ter Haar, Robbert H. et al.

Patent Trials and Appeals Board

May 7, 2020

2019000613 (P.T.A.B. May. 7, 2020)

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. 13/460,989 05/01/2012 Robbert H. ter Haar IAM0133 US 5299 132446 7590 05/07/2020 Mars, Inc. c/o Mars Petcare Theresa Shearin 2013 Ovation Parkway Franklin, TN 37067 EXAMINER MOORE, WALTER A ART UNIT PAPER NUMBER 3619 NOTIFICATION DATE DELIVERY MODE 05/07/2020 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): becca.barnett@effem.com mars.patents@effem.com theresa.shearin@effem.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte ROBBERT H. TER HAAR, GREGORY DEAN SUNVOLD, MONIKA BARBARA HORGAN, and LAWRENCE ANDREW SCHUMACHER1 ____________ Appeal 2019-000613 Application 13/460,989 Technology Center 3600 ____________ Before KAREN M. HASTINGS, CHRISTOPHER C. KENNEDY, and MERRELL C. CASHION, JR., Administrative Patent Judges. KENNEDY, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s decision rejecting claims 23-38. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. BACKGROUND The subject matter on appeal relates to food supplements that “contain a sensitive ingredient,” such as a probiotic. E.g., Spec. 1:8-9; Claim 23. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. The Appellant identifies the real party in interest as Mars, Incorporated. Br. 2. Appeal 2019-000613 Application 13/460,989 2 Claim 23 is reproduced below from page 27 (Claims Appendix) of the Appeal Brief: 23. A molded pet food supplement comprising: a molded first portion comprising a probiotic component and having at least two surfaces, a first melting point and a first water activity; and a molded second portion having a second melting point and a second water activity; wherein the second portion does not comprise a probiotic, the second melting point is greater than the first melting point, the second water activity is lower than the first water activity and wherein one surface of the molded first portion is covered by the molded second portion. REJECTIONS ON APPEAL The claims stand rejected as follows: 1. Claims 23-38 under 35 U.S.C. § 112, ¶ 1, for lack of enablement; 2. Claims 23, 24, 26, 27, 30-32, and 34-36 under 35 U.S.C. § 103(a) as unpatentable over Westenberg (GB 1 238 336, published July 7, 1971) and Garbolino (US 2009/0017163 A1, published Jan. 15, 2009); 3. Claims 23-36 and 38 under 35 U.S.C. § 103(a) as unpatentable over Sunvold (US 2011/0027419 A1, published Feb. 3, 2011) as evidenced by Maurer (US 2005/0106216 A1, published May 19, 2005); 4. Claim 33 under 35 U.S.C. § 103(a) as unpatentable over Sunvold and Horgan (US 2011/0027418 A1, published Feb. 3, 2011) as evidenced by Maurer; 5. Claim 37 under 35 U.S.C. § 103(a) as unpatentable over Sunvold and Ter Haar (US 2010/0003369 A1, published Jan. 7, 2010). Appeal 2019-000613 Application 13/460,989 3 ANALYSIS After review of the cited evidence in the appeal record and the opposing positions of the Appellant and the Examiner, we determine that the Appellant has not identified reversible error in Rejections 2-5. Accordingly, we affirm those rejections for reasons set forth below, in the Final Rejection dated July 28, 2017, and in the Examiner’s Answer dated August 10, 2018. However, as set forth below, we reverse as to Rejection 1. Rejection 1 “[E]nablement requires that the specification teach those in the art to make and use the invention without undue experimentation.” In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988). “The test is not merely quantitative, since a considerable amount of experimentation is permissible, if it is merely routine . . . .” Id. The Examiner determines that all claims fail to comply with the enablement requirement. Ans. 3-9. Essentially, the Examiner finds that, because the claims are broad and do not recite specific materials or proportions of materials, the number of embodiments falling within the scope of claim 23 is “nearly [an] infinite number of mixtures,” and the claims, therefore, lack enablement. Id. We reverse the rejection. The claims, although broad, are not particularly complex. The Examiner does not adequately explain why combining two components with different melting points and water activities, and adding a probiotic to one of those components, would have required undue experimentation. The Examiner does not assert that determining melting points or water activities of components is anything beyond routine experimentation. Nor does the Examiner identify any Appeal 2019-000613 Application 13/460,989 4 particular challenge in adding a probiotic to a component. The fact that a person of ordinary skill in the art might be able to make a vast number of compositions that fall within the scope of the claims does not mean that it would have required undue experimentation to make and use the invention; it simply means that the claims are broad. On this record, the Examiner has not adequately established that any of the claims on appeal are not enabled. Rejection 2 The Appellant argues the claims as a group. We select claim 23 as representative, and the remaining claims subject to Rejection 2 will stand or fall with claim 23. The Examiner’s rejection is stated at pages 9-13 of the Answer. The Examiner finds, inter alia, that Westenberg discloses a food product comprising molded first and second portions in which the first portion is margarine and the second portion is a coating on top of the margarine. Ans. 9-10. The Examiner finds that, although Westenberg does not disclose the inclusion of a probiotic in its margarine, Garbolino teaches a margarine comprising a probiotic. Id. at 10. The Examiner finds that it would have been obvious to include Garbolino’s probiotic in Westenberg’s margarine “because it assists the body’s naturally occurring gut microflora to reestablish the gut microflora balance.” Id. As to the negative limitation, “the second portion does not comprise a probiotic,” the Examiner finds that it would have been obvious to include a probiotic only in Westenberg’s margarine first portion because Garbolino discloses including a probiotic in margarine. Id. at 10-11. Appeal 2019-000613 Application 13/460,989 5 As to water activity, the Examiner indicates that a composition comprising a probiotic will have a higher water activity than a composition without a probiotic. Ans. 11 (“Water activity is a property of a composition. Since the prior art discloses the extent of the claimed composition, i.e., a first portion having a probiotic and a second portion lacking a probiotic, one having ordinary skill in the art would expect the prior art product to exhibit the claimed property.”). Thus, the Examiner finds that a first portion of Westenberg including a probiotic would have a higher water activity than a second portion lacking a probiotic. Id. In view of those and other findings less material to the issues raised by the Appellant in this appeal, the Examiner concludes that the subject matter of claim 23 would have been obvious. The Appellant first argues that the proposed modification “would change the principle of operation of Westenberg” because Westenberg concerns the use of fats for cooking and frying, and probiotics may not function under high temperatures. Br. 15-16. That argument is unpersuasive for at least two reasons. First, the Appellant fails to establish that Westenberg’s margarine products are limited to high temperature cooking and frying applications. Second, the Appellant cites no evidence in support of its contention that the temperatures implicated by Westenberg would be unsuitable for the probiotic of Garbolino. In that regard, we note that Garbolino teaches the use of probiotics in margarine, which presumably could be used for cooking or frying, and the Appellant identifies no disclosure in Garbolino of unsuitability for cooking or frying. “Attorney’s argument in a brief cannot Appeal 2019-000613 Application 13/460,989 6 take the place of evidence.” In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974). The Appellant also argues that the combined prior art fails to suggest the claimed water activities because Westenberg’s margarine and coating material are not necessarily “chemically identical” to the subject matter of claim 23 and therefore may not inherently possess the claimed water activities. Br. 16-17. That argument is not persuasive. As set forth above, we understand the Examiner’s rejection to indicate that a composition comprising a probiotic will have a higher water activity than a composition without a probiotic. Ans. 11. The Appellant does not address that finding or otherwise show error in it. Additionally, we note that Garbolino indicates that higher water activity is desirable in compositions that include microbes, e.g., probiotics, in order “to support microbial growth.” Garbolino ¶ 30. The Appellant also argues that the combined prior art “does not disclose or suggest a second portion that does not comprise a probiotic.” Br. 18-19. That argument is not persuasive. The Appellant does not dispute that Westenberg’s first portion may be a margarine or that Garbolino teaches the addition of a probiotic to a margarine. In view of Garbolino’s disclosure of including a probiotic in a margarine, it would have been obvious to add a probiotic specifically to Westenberg’s margarine and not to other components of Westenberg. Even if it may also have been obvious to add a probiotic to other components of Westenberg, that does not negate that the art reasonably suggests adding a probiotic specifically to a margarine component rather than to other components. See Merck & Co. v. Biocraft Appeal 2019-000613 Application 13/460,989 7 Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (“That the [prior art] patent discloses a multitude of effective combinations does not render any particular formulation less obvious.”). On this record, we are not persuaded of reversible error in Rejection 2. See In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections . . . .”). Rejection 3 The Appellant argues the claims as a group. We select claim 23 as representative, and the remaining claims subject to Rejection 3 will stand or fall with claim 23. The Examiner’s rejection is stated at pages 13-18 of the Answer. The Examiner finds, inter alia, that Sunvold teaches an animal food product comprising a core and at least one coating, and that the coating may include a probiotic. Ans. 14. The Examiner finds that Sunvold also discloses an optional additional coating, i.e., “a coating on a coating,” that “can include only the coating without the [probiotic].” Id. Thus, the Examiner finds that Sunvold teaches or suggests an animal food product comprising a core, a first coating with probiotic, and a second coating without probiotic. Id. The Examiner relies on Sunvold’s first coating comprising a probiotic as corresponding to the “first portion” of claim 23, and on Sunvold’s additional coating without a probiotic as comprising “the second portion” of claim 23. Id. As to melting points, the Examiner finds that Sunvold teaches that the first coating may have a melting point in the range of 25-70°C, and that the second coating may have a “higher melting temperature” of “in excess of Appeal 2019-000613 Application 13/460,989 8 30°C.” Id. at 15. The Examiner finds that, in view of those disclosures, it would have been obvious to “select a coating comprising a probiotic in a layer having a melting point that is less than the melting point of another layer.” Id. As to water activity levels, the Examiner cites Sunvold’s disclosure that Sunvold’s animal food product as a whole has certain water activity level values that “ensure[] survival of the probiotic.” Id. The Examiner also finds that Sunvold discloses that coating layers may include ingredients (i.e., humectants) that “lower water activity.” Id. The Examiner finds that, in view of that disclosure, it would have been obvious to add a humectant to Sunvold’s second coating, and that a person of ordinary skill would have expected “that a fat layer comprising humectants would have a lower water activity than a fat layer lacking humectants.” Id. at 15, 29 (finding that “Sunvold discloses the additional coatings can include one or more active ingredients,” which “can be humectants”). In view of those and other findings less material to the issues raised by the Appellant in this appeal, the Examiner concludes that the subject matter of claim 23 would have been obvious. The Appellant first argues that the prior art “does not disclose or suggest the first and second melting points” recited by claim 23. Br. 20. The Appellant does not dispute that Sunvold discloses an animal food product with a core and at least one coating, that the first coating may include a probiotic, or that a second coating need not include a probiotic. Id.; see also Sunvold ¶¶ 7, 24, 42. Nor does the Appellant dispute that Sunvold discloses coatings with melting temperatures of 25-70°C and other coatings with “higher melting point temperature components” of greater than Appeal 2019-000613 Application 13/460,989 9 30°C. Br. 20; see also Sunvold ¶ 41. Instead, the Appellant argues that Sunvold does not expressly teach a single embodiment having a lower- melting-point first coating that includes a probiotic and a higher-melting- point second coating that does not include a probiotic. Br. 20-21. The Appellant asserts that “Sunvold merely provides an extensive list of possible coating materials that may or may not comprise a probiotic component.” Id. at 21. That argument is not persuasive because the prior art’s disclosure of “a multitude of effective combinations does not render any particular formulation less obvious.” See Merck, 874 F.2d at 807. In view of the Examiner’s uncontested findings concerning certain disclosures of Sunvold discussed above, it would have been obvious to choose a first coating with a melting point of, e.g., 25°C, that includes a probiotic, and it would have been obvious to choose a second coating with a melting point of, e.g., 30°C, that does not include a probiotic. E.g., Sunvold ¶¶ 7, 24, 41, 42. That other combinations-e.g., combinations in which different melting point combinations are used, or combinations in which the second coating also includes a probiotic-may also have been obvious in view of Sunvold does not indicate reversible error in the Examiner’s findings and conclusions. The Appellant also argues that the prior art “does not disclose or suggest the first and second water activities” of claim 23. Br. 22. As noted above, however, the Examiner finds that the water activity relates to the inclusion of a probiotic, and the Appellant does not address or otherwise show error in that finding. Additionally, the Examiner finds that Sunvold teaches or suggests inclusion of humectants (which lower water Appeal 2019-000613 Application 13/460,989 10 activity levels) in its coatings, including in its second coating. Ans. 15, 29.2 The Appellant does not file a Reply Brief to dispute those findings. In view of those findings, it appears that it would have been within the ordinary level of skill in the art to optimize the composition of Sunvold’s coatings, including the addition a humectant to Sunvold’s second coating, which would result in water activity levels falling within the scope of the claims. On this record, we are not persuaded of reversible error in the Examiner’s rejection. See Jung, 637 F.3d at 1365. Rejections 4 and 5 The Appellant argues only that Rejections 4 and 5 should be reversed because the additional references cited by the Examiner in those rejections “fails to cure the deficiencies of Sunvold.” Br. 24-25. Because we are not persuaded of reversible error in the Examiner’s analysis of Sunvold, we likewise are not persuaded of reversible error in Rejections 4 and 5. CONCLUSION In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 23-38 112, ¶ 1 Enablement 23-38 23, 24, 26, 27, 30-32, 34-36 103(a) Westenberg, Garbolino 23, 24, 26, 27, 30-32, 34-36 23-36, 38 103(a) Sunvold, Maurer 23-36, 38 33 103(a) Sunvold, Maurer, Horgan 33 2 Moreover, the prior art, as represented by Garbolino, indicates that higher water activity is desirable in compositions that include microbes, e.g., probiotics, in order “to support microbial growth.” Garbolino ¶ 30. Appeal 2019-000613 Application 13/460,989 11 Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 37 103(a) Sunvold, Ter Haar 37 Overall Outcome 23-38 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