Ex Parte 5,690,988 et al

Patent Trial and Appeal Board

Jan 22, 2016

90012824 (P.T.A.B. Jan. 22, 2016)

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.
90/012,824 03/30/2013 5,690,988 ER570-5364 6283
23909 7590 01/22/2016
COLGATE-PALMOLIVE COMPANY
909 RIVER ROAD
PISCATAWAY, NJ 08855
EXAMINER
JONES, DWAYNE C
ART UNIT PAPER NUMBER
3991
MAIL DATE DELIVERY MODE
01/22/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte COLGATE-PALMOLIVE COMPANY
Patent Owner and Appellant

____________

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____________

Before MARK NAGUMO, RICHARD M. LEBOVITZ, and JEFFREY B.
ROBERTSON, Administrative Patent Judges.

LEBOVITZ, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal by Patent Owner from the Patent
Examiner’s rejection of claims 1–106 in this above-identified Ex parte
reexamination proceeding. The Board’s jurisdiction for this appeal is under
35 U.S.C. §§ 6(b), 134(b), and 306 (pre-AIA). We affirm and set forth a
new ground of rejection.
I. STATEMENT OF CASE
This appeal involves US 5,690,988 (“the ’988 patent”) which issued
Nov. 25, 1997. A Request for Ex parte Reexamination of the patent was
submitted by a Third Party Requester on March 30, 2013.
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Claims 1–20 are original claims. Claims 21–106 were added by
amendment. All the claims stand finally rejected by the Examiner. Final
Office Action (March 27, 2014).
The claims are directed to a food composition having enhanced
palatability to pet animals comprising at least about 0.25% by weight of a
choline compound. Method claims are also rejected which comprise adding
a choline compound to a pet food composition in an amount of at least
0.25%. The ’988 patent teaches that choline had been included in pet food
prior to the invention, but had not been considered to be a palatability
enhancer. ’988, col. 1, ll. 61–67. The ’988 patent reports experiments to
show the enhanced palatability of pet food compositions comprising a
choline compound. Id., Example II.
II. CLAIMS
The following claims are illustrative of the appealed claims:
1. A food composition having an enhanced palatability to pet
animals comprising a nutritious food mass and a palatability
enhancing amount of a choline compound of at least about
0.25% by weight.

6. The food composition of claim 5 [which depends from claim
1] wherein the acid is phosphoric acid.

10. A method of enhancing the palatability of a food
composition having greater acceptance to pet animals
comprising adding a palatability enhancing amount of at least
0.25% by weight of a choline compound to the food
composition and feeding the food to pet animals.

21. A food composition of claim l, wherein the composition is
surface coated with a coating containing the choline compound
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in an amount of about 0.06% by weight or more based on the
weight of the food composition.

III. REJECTIONS
The claims stand finally rejected by the Examiner as follows:
1. Claims 1, 4–6, 10, 12–15, 19, stand 20 stand rejected under pre-
AIA 35 U.S.C. § 102(b) as anticipated by the ’638 patent.1 Answer 2.
2. Claims 1, 4, 10, 12, and 13 stand rejected under pre-AIA 35 U.S.C.
§ 102(b) as anticipated by CA ’633.2 Answer 4.
3. Claims 1, 5, 10, 12, 14, 19, and 20 stand rejected under pre-AIA
35 U.S.C. § 102(b) as anticipated by Dzanis.3 Answer 6.
4. Claims 2, 3, 7, 11, 16 and new claims 21-106 stand rejected under
pre-AIA 35 U.S.C. § 103(a) as obvious over the ’638 patent as applied to
claims 1, 4–6, 10, 12–15, 19, and 20 above, and further in view of JP697.4
Answer 7.
5. Claims 2, 3, 7, 11, 16 and new claims 21–32, 45–68, and 105 stand
rejected under pre-AIA 35 U.S.C. § 103(a) as obvious over CA ’633 as
applied to claims 1, 4, 10, 12, and 13 above, and further in view of JP697.
Answer 14.

1 Traitler et al., US 5,312,638, issued May 17, 1994 (hereinafter ’638
patent”).
2 Guardiola, CA 2,065,633, published Oct. 10, 1993 (hereinafter CA’633”).
3 Dzanis, The Association of American Feed Control Officials Dog and Cat
Food Nutrient Profiles: Substantiation of Nutritional Adequacy of Complete
and Balanced Pet Foods in the United States, 124 J. NUTR. 2535S–2539S
(1994) (hereinafter “Dzanis”).
4 Saida et al., JP H6-70697, published March 15, 1994 (hereinafter “JP
’697”).
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6. Claims 2, 3, 7, 11, 16 and new claims 21–32 and 105 stand rejected
under pre-AIA 35 U.S.C. § 103(a) as obvious over Dzanis as applied to
claims 1, 5, 10, 12, 14, 19, and 20 above, and further in view of JP ’697.
Answer 18.
7. Claims 8 and 17 stand rejected under pre-AIA 35 U.S.C. § 103(a)
as obvious over the ’638 patent as applied to claims 1, 4–6, 10, 12–15, 19,
and 20 above, and further in view of JP ’641.5 Answer 20.
8. Claims 8 and 17 stand rejected under pre-AIA 35 U.S.C. § 103(a)
as obvious over CA ’633 as applied to claims 1, 4, 10, 12, and 13 above, and
further in view of JP ’641. Answer 21.
9. Claims 8 and 17 stand rejected under pre-AIA 35 U.S.C. § 103(a)
as obvious over Dzanis as applied to claims 1, 5, 10, 12, 14, 19, and 20
above, and further in view of JP ’641. Answer 21.
10. Claims 9 and 18 stand rejected under pre-AIA 35 U.S.C. § 103(a)
as obvious over the ’638 patent as applied to claims 1, 4–6, 10, 12–15, 19,
and 20 above, and further in view of JP ’847.6 Answer 22.
11. Claims 9 and 18 stand rejected under pre-AIA 35 U.S.C. § 103(a)
as obvious over CA ’633 as applied to claims 1, 4, 10, 12, and 13 above, and
further in view of JP ’847. Answer 22.
12. Claims 9 and 18 stand rejected under pre-AIA 35 U.S.C. § 103(a)
as obvious over Dzanis as applied to claims 1, 5, 10, 12, 14, 19, and 20
above, and further in view of JP ’847. Answer 23.

5 Sadao et al., JP 6-298641, published Oct. 25, 1994 (hereinafter “JP ’641”).
6 Ootsubo et al., JP 62-296847, published Dec. 24, 1987 (hereinafter
“JP’847”).
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13. Claims 33–44, 69–92, 93–104, and 106 stand rejected under pre-
AIA 35 U.S.C. § 103(a) as obvious over the ’638 patent as applied to claims
1, 4–6, 10, 12–15, 19, and 20 above, and further in view of JP ’697 and
Kealy.7 Answer 24.

1. ANTICIPATION BY THE ’638 PATENT
The ’638 patent describes a dry cat food comprising 1% dicalcium
phosphate, 0.3% choline chloride, and 1% iodized salt. ’638 patent,
Example 2, col. 2, ll. 10–25. The Examiner found that Example 2
anticipates claims 1 and 10 because it is “food composition” that contains
“at least about 0.25% by weight” or “at least 0.25% by weight,”
respectively, of a choline compound as recited in the claims. Although the
’638 patent does not expressly teach that the choline chloride enhanced the
palatability of the pet food as required by claims 1 and 10, the Examiner
determined that because the ’638 patent describes a pet food with the same
amounts of choline as required by the claims, the pet food would “inherently
possess[] the same enhanced palatability feature as claimed.” Answer 3.
Appellant contends that the Examiner erred because “the ’638 patent
has no recognition of the palatability enhancing effects of a choline
compound and in fact includes NaCl in amounts which were shown in Table
III [of the ’988 patent] to have extremely negative effects on palatability.”
Br. 6.
Appellant’s arguments do not persuade us that the Examiner erred in
rejecting claims 1 and 10 as anticipated by the ’638 patent.

7 Kealy, US 3,930,031, issued Dec. 30, 1975.
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[A] prior art reference may anticipate when the claim limitation
or limitations not expressly found in that reference are
nonetheless inherent in it. . . . Inherency is not necessarily
coterminous with the knowledge of those of ordinary skill in
the art. Artisans of ordinary skill may not recognize the
inherent characteristics or functioning of the prior art.
MEHL/Biophile Int’l Corp. v. Milgraum, 192 F.3d 1362, 1365 (Fed. Cir.
1999).
Thus, even though it was not recognized in the ’638 patent that the
choline chloride enhanced the palatability of the cat food, the cat food is still
anticipatory to the claimed subject matter because it contains the same
amount of choline chloride required by the claims and thus, on the present
record, necessarily would enhance the food’s palatability.
Citing Table III of the ’988 patent, Appellant contends that the
presence of salt (NaCl) would have a negative effect on the cat food’s
palatability. Br. 6. Table III shows the results when sodium chloride salt
(NaCl) was added to a commercial cat food. ’988 patent, col. 6, ll. 31–56.
The ’988 patent states the results in Table III “indicate that saltiness induced
by sodium chloride salt significantly decreased the palatability of the cat
food.” Id. at col. 6, ll. 52–54. The ’988 patent does not conclude that the
presence of the NaCl in the cat food eliminated the palatability of the cat
food produced by the addition of choline chloride to it. Rather, the ’988
patent teaches that “the palatability enhancement obtained from the use of
choline chloride is not attributed to any saltiness of the compound.” Id. at
col. 6, ll. 54–56. More specifically, Appellant has not established that the
presence of choline in the salty cat food disclosed in the ’638 patent would
not have enhanced the palatability of the the food.
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Under the test articulated by the court in In re Best, 562 F.2d 1252
(CCPA 1977), Appellant has the burden to prove that the cat food product of
the ’638 patent did not possess the enhanced palatability recited in the
claims.
Where, as here, the claimed and prior art products are identical
or substantially identical, or are produced by identical or
substantially identical processes, the PTO can require an
applicant to prove that the prior art products do not necessarily
or inherently possess the characteristics of his claimed product.
. . .
Whether the rejection is based on “inherency” under 35 U.S.C.
§ 102, on “prima facie obviousness” under 35 U.S.C. § 103,
jointly or alternatively, the burden of proof is the same, and its
fairness is evidenced by the PTO’s inability to manufacture
products or to obtain and compare prior art products.
Best, 562 F.2d at 1255 (CCPA 1977) (footnote omitted). Appellant did not
meet this burden.
We affirm the rejection of claims 1 and 10. Claims 1, 4, 5, 10, 12–14,
19, stand 20 were not separately argued and fall with claims 1 and 10. See
37 C.F.R. 41.67(c).

Claims 6 and 15
Claim 6 is directed to the food composition of claim 1, where the
composition also contains phosphoric acid. Claim 15 similarly requires the
presence of phosphoric acid. Appellant contends that the ’638 patent does
not disclose phosphoric acid in its compositions. Answer 7–8.
The Examiner found that the ’638 Patent discloses dicalcium
phosphate and acknowledged that dicalcium phosphate is different from
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phosphoric acid, but stated that “one skilled in the art would readily
understand that phosphoric acid can at once be envisaged from the
disclosure of one of its conjugate base moieties (i.e., dicalcium phosphate)
of phosphoric acid of the ’638 Patent.” Answer 35.
The Examiner’s position is not supported by a preponderance of the
evidence. Anticipation can be established when a small genus is disclosed
and each member can be at once envisaged. In re Petering, 301 F.2d 676,
681 (CCPA 1962). In this case, however, the Examiner did not establish
that the disclosure in the ’638 patent of dicalcium phosphate in the cat food
of Example 2 represented a small genus of compounds, which would include
phosphoric acid. That is, we do not disagree that dicalcium phosphate and
phosphoric acid are related in the manner explained by the Examiner.
Rather, it has not been established on this record, that one of ordinary skill in
the art would have added phosphoric acid as an alternative to dicalcium
phosphate in the cat food of the ’638 Patent such that phosphoric acid would
have been understood to be a member of genus including dicalcium
phospate. The Examainer also did not establish that phosphoric acid would
be present in the dry cat food of the ’638 patent. Consequently, we cannot
sustain the rejection of claims 6 and 15.
2. ANTICIPATION BY CA ’633
CA ’633 teaches a “choline chloride animal feed additive” which is
for “use . . . in the manufacture of animal feeds.” CA ’633 1: 3–4, 9. CA
’633 teaches that “[o]ne of the vitamins required by livestock for nutrition is
choline chloride.” Id. at 1: 30–31. CA ’633 further teaches that the choline
chlorine is absorbed to an inert absorbent substrate, natural sepiolite type
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clay. Id. at 3: 15-16. According to CA ’633, the choline chloride feed
additive “may be used directly in the manufacture of feeds, by mixing
therewith at rates ranging from 0.1% to 5% by weight” (id. at 6: 1–3) and the
feed additive can comprise from 5% to 60% by weight of choline chloride
(id. at 4: 9–11). Based on these values, the Examiner found that the “animal
feed of CA ’633 contains choline chloride in an amount ranging from
0.005% to 3% by weight in an animal feed composition,” meeting the
limitations of claims 1 and 10. Answer 5. Because the choline amounts in
CA ’633 overlap with those which are claimed (i.e., at least 0.25%), the
Examiner concluded that a pet food composition of CA ’633 would
inherently possess enhanced palatability. Id.
Appellant contends that CA ’633 fails to disclose “anything about
palatability enhancement,” and moreover, “changes the nature of the choline
chloride” by absorbing it to sepiolite clay, and “there is no evidence” that it
could have acted to enhance palatability in this form. Br. 9.
Appellant did not dispute that CA ’633 discloses a pet food
composition with the claimed amount of choline chloride. Because the same
amounts recited in claims 1 and 10 are used in the pet food of CA ’633, the
Examiner had sound basis to believe that such amounts would confer the
property of enhancing palatability. See In re Spada, 911 F.2d 705, 708 (Fed.
Cir. 1990) noting that when the limitations of a claim are not expressly
described in the prior art, the PTO must show “sound basis for believing”
that despite the failure of the prior art to describe them, the limitations are
inherently there and “the products of the applicant and the prior art are the
same.” When such circumstances are met, the applicant has the burden of
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showing that the limitations are not met by the prior art. Id. Appellant did
not provide persuasive argument or rebuttal evidence that the Examiner’s
fact-based conclusion was in error. Consequently, the rejection of claims 1
and 10 as anticipated by CA ’633 is affirmed. Claims 4, 12, and 13 were not
separately argued and thus fall with claims 1 and 10. See 37 C.F.R.
41.67(c).
3. ANTICIPATION BY DZANIS
Dzanis describes a nutrient profile for cat foods which comprises 2400
units/dry matter (g/kg) of choline. Dzanis, Table 2. The Examiner found
that this amount constitutes at least 0.24% of a choline compound and
concluded that “Dzanis closely embrace the claimed subject matter directed
to at least about 0.25 % by weight (claim 1) and at least 0.25 % by weight
(claim 10), Dzanis anticipates the claims 1 and 10 with sufficient
specificity.” Answer 6. Because the amounts of choline are the same as
those which are claimed, the Examiner found that the pet food of Dzanis
would inherently display enhanced palatability. Id.
Appellant contends, without citing any other evidence, that the values
disclosed in Dzanis “are recommended daily dosages based on the weight of
the dog or the cat; it speak[s] nothing of the concentration of choline in the
food composition to say nothing of the use of choline as a palatability
enhancer.” Br. 9.
Appellant’s argument is not persuasive. Table 2 is a nutrient profile
“for cat foods.” Table 2 lists the amount of the nutrient as “Units dry
matter” e.g., mg/Kg for choline, indicating that the values listed in the table
for the various nutrients are for food, not the body weight of the [dessicated]
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cat. The nutrient amounts are based on minimums for
“Growth/reproduction” and “Adult maintenance” of the cat, but the amounts
listed in the table are amounts to include in the “dry matter” of the food, i.e.,
correcting for the moisture content.
As to the arguments relating to the failure of Dzanis to teach
palatability enhancement, we refer to the analysis under the ’638 patent and
CA ’533 for the discussion of inherency.
In sum, based on the preponderance of the evidence, the rejection of
claims 1 and 10 as anticipated by Dzanis is affirmed. Claims 5, 12, 14, 19,
and 20 were not separately argued and fall with claims 1 and 10. See
37 C.F.R. 41.67(c).

4-6. OBVIOUSNESS
Rejections 4 through 6 involve one of the ’638 patent, CA ’633, and
Dzanis combined with JP ’697. Because Appellant’s arguments are similar
for each rejection, we shall consider the rejections together.

Surface coating
Claim 2, 11, 21, and others recite that the pet food composition is
“surface coated with a coating containing the choline compound.” The
Examiner found that neither of the ’638 patent, CA ’633, nor Dzanis
described a pet food with a surface coating comprising choline. See Answer
7. However, the Examiner identified disclosure in JP ’697 of a pet food with
a surface coating. Id. at 8.
The following disclosures from JP ’697 are pertinent:
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[I]n order to increase the palatability of cat foods, it has been
conventionally proposed that an acid mixture aqueous solution
composed of phosphoric acid in a large mount and citric acid in
a small amount is applied onto the surface of solid cat foods.
JP ’697, (4), ¶ 3.
[T]he present invention is the pet food characterized in that the
acidic substance is adhered in the powdery form or granular
form at its surface in the solid pet food.
Id. at (5), ¶ 6.
Thus, the solid pet food of the present invention requires
that an acidic substance be adhered at its surface in a powdery
form or granular form, and an acidic taste is effectively
imparted to the pet food by the adhered acidic substance.
Herein, in the present invention, as the acid for forming the
powdery or granular acidic substance, for example, organic
acids such as citric acid, acetic acid, succinic acid, malic acid,
or the like, inorganic acids such as phosphoric acid,
hydrochloric acid or the like, and salts providing the acidity of
these acids can be mentioned.
Id. at (6), ¶ 9 (emphasis added).
[0012]
In the present invention, it is possible to further use, in a
powdered or granular form, in addition to the above acidic
substance, one or two or more of a seasoning such as table salt,
sugar or the like, a flavoring component such as an extract of
seafood or meat or the like, a nutritional supplement component
such as spices, minerals, vitamins or the like, and other
components such as a bulking agent or the like.
[0013]
The above mentioned extracts are components obtained
by immersing the seafoods and the meats in hot water, and
components including compounds such as glucose and
glycogen and inorganic matters such as potassium in addition to
guanidine compounds such as various amino acids, lower
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peptides and creatinine and nitrogen compounds such as
nucleotides, purine bases, choline and urea are abundantly
included therein.
Id. at (7), ¶¶ 12, 13 (emphasis added).
Citing the disclosure in paragraph 13 (reproduced above) of JP ’697,
Appellant contends one of skill in the art would “first have to make the
appropriate selection from one Markush group, then make the appropriate
selection from another Markush group AND recognize the amount necessary
from that selection all without the benefit of the patentees claims to act as a
roadmap.” Br. 12. Appellant also states that choline “is not even mentioned
as a discrete element of an optional Markush group.” Id. at 11.
Furthermore, Appellant contends that JP ’697 “even suggests a
teaching away in their specification” because it discloses “even when the
acidic taste of the acid mixture is adjusted to a predetermined level, it is
difficult to keep the predetermined level of the acidic taste on the surface of
the solid cat food.” Id. at 14. Consequently, Appellant argues that the
skilled worker “would not be motivated . . . to disrupt the successful solution
developed in JP ’697 by adding another element such as a choline compound
to the surface of the composition.” Id.
The preponderance of the evidence does not support Appellant’s
arguments. Paragraph 12 of JP ’697 teaches components in addition to the
acidic substance. Paragraph 13 specification mentions choline which is a
known nutritional additive utilized in pet foods as established by each of the
’638 patent, CA ’633, and Dzanis. Thus, one of ordinary in the art would
have had sufficient reason to add choline to the acidic substance as taught by
JP ’697 for its known nutritive benefit.
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Paragraph 4 of JP ’697, cited by Appellant as a “teaching away,” is a
discussion of a prior art problem of keeping the predetermined levels of the
acid on the surface of the food and is not described as a shortcoming of the
invention described in JP ’697 of choline absorbed on clay. Consequently,
Appellant’s argument has little merit.
In addition, Appellant contends there is no “indication that the
composition [in JP ’697] is actually coated.” Br. 14, 19, 24. This argument
is not persuasive. It is stated throughout JP ’697 that the acid substance is
adhered to the surface of the pet food. JP ’697, ¶ 57. JP ’697 teaches how
the coating is made. Id. at (10), 20; Answer 13 (paragraphs 32, 33).
Appellant has not provided evidence or arguments as to why such disclosure
and teachings would not result in the acidic substance and associated
extracts, such as choline, adhered to the food surface as a coating.

Dependent claims
Appellant argues various limitations in the additional dependent
claims. Most of the arguments are with respect to the ’638 patent. For
Dzanis, Appellant denies that recited limitations are described or suggested
by the combination of Dzanis and JP ’697 (Br. 24), but does not present
specific arguments or responses to the Examiner’s basis for the rejection
(Answer 18–20). With respect to the ’638 patent and CA ’633, we address
Appellant’s specific arguments below.
Fat
Claims 25–28 require that the coating containing the choline
compound further comprises a fat material.
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The ’638 patent
The Examiner found that the ’638 patent teaches in Example 2 that the
cat food is coated with beef suet, which is a fat material. Answer 11.
Appellant argues that the ’638 patent “only teaches that the beef suet
(fat material) is coating the composition in Example 2” and not choline. Br.
15. This argument is not persuasive since JP ’697 describes choline as a
desirable component of its coating, making it obvious to have combined it
with modified beef suet as described in the ’638 patent.

CA ’633
The Examiner found the skilled worker would have reasonably
expected the animal feed of CA ’633 to comprise fat. Answer 16. Appellant
argues that combination of choline and fat is not described in CA ’633, but
does not address or dispute the Examiner’s finding regarding the fat content
of an animal feed of CA ’633. Br. 20.

Dispersion
Claims 29–32 require that the coating containing the choline
compound is a “dispersion.”

The ’638 patent
The Examiner found that that JP ’697 describes spray drying the
acidic substance on the pet food and changing the characteristics of the
particle size. Answer 11. Based on this disclosure, the Examiner found it
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would have been obvious to disperse the choline to improve its distribution
on the cat food when sprayed dried to form a coating. Id. at 12.
Appellant contends that the beef suet in the ’638 patent was to assist
in coating the food with 2,3-butanediol diester, the latter which serves a
calorie moderator. Br. 15. Appellant contends that it is unpredictable that
the diester would serve as calorie moderator when in the form of a
dispersion. Id.
This argument is not persuasive. As noted by the Examiner (Answer
11), JP ’697 teaches “fats and oils” mixed with the acidic substance and
adhered to the solid pet food. JP ’697, (9), ¶ 16. Consequently, even absent
the teaching of beef suet, there still would have been reason to add fat to the
surface of a pet food, along with choline, and utilize it as a dispersion to
obtain better adherence during spray drying as found by the Examiner.
CA ’633. Appellant did not identify an error in the Examiner’s finding of
the advantage of a dispersion when forming a coating by spray drying.

CA ’633
Appellant contends there is no disclosure of a choline dispersion in
CA ’633. Br. 20. However, the Examiner found that JP ’697 provided a
reason to make a dispersion, and, for the reasons set forth by the Examiner,
would have been obvious to apply to the teachings in CA ’633. Answer 16
(paragraph 40).

Moisture content
Claims 33–44 recite that “the food has a moisture content of less than
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about 12% by weight based on the weight of the food composition.” Claim
106 also has the moisture level below 12%.

The ’638 patent
The Examiner found that cat food described in the ’638 patent was dry
and therefore met the moisture limitation of the claims. Answer 12.
Appellant attempts to distinguish the claimed subject matter by arguing the
cited prior art individually. Br. 15. Appellant, however, did not identify an
error in the Examiner’s finding that the moisture content in the pet food of
the ’638 patent meets the recited moisture limitations.

Protein content
Claims 69–80 recite “the composition further comprises protein in an
amount of at least 20% by weight based on a 90% dry matter basis,” and
claims 81–104, “in an amount of about 30-35% by weight based on a 90%
dry matter basis.”

The ’638 patent
The Examiner found the protein content either met by the ’638 patent,
or obvious based on the finding that protein content is a result-effective
variable and obvious to optimize to increase the nutritional value for pet
animal. Answer 12. Appellant attempts to argue these claims separately,
but does not explain why the limitations would have been unobvious based
on the teachings in the ’638 patent. Br. 15.

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Spray chamber
Claims 105 and 106 are dependent claims that recite where the surface
coating involves exposing the food composition to a spray chamber, mixing
drum, or vat to coat the food with the choline compound. The Examiner
found:
JP697 teaches coating a solid pet food on its surface by a
suitable drying means such as spray drying (¶ [0009] of English
language translation). JP697 also teaches the method of
adhering the acidic substance and the like onto the surface of
the pet food is not particularly limited to mixing, such as
rolling, shaking, stirring or the like (¶¶ [0016] and [0020] of
English language translation).
It would have been obvious to the skilled artisan to coat
the surface of the pet food composition in CA633 with known
techniques such as mixing as taught by JP697 to enhance the
palatability and increase the nutrient level of the pet food.
Answer 17.

The ’638 patent
Appellant argues the publications individually, stating there is no
teaching of spray drying of the beef and diester of the ’638 patent. Br. 16.
However, the Examiner found this teaching in JP ’697. Appellant did not
identify an error in the Examiner’s findings nor the conclusion that such
teaching made the claimed subject matter obvious to one of ordinary skill in
the art.

CA ’633
Appellant contends that “JP697/CA633 also does not teach of [sic, or]
suggest that choline compound could be used as a coating by subtracting the
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protective sepiolite shell described in CA633 and still maintain the good
flow and stability” taught by CA ’633. Br. 20.
This argument is not persuasive. First, the Examiner did not
determine that the sepiolite clay be subtracted prior to being subjected to the
spray chamber as recited in the claims. Second, even if choline were used in
the spray chamber as taught by JP ’697 with or without clay, Appellant has
not provided evidence that the coating would lose its flow and stability. To
the contrary, JP ’697 states that the coating can comprise various materials
and still serve as an effective coating that enhances palatability. CA ’633, ¶¶
12, 13.

7-9. OBVIOUSNESS OF CLAIMS 8 AND 17
Claims 8 and 17 recite that food composition further comprises
fumaric acid. The Examiner found that JP ’641 describes fumaric acid in a
pet food to prevent or treat urinary calculus and that it would have been
obvious to have included it in the pet foods described in the ’638 patent, CA
’633, and Dzanis. Answer 20–22. Appellant does not identify an error in
this finding, but rather states JP ’641 does not address the deficiencies cited
for the other cited prior art. Br. 25–27. As discussed supra, we have
rejected Appellant’s arguments that the other references are deficient, and
we thus affirm the rejection of claims 8 and 17 for the reasons set for by the
Examiner.

10–12. OBVIOUSNESS OF CLAIMS 9 AND 18
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Claims 9 and 18 recite that food composition further comprises
ascorbic acid. The Examiner found that JP ’847 teaches ascorbic acid (i.e.,
vitamin C) in pet food to improve its quality. Answer 22–24. Appellant
does not identify an error in this finding, but rather states JP ’847 does not
address the deficiencies cited for the other cited prior art. Br. 27–29.
Having not been persuaded of deficiencies in the other cited prior art, we
affirm the rejection of claims 9 and 18 for the reasons set for by the
Examiner.

13. OBVIOUSNESS IN VIEW OF THE ’638 PATENT,
JP ’697, AND KEALY
Claims 33-44 and 106 are dependent claims which recite a moisture
content of less than about 12% by weight based on the weight of the food
composition. Claims 69–80 are dependent claims which further require
protein in an amount of at least 20% by weight based on a 90% dry matter
basis. Claims 81–104 require the protein to be in an amount of 30–35% dry
weight.
The Examiner found that Kealy disclosed pet food products that meet
the recited limitations. Answer 24. The Examiner further found:
Kealy is directed to surface-coated cat food compositions of
improved acceptability to cats and enhanced palatability for
dried cat food compositions with a synergistically effective
flavor enhancing mixture of acids (i.e., phosphoric acid and
citric acid) and fats (Abstract; column 3, lines 3-11; and column
5, lines 33-38).
Id. at 25.
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With respect to claims 37–44, Appellant argues that these claims also
require choline and a fat material. Appellant states that the ’638 patent
teaches the fat is on the coating, while Kealy teaches that the coating is a
synergistic combination of phosphoric and citric acids. Br. 30.
Appellant has not made clear why the teachings of synergy in Kealy
would have dissuaded the skilled worker from adding fat to a pet food.
Appellant has not provided evidence that addition of fat would affect the
synergy nor has Appellant made a clear statement about the reason for
challenging the rejection. Kealy teaches various agents which boost
palatability and does not ascribe synergy to all of them. Kealy, col. 2, ll. 19–
23. In particular, Kealy also discloses the addition of fat to its pet food. Id.
at col. 3, ll. 40–44. Consequently, we find Appellant’s argument
unpersuasive.
Appellant also argues the lack of a teaching about dispersions. Br. 31.
However, the Examiner provided an explanation as to why dispersions were
reasonably suggested by JP ’697. Answer 11–12, 57 (paragraph 136).
Appellant did not identify an error in the Examiner’s reasoning and we find
none.
Appellant also argues that the ’638 patent describes 2,3-butanediol
diester as a caloric reducer in its fat coating and that it would have been
unpredictable that the diester would work effectively when changed into a
dispersion. Br. 31. However, this point is moot since Kealy teaches the
addition of fat to a pet food composition. Answer 73 (paragraph 175).
Appellant argues that the spray chamber method recited in claim 106
would not have been obvious based on the ’638 patent, JP ’697, and Kealy.
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Br. 31. Appellant, however, focuses on the disclosure in the ’638 patent of
2,3-butanediol diester and beef suet, without addressing the disclosure in
Kealy of fat which was specifically noted by the Examiner. Answer 25 (line
4–5), 26 (heading under claim 106).

UNEXPECTED RESULTS
Claims 2, 3, 11, and 21–106
Appellants contend that Examples II and IV of the ’988 patent
establish “unexpected results” for claims 2, 3, 11, and 21–106 which require,
inter alia, that the claimed food composition is surface coated with a coating
comprising a choline compound.
A showing of “unexpected results” can be used to demonstrate the
non-obviousness of a claimed invention. In re Soni, 54 F.3d 746, 750 (Fed.
Cir. 1995) (“One way for a patent applicant to rebut a prima facie case of
obviousness is to make a showing of ‘unexpected results,’ i.e., to show that
the claimed invention exhibits some superior property or advantage that a
person of ordinary skill in the relevant art would have found surprising or
unexpected.”). These results must be “surprising or unexpected” to one of
ordinary skill in the art when comparted to closest prior art. Soni, 54 F.3d at
750. Unexpected results must also be “commensurate in scope with the
degree of protection sought by the claimed subject matter.” In re Harris,
409 F.3d 1339, 1344 (Fed. Cir. 2005).
In Example II of the ’988 patent, choline chloride was added to a
white grease coating applied to food particles comprising a food
composition prepared according to Example I. ’988 patent, col. 6, ll. 6–8.
The choline chloride surface-coated food particles were compared to
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commercially available dry cat food containing 0.24% by weight choline
chloride as a control. Id. at col. 6, ll. 9–12. The food was fed to cats and
their preference and food intake with respect to the control was determined
as a measure of enhanced palatability. Id. at col. 5, ll. 24–45.
Table II is listed below:

The data summarized in Table II show that 0.06% of choline chloride
in the coating of a food particle having a total of 0.30% choline resulted in a
67% preference for the choline-containing food over uncoated food
containing 0.24% choline. Id. at col. 6, ll. 12–25.
The data point for a food containing a total of 0.30 wt% choline
chloride, with 0.06% in its coating, showing a 67% preference over the
control is not necessarily attributable to the coating because Table 1 (id. at
col. 5, ll. 50–60) shows that cats had a 68% preference for uncoated food
particles comprising the same amount of choline chloride. In other words,
the preference for the food particles containing a total of 0.30 wt. % choline
chloride was about the same for coated (67%) and uncoated (68%) food.
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Table II also shows food preference results for increasing amounts of
choline chloride in the coating. Although all the results show an increased
preference when the food contains more choline than the control, the
relationship is not linear. The significance is discussed in more detail below.

Claims 2, 3, and 11
Claims 2, 3, and 11 require at least 0.25% choline chloride in the food
composition, where some of the choline is on the food’s surface, but the
claims do not specify how much. Table II shows a preference over a control
for a food composition containing 0.30% choline chloride. Even if this
showing constitutes an “unexpected result,” it is not commensurate in scope
with the claim because the claim encompasses values significantly less than
0.30% for which no showing or explanation has been made. Harris, 409
F.3d at 1344. A claim is unpatentable under § 103 if any embodiment
within its scope would have been obvious to the person of ordinary skill in
the art at the time the invention was made. In re Klein, 987 F.2d 1569, 1570
(Fed. Cir. 1993); In re Muchmore, 433 F.2d 824, 826 (CCPA 1970).
Moreover, as disclosed above, the ’988 patent compositions contain a grease
coating while the control does not, and as a result, the comparison between
the control and the compositions of the ’988 patent is not, on the present
record, probative of unexpected results.

Claim 21 and dependents
Claim 21, and the claims which depend from it, require at least about
0.25 wt% of the choline compound with 0.06 wt % in the coating. As
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discussed above, the results in the ’988 patent are for choline amounts of
0.30 wt% and above. Accordingly, the results are not commensurate in
scope with the claim because the claim encompasses values significantly
less than 0.30% for which no showing has been made. Harris, 409 F.3d at
1344. A claim is unpatentable under § 103 if any scope of it would have
been obvious to the person of ordinary skill in the art at the time the
invention was made. Muchmore, 433 F.2d 824 at 826. Moreover, even
though the claims require 0.06 wt% of the choline compound in the surface
coating, the coating does not appear to change the result since the
palatability to cats was the same in the coated and uncoated food. See above
comparison of Table I and II.

Claim 22 and dependents
Claim 22 depends on claim 21 and requires a choline compound in the
amount of “about 0.30 to about 0.60% by weight based on the weight of the
food composition,” where about 0.06% by weight is in the surface coating.
In this case, the results in Table II show that as the amount of choline
chloride is increased from 0.30 wt%, the preference and palatability measure
for the food composition increases as compared to the commercial food
containing 0.24 wt% choline chloride. Appellant states that “a consistent
and substantial enhancement in the palatability of the food composition is
observed.” Br. 13. Appellant also states that the “preference % from the
cats tested ranged from 67-80% and the food intake ratio (a measure of the
weight amount of control food and the food of the invention eaten by the test
cats) ranged from 0.50–0.74.” Id.
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The comparisons are not side-by-side.
First, the food composition of the ’988 patent is coated with white
grease and the choline chloride. It is not stated that the commercial food to
which the ’988 patent’s food composition is compared contains white grease
in its coating. Thus, in comparison to the control food, it cannot be
discerned whether the observed increase in palatability is due to the choline
or the white grease.
Second, the food compositions are different. The composition of the
’988 patent was prepared according to Example I (cols. 4–5). There is no
information about the nutritional content of the commercial food. For this
reason, it cannot be determined whether the preference over the control food
is a result of the added choline or the food composition made in accordance
with the ’988 patent.
Third, the preferences for the 0.36 wt% (0.12 wt% in coating) and
0.42 wt% (0.18 wt% in coating) choline containing foods are less than the
preference for the 0.30 wt% (0.06 wt% in coating) choline containing food.
Accordingly, it cannot be concluded based on these data points that choline
increases the palatability of the food since the apparent palatabilities of the
three foods are about the same and decrease as the choline content is
increased.
It has not escaped our notice that at 0.48 wt% (0.24 wt% in coating),
0.54 wt% (0.30 wt% in coating), and 0.78 wt% (0.54 wt% in coating)
choline, the food preference as compared to 0.30 wt% (0.06 wt% in coating),
is increased from 67% to 80%, 75%, and 73%, respectively. These
comparisons are side-by-side because the food composition contents are the
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same and each are coated with white grease. While there is no statement by
Appellant that such increase is unexpected by one of ordinary skill in the art,
there is no prior art evidence of record that increasing the choline to 0.48%
(0.24 wt% in coating) and above would increase the food’s palatability.
However, claim 22 is directed to a food composition with a comprising
“about 0.30 to about 0.60% by weight” of a choline compound. The claim
thus encompasses amounts of choline between 0.30 and 0.48%.
Accordingly, the results are not commensurate in scope with the claim
because the claim encompasses values less than 0.48% wt% with a coating
of greater than or equal to 0.06% wt. Harris, 409 F.3d at 1344.

Claim 23
Claim 23, depends from claim 21, and further recites “a coating
containing the choline compound in an amount of about 0.12% to about
0.60% by weight or more.” As with claim 22, it encompasses amounts less
than the amounts described above which have increased palatability as
compared to comparable food compositions. The results are therefore not
commensurate in scope with this claim.

Claim 24
Claim 24 is directed to a food composition where the surface is coated
“with a coating containing the choline compound in an amount of about
0.24% to about 0.30% by weight or more based on the weight of the food
composition.” Table II, as discussed above, shows that when the coating
was increased in this range, the palatability also increased as compared to
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food compositions with less choline in the surface coating. However, while
such amounts in the coating were shown to increase the pet food’s
palatability, this observation was reported only when the food comprised
0.48 wt% (0.24 wt% in coating) and 0.54 wt% (0.03 wt% in coating) total
choline chloride, respectively, in the food. It has not been established by
Appellant that the amounts of choline in the coating alone are responsible
for the increased palatability. As discussed above, a food containing 0.30
wt% had about same palatability whether some of the choline was on the
surface or not. Thus, there is insufficient evidence that the coating alone is
responsible for the increased palatability, rather than the total amounts in the
food composition.

Claims directed to choline and phosphoric acid
Claim 6, 15, 57–68, and 93–104 require a food composition
comprising choline and phosphoric acid. Appellant states that the data in
Table IV of the ’988 patent shows that when phosphoric acid was added to
the first example in Table II, “the preference by the cats improved from an
already impressive 67% to 100% preference. Likewise, the food intake ratio
increased from 0.56 to 0.96, i.e. an increase of the ratio from 1.3:1 to 24:1.”
Br. 13. These results are not adequate to establish unexpected results. The
’988 patent teaches in its discussion of “known palatability enhancers” that
“phosphoric acid, coated onto the surface of a dry cat food, has been shown
to be a palatability enhancer.” ’988 patent, col. 3, ll. 57–59. The ’988 patent
also teaches:
U.S. Pat. No. 3,679,429 discloses a method for improving the
palatability of dry cat food by coating the food with fat and one
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of the following flavor enhancing acids: hexamic, tartaric,
fumaric and lactic acids, phosphoric and citric acids. U.S. Pat.
No. 3,930,031 [Kealy] discloses improving the palatability of
semi-dry and dry cat food by coating the food with a mixture of
phosphoric acid and citric acid wherein the coating provides at
least 0.5% by weight phosphoric acid.
Id. at col. 3, ll. 59–67. Thus, it would have been reasonably expected that
the addition of phosphoric acid woud increase the food’s palatability.
Summary
Secondary considerations are “not just a cumulative or confirmatory
part of the obviousness calculus but constitute [] independent evidence of
nonobviousness . . . [and] enable [] the court to avert the trap of hindsight.”
Leo Pharm. Prods., Ltd. v. Rea, 726 F.3d 1346, 1358 (Fed. Cir. 2013)
(internal quotation marks and citations omitted). “This objective evidence
must be ‘considered as part of all the evidence, not just when the
decisionmaker remains in doubt after reviewing the art.’” Transocean
Offshore Deepwater Drilling, Inc. v. Maersk Drilling USA, Inc., 699 F.3d
1340, 1349 (Fed. Cir. 2012) (internal citations omitted).
In this case, we have considered the evidence of nonobviousness
disclosed in the ’988 patent. Specifically, Table II shows that food
composition comprising choline chloride and grease applied to the surface of
food particles was preferred by cats as compared to a commercial pet food
lacking the choline chloride coating. However, while there is no teaching in
the cited prior art that choline would enhance palatability, the preference
was not clearly attributablee to the choline because the commercial cat food
was not directly comparable to the choline containing food of the ’988
patent. For example, the comparative food did not have the same grease
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coating and nutritional content as the choline-containing food prepared in
accordance with the ’988 patent.
We recognized that Table II contains data which shows that certain
total amounts of choline enhanced the palatability of the food composition as
compared to comparable food compositions with lower amounts of choline.
However, the data is not sufficient to establish non-obviousness of the full
scope of the claims because these claims cover a range of choline-containing
food compositions, including compositions with less amounts for which
enhanced palatability was not established by a preponderance of the
evidence.

NEW GROUND OF REJECTION
Claim 6, which depends from claim 5 and thus from claim1 is drawn
to a food composition comprising at least about 0.25 wt% choline and
phosphoric acid. Claim 15, which depends from claim 14 and thus from
claim 10, is drawn to method claim comprising adding at least 0.25 wt%
choline and phosphoric to food composition.
The ’638 patent and Dzanis describe a pet food composition with
choline in the claimed amounts and with an acid, but not phosphoric acid.
Answer 3, 6, 7. As admitted in the ’988 patent, it was known to add
phosphoric acid to a pet food composition to enhance its palatability. ’988
patent, col. 3, ll. 59–67. Kealy also specifically teaches it was known to add
phosphoric acid to cat foods to achieve enhanced palatability. Kealy, col. 2,
ll. 19-37. See also US 3,679,429 (“Mohrman”) cited in the ‘988 patent. It
would have been obvious to one of ordinary skill in the art to have added
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phosphoric acid to the compositions of the ’638 patent and Dzanis to
improve their palatability.
Claims 6 and 15 are rejected under 35 U.S.C. § 103 as obvious in
view of the ’638 patent, Dzanis, Mohrman, Kealy, and Admissions in the
’988 patent. This is a new ground of rejection under 37 C.F.R. § 41.50(b).

TIME PERIOD FOR RESPONSE
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b) (effective September 13, 2004, 69 Fed. Reg. 49960
(August 12, 2004), 1286 Off. Gaz. Pat. Office 21 (September 7, 2004)). 37
C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this
paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the proceeding will be remanded to
the examiner. . . .
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record. . . .

AFFIRMED
37 C.F.R. § 41.50(b)

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cdc

PATENT OWNER:

Colgate-Palmolive Company
909 River Road
Piscataway, NJ 08855

THIRD PARTY REQUESTOR:

LOWE, HAUPTMAN, HAM & BERNER, LLP
2318 Mill Road
Suite 1400
Alexandria, VA 22314