Ex Parte Couzy et al

Board of Patent Appeals and Interferences

Aug 27, 2008

10339349 (B.P.A.I. Aug. 27, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte FRANCOIS COUZY and CATHERINE BOISSIN-DELAPORTE
____________

Appeal 2008-3509
Application 10/339,349
Technology Center 1600
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Decided: August 27, 2008
____________

Before TONI R. SCHEINER, DONALD E. ADAMS, and FRANCISCO C.
PRATS, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL

This appeal under 35 U.S.C. § 134 involves claims 1-5, 7-13, 15-18,
and 20, the only claims pending in this application. We have jurisdiction
under 35 U.S.C. § 6(b).

INTRODUCTION
The claims are directed to a pet food composition (claims 1-5 and 7)
and a method for improving skin health and/or coat quality in a pet (claim
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8), and a method for reducing body surface odor and/or coat odors of a pet
(claims 9-13). Claim 1 is illustrative:
1. A pet food composition comprising a starch source, a protein
source and at least a source of dietary lipids comprising at least 0.02% of
palmitoleic acid and at least 1.0% of lauric acid by weight of the pet food
composition and selected for their ability to modulate the content of anti-
microbial fatty acids in the epidermis of mammals.

The Examiner relies on the following prior art references to show
unpatentability:
Ogilvie US 5,776,913 Jul. 7, 1998
Teter WO 99/66804 Dec. 29, 1999

The rejection as presented by the Examiner is as follows:
Claims 1-5, 7-13, and 15-18 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over the combination of Ogilvie and Teter.
We affirm.

FINDINGS OF FACT (FF):
1. Ogilvie teaches a “method of reducing metabolic abnormalities found in
animals with cancer and including a pet food composition effective for this
purpose” (Ogilvie, col.1, ll. 6-8).
2. Ogilvie teaches a pet food composition comprising, a protein source
including, inter alia, beef lungs, pork liver and chicken, a starch source,
including, inter alia, rice, and a source of dietary lipids including, inter alia,
11.6% palmitoleic acid (Ogilvie, col. 4, l. 42 – col. 5, l. 9; Table II).
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3. Ogilvie teaches that
[t]he specific dietary balance between fat and
carbohydrates in combination with the specific concentrations
of arginine, omega-6 polyunsaturated fatty acids set forth herein
is believed to positively affect the negative impact of metabolic
abnormalities in animals with cancer by providing a means for
correcting such abnormalities in the animal.

(Ogilvie, col. 2, ll. 57-63).
4. Ogilvie teaches that “[e]xamples of omega-6 polyunsaturated fatty acids
include linoleic acid and arachidonic acid [and that] [s]ources [of these fatty
acids] typically are animal fats and vegetable oils such as soy, canola and
corn oil” (Ogilvie, col. 3, ll. 47-50).
5. Ogilvie teaches that
[t]he fat and carbohydrate nutrients used to prepare the pet food
compositions of the present invention may be supplied by
ingredients such as meat, meat by-products, other animal
protein sources and grains as the food source . . . . The nutrient
ingredients may also include amounts of cereal grains such as
wheat, corn, barley and rice and fibrous bulking materials such
as cellulose, beet pulp, peanut hulls or soy fiber.
(Ogilvie, col. 2, l. 64 – col. 3, l. 12.)
6. Ogilvie teaches that “[o]ther additives may be included in this pet food as
needed. These other additives include flavoring, vitamins, minerals,
coloring and mixtures thereof. These additives are added for nutritional
purposes and palatability” (Ogilvie, col. 3, ll. 60-63).
7. Teter teaches “methods and compositions for reducing or eliminating the
use of antibiotics to promote the growth of animals” (Teter 1: 17-18).
8. Teter teaches that “[t]he methods and compositions relate to the use of an
anti-microbial fatty acid component as part of the animal feed, either
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combined with the feed or administered separately as a feed supplement”
(Teter 1: 18-20).
9. Teter teaches that “high lauric acid oil will be employed as part of the
feed or as a feed supplement such that the lauric acid will preferably
comprise about 0.5% to about 10% of the animal feed” (Teter 4: 1-3).
10. Teter teaches that the source of oil may be “any oil derived from plant
or animal material including, but not limited to oils that are derived from
plants that have been genetically modified . . . . As one example, canola oil .
. . derived from plants that have been genetically modified to have a high
lauric acid content may be employed” (Teter 3: 20-25).
11. Teter teaches that the animals include “farm livestock, pets, and any
animals produced for human consumption” (Teter 4: 9-10).

DISCUSSION
Claims 1-5, 7-13, and 15-18 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over the combination of Ogilvie and Teter. The claims have
not been argued separately and therefore stand or fall together. 37 C.F.R.
§ 41.37(c)(1)(vii). Therefore, we limit our discussion to representative claim
1.
Claim 1 is drawn to a pet food composition. The composition
comprises:
1. a starch source,
2. a protein source,
3. at least a source of dietary lipids comprising at least 0.02% of
palmitoleic acid, and
4. at least 1.0% of lauric acid by weight of the pet food composition.
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While the ingredients listed in claim 1 are selected for their ability to
modulate the content of anti-microbial fatty acids in the epidermis of
mammals; claim 1 does not require the composition to have any effect on the
anti-microbial fatty acid content in the epidermis of mammals.
Based on the combined teachings of Ogilvie and Teter the Examiner
concludes that “[i]t would have been obvious to a person of ordinary skill in
the art at the time the invention was made, utilizing diet as of the Ogilvie,
that adding 0.5-10% of lauric acid to the animal feed would provide
additional antimicrobial benefits as shown by Teter” (Ans. 4).
In response, Appellants assert that “[a]t no point does Ogilvie disclose
or suggest using any lauric acid, a saturated fatty acid, which has completely
different properties from the polyunsaturated fatty acids disclosed in
Ogilvie. Ogilvie, therefore, teaches away from a combination with Teter”
(App. Br. 13 (emphasis removed)). We are not persuaded.
We agree that Ogilvie teaches that a “specific dietary balance between
fat and carbohydrates in combination with the specific concentrations of
arginine [and] omega-6 polyunsaturated fatty acids . . . is believed to
positively affect the negative impact of metabolic abnormalities in animals
with cancer by providing a means for correcting such abnormalities in the
animal” (FF 3). However, we do not find, and Appellants do not identify, a
suggestion in Ogilvie to avoid administering saturated fatty acids to an
animal. To the contrary, Ogilvie teaches the use of animal fats and
vegetable oils, meat, meat by-products, grains, beet pulp, peanut hulls and
other additives for nutritional purposes (FF 4-6). There is no evidence on
this record that Ogilvie intended to exclude saturated fatty acids or that any
of the sources of ingredients included in Ogilvie’s composition would not
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contain saturated fatty acids. In this regard, we note that Teter teaches that
the source of oil may be “any oil derived from plant or animal material
including . . . canola oil . . . derived from plants that have been genetically
modified to have a high lauric acid content” (FF 10).
Accordingly, we are not persuaded by Appellants’ assertion that
Ogilvie teaches away from the inclusion of saturated fatty acids and
therefore teaches away from its combination with Teter (App. Br. 13-14
(emphasis removed)). To the contrary, Teter teaches that “[t]he methods and
compositions relate to the use of an anti-microbial fatty acid component as
part of the animal feed, either combined with the feed or administered
separately as a feed supplement” (FF 8). As the Examiner explains it would
have been prima facie obvious to a person of ordinary skill in this art to
include Teter’s lauric acid feed supplement in Ogilvie’s composition for the
additional antimicrobial benefits taught by Teter (Ans. 4)1. “The
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results.” KSR Int’l Co.
v. Teleflex Inc., 127 S. Ct. 1727, 1739 (2007).
We are also not persuaded by Appellants’ assertion that “Ogilvie and
Teter fails to disclose or suggest a pet food composition comprising at least
0.02% of palmitoleic acid and at least 1.0% of lauric acid by weight of the
pet food composition as required, in part by the present claims” (App. Br. 15
(emphasis removed)).

1 Accordingly, we are not persuaded by Appellants’ assertion that the
Examiner’s only rationale for combining Ogilvie with Teter is “[t]hat the
references both relate to animal feeds” (Reply Br. 3).
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Teter teaches that “high lauric acid oil will be employed as part of the
feed or as a feed supplement such that the lauric acid will preferably
comprise about 0.5% to about 10% of the animal feed” (FF 9). “[W]here
there is a range disclosed in the prior art, and the claimed invention falls
within that range, there is a presumption of obviousness.” Iron Grip Barbell
Co. v. USA Sports, Inc., 392 F.3d 1317, 1322, (Fed. Cir. 2004).
As to the percentage of palmitoleic acid, as the Examiner explains
Ogilvie teaches a composition comprising 5.75% by weight of menhaden
oil, which comprises 11.6% palmitoleic acid (Ans. 3; Ogilvie, col. 4, l. 45
and col. 5, ll. 5-7). Thus, contrary to Appellants’ assertion (App. Br. 15),
Ogilvie’s composition comprises at least 0.02% palmitoleic acid by weight
of the pet food.
Further, while Appellants assert that they have “found that lauric acid
can have a synergistic effect with palmitoleic acid . . . by boosting its
concentration in the epidermis” (App. Br. 16), we note that claim 1 is drawn
to a pet food composition. “In determining whether the subject matter of a
patent claim is obvious, neither the particular motivation nor the avowed
purpose of the patentee controls. What matters is the objective reach of the
claim. If the claim extends to what is obvious, it is invalid under § 103.”
KSR, 127 S.Ct. at 1741-42; see also In re Beattie, 974 F.2d 1309, 1312,
(Fed. Cir. 1992) (“[T]he law does not require that the references be
combined for the reasons contemplated by the inventor.”).
Stated differently, while Appellants selected the ingredients for their
ability to modulate the content of anti-microbial fatty acids in the epidermis
of mammals, the prior art suggests the combination of a composition
comprising the same ingredients, including, at least 0.02% palmitoleic acid
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and at least 1.0% lauric acid (1) to reduce metabolic abnormalities found in
animals with cancer (FF 1) and (2) to reduce or eliminate the use of
antibiotics to promote the growth of animals (FF 7).
While Appellants assert that their combination achieves “a synergistic
effect with respect to boosting the palmitoleic concentration in the
epidermis” claim 1 does not require a “boost” in the palmitoleic
concentration or any other “modulation” of anti-microbial fatty acids in the
epidermis of mammals.
We also recognize Appellants’ assertion that they “have demonstrated
that, if lauric acid is added to a diet in addition to palmitoleic acid, this diet
can result in a concentration of epidermal palmitoleic acid that is higher than
could be expected from a concentration of epidermal palmitoleic acid
derived from a diet in the absence of lauric acid” (Reply Br. 4). Claim 1
does not, however, require an increase in epidermal palmitoleic acid, to the
contrary claim 1 simply states that the ingredients are “selected for their
ability to modulate the content of anti-microbial fatty acids in the epidermis
of mammals” (Claim 1). “Modulating” the content of anti-microbial fatty
acids in the epidermis of mammals does not require an increase in epidermal
palmitoleic acid. To the contrary, a person of ordinary skill in this art could
reasonably infer that modulating results in a decrease in epidermal
palmitoleic acid in the epidermis of a mammal. Further, claim 1 does not
require that the anti-microbial fatty acids in the epidermis of the mammal
actually be modulated (either up or down). To the contrary, claim 1 simply
requires the ingredients to be “selected” for their “ability” to modulate the
content of anti-microbial fatty acids in the epidermis of mammals. As
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discussed above, the prior art of record provides another reason to select the
ingredients of the claimed composition.
In order to establish unexpected results for a claimed invention,
objective evidence of non-obviousness must be commensurate in scope with
the claims which the evidence is offered to support. In re Greenfield, 571
F.2d 1185, 1189 (CCPA 1978); In re Lindner, 457 F.2d 506, 508 (CCPA
1972); In re Tiffin, 448 F.2d 791, 792 (CCPA 1971). Accordingly, we
disagree with Appellants’ assertion that “at the time of the presently claimed
invention, it would not have been obvious to combine two different
ingredients from the disclosure of two different references wherein the
combination of the two would result in synergistic effects on the epidermal
palmitoleic acid of a pet” (Reply Br. 4). For the reasons set forth above, the
prior art suggests the combination of the ingredients set forth in Appellants’
claim 1 and there is no requirement in claim 1 that the composition have any
effect on a pet. Accordingly, we are not persuaded by Appellants’
arguments relating to unexpected results.
For the foregoing reasons, we affirm the rejection of claim 1 under 35
U.S.C. § 103(a) as unpatentable over the combination of Ogilvie and Teter.
Claims 2-5, 7-13, and 15-18 fall together with claim 1.

CONCLUSION
In summary, we affirm the rejection of record.

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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

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BELL, BOYD & LLOYD LLP
P.O. BOX 1135
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