Ex Parte Lathan et al

Patent Trial and Appeal Board

Jul 13, 2016

13387419 (P.T.A.B. Jul. 13, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/387,419 03/27/2012
29157 7590
K&L Gates LLP-Chicago
P.O. Box 1135
CHICAGO, IL 60690
07115/2016
FIRST NAMED INVENTOR
Gaby Lathan
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.
3712036-01500 8283
EXAMINER
MARTIN, PAUL C
ART UNIT PAPER NUMBER
1653
NOTIFICATION DATE DELIVERY MODE
07/15/2016 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):
USpatentmail@klgates.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GABY LATHAN, JAMES MALCOM GROSJEAN, and
NORMAN ALAN GREENBERG. 1
Appeal2014-008227
Application 13/387,419
Technology Center 1600
Before DONALD E. ADAMS, JEFFREY N. FREDMAN, and
JOHN E. SCHNEIDER, Administrative Patent Judges.
SCHNEIDER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to a
nutritional composition containing fiber and probiotics, which stand rejected
as obvious. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
STATEMENT OF THE CASE
The invention relates to a nutritional composition comprising fiber
and a stable amount of probiotics. Spec. i-f 1. The composition comprises
agglomerated fiber particles with an average diameter of from 1.2 mm to 5
1 Appellants identify the Real Party in Interest as Nestec S.A. Appeal Br. 2.
Appeal2014-008227
Application 13/387,419
mm. Spec. iii! 4 and 5. The composition has a water activity of less than
0.015. Spec. if 4.
Claims 1-11 are on appeal. Claim 1 is illustrative and reads as
follows:
1. A nutritional composition comprising:
a fiber blend comprising agglomerated fiber particulates
and a pro biotic, the fiber blend having a water activity of less
than about 0.15, and the agglomerated fiber particulates have an
average diameter ranging between about 1.2 mm to about 5
mm.
The claims stand rejected as follows:
Claims 1---6 and 9-11 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Chiang et al., WO 2008/048731 Al (published Apr. 24,
2008) ("Chiang") in view of Barbosa-Canovas et al., FOOD POWDERS
PHYSICAL PROPERTIES, PROCESSING AND FUNCTIONALITY 175 (2005)
("Barbosa-Canovas").
Claims 7 and 8 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Chiang in view of Barbosa-Canovas further in view of
Holzapfel et al., Overview of gut flora and probiotics, 41 INT'L J. FOOD
MICROBIOL. 85-101 (1998) ("Holzapfel").
DISCUSSION
Issue
In rejecting the pending claims as obvious, the Examiner finds that
Chiang teaches a nutritional formulation comprising inulin, fructo-
oligosaccharide, gluco-oligosaccharide, galacto-oligosaccharide,
Lactobacillus and Bifidobacterium with a water activity of less than about
0.16. Final Act. 6. The Examiner also finds that Barbosa-Canovas teaches
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"a process for size enlargement, or agglomeration [of food particles], where
dried particles are rewetted with steam or water 'mists'; particles are then
mixed causing them to form clusters by collisions and the agglomerates have
a coarse, open structure from 0.1 to 3 mm." Final Act. 7. The Examiner
concludes that "[i]t would have been obvious to one of ordinary skill in the
art at the time the claimed invention was made to combine a nutritional
composition comprising the composition taught in Chiang et al. with the
process taught in Barbosa-Canovas et al., because Barbosa-Canovas et al.
teach methods to control porosity and density of materials in order to
influence properties like dispersibility [sic] and solubility." Id.
Appellants contend they have overcome the Examiner's prima facie
case of obviousness for claim 1 through evidence of unexpected results.
Appeal Br. 6. Appellants assert that the data in Example 1 of the
Specification shows that the compositions of the invention maintain better
probiotic viability over time when compared to the prior art. Id. Appellants
argue that the increased viability of the pro biotic would not be expected
from the cited references. Id.
Appellants also separately argue several dependent claims. With
respect to claim 2, Appellants argue that the claims recite the way one
skilled in the art can obtain the recited water activity. Appeal Br. 7.
Turning to claim 9, Appellants argue that the references do not teach
producing a metabolite by fermentation. Appeal Br. 9. Finally, Appellants
argue that, with respect to claims 7 and 8, Holzapfel fails to remedy the
deficiencies of Chiang and Barbosa-Canovas. Id.
The issues with respect to the rejections is whether the Examiner has
established by a preponderance of the evidence that the pending claims
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would have been obvious over Chiang combined with Barbosa-Canovas or
Chiang combined with Barbosa-Canovas and Holzapfel as defined by 35
U.S.C. § 103(a).
Findings of Fact
FF 1. Chiang discloses a nutritional composition containing fiber and
a probiotic with a water activity of less than about 0.16. Chiang i-f 12.
FF2. The nutritional composition of Chiang contains one or more
prebiotics selected from "inulin, fructo-oligosaccharide, gluco-
oligosaccharide, galacto-oligosaccharide, isomalto-oligosaccharide, xylo-
oligosaccharide, polydextrose and lactulose." Chiang i-f 30.
FF3. The probiotic used in Chiang comprises Lactobacillus,
Bifidobacterium and combinations thereof. i-f 26.
FF4. The water activity of the composition of Chiang can range from
0.08 to 0.16. Chiang i-f 53.
FF5. Barbosa-Canovas teaches the production of agglomerated food
particles by rewetting dried particles; mixing the particles to form
agglomerates and then re-drying the particles. Barbosa-Canovas 175.
FF6. The agglomerated particles of Barbosa-Canovas have a diameter
of from 0.1 to 3 mm. Id.
Principles of Law
"To be particularly probative, evidence of unexpected results must
establish that there is a difference between the results obtained and those of
the closest prior art, and that the difference would not have been expected by
one of ordinary skill in the art at the time of the invention." Bristol-Myers
Squibb Co. v. Teva Pharms. USA, Inc., 752 F.3d 967, 977 (Fed. Cir. 2014).
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"The evidence presented to rebut a prima facie case of obviousness
must be commensurate in scope with the claims to which it pertains." In re
Dill, 604 F.2d 1356, 1361 (CCPA 1979).
"Commensurate in scope" means that the evidence provides a
reasonable basis for concluding that the untested embodiments encompassed
by the claims would behave in the same manner as the tested
embodiment(s). See In re Lindner, 457 F.2d 506, 508 (CCPA 1972) ("Here,
only one mixture of ingredients was tested. . . . The claims, however, are
much broader in scope, ... and we have to agree with the Patent Office that
there is no 'adequate basis for reasonably concluding that the great number
and variety of compositions included by the claims would behave in the
same manner as the [single] tested composition.'") (bracketed material in
original).
"The patentability of a product does not depend on its method of
production. If the product in a product-by-process claim is the same as or
obvious from a product of the prior art, the claim is unpatentable even
though the prior product was made by a different process." In re Thorpe,
777 F.2d 695, 697 (Fed. Cir. 1985).
Analysis
Claims 1, 3-6 and 10-11
Claim 1 is representative of the rejected claims and is directed to a
nutritional composition comprising a mixture of fiber and a pro biotic which
has a water activity of less than 0.15. We agree with the Examiner that the
composition recited in claim 1 would have been obvious to one of ordinary
skill in the art at the time the invention was made. Chiang teaches a
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nutritional composition comprising a mixture of fiber and a probiotic. FFI.
The composition of Chiang has a water activity of less than about 0.16. Id.
Barbosa-Canovas teaches the preparation of food particle agglomerates
having a diameter of from 0.1 to 3 mm. FF5 & 6. We agree with the
Examiner that "[i]t would have been obvious to one of ordinary skill in the
art at the time the claimed invention was made to combine a nutritional
composition comprising the composition taught in Chiang et al. with the
process taught in Barbosa-Canovas et al., because Barbosa-Canovas et al.
teach methods to control porosity and density of materials in order to
influence properties like dispersibility [sic] and solubility." Ans. 7.
Appellants argue that the evidence of unexpected results found in
Example 1 of the Specification overcomes the Examiner's prima facie
finding of obviousness. Appeal Br. 6. We are unpersuaded. Example 1
only shows a comparison of one mixture of the invention using a single
pro biotic, L. reuteri, and an undisclosed fiber source. Spec. i-f 4 7. Claim 1 is
not limited to a specific fiber source or a specific probiotic. Appeal Br. 12
(Claim Appendix). Thus the showing of unexpected results is not
commensurate with the scope of the claims and is insufficient to rebut the
Examiner's finding of obviousness. In re Dill, 604 F.2d at 1361.
Claims 3---6, 10 and 11 have not been separately argued and therefore
fall with claim 1.
Claim 2
Claim 2, which depends from claim 1, includes the limitation that the
agglomerated particles are "made by wetting a powdered fiber using a water
mist to form clusters of fiber, then subjecting the clusters of fiber to a hot air
drying to form agglomerates that are then sieved to obtain the agglomerated
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fiber particulates having the average diameter ranging between about 1.2
mm to about 5 mm." Appeal Br. 12. (claim appendix) Appellants argue
that the unexpected results which support the patentability of claim 1 are
applicable to claim 2. Appeal Br. 8. Appellants also argue that claim 2
specifically recites how the water activity is controlled by reciting the
process by which the fiber agglomerates are formed. Id. Again, we are
unpersuaded. As discussed above, the unexpected results are not
commensurate with the scope of the claims and are therefore unpersuasive.
In addition, claim 2 is a product by process claim. The process limitation
does not render the claim patentable if the product itself is not patentable. In
re Thorpe, 777 F .2d at 697.
Claim 9
Claim 9 depends from claim 1 and adds the limitation that the fiber
blend "further comprises a metabolite generated by the probiotic during a
fermentation process." Appeal Br. 13. (claim appendix) Appellants argue
that unexpected results discussed above for claim 1 also support the
patentability of claim 9. Appeal Br. 8. In addition, Appellants argue that the
references do not teach the presence of a metabolite formed by the probiotic
during fermentation. Appeal Br. 9. We are not persuaded. As discussed
above, the evidence of unexpected results is not commensurate with the
scope of the claims and is therefore unpersuasive. In addition, as the
Examiner pointed out, the probiotic Lactobacillus GG used by Chiang is
known to produce lactic acid, a metabolite. Ans. 14. Appellants have
offered no evidence to show why the pro biotic of Chiang would not produce
lactic acid.
Claims 7 and 8
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Claims 7 and 8 depend from claim 1 and add limitations regarding the
presence of specific probiotics. Appeal Br. 13. (claim appendix) Appellants
argue that the same evidence of unexpected results that supports the
patentability of claim 1 is applicable to claims 7 and 8. Appeal Br. 9.
Appellants go on to point out that the tertiary reference, Holzapfel, does not
cure the deficiencies of the other references. Id. For the reasons discussed
above, we find the evidence of unexpected results unpersuasive. We agree
with the Examiner that claims 7 and 8 would have been obvious over the
teachings of Chiang in view of Barbosa-Canovas and Holzapfel.
Conclusion of Law
We find that the Examiner has established by a preponderance of the
evidence that claims 1---6 and 9-11 would have been obvious over Chiang
combined with Barbosa-Canovas as defined by 35 U.S.C. § 103(a).
We also find that the Examiner has established by a preponderance of
the evidence that claims 7 and 8 would have been obvious over Chiang in
combination with Barbosa-Canovas and Holzapfel as defined by 35 U.S.C.
§ 103(a).
SUMMARY
We affirm the rejection of claims 1-11.
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).
AFFIRMED
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