Ex Parte Al-Murrani et al

Patent Trial and Appeal Board

Feb 13, 2017

13697051 (P.T.A.B. Feb. 13, 2017)

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.
13/697,051 11/09/2012 Samer Al-Murrani 9030-00-HL 9677
23909 7590 02/15/2017
COLGATE-PALMOLIVE COMPANY
909 RIVER ROAD
PISCATAWAY, NJ 08855
EXAMINER
PURDY, KYLE A
ART UNIT PAPER NUMBER
1611
NOTIFICATION DATE DELIVERY MODE
02/15/2017 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):
Paten t_Mail @ colpal. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SAMER AL-MURRANI, XIANGMING GAO, JUNYU LEE,
SUKHASWAMI MALLADI, and NOLAN ZEBULON FRANTZ1
Appeal 2016-000509
Application 13/697,051
Technology Center 1600
Before ULRIKE W. JENKS, SHERIDAN K. SNEDDEN, and
RACHEL H. TOWNSEND, Administrative Patent Judges.
TOWNSEND, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35U.S.C. § 134 involving claims to a
nutritional composition for use in controlling a feline inflammatory
condition, which have been rejected as anticipated. We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm, but designate our affirmance as New Grounds of
Rejection.
1 Appellants identify the Real Party in Interest as Hill’s Pet Nutrition, Inc.
(Br. 2.)
Appeal 2016-000509
Application 13/697,051
STATEMENT OF THE CASE
Claims 5—7 are on appeal. Claims 5 and 6 are representative and read
as follows:
5. A composition comprising, on a dry weight basis:
DHA + EPA: 0.5-2.5 %
Methionine: 1—3 %,
Manganese: 50 —200 ppm
Vitamin C: 75 —1000 mg/kg
Vitamin E: 500 — 2500 mg/kg
L-camitine: 100 — 500 mg/kg
for use in treating or controlling an inflammatory condition in a feline
by reducing the expression of blood levels of a gene selected from one or
more of INDO, ANXA1, MMP8, ODC1, and STXBP2.
6. A composition comprising on a dry weight basis:
DHA +EPA: 0.594-0.726%
Methionine: 1.39—1.69%
Manganese: 87.3—106.7 ppm
Vitamin C: 156.6—191.4 mg/kg
Vitamin E: 729.36—891.45 mg/kg
L-camitine: 453.6—554.4 mg/kg.
for use in treating or controlling an inflammatory condition in a feline.
(Corrected Claims App’x. 2.)
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Appeal 2016-000509
Application 13/697,051
The following ground of rejection by the Examiner is before us on
review:
Claims 5—7 under 35 U.S.C. § 102(b) as anticipated by Yamka.2
DISCUSSION
The Examiner finds that Yamka teaches compositions for altering
gene expression that include
• about 0.1-0.5 %DHA
• about 0.1-0.7% EPA
• from 0.5—1.6% by weight methionine,
• about 50-200 ppm manganese, corresponding to 50-200
mg/kg,
• about 50-500 ppm vitamin C, corresponding to 50-500 mg/kg
• about 50-1200 IU/kg vitamin E, corresponding to about 33.4—
800 mg/kg (1 IU vitamin E = 0.667 mg), and
• about 50-500 ppm carnitine, corresponding to 50-500 mg/kg.
(Final Action 4; Ans. 2.) In light of the foregoing, the Examiner also
contends that one of ordinary skill in the art could envisage from Yamka’s
ranges a composition comprising the end points of those ranges as follows:
DHA+EPA: 1.2%
Methionine: 1.6%
Manganese: 200 mg/kg
Vitamin C: 500 mg/kg
Vitamin E 800 mg/kg, and
Carnitine: 500 mg/kg
2 Yamka et al., WO 2008/0103958 Al, published Aug. 28, 2008.
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Appeal 2016-000509
Application 13/697,051
(Adv. Action 2; Ans. 2—3, 5—6.) The Examiner finds that because Yamka’s
disclosed composition is substantially identical to the composition recited in
claim 5, the Yamka composition necessarily has the same reducing property
recited in claim 5, i.e., reducing the expression of blood levels of one or
more of the recited genes. (Final Action 4; Ans. 3.)
Regarding claim 7 and its recitation that the composition consists
essentially of the ingredients recited in claim 5, the Examiner notes that
Appellants “ha[ve] failed to define what compounds materially affect the
basic and novel characteristics of the claimed invention,” i.e., what
materially affects the ability to reduce the expression of INDO, ANXA 1,
MMP8, ODC1 and STXBP2, or gene expression generally. (Adv. Action
2.)3 Consequently, the Examiner has interpreted the phrase ‘“consisting
essentially of” as equivalent to “comprising.” (Id.) The Examiner,
therefore, finds Yamka anticipates claim 7 for the same reason it anticipates
claim 5. (Final Action 5; Ans. 3.)
Claims 5 and 6
We agree with Appellants that Yamka does not disclose the specific
composition the Examiner points to as being the end points of Yamka’s
ranges for claimed ingredients present in composition 1 (Br. 3). As
Appellants point out, “the disclosure of a range is no more a disclosure of
the end points of the range than it is of each of the intermediate points.”
Atofina v. Great Lakes Chem. Corp, 441 F.3d 991, 1000 (Fed. Cir. 2006).
3 Advisory Action dated Sept. 2, 2014.
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Application 13/697,051
However, that does not end the anticipation inquiry, for as the Examiner
noted, Yamka discloses a composition including all of the claimed
ingredients in ranges which overlap the ranges recited in the claims. In
arguing against a finding of anticipation, Appellants simply assert “that the
ranges of ingredients in Applicants’ claim 5 are not disclosed by Yamka
with sufficient specificity to anticipate Applicants’ claim.” (Br. 4.) We do
not find that argument persuasive.
In Atofina, 441 F.3d at 999-1000, our reviewing court reversed the
district court’s finding of anticipation where the patent-in-suit claimed a
temperature range that was critical to the operability of the invention and the
broad range disclosed in the prior art was substantially different than the
critical temperature range. What is more, the evidence showed that a person
of ordinary skill in the art would have expected the synthesis reaction at
issue to operate differently, or not all, outside of the temperature range
claimed in the patent-in-suit. Id. In ClearValue, Inc. v. Pearl River
Polymers, Inc., 668 F.3d 1340, 1345 (Fed. Cir. 2012), however, our
reviewing court affirmed the finding of anticipation where the patentee did
not argue that raw alkalinity range was ‘“critical,”’ or that the claimed
method works differently at different points within the prior art range that
included an upper limit twice as high as the claimed upper limit. Id.
(“[T]here [was] no allegation of criticality or any evidence demonstrating
any difference across the range.”) Anticipation was also affirmed in Ineos
USA LLC v. Berry Plastics Corp., 783 F.3d 865, 870 (Fed. Cir. 2015), where
our reviewing court noted that “Ineos has not established that any of these
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Appeal 2016-000509
Application 13/697,051
properties would differ if the range from the prior art ‘846 patent is
substituted for the range of limitation 2.”
Appellants’ broad ranges recited in claim 5 are not drastically
different from the ranges disclosed in Yamka for a feline nutritive
composition. (See chart below.)
Claim 5 Y amka
DHA + EPA: 0.5-2.5 % about 0.1-0.5 % DHA
about 0.1-0.7% EPA
Methionine: 1—3 %, from 0.5—1.6% by weight methionine,
Manganese: 50 —200 ppm about 50-200 ppm manganese,
corresponding to 50—200 mg/kg,
Vitamin C: 75 —1000 mg/kg about 50-500 ppm vitamin C,
corresponding to 50—500 mg/kg
Vitamin E: 500 — 2500 mg/kg about 50-1200 IU/kg vitamin E,
corresponding to about 33.4—800
mg/kg (1 IU vitamin E = 0.667 mg)
L-camitine: 100 — 500 mg/kg about 50-500 ppm carnitine,
corresponding to 50—500 mg/kg
Moreover, Appellants do not indicate that the ranges of ingredients
recited are critical. Nor is there evidence that one of ordinary skill in the art
would have expected a composition to behave differently outside of the
claimed ranges. Consequently, the facts here are similar to ClearValue and
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Appeal 2016-000509
Application 13/697,051
Ineos, not Atofina. As such, we find Yamka’s disclosure of a range of
ingredients that overlaps the recited range of ingredients in claim 5 and
Yamka’s disclosure that a composition including these ingredients affects
regulation in expression of a gene or genes associated with a biological
condition is a sufficient teaching to anticipate the recited ranges of claim 5.
Our decision is the same regarding claim 6. It is true that the ranges
recited in claim 6 are narrower than those recited in claim 5 (Br. 5). (See
chart below.)
Claim 6 Claim 5 Y amka
DHA + EPA:
0.594—0.726%
DHA + EPA:
0.5—2.5 %
about 0.1-0.5 % DHA
about 0.1-0.7% EPA
Methionine:
1.39-1.69%
Methionine:
1-3 %,
from 0.5—1.6% by weight
methionine,
Manganese:
87.3—106.7 ppm
Manganese:
50 —200 ppm
about 50-200 ppm manganese,
corresponding to 50—200 mg/kg,
Vitamin C:
156.6-191.4
mg/kg
Vitamin C:
75-1000
mg/kg
about 50-500 ppm vitamin C,
corresponding to 50—500 mg/kg
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Appeal 2016-000509
Application 13/697,051
Vitamin E:
729.36-891.45
mg/kg
Vitamin E:
500-2500
mg/kg
about 50-1200 IU/kg vitamin E,
corresponding to about 33.4—800
mg/kg (1 IU vitamin E = 0.667
mg)
L-camitine:
453.6-554.4
mg/kg
L-camitine:
100-500
mg/kg
about 50-500 ppm carnitine,
corresponding to 50—500 mg/kg
Appellants still do not indicate that the ranges of ingredients recited in
claim 6 are critical. Nor is there evidence that one of ordinary skill in the art
would have expected a composition to behave differently outside of these
claimed ranges. Consequently, just as for claim 5, we find Yamka’s
disclosure of a range of ingredients that overlaps the recited range of
ingredients in claim 6 and Yamka’s disclosure that a composition including
these ingredients affects regulation in expression of a gene or genes
associated with a biological condition anticipates claim 6.
Claim 7
We agree with the Examiner’s claim construction regarding claim 7.
There is no clear indication in Appellants’ Specification what the “basic and
novel characteristics” of the invention are. For example, Appellants do not
provide a discussion of what ingredients would adversely affect the ability to
reduce the expression of blood levels of one or more of INDO/ ANXA1/
MMP8/ ODC1/ and STXBP2. And Yamka teaches the ability of its
compositions that include the recited ingredients to down regulate numerous
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Appeal 2016-000509
Application 13/697,051
genes including binding proteins and dioxygenases. (See Yamka Table 15.)
Thus, we construe “consisting essentially of’ as equivalent to “comprising.”
Appellants contend that claim 7 “requires much narrower ranges than
disclosed or suggested by Yamka.” (Br. 4.) The ranges recited in claim 7
are identical to claim 5. For the reasons discussed above regarding claim 5,
we do not find Appellants’ argument persuasive. Consequently, we agree
with the Examiner that Yamka anticipates claim 7, albeit on somewhat
different grounds than the Examiner asserted.
SUMMARY
We affirm the rejection of claims 5—7 under 35 U.S.C. § 102(b) as
anticipated by Yamka. However, because our reasoning differs to some
degree from the Examiner’s, we designate our affirmance as New Grounds
of Rejection.
TIME PERIOD FOR RESPONSE
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). 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 Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds 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
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Appeal 2016-000509
Application 13/697,051
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. . . .
Should Appellant elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to
seek review under 35 U.S.C. §§ 141 or 145 with respect to the
affirmed rejection, the effective date of the affirmance is deferred
until conclusion of the prosecution before the Examiner unless, as a
mere incident to the limited prosecution, the affirmed rejection is
overcome.
If Appellant elects prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this
case should be returned to the Patent Trial and Appeal Board for final action
on the affirmed rejection, including any timely request for rehearing thereof.
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; 37 C.F.R, $ 41.50(b)
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