NESTEC S.A.

Patent Trials and Appeals Board

Jul 15, 2021

2020005091 (P.T.A.B. Jul. 15, 2021)

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.
14/353,194 04/21/2014 Etienne Pouteau 3712036-02147 9934
29157 7590 07/15/2021
K&L Gates LLP-Nestec S.A.
P.O. Box 1135
Chicago, IL 60690
EXAMINER
MUKHOPADHYAY, BHASKAR
ART UNIT PAPER NUMBER
1792
NOTIFICATION DATE DELIVERY MODE
07/15/2021 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):
USpatentmail@klgates.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ETIENNE POUTEAU,
KEVIN JOHN ACHESON, LIONEL JEAN RENE BOVETTO,
and DENIS BREUILLE
Appeal 2020-005091
Application 14/353,194
Technology Center 1700
Before KAREN M. HASTINGS, GEORGE C. BEST, and
SHELDON M. MCGEE, Administrative Patent Judges.
MCGEE, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 4, 8, 9, and 18–21. We have
jurisdiction. 35 U.S.C. § 6(b).
We affirm.

1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant
identifies the real party in interest as SOCIÉTÉ DES PRODUITS NESTLÉ
S.A. Appeal Br. 2.
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Application 14/353,194

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CLAIMED SUBJECT MATTER
The claims are directed to methods for reducing obesity, and methods
of increasing satiety and/or postprandial energy expenditure in an obese
child or adult. Appeal Br. 16 (Claims App.).
Independent claim 1, reproduced below, is illustrative of the claimed
subject matter:
1. A method for reducing obesity in an obese child or adult human
subject in need thereof, the method comprising:
inducing hyper-aminoacidemia in the subject by
administering whey protein micelles to the subject in
combination with a meal comprising a component selected from
the group consisting of whey protein isolate, native milk protein,
hydrolyzed milk protein, free amino acids, and a combination
thereof, wherein the whey protein micelles are administered to
the subject in a daily dose of at least 30 g dry weight, and wherein
the combination of the whey protein micelles and the meal
comprises 15–50 wt.% protein, 10–15 wt.% lipids, 25–50 wt.%
carbohydrates, and 5–10 wt.% fibers by dry weight.
OPINION
The sole rejection on appeal pertains to claims 1, 4, 8, 9, and 18–21
which stand rejected under pre-AIA 35 U.S.C. § 103(a) as unpatentable over
the combined disclosures of Mateus,2 Gahler,3 and Bell.4 Non-Final Act.5
3–9. We review the appealed rejection for reversible error based on the
arguments and evidence presented by Appellant. 37 C.F.R.
§ 41.37(c)(1)(iv); Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)

2 Mateus, US 2011/0250310 A1, published October 13, 2011.
3 Gahler, US 2008/0027024 A1, published January 31, 2008.
4 Bell, US 2002/0150649 A1, published October 17, 2002.
5 We refer to the Non-Final Office Action dated November 1, 2019, from
which this appeal is taken.
Appeal 2020-005091
Application 14/353,194

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(precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed.
Cir. 2011) (explaining that even if the Examiner had failed to make a prima
facie case, “it has long been the Board’s practice to require an applicant to
identify the alleged error in the examiner’s rejections”)).
Upon consideration of Appellant’s arguments in light of the evidence
in the appeal record, we determine that Appellant has identified no
reversible error in the obviousness rejection. We therefore affirm the
rejection for the reasons expressed by the Examiner and below. Our
decision addresses the claims separately to the extent they are so argued.
37 C.F.R. § 41.37(c)(1)(iv).
Appellant does not advance any specific argument with respect to
whether the Examiner’s rejection establishes a prima facie case of
obviousness. Rather, Appellant devotes the entirety of its briefs to
discussing an example contained within the Specification which purportedly
demonstrates unexpected results of the claimed subject matter.
Appeal Br. 6–14; Reply Br. 2–5. For multiple reasons, Appellant’s evidence
fails to rebut the obviousness rejection.
“It is well established that the objective evidence of nonobviousness
must be commensurate in scope with the claims.” In re Lindner, 457 F.2d
506, 508 (CCPA 1972). The example relied on by Appellant is specific to
one daily dosage amount (90.7g dry weight) containing a specific
concentration breakdown of a protein,6 lipids, carbohydrates, and fibers.7

6 Seven different proteins were tested, but all were tested in the same amount
(30g) vis-à-vis the other elements. Spec. 10:31–11:6.
7 According to a Declaration filed under 37 C.F.R. § 1.132 by inventor Denis
Breuillé dated September 18, 2018, the amount of protein (30g) accounts for
33.1% of the dry weight of the example composition, and thus falls within
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Application 14/353,194

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This example is not commensurate with the broad scope of the claims on
appeal. Specifically, independent claims 1 and 8 broadly recite a daily
dosage amount of at least 30g dry weight, thus allowing daily dosage
amounts of 100g, 200g, 500g and higher of the meal. These independent
claims also recite ranges of each of the component parts of protein (15%–
50%), lipids (10–15%), carbohydrates (25–50%) and fibers (5–10%). Each
of these ranges are broad vis-à-vis the example composition relied upon
here. Furthermore, it is unclear whether the example composition falls
within the scope of the requirement recited in dependent claims 18 and 20
that “the combination of the whey protein micelles and the meal comprises
at least 20% wt.% whey protein micelles by dry weight.” Claims 19 and 21
fare no better because, like the claims from which they depend, these claims
allow for daily doses below (e.g., 30g) and far in excess (e.g., 2000g) of the
example composition.
Here, we reject Appellant’s suggestion that a “trend” based on the
proffered data can be determined thus making the example sufficient to be
commensurate in scope with the broad scope of the claims. Appeal Br. 8.
Appellant has not explained, nor do we discern, how any such trend can be
established based on administration of a single dosage amount of a specific
formulaic breakdown of proteins, lipids, carbohydrates, and fiber. See
Lindner, 457 F.2d at 508 (“Here only one mixture of ingredients was
tested. . . . The claims, however, are much broader in scope, . . . and we

the claimed range of protein, i.e., 15–50 wt.%. By our calculation, the
example likewise contains 12.9% lipids, 47.1% carbohydrates, and 6.9%
fibers––all by dry weight––consistent with the specific values recited in
claims 19 and 21.
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have to agree with the Patent Office that there is no ‘adequate basis for
reasonably concluding that the great number and variety of compositions
included by the claims would behave in the same manner as the [single]
tested composition.’”) (bracketed material in original).
Appellant’s data is furthermore deficient because Appellant has failed
to explain any link between the claimed methods and administration of the
example composition. Specifically, there is no discussion of how the
example composition reduced obesity,8 increased satiety,9 or increased
postprandial energy expenditure in a human subject. On this point, any
showing of unexpected results must naturally be unexpected. Pfizer, Inc. v.
Apotex, Inc., 480 F.3d 1348, 1371 (Fed. Cir. 2007) (“[B]y definition, any
superior property must be unexpected to be considered evidence of non-
obviousness. Thus, in order to properly evaluate whether a superior property
was unexpected, the [fact-finder] should have considered what properties
were expected.”). With respect to claims 8, 9, 20, and 21, Appellant does
not explain, nor do we perceive, how administering the example
composition would not be expected to “increase satiety” to some degree.10

8 Given the sheer breadth of claim 1, which is open to daily dosage amounts
far in excess of 30g, we leave it to the discretion of the Examiner to
determine if an enablement rejection under 35 U.S.C. § 112, 1st paragraph, is
warranted for claims 1, 4, 18, and 19. Specifically, we fail to see how
administering excessive daily amounts of any composition, much less the
claimed composition, is a valid way to reduce obesity.
9 It is unclear what the satiety increase is measured against. We leave it to
the discretion of the Examiner to determine whether claims 8, 9, 20, and 21
as currently drafted warrant an indefiniteness rejection under 35 U.S.C.
§ 112, 2nd paragraph.
10 Claims 8, 9, 20, and 21 do not require any particular degree of increased
satiety.
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Application 14/353,194

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Moreover, when data is proffered to rebut a prima facie case of
obviousness, “the results must be shown to be unexpected compared with
the closest prior art.” In re Baxter Travenol Labs., 952, F.2d 388, 392 (Fed.
Cir. 1991). No such comparison exists in the record before us.
CONCLUSION
The Examiner’s rejection is affirmed.
DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 4, 8, 9,
18–21
103(a) Mateus, Gahler, Bell 1, 4, 8, 9,
18–21

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED