Ex Parte De Kort et al

Patent Trial and Appeal Board

Sep 14, 2018

13583896 (P.T.A.B. Sep. 14, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/583,896 11/19/2012 Esther Jacqueline De Kort
22428 7590 09/18/2018
Foley & Lardner LLP
3000 K STREET N.W.
SUITE 600
WASHINGTON, DC 20007-5109
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.
069818-6875 7874
EXAMINER
COFFA, SERGIO
ART UNIT PAPER NUMBER
1675
NOTIFICATION DATE DELIVERY MODE
09/18/2018 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):
ipdocketing@foley.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ESTHER JACQUELINE DE KORT
and MARCEL MINOR1
Appeal2017-002758
Application 13/583,896
Technology Center 1600
Before DONALD E. ADAMS, ERIC B. GRIMES, and RYAN H. FLAX,
Administrative Patent Judges.
GRIMES, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a
nutritional composition, which have been rejected for obviousness and
obviousness-type double patenting. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We affirm the obviousness-type double patenting rejection but reverse
the obviousness rejection.
1 Appellants identify the Real Party in Interest as N.V. Nutricia. Appeal Br. 3.
Appeal2017-002758
Application 13/583,896
STATEMENT OF THE CASE
"Preferably, medical dairy products are highly concentrated in
nutrients, in particular in proteins and minerals, to meet the daily intake of
nutrients in malnourished patients." Spec. 1: 13-15. These "patients may be
extremely sensitive to food consistency and to the organoleptic properties of
the product such as, for instance viscosity, mouth feel, taste, smell and
colour." Id. at 1 :30-32.
"[T]he problem underlying the present invention is to provide a liquid
enteral composition for providing nutrition, either as a supplement, or as a
complete nutrition, comprising a high content of an intact protein, in
particular micellar casein, as major protein source." Id. at 2:8-11. "Micellar
casein, sometimes also referred to as 'native' micellar casein, refers to casein
in the form of micelles, which is the native form of casein in milk. It is a
high quality milk protein and naturally occurring in milk." Id. at 6: 12-14.
The Specification discloses that,
by using one or more chelating agents selected from the group
consisting of a phosphoric acid, citric acid, a soluble phosphate
salt, a soluble citrate salt, or a mixture thereof, the viscosity and
the transparency of an aqueous micellar casein composition,
comprising 6 to 20 g/100 ml of mi cellar casein and having a pH
of about 6 to 8, could be controlled independently of each other.
Id. at 4:30 to 5: 1.
Claims 19, 21-26, 28, and 30-32 are on appeal. Claim 19 is
illustrative and reads as follows ( elected species2 of chelating agent
emphasized):
2 See Response filed Feb. 25, 2014, page 5.
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Application 13/583,896
19. A nutritional composition comprising:
(a) 9 to 20 g of protein per 100 ml of the composition and having a pH
of about 6 to 8, in which 70-100% of said protein comprises micellar casein,
and
(b) about 20 to 120 mEq.L-1 of one or more chelating agents selected
from the group consisting of a phosphoric acid, citric acid, cytidine
monophosphate, orthophosphate, inositol hexaphosphate,
hexametaphosphate, a soluble citrate salt, and mixtures thereof.
The claims stand rejected as follows:
Claims 19 and 24, provisionally, under the doctrine of obviousness-
type double patenting, based on claims 26 and 43 of application 13/376,0983
in view of Miyazaki4 (Final Action5 7) and
Claims 19, 21-26, 28, and 30-32 under 35 U.S.C. § I03(a) as obvious
based on Sliwinski6 and Miyazaki (Final Action 3).
I
The Examiner has rejected claims 19 and 24 based on obviousness-
type double patenting. Appellants do not address this rejection in the Appeal
Brief or Reply Brief. We therefore affirm it. 37 C.F.R. § 4I.37(c)(l)(iv)
(The Appeal Brief must contain "[ t ]he arguments of appellant with respect to
each ground of rejection."). See also Hyatt v. Dudas, 551 F.3d 1307, 1314
(Fed. Cir. 2008) ("When the appellant fails to contest a ground of rejection
to the Board, ... the Board may treat any argument with respect to that
3 The '098 application issued as U.S. Patent 9,497,983 on Nov. 22, 2016, so
the rejection is no longer provisional.
4 64(1) Life Sciences 45-52 (1999).
5 Office Action mailed June 19, 2015.
6 WO 2009/072885 Al, published June 11, 2009.
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Application 13/583,896
ground of rejection as waived. In the event of such a waiver, the PTO may
affirm the rejection of the group of claims that the examiner rejected on that
ground without considering the merits of those rejections.").
II
The Examiner has rejected all of the claims on appeal as obvious
based on Sliwinski and Miyazaki. The Examiner finds that Sliwinski
teaches a "nutritional composition ... comprising 6 to 14 g of protein per
100 ml of the composition" and a pH between about 6.6 and 7 .2. Final
Action 3.
The Examiner finds that Sliwinski teaches that the protein in its
composition included micellar casein and caseinate, and their combined
amount is 70-95 weight% of the total protein in the composition. Id. The
Examiner finds that Sliwinski also teaches that the weight ratio of micellar
casein to caseinate is from 90: 10 to 35:65. Id. The Examiner finds that,
when Sliwinski' s composition includes mi cellar casein and caseinate in a
combined amount of 90 weight% of the total protein, at a 90: 10 weight ratio
of micellar casein to caseinate, the composition overlaps the limitations of
the claims on appeal. Id. The Examiner finds that Sliwinski does not teach
that its composition includes disodium cytidine monophosphate. Id. at 4.
However, the Examiner finds that Miyazaki teaches that "chronic oral
administration of a nucleotide mixture ( 500 mg/kg) containing an equal
weight of the disodium salts of adenosine S-monophosphate, guanosine 5'-
monophosphate, inosine 5'-monophosphate, cytidine 5'-monophosphate,
and uridine 5'-monophosphate facilitated learning acquisition in normal
rats." Id. The Examiner finds that Miyazaki also teaches that "it was
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Application 13/583,896
reported that a mixture of nucleotides and nucleosides ameliorated learning
and memory in senescence-accelerated mice." Id.
The Examiner concludes that it would have been obvious
to include disodium cytidine 5'-monophosphate in the nutritional
composition taught by Sliwinski et al because the invention of
Sliwinski et al is designed to meet the nutritional needs of
persons in need thereof, in particular elderly, and Miyazaki
teaches advantages of cytidine 5'-monophosphate in diet
including ameliorating learning and memory in senescence.
Id. at 5.
"Appellant first takes issue with the Office's determination that it
would have been 'prima facie' obvious to include CMP in the nutritional
composition taught by Sliwinski on the notion that Miyazaki 'teaches
advantages of cytidine 5'-monophosphate ("CMP") in diet including
ameliorating learning and memory in senescence.' It does not." Appeal Br.
4 (footnote omitted).
We agree with Appellants that Miyazaki does not provide a reason to
include CMP in Sliwinski' s composition. Miyazaki describes an experiment
showing that "[ c ]hronic oral administration of a nucleotide mixture ( 500
mg/kg), containing ... cytidine 5'-monophosphate ... facilitated learning
acquisition in normal rats." Miyazaki 45, abstract (emphasis added). The
rejection, however, is based on Miyazaki teaching that "a mixture of
nucleotides and nucleosides ameliorated learning and memory in
senescence-accelerated mice." Final Action 4.
Miyazaki' s discussion of senescence-accelerated mice states simply
that "Chen et al. reported that a mixture of nucleotides and nucleosides
ameliorated learning and memory in senescence-accelerated mice (SAM)."
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Application 13/583,896
Miyazaki 45 ( citation omitted). See also id. at 50 ("The present data
supported the previous reports in which dietary nucleotides and/ or
nucleosides improved learning and memory ... in SAM ... mice using the
passive avoidance test.").
Miyazaki does not disclose what "mixture of nucleotides and
nucleosides" ameliorated learning and memory in senescence-accelerated
mice and, more specifically, does not disclose that that mixture included
cytidine monophosphate (CMP). We therefore conclude that a
preponderance of the evidence of record does not support the Examiner's
conclusion that it would have been obvious to include CMP in Sliwinski' s
composition in order to ameliorate learning and memory in elderly patients.
SUMMARY
We affirm the rejection of claims 19 and 24 for obviousness-type
double patenting.
We reverse the rejection of claims 19, 21-26, 28, and 30-32 under 35
U.S.C. § 103(a) on Sliwinski and Miyazaki.
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-IN-PART
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