Ex Parte Breton et al

Board of Patent Appeals and Interferences

Jan 18, 2011

10504906 (B.P.A.I. Jan. 18, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte LIONEL BRETON,
ISABELLE BUREAU-FRANZ, and AUDREY GUENICHE
__________

Appeal 2010-000233
Application 10/504,906
Technology Center 1600
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Before ERIC GRIMES, MELANIE L. McCOLLUM, and JEFFREY N.
FREDMAN, Administrative Patent Judges.

McCOLLUM, Administrative Patent Judge.

DECISION ON APPEAL1
This is an appeal under 35 U.S.C. § 134 involving claims to a
photoprotective composition. The Examiner has rejected the claims as
obvious. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
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STATEMENT OF THE CASE
Claims 1-7, 9, 13, 22-30, and 32-35 are on appeal (App. Br. 4).2 The
claims have not been argued separately and therefore stand or fall together.
37 C.F.R. § 41.37(c)(1)(vii). We will focus on claim 1, which reads as
follows:
1. An orally administrable photoprotective composition for the
photoprotection of the skin, the composition comprising a photoprotecting
effective amount of i) at least one probiotic lactic acid bacterium or a culture
supernatant thereof, ii) at least one yeast and iii) at least one carotenoid, in
an orally acceptable carrier, the lactic acid bacterium present in an amount
from about 105 to 1015 cfu/g of the carrier, wherein the carrier is selected
from the group consisting of milk, yoghurt, curd, cheese, fermented milks,
milk based fermented products, ice-creams, fermented cereal based products,
milk based powders, infant formulae and combinations thereof.
Claims 1-7, 9, 13, 22-30, and 32-35 stand rejected under 35 U.S.C.
§ 103(a) as obvious in view of Rivier (US 2003/0059501 A1, Mar. 27, 2003)
and De Jong et al. (WO 00/33854 A1, Jun. 15, 2000) (Ans.3 3).
The Examiner relies on Rivier for disclosing “an orally administrable
composition that comprises a) lactic acid bacterium, b) yeast and c) at least
one carotenoid, in an orally acceptable carrier” (id.). The Examiner also
finds that Rivier discloses that “the lactic acid bacterium and the yeast can
range from 102 to 1012 count/gram” (id.).
The Examiner relies on De Jong for teaching “an oral preparation
which comprises one or more probiotics”; “that Lactobacillus and
Bifidobacterium genera and combinations thereof are preferred suitable

2 Claims 14-21 are also pending but have been withdrawn from
consideration (App. Br. 4).
3 “Ans.” refers to the substitute Examiner’s Answer dated June 29, 2009.
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probiotics”; “that the yeast strain used in the invention can be of the genus
Saccharomyces”; “that it is possible to use both a single microorganism and
a mixture of microorganisms”; “that the total concentration of the probiotics
is 106 to 1012 live cells per gram of the total product”; and “that the
preparation can be in the form of a nutritional supplement, liquid
preparation, drinkable liquids, yoghurt, milk, fruit juice, solid or liquid food,
tablets, capsules, powders, sachets, pastilles, sweets and bars” (id. at 4).
The Examiner finds that “Rivier and De Jong et al. teach analogous
inventions related to an orally administrable composition comprising i) at
least one probiotic lactic acid bacterium or a culture supernatant thereof, and
ii) at least one yeast, in an orally acceptable carrier” (id.). The Examiner
concludes that it would have been obvious “to modify the invention of
Rivier with the teachings of De Jong et al. because preparing the probiotics
in a form disclosed in De Jong et al. will add the beneficial effect of the
probiotic reaching the intestine alive and increase optimum action” (id. at 4-
5).
Appellants contend that one of ordinary skill in the art would have had
no reason to combine Rivier and De Jong because they are directed to
unrelated products with different objectives, Rivier teaches away from De
Jong, and the proposed combination would change the principles of
operation of Rivier and De Jong (App. Br. 11-17; Reply Br. 2-6).
ISSUE
Does the evidence support the Examiner’s conclusion that it would
have been obvious to include a carotenoid, as taught in Rivier, in De Jong’s
carrier?
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FINDINGS OF FACT
1. The Specification states: “Upon continuous ingestion [of
probiotics] by the host they eventually may colonize the gut. . . . Until now a
number of different probiotic micro-organisms have been found, which all
are reported to exert their effect in the gut.” (Spec. 4: 10-17.)
2. The Specification discloses:
It has now been shown that probiotics do also exert an effect in
an individual’s body at a location distant from the region in
which they colonize it. And particularly, it has been
surprisingly found that a composition having a synergistic
photoprotective effect on the skin may be obtained by
combining into an orally acceptable carrier, a probiotic
microorganism and yeast.
(Id. at 4: 19-23.)
3. Rivier discloses “a confectionary product that includes at least
one functional ingredient” (Rivier, Abstract).
4. As the functional ingredient, Rivier discloses probiotic
microorganisms such as Bifidobacterium, Lactobacillus, Streptococcus, or
Saccharomyces (id. at ¶ [0042]).
5. Rivier also discloses that antioxidants, including beta-carotene
or other carotenoids, “can be used as the functional ingredient, alone or in
combination with other functional ingredients” (id. at ¶ [0048]).
6. De Jong discloses a health-promoting preparation containing
one or more probiotics (De Jong, Abstract).
7. De Jong also discloses that the probiotics include lactic acid
bacteria, yeast strains, or a combination thereof (id. at 3: 18-21).
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8. In addition, De Jong discloses that its preparations “can be
mixed with a suitable drinkable liquid, such as water, yoghurt, milk, or fruit
juice, or can be mixed with solid or liquid food” (id. at 5: 17-19).
9. De Jong also discloses that “[s]uch foods . . . can contain all
customary additives for (total and/or clinical) nutrition, including proteins,
vitamins, minerals, trace elements and the like” (id. at 5: 31-33).
10. In Example II, De Jong discloses a bar including, among other
components, Lb rhamnosus and baker’s yeast (id. at 8: 4-8).
PRINCIPLES OF LAW
“In order to rely on a reference as a basis for rejection of the
applicant’s invention, the reference must either be in the field of the
applicant’s endeavor or, if not, then be reasonably pertinent to the particular
problem with which the inventor was concerned.” In re Oetiker, 977 F.2d
1443, 1447 (Fed. Cir. 1992).
A reference may be said to teach away when a person of
ordinary skill, upon reading the reference, would be
discouraged from following the path set out in the reference, or
would be led in a direction divergent from the path that was
taken by the applicant. The degree of teaching away will of
course depend on the particular facts; in general, a reference
will teach away if it suggests that the line of development
flowing from the reference’s disclosure is unlikely to be
productive of the result sought by the applicant.
In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). A proposed modification or
combination of the prior art that would change the basic principles under
which the prior art invention was designed to operate weighs against a
conclusion of prima facie obviousness. In re Ratti, 270 F.2d 810, 813
(CCPA 1959).
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“Mere recognition of latent properties in the prior art does not render
nonobvious an otherwise known invention.” In re Baxter Travenol Labs.,
952 F.2d 388, 392 (Fed. Cir. 1991).
ANALYSIS
As with the presently claimed invention, Rivier and De Jong are both
related to orally administrable compositions comprising probiotic lactic acid
bacterium and/or yeast in an orally acceptable carrier (Findings of Fact
(FF) 3-4 & 6-8). Thus, we agree with the Examiner that Rivier and De Jong
are analogous art.
As noted by Appellants, Rivier relates to a confectionery product
(FF 3). However, Appellants have not pointed to, nor did we find, a
teaching in Rivier that would have discouraged the use of different types of
carriers, such as the ones disclosed in De Jong. Thus, we do not agree with
Appellants that Rivier teaches away from using the carriers disclosed in De
Jong.
According to the Specification, “[i]t has now been shown that
probiotics do also exert an effect in an individual’s body at a location distant
from the region in which they colonize it,” that is, the gut (FF 1-2 (emphasis
added). However, this teaching does not suggest that the probiotics would
exert this effect rather than their known effect on the gut. Thus, we do not
agree with Appellants that combining De Jong and Rivier to arrive at the
present claims would change the principle of operation of De Jong. Instead,
we agree with the Examiner that it would have been obvious to include
Rivier’s functional ingredients, such as beta-carotene or other carotenoids
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(FF 5), in the preparations disclosed in De Jong in order to provide the
known benefits of these functional ingredients.
CONCLUSION
The evidence supports the Examiner’s conclusion that it would have
been obvious to include a carotenoid, as taught in Rivier, in De Jong’s
carrier. We therefore affirm the obviousness rejection.
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).

AFFIRMED

cdc

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