Ex Parte Frauchiger et al

Patent Trial and Appeal Board

Aug 9, 2017

13001989 (P.T.A.B. Aug. 9, 2017)

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.
13/001,989 12/29/2010 Marc Thierry Frauchiger 3712036-1210 5947
29157 7590 08/11/2017
K&T Oates T T .P-Phiraan
EXAMINER
P.O. Box 1135
CHICAGO, IL 60690
GWARTNEY, ELIZABETH A
ART UNIT PAPER NUMBER
1791
NOTIFICATION DATE DELIVERY MODE
08/11/2017 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):
USpatentmail@klgates.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARC THIERRY FRAUCHIGER, FERDINAND HASCHKE,
and CORINNE MAGLIOLA1
Appeal 2016-000298
Application 13/001,989
Technology Center 1700
Before CHUNG K. PAK, PETER F. KRATZ, and MONTE T. SQUIRE,
Administrative Patent Judges.
SQUIRE, Administrative Patent Judge.
DECISION ON APPEAL2
Pursuant to 35 U.S.C. § 134(a), Appellants appeal the Examiner’s
decision to finally reject claims 1, 2, and 4—15, which constitute all the
1 Appellants identify Nestec S.A. as the real party in interest. App. Br. 2.
2 In this Decision, we refer to the Specification filed December 29, 2010
(“Spec.”); Final Office Action dated December 29, 2014 (“Final Act.”);
Advisory Action dated March 11, 2015 (“Adv. Act.); Appeal Brief dated
March 25, 2015 (“App. Br.”); Examiner’s Answer to the Appeal Brief dated
July 24, 2015 (“Ans.”); and Reply Brief dated August 19, 2015 (“Reply
Br.”).
Appeal 2016-000298
Application 13/001,989
claims pending in this application. We have jurisdiction under 35 U.S.C.
§ 6(b). An Oral Hearing was held on July 25, 2017.3
For the reasons set forth below, we REVERSE.
The Claimed Invention
Appellants’ invention relates to a nutritional composition comprising
free amino acids. Spec. 1. According to the Specification, the claimed
nutritional composition provides enhanced nutritional value for use in infant
formula, especially for infants suffering from allergies, food allergies, cow
milk allergies, impaired intestinal absorption and/or conditions of acute or
chronic diarrhea, and for low birth weight infants. Spec. 1; see also
Abstract.
Claim 1 is illustrative of the claimed subject matter on appeal and is
reproduced below from the Claims Appendix to the Appeal Brief (App. Br.
20) (key disputed claim language italicized and bolded):
1. A nutritional composition comprising:
at least 99% of free amino acids (by weight based on total
amino acids content), the free amino acids comprising between
lg and 4g (expressed as protein equivalent) per 100 kcal of the
composition and comprising more than 0.1% and less than 4.5%
(w/w of total amino acids) of Glutamic acid;
long chain polyunsaturated fatty acids (LC-PUFA), the LC-
PUFA are between 0.05% (w/w) and 2% (w/w) of the lipids of
the composition, the LC-PUFA comprises arachidonic acid
(ARA) in an amount between 0.1% and 0.3% of the lipids of the
composition;
3 Appellants may only rely on, and we only consider, arguments that have
been relied upon in the Appeal Brief or Reply Brief. 37 C.F.R.
§ 41.47(e)(1).
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Appeal 2016-000298
Application 13/001,989
an energy density between 250 kcal and 750 kcal /100g of
the composition (dry matter);
a source of carbohydrates comprising between 8.0g and 16g
per 100 kcal of the composition;
medium-chain triglycerides in an amount between 20 and
35% of the lipids of the composition; and
structured lipids (SL) comprising fatty acid triglycerides
having between 18% and 50% of the palmitic acid residues in the
triglycerides in the sn2 position of the triglycerides.
The References
The Examiner relies on the following references as evidence in
rejecting the claims on appeal:
Gohman et al., US 2003/0054083 A1
(hereinafter “Gohman”)
Rangavajla et al., US 2006/0286210 Al
(hereinafter “Rangavajla”)
Meiri-Bendek et al., US 2007/0218169 Al
(hereinafter “Meiri-Bendek”)
Anthony et al., US 2008/0032002 Al
(hereinafter “Anthony”)
Mar. 20, 2003
Dec. 21, 2006
Sept. 20, 2007
Feb. 7, 2008
The Rejections
On appeal, the Examiner maintains the following rejections:
1. Claims 1,2,4, and 8—15 are rejected under pre-AIA
35 U.S.C. § 103(a) as being unpatentable over Anthony in view of Meiri-
Bendek (“Rejection 1”). Ans. 2; Final Act. 3.
2. Claims 5 and 6 are rejected under pre-AIA 35 U.S.C. § 103(a)
as being unpatentable over Anthony in view of Meiri-Bendek as applied to
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Appeal 2016-000298
Application 13/001,989
claim 1, and further in view of Rangavajla (“Rejection 2”). Ans. 7; Final
Act. 8.
3. Claim 7 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Anthony in view of Meiri-Bendek as applied to claim 1,
and further in view of Gohman (“Rejection 3”). Ans. 8; Final Act. 9.
OPINION
Rejection 1
The Examiner determines that the combination of Anthony and Meiri-
Bendek suggests a nutritional composition satisfying all of the limitations of
claim 1 and would have rendered claim 1 obvious. Ans. 2-4.
Regarding the recitation “medium-chain triglycerides in an amount
between 20 and 35% of the lipids of the composition” in claim 1, the
Examiner relies on Anthony for disclosing this limitation. Ans. 3. In
particular, the Examiner finds that paragraph 55 of Anthony discloses that
lipid sources can be any known or used in the art, including medium chain
triglyceride oil. Id. at 3 (citing Anthony | 55).
The Examiner concludes that, based on Anthony’s broad disclosure at
paragraph 55, it would have been obvious to one of ordinary skill in the art
at the time of the invention to have used any combination of lipids, including
wherein the medium chain triglyceride composition comprises between 20
and 35% of the lipids.
Appellants argue that the Examiner’s rejection of claim 1 should be
reversed because the cited references, whether alone or in combination, do
not disclose or suggest a nutritional composition comprising medium chain
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Appeal 2016-000298
Application 13/001,989
triglycerides in an amount between 20 and 35% of the lipids of the
composition, as required by the claim. App. Br. 7.
Appellants further argue that the cited art provides no motivation for
one of ordinary skill to select the claimed range of medium-chain
triglycerides and thus, would not have led one of ordinary skill in the art to
arrive at the claimed invention. Id. at 9, 10.
We agree with Appellants’ arguments in this regard. On the record
before us, we find that the Examiner has not established by a preponderance
of the evidence that the combination of Anthony and Meiri-Bendek teaches
or suggests the “medium-chain triglycerides in an amount between 20 and
35% of the lipids of the composition” limitation of claim 1, when viewed in
light of the Gohman reference.
As Appellants correctly point out (App. Br. 8), although paragraph 55
of Anthony discusses that lipid sources can be any known or used in the art,
e.g., vegetable oils such as palm oil, canola oil, com oil, soybean oil,
palmolein, coconut oil, medium chain triglyceride oil, high oleic sunflower
oil, high oleic safflower oil, and the like, there is no express teaching of a
nutritional composition comprising medium-chain triglycerides in an amount
between 20 and 35% of the lipids of the composition.
Although this disclosure of Anthony can be interpreted as suggesting
the employment of any amount of medium-chain triglycerides, including the
amount recited in claim 1, as Appellants argue (App. Br. 13; Reply Br. 2—3),
the prior art of record actually rebuts the Examiner’s findings in this regard
and teaches against the use of medium chain triglycerides in nutritional
compositions. For example, as Appellants point out (Reply Br. 2), the
Gohman reference teaches that using triglycerides formed with medium
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Application 13/001,989
chain fatty acids having in the range from C8 to Cl2 carbon atoms (i.e.,
medium chain triglycerides) fail to provide the required essential fats for an
at-risk infant and, as a result, a mixture of longer chain triglycerides having
in excess of 40 carbons per molecule, formed with fatty acids having in the
range from C12 to C20 carbon atoms (i.e., longer chain triglycerides) should
be used. Gohman 121; see also id. 15, 18 (disclosing the use of “long
chain triglycerides having in excess of 40 carbon atoms formed with fatty
acids having in the range from C12 to C20 carbon atoms” in nutritional
compositions).
The Gohman reference also suggests that, if used at all, medium-chain
triglycerides (e.g., C12 carbon atoms) be used in an amount that falls outside
of and does not overlap the claimed range of “between 20 and 35% of the
lipids of the composition.” In particular, paragraph 21 of Gohman explicitly
teaches that:
In the novel infant-formula the following combination of
triglycerides formed from fatty acids having chain lengths in
the range from C12 to C20, each triglyceride present in a range
from at least 10% to 15% of the total amount of triglycerides,
is found to be highly effective.
Id. ]f 21 (emphasis added).
The Examiner’s discussion at page 13 of the Answer does not
meaningfully address or otherwise rebut Appellants’ arguments in this
regard. See In re Hedges, 783 F.2d 1038, 1039 (Fed. Cir. 1986) (“if a prima
facie case is made in the first instance, and if appellant comes forward with
reasonable rebuttal, whether buttressed by experiment, prior art references,
or arguments, the entire merits of the matter are to be reweighed”); In re
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Application 13/001,989
Sullivan, 498 F.3d 1345, 1353 (Fed. Cir. 2007) (failure to meaningfully
address submitted evidence is error).
We, therefore, cannot sustain the Examiner’s determination that the
combination of Anthony and Meiri-Bendek, when weighed together with the
Gohman reference, would have suggested a nutritional composition
satisfying all of the limitations of claim 1 and that the combination would
have rendered the claim obvious.
Because claims 2 and 8—13 depend from claim 1 and claims 4, 14, and
15 include the same “medium-chain triglycerides in an amount between 20
and 35% of the lipids of the composition” limitation as claim 1, we also
cannot sustain the Examiner’s rejection of these claims.
Accordingly, we reverse the Examiner’s rejection of claims 1, 2, 4,
and 8—15 under 35 U.S.C. § 103(a) as being unpatentable over the
combination of Anthony and Meiri-Bendek.
Rejections 2 and 3
The foregoing deficiencies in the Examiner’s findings and conclusions
regarding the combination of Anthony and Meiri-Bendek are not remedied
by the Examiner’s findings regarding the additional references or
combination of references cited in support of the second and third grounds
of rejection. Accordingly, we also reverse Rejection 2 and Rejection 3.
DECISION
The Examiner’s rejections of claims 1, 2, and 4—15 are reversed.
It is ordered that the Examiner’s decision is reversed.
REVERSED
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