Ex Parte Miura et al

Patent Trial and Appeal Board

Oct 25, 2016

13021083 (P.T.A.B. Oct. 25, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/021,083 02/04/2011
38108 7590 10/27/2016
CERMAK NAKAJIMA MCGOWAN LLP
127 S. Peyton Street
Suite 210
ALEXANDRIA, VA 22314
FIRST NAMED INVENTOR
Makoto Miura
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.
US-444 3772
EXAMINER
SAY ALA, CHHAYA D
ART UNIT PAPER NUMBER
1791
NOTIFICATION DATE DELIVERY MODE
10/27/2016 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):
cgoode@cnmiplaw.com
ip@cnmiplaw.com
scermak@cnmiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MAKOTO MIURA, KAZUKI NAKAGAWA,
SHIGEYUKI TAKEUCHI, and KAZUMASA WATANABE
Appeal2015-004566
Application 13/021,083
Technology Center 1700
Before CHUNG K. PAK, JEFFREY T. SMITH, and
WESLEY B. DERRICK, Administrative Patent Judges.
PAK, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
decision finally rejecting claims 1, 3, 11, and 17 through 22. 2 We have
jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
The subject matter on appeal is generally directed to a feed additive
for pigs that comprises monosodium L-glutamate and L-tryptophan. (Spec.
i-f 15.) The mass ratio of free monosodium L-glutamate and free L-
1 Appellants identify the Real Party in Interest as Ajinomoto Co., Inc.
(Appeal Brief filed November 17, 2014, ("App. Br.") 3.)
2 Final Office Action entered April 10, 2014 ("Final Act.").
Appeal2015-004566
Application 13/021,083
tryptophan in the feed additive is from 0.5 to 30, and the free monosodium
L-glutamate is in the form of mono sodium L-glutamate monohydrate.
(Spec. iii! 15, 16.)
Details of the appealed subject matter are recited in representative
claim 1, which is reproduced below from the Claims Appendix to the Appeal
Brief:
1. A feed additive for pig, which comprises monosodium L-
glutamate and L-tryptophan, wherein the mass ratio of free
monosodium L-glutamate and free L-tryptophan (GLU/TRP
ratio) is from 0.5 to 30, and wherein the free monosodium L-
glutamate is in the form of monosodium L-glutamate
mono hydrate.
The Examiner maintains the following grounds of rejection in the
Answer entered on January 15, 2015 ("Ans."):
Claims 11, 20, and 22 under 35 U.S.C. § 112, second paragraph as
being indefinite for failing to particularly point out and distinctly claim the
subject matter that the inventors regard as the invention.
Claims 1, 3, 17-19, and 21under35 U.S.C. § 103(a) as unpatentable
over the disclosures of U.S. Patent 4,738,852 issued in the name of
Watanabe et al. on April 19, 1988 (hereinafter referred to as "Watanabe"),
Zhang et al., Tryptophan Enhances Ghrelin Expression and Secretion
Associated with Increased Food Intake and Weight Gain in Weanling Pigs,
33 Domestic Animal Endocrinology 47 (2007) (hereinafter referred to as
"Zhang"), Pastuszewska et al., Effects of Supplementing Pig Diets with
Tryptophan and Acidifier on Protein Digestion and Deposition, and on
Brain Serotonin Concentration in Young Pigs, 132 Animal Feed Science
2
Appeal2015-004566
Application 13/021,083
and Technology 49 (2007) (hereinafter referred to as "Pastuszewska"),
Lewis et al., Determination of the Optimum Dietary Proportions of Lysine
and Tryptophanfor Growing Pigs Based on Growth, Food Intake and
Plasma Metabolites, 107 J. Nutr. 1369 (1977) (hereinafter referred to as
"Lewis"), and U.S. Patent 3,362,828 issued in the name of Thrasher et al. on
January 9, 1968 (hereinafter referred to as "Thrasher") as evidenced by Mike
Varley, Taking Control of Feed Conversion Ratio (April 1, 2009)
www.pigprogress.net (hereinafter referred to as "Varley"), Proteins and
Amino Acids (2001) http://www.ncsu.edu/project/swine_
extension/nutrition/nutritionguide/protein%20and%20amino0/o20acidsi,Qro
taa.htm (hereinafter referred to as "Proteins and Amino Acids"), and
Wikipedia, Glutamate Flavoring (January, 2008)
en.wikipedia.org/wiki/Glutamate _flavoring (hereinafter referred to as
"Wiki pedia").
DISCUSSION
Upon consideration of the evidence on this appeal record and each of
Appellants' contentions, we determine that Appellants have not identified
reversible error in the Examiner's rejection of claims 11, 20, and 22 under
35 U.S.C. § 112, second paragraph and the Examiner's rejection of claims 1,
3, 17-19, and 21under35 U.S.C. § 103(a). Accordingly, we affirm these
rejections for the reasons set forth in the Answer. We add the discussion
below primarily for emphasis and completeness.
3
Appeal2015-004566
Application 13/021,083
Rejection of Claims 11, 20, and 22 under 35 US.C. § 112, Second
Paragraph
The Examiner determines that because claims 11, 20, and 22 depend
from cancelled claim 9, it is unclear which independent or dependent claims
they further limit, and the Examiner therefore does not further examine these
claims with respect to the prior art. (Ans. 2.)
Appellants argue that the Examiner should have objected to claims 11,
20, and 22, rather than rejecting them under 35 U.S.C. § 112, second
paragraph, and contend that the Examiner should have rejected these claims
over the prior art based on an interpretation of the claims that renders the
prior art applicable. (App. Br. 6-7.)
However, because claims 11, 20, and 22 depend from cancelled claim
9, it is impossible to determine the metes and bounds of the subject matter
encompassed by these claims. Hence, we find that the Examiner does not
err in rejecting these claims for indefiniteness, and does not err in declining
to examine these claims with respect to the prior art because to do so would
require considerable speculation with regard to the metes and bounds of the
claimed subject matter. In re Steele, 305 F.2d 859, 862 (CCPA 1962) ("Our
analysis of the claims indicates that considerable speculation as to meaning
of the terms employed and assumptions as to the scope of such claims were
made by the examiner and the board. [W]e do not think a rejection under 35
U.S.C. § 103 should be based on such speculations and assumptions."); In re
Wilson, 424 F.2d 1382, 1385 (CCPA 1970) ("Ifno reasonably definite
meaning can be ascribed to certain terms in the claim, the subject matter
does not become obvious- the claim becomes indefinite."). We
4
Appeal2015-004566
Application 13/021,083
accordingly sustain the Examiner's rejection of claims 11, 20, and 22 under
35 U.S.C. § 112, second paragraph.
Rejection of Claims 1, 3, 17-19, and 21under35 US.C. § 103(a)3
Appellants do not dispute the Examiner's finding that Watanabe
discloses that incorporating 0.001 o/o--0.1 % by weight of free L-tryptophan
into swine feed increased the body weight of the swine. (Compare Ans. 4, 6
with App. Br. 7-11.) Appellants also do not dispute the Examiner's finding
that Zhang discloses that increased ingestion of tryptophan by pigs improved
the pigs' weight gain and feed conversion. (Compare Ans. 4--5 with App.
Br. 7-11.) Nor do Appellants dispute the Examiner's finding that
Pastuszewska discloses that tryptophan regulates feed intake in pigs, and
tryptophan deficiency depresses pigs' feed intake and growth. (Compare
Ans. 5 with App. Br. 7-11.)
The Examiner acknowledges that Watanabe, Zhang, and
Pastuszewska do not disclose the use of monosodium L-glutamate as a feed
additive for pigs, and the Examiner relies on Thrasher's disclosure that
feeding pigs 0.005---0.02%4 by weight monosodium glutamate increases their
3 We limit our discussion to those claims separately argued, and claims not
separately argued stand or fall with the argued claims. 3 7 C.F .R.
§ 41.37(c)(l)(iv). Appellants appear to argue claims 1, 3, 17-19, and21 as a
group on the basis of claims 1 and 21. (See generally App. Br. 7-11.)
Therefore, for the purposes of this appeal, we select claims 1 and 21 as
representative, and decide the propriety of the rejection of claims 1, 3, and
17-19 based on these claims alone.
4 Thrasher discloses swine feed containing 0.01 % to about 5% monosodium
glutamate, and we find no disclosure in Thrasher of feed containing 0.005%
to 0.02% monosodium glutamate as the Examiner asserts.
5
Appeal2015-004566
Application 13/021,083
growth rate. (Ans. 5-6.) The Examiner acknowledges that Thrasher does
not disclose that the monosodium glutamate utilized in the pig feed was
monohydrate monosodium glutamate, and the Examiner relies on an
evidentiary reference-the Wikipedia article-as well as Appellants'
Specification, which teach that when glutamic acid and its salts, such as
monosodium glutamate, are dissolved in aqueous solution, such as that
occurs in the mouth, they are converted to glutamate ions, the form that
enhances taste. (Ans. 9-10.) The Examiner determines that a patentable
distinction therefore does not exist between monosodium glutamate and
monohydrate monosodium glutamate used in pig feed. (Id.)
The Examiner concludes that because Watanabe, Zhang,
Pastuszewska, and Thrasher are all drawn to increasing weight gain in pigs,
it would have been obvious to feed pigs a combination of both tryptophan
and monosodium L-glutamate or monosodium L-glutamate monohydrate to
increase weight gain. (Ans. 6-7.) The Examiner further concludes that one
of ordinary skill in the art would have arrived at the ratio of free
monosodium L-glutamate to free L-tryptophan recited in claim 1 through
routine experimentation and the ratio of the amount of tryptophan disclosed
in Thrasher and the amount of monosodium glutamate disclosed in
Watanabe falls within the claimed range. (Id.)
Claim 21 depends from claim 1 and recites a method for improving
the feed conversion ratio and body weight gain efficiency of pigs that
comprises feeding the pigs the feed additive of claim 1. The Examiner
determines that improving the feed conversion ratio and body weight gain
efficiency of pigs would have naturally flowed from following the
6
Appeal2015-004566
Application 13/021,083
suggestion stemming from the combined disclosures of Watanabe, Zhang,
Pastuszewska, and Thrasher of feeding pigs a combination of tryptophan and
mono sodium L-glutamate having a ratio of free mono sodium L-glutamate to
free L-tryptophan recited in claim 1. (Ans. 9.)
Appellants argue that the applied prior art, alone or in combination,
does not teach or suggest a combination of L-tryptophan and monosodium
glutamate, particularly monohydrate monosodium glutamate, and also does
not suggest the ratio of free monosodium L-glutamate to free L-tryptophan
recited in claim 1. (App. Br. 7-8.) Appellants further contend that the
applied prior art references do not disclose or suggest feed conversion ratio,
as recited in dependent claim 21, and therefore, one of ordinary skill in the
art would not have been motivated to combine the applied prior art in order
to determine the ratio free L-tryptophan to free monosodium L-glutamate
that would optimize the feed conversion ratio. (App. Br. 11.)
However, Zhang discloses that weight gain and feed conversion
improve in pigs when levels of dietary tryptophan increase, consistent with
Watanabe's disclosure that incorporating free L-tryptophan into swine feed
increases body weight, and Pastuszewska's disclosure that tryptophan
deficiency in pigs depresses their growth. (Zhang Abstract; Watanabe col.
2, 11. 35-39, 48-59; Pastuszewska 50.) Thrasher discloses that feeding
swine monosodium glutamate increases their growth rate and improves feed
conversion. (Thrasher col. 6, 11. 26-33.) Accordingly, we concur with the
Examiner that one of ordinary skill in the art seeking to increase body
weight and feed conversion in pigs reasonably would have been led to
incorporate either tryptophan or monosodium glutamate in the monohydrate
7
Appeal2015-004566
Application 13/021,083
form, or a combination of both tryptophan and monosodium glutamate in
monohydrate form, into feed for the pigs with a reasonable expectation that
using a combination of both amino acids would result in successful
improvements in weight gain and feed conversion. KSR Int 'l Co. v. Teleflex
Inc., 550 U.S. 398, 417 (2007) (quoting Sakraida v. Ag Pro, Inc., 425 U.S.
273, 282 (1976) ("[W]hen a patent 'simply arranges old elements with each
performing the same function it had been known to perform' and yields no
more than one would expect from such an arrangement, the combination is
obvious."); In re Kerkhoven, 626 F.2d 846, 850 (CCPA 1980) ("It is prima
facie obvious to combine two compositions each of which is taught by the
prior art to be useful for the same purpose, in order to form a third
composition which is to be used for the very same purpose.")
With respect to the ratio of free monosodium L-glutamate to free L-
tryptophan recited in claim 1, Appellants do not dispute the Examiner's
finding that the ratio of the amount of L-tryptophan disclosed in Watanabe
as useful for promoting weight gain in swine to the amount of monosodium
glutamate disclosed in Thrasher as useful for increasing growth rate in pigs,
is inclusive of the ratio of free monosodium L-glutamate to free L-
tryptophan recited in claim 1. (Compare Ans. 6 with App. Br. 7-11.) In re
Peterson, 315 F.3d 1325, 1329-330 (Fed. Cir. 2003) ("In cases involving
overlapping ranges, we and our predecessor court have consistently held that
even a slight overlap in range establishes a prima facie case of
obviousness."). Nor do Appellants dispute the Examiner's determination
that one of ordinary skill in the art would have optimized the ratio of free
monosodium L-glutamate to free L-tryptophan in pig feed through nothing
8
Appeal2015-004566
Application 13/021,083
more than routine experimentation to arrive at the ratio recited in claim 1.
(Compare Ans. 7 with App. Br. 7-11.) In re Aller, 220 F.2d 454, 456
(CCP A 1955) ("[W]here the general conditions of a claim are disclosed in
the prior art, it is not inventive to discover the optimum or workable ranges
by routine experimentation."). Accordingly, Appellants' arguments that the
applied prior art does not disclose or suggest the ratio of free monosodium
L-glutamate to free L-tryptophan recited in claim 1 are unpersuasive of
reversible error.
Appellants further argue that the mono hydrate form of monosodium
L-glutamate imparts a surprising and unpredictable improvement in feed
conversion ratio in pigs as compared to glutamic acid. 5 (App. Br. 8-11.) In
support of this assertion, Appellants rely on data from the experimental
examples provided in the Specification. (Id.) Specifically, Appellants assert
that the improvement in feed conversion ratio obtained by feeding pigs
Samples 1 and 2 from Example 1, and Sample 4 from Example 2, which
contained monohydrate monosodium L-glutamate, was much larger than the
improvement in feed conversion ratio obtained by feeding pigs Samples 5
and 6 from Example 3, which contained glutamic acid. (App. Br. 8-10;
Spec. i-fi-167-95.) Appellants explain that these improvements in feed
5 As indicated supra, Thrasher, one of the closest pieces of prior art,
describes using monosodium L-glutamate, rather than glutamic acid. In re
Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991) ("[W]hen
unexpected results are used as evidence of nonobviousness, the results must
be shown to be unexpected compared with the closest prior art.")
9
Appeal2015-004566
Application 13/021,083
conversion ratio were determined by normalizing the results from
experimental Samples 1, 2, 4, 5, and 6 against results from Comparative
Samples 4, 8, and 12, which contained only L-tryptophan, and no
monosodium glutamate or glutamic acid. (App. Br. 9.)
However, Appellants do not show that the improvement in feed
conversion ratio obtained from feeding pigs Samples 1, 2, and 4 containing
monohydrate monosodium L-glutamate and L-tryptophan would have been
unexpected. (App. Br. 8-11.) When the feed conversion ratio obtained
from Sample 2, containing 0.11 % L-tryptophan and 1.13% monohydrate
monosodium L-glutamate, is compared to the feed conversion ratio obtained
from Control 7, containing 1.13% monohydrate monosodium L-glutamate,
and Control 8, containing 0.11 % L-tryptophan, it appears that the
improvement in feed conversion ratio for Sample 2 reflects nothing more
than the expected, additive effect of feeding pigs both L-tryptophan and
monohydrate monosodium L-glutamate relative to feeding pigs each
compound individually. (Spec. i1i172-74, 81-83, 91-93.) Such results
would not have been unexpected in view of Thrasher's teaching that
monosodium glutamate improves feed conversion, and Zhang' s teaching that
tryptophan improved feed conversion. (Thrasher col. 6, 11. 26-33; Zhang
Abstract.) In other words, Appellants do not demonstrate that the feed
conversion ratio data obtained from the relied-upon experimental examples
are not a result of the total amount of the compounds, which is far greater
than the amount of the individual compound employed, known to improve
feed conversion that was fed to the pigs, rather than the result of the
monohydrate form of monosodium L-glutamate fed in combination with
10
Appeal2015-004566
Application 13/021,083
tryptophan at a specific ratio. (App. Br. 8-11.); In re Freeman, 474 F.2d
1318, 1324(CCPA1973) (to show unexpected results, applicant must
establish: "( 1) that there actually is a difference between the results obtained
through the claimed invention and those of the prior art, ... and (2) that the
difference actually obtained would not have been expected by one skilled in
the art at the time of invention") (citation omitted); In re Klosak, 455 F.2d
1077, 1080 (CCPA 1972) ("the burden of showing unexpected results rests
on he who asserts them"). In fact, Appellants fail to direct us to any
statement in the Specification attesting to the unexpected nature of the
relied-upon data, or to any other persuasive evidence or averment evincing
that these results would have been unexpected by one of ordinary skill in the
art at the time of the invention. (App. Br. 8-11 ); see, e.g., In re Geisler, 116
F.3d 1465, 1471 (Fed. Cir. 1997) ("Geisler made no such assertion [that
results were unexpected] in his application. Nor did Geisler submit any such
statement through other evidentiary submissions, such as an affidavit or
declaration under Rule 132 .... Instead, the only reference to unexpected
results was a statement by Geisler's counsel ... that Geisler's results were
'surprising."').
In addition, Appellants do not demonstrate that the relied-upon,
narrow showing of five inventive Samples supports patentability over the
entire scope of the feed additives recited in claim 1. (App. Br. 8-11.)
While the showing is limited to using the specific amounts of L-tryptophan
and monohydrate monosodium L-glutamate to an unknown specific feed, the
claims are not so limited. In re Harris, 409 F.3d 1339, 1344 (Fed. Cir.
2005) ("Even assuming that the results were unexpected, Harris needed to
11
Appeal2015-004566
Application 13/021,083
show results covering the scope of the claimed range. Alternatively Harris
needed to narrow the claims."); In re Greenfield, 571F.2d1185, 1189
(CCPA 1978) ("Establishing that one (or a small number of) species gives
unexpected results is inadequate proof, for 'it is the view of this court that
objective evidence of non-obviousness must be commensurate in scope with
the claims which the evidence is offered to support."') (quoting In re Tiffin,
448 F.2d 791, 792(CCPA1971)).
Thus, we find no reversible error in the Examiner's determination
that the evidence of unobviousness relied on by Appellants does not
outweigh the evidence of obviousness proffered by the Examiner. We
accordingly sustain the rejection of claims 1, 3, 17-19, and 21 under
35 U.S.C. § 103(a).
CONCLUSION
In view of the reasons set forth in the Answer and above, we affirm
the Examiner's rejection of claims 11, 20, and 22 under 35 U.S.C. § 112,
second paragraph, and the Examiner's rejection of claims 1, 3, 17-19, and
21 under§ 103(a).
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).
AFFIRMED
12