10121325 (B.P.A.I. Jul. 24, 2012)

Ex Parte Davenport et al

Board of Patent Appeals and InterferencesJul 24, 2012

10121325 (B.P.A.I. Jul. 24, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 10/121,325 04/12/2002 Gary Mitchell Davenport P-136 2487 27752 7590 07/24/2012 THE PROCTER & GAMBLE COMPANY Global Legal Department - IP Sycamore Building - 4th Floor 299 East Sixth Street CINCINNATI, OH 45202 EXAMINER FUBARA, BLESSING M ART UNIT PAPER NUMBER 1613 MAIL DATE DELIVERY MODE 07/24/2012 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES __________ Ex parte GARY MITCHELL DAVENPORT, RUSSELL LEE KELLEY, ERIC KARL ALTOM, and ALLAN JOHN LEPINE __________ Appeal 2011-012897 Application 10/121,325 Technology Center 1600 __________ Before TONI R. SCHEINER, FRANCISCO C. PRATS, and STEPHEN WALSH, Administrative Patent Judges. WALSH, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appellants request rehearing of the Decision on Appeal entered May 9, 2012, which affirmed the rejections of the claims on grounds of obviousness. We have reconsidered the issues and all the evidence as requested, but again conclude that affirmance is correct. Appeal 2011-012897 Application 10/121,325 2 BACKGROUND Appellants claim a method comprising feeding a hunting dog a diet comprising an effective amount of certain ingredients, to improve the dog’s hunt performance. Claim 1 recites, among other things, “a diet comprising unsaturated fatty acid EPA, unsaturated fatty acid DHA, or both, in a total amount of the diet greater than 0.2 weight percent.” The Patent Examiner concluded Appellants’ method would have been obvious over Reinhart’s disclosure of feeding certain diets to beagles. Reinhart’s Table 1 described diets containing 0.33 – 0.86 weight percent N-3 fatty acids (FF 7), and stated that the N-3 fatty acids “are preferably one or more compounds selected from the group consisting of eicosapentaenoic acid [EPA], docosahexaenoic acid [DHA], and alpha-linolenic acid” (FF 2). Because Reinhart fed beagles a diet comprising more than 0.2 weight percent N-3 fatty acids, and taught that the N-3 fatty acid to feed should be one or more of EPA, DHA, and alpha-linolenic acid, this Board affirmed the conclusion that feeding beagles a diet comprising greater than 0.2 percent EPA or DHA or both would have been obvious. Appellants “do not dispute Reinhart’s disclosure of diets comprising greater than 0.2 weight percent Omega-3 (“N-3”) fatty acids, but contend that “a teaching of a diet comprising greater than 0.2 weight percent N-3 fatty acids is not sufficient, in itself, to render obvious a diet comprising unsaturated fatty acid EPA, unsaturated fatty acid DHA, or both, in a total amount of the diet greater than 0.2 weight percent, because there was no apparent reason to modify the cited reference in the fashion claimed.” (Request 2.) Appeal 2011-012897 Application 10/121,325 3 DISCUSSION Appellants’ argument presumes that Reinhart’s method must be modified to meet the claim. We disagree that modification was required, because Reinhart, in its options, gave instructions that result in the method Appellants now claim. Reinhart instructed that the N-3 fatty acid to be administered was preferably one or more of EPA, DHA, and alpha-linolenic acid. Reinhart provided examples showing that the N-3 amounted to greater than 0.2 weight percent of the diet. It would have been following Reinhart’s instruction to administer, e.g., a diet comprising greater than 0.2 weight percent EPA, or greater than 0.2 weight percent DHA, or greater than 0.2 weight percent EPA + DHA. The rejection found that Reinhart did not recognize that the hunting dogs (beagles) hunt performance was improved, but found the effect was inherent to Reinhart’s diet. The rejection established that Reinhart’s diets included greater than 0.2 weight percent N-3 fatty acids, and that Reinhart gave the explicit instruction that the N-3 fatty acid should be one or more of EPA, DHA, and alpha-linoleic acid. Feeding one or more of EPA and DHA at greater than 0.2 weight percent are species of methods Appellants now claim. The obviousness of those methods over Reinhart shows that Appellants’ claims would have been obvious. See, e.g., In re Kubin, 561 F.3d 1351, 1361 (Fed. Cir. 2009) (affirming obviousness of a genus claim because a species within the claim would have been obvious: “the prior art here provides a ‘reasonable expectation of success’ for obtaining a polynucleotide within the scope of claim 73”); Aventis Pharma Deutschland GmbH v. Lupin, Ltd., 499 F.3d 1293, 1300 (Fed. Cir. 2007) (obvious stereoisomer of ramipril rendered genus containing the isomer obvious). Appeal 2011-012897 Application 10/121,325 4 Appellants object that the Decision overstated Reinhart’s teaching. (Request 4.) The Decision said: “Reinhart defined its n-3 fatty acids as one or more of eicosapentaenoic acid (EPA), docosahexaenoic acid (DHA), and alpha-linolenic acid,” citing FF 2. FF 2 quotes Reinhart’s page 3, lines 27- 28, as teaching the N-3 fatty acids to use are “preferably” one or more of EPA, DHA, and alpha-linolenic acid. Appellants confusingly state that “the cited passage from Reinhart, at page 3, lines 31-34, reads” otherwise, as the passage they quote is from page 2, not page 3. The passage on page 2 is more general than the passage on page 3. Taking the instructions at both pages 2 and 3 in account, we agree with Appellants that “defined” may have been the wrong word to use where Reinhart taught a preference, not a limiting definition. However, we adhere to the finding that Reinhart’s expressed preference and examples would have been perceived by the person of ordinary skill in the art as a teaching to use one or more of EPA, DHA, or alpha-linolenic acid in an amount of greater than 0.2 weight percent. Following Reinhart’s instruction would have directly produced methods of feeding hunting dogs a diet comprising greater than 0.2 weight percent EPA, or DHA, or both. SUMMARY We deny the requested relief. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). DENIED dm