DSM IP ASSETS B.V.

Patent Trials and Appeals Board

Oct 21, 2021

2021000575 (P.T.A.B. Oct. 21, 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.
15/541,852 07/06/2017 Shuen Ei CHEN GPK-4662-3431 9152
23117 7590 10/21/2021
NIXON & VANDERHYE, PC
901 NORTH GLEBE ROAD, 11TH FLOOR
ARLINGTON, VA 22203
EXAMINER
WORSHAM, JESSICA N
ART UNIT PAPER NUMBER
1615
NOTIFICATION DATE DELIVERY MODE
10/21/2021 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):
PTOMAIL@nixonvan.com
pair_nixon@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SHUEN EI CHEN and THAU KIONG CHUNG
Appeal 2021-000575
Application 15/541,852
Technology Center 1600
Before RICHARD M. LEBOVITZ, TAWEN CHANG, and
RACHEL H. TOWNSEND, Administrative Patent Judges.
TOWNSEND, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims to a poultry feed additive as obvious.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
STATEMENT OF THE CASE
Appellant’s Specification states that “[r]eproductive efficiency and the
incidence of pathogenic disorders [in poultry] are directly influenced by the

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as DSM IP Assets
BV. (Appeal Br. 3.)
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extent of ovary development and nutrition in poultry.” (Spec. 1.)
Appellant’s Specification further indicates that “[t]he liver is a key organ in
egg production” and “[t]he skeletal system is intimately associated with egg
production.” (Id. at 1–2.) Appellant’s Specification teaches that 25-
Hydroxyvitamin D3 (25-OH D3) and canthaxanthin have been used in
feeding poultry for various reasons, including to improve egg quality and
poultry fertility. (Id. at 2–3.) Appellant’s Specification also teaches that
Vitamin C and Vitamin E have been used in feeding poultry, including to
improve bone health, as has 25-OH D3. (Id.)
Appellant’s invention “relates to the combination of 25-
hydroxyvitamin D (‘25-OH D3’ and/or ‘25-OH D2’) and antioxidants/anti-
inflammatories (ascorbic acid, Vitamin E and canthaxanthin) for use in
poultry feed.” (Spec. 1.)

Claims 1–4 and 6–15 are on appeal. Claim 1 reproduced below, is
illustrative of the claimed subject matter:
1. A basal diet poultry feed additive composition comprising a
combination of 25-Hydroxyvitamin D (25-OH D), Vitamin C,
Vitamin E and Canthaxanthin;
wherein a basal diet contains all necessary ingredients for
complete poultry nutrition without the basal diet poultry feed
additive composition and
the basal diet poultry feed additive composition
ameliorates at least one hyperphagia-related obesity adverse
condition observed when poultry is fed ad libitum the basal diet
without the basal diet poultry feed additive composition.
(Appeal Br. 20.)

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The prior art relied upon by the Examiner is:
Name Reference Date
Tritsch et al. US 7,632,518 B2 Dec. 15, 2009
Barella et al.  US 2006/0069151 A1  Mar. 30, 2006 
Hernandez et al. WO 2010/057811 A2 May 27, 2010
Hamelin et al. WO 2014/191153 A1 Dec. 4, 2014

The following grounds of rejection by the Examiner are before us on
review:
Claims 1–4, 6, and 13–15 under 35 U.S.C. § 103(a) as unpatentable
over Barella and Hamelin.
Claims 7–12 under 35 U.S.C. § 103(a) as unpatentable over Barella,
Hamelin, Hernandez, and Tritsch.
DISCUSSION
Appellant indicates that for purposes of the Appeal, it is appropriate to
only focus on representative claim 1, and has not argued the rejections
separately or claims 2–4 and 6–15 separately. (Appeal Br. 7.) Thus, claims
2–4 and 6–15 fall with claim 1 and the rejection of the claims over Barella
and Hamelin. 37 C.F.R. § 41.37(c)(1)(iv).
Appellant’s Specification defines the term 25-hydroxyvitamin D to
mean 25-OH D3 and/or 25-OH D2. (Spec. 1:5–6, 4:29–30.)
The Examiner found that the claimed invention is to a combination of
commonly used ingredients, not a method of using those ingredients to
ameliorate a hyperphagia-related obesity adverse condition. (Ans. 5.) In
other words, the limitations directed to how the composition is used to
achieve the amelioration set forth in the wherein clauses are an intended use,
which the prior art does not need to teach to render obvious the composition.
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(Id. at 5, 6.) Instead, the prior art need only “make obvious the combination
of ingredients.” (Id. at 6.)
The Examiner found that Barella teaches a food premix composition
of lycopene in combination with Vitamin C and Vitamin E that can be also
include 25-hydroxyvitamin D3. (Final Action 3.) The Examiner further
found that the composition can include other carotenoids in addition to
lycopene. (Id. at 3–4.) The Examiner further found that the composition
can be administered to farm animals including birds. (Id. at 3.) The
Examiner further found that Barella teaches the composition can be used to
treat obesity. (Id.)
The Examiner found that Hamelin teaches a feed supplement for
improving the performance and health in poultry that includes vitamins E
and C, as well as canthaxanthin, selenium and essential oils. (Final Action
4.)
The Examiner found that it would have been obvious to one of
ordinary skill in the art “to substitute one carotenoid for another, i.e.,
lycopene for canthaxanthin, to yield the predictable result of an effective
additive composition to ameliorate an obesity condition, especially since
both Barella . . . and Hamelin . . . teach similar formulations intended to
improve the health of poultry.” (Final Action 4; Ans. 5.) The Examiner
found that lycopene and canthaxanthin are functional equivalents because
they are both carotenoids. (Ans. 5.) Moreover, the Examiner found that
“[t]he composition would function to ameliorate at least one hyperphagia-
related obesity adverse condition.” (Final Action 4.)
The Examiner alternatively found that given (1) Hamelin teaches
canthaxanthin administered together with vitamin E and vitamin C and (2)
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Barella teaches a combination of lycopene with vitamin E and vitamin C, as
well as additional carotenoids, that it would have been obvious to add
canthaxanthin to the Barella composition to provide additional benefits to
poultry. (Ans. 5–6.) The Examiner explained that both references “are
combinable as directed to related subject[] matter of improving poultry
health.” (Id. at 6.)
We agree with the Examiner that the claimed composition would have
been obvious. However, we agree with Appellant
that Barella’s entire disclosure is based on the presence of
lycopene (as noted in the title, abstract, etc.), and there is no
reason or rationale why a person would have substituted
lycopene for canthaxanthin.
(Appeal Br. 16.) We do agree with the Examiner, though, that it would have
been obvious to add canthaxanthin to the composition taught by Barella. As
the Examiner explained in the rejection, Barella teaches that the composition
that includes lycopene can also include other carotenoids. (See Barella ¶
56.) Barella also teaches that 25-Hydroxyvitamin D3 may be included in the
composition. (Id.)
Appellant argues that the Examiner’s rejection is in error because the
number of “permutations and combination of one or more of the optional
ingredients” in the list at paragraph 56 of Barella “would not have caused a
person having ordinar[]y skill in the art to select a combination of Vitamin
E, Vitamin C, and 25-Hydroxyvitamin D.” (Appeal Br. 13.) Appellant
argues that Barella “does not teach or suggest that 25-Hydroxyvitamin D
would or could affect or enhance the combination of lycopene and Vitamin
E and/or Vitamin C.” (Id. at 13–14.)
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We do not find these arguments persuasive. It is immaterial that
Barella does not teach that 25-Hydroxyvitamin D3 would or could affect or
enhance the combination of lycopene and Vitamin E and/or Vitamin C.
Barella specifically states that these three ingredients may be coadministered
with a number of other ingredients. This alone suggests the combination of
25-hydroxyvitamin D3 with lycopene, vitamin E and vitamin C. “Reading a
list and selecting a known compound to meet known requirements is no
more ingenious than selecting the last piece to put into the last opening in a
jig-saw puzzle. It is not invention.” Sinclair & Carroll Co. v. Interchemical
Corp., 325 U.S. 327, 335 (1945); see also Merck & Co. Inc. v. Biocraft
Laboratories, Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (That a reference
“discloses a multitude of effective combinations does not render any
particular formulation less obvious.”); see also id. at 807 (species claim held
obvious where it recited one of 1200 possible combinations of embodiments
disclosed by reference and where reference suggested no preference for
claimed embodiment).
Moreover, that Barella does not mention canthaxanthin and thus does
not teach or suggest the claimed combination of canthaxanthin with vitamin
E, vitamin C, and 25-hydroxyvitamin D (Appeal Br. 14) is not persuasive of
non-obviousness, as the rejection is based on a combination of Barella and
Hamelin. “In determining whether obviousness is established by combining
the teachings of the prior art, the test is what the combined teachings of the
references would have suggested to those of ordinary skill in the art.” In re
GPAC Inc., 57 F.3d 1573, 1581 (Fed. Cir. 1995) (internal quotations
omitted). As noted above, Barella suggests that a number of carotenoids can
be used together with lycopene, vitamin E, and vitamin C, and Hamelin
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teaches that the carotenoid canthaxanthin can be used together with Vitamin
E and Vitamin C. Moreover, Barella also teaches that lycopene, a
carotenoid, can be used in conjunction with 25-hydroxyvitamin D3. Thus,
one of ordinary skill in the art would have reasonably expected from the
combination of teachings of Barella and Hamelin that lycopene,
canthaxanthin, vitamin E, vitamin C, and 25-hydroxyvitamin D3 can be
combined into a single composition absent evidence to the contrary. Thus,
we also do not find persuasive of non-obviousness that “Hamelin does not
even mention lycopene” (Reply Br. 2). Appellant has not provided any
evidence to indicate one of ordinary skill in the art would have reason to
expect that the claimed ingredients, which are taught to be able to be used in
feeding poultry, could not be combined for use in a single composition.2

2 The Examiner relies on Hernandez and Tritsch for addressing dependent
claim limitations to the amount of various ingredients included in the
composition. While claim 1 does not recite particular amounts, we find
Hernandez and Tritsch relevant for teaching that it would have been known
to one having ordinary skill in the art that 25-hydroxyvitamin D3 and
canthaxanthin, as well as vitamin E and vitamin C may be provided together
to poultry to improve their health. (Final Action 5.) The Examiner
explained that Hernandez teaches the use of canthaxanthin and 25-
hydroxyvitamin D3 for improving breeder hatchability and fertility and
lowering embryo mortality in poultry, where the ingredients can be part of a
premix that also includes vitamin E and selenium. (Id.; Hernandez 3.) The
Examiner further explained that Tritsch teaches a premix that can be added
to poultry feed that includes 25-hydroxyvitamin D3, vitamin E, vitamin C,
and minerals such as selenium. (Final Action 5; Tritsch 4 (teaching a
stabilized 25-hydroxyvitamin D3 which can be admixed with other
nutritional additives for use in animal feed premix), 8 (identifying suitable
nutritional additives such as commercially available canthaxanthin
(CAROPHYLL Red), and vitamins A and E, among other vitamins)). These
references are not necessary to support the Examiner’s rejection of claim 1;
however, we note that they are informative regarding what was known in the
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We also do not find persuasive Appellant’s argument that although
Barella mentions a subject that may be administered lycopene that is a non-
mammal pet including birds and fish, or non-mammal farm animal, Barella
“does not indicate that poultry could benefit from a combination of Vitamin
E, Vitamin C, and 25-Hydroxyvitamin D, either as part of the basal diet or as
a supplemental to the basal diet.” (Id. at 14.) The patentability of
composition claims depends on the claimed composition, not on the use or
purpose of that composition. Catalina Mktg. Int’l, Inc. v. Coolsavings.com,
Inc., 289 F.3d 801, 809 (Fed. Cir. 2002). Thus, whether or not Barella
describes the composition as being part of a basal diet or a supplement to a
basal diet is immaterial. What matters is whether or not the prior art
suggests the combination of compositional elements. We find that they do
as explained below.
As the Examiner noted, and Appellant does not dispute, poultry are
birds and Barella teaches that carotenoids as well as vitamin E, vitamin C,
and 25-hydroxyvitamin D can be given to birds and non-mammal farm
animals. This is sufficient to suggest the combination of ingredients for use
in poultry. That suggestion matters because Hamelin teaches compositions
that include vitamins and canthaxanthin for administration to poultry. The
test for obviousness is what the combined teachings of the references as a
whole would have suggested to those of ordinary skill in the art. In re
Keller, 642 F.2d 413, 425 (CCPA 1981).

prior art at the time the invention was made. Indeed, Appellant’s own
Specification teaches the foregoing was known. (Spec. 3–4.)

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Barella and Hamelin teach compositions that may be administered to
the same animals and both for the purpose of keeping the animal healthy
(see Barella Abstr. (use of the composition in “the prophylactic
supplementation of the healthy subjects”), Hamelin Abstr. (use of the
composition in “improving performance and health in poultry”)), and thus
we agree with the Examiner that the teachings of Hamelin would have been
considered pertinent by one of ordinary skill in the art in determining what
ingredients to combine to provide to poultry. For this reason, we do not find
persuasive of non-obviousness Appellant’s argument that “Barella is entirely
directed to androgen signaling and Hamelin is not” (Appeal Br. 15; Reply
Br. 2) and that thus there is no reason “why a person having ordinary skill in
the art would combine Barella’s compositions (even assuming Vitamin E,
Vitamin C, and 25-Hydroxyvitamin D would have been selected) with
Hamelin’s compositions” (Appeal Br. 15).
Moreover, the functional result of the combined ingredients recited in
the “wherein” clause adds nothing to the patentability of the composition
claimed. See, e.g., Texas Instruments, Inc. v. United States Int’l Trade
Comm., 988 F.2d 1165, 1172 (Fed. Cir. 1993) (“A ‘whereby’ clause that
merely states the result of the limitations in the claim adds nothing to the
patentability or substance of the claim.”); cf. In re Schreiber, 128 F.3d 1473,
1477–78 (Fed. Cir. 1997) (functional language does not confer patentability
if prior art structure has capability of functioning in the same manner); In re
Dillon, 919 F.2d 688, 693 (Fed. Cir. 1990) (The “discovery that a claimed
composition possesses a property not disclosed for the prior art subject
matter, does not by itself defeat a prima facie case.”)
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Appellant’s arguments that Barella and Hamelin do not direct a person
of ordinary skill in the art to a poultry feed additive (Appeal Br. 16–18;
Reply Br. 2) is also not found persuasive. As discussed already, the
intended manner in which the composition is used, i.e., a feed additive, is
not a requisite element to be considered in whether the claimed composition
that comprises the four claimed ingredients would have been obvious to one
having ordinary skill in the art. Catalina Mktg., 289 F.3d at 809. Appellant
has not explained how the phrase “feed additive” imparts a different
structure to the claimed composition or requires an additional element;
rather the claim body recites a compositionally complete invention. See e.g.,
Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997). Appellant’s arguments
concerning whether or not Barella or Hamelin’s composition would be fed to
poultry as part of an unrestricted diet (Appeal. Br. 17–18) is directed to an
intended use of the composition, which is not material to whether the
combination of ingredients claimed is obvious.
Moreover, Appellant has not provided any evidence that the
combination of ingredients in the amounts suggested by the prior art would
not inherently produce the intended result recited in the claim if the
combination of ingredients were used in the intended manner (Appeal Br. 8).
“Attorney argument is not evidence.” Icon Health & Fitness v. Strava, 849
F.3d 1034, 1043 (Fed. Cir. 2017) (citing See, e.g., Gemtron Corp. v. Saint-
Gobain Corp., 572 F.3d 1371, 1380 (Fed. Cir. 2009) (“[U]nsworn attorney
argument . . . is not evidence and cannot rebut . . . other admitted evidence .
. . .”); see also Manual of Patent Examining Procedure § 2145 (9th ed. Nov.
2015) (“Attorney argument is not evidence unless it is an admission, in
which case, an examiner may use the admission in making a rejection.”).
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For the foregoing reasons, we affirm the Examiner’s rejection of
(a) claims 1–4, 6, and 13–15 under 35 U.S.C. § 103(a) as unpatentable
over Barella and Hamelin; and
(b) claims 7–12 under 35 U.S.C. § 103(a) as unpatentable over
Barella, Hamelin, Hernandez, and Tritsch.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–4, 6, 13–
15
103(a) Barella, Hamelin 1–4, 6, 13–
15

7–12 103(a) Barella, Hamelin,
Hernandez, Tritsch
7–12
Overall
Outcome
1–4, 6–15

TIME PERIOD FOR RESPONSE
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