Ex Parte Yamka et al

Patent Trial and Appeal Board

Aug 16, 2016

12528158 (P.T.A.B. Aug. 16, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/528, 158 01/04/2010
23909 7590 08/18/2016
COLGATE-PALMOLIVE COMPANY
909 RIVER ROAD
PISCATAWAY, NJ 08855
FIRST NAMED INVENTOR
Ryan Michael Yamka
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.
8172-00-HL 1953
EXAMINER
SCHLIENTZ, NATHAN W
ART UNIT PAPER NUMBER
1616
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 RYAN MICHAEL Y AMKA,
KIM GENE FRIESEN, and STEVEN CURTIS ZICKER
Appeal2014-006472
Application 12/528,158
Technology Center 1600
Before JEFFREY N. FREDMAN, JACQUELINE T. HARLOW, and
RICHARD J. SMITH, Administrative Patent Judges.
FREDMAN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal 1 under 35 U.S.C. § 134 involving claims to a pet
food composition. The Examiner rejected the claims as anticipated and as
obvious. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
1 Appellants identify the Real Party in Interest as Hill's Pet
Nutrition, Inc. (See Br. 2).
Appeal2014-006472
Application 12/528,158
Statement of the Case
Background
"Animals generally lose bone mineral content as they increase in age,
resulting in osteopenia, and this loss of bone mineral content is the major
cause of osteoporosis, which may cause a greater propensity for fracture"
(Spec. i-f 5). "Foods and supplements have been developed which retard
bone loss, or aid in re-calcification of bone. However, there is a continuing
need to develop such compositions, including compositions that promote
bone formation in growing animals so as to avoid such conditions when the
animal matures" (Spec. i-f 5).
The Claims
Claims 1---6 and 8-22 are on appeal. Claim 1 is representative and
reads as follows:
1. A pet food composition comprising: about 0.1 % to about
0.7% eicosapentaenoic acid (EPi\), about 50 ppm to about 200
ppm manganese, about 0.5% to about 1.6% methionine, and
about 4000 ppm to about 7500 ppm choline.
The issues
A. The Examiner rejected claims 1---6, 8-11, 20, and 21under35 U.S.C.
§ 102(a) and (e) as anticipated by Friesen2 (Final Act. 2-6).
B. The Examiner rejected claims 1---6 and 8-10 under 35 U.S.C. § 103(a)
as obvious over Zicker, 3 Lin, 4 Boudreau, 5 and admitted prior art (Final Act.
9-12).
2 Friesen et al., WO 2006/074089 A2, published July 13, 2006
("Friesen").
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C. The Examiner rejected claims 11-22 under 35 U.S.C. § 103(a) as
obvious over Zicker, Lin, Boudreau, admitted prior art, Kelley, 6 Edwards, 7
and Harper8 (Ans. 13-16).
D. The Examiner rejected claims 12-14, 16-19, and 22 under 35 U.S.C.
§ 103(a) as obvious over Friesen, Kelley, Edwards, and Harper (Ans. 16-
18).
A. 35 USC§ 102(a) and (e) over Friesen
The Examiner finds "the claimed ranges and the ranges of the prior art
touch and overlap, and the ranges of the claims are not directed to a more
narrow range than the prior art" (Final Act. 8).
The issue with respect to this rejection is: Does the evidence of
record support the Examiner's conclusion Friesen anticipates the claims?
Findings of Fact
1. Friesen teaches
feeding a super senior feline a composition in an amount
effective to enhance the feline's alertness and vitality. The
composition generally comprises ... from about 0.1 % to about
0.30% ... DHA, ... from about 0.2% to about 0.5% ... EPA, .
. . from about 1600 ppm to about 5000 ppm ... choline, ...
3 Zicker et al., WO 2005/006877 Al, published Jan. 27, 2005
("Zicker").
4 Lin et al., US 5,690,988, issued Nov. 25, 1997 ("Lin").
5 Boudreau et al., US 4,267,195, issued May 12, 1981
("Boudreau").
6 Kelley, R., WO 2005/032271 Al, published Apr. 14, 2005.
7 Edwards, S., WO 2004/095940 Al, published Nov. 11, 2004.
8 Harper, E., WO 00/44375 Al, published Aug. 3, 2000.
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Application 12/528,158
from about 50 ppm to about 150 ppm ... manganese, and ... at
least about 0.4% to about 1.5% methionine.
(Friesen i-f 30).
Principles of Law
If the prior art discloses its own range, rather than a specific
point, then the prior art is only anticipatory if it describes the
claimed range with sufficient specificity such that a reasonable
fact finder could conclude that there is no reasonable difference
in how the invention operates over the ranges.
Ineos USA LLC v. Berry Plastics Corp., 783 F.3d 865, 869 (Fed. Cir. 2015).
Analysis
The Examiner finds that because the "claimed range for choline
(about 4000 ppm to about 7500 ppm) and the range of the prior art (about
1600 ppm to about 5000 ppm) touch and overlap, and the ranges of the
claims are not directed to a more narrow range ... Friesen et al. anticipates
instant claim 1" (Ans. 3--4).
Appellants contend that "such disclosures fail to describe the
presently claimed range of Claim 1 with sufficient specificity to be
anticipatory" (Br. 3).
We find that Appellants have the better position. Friesen teaches
ranges designed for alertness and vitality of elderly felines (FF 1) while the
instant claims are drawn to improving bone and joint health (see, e.g., claims
11 and 21 ). The Examiner has not established that there is no difference in
operation between the ranges described in Friesen and those in the instant
claims. We note that "picking and choosing may be entirely proper in the
making of a 103, obviousness rejection, where the applicant must be
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Application 12/528,158
afforded an opportunity to rebut with objective evidence any inference of
obviousness ... but it has no place in the making of a 102, anticipation
rejection." In re Arkley, 455 F.2d 586, 588 (CCPA 1972).
Conclusion of Law
The evidence of record does not support the Examiner's conclusion
Friesen anticipates the claims.
B. 35 USC§ 103(a) over Zicker, Lin, Boudreau, and admitted prior art
The Examiner finds that Zicker teaches "compositions comprising at
least one sulfur-containing amino acid, at least one omega-3 fatty acid, and
an additional antioxidant" (Final Act. 10). The Examiner finds that "[ w ]ith
regard to the concentrations of manganese, choline and lysine, these
components are well known in the art as components in pet food
compositions. A person having ordinary skill in the art would optimize the
concentrations of the known ingredients through routine experimentation"
(Id. at 11).
The issue with respect to this rejection is: Does the evidence of
record support the Examiner's conclusion Zicker, Lin, Boudreau, and
admitted prior art render the claims obvious?
Findings of Fact
2. Zicker teaches "companion-animal diet compositions and
methods for decreasing the deterioration in mental activities such as that
associated with aging" (Zicker i-f 2).
3. Table 2 of Zicker teaches the use of 0.11 wt % eicosapentaenoic
acid and 1.29 wt % methionine in feline diet compositions (see Zicker 11 ).
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Application 12/528,158
4. Lin teaches "a cat food composition of improved palatability
wherein a palatability enhancing amount of a choline compound is
incorporated within" (Lin 1 :53-55).
5. Lin teaches that "a preferred range of about 0.30 to about
0.60% by weight [of choline] is included in the food composition" (Lin
3:47-50), an amount identified as "about 3000 to about 6000 ppm" by the
Examiner (see Final Act. 11 ).
6. Lin teaches the use of a cat food comprising "minor amounts of
yeast, cellulose, fiber, salt (sodium chloride), vitamins and minerals" (Lin
4:65---67).
7. Boudreau teaches a "process for improving the palatability of a
nutritionally balanced dog food containing protein, fat, carbohydrates,
vitamins and minerals, consisting essentially of incorporating ... a
palatability improving material selected from the group consisting of ... L-
lysine" (Boudreau 3:29-35).
8. Table 2 of the Specification teaches that manganese is present
in commercial pet foods in amounts ranging from 56 to 77 ppm (see Spec.
ii 37).
Principles of Law
"The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results."
KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).
Analysis
We adopt the Examiner's findings of fact and reasoning regarding the
scope and content of the prior art (Final Act 9-12; FF 2-8) and agree that the
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Application 12/528,158
claims are rendered obvious by Zicker, Lin, Boudreau, and admitted prior
art. We address Appellants' arguments below.
Appellants contend that "it is not clear that the ordinary artisan, who
is presumed to have read Zicker, Lin and Boudreau, would have received
any suggestion or motivation to modify the composition of Zicker to provide
the pet food composition of claims 1-6 and 8-1 O" (Br. 5).
We are not persuaded. As Appellants are undoubtedly aware, in KSR,
the Supreme Court rejected the rigid application of the teaching, suggestion,
and motivation test. KSR, 550 U.S. at 417. Instead, the Supreme Court
found that "a court must ask whether the improvement is more than the
predictable use of prior art elements according to their established
functions." Id.
Appellants have provided no evidence that the obvious combination
of known pet food ingredients was anything other than predictable, or that
the ranges selected were anything other than obvious over the amounts
disclosed in the prior art. Wrigley is instructive in finding "a strong case of
obviousness ... [where the claim] recites a combination of elements that
were all known in the prior art, and all that was required to obtain that
combination was to substitute one well-known ... agent for another." Wm.
Wrigley Jr. Co. v. Cadbury Adams USA LLC, 683 F.3d 1356, 1364 (Fed.
Cir. 2012). The instant case is similarly strong, with all of the elements
being taught for use in pet food compositions.
Appellants contend that
the Examiner has ignored the clear teaching away from the
claimed invention by the cited references. Zicker teaches a
feline diet composition. See, Abstract and paragraphs [0004]
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Application 12/528,158
and [0005]. Lin discloses that cats are notoriously fickle in their
food preferences and require a high degree of palatability. See,
col. 1, lines 27-29. In this regard, Lin teaches providing a food
composition having improved palatability to cats, by including
a palatability enhancing amount of choline. See, Abstract. In
contrast, Boudreau is directed to the identification of certain
compounds naturally present in raw meat, which when applied
to dog food in effective amounts, can increase the palatability
for dogs.
(Br. 5).
We are not persuaded. Claim 1 is not limited to a pet food
composition for any specific animal and claim 6, the claim for which
Boudreau is relied upon, is also open to any animal including dogs or cats.
See In re Self, 671F.2d1344, 1348 (CCPA 1982) ("[A]ppellant's arguments
fail from the outset because . . . they are not based on limitations appearing
in the claims.").
\X/ e also find the teaching a\~1ay arguments unpersuasive. i~\~ teaching
away requires a reference to actually criticize, discredit, or otherwise
discourage the claimed solution. See In re Fulton, 391F.3d1195, 1201
(Fed. Cir. 2004) ("The prior art's mere disclosure of more than one
alternative does not constitute a teaching away from any of these alternatives
because such disclosure does not criticize, discredit, or otherwise discourage
the solution claimed"). Appellants do not identify, and we do not find, any
teaching in Zicker, Lin, or Boudreau that teaches the use of lysine would
make cat food unpalatable or otherwise discredit or discourage the inclusion
of lysine in cat food.
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Application 12/528,158
Appellants contend that "in order to maintain the present rejections
under 35 U.S.C. § 103, the Examiner has improperly relied on information
gleaned only from applicants' disclosure" (Br. 6).
We find this argument unpersuasive. Appellants' Specification states
that "[i]t is understood by one of skill in the art that the essential amino acids
varies from species to species, depending upon the organism's metabolism.
For example, it is generally understood that the essential amino acids for
dogs and cats (and humans), are ... lysine" (Spec i-f 24).
The teaching of the Specification that lysine is an "essential amino
acid" because it is "understood by one of skill in the art" is the essence of
admitted prior art. See Riverwood Int 'l Corp. v. R.A. Jones & Co., 324 F .3d
1346, 1354 (Fed. Cir. 2003) (A "statement by an applicant during
prosecution identifying certain matter not the work of the inventor as 'prior
art' is an admission that the matter is prior art.") Thus, the Examiner
properly relied upon the Specification's admission that the artisan would
have known lysine was an essential amino acid in felines and dogs.
Conclusion of Law
The evidence of record supports the Examiner's conclusion Zicker,
Lin, Boudreau, and admitted prior art render the claims obvious.
C. 35 US.C. § 103(a) over Zicker, Lin, Boudreau, admitted prior art,
Kelley, Edwards, and Harper
The Examiner finds it obvious to "administer the compositions
according to Zicker et al. to cats or dogs, pregnant cats of dogs, and kittens
and puppies" because "Kelley, Edwards and Harper teach numerous benefits
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Application 12/528,158
associated with feeding dogs, cats, kittens and puppies compositions
comprising the components as taught by Zicker et al., i.e. DHA, vitamin E
and vitamin C" (Final Act. 15).
The issue with respect to this rejection is: Does the evidence of
record support the Examiner's conclusion that the prior art render the claims
obvious?
Findings of Fact
9. Zicker teaches pet foods where "omega-3 fatty acids can also be
present" and that"[ o ]mega-3 fatty acids found in nature include
eicosapentaenoic acid (EPA), docosahexaenoic acid (DHA)" (Zicker i-f 19).
10. Kelley teaches "enhancing ability to learn in a puppy or kitten
comprising orally administering to the puppy or kitten a composition
comprising an essential fatty acid component comprising a therapeutically
effective amount of DHA" (Kelley 2).
11. Edwards teaches
a method to improve the development of an animal species
comprising; i) administering to said animal species at least
one long fatty acid wherein said fatty acid is provided during
late gestation and/or during lactation; and ii) allowing an
infant of said species to suckle on said animal administered
said long chain fatty acid
(Edwards 3 :23-29).
12. Edwards teaches that "[p ]referably said companion mammal is
selected from the group consisting of: dog; cat" (Edwards 4: 14--15).
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13. Edwards teaches that in "a preferred method of the invention
docosahexanoic acid is provided as a supplement to animal feed" (Edwards
4:26-27).
14. Harper teaches "a method for increasing the plasma vitamin E
level in a domesticated cat or dog" (Harper 1: 18-19).
Analysis
We adopt the Examiner's findings of fact and reasoning regarding the
scope and content of the prior art (Final Act 13-15; FF 2-14) and agree that
the claims are rendered obvious by Zicker, Lin, Boudreau, admitted prior art,
Kelley, Edwards, and Harper. We address Appellants' arguments below.
Appellants contend that
there are no reasons of record supporting a conclusion that
individual components, recited individually by the separate
references (DHA for enhancing learning by Kell[ e ]y; DHA for
enhancing viability, weight and behavior by Edwards; vitamin
E and vitamin C to address oxidative stress in the domestic cat
or dog, by Harper) would have provided the results of the
methods of claims 11-22.
(Br. 7).
We are not persuaded. Zicker teaches inclusion of omega-3 fatty
acids including docosahexanoic acid in pet food (FF 9), and with Lin and
admitted prior art renders the composition of claim 1 obvious as already
discussed. Kelley and Edwards provide reasons to feed pet foods with
docosahexanoic acid to kittens or pregnant cats (FF 10-13). Thus, we agree
with the Examiner that "orally administering DHA to a maternal animal
during gestation, nursing, or weaning of the puppy or kitten" would have
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Application 12/528,158
been obvious for the benefits identified by Kelley and Edwards (Ans. 8; FF
10-13).
A prior art reference without express reference to a claim limitation
may nonetheless anticipate by inherency. See In re Cruciferous Sprout
Litig., 301 F.3d 1343, 1349 (Fed. Cir. 2002). Just as the functional preamble
in Cruciferous Sprout requiring "'preparing a food product rich in
glucosinolates'" was anticipated by an identical prior art process of growing
sprouts resulting in the inherent production of glucosinolate rich sprouts, the
obvious process of feeding Zicker's DHA containing composition to kittens
or pregnant cats, as expressly suggested by Kelley and Edwards, would
inherently satisfy the requirement to promote bone formation or joint
health. 9
Conclusion of Law
The evidence of record supports the Examiner's conclusion that the
prior art render the claims obvious.
D. 35 US. C. § 103 (a) over Friesen, Kelley, Edwards, and Harper
The Examiner finds the claims obvious "because Kelley, Edwards and
Harper teach numerous benefits associated with feeding dogs, cats, kittens
and puppies compositions comprising the components as taught by Friesen
et al., i.e. DHA, vitamin E and vitamin C" (Final Act. 18).
Appellants contend that:
9 "[T]he inherency doctrine may apply to an otherwise obvious
claim." Allergan, Inc. v. Sandoz Inc., 726 F.3d 1286, 1294 fn. 1
(Fed. Cir. 2013).
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Application 12/528,158
the Examiner has not met the legal burden of sustaining a prima
facie rejection because there are no reasons of record
supporting a conclusion that individual components, recited
individually by the separate references (DHA for enhancing
learning by Kell[ e ]y; DHA for enhancing viability, weight and
behavior by Edwards; vitamin E and vitamin C to address
oxidative stress in the domestic cat or dog, by Harper) would
have provided the results of the methods of claims 12-14, 16-19
and 22.
(Br. 8).
We find that the Examiner has the better position. Friesen teaches
compositions comprising DHA as well as all of the remaining components
for pet food in overlapping amounts (FF 1) and Kelley and Edwards provide
reasons to feed pet foods with docosahexanoic acid to kittens or pregnant
cats (FF 10-13). For the same reasons as given above, we find this
combination obvious because the obvious process of feeding Friesen's DHA
containing composition to kittens or pregnant cats, as expressly suggested by
Kelley and Edwards, would inherently satisfy the requirement to promote
bone formation or joint health.
SUMMARY
In summary, we reverse the rejection of claims 1-6, 8-11, 20, and 21
under 35 U.S.C. § 102(a) and (e) as anticipated by Friesen.
We affirm the rejection of claim 1 under 35 U.S.C. § 103(a) as
obvious over Zicker, Lin, Boudreau, and admitted prior art. Claims 2-6 and
8-10 fall with claim 1.
We affirm the rejection of claim 11 under 35 U.S.C. § 103(a) as
obvious over Zicker, Lin, Boudreau, admitted prior art, Kelley, Edwards,
and Harper. Claims 12-22 fall with claim 11.
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We affirm the rejection of claim 12 under 35 U.S.C. § 103(a) as
obvious over Friesen, Kelley, Edwards, and Harper. Claims 13, 14, 16-19,
and 22 fall with claim 12.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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