NESTEC S.A.

Patent Trials and Appeals Board

Sep 27, 2021

2020005007 (P.T.A.B. Sep. 27, 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.
15/103,961 06/13/2016 Carlos Antonio De Castro 3712036-02658 4618
29157 7590 09/27/2021
K&L Gates LLP-Nestec S.A.
P.O. Box 1135
Chicago, IL 60690
EXAMINER
TRAN, LIEN THUY
ART UNIT PAPER NUMBER
1793
NOTIFICATION DATE DELIVERY MODE
09/27/2021 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 CARLOS ANTONIO DE CASTRO,
CRISTINA CRUZ-HERNANDEZ, FREDERIC DESTAILLATS,
FRANCESCA GIUFFRIDA, SAGAR THAKKAR, and
RAJAT MUKHERJEE

Appeal 2020-005007
Application 15/103,961
Technology Center 1700
Before TERRY J. OWENS, JAMES C. HOUSEL, and
N. WHITNEY WILSON, Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the
Examiner’s decision to reject claims 8, 12, 14, and 16–21. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. The
Appellant identifies the real party in interest as SOCIÉTÉ DES PRODUITS
NESTLÉ S.A. (Appeal Br. 2).
Appeal 2020-005007
Application 15/103,961

2
CLAIMED SUBJECT MATTER
The claims are directed to synthetic milk compositions for infants and
children. Claim 8, reproduced below, is illustrative of the claimed subject
matter:
Claim 8: A method for promoting balanced growth in an
infant up to three months old and reducing a risk of obesity in
the infant during infancy and later in life, the method
comprising administering to the infant a synthetic nutritional
composition that is a foodstuff comprising:
1.0-1.2 g/100ml protein,
3.8-4.6 g/l00ml lipid, and
at least one phospholipid selected from the group
consisting of:
5.4-6.6 mg/100ml of phosphatidylcholine,
6-7.5 mg/l00ml of phosphatidylethanolamine, and
1.0-1.2 mg/100ml of phosphatidylinositol.
REFERENCE
The prior art relied upon by the Examiner is:
Name Reference Date
Van Baalen WO 2010/027258 A1 Mar. 11, 2010
REJECTION
Claims 8, 12, 14, and 16–21 stand rejected under 35 U.S.C. § 103
over Van Baalen.
OPINION
We need address only the sole independent claim, i.e., claim 8.
Van Baalen discloses “infant formulae or growing up milks for
toddlers comprising vegetable fats with a lipid globule size larger than that
of standard infant formulae” (p. 3, ll. 12–13), and states that “the lipid
globule size in infant formulae affects the body composition later in life”
(p. ll. 11–12). The lipid globules have “a lipid volume-weighted mode
Appeal 2020-005007
Application 15/103,961

3
diameter of above 1.0 µm, preferably between 1.0 and 10 µm, and/or with at
least 45, more preferably at least 55 volume % with a diameter of 2 to 12 µm
based on total lipid” (p. 3, ll. 13–16). The infant formula comprises less than
1.5 g/100 ml protein and preferably 2.1 to 6.5 g/100 ml lipids, 0.2–20 wt%
of which are phospholipids (p. 9, ll. 9–11; p. 12, ll. 27–28; p. 22, ll. 9–11).
The phospholipids preferably comprise glycerophospholipids which can be
phosphatidylcholine (PC), phosphatidylserine (PS),
phosphatidylethanolamine (PE), phosphatidylinositol (PI), or
phosphatidylglycerol (PG) (p. 11, l. 26 – p. 12, l. 2). Preferably the
“composition contains PC, PS, PI and/or PE, more preferably at least PC”
(p. 12, l. 3).
The Examiner finds: 1) “Van Baalen discloses the amount of
phospholipids can range from 4.2-1300 mg/ml and includes the types of
phospholipids as claimed. It would have been within the skill of one in the
art to select the amounts of the specific types depending on the nutritional
profile desired” (Final 3; Ans. 5–6); and 2) “It is known the objective of
synthetic infant formulation is to mimic as closely as possible the nutritional
profile of breast milk. One skilled in the art would have readily study up
[sic] on the amount of phospholipids that are typically found in breast milk
and formulate the composition to resemble the breast milk as closely as
possible” (Ans. 6).
Regarding the Examiner’s finding that “[i]t would have been within
the skill of one in the art to select the amounts of the specific types
depending on the nutritional profile desired,” to set forth a prima facie case
of obviousness of the Appellant’s claimed method it is not enough to assert
that selecting phospholipids that achieve a desired nutritional profile would
Appeal 2020-005007
Application 15/103,961

4
have been within the ordinary skill in the art. The Examiner must establish
that the applied prior art would have provided one of ordinary skill in the art
with an apparent reason to use the Appellant’s recited phospholipids in their
recited amounts. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418
(2007). The Examiner does not establish that Van Baalen would have
provided one of ordinary skill in the art with an apparent reason to use the
amount of phosphatidylcholine, phosphatidylethanolamine, or
phosphatidylinositol required by the Appellant’s independent claim.
Also, the Examiner does not establish that Van Baalen would have
provided one of ordinary skill in the art with an apparent reason to “study up
on the amount of phospholipids that are typically found in breast milk and
formulate the composition to resemble the breast milk as closely as
possible.” That is the approach used by the Appellant (Spec. 10:24 – 11:9;
21:1 – 24:Table 1). The Examiner does not establish that Van Baalen would
have provided one of ordinary skill in the art with an apparent reason to
formulate a composition resembling breast milk. Van Baalen determines the
lipid globule size needed “to prevent obesity, visceral obesity, increase lean
body mass and/or decrease fat mass later in life” (p. 4, ll. 1–3). In Van
Baalen’s investigation, “[t]he important difference between the investigated
formulae was the size of the lipid globules, whereas the fatty acid profile
was similar in the formulae” (p. 2, ll. 24–25).
Thus, the Examiner has not set forth a factual basis that is sufficient to
support a conclusion of obviousness of the Appellant’s claimed invention.
See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) (“A rejection based on
section 103 clearly must rest on a factual basis, and these facts must be
Appeal 2020-005007
Application 15/103,961

5
interpreted without hindsight reconstruction of the invention from the prior
art”). Accordingly, we reverse the rejection.
CONCLUSION
The Examiner’s rejection is reversed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
8, 12, 14,
16–21
103 Van Baalen 8, 12, 14,
16–21

REVERSED