carotenoid absorption and
metabolism have been determined to be species-specific. Cattle
and horses, for example, absorb beta-carotene, while goats and
sheep do not absorb carotenoids at all. (Schweigert, F.J., 1998).
After a 1931 study demonstrated that a large proportion of beta-
carotene provided to cats was not absorbed, many believed that
cats were unable to utilize beta-carotene until, Chew et al.
(2000) determined that domestic cats readily absorb beta-
carotene, and Schweigert et al. (2002) demonstrated that this
absorption is not accompanied by conversion of beta-carotene
to vitamin A, indicating that the effects of beta-carotene in cats
are not due to its function as a vitamin A precursor.
Even within a single animal, the carotenoids can exhibit
differential patterns of absorption. Lutein and zeaxanthin are
found concentrated in the human retina, while beta-carotene is
generally thought to be absent from retinal tissue due to its
inability to cross the blood retinal barrier.
Page 2, lines 4-20 of the Specification as originally filed.
Appellants also rely on the disclosures ofNaguib, Gugger, and Jyonouchi
1995 in support of patentability, which are argued as showing differences in
carotenoid activity. App. Br. 5.
In response, the Examiner argues that:
Appellants' citation of pertinent prior art knowledge is
incomplete and omits essential prior art knowledge that
supports the Examiner's position. In relying only on citation of
prior art discussing differences in carotenoids and omitting
prior art demonstrating similarities of different carotenoids,
Appellants present an incomplete picture of the common
knowledge of those skilled in the art.
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Ans. 11. The Examiner argues that, in addition to Hayek, the Kim,
Jyonouchi 1995, Naguib, Jyonouchi 1994, Chew 1999a, and Chew 1999b
references support a finding of unpatentability based on obviousness. The
Examiner argues that "the totality of the evidence of record does not support
Appellants' position that the skilled artisan would not reasonably expect
astaxanthin to have similar immunomodulatory activity as beta-carotene."
Ans. 13 (emphasis original).
We find that the Examiner has the better argument and that the
preponderance of the evidence supports a finding of unpatentability based on
obviousness. To begin, the claims do not require conversion ofbeta-
carotene to vitamin A. It is well known from Chew (2000) (quoted and cited
in Spec. at 2, as reproduced above) that cats are able to absorb beta-carotene,
lutein and astaxanthin, showing increases in antibody responses upon their
administration and therefore similar immune responses. Chew (2000), p.
1912, col. 2. Upon administration of these carotenoid forms, no further
processing is required by cats.
In response to the Examiner's prima facie case of obviousness,
Appellants provide no further evidence supporting that one of ordinary skill
in the art would understand that cats do not absorb astaxanthin. Gugger,
cited by Appellants, describes different types of carotenoid absorption in
primarily non-pet companion animals, so the relevance of Gugger is
questioned. Appellant argues that "Jyonouchi et al. reported that
astaxanthin, but not beta-carotene, enhanced IgM and IgA production by
human peripheral blood mononuclear cells and human cord blood
mononuclear cells in response to T-dependent antigen in vitro." See
Jyonouchi et al.., 23 NUTR CANCERl 71-183 (1995) ("Jyonouchi 1995a").
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Br. 4. However, Fig. 2 of Jyonouchi l 995a, show that both B-carotene and
astaxanthin increased IgM production, but astaxanthin increased IgM
production more significantly. Therefore, both B-carotene and astaxanthin
increased the immune response. Appellants argue "that astaxanthin may
reduce the risk of certain diseases of the eye, while canthaxanthin was
reported to cause adverse effects on the retina." Br. 5. Canthaxanthin was
not mentioned in the background section at col. 1 of Hayek as a carotenoid
known to modulate the immune system.
Furthermore, the Examiner cites multiple references on pages 11-12
of the Answer, showing similarities between carotenoids, to which
Appellants do not provide comment.
Based on the evidence of record, Appellants have not rebutted the
Examiner's prima facie case of obviousness by establishing lack of a
reasonable expectation of success on the evidence of record. All that is
required is a reasonable expectation of success, not absolute predictability of
success. See 0 'Farrell, 853 F.2d at 903. The balance and preponderance of
the evidence supports the Examiner's position and the obviousness rejection
is affirmed.
CONCLUSION OF LAW
The cited references support the Examiner's obviousness rejection,
which is affirmed for the reasons of record. All pending, rejected claims
fall.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l.136(a).
AFFIRMED
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