Ex Parte Eichinger et al

Patent Trial and Appeal Board

Oct 31, 2016

11596618 (P.T.A.B. Oct. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111596,618 11115/2006
23117 7590 11/02/2016
NIXON & V ANDERHYE, PC
901 NORTH GLEBE ROAD, 11 TH FLOOR
ARLINGTON, VA 22203
FIRST NAMED INVENTOR
Anne Eichinger
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.
4662-404 1090
EXAMINER
THOMAS, TIMOTHY P
ART UNIT PAPER NUMBER
1628
NOTIFICATION DATE DELIVERY MODE
11/02/2016 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):
PTOMAIL@nixonvan.com
pair_nixon@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANNE EICHINGER, REGINA GORALCZYK, KARIN WERTZ,
and ADRIAN WYSS
Appeal2015-001589
Application 11/596,618 1
Technology Center 1600
Before RICHARD M. LEBOVITZ, RICHARD J. SMITH, and RYAN H.
FLAX, Administrative Patent Judges.
LEBOVITZ, Administrative Patent Judge.
DECISION ON APPEAL
This appeal involves claims directed to a method of promoting
increased muscle protein formation and/ or amelioration of loss of muscle
protein in a human or an animal. The Examiner finally rejected the claims
as obvious under 35 U.S.C. § 103(a). We have jurisdiction under 35 U.S.C.
§ 134. The obviousness rejection is affirmed.
1 "The '618 Application."
Appeal2015-001589
Application 11/596,618
STATEMENT OF CASE
Appellants appeal from the Examiner's rejection of claims 18,
24-26, 28, and 30-32 under 35 U.S.C. § 103(a) (pre-AIA) as obvious
in view of Wagner2 and Yamaguchi. 3
The Examiner withdrew rejections of the claims based on 35
U.S.C. § 112, first and second paragraphs. Ans. 2.
Claim 18, the only independent claim on appeal, reads as
follows:
18. A method for promoting an increased muscle protein
formation and/or amelioration of loss of muscle protein in a
human or an animal which comprises:
a) administering to said human or animal experiencing an
adverse health condition, involved in sports or workouts,
convalescing, or, if a non-human animal in need of
enhancement of growth and performance a composition
consisting of a muscle protein forming effective amount of B-
cryptoxanthin and a galenical carrier for 7 days; and
b) observing muscle protein formation and/or
amelioration of loss of muscle protein.
REJECTION
The Examiner found that Wagner describes administering vitamin
supplements to a population of elderly people engaged in aerobic endurance
training. Ans. 4. The Examiner acknowledged that Wagner does not
describe administering B-cryptoxanthin. Id. at 5. However, the Examiner
found that Wagner reported that plasma levels of B-cryptoxanthin
2 Wagner et al., Antioxidants Status and Physical Fitness in Seniors
Aerobically Trained and Supplemented with a Multivitamin Drink 56
Modem Aspects of Nutrition 261---62 (2003).
3 CA 2 503 557 Al, pub. May 6, 2004.
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Appeal2015-001589
Application 11/596,618
significantly increased in the treated elderly population. Id. at 6. Based on
this result, the Examiner found that it would have been obvious to administer
a supplement comprising B-cryptoxanthin. The Examiner found that
Yamaguchi describes such a supplement. Id. at 7.
DISCUSSION
The Examiner found that Yamaguchi describes administering a
supplement comprising B-cryptoxanthin to patients to prevent or treat bone
disease. Final Act. 17 (see Yamaguchi 1:7-14; 7:18-26). The Examiner
found that the amount of B-cryptoxanthin in Yamaguchi' s supplement (see
Yamaguchi 18: 10-13) overlaps with the effective amounts described in the
'618 Application involved in this appeal (see '618 Application 2:29-33;
3 :30 to 4:3). Id. at 18. The Examiner also found that Yamaguchi describes
administering an amount of B-cryptoxanthin within the range of rejected
claim 31, i.e., 7 mg. Id. The Examiner concluded:
Therefore, the amounts administered by Yamaguchi are taken
to satisfy the required "amount" limitation of claim 18. The
administration of the required composition containing the
required amount of B-cryptoxanthin to an animal meets the
required step of claim 18. Yamaguchi establishes that the same
B-cryptoxanthin active compound taught by Wagner, in
amounts required by claims 28 & 30-31, has an additional
benefit of as an osteogenesis promoter, to prevent and treat
bone diseases. Thus, use of B-cryptoxanthin would have been
expected not only to increase strength, but also benefit the
bones, providing an additional motivation to administer this
compound over the 7 days in the Yamaguchi example.
Id. at 18-19; see also Yamaguchi at 18:10-13 (disclosing B-cryptoxanthin at
10, 25 and 60 µg/ml com oil orally administered to rats in an amount II 00 g
body weight with a probe once a day for 7 days).
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Application 11/596,618
In other words, the Examiner made express findings that Yamaguchi
describes administering B-cryptoxanthin to a "human ... experiencing an
adverse health condition" (i.e., with a bone disease) in the same amounts
required by the claims. Id. Because the amounts of B-cryptoxanthin are the
same, it would have reasonably expected that Yamaguchi would have
achieved the claimed increase in muscle protein or amelioration of loss of
muscle protein. The Examiner further stated that there would have been an
expectation that Yamaguchi' s composition would "increase strength" which
we understand to refer to "muscle strength" and a purpose of claim 18
("enhancement of growth and performance"). Final Act. 4 (last sentence).
Appellants did not identify an error in the Examiner's findings regarding
Yamaguchi' s teaching of administering amounts of B-cryptoxanthin which
would accomplish the claimed requirement that of "increased muscle protein
formation and/ or amelioration of loss of muscle protein."
Appellants state that Yamaguchi "is silent as to its use in increasing
muscle synthesis." Appeal Br. 13. However, it is not necessary that
Yamaguchi have recognized that administering B-cryptoxanthin increased
muscle protein formation because Yamaguchi carried out the same step as
recited in claim 18 and thus would have been reasonably expected to achieve
the same result. It is well-established that merely recognizing something
that was not known before is insufficient to render an old process again
patentable. In re Cruciferous Sprout Litig., 301F.3d1343, 1351 (Fed. Cir.
2002). See also In re Woodruff, 919 F.2d 1575 (Fed. Cir. 1990); In re
Omeprazole Patent Litig., 483 F.3d 1364, 1373 (Fed. Cir. 2007). The
recitation of "b) observing muscle protein formation and/or amelioration of
loss of muscle protein" as recited in claim 18, does not distinguish the
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Application 11/596,618
claimed method over Yamaguchi because merely recognizing that the
claimed B-cryptoxanthin affects muscle protein formation and loss does not
change how the process is performed. The only difference is that Appellants
have recognized an inherent result of an old process.
Because Appellants did not identify a reversible error in the
Examiner's rejection, we affirm the rejection of claims 18 as obvious. It is
unnecessary for us to address the teachings in Wagner because Yamaguchi,
alone, is sufficient to render the claims unpatentable. Claims 24--26, 28, 30,
31, and 32 fall with claim 18 because separate reasons for their patentability
were not provided. 37 C.F.R. § 41.37(c)(l)(iv).
DECISION
We affirm the Examiner's decision rejecting claims 18, 24--26, 28,
and 30-32.
No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C.F .R. § 1.13 6( a )(1 )(iv).
AFFIRMED
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