Ex Parte Arihara

Patent Trial and Appeal Board

Jun 15, 2017

12219325 (P.T.A.B. Jun. 15, 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.
12/219,325 07/18/2008 Keizo Arihara 7087-133370 4648
28289 7590 06/19/2017
THE WEBB LAW FIRM, P.C.
ONE GATEWAY CENTER
420 FT. DUQUESNE BLVD, SUITE 1200
PITTSBURGH, PA 15222
EXAMINER
TURNER, FELICIA C
ART UNIT PAPER NUMBER
1793
NOTIFICATION DATE DELIVERY MODE
06/19/2017 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):
patents @ webblaw. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KEIZO ARIHARA1
Appeal 2016-006273
Application 12/219,325
Technology Center 1700
Before TERRY J. OWENS, PETER F. KRATZ, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
CASHION, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 37-44. We have jurisdiction under 35 U.S.C. § 6.
We AFFIRM.
1 The real party in interest is identified as School Juridical Person Kitasato
Institute, having its principal place of business at 9-1, Shirokane 5-Chome
Minato-ku, Tokyo, Japan, 108-8641. App. Br. 4.
Appeal 2016-006273
Application 12/219,325
Claim 37 is illustrative of the subject matter on appeal and is
reproduced below:
37. A method of preparing cat food having anti-stress
action and increased palatability, comprising the steps of:
performing, using an extruder, extrusion molding of a
raw material at 110°C for 30 seconds to provide an extruded
product, wherein the raw material comprises a peptide material
consisting of 2—10 amino acid residues and the peptide material
is obtained from treatment of livestock meat or fish meat with a
protease; and
drying the extruded product at 140°C for 15 minutes.
Appellant (App. Br. 9) requests review of the following rejections
from the Examiner’s Non-Final Action dated May 14, 20152:
I. Claims 37-41 and 44 rejected under 35 U.S.C. § 103(a) as
unpatentable over Laflamme (US 2004/0081743 Al, published April 29,
2004), Arihara ‘898 (JP 2001-233898 A, published August 28, 2001, and
relying on a Machine English Translation dated July 28, 2010 as the English
equivalent) and Parthasarathy (US 2004/0076718 Al, published April 22,
2004).
II. Claim 42 rejected under 35 U.S.C. § 103(a) as unpatentable
over Laflamme, Arihara ‘898, Parthasarathy, and Arihara ‘937 ((JP 2006-
347937 A, published December 28, 2006, and relying on a Machine English
Translation dated June 16, 2014 as the English equivalent).
III. Claim 43 rejected under 35 U.S.C. § 103(a) as unpatentable
over Laflamme, Arihara ‘898, Parthasarathy, and Yoshikawa ((JP 2006-
279490 A, published October 12, 2006, and relying on a Machine English
Translation dated June 16, 2014 as the English equivalent).
2 The Non-Final Action includes a rejection of claim 42 under 35 U.S.C.
112, first paragraph (written description). Non-Final Act. 3. This rejection
was withdrawn by the Examiner. Ans. 10—11. Accordingly, the rejection is
not before us for review on appeal.
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For Rejection I, Appellant relies on the same arguments in addressing
the rejection of independent claims 37 and 40 and presents separate
arguments for dependent claim 41. App. Br. 10,20. Appellant also relies on
the arguments presented when discussing claim 37 to address the rejection of
dependent claims 38, 39, and 44 (Rejection I) and the separate rejections of
claims 42 (Rejection II) and 43 (Rejection III). Id. at 10. With respect to
Rejections II and III, Appellant does not address or further distinguish the
additionally cited secondary references based on the additional limitations of
the respectively rejected claims. Id. Accordingly, we select claim 37 as
representative of the subject matter before us on appeal. Claims 38—40 and
42 44 stand or fall with claim 37. Claim 41 will be addressed separately.
OPINION
Prior Art Rejections
Claim 3 7
After review of the respective positions provided by Appellant and the
Examiner, we AFFIRM the Examiner’s rejection of representative claim 37
for the reasons presented by the Examiner. We add the following for
emphasis.
Claim 37 is directed to a method of preparing cat food having anti­
stress action and increased palatability.
The Examiner found Laflamme discloses a method of adding
supplemental amino acids in peptide combinations to a cat food pre-mix by
extruding the mixture at temperatures greater than 150°F and drying the
extruded product at between 29°F to 340°F (-1.6°C to 171°C), a temperature
range that encompasses the claimed drying temperature of 140°C. Non-
Final Act. 3; Ans. 11; Laflamme Abstract, H 17—22, 29. The Examiner
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found Laflamme discloses using pork, beef, and chicken as protein sources
for the cat food, but does not disclose that (1) the amino acids are present as
peptide material consisting of 2 to 10 amino acid residues, (2) the peptide
material is obtained from the treatment of livestock meat or fish meat with a
protease, (3) extruding the cat food for 30 seconds and (4) drying the cat
food for 15 minutes. Non-Final Act. 3^4.
With respect to (1) and (2), the Examiner found Arihara ‘898
discloses a peptide product containing 3 to 5 amino acid residues for the
incorporation in foodstuff that is obtained from the treatment of livestock
meat or fish meat with a protease. Non-Final Act. 4; Arihara H 2—4, 10, 11,
13, 14. The Examiner also found Arihara ‘898 discloses that the peptide has
the effect of being anti-hypertensive. Non-Final Act. 4: Arihara H 4—7.
With respect to (3) and (4), the Examiner found Parthasarathy
discloses a method of making pet food including dry cat food containing
proteinaceous components by extruding wet mixed ingredients at a
temperature of 93 °C to 110°C for approximately 30 seconds to 60 seconds
and, afterwards, drying the extruded pet food at a temperature of 71 to
148°C for approximately 20 to 30 minutes. Non-Final Act. 4; Parthasarathy
1123, 24, 28. The Examiner further found Parthasarathy discloses that
palatability correlates to low moisture content in the food product. Non-
Final Act. 5; Parthasarathy H 23, 24.
The Examiner determined it would have been obvious to one of
ordinary skill in the art to modify the method of Laflamme to incorporate the
peptide of Arihara ‘898 as part of the amino acid supplement of the cat food
of Laflamme because Arihara ‘898 discloses specific peptides that have
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Application 12/219,325
beneficial anti-hypertensive activity that can be incorporated into food
products. Non-Final Act. 5. The Examiner further determined it would have
been obvious to modify the step of extruding in Laflamme to extrude at 93—
110°C for 30 seconds to 60 seconds, as taught by Parthasarathy, as well as to
modify the step of drying in Laflamme to include drying for an appropriate
time period to ensure that cat foods attain a moisture content that is palatable
to cats. Id. at 5—6.
Appellant argues that Laflamme discloses an extrusion temperature of
150°C that is above the claimed extrusion temperature of 110°C. App. Br.
11—12. Appellant further argues Laflamme’s overly broad drying
temperature range of -1.6 to 171°C does not establish a prima facie case of
obviousness for the claimed drying temperature of 140°C because the broad
range encompasses freezing temperatures and, without further guidance, is
insufficient to render a single temperature that happens to fall within the
range. Id. at 12—13. Thus, Appellant asserts there is no rationale for
selecting the claimed drying temperature of 140°C from Laflamme’s broad
range of -1.6 to 171°C and lowering the extrusion temperature from 150°C
to the claimed drying temperature of 110°C. App. Br. 12—13, 17—18.
We are unpersuaded by these arguments for the reasons presented by
the Examiner. Ans. 11—13. The Examiner found Parthasarathy discloses as
known an alternate technique for making cat products having a moisture
content (from about 5% to about 12%) similar to the moisture content of
Laflamme (from about 5% to about 15%), a finding not disputed by
Appellant, using a similar extrusion-dryer arrangement. Non-Final Act. 3—5;
App. Br. 15, 17; Laflamme 121—22; Parthasarathy 123—24. The Examiner
determined one skilled in the art would have been capable of modifying
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Laflamme’s method by using the operating temperatures for the extrusion
and drying devices disclosed by Parthasarathy. Non-Final Act. 5—6. Thus,
the Examiner provided a reasonable basis to combine the cited art to arrive
to the claimed invention. Id. While Appellant argues that Parthasarathy’s
broad drying temperature range is insufficient to render obvious the claimed
drying temperature of 140°C (App. Br. 12—13), our reviewing court has held
[A] prima facie case of obviousness arises
when the ranges of a claimed composition overlap
the ranges disclosed in the prior art. [Citations
omitted.] Where the “claimed ranges are
completely encompassed by the prior art, the
conclusion [that the claims are prima facie
obvious] is even more compelling than in cases of
mere overlap.”
In re Harris, 409 F.3d 1339, 1341 (Fed. Cir. 2005) (quoting In re Peterson,
315 F.3d 1325, 1330 (Fed. Cir. 2003). In such a case, the burden is on
Appellant to rebut prima facie obviousness by showing evidence of
unexpected properties at the claimed drying temperature relative to the prior
art range. See In re Geisler, 116 F.3d 1465, 1469, 1470 (Fed. Cir. 1997); In
re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990). However, Appellant has
not directed us to any evidence of criticality for the claimed drying
temperature. Further, Appellant has not adequately explained why one
skilled in the art would not have been capable of arriving to the claimed
method of preparing cat food from the teachings of the cited references.
Appellant asserts no reason was given for modifying the drying time
of Laflamme in view of the teachings of Parthasarathy to the claimed drying
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time because the Examiner did not establish drying time as a result effective
variable. App. Br. 15—16.
We are unpersuaded by this argument because Parthasarathy discloses
the retention time (drying time) in the dryer is generally approximately 20 to
30 minutes, and preferably no longer than 180 minutes. Parthasarathy 124.
That is, Parthasarathy does not set a strict drying period of 20-30 minutes as
alleged by Appellant (App. Br. 15—16) but, instead, informs that the drying
period is a parameter to be determined by one skilled in the art when
practicing the invention. Therefore, we agree with the Examiner’s
determination that the drying time is a result effective variable. Ans. 12.
Appellant has not adequately explained why one skilled in the art would not
have been capable of determining the appropriate drying time for a particular
cat food product. See In re Sovish, 769 F.2d 738, 743 (Fed. Cir. 1985) (skill
is presumed on the part of one of ordinary skill in the art); In re Bozek, 416
F.2d 1385, 1390 (CCPA 1969).
Appellant argues the Examiner did not establish that the
antihypertensive peptides of Arihara ‘898 also possess anti-stress action
properties. App. Br. 13—14. In support of this argument, Appellant relies on
a Declaration under 37 C.F.R. § 1.132 dated October 5, 2013 by the inventor
Keizo Arihara (First Declaration) to show that it is not inherent that an anti­
hypertensive composition would have an anti-stress action. App. Br. 14;
First Decl. | 6.
We are unpersuaded by these arguments. As noted by the Examiner,
Arihara ‘898 discloses making the peptides via a protease treatment of
livestock or fish meat. Non-Final Act. 4; Arihara ‘898 Tflf 2—4, 10, 11, 13,
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14. The Examiner also noted this treatment is the same as disclosed and
claimed by Appellant. Ans. 13—14; Spec. 4. Thus, the Examiner has
provided a reasonable basis for one skilled in the art to understand that the
peptides of Arihara ‘898 also possess anti-stress action, absent a showing to
the contrary. We have considered Declarant’s statements on paragraph 6 of
the First Declaration to the extent discussed in the Appeal Brief but are
unpersuaded by them. While Declarant’s statements generally allege that
not all anti-hypertensive compounds have anti-stress action, Declarant does
not specifically explain why the peptides of Arihara ‘898 do not have anti­
stress action. Further, Keizo Arihara is the named inventor for both Arihara
‘898 and the instant application as well as the Declarant for the First
Declaration. Thus, Arihara ‘898 is Appellant’s own prior art and Appellant
is in the best position to explain the reference and distinguish the peptides
used in claimed invention from the peptides disclosed in Arihara ‘898. The
First Declaration does not adequately explain a difference that distinguishes
the peptides used in the claimed method from the peptides of Arihara ‘898.
Appellant argues that the antihypertensive effect of the peptides in
Arihara ‘898 is not relevant to Faflamme because Faflamme is directed to
cat food for maintaining lean body mass while the peptides of Arihara ‘898
are directed to a different purpose, as anti-hypertensive components. App.
Br. 13.
We find this argument unavailing and agree with the Examiner’s
determination that one skilled in the art is capable of using the method
disclosed by Faflamme to incorporate peptides into a cat food where the
incorporated peptides treat ailments or conditions in addition to the
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ailment/condition treated by Laflamme. Non-Final Act. 5; Ans. 13.
Appellant has not adequately explained otherwise.
We have also considered Appellant’s argument that Parthasarathy
attributes palatability to enzymes and not moisture content and find it
unavailing as well. App. Br. 16—17. As noted by the Examiner,
Parthasarathy recognizes that there is a correlation between low moisture
and increased palatability of the cat food. Non-Final Act. 5; Ans. 18;
Parthasarathy 123. While Parthasarathy also teaches that the use of enzyme
can increase the palatability of cat food (App. Br. 17; Reply Br 3;
Parthasarathy 143), this disclosure does not diminish Parthasarathy’s
teaching of the correlation between low moisture and increased palatability
(Ans. 18).
Appellant argues another Declaration under 37 C.F.R. § 1.132 dated
December 25, 2014 by the inventor Keizo Arihara (Second Declaration)
shows unexpected results in that food prepared according to the claimed
method (Condition 4) exhibits superior and unexpected palatability
compared to food prepared under conditions that are substantially similar to
those of the primary reference to Laflamme (Condition 1). App. Br. 18, 20.
When evidence of secondary considerations is submitted, we begin
anew and evaluate the rebuttal evidence along with the evidence upon which
the conclusion of obviousness was based. In re Rinehart, 531 F.2d 1048,
1052 (CCPA 1976). The burden of establishing unexpected results rests on
the person who asserts them. Appellant may meet the burden by
establishing that the difference between the claimed invention and the
closest prior art was an unexpected difference. See In re Klosak, 455 F.2d
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1077, 1080 (CCPA 1972). The unexpected results must be established by
factual evidence, and attorney statements are insufficient to establish
unexpected results. See In re Geisler, 116 F.3d 1465, 1470-71 (Fed. Cir.
1997). Further, a showing of unexpected results supported by factual
evidence must be reasonably commensurate in scope with the degree of
protection sought by the claims on appeal. In re Grasselli, 713 F.2d 731,
743 (Fed. Cir. 1983); In re Clemens, 622 F.2d 1029, 1035 (CCPA 1980).
While Appellant argues in the Appeal Brief that the data concerning
increased palatability in the Second Declaration is evidence of unexpected
results (App. Br. 18, 20), there is no statement by Declarant in the Second
Declaration explaining why this increased palatability is unexpected.
Instead, Declarant merely states that results from the showing demonstrate
the food prepared according to the present invention was significantly more
palatable to the cats than food prepared according to any other tested
method. Second Declaration 115.
Further, the showing is insufficient to establish unexpected results
because the data presented in the Second Declaration are based on a single
peptide material prepared from chicken meat blended in a single raw
material composition. Id. 8—9. Appellant does not explain why this
single tested raw material/peptide composition is representative of the entire
scope of peptides and compositions encompassed by the claims.
On this record, Appellant has not adequately shown, much less
explained, why the evidence relied upon would have been unexpected by
one of ordinary skill in the art or is reasonably commensurate in the scope
with the claims. See, e.g., In re Harris, 409 F.3d at 1344 (“Even assuming
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that the results were unexpected, Harris needed to show results covering the
scope of the claimed range. Alternatively Harris needed to narrow the
claims.”); In re Greenfield, 571 F.2d 1185, 1189 (CCPA 1978).
Claim 41
Claim 41 requires the raw material to comprise 10% by weight of the
peptide.
The Examiner found Laflamme discloses adding an amino acid at
amounts of 1.67% to 3.68% and 6.7% to 12.5%. Non-Final Act. 10;
Laflamme Tflf 30-32.
Appellant argues Laflamme does not disclose or suggest including a
peptide in the amount of 10%, by weight of the cat food itself. App. Br. 21.
According to Appellant, the amount of single amino acids relied upon by the
Examiner is directed to a particular percentage of all protein in the animals'
diet and not to a particular percentage not of the food itself, as claimed. Id.
We are unpersuaded by these arguments and agree with the
Examiner’s determination that it would have been obvious to add the
peptides of Arihara ‘898 at similar amounts for achieving beneficial effects
in the cat food without disrupting the palatable state of the cat food. Ans.
24; Laflamme H 31. Moreover, Laflamme discloses adding a supplemental
amount of at least one amino acid selected from lysine and cysteine in an
amount sufficient to fulfill the purpose for which the amino acids/peptides
are being used.. Laflamme Tflf 11, 13. Appellant directs us to no evidence of
criticality for the claimed percent of peptides.
Accordingly, we affirm the Examiner’s prior art rejection of claims
37—41 and 44 under 35 U.S.C. § 103 (a) (Rejection I) as well as the separate
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prior art rejections of claims 42 (Rejection II) and 43 (Rejection III) for the
reasons presented by the Examiner and given above.
DECISION
The Examiner’s prior art rejections of claims 37-44 under 35 U.S.C.
§ 103(a) are affirmed.
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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