Ex Parte Yamka et al

Patent Trial and Appeal Board

Mar 30, 2016

12161610 (P.T.A.B. Mar. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/161,610 07/21/2008
23909 7590 04/01/2016
COLGATE-PALMOLIVE COMPANY
909 RIVER ROAD
PISCATAWAY, NJ 08855
FIRST NAMED INVENTOR
Ryan Michael Yamka
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.
7657-00-HL 2999
EXAMINER
MOORE, WALTER A
ART UNIT PAPER NUMBER
1793
NOTIFICATION DATE DELIVERY MODE
04/01/2016 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):
Patent_Mail@colpal.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RYAN MICHAEL YAMKA,
KIM GENE FRIESEN, WILLIAM DAVID SCHOENHERR,
and LAUREN JAY KATS
Appeal2014-004967
Application 12/161,610
Technology Center 1700
Before MARK NAGUMO, GEORGE C. BEST, and
CHRISTOPHER L. OGDEN, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 1-7, 9, 10, 12, 13, and 15-18 of
Application 12/161,610. Final Act. (June 27, 2013). Appellants 1 seek
reversal of these rejections pursuant to 35 U.S.C. § 134(a). We have
jurisdiction under 35 U.S.C. § 6(b).
For the reasons set forth below, we AFFIRM.
1 Colgate-Palmolive Company is identified as the real party in interest. Br. 2
Appeal2014-004967
Application 12/161,610
BACKGROUND
The '610 Application describes methods for reducing food intake by
animals, thereby controlling the animals' weight. Spec. i-f 1. In particular,
the methods control the animals' weight by feeding the animals a
composition comprising a weight-controlling amount of soluble fiber. Id. at
,-r 4.
Claim 1 is representative of the '610 Application's claims and is
reproduced below from the Claims Appendix to Appellants' Brief:
1. A method for treating a weight-related condition in an
animal in need thereof, the method comprising
reducing food intake by the animal in need thereof by
administering to the animal a composition comprising
(i) at least one soluble fiber
and
wherein the concentration of the at least one soluble
fiber is at least 0.5 % by weight of the composition
on a dry matter basis
(ii) from about 1 % to about 20% dietary insoluble fiber
by weight of the composition on a dry matter basis,
wherein the amount of the composition administered comprises
a food intake reducing amount of the at least one soluble fiber,
wherein the animal is selected from the group consisting of a
canine and a feline,
wherein the composition is a pet food administered to the animal
ad libitum for a period effective to treat the weight-related
condition, and
wherein the condition is selected from the group consisting of
obesity, rapid weight gain, overweight, and a tendency toward
obesity.
Br. 28 (Claims App'x) (paragraphing and indentation added).
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Application 12/161,610
REJECTIONS
On appeal, the Examiner maintains2 the following rejections:
1. Claims 1-7, 9, 10, 12, 13, and 15-18 are rejected under 35 U.S.C.
§ 112, i-f 1 as failing to comply with the written description
requirement. Final Act. 3; Answer 2.
2. Claims 1-7, 9, 10, 12, 13, and 15-18 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Sundvold '067,3
and Schoenherr4 as evidenced by Sundvold '275,5 Fox,6 Meer,7 and
Stillman.8 Final Act. 9-10; Answer 3.
3. Claims 1-7, 9, 10, 12, 13, and 15-18 are provisionally rejected on
the ground of nonstatutory obviousness-type double patenting
(OTDP) as unpatentable over claims 15-26 of copending
2 The Examiner has withdrawn a rejection of claims 1-7, 9, 10, 12, 13, and
15-18 as indefinite. ,LA~ns\x1er 13. In the Final ,LA~ction, the Examiner had also
rejected claim 10 under 35 U.S.C. § 112, i-f 4. Final Act. 9. The Answer
neither includes this rejection as a grounds to be reviewed on appeal nor
expressly states that it is been withdrawn. As set forth in the Final Action,
the substance of the rejection appears to be similar in nature to the
withdrawn rejections under 35 U.S.C. § 112, i-f 2. See id. We, therefore,
assume that the Examiner has withdrawn the rejection of claim 10 under
§ 112, ,-r 4.
3 US 2001/0018067 Al, published August 30, 2001.
4 WO 2004/107878 Al, published December 16, 2004.
5 US 2002/0197275 Al, published December 26, 2002.
6 US 6,387,435 Bl, issued May 14, 2002.
7 US 5,073,370, issued December 17, 1991.
8 US 2002/0012689 Al, published January 31, 2002.
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Application 12/161,610
Application No. 12/830,893 in view of Sunvold '275 and Sunvold
'067. Final Act. 16; Answer 10.
DISCUSSION
Rejection 1. The Examiner rejected claims 1-7, 9, 10, 12, 13, and
15-18 for failure to comply with the written description requirement.
Answer 2. In particular, the Examiner found that the claim limitation "for a
period effective to treat the weight related condition" was not adequately
disclosed in Appellants' Specification.9 Id. at 2-3.
To comply with the written description requirement, an applicant's
specification must convey with reasonable clarity to a person of ordinary
skill in the art that, as of the filing date, the applicant was in possession of
the claimed invention. Carnegie Mellon Univ. v. Hoffmann-La Roche Inc.,
541F.3d1115, 1122 (Fed. Cir. 2008).
In the case at hand, the claims are directed to methods for treating a
vveight related condition in an animal in need thereof, the methods
comprising administering a particular food composition "for a period
effective to treat the weight-related condition." See Claims 1, 9. The '610
Application's Specification states that it is now estimated that between 25%
and 40% of companion animals in the United States are considered
overweight or obese. Spec. i-f 2. The Specification also states that obesity in
9 In the Final Action, the Examiner finds that "[t]he specification fails to
disclose how to determine an effective period to treat the weight related
condition." Final Act. 4. This finding does not support a rejection for lack
of written description and would be more appropriate in the context of the
rejection either for lack of enablement or indefiniteness. Rejections on those
grounds, however, are not before us.
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Application 12/161,610
animals is implicated in increased risk of a variety of diseases. Id. The
Detailed Description of the Invention section of the Specification states that
the present invention provides methods for controlling an animal's weight.
Id. at i19.
A person of ordinary skill in the art of animal nutrition at the time of
the invention would have known that weight control and weight loss are not
achieved instantly. Thus, one of ordinary skill in the art would have
understood that methods for controlling an animal's weight by administering
a composition necessarily require administration of the composition for an
effective amount of time. Accordingly, a person of ordinary skill in the art
would have recognized that the Appellants possessed the idea that the
methods described in their Specification would have to be carried out for
such a period of time.
We reverse the rejection of the '610 Application's claims for lack of
written description support.
Rejection 2. The Examiner rejected claims 1-7, 9, 10, 12, 13, and
15-18 as unpatentable over the combination of Sunvold '067, and
Schoenherr as evidenced by Sunvold '275, Fox, Meer, and Stillman.
Answer 3.
Appellants argue that this rejection should be reversed for any of four
reasons: (1) the Examiner used the wrong approach in conducting the
patentability of analysis under§ 103, Br. 21-22; (2) the Examiner has not
provided an adequate reason for a person of ordinary skill in the art to have
combined Sunvold '067 and Schoenherr, id. at 22-23; (3) the combination of
Sunvold '067 and Schoenherr fail to teach all of the limitations of
independent claims 1 and 12, id. at 24--25; and (4) the Examiner's evidence
is insufficient to support the conclusion of obviousness, id. at 25-26. For
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Application 12/161,610
the reasons set forth below, we are not persuaded that the Examiner
reversibly erred in rejecting the '610 Application's claims.
First, Appellants argue that the Federal Circuit has mandated the use
of a "lead composition-modification" analysis in the determination of the
obviousness of chemical formulations. Br. 21 (citing Unigene Labs., Inc. v.
Apotex, Inc., 655 F.3d 1352, 1361---62 (Fed. Cir. 2011)). Appellants further
argue that, when this analysis is applied, the selection of Sunvold '067 as a
starting point in an obviousness analysis is neither logical nor reasonable.
Id. at 22.
This argument is not persuasive because Appellants are incorrect in
arguing that the Federal Circuit has mandated any particular form of analysis
for the determination of the obviousness of chemical formulations. An
obviousness inquiry requires an expansive and flexible load approach to the
underlying factual considerations and the ultimate determination of
patentability. See KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 414 (2007).
The Federal Circuit has explained that the "lead compound-modification"
approach is often, but not always, useful in identifying the structural
similarities and differences between the claimed compound and the prior art
compounds. Eisai Co. v. Dr. Reddy 's Labs., Ltd., 533 F.3d 1352, 1356 (Fed.
Cir. 2008).
Thus, that Examiner is not required to use any particular approach to
analyzing the question of obviousness. Rather, the question is whether the
Examiner erred in making the factual determinations underpinning the legal
conclusion of obviousness. See Graham v. John Deere Co., 383 US 1, 17-
18 (1966). The Examiner also must explain why a person of ordinary skill
in the art would a selected and combined the various prior art elements to
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Application 12/161,610
arrive at the claimed invention in the normal course of research and
development. See Unigene, 655 F.3d at 1360.
Second, Appellants argue that "the Examiner has ... failed to
demonstrate why one of ordinary skill in the art would have identified and
selected the formulation in Sunvold '067 and modified the reference with the
disclosure from Schoenherr." Br. 22.
We are not persuaded by this argument. As the Examiner found,
Sunvold '067 describes a method for treating a weight related condition in a
dog or cat by ad libitum feeding of the diet comprising between one and
11 % soluble fiber. Answer 3. The Examiner also found that Schoenherr
describes the addition of insoluble fiber to a companion animal food
composition. Id. at 4--5. The Examiner explained that a person of ordinary
skill in the art would have been motivated to modify Sunvold '067's food
composition by adding additional insoluble fiber because Schoenherr
discloses that the increased amount of fiber resulted in increased rate of fat
loss and reduce the amount of lean tissue loss. Id.
Because we do not discern errors in the Examiner's findings, we are
not persuaded by this argument.
Third, Appellants argue that the combination of Sunvold '067 and
Schoenherr fail to teach every limitation of independent claims 1 and 12.
Br. 24--25.
We are not persuaded by this argument. Appellants' arguments about
disclosures allegedly missing from Sunvold '067 actually discuss and cite
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Application 12/161,610
Sunvold '275. 10 Appellants, therefore, have not presented arguments
directed to the factual determinations the Examiner actually made.
Fourth, Appellants argue that the Examiner has not presented
adequate evidence to support the finding that the combination of Sunvold
'067 and Schoenherr describe or suggest the use of an amount of soluble
fiber that reduces food intake and controls weight. Br. 5-26.
Appellants' Specification states that "[a] food intake reducing amount
and/or a weight controlling the amount of the soluble fiber will generally be
found in the range as provided herein, e.g., from about 0.3% to about 7% ...
by weight of the composition." Spec. i-f 43; see also id. at i-f 16. The range
described in Sunvold '067 encompasses Appellants' food intake amount or
weight controlling amount of soluble fiber. See Sunvold '067 i-f 36
(describing pet food compositions comprising 1 to 11 weight percent soluble
fiber). The Examiner, therefore, is entitled to presume that the pet food
composition suggested by the combination of the Sunvold '067 and
Schoenherr includes a food intake and/or weight controlling amount of
soluble fiber. See, e.g., In re Antor Media Corp., 689 F.3d 1282, 1289 (Fed.
Cir. 2012) ("Consistent with the statutory framework and our precedent, we
therefore hold that, during patent prosecution, an examiner is entitled to
reject claims as anticipated by a prior art publication or patent without
conducting an inquiry into whether or not that prior art reference is enabling.
As long as an examiner makes a proper prima facie case of anticipation by
giving adequate notice under§ 132, the burden shifts to the applicant to
10 The Examiner recognized that Appellants were not citing Sunvold '067,
but apparently did not recognize that Appellants were citing to and arguing
about the disclosure of Sunvold '275. See Answer 21-22.
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submit rebuttal evidence of nonenablement.") The evidence cited by the
Examiner further supports this presumption.
Thus, we are not persuaded by this argument.
Rejection 3. The Examiner provisionally rejected claims 1-7, 9, 10,
12, 13, and 15-18 on the ground of OTDP as not patently distinct from the
combination of claims 15-16 of the '893 Application, Sunvold '275, and
Sunvold '067. Answer 10. Because the '893 Application went abandoned
on March 3, 2015, this provisional rejection is moot, and we do not address
it.
CONCLUSION
For the reasons set forth above, we reverse the rejection of claims 1-7,
9, 10, 12, 13, and 15-18 as unsupported by the '610 Application's written
description, but we affirm the rejection of those claims as unpatentable over
the combination of Sunvold '067, and Schoenherr as evidenced by Sunvold
'275, Fox, ~v1eer, and Stillman. The provisional OTDP rejection of claims
1-7, 9, 10, 12, 13, and 15-18 is moot because the '893 Application has been
abandoned.
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
9