Ex Parte Jobe et al

Board of Patent Appeals and Interferences

Apr 30, 2010

10308870 (B.P.A.I. Apr. 30, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte PATRICK A. JOBE, HENRY N. EICHER,
PIERRE P. FRUMHOLTZ, DUANE O. RASMUSSEN,
PHILLIP L. FISCHER, and JENNIFER L.G. VAN DE LIGT
________________

Appeal 2009-015075
Application 10/308,870
Technology Center 1700
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Decided: April 30, 2010
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Before CATHERINE Q. TIMM, LINDA M. GAUDETTE, and
KAREN M. HASTINGS, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeals under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 1-27, 29-31, 33, 34, 64-74, 76-84, and 86-91. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
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BACKGROUND
The invention relates to an animal feed.
Claims 1 and 29 are illustrative (emphasis added):
1. An animal feed comprising a flowable high fat/fiber
material, which comprises:

at least about 30 wt.% soy cotyledon fiber, oat hull fiber,
sunflower hull fiber, beet pulp, or a combination thereof; and

at least about 20 wt.% fatty material.

29. An animal feed comprising:

at least about 18 wt.% fatty material;

at least about 5 wt.% fiber including oat hull fiber,
sunflower hull fiber, beet pulp, soy cotyledon fiber, or a
combination thereof;

wherein the animal feed is in the form of pellets having a
pellet durability index of at least about 90%.

The Examiner relies upon the following prior art references in the
rejection of the appealed claims:
Ethington, Jr. 6.537,604 B1 Mar. 25, 2003
Block 6,596,768 B2 Jul. 22, 2003
Freeman 6,746,698 B2 Jun. 8, 2004
Purnutra Inc. CA 2324686 May 1, 2002
(hereinafter CA 686)

G. Lo, “Nutritional and Physical Properties of Dietary Fiber from
Soybeans”, Cereal Foods World, No. 7, (1989), pp. 530-534

Abel-Caines et al., “Effect of Soybean Hulls, Soy Lecithin, and Soapstock
Mixtures on Ruminal Fermentation and Milk Composition in Dairy Cows”,
Journal of Dairy Science vol. 81 (1998) pp. 462-470
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The Examiner has maintained, and Appellants seek review of, the
rejection of all the claims on appeal under 35 U.S.C. § 103(a) as being
unpatentable over the combined prior art of Freeman, Ethington, Lo, Abel-
Caines, CA 686 and Block.
Appellants present arguments in support of patentability of each
independent claim (App. Br. 16-24). Thus, in accordance with 37 C.F.R. §
41.37(c)(1)(vii), we select independent claims 1, 13, 19, 29, 64, 67 and 70 as
the representative claims on which our discussion will focus. However,
since claims 1, 19 and 35 as a group present the same or similar issues, and
claims 29, 64, 67 and 70 as a group present the same or similar issue, we
shall address the claims accordingly.
ISSUES ON APPEAL
(1) Has the Examiner erred in concluding that the combined prior art
would have suggested a feedstock comprising a “flowable” material of fat
and fiber in the required amounts as recited in each of claims 1, 13, and 19?
We answer this question in the negative.
(2) Has the Examiner erred in concluding that the combined prior art
would have suggested a feedstock comprising the fatty material and fiber in
the claimed amounts, and having the functional characteristic of “pellet
durability index” (claims 29, 67 and 70) or “pellet breaking index” (claim
64) or “oil release factor” (claim 70)?
We answer this question in the negative.

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FINDINGS OF FACT (FF)
Findings of fact throughout this opinion are supported by a
preponderance of the evidence. 1
Appellants’ Specification describes that the animal feed of their
invention may include fiber sources such as, but not limited, to soybean
hulls, as well as soy cotyledon material, and oat hull, sunflower hull, root
vegetable (beet pulp) (Spec. 4, [0008]).
None of Appellants’ claims explicitly list soybean hulls as the source
of the fiber material.
The Examiner correctly found that Freeman describes an animal feed
of pellets that may contain fat in any of the amounts as claimed in each of
claims 1, 29, 64, 67, and 70, and that also contain fiber, except that Freeman
does not explicitly describe use of more than 30 wt.% fiber (as required by
claims 1, 13 and 19) and does not explicitly name one of the fiber sources
recited in claim 1, 19, 29, 64, and 70 (Ans. 3, 4).
Appellants’ Specification states that “the terms ‘flowable’, . . . and
‘flowability’ as used herein describe a flow characteristic of particulate
materials, such as a powder or granular material.” (Spec. 5, [0009];
emphasis added).
One of ordinary skill in the art would have appreciated that the dry
animal pellets of Freeman are “flowable” in accordance with Appellants’
explanation of this term.

1 Abel-Caines, CA 686 and Block are cumulative and thus not necessary for
reaching our decision. Indeed, Lo is also not necessary, but is discussed
herein for completeness as it is evidence of the inherent characteristics of
soybean hull fiber and soy cotyledon, as these characteristics are recited in
independent claim 13.

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Freeman describes “soybean hulls, rice hulls, corn hulls . . . and the
like” as fiber sources (col. 3, ll. 56-60), “in an amount effective to provide
fiber to the animal” which may “vary greatly” (col. 3, ll. 60-65). Freeman
describes a preferred amount of “from about 1% to about 25% by weight of
the animal feed” (col. 3, ll. 65-67).
Freeman discusses that the animal feed pellets have “excellent
durability” (abstract).
As pointed out by the Examiner, Ethington establishes that soybean
hulls, oat hulls, and beet pulp, are all art recognized alternative fiber
materials for animal feed, and that using an amount of fiber greater than 30
wt.% is known in a high fiber animal feed (Ans. 4, 5; Ethington, col. 4, ll.
52-58, Table 1).
Lo establishes that soybean hulls and soy cotyledon (which is derived
from soybean hulls) are known alternative high quality sources of fiber for
animal feed, and that each comprises soluble and insoluble non-starch
polysaccharide in relative amounts that are encompassed by the claimed
ranges recited in independent claim 13.
One of ordinary skill in the art would have been aware that the various
fiber sources recited in Appellants’ claims are useful in animal feeds and
accordingly any one source or mixtures thereof would have predictably been
useful in animal feed.
Ethington establishes that one of ordinary skill in the art would have
appreciated that a pellet durability index (PDI) above 90 was desirable and
achievable for an animal feed (see, e.g., virtually every example shown in
Tables 6, 7, 8, 9; col. 13, ll. 32-34 (“Pellet quality was measured using the
standard determination of pellet durability index”)).
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PRINCIPLES OF LAW
In assessing whether a claim to a combination of prior art elements
would have been obvious, the question to be asked is whether the
improvement of the claim is more than the predictable use of prior art
elements according to their established functions. KSR Int'l. Co. v. Teleflex,
Inc., 550 U.S. 398, 417 (2007). The analysis need not seek out precise
teachings directed to the specific subject matter of the claim, for it is proper
to take account of the inferences and creative steps that a person of ordinary
skill in the art would employ. Id. at 418.
The test for obviousness is what the combined teachings of the
references would have suggested to those of ordinary skill in the art; one
cannot show non-obviousness by attacking references individually where the
rejections are based on combinations of references. In re Young, 927 F.2d
588, 591 (Fed. Cir. 1991); In re Merck & Co., Inc., 800 F.2d 1091, 1097-98
(Fed. Cir. 1986); In re Keller, 642 F.2d 413, 425 (CCPA 1981).
It is well established that when a claimed range overlaps or lies inside
a range disclosed by the prior art, a prima facie case of obviousness is
established. See In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003); In re
Geisler, 116 F.3d 1465, 1469-70 (Fed. Cir. 1997).
ANALYSIS
With respect to claims 1, 13, and 19, Appellants contend that the
references do not teach a “flowable” material (e.g., App. Br. 16), and further
that the amount of fiber taught in Freeman is not in an amount “at least about
30 wt.%.” Appellants also argue that Freeman and Ethington are concerned
with solving different problems, and Freeman teaches away from the
composition disclosed in Ethington (e.g., App. Br. 16), mainly because
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Freeman discusses that cornwater as used in Ethington is not a satisfactory
binder for its high fat pellets (id.). These contentions are not persuasive of
reversible error for the following reasons.
A reference “teaches away” when it suggests that the developments
flowing from its disclosures are unlikely to produce the objective of the
Appellant’s invention. See In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).
There is nothing in Freeman that suggests that the use of beet pulp or oat
hull fiber as taught in Ethington would have been undesirable. Nor do
Appellants point us to any discussion in Freeman discouraging the use of an
effective amount of fiber at least about 30 wt.%. To the contrary, Freeman
establishes that the amount of fiber is known to vary widely and is a result
effective variable (see FF). Ethington exemplifies use of fiber in amounts
above 30 wt.% is known in animal feed pellets (id.).
The law is replete with cases in which the difference between the
claimed invention and the prior art is some range or other variable within the
claims. These cases have consistently held that the Appellants must show
that the particular range is critical, generally by showing that the claimed
range achieves unexpected results relative to the prior art range. In re
Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990). Appellants have not
directed us to any credible technical reasoning or evidence sufficient to
refute the Examiner’s reasonable position of obviousness for the claimed
fiber range. Furthermore, Appellants have not contended that the claimed
fiber range provides unexpected results (see generally App. Br.; Reply Br.).
Finally, Appellants have not provided any persuasive technical
reasoning or evidence to support their position that Freeman does not teach a
“flowable” material. The Examiner’s position that the pelletized animal feed
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of Freeman/Ethington comprises a “flowable” material is reasonable in light
of the definition provided in Appellants’ Specification (see FF).
Accordingly, the Examiner’s position that one of ordinary skill in the
art would have found it obvious to use one of the claimed fiber sources in
the claimed amount of “at least about 30 wt%” in the flowable pelletized
animal feed of Freeman is reasonable. See e.g., KSR, 550 U.S. at 420-421
(one of ordinary skill in the art is “also a person of ordinary creativity, not an
automaton”). The use of any of the claimed fiber sources appears to be no
more than the predictable use of such a source for its established function.
KSR, 550 U.S. at 417.
Claims 29, 64, 67, and 70
These claims do not recite the “flowable” property of claims 1, 13,
and 19 above. These claims also do not require a minimum fiber content of
“about 30 wt.%” as required in each of claims 1, 13, and 19. Rather, these
claims require varying minimum amounts of fiber, each within the explicitly
taught preferred range of Freeman of about 1 to about 25 wt.% (see FF).
Accordingly, Freeman, modified to explicitly use any of the well known
alternative fiber sources recited in these claims as exemplified in Ethington
and/or Lo, encompasses these claims, except Freeman does not explicitly
teach “a pellet durability index of at least about 90%” (claims 29, 67, 70), a
“pellet breaking index of at least about 50%” (claim 64), or “an oil release
factor of no more than 40%” (claim 70).
As Appellants recognize, Ethington discusses pellet durability index
(see App. Br. 21 and FF). Ethington exemplifies that pellet durability index
values above 90 are well known for animal feed pellets (see FF). Since
Freeman teaches that its pellets have “excellent durability”, the Examiner’s
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implicit position that this property as claimed would have naturally flowed
from following the teachings of the prior art is reasonable (see, e.g., Ans. 6).
Furthermore, it would have been obvious to the artisan to optimize the
ingredients and their amounts (as the applied prior art amply illustrates that
both fat and fiber are known result effective variables for an animal feed) so
as to result in pellet durability index of Freeman’s pellets to at least about
90% in view of the teachings of Ethington as discussed above.
We also agree with the Examiner that since the prior art as modified
renders obvious the claimed ingredients and minimum amounts as
encompassed by these claims, that the desired additional properties claimed
(oil release factor, pellet breaking index) would also have naturally flowed
from following the suggestion of the prior art to use the fiber sources
encompassed by the claims in the animal feed of Freeman (e.g., see Ans. 7,
16). Ex parte Obiaya, 227 USPQ 58, 60 (BPAI 1985), aff'd mem., 795 F.2d
1017 (Fed. Cir. 1986) (holding that the recognition of another advantage
flowing naturally from following the suggestion of the prior art cannot be
the basis for patentability when the difference would otherwise be obvious).
Appellants do not provide any evidence or rely upon any persuasive
technical reasoning to show that these properties do not naturally follow
from following the teachings of the applied prior art (see generally App. Br.;
Reply Br.). Indeed, for example, Appellants’ Specification describes that
the oil release factor as claimed is “believed to be” due to the incorporation
of fat into the animal feed, which is taught by Freeman, versus the prior art
method of spraying fat onto the feed (Ans. 7; Spec. [0032] “The fatty
material is believed to be bound or within the fiber material to provide the
‘dry’ feel, unlike fatty material which has been sprayed onto the surface of
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materials” (emphasis added); and Spec. [0064], describing comparative
examples wherein “fat [was] sprayed over the surfaces of the feed as is
typically done in the animal feed industry.”). Thus, the Examiner’s position
that the high durability feed pellets of Freeman/Ethington, which
incorporates fat and fiber within the claimed amounts, would have had such
an oil release factor as recited in claim 70 is reasonable.
We have considered Appellants’ other arguments in the Appeal Brief
and Reply Brief, but do not find any of them persuasive, for essentially the
reasons explained by the Examiner.
CONCLUSION
In light of the evidence as a whole, Appellants have failed to identify
reversible error in the Examiner’s determination that the claims would have
been obvious over the prior art.
Accordingly, on the record before us, we sustain the rejection of
claims 1-27, 29-31, 33, 34, 64-74, 76-84, and 86-91 as maintained by the
Examiner.2
ORDER
The Primary Examiner’s decision is affirmed.
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(1)(v).

AFFIRMED

2Only those arguments actually made by Appellants have been considered in
this decision. Arguments which could have made but Appellants chose not
to make have not been considered and are deemed to be waived. See 37
C.F.R. § 41.37(c)(1)(vii) (2008).
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kmm

SCOTT T. PIERING
P.O. BOX 5624
MINNEAPOLIS, MN 55440-5624