Ex Parte Lathan et alDownload PDFPatent Trial and Appeal BoardJul 13, 201613387419 (P.T.A.B. Jul. 13, 2016) Copy Citation 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 2 Appeal2014-008227 Application 13/387,419 "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 3 Appeal2014-008227 Application 13/387,419 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). 4 Appeal2014-008227 Application 13/387,419 "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 5 Appeal2014-008227 Application 13/387,419 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 6 Appeal2014-008227 Application 13/387,419 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 7 Appeal2014-008227 Application 13/387,419 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 8 Copy with citationCopy as parenthetical citation