Ex Parte Friesen et al

Patent Trial and Appeal Board

Aug 16, 2016

11813268 (P.T.A.B. Aug. 16, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111813,268 06/03/2008
23909 7590 08/18/2016
COLGATE-PALMOLIVE COMPANY
909 RIVER ROAD
PISCATAWAY, NJ 08855
FIRST NAMED INVENTOR
Kim Gene Friesen
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.
7668-00-HL 9978
EXAMINER
SAY ALA, CHHAYA D
ART UNIT PAPER NUMBER
1791
NOTIFICATION DATE DELIVERY MODE
08/18/2016 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
uspto@thebellesgroup.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KIM GENE FRIESEN, RYAN MICHAEL YAMKA,
LAUREN JAY KATS, and TIMOTHY GLEN VANDE GIESSEN
Appeal2015-002370
Application 11/813,268
Technology Center 1700
Before, BEYERL YA. FRANKLIN, ELIZABETH M. ROESEL, and
AVEL YN M. ROSS, Administrative Patent Judges.
ROESEL, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1, 7-10, 14--16, 21-22, 26-30, 32, 35, 37, and 40-
45. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Hill's Pet Nutrition, Inc. is identified as the real party in interest. Br. 2.
Appeal2015-002370
Application 11/813,268
STATEivIENT OF THE CASE
Claimed Invention
The claimed subject matter relates to methods for using methionine
compounds to enhance palatability of compositions for consumption by
animals. Spec. i-f 2. The methods comprise adding a palatability enhancing
amount of at least one methionine compound and optional inactive yeast to
the compositions. Id. i-f 8.
Claim 1 is representative of the subject matter on appeal and is
reproduced below from Appellants' Claims Appendix:
1. A method for enhancing the palatability of a
composition for consumption by an animal comprising adding
to the composition a palatability enhancing amount of at least
one methionine compound and a palatability enhancing amount
of inactive yeast, wherein the methionine compound and
inactive yeast are topically applied to the composition and the
composition further comprises (i) from about 10 to about 60%
protein; (ii) from about 2 to about 40% fat; (iii) from about 2 to
about 42% carbohydrates; (iv) from about 1 to about 20%
dietary fiber; and (v) from about 2 to about 8% nutritional
balancing agents,
wherein the methionine compound is added to the
composition in an amount of from about 0.01 % to about 1.5%
by weight of the composition, and
wherein the yeast is added to the composition in an
amount of from about 0.01 % to about 1.5% by weight of the
composition.
Br. 11.
Eichelburg
Franzen et al.
Hayward
Gluck et al.
References
us 3,997,675
us 4,282,254
us 5,500,239
US 6,228,418 Bl
2
Dec. 14, 1976
Aug. 4, 1981
Mar. 19, 1996
May 8, 2001
Appeal2015-002370
Application 11/813,268
Brunner
Bui et al.
Thombre et al.
Shao et al.
US 6,350,485 B2
US 2003/0138547 Al
US 2003/0190343 Al
US 2005/0170067 Al
Feb.26,2002
July 24, 2003
Oct. 9, 2003
Aug. 4, 2005
S. Crane et al., Introduction To Commercial Pet Foods, in SMALL
ANIMAL CLINICAL NUTRITION (M. S. Hand et al., 4th ed. 2000)
("Crane").
Rejection
Claims 1, 7-10, 14--16, 21-22, 26-30, 32, 35, 37, and 40-45 are
rejected under 35 U.S.C. § 103(a) as unpatentable over Franzen in view of
Hayward or Bui and further in view of Gluck, Thombre, or Eichelburg taken
with Brunner and, as evidentiary references, Shao or Crane. Final Action 2-
12. 2
ANALYSIS
Appellants' arguments are directed to independent claim 1 only.
Appellants present no separate argument regarding the other claims. See Br.
5-10. As a consequence, all appealed claims stand or fall together, and we
confine our discussion to claim 1.
The Examiner finds that Franzen discloses adding a palatability-
enhancing amount of methionine (an amino acid) to a nutritionally balanced
dog food containing protein, carbohydrates, fats, vitamins and minerals.
Final Action 3--4. The Examiner cites Hayward or Bui to teach the relative
amounts of protein, fat, carbohydrates, dietary fiber, and nutritional
balancing agents. Id. at 5---6. The Examiner finds that Franzen does not
teach adding a palatability-enhancing amount of inactivated yeast, but that
2 Final Action dated March 27, 2014.
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Appeal2015-002370
Application 11/813,268
this feature is taught by Gluck, Thombre, or Eichelburg. Id. at 6-7. The
Examiner cites Brunner to provide guidance regarding the amount of
palatability enhancers. Id. at 8. The Examiner cites Shao and Crane to show
that a combination of amino acids and yeast was known in the art as
providing palatability enhancing effects. Id. The Examiner concludes that
"[i]t would have been obvious to combine two palatability enhancers, such
as deactivated yeast and methionine, both useful for the same purpose with
the reasonable expectation that they will provide palatability improving
benefits to the food formulation." Id. at 11.
Appellants challenge the Examiner's findings regarding the teachings
of Franzen, motivation to combine, and reasonable expectation of success.
Br. 5-8. In addition, Appellants argue that the combination of Franzen with
Hayward, Bui, Gluck, Eichelburg, and/or Thombre would not have taught or
suggested the claimed subject matter, and that each of Brunner, Shao, and
Crane teaches away from or fails to teach the combination of methionine and
yeast as palatability enhancers. Id. 8-9.
Upon consideration of the evidence presented in this Appeal and each
of Appellants' arguments, we are not persuaded that Appellants identify
reversible error, and we determine that a preponderance of evidence supports
the Examiner's conclusion that the appealed claims are unpatentable over
the applied prior art. We sustain the rejection of claim 1 and the remaining
appealed claims based on the Examiner's findings of fact, conclusions of
law, and rebuttals to Appellants' arguments, as expressed in the Final Action
and the Answer. We add the following for emphasis.
As the Examiner correctly finds, Franzen teaches methionine as a
palatability enhancer for dog food. Franzen, 2:52---61, 3:3-7, 6:44--7:24
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Application 11/813,268
(Example II and Table II), 8:38--43 (claim 11). Franzen's Example II and
Table II disclose experiments in which various amino acids were added to
dog foods, and the resulting foods were fed to dogs. Id. at 6:44--52. As the
Examiner correctly finds, Table II identifies L-methionine as an amino acid
that gives rise to a "significant Preference," i.e., that it enhances palatability
of the dog food. Id. at 6:52-55, 7: 18-19 (Table II). Under a preponderance
of the evidence standard, these disclosures are sufficient to support the
Examiner's finding that Franzen teaches methionine as a palatability
enhancer for animal food.
Appellants argue that Franzen's Example I and Table I show that L-
methionine is the same as or no better than the experimental controls and
that Franzen's Example II and Table II are insufficient to counter that
showing. Br. 5---6. These arguments are not persuasive. Appellants'
interpretation of Franzen is inconsistent with the cited teachings, as
summarized above. In our view, Franzen's Example I and Table I are
inconclusive, and the other cited teachings provide sufficient support for the
Examiner's finding. The lack of experimental detail in Example II does not
demonstrate that the cited teachings are insufficient to support the
Examiner's finding. Even in the absence of a specific working example,
Franzen's disclosure of methionine as a useful palatability enhancer,
Franzen, 2:52---61, 3:3-7, 8:38--43, is sufficient support for the Examiner's
finding. In re Mills, 470 F.2d 649, 651 (CCPA 1972) ("All the disclosures
in a reference must be evaluated, ... and a reference is not limited to the
disclosure of specific working examples.") (citations omitted).
We are also not persuaded by Appellants' argument that a skilled
person would not have been motivated to choose methionine from among
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Application 11/813,268
the amino acids disclosed in Franzen. Br. 6-7. The cited disclosures of
Franzen, as summarized above, teach that methionine is a palatability
enhancer for animal food. Although methionine is not among the amino
acids that Franzen discloses as "preferred," it is one of eight amino acids
"[s]pecifically identified as useful palatants" and is the subject of Franzen's
claim 11. Franzen, 3:3-10, 8:38--43. These disclosures are sufficient to
support the Examiner's finding of a motivation to combine methionine with
other palatability enhancers. Merck & Co., Inc. v. Biocraft Labs., Inc., 87 4
F.2d 804, 807 (Fed. Cir. 1989) ("in a section 103 inquiry, 'the fact that a
specific [embodiment] is taught to be preferred is not controlling, since all
disclosures of the prior art, including unpreferred embodiments, must be
considered,"' quoting In re Lamberti, 545 F.2d 747, 750 (CCPA 1976)).
Appellants argue that "Hayward or Bui would have failed to teach or
suggest the use of both methionine and yeast ... in the proportions required
by claim 1." Br. 7. That argument does not identify error in the Examiner's
rejection. The Examiner relies on Hayward and Bui to show details of a
nutritionally balanced pet food, not to show the claimed combination of
palatability enhancers or their proportions. Final Action 5---6, 10.
Appellants argue that the Examiner has not shown a reasonable
expectation of success, asserting it is speculative to assume that "more
palatability enhancers can be expected to act together to produce more
palatability." Br. 7. According to Appellants, palatability is "an
unpredictable art area" and palatability of the claimed combination "could
only have been determined empirically." Id. at 8.
We are not persuaded that Appellants identify error in the rejection.
Appellants do not direct us any requirement, in the appealed claims, the
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Application 11/813,268
Specification, or elsewhere, that the combination of methionine and yeast
provides "more palatability" than any comparative palatability enhancer.
Accordingly, the Examiner was not required to show that an ordinary artisan
would have expected the claimed combination to produce "more
palatability," as argued by Appellants. Br. 7. All that is required is evidence
sufficient to show that a person of ordinary skill in the art would have had a
reasonable expectation of success of enhancing the palatability of the food to
which the methionine and yeast are added. Intelligent Bio-Sys., Inc. v.
Illumina Cambridge Ltd., 821F.3d1359, 1367 (Fed. Cir. 2016) ("the correct
inquiry" requires "a reasonable expectation of achieving what is claimed in
the patent-at-issue"); In re 0 'Farrell, 853 F.2d 894, 903---04 (Fed. Cir. 1988)
("Obviousness does not require absolute predictability of success .... [A ]ll
that is required is a reasonable expectation of success.").
Here, the evidence is sufficient to support the Examiner's finding of a
reasonable expectation of success. The evidence includes, for example, the
above-cited teachings of Franzen that methionine is useful as a palatability
enhancer for dog food, the teachings of Gluck and Eichelburg that yeast is
useful as a palatability enhancer for pet food, the teachings of Thombre that
yeast is useful as a palatability enhancer for pharmaceutical compositions for
pets, and the teachings of Brunner, Shao, and Crane that pet food palatability
enhancers include amino acids and yeast. Gluck, Abstract, 3:4--7;
Eichelburg, Abstract, 3: 17-26; Thombre i-fi-1 51, 54, Abstract; Brunner,
Abstract, 4:56-63; Shao i14, Abstract; Crane, 14--15. In view of the
evidence cited by the Examiner, we are not persuaded by Appellants'
contention that palatability of the claimed combination would not have been
predicted by one of ordinary skill in the art.
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Application 11/813,268
We are not persuaded by Appellants' argument that Thombre teaches
a pharmaceutical composition and not a pet food. Br. 8. Appellants provide
no evidence or explanation that a palatability enhancer for pharmaceutical
compositions would not also have been expected to enhance the palatability
of food, when both are intended to be consumed by pets.
We are also not persuaded by Appellants' arguments that Brunner and
Shao teach away from combining methionine and yeast. Br. 8. According
to Appellants, Brunner teaches applying palatability enhancers to the surface
of low moisture pet food compositions, and Brunner and Shao each teach
that ingredients other than methionine and yeast are required components of
a palatability composition. Id.; see Brunner, 4:50-56; Shao, i-f 10, Abstract.
These disclosures do not, however, teach away from Appellants' claims,
which are directed to topical application of palatability enhancers. Br. 11-
14 (claims 1, 10, 21, 28, and 35). Appellants' claims do not specify water
content of the pet food composition and do not exclude the additional
ingredients taught by Brunner and Shao. Id.
We are also not persuaded that the Examiner has engaged in hindsight
reconstruction to pick and choose among isolated disclosures in the prior art,
as asserted by Appellants. As discussed above, the Examiner has pointed to
prior art teachings demonstrating that methionine and yeast were each
known in the art as palatability enhancers for pet food. Methionine is one of
only eight amino acids disclosed as useful palatability enhancers in Franzen
and the only amino acid recited in Franzen claim 11. Franzen, 2:52---61, 3:3-
7, 8:38--43. Yeast is the featured palatability enhancer in Eichelburg,
Eichelburg, Abstract, 3: 17-26, and is disclosed in conjunction with other
palatability enhancers, including amino acids, in Gluck, Thombre, Brunner,
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Appeal2015-002370
Application 11/813,268
Shao, and Crane. Gluck, Abstract, 3:4--7; Thombre i1i145-54, Abstract;
Brunner, Abstract, 4:56---63; Shao i-fi-14, 10, Abstract; Crane, 14--15.
Mixtures of yeast with other palatability enhancers are disclosed in Gluck.
Gluck, 3:10-12.
The cited references provide sufficient direction toward the claimed
combination, without the need for picking and choosing from an inordinate
number of choices or impermissible hindsight. The cited references also
provide a reasonable expectation that a combination of methionine and yeast
would be useful as a palatability enhancer for pet food. Accordingly, a
preponderance of the evidence shows that Appellants' claims are directed to
a combination of known palatability enhancers according to their established
functions and that the combination yields no more than predictable results.
KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007).
Based on the foregoing, the weight of the evidence supports the
Examiner's conclusion of obviousness. Therefore, the§ 103(a) rejection is
sustained.
CONCLUSION OF LAW AND DECISION
The decision of the Examiner is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a) (1).
AFFIRMED
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