Ex Parte Fichot et al

Patent Trial and Appeal Board

May 3, 2016

13133295 (P.T.A.B. May. 3, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/133,295 06/07/2011
29157 7590
K&L Gates LLP-Chicago
P.O. Box 1135
CHICAGO, IL 60690
05/05/2016
FIRST NAMED INVENTOR
Marie-Claire Fichot
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.
3712036-01271 1966
EXAMINER
GWARTNEY, ELIZABETH A
ART UNIT PAPER NUMBER
1791
NOTIFICATION DATE DELIVERY MODE
05/05/2016 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 MARIE-CLAIRE FICHOT, CATHERINE MACE, and
PHILIPPE STEENHOUT
Appeal2014-007956
Application 13/133,2951
Technology Center 1700
Before ADRIENE LEPIANE HANLON, CATHERINE Q. TIMM, and
JAMES C. HOUSEL, Administrative Patent Judges.
PERCURIAM.
DECISION ON APPEAL
A. STATEMENT OF THE CASE
The Appellants filed an appeal under 35 U.S.C. § 134 from the Examiner's
decision finally rejecting claims 1, 2, 4--9, 11, 13, 16-21, and 23 2 under 35 U.S.C.
§ 103(a) as unpatentable over Auestad3 and rejecting claims 12 and 24 under 35
U.S.C. § 103(a) as unpatentable over Auestad in view of Bydlon.4
1 According to Appellants, the real party in interest is Nestec S.A. App. Br. 2.
2 Claims 10 and 22 were canceled via an after-Final amendment filed Nov. 20,
2013. The amendment was entered, as stated in an Advisory Action mailed Dec. 5,
2013, leaving claims 1, 2, 4--9, 11-13, 16-21, 23, and 24 on appeal.
3 Auestad et al., US 2007/0026049 Al, published Feb. 1, 2007 ("Auestad").
4 Bydlon et al., US 2003/0050341 Al, published Mar. 13, 2003 ("Bydlon").
Appeal2014-007956
Application 13/133,295
We have jurisdiction under 35 U.S.C. § 6(b). 5
We REVERSE.
The subject matter on appeal is directed to methods for reducing the
accumulation of fat mass in a human infant during at least part of a neonatal period
and methods for reducing the risk of development of obesity later in life in an
infant (see, e.g., claims 1, 2, and 13).
Claim 1 is illustrative of the claims on appeal and is reproduced below from
the Claims Appendix of the Appeal Brief. 6 The limitations at issue are italicized.
1. A method for reducing the accumulation of fat mass in a human
infant during at least a part of the neonatal period comprising
administering a first nutritional composition comprising between 2.4
and 3. 0 g of protein per 1 OOkcal, followed by administration of a second
nutritional composition having a protein content between 1. 7 and 2. Og
protein per 100 kcal for the remainder of the first four months of the
life of the infant.
B. DISCUSSION
The dispositive issue on appeal is whether Appellants have shown reversible
error in the Examiner's conclusion that administering, to an infant, first and second
nutritional compositions having the different protein contents recited in claim 1
would have been obvious to one of ordinary skill in the art based on the teachings
in Auestad.
We determine that Appellants have identified such an error.
There is no dispute on this record that Auestad does not describe
administering first and second nutritional compositions as recited in claim 1. Ans.
5 Our decision refers to Appellants' Appeal Brief filed February 13, 2014 (Appeal
Br.), the Examiner's Answer mailed May 15, 2014 (Ans.), and Appellants' Reply
Brief filed July 14, 2014 (Reply Brief).
6 Appendix Ai of Appeal Br.
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Appeal2014-007956
Application 13/133,295
3. Moreover, Appellants argue that Auestad fails to even suggest administering
two compositions as claimed. Appeal Br. 6. In particular, Appellants argue:
Auestad does not suggest any benefit of a second infant formula
different than the neonatal infant formula, let alone a higher protein
content in the neonatal infant formula relative to the subsequent
formula. Specifically, Auestad is entirely directed to administering
DHA and ARA to an infant to reduce body fat mass and does not
suggest any reason for different protein contents between a neonatal
infant formula and a subsequent formula.
App. Br. 7 (citing Auestad i-fi-f l, 9, 21).
For this reason, Appellants argue the Examiner has not provided a rational
underpinning for why one of ordinary skill in the art would have modified
Auestad's infant formula "such that a first infant formula and then a second,
different formula are administered, with a higher protein content in the first infant
formula relative to the second formula." Appeal Br. 7.
The Appellants' arguments are supported by the record. Auestad discloses
an infant formula having a protein content of 1.5-3.4 g/100 kcal. Auestad i138 and
Table 2. The Examiner responds to Appellants' arguments by finding this protein
content disclosed by Auestad overlaps with the protein ranges for the first and
second nutritional compositions of claim 1. Ans. 6-7. However, claim 1 recites
two nutritional compositions, not the single composition disclosed by Auestad.
Therefore, the facts relied upon by the Examiner do not support a conclusion that
the method of claim 1 would have been obvious. That is, the mere fact that
Auestad discloses a single range that overlaps both ranges recited in claim 1 is not
a sufficient rationale to modify Auestad to use two different nutritional
compositions as recited in claim 1 instead of the single composition disclosed by
Auestad.
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Appeal2014-007956
Application 13/133,295
In sum, Appellants' arguments are persuasive that the Examiner reversibly
erred in the rejection of claim 1. Independent claims 2 and 13 also recite first and
second nutritional compositions having protein contents corresponding to the first
and second nutritional compositions of claim 1. Therefore, for the reasons
discussed above, the rejection of claims 1, 2, 4--9, 11, 13, 16-21, and 23 under 35
U.S.C. § 103(a) as unpatentable over Auestad is not sustained.
Claims 12 and 24 are rejected under 35 U.S.C. § 103(a) as unpatentable over
Auestad in view of Bydlon. Claim 12 depends from claim 1 and claim 24 depends
from claim 2. The Examiner's reliance on Bydlon does not cure the deficiencies
discussed above. Therefore, the rejection of claims 12 and 24 is not sustained.
C. DECISION
The decision of the Examiner is reversed.
REVERSED
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