Ex Parte Nestor

Patent Trial and Appeal Board

Aug 7, 2017

13104162 (P.T.A.B. Aug. 7, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/104,162 05/10/2011 Karl E. Nestor JR. 2971-9910.1US
(69424-US-N
1683
80834 7590 08/09/2017
Maalehv PataYinns; Rr fTreenwonH/Onw AarnSoienoes; T T .P
EXAMINER
170 S. Main Street
Suite 1100
SAYALA, CHHAYA D
Salt Lake City, UT 84101 ART UNIT PAPER NUMBER
1791
NOTIFICATION DATE DELIVERY MODE
08/09/2017 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):
ptomail @ mcgiplaw. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KARL E. NESTOR, JR.
Appeal 2015-008095
Application 13/104,162
Technology Center 1700
Before MICHAEL P. COLAIANNI, MICHELLE N. ANKENBRAND, and
SHELDON M. McGEE, Administrative Patent Judges.
McGEE, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134, Appellant appeals from the Examiner’s
rejections under 35 U.S.C. § 103 of claims 1, 3—8, 11, and 21.
We have jurisdiction under 35 U.S.C. § 6.
We AFFIRM.
Appeal 2015-008095
Application 13/104,162
BACKGROUND
The subject matter on appeal is directed to methods of increasing meat
production from a silage fed animal by feeding the animal a com plant
variety exhibiting a reduced lignin content, such as a genetically modified
brown midrib (BMR) com plant containing the bm3 mutation. Spec. H 2, 3,
12,43.
Claim 1 is illustrative, is taken from the Claims Appendix of
the Appeal Brief, and appears below with the key limitation italicized:
1. A method of increasing the meat quantity of a silage-fed
animal, the method comprising:
providing in a beef finishing ration silage in an amount
that is greater than 15% of the dry matter in the animal’s diet,
wherein the silage is from a brown midrib (BMR) com plant
variety exhibiting decreased lignin content[,] and
feeding the animal with the silage in the beef finishing
ration,
wherein the beef finishing ration does not comprise grain
com[,] and
wherein the G:F ratio of the animal is increased,
compared to the G:F ratio of an animal of the same species being
fed a finishing ration comprising an equivalent amount of silage
produced from a com plant having a wild-type lignin content.
App. Br. 9.
REFERENCES
The Examiner relies on the following references as evidence of
unpatentability:
Beck ’080 US 5,767,080 June 16, 1998
Beck ’129 US 2008/0026129 A1 Jan. 31, 2008
2
Appeal 2015-008095
Application 13/104,162
E.A. Keith et al., Performance of Feedlot Cattle Fed Brown Midrib-
Three or Normal Corn Silage with Various Levels of Additional Corn Grain,
J. Anim. Sci. 52:8-13 (1981) (“Keith”).
Florence Vignols et al., The brown midrib3 (bm3) Mutation in Maize
Occurs in the Gene Encoding Caffeic Acid O-Methyltransferase, The Plant
Cell, vol. 7, 407-416 (April 1995) (“Vignols”).
M.L. May et al., Dried distillers grains with solubles with reduced
corn silage levels in beef finishing diets, J. Anim. Sci. 88:2456—2463 (2010)
(“May”).
Paul Q. Guyer, G78-395 Feeding Corn and Sorghum Silages to Beef
Cattle, Historical Materials from University of Nebraska-Lincoln Extension,
Paper 285 (1978) (“Guyer”).
Homer B. Sewell & Howell N. Wheaton, Corn Silage for Beef Cattle,
Historical Materials from University of Missouri Extension, Paper G2061
(1993) (“Sewell”).
Y Barriere & O Argillier, Brown-midrib genes of maize: a review,
Agronomic 13, 865—876 (1993) (“Barriere”).
Dow Agrosciences, LLC, Mycogen Seeds Introduces Nine New Silage
Hybrids for 2009, http://www.dowagro.com (Sept. 2, 2008) (“Mycogen
Seeds”).
REJECTIONS ON APPEAL1
I. Claims 1, 3, 4, and 6 under 35 U.S.C § 103(a) as being
unpatentable over Keith or Barriere in view of Guyer, Sewell, and
Beck ’129 (Final Act. 3—7);
1 The rejection under 35 U.S.C. § 112 (Final Act. 2) was withdrawn by the
Examiner in the Advisory Action dated February 4, 2015, and, therefore, is
not before us.
3
Appeal 2015-008095
Application 13/104,162
II. Claim 5 under 35 U.S.C § 103(a) as being unpatentable over Keith
or Barriere in view of Guyer, Sewell, Beck ’ 129, and Vignols
(Final Act. 7—8);
III. Claim 8 under 35 U.S.C § 103(a) as being unpatentable over Keith
or Barriere in view of Guyer, Sewell, Beck ’129, and Mycogen
Seeds (Final Act. 8—9);
IV. Claims 7 and 11 under 35 U.S.C § 103(a) as being unpatentable
over Keith or Barriere in view of Guyer, Sewell, Beck ’129, and
Beck ’080 (Final Act. 9-10); and
V. Claim 21 under 35 U.S.C § 103(a) as being unpatentable over
Keith or Barriere in view of Guyer, Sewell, Beck ’129, Beck ’080,
and May (Final Act. 10-15).
STATEMENT OF THE CASE
In the rejection of claim 1, the Examiner finds that Keith2 discloses
the two recited method steps of “providing” and “feeding” cows with a
brown midrib (BMR) com variety having a reduced lignin content (i.e.,
bm3), and that, as a result of following the recited steps, the animals gained
weight. Final Act. 3—5. The Examiner finds that Keith does not disclose
that the cows were fed a “beef finishing ration,” and relies on Guyer for this
disclosure. Id. at 5—6. The Examiner finds further that, while Keith does
“not disclose that the feed containing the BMR variety silage was in an
amount [of] greater than 15% of [dry matter] in the diet[,] Keith discloses” a
daily ration of 5.90 kg of dry matter “with no added com and added
2 Our affirmance is based on the Examiner’s reliance on Keith as the primary
reference, not Barriere, and we limit our discussion accordingly.
4
Appeal 2015-008095
Application 13/104,162
supplements.” Id. at 6. The Examiner also finds that Sewell discloses silage
rations of “from 30 to 40% dry matter” and that Beck ’129 discloses a
system designed to create “formulations that will yield consistent ruminal
productivity.” Id. Based on these teachings, the Examiner concludes that it
would have been obvious to the ordinary skilled artisan “to determine silage
concentrations in a diet formulation for finishing beef rations.” Id. Further,
the Examiner determines that the limitation requiring the gaimfeed (G:F)
ratio to be increased is an intended or an inherent result of carrying out the
steps taught by the prior art. Id. at 6—7, 15—16. The Examiner makes similar
findings and determinations with respect to independent claim 21. Id. at 10—
16.
Appellant presents separate arguments against the rejection of claims
1 and 21. App. Br. 5—8. Specifically, regarding claim 1, Appellant argues
that the Examiner erred “by completely failing to consider the recited result”
of the increased G:F ratio because such result “is not an intended result. . .
but rather the achieved result of the claim.” App. Br. 5; see also Reply Br.
3. Appellant argues further that Keith discloses that cows being fed the bm3
silage experienced an increase in weight gain, but only when those animals
consumed a higher quantity of BMR silage than the cows fed the normal
silage. App. Br. 6—7; Reply Br. 2—\. Appellant also urges that the recited
G:F ratio increase is an unexpected benefit of the claimed method. App.
Br. 5, 7. Finally, Appellant argues that, in addition to the arguments
presented for claim 1, the rejection of claim 21 is also erroneous because it is
narrower than claim 1 (i.e., “is a picture claim”), and that the recited increase
in G:F ratio is surprising. Id. at 7—8.
5
Appeal 2015-008095
Application 13/104,162
OPINION
Because Appellant presents separate arguments only for independent
claims 1 and 21 (App. Br. 5—8), the rejection of dependent claims 3—8 and
11 stand or fall with claim 1. 37 C.F.R. 41.37(c)(l)(iv). In deciding this
appeal, we consider Appellant’s arguments regarding claims 1 and 21
separately.
Claim 1
We are not persuaded that Appellant has identified reversible error in
the Examiner’s rejection of claim 1. In re Jung, 637 F.3d 1356, 1365—66
(Fed. Cir. 2011) (explaining the Board’s long-held practice of requiring
Appellants to identify the alleged error in the Examiner’s rejection).
“[T]he examiner bears the initial burden, on review of the prior art or
on any other ground, of presenting a prima facie case of unpatentability. If
that burden is met, the burden of coming forward with evidence or argument
shifts to the applicant.” In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
“The inherent teaching of a prior art reference, a question of fact, arises both
in the context of anticipation and obviousness.” In re Napier, 55 F.3d 610,
613 (Fed. Cir. 1995). “[I]n order to rely on inherency to establish the
existence of a claim limitation in the prior art in an obviousness analysisf,]
the limitation at issue necessarily must be present, or the natural result of the
combination of elements explicitly disclosed by the prior art.” PAR Pharm.,
Inc. v. TWIPharms, Inc., 773 F.3d 1186, 1195-96 (Fed. Cir. 2014). To
properly rely on the doctrine of inherency in a rejection, “the Examiner must
provide a basis in fact and/or technical reasoning to reasonably support the
determination that the allegedly inherent characteristic necessarily flows
from the teachings of the applied prior art.” Ex Parte Levy, 17 USPQ2d
1461, 1464 (BPAI 1990). Once the Examiner so provides, the burden shifts
6
Appeal 2015-008095
Application 13/104,162
to the patent applicant to demonstrate otherwise. See In re Best, 562 F.2d
1252, 1255 (CCPA 1977). Regardless of whether the rejection is based on
35 U.S.C. § 102 or § 103, “the burden of proof is the same, and its fairness is
evidenced by the PTO’s inability to manufacture products or to obtain and
compare prior art products.” Id.
Applying these concepts to the instant case, we find that the Examiner
provides sufficient basis in fact and technical reasoning in determining that
the recited G:F ratio would necessarily flow from, or would be the natural
result of, practicing the claimed method steps. Specifically, the Examiner
points to Keith’s disclosure that cows fed bm3 silage experienced a more
rapid increase weight relative to cows fed normal silage. Final Act. 3—5, 15—
16 (citing Keith, pp. 11—12). The Examiner also points out Keith’s
disclosure regarding bm3’ s lower lignin content, which results in “improved
weight gains and increased [dry matter] intake” and “greater fiber utilization
by the ruminant animal.” Final Act. 5 (citing Keith, p. 12, col. 1); see Keith,
p. 8, cols. 1, 2. Based on this disclosure, the Examiner reasonably finds that
“it was already known in the prior art that... 1) low lignin increased
productivity (weight gain) because of increased digestibility and 2) that feed
efficiency is low if ration digestibility is poor” and, thus, the claimed G:F
ratio is “simply an expected result that naturally flow[s] from following the
disclosed steps of the process suggested by the applied references.” Ans. 17.
By providing the necessary facts and technical reasoning to reach a
determination that achieving the recited G:F ratio would be inherent in
performing the method steps taught in the prior art, the Examiner satisfies
the Office’s initial burden of presenting a prima facie case of obviousness,
and thus shifts the burden to Appellant to rebut the prima facie case with
7
Appeal 2015-008095
Application 13/104,162
evidence or argument. In re Oetiker, 977 F.2d at 1445; In re Best, 562 F.2d
at 1255. This Appellant has failed to do.
First, we observe that Appellant fails to point to any evidence of
record to demonstrate that the claimed method steps would not inherently
result in the claimed G:F ratio increase. Rather, Appellant appears to admit
that this limitation is inherent by stating “there is no dispute that the claimed
methods do, in fact, result in an increased G:F ratio.” Reply Br. 3.
Despite this apparent admission, and rather than point to record
evidence, Appellant relies on attorney argument to attack the Examiner’s
prima facie case of obviousness. Specifically, Appellant argues that the
Examiner erred in relying on Keith’s disclosure because the cows fed bm3
silage in Keith were fed more product resulting in the weight gain, and that
the skilled artisan “would not have inferred that the [bm3\ animals were
utilizing the feed with greater efficiency.” App. Br. 6; see also id. at 7
(arguing that the ordinary skilled artisan “would have expected that the cattle
would [gain weight] by consuming more food.'1'’).
We disagree with Appellant’s characterization of Keith’s disclosure.
Although Keith does indicate that the animals that received the bm3 ration
were fed more on average per day on a weight basis than the animals
receiving the “normal” ration (5.90 vs. 5.43 kg dry material/day), Keith also
discloses a metric (i.e., “Feed conversion”) that measures how efficient the
underlying ration is at yielding an increase in meat quantity. Keith, p. 8, col.
2; p. 11, col. 1, Table 2; p.12, col. 1, Table 3. As the Examiner explains
(Adv. Act.3 3), and Appellant does not dispute, the “[fjeed conversion ratio
3 Advisory Action dated December 5, 2014.
8
Appeal 2015-008095
Application 13/104,162
is also known as the feed to meat ratio; this number is simply the pounds of
feed given to the animal divided by net production, measuring the animal’s
efficiency in converting food to meat or milk.” Keith’s “Feed conversion”
ratio (i.e., the feed:meat ratio), therefore, is the inverse of the claimed G:F
ratio. See Spec. 142 (explaining that feed efficiency “may be reported as
G:F (gaimfeed ratio), or similarly as F:G (feed:gain ratio, which is the
inverse of G:F)”). Thus, it follows that a lower “Feed conversion” number
represents a more efficient ration at converting feed to meat than does a
higher number.
Keith discloses in Table 2 that the bm3 silage ration (a feed
conversion of 7.43 kg dry matter fed/kg gain) was more efficient in
increasing steer weight in year 1 than that observed when feeding the normal
ration (a feed conversion of 7.56 kg dry matter fed/kg gain). Keith, p. 11.
That is, only 7.43 kg of the bm3 silage was required to yield one kg of
weight gain compared to 7.56 kg of normal silage for one kg of gain.
Similarly, in Table 3, Keith discloses further that the bm3 silage ration was
more efficient than the normal ration in year 2 (i.e., a feed conversion ratio
of 6.78 (bm3) vs. 7.24 (normal)). Keith, p. 12. Thus, Appellant’s
unsupported argument that Keith’s observations are based on a mere
increase in bm3 feed consumption is technically erroneous and, therefore,
not persuasive.
Furthermore, we observe that Keith discloses that, when using a
lignin-reduced com product such as bm3, “digestion of cellulose and
hemicellulose by mmen microorganisms was increased . . . [t]hus, more
energy per unit of [dry matter] from bm3 com was available to the animal
for growth.” Keith, p. 12, col. 1. Moreover, Keith discloses that “feed
efficiency” was “significantly better for yearling Holstein heifers fed bm3
9
Appeal 2015-008095
Application 13/104,162
than for those fed normal silage when these silages were offered without
added grain.” Id. Indeed, Keith reports that “at each level there was a trend
toward improved efficiency for animals fed 6 m3.” Id.
As such, we determine that the preponderance of the evidence on this
record supports the Examiner’s determination that the recited G:F ratio
increase is an inherent result of following the prior art method steps, and
furthermore note that Appellant has not revealed error in this determination.4
Regarding Appellant’s conclusory assertions that the recited G:F ratio
is “unexpected” (App. Br. 5, 7) or “surprising” (App. Br. 6, 8), we
emphasize that Appellant has not pointed to any evidence of record for
support. “It is well settled that unexpected results must be established by
factual evidence. ‘Mere argument or conclusory statements in the
specification does not suffice.’” In re Geisler, 116 F.3d 1465, 1470 (Fed.
Cir. 1997) (quoting In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984)).
Therefore, Appellant has failed to persuade us of reversible error in
the rejection of claim 1.
Claim 21
We have considered Appellant’s separate arguments regarding claim
21 (App. Br. 7—8) and have found them to be equally unpersuasive of
reversible error for the same reasons as outlined with respect to claim 1.
4 We do not agree with the Examiner’s determination that the recited
increase in the G:F ratio is an “intended result” of the recited method steps
(Final Act. 7; Ans. 6, 16).
10
Appeal 2015-008095
Application 13/104,162
SUMMARY
The Examiner’s final decision to reject claims 1, 3—8, 11, and 21 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
11