Ex Parte Bruckner et alDownload PDFPatent Trial and Appeal BoardMay 27, 201610859683 (P.T.A.B. May. 27, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. 10/859,683 132446 7590 Mars Petcare Theresa Shearin FILING DATE 0610312004 06/01/2016 315 Cool Springs Blvd. Franklin, TN 37067 FIRST NAMED INVENTOR Geza Bruckner 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 ATTORNEY DOCKET NO. CONFIRMATION NO. IAM0058 US3 8198 EXAMINER FISHER, ABIGAIL L ART UNIT PAPER NUMBER 1616 NOTIFICATION DATE DELIVERY MODE 06/01/2016 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): mars.patents@effem.com theresa.shearin@effem.com becca.barnett@effem.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte GEZA BRUCKNER and JOSEPH SZAB01 Appeal2013-009325 Application 10/859,683 Technology Center 1600 Before JEFFREY N. FREDMAN, JOHN G. NEW, and ROBERT A. POLLOCK, Administrative Patent Judges. NEW, Administrative Patent Judge. DECISION ON APPEAL 1 Appellants state the real party-in-interest is The Procter and Gamble Company. App. Br. 1. Appeal2013-009325 Application 10/859,683 SUMMARY Appellants file this appeal under 35 U.S.C. § 134(a) from the Examiner's Final Rejection of claims 29, 31, 34--37, 40, 43, 45, 51, and 52. Specifically, claims 29, 31, 34--37, 40, 43, 51, and 52 stand rejected as unpatentable under 35 U.S.C. § 103(a) as being obvious over the combination of Shlyankevich (US 5,424,331, June 13, 1995) ("Shlyankevich"), Benson et al. (US 4,096,254, June 20, 1978) ("Benson"), and Franzen et al. (US 4,282,254, August 4, 1981) ("Franzen"). Claims 29, 31, 34--37, 40, 43, 51, and 52 also stand rejected as unpatentable under 35 U.S.C. § 103(a) being obvious over Takebe et al. (WO 97/37549, October 16, 1997) ("Takebe")2 and Franzen. Claim 45 stands rejected as unpatentable under 35 U.S.C. § 103(a) being obvious over Shlyankevich, Benson, Franzen, and Ballevre et al. (EP 0 850 569 Al, July 1, 1998) ("Ballevre"). We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. NATURE OF THE CLAIMED INVENTION Appellants' invention is directed to dietary compositions and methods for a mammal food base and a component comprising estrogen, androgen or a mixture thereof in an amount sufficient to reduce weight gain. The compositions are adapted for administration to the mammal on a regular, preferably daily, basis. Abstract. 2 The Examiner employs Takebe (US 6,045,819, April 4, 2000) ("Takebe '819") as the English-language equivalent of the Takebe reference. See Final Act. 9. All sections cited to herein correspond to Takebe '819. 2 Appeal2013-009325 Application 10/859,683 REPRESENTATIVE CLAIM Claim 29 is representative of the claims on appeal, and recites: 29. A pet food composition comprising a component selected from the group consisting of phytoestrogens, phytoandrogens, and mixtures thereof, in an amount sufficient to reduce weight gain subsequent to neutering, castration, spaying, ovariectomy, ovariohysterectomy, or menopause, from about 0.001 % to about 10%, by weight of the composition, and wherein the pet food composition comprises a complete and balanced pet food. App. Br. 9. ISSUES AND ANALYSES We agree with, and adopt, the Examiner's findings and conclusion that the appealed claims are prima facie obvious over the cited prior art references. We address the arguments raised by Appellants below. A. Rejection of claims 29, 31, 34--37, 40, 43, 51, and 52 Issue 1 Appellants argue the Examiner erred because there was no apparent reason to combine and further modify the asserted references in the fashion claimed. App. Br. 2. Analysis The Examiner finds that Shlyankevich teaches compositions for the treatment or prevention of osteoporosis which comprise 75 to 200 parts of one or more phytoestrogen compounds, 0 to 100 parts of dried licorice root extract, 300 to 600 parts of calcium, 70 to 280 parts magnesium, 4 to 25 3 Appeal2013-009325 Application 10/859,683 parts zinc, 5 to 20 parts of beta-carotene, 0.005 to 0.010 parts of vitamin D, and 6 to 12 parts of vitamin E. App. Br. 3 (citing Final Act. 4). Appellants assert these are only the active ingredients of the composition, which makes it impossible to determine the percentage or dosage of phytoestrogen compounds in the total composition. Id. (citing Shlyankevich col. 3, 11. 15- 31). Appellants also point to Example 1 of Shlyankevich, which the Examiner finds teaches a composition comprising 7% phytoestrogens. App. Br. 3 (citing Final Act. 6). However, Appellants contend, Example 1 of Shlyankevich teaches a composition "prepared in the form of a tablet." Id. (citing Shlyankevich col. 6, 11. 7-22). Therefore, argue Appellants, contrary to the Examiner's findings, the 7% phytoestrogen content of the tablet of Example 1 is not "the same amount as instantly claimed," but rather, if Example 1 were admixed with food, the percentage would be lower than 7%. Id. (quoting Final Act. 6). Appellants argue Shlyankevich is silent as to the concentration or percentage of phytoestrogen after admixing with a food product, and there is therefore no apparent reason to adopt the percentage of phytoestrogen used in Shlyankevich's tablet as the same percentage of phytoestrogen to use in a complete and balanced pet food, as required by claim 2 9. Id. Appellants argue further that, contrary to the Examiner's findings, there is no teaching or suggestion that optimization of the ranges of Shlyankevich for the purpose of treating osteoporosis would result in the claimed range, and no showing that it was known in the art that the amount of phytoestrogen in a complete diet could be optimized to provide an amount sufficient to reduce weight gain subsequent to neutering, castration, spaying, 4 Appeal2013-009325 Application 10/859,683 ovariectomy, ovariohysterectomy, or menopause. App. Br. 4. According to Appellants: "[a] particular parameter must first be recognized as a result- effective variable, i.e., a variable which achieves a recognized result, before the determination of the optimum or workable ranges of said variable might be characterized as routine experimentation." Id. (quoting MPEP § 2144.05(II)(B)). Furthermore, Appellants argue, Benson is cited by the Examiner as teaching that the symptoms of menopause are due primarily to estrogen deficiency. App. Br. 5 (citing Final Act. 5). However, Appellants argue, Benson does not explicitly associate weight gain with menopause. Id. (citing Benson col. 2, 11. 42-50). Therefore, Appellants contend, the teachings of Benson do not cure the alleged defects of Shlyankevich. Id. Finally, Appellants argue, Franzen is cited by the Examiner as evidence that it is important to formulate all dog foods such that they are nutritionally complete. App. Br. 5 (citing Final Act. 5). Appellants contend the teachings of Franzen do not therefore cure the defects of Shlyankevich and Benson. Id. The Examiner responds that, whereas it is true that Example 1 of Shlyankevich teaches 7% phytoestrogen in the form of a tablet, differences in concentrations cannot support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration is critical. Ans. 11. The Examiner reminds us that: "[ w ]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." Id. (quoting In re Aller, 220 F.2d 454, 456 (C.C.P.A. 1955)). The Examiner finds that, given that Appellants' Specification does 5 Appeal2013-009325 Application 10/859,683 not disclose the criticality of the amount of phytoestrogens in the claimed invention, a person of ordinary skill in the art would be motivated to determine the optimum concentration of phytoestrogen within a given range. Id. The Examiner further finds Shlyankevich teaches a daily dosage of 200 mg and that 7 5 to 200 parts is an amount of is a range of 6 to 16%. Ans. 11. The Examiner finds Shlyankevich also teaches soybean phytoestrogens are beneficial for saving bone mass and for prevention of osteoporosis and fractures, depending on the size of the mammal and severity of disease. Id. The Examiner therefore concludes it would have been obvious to one of ordinary skill in the art to manipulate the amount of dog food depending on the size of the dog. Id. at 11-12. The Examiner finds that, because Shlyankevich teaches 200 mg, 75 to 200 parts, or 7% are effective amounts of phytoestrogens, it would be obvious to manipulate the phytoestrogen concentration in a mammal food composition to optimize the effect. Id. at 12. We are not persuaded by Appellants' argument. Shlyankevich teaches a composition including, inter alia, "75 to 200 parts of one or more phytoestrogen compounds" that is used for the treatment and prevention of osteoporosis and that 200 mg/ day is a preferred dosage. Shlyankevich Abstr.; col. 3, 11. 18-19, 37--40. Shlyankevich also teaches: "[t]he new compositions may also include a non-toxic carrier or diluent in admixture with the abovementioned active ingredients. Examples of such non-toxic, inert carriers include wheat starch, and sodium carboxymethyl cellulose." Id. at col. 3, 11. 31-35. Claim 29 recites, in relevant part, "phytoestrogens ... in an amount sufficient to reduce weight gain ... from about 0.001 % to 6 Appeal2013-009325 Application 10/859,683 about 10%, by weight of the composition." Claim 29 thus comprises a very large range of potential combinations. Moreover, claim 29 also tells us that phytoestrogens are a result-effective variable because a selected concentration must be "in an amount sufficient to reduce weight gain." "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d at 456. This rule is limited to cases in which the optimized variable is a "result-effective variable." In re Applied Materials, Inc., 692 F.3d 1289, 1295 (Fed. Cir. 2012) (citing In re Antonie, 559 F.2d 618, 620 (C.C.P.A. 1977)); see also In re Boesch, 617 F.2d 272, 276 (C.C.P.A. 1980) ("[D]iscovery of an optimum value of a result effective variable ... is ordinarily within the skill of the art"). We agree with the Examiner that it would be within the skill of an ordinary artisan to optimize the concentration of phytoestrogen in the composition of Shlyankevich to arrive at Appellants' claimed composition. Nor are we persuaded by Appellants' argument that neither Shlyankevich nor Benson teaches that it was known in the art that the amount of phytoestrogen in a complete diet could be optimized to provide an amount sufficient to reduce weight gain subsequent to neutering, castration, spaying, ovariectomy, ovariohysterectomy, or menopause. See App. Br. 4. Appellants' claims are all directed to chemical compositions, and not to methods or processes. We agree with the Examiner that Appellants' composition is obvious over the teachings of the references. Chemical compositions and their properties are inherently indistinguishable: 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 7 Appeal2013-009325 Application 10/859,683 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. In re Best, 562 F.2d 1252, 1255 (C.C.P.A. 1977) (citation and footnote omitted). Appellants have adduced no evidence to show that the teachings of Shlyankevich or Benson necessarily do not possess the characteristics of Appellants' claimed invention. We consequent! y affirm the Examiner's rejection of claims 29, 31, 34--37, 40, 43, 51, and 52. B. Rejection of claims 29, 31, 34--37, 40, 43, and 51-52 Issue Appellants argue the Examiner erred because there is no reason to combine and modify the teachings of Takebe and Franzen. 1A .. pp. Br. 5. Analysis Appellants contend the Examiner admits Takebe does not teach a feed composition comprising phytoestrogens in an amount from 0.001 to 10%. App. Br. 6 (citing Final Act. 10). Appellants dispute the Examiner's finding that: "[ o ]ne of ordinary skill in the art would have been motivated to vary the amount ofphytoestrogens as Takebe teach[es] that 0.1and0.5% produce an antioxidant effect. Therefore, it would have been obvious to ... vary the amount of the phytoestrogens to determine the optimal antioxidant effect." Id. (quoting Final Act. 10-11). Appellants contend that there is no showing that Takebe teaches or suggests phytoestrogens, phytoandrogens, and 8 Appeal2013-009325 Application 10/859,683 mixtures thereof~ in an amount sutlicient to reduce weight gain subsequent to neutering, castration, spaying, ovariectomy, ovariohysterectomy, or menopause, as required by claim 29. Id. Appellants argue further that the ideal amount of phytoestrogen to achieve an antioxidant effect in a pet food is not evident from Example 3 of Takebe and, therefore, it is not possible to determine whether that optimized amount is the same as recited in claim 29. App. Br. 6. According to Appellants, it is unclear from Example 3 whether the active specimens comprised phytoestrogen or phytoandrogens, and, if so, in what amounts. Id. at 6-7. Therefore, Appellants assert, there was no apparent reason for a person of ordinary skill to modify Takebe to achieve the composition recited in claim 29. Id. at 7. The Examiner responds that Appellants' Specification does not demonstrate the criticality of the amount of phytoestrogen recited in claim 29. Ans. 13. The Examiner finds that, because Takebe teaches a composition comprising phytoestrogens, it would have been obvious to one of ordinary skill in the art to determine the optimal amount required to achieve a desired effect. Id. The Examiner finds Takebe's Example 3 states that the test shows that products according to the present invention showed a prolonged period of time before increases in peroxide values and therefore these products possess superior anti-oxidant activities. Id. The Examiner finds that, because phytoestrogens are components of the product, it would have been obvious for a person of ordinary skill to determine the optimal amount for antioxidant activity. Id. We are not persuaded by Appellants' arguments. Takebe teaches: "In general, soybean which is one of the pulse crops contains isoflavone [i.e., 9 Appeal2013-009325 Application 10/859,683 phytoestrogen] compounds including daidzin, daidzein, genistin and genistein. Takebe col. 1, 11. 24--26. Example 3 of Takebe demonstrates that fermented soy protein extract in concentrations of 0.1 and 0.5% possess superior antioxidant activity compared to the untreated protein extract. Takebe col. 18, 11. 5-33. Takebe's Table 7 lists the isoflavones (phytoestrogens) found in the protein extract, including daidzein, genistin and genistein. Takebe col. 13, 11. 10-20. Takebe also teaches the protein extract can be used in animal feed as a pulverized defatted soybean having high pharmacological actives. Takebe cols. 15-16, 11. 64--3. We agree with the Examiner, for the reasons related supra, that it would be within the skill of an ordinary artisan to optimize the concentration of isoflavones to achieve high pharmacological activities within the range of concentrations required by claim 29. We consequently affirm the Examiner's rejection of the claims. C. Claim 45 Appellants repeat their arguments supra with respect to claim 45. App. Br. 7, 8. For the reasons we have related, we also affirm the Examiner's rejection of claim 45. CONCLUSION We conclude that the Examiner has established a prima facie case of obviousness on the evidence before us which has not been rebutted by Appellants. 10 Appeal2013-009325 Application 10/859,683 DECISION The Examiner's rejection of claims 29, 31, 34--37, 40, 43, 45, 51, and 52 as unpatentable under 35 U.S.C. § 103(a) is affirmed. 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). See 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED 11 Copy with citationCopy as parenthetical citation