Ex Parte Kerr et al

Patent Trial and Appeal Board

May 10, 2016

12762539 (P.T.A.B. May. 10, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
121762,539
132446 7590
Mars Petcare
Theresa Shearin
FILING DATE
04/19/2010
05/12/2016
315 Cool Springs Blvd.
Franklin, TN 37067
FIRST NAMED INVENTOR
George Scott Kerr
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.
IAM0099US2 3736
EXAMINER
SAY ALA, CHHAYA D
ART UNIT PAPER NUMBER
1791
NOTIFICATION DATE DELIVERY MODE
05/12/2016 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):
mars.patents@effem.com
theresa.shearin@effem.com
becca.barnett@effem.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GEORGE SCOTT KERR, GREGORY DEAN
SUNVOLD, LA WREN CE ANDREW SCHUMACHER,
DAVID WILLIAM SCHULLER, ROBBERT H. TERHAAR,
and MICHAEL J. BITTNER
Appeal2015-000476
Application 12/762,539
Technology Center 1700
Before: TERRY J. OWENS, WESLEY B. DERRICK, and
AVEL YN M. ROSS, Administrative Patent Judges.
ROSS, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellants2 appeal under 35 U.S.C. § 134(a) from a rejection of
claims 1-5, 10-12, 14--15, and 17-25. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We AFFIRM.
1 In our decision below, we refer to the Final Rejection appealed from, filed
October 22, 2013 (Final Act.), the Appeal Brief filed July 8, 2014 (Appeal
Br.), and the Examiner's Answer filed April 23, 2014 (Ans.).
2 Appellants identify the real party in interest as The Procter & Gamble
Company. Appeal Br. 1.
Appeal2015-000476
Application 12/762,539
STATEMENT OF CASE
The claims are directed to supplement for a pet food composition.
Spec. 1. Specifically, the claims relate to a pet supplement comprising a
glucose mimetic component and a fat component. Id. at 2. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A pet supplement composition comprising a glucose
mimetic component, a vitamin, and from about 25% to
about 35%, by weight of the composition, of a fat wherein
the fat comprises a cocoa butter component and wherein
the cocoa butter component comprises cocoa butter.
Claims Appendix at Appeal Br. 8.
REJECTIONS
The Examiner made the following rejections3:
A. Claims 1-5, 10-11, 14--15, 18, and 20-22 stand rejected
under 35 U.S.C §103(a) as being unpatentable over
Chapnick4 and Massimino5 in view of Tribelhorn6 and
Milburn 7 taken with evidentiary reference of Harel. 8 Final
Act. 15.
3 The recited rejections, Rejections A---C, include only pending rejections.
The Examiner withdrew several rejections in the Answer. Ans. 2-3.
4 Chapnick et al., US 2004/0228933 Al, published November 18, 2004
(hereinafter "Chapnick")
5 Massimino et al., US 2005/0249837 Al, published November 10, 2005
(hereinafter "Massimino").
6 Tribelhorn et al., US 2006/0228459 Al, published October 12, 2006
(hereinafter "Tribelhorn").
7 Milburn et al., US 2007/0149466 Al, published June 28, 2007 (hereinafter
"Milburn").
8 Harel, US 2008/0044481 Al, published February 21, 2008 (hereinafter
"Harel").
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B. Claims 17 and 19 stand rejected under 35 U.S.C §103(a)
as being unpatentable over Chapnick and Massimino in
view of Tribelhorn and Milburn taken with evidentiary
reference of Harel and in further view of Jones,9
Hamilton10 and Changing Times. 11 Id. at 19.
C. Claim 12 stands rejected under 35 U.S.C §103(a) as being
unpatentable over Chapnick and Massimino in view of
Tribelhorn and Milburn and further in view of Hayashi 12
and evidentiary reference of Harel. Id. at 19-20.
D. Claims 23-25 13 are rejected under 35 U.S.C §103(a) as
being unpatentable over Massimino in view of Tribelhorn
and Milburn. Id. at 20.
Appellants argue claim 1 as it applies to Rejection A and provide no
additional argument as to the separate patentability of claims 2-5, 10-12,
14--15, 17-22 or for Rejections C and D. Appeal Br. 4--6. Appellants also
argue claim 23 as it applies to Rejection D and provide no additional
9 Jones et al., US 5,962,043, issued October 5, 1999 (hereinafter "Jones").
10 Hamilton, US 2003/0060503, published March 27, 2003 (hereinafter
"Hamil ton").
11 Changing Times, The Kiplinger Magazine, Vol. 31, Issue 1, January, 1977
(hereinafter "Changing Times").
12 Hayashi et al., US 2001/0036488 Al, published November 1, 2001
(hereinafter "Hayashi").
13 The Examiner recites "claims 24--26" as being subject to the rejection.
Final Act. 20. Appellants mistakenly carry this forward in their Appeal
Brief. Appeal Br. 7. The Claims Appendix does not include claim 26. See
Claims Appendix at Appeal Br. 10. A review of the content of the rejection
shows that the Examiner intended the rejection to apply to claims 23-25.
Compare Final Act. 20-21 with Claims Appendix at Appeal Br. 10. We
note that claims 24--26, entered by amendment on February 21, 2013,
correspond to claims 23-25 in the Claims Appendix and are the same
claims.
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Application 12/762,539
argument directed to dependent claims 24 and 25. Therefore, to resolve the
issues on appeal, we focus our discussion on claim 1 (as it pertains to
Rejection A) and on claim 23 (as it pertains to Rejection D).
OPINION
Rejection A - Obviousness
The Examiner rejects claims 1-5, 10-11, 14--15, 18, and 20-22 as
obvious in light of the combination of Chapnick, Massimino, Tribelhom,
Milburn and Harel. Final Act. 15. The Examiner finds that Chapnick
teaches a dietary supplement comprising mannoheptulose, a sugar naturally
derived from avocados. Id. Chapnick, according to the Examiner, also
teaches that mannoheptulose "decreas[ es] serum insulin levels [0008],
therefore making it obvious that [ mannoheptulose] is a glucose mimetic."
Id. The Examiner finds that Massimino similarly teaches mannoheptulose as
a glucose mimetic (or a glucose anti-metabolite, see instant claim 3) in food
compositions, including pet food. Id. The Examiner also finds that
Massimino teaches a food composition with a fat content from about 5% to
40%. Id. at 16. And, the Examiner finds that Massimino teaches the addition
of vitamins and minerals to the food composition in Examples 2 and 3. Id.
The Examiner acknowledges that neither reference teaches that fat
component comprises cocoa butter. Id. But, the Examiner finds that
Tribelhom teaches cocoa butter as useful in pet food compositions. Id. In
particular, the Examiner states that
Tribelhom is drawn to "compositions of the present invention
having a lipid component comprising a cocoa butter component
and an animal-derived fat component are useful in providing
compositions that surprisingly mimic certain properties of
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chocolate and are useful in a variety of pet food applications. The
compositions of the invention provide a palatable pet food
composition which may be administered alone, or in
combination with other known pet food compositions, to provide
a unique feeding experience which appeals to both the pet and
pet caregiver alike. In addition, the compositions of the
invention may optionally be used to deliver environmentally
sensitive components which aid in certain biological functions of
a pet". (para [0005]).
Id. The Examiner also observes that "Tribelhom teaches use of cocoa butter
in conjunction with vitamins" and a fat content of about 5% to about 3 5%.
Id at 17.
Appellants present several arguments, none of which we find
persuasive of reversible error by the Examiner. Specifically, Appellants
argue that: ( 1) the Examiner employed improper hindsight reconstruction
(Appeal Br. 4); (2) neither Chapnick nor Massimino "disclose any problems
with formulating compositions with mannoheptulose, let alone motivate one
of ordinary skill in the art to combine mannoheptulose with a cocoa butter
component as claimed in independent claim 1" (Id. at 5); and (3) none of the
references teach a pet supplement with a cocoa butter component within the
claimed weight range as claim 1 (Id.).
With respect to the hindsight-reconstruction argument, Appellants
argue that "[t]he piecemeal reconstruction of an invention by assertedly
finding its individual elements in disparate documents and then combining
them to arrive at the invention is not the standard of§ 103."
It is improper to base a conclusion of obviousness upon facts gleaned
only through hindsight. The invention must be viewed not after the
blueprint has been drawn by the inventor, but as it would have been
perceived in the state of the art that existed at the time the invention was
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made. Sensonics Inc. v. Aerosonic Corp., 81F.3d1566, 1570 (Fed. Cir.
1996) (citing Interconnect Planning Corp. v. Feil, 774 F.2d 1132, 1138
(Fed. Cir. 1985)). However, "[a]ny judgment on obviousness is in a sense
necessarily a reconstruction based upon hindsight reasoning, but so long as it
takes into account only knowledge which was within the level of ordinary
skill at the time the claimed invention was made and does not include
knowledge gleaned only from applicant's disclosure, such a reconstruction is
proper." In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971).
Appellant's arguments do not convince of us any error by the
Examiner. Here, each of the recited references relate to pet food
compositions and additives. See Chapnick i-f 14; Massimino, Abstract;
Tribelhom, Abstract; Milburn i-f69; and Harel i-fl3. As the Examiner
correctly explained Chapnick and Massimino both teach use of
mannoheptulose, naturally found in avocados, as a glucose mimetic (also
glucose antimetabolite ). See Final Act. 15; see also Spec. 2 and 14 (glucose
mimetics include glucose antimetabolites ); Claims Appendix, at Appeal Br.
8 (same). Massimino and Tribelhom both teach inclusion of a fat
component (from about 5% to 40% by weight) and vitamin within the pet
supplement composition. Id. at 16-17. And, the Examiner explains that
Tribelhom "teaches that such a combination of cocoa butter and animal fat
can be used in any form of pet food composition, wherein the pet food is
nutritionally balanced as well, and for supplements such as treats, chews,
gravies and toppings (see 11 [0034]-[0035])." Id. at 17. The Examiner
explains that Tribelhon's composition
provide a palatable pet food composition which may be
administered alone, or in combination with other known pet food
compositions, to provide a umque feeding experience which
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appeals to both the pet and pet caregiver alike. In addition, the
compositions of the invention may optionally be used to deliver
environmentally sensitive components which aid in certain
biological functions of a pet.
Id. Tribelhom, Milburn and Harel teach the use of cocoa butter in
combination with environmentally sensitive or bioactive compounds. Id. at
17-18 and 22. From these teachings, the Examiner explains that the instant
invention would have been obvious to the skilled person in the art desiring
appeal and palatability as well as a stable carrier for environmentally
sensitive components. Id. at 24. The Examiner's articulated reasons for
combining the teachings of Chapnick, Massimino, and Tribelhom, among
others, are supported by the prior art disclosures. Moreover, Appellants do
not identify any knowledge relied upon by the Examiner that was gleaned
only from the Appellants' disclosure and was not within the level of skill in
the art at the time of the invention. In re McLaughlin, 443 F.3d at 1395.
Accordingly, we are not persuaded that the Examiner relied upon
impermissible hindsight in combining the recited references.
Next Appellants argue that "neither of these documents disclose any
problems with formulating compositions with mannoheptulose, let alone
motivate one of ordinary skill in the art to combine mannoheptulose with a
cocoa butter component as claimed in independent claim 1." Appeal Br. 5.
Again, we are unpersuaded of reversible error.
It has been established that the reason for combining references does
not have to be identical to that of the applicant in order to establish
obviousness. See In re Kemps, 97 F.3d 1427, 1430 (Fed. Cir. 1996). "As
long as some motivation or suggestion to combine the references is provided
by the prior art taken as a whole, the law does not require that the references
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be combined for the reasons contemplated by the inventor." Jn re Beattie,
974 F.2d 1309, 1312 (Fed. Cir. 1992). As discussed above, with respect to
Appellants' hindsight reconstruction argument, we find the Examiners
rationale for combining the references in Rejection A to be more than
adequate. That the recited references did not discuss Appellants'
reasoning-i.e., the difficulty in formulating compositions containing
mannoheptulose-is of little consequence. See KSR Int 'l Co. v. Teleflex
Inc., 550 U.S. 398, 420 (2007) (stating that it is error to "look only to the
problem the patentee [or applicant] was trying to solve.").
Finally, Appellants argue that none of the references teach or suggest
all of the limitations of claim 1. Appeal Br. 5. Specifically, Appellants
argue that "[ n ]one of the documents disclose, teach or suggest a pet
supplement composition comprising from about 25% to about 3 5% of a
cocoa butter component wherein the cocoa butter component comprises a
cocoa butter, as recited in independent claim 1". Id.
The test for obviousness is not whether the claimed invention is
expressly suggested in any one or all of the references, but whether the
claimed subject matter would have been obvious to those of ordinary skill in
the art in light of the combined teachings of those references. See In re
Keller, 642 F.2d 413, 425 (CCPA 1981). One of ordinary skill can use his
or her ordinary skill, creativity, and common sense to make the necessary
adjustments and further modifications to result in a properly functioning
device. See KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) ("a
court can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ").
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First, we note that the claim specifically recites "from about 25% to
about 35%, by weight of the composition, of a fat wherein the fat comprises
a cocoa butter component and wherein the cocoa butter component
comprises cocoa butter"-not "comprising from about 25% to about 35% of
a cocoa butter component wherein the cocoa butter component comprises a
cocoa butter" as Appellants suggest. Compare Claims Appendix at Appeal
Br. 8 with Appeal Br. 5. Consistent with the Examiner's determination, we
similarly conclude that an amount of fat within a range "from about 25% to
about 35%, by weight of the composition" is not inventive and obvious in
light of the combined teachings of the references in Rejection A. Massimino
and Tribelhom both teach inclusion of a fat component (from about 5% to
40% by weight) and vitamin within the pet supplement composition. See
Massimino i-f5 l and Tribelhom i-fi-134--35. And, like certain embodiments of
the instant invention, Tribelhom also teaches the fat, or lipid component,
comprises cocoa butter and an animal fat component. Tribelhom i-f5; Spec.,
p. 9 ("the fat may comprise a combination of a cocoa butter component and
an animal-derived fat component"). Harel teaches use of lipids including
animal fats and vegetable fats, e.g. cocoa butter, as functional equivalents for
use in animal food products. Harel i-fi-133, and 95-96. Moreover, Harel
teaches use of cocoa butter in probiotic microparticles in an amount of about
a 20% (i-f200, example 28) and as much as about 50% (i-f228) by weight. As
the Examiner aptly explains, "[b ]ased on these facts shown by the
combine[ d] references and their disclosures, it would have been obvious to
obtain the amount to be used for the cocoa butter, which is a fat or lipid, as a
carrier for [ mannoheptulose], where Harel shows that animal fat, cocoa
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butter components, [and] cocoa butter are function alternatives as fat or
lipid." Ans. 13-14.
Thus, Appellants have not convinced us of a reversible error in the
Examiner's rejection.
Rejection D- Obviousness
The Examiner rejects claims 23-25 as obvious in light of the
combination of Massimino, Tribelhorn, and Milburn. Final Act. 20. Claim
23 states:
23. A pet supplement composition compnsmg a glucose
mimetic component, and a fat wherein the fat comprises a
cocoa butter component and wherein the cocoa butter
component comprises cocoa butter.
See Claims Appendix at Appeal Br. 10.
The Examiner finds that, similar to claim 1, Massimino teaches a pet
supplement including a glucose anti-metabolic---or glucose mimetic
component (see instant claim 3}--comprising mannoheptulose, derived from
avocados. Final Act. 20. The Examiner also finds that Massimino includes
a fat but does not teach the fat component is cocoa butter. Id. The Examiner
finds that Tribelhorn teaches use of cocoa butter, as a lipid component, in
combination with pet foods. Id. The Examiner finds that such compositions
"provide a palatable pet food composition which may be administered alone,
or in combination with other known pet food compositions, to provide a
unique feeding experience that appeals to both the pet and pet caregiver
alike." Id.
Appellants argue that "Massimino does not disclose any problems
with formulating compositions with mannoheptulose and thus provides no
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motivation for one of ordinary skill in the art to combine mannoheptulose
with cocoa butter component as claimed in independent claims [23]."
Appeal Br. 7. For the reasons discussed above with respect to Rejection A,
we do no find Appellants argument persuasive.
Appellants additionally argue that because Tribelhorn and Milburn do
not teach a glucose mimetic and fail to disclose benefits associated with use
of cocoa butter in pet supplements, no motivation exists for "one skilled in
the art to combine a glucose mimetic component with a fat comprising a
cocoa butter component wherein the cocoa butter component comprises
cocoa butter as claimed." Id.
Appellants' arguments regarding Tribelhorn and Milburn alone are
not persuasive to show error in the Examiner's rejection, which is based on
the combined teachings of Massimino, Tribelhorn, and Milburn. As
discussed above, Massimino discloses mannoheptulose, a glucose anti-
metabolite, for use in pet food supplements. Massimino i-fi-134--35, and 45.
Milburn additionally teaches use of cocoa butter as a pharmaceutically
acceptable carrier for compositions "for treating or preventing a metabolic
disorder, such as insulin-resistance or other precursor symptom of type II
diabetes or complications thereof." Milburn i-fi-173 and 1113. And
Tribelhorn discloses compositions, comprising a lipid component including
cocoa butter, "that surprisingly mimic certain properties of chocolate and are
useful in a variety of pet food applications." Tribelhorn i-f5. The
compositions of Tribelhorn provide for a palatable pet food composition and
aid in the delivery of environmental sensitive components. Id. Given these
teachings, we agree with the Examiner that the use of cocoa butter
components "would have been considered obvious fat carriers for the
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glucose ant[i]-metabolite supplements of the primary references by one of
ordinary skill in the art at the time the invention was made." Final Act. 22.
Appellants' arguments fail to identify a reversible error in the
Examiner's rejection of claim 23.
CONCLUSION
The Examiner did not reversibly err in rejecting claims 1-5, 10-12,
14--15, 17-25 as unpatentable under 35 U.S.C. §103(a).
DECISION
For the above reasons, the Examiner's rejection of claims 1-5, 10-12,
14--15, 17-25 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)(l )(iv) (2009).
AFFIRMED
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